tag:blogger.com,1999:blog-5574479.post4329799724905918159..comments2024-03-28T13:45:42.289+00:00Comments on The IPKat: Nothing to see here, Lilly wins in kicking out Genentech's Talz progeny patent (for now)Verónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger1125tag:blogger.com,1999:blog-5574479.post-5730269414787175662020-02-26T17:59:26.479+00:002020-02-26T17:59:26.479+00:00Once again, an extremely useful write up from Rose...Once again, an extremely useful write up from Rose Hughes, which sets me thinking. <br /><br />I don't do chem/bio but for me, claiming medical devices, the chance of inadvertently and despite my best efforts falling into the Art 123(2)/(3) inescapable trap during EPO prosecution are higher than they should be, and getting ever higher. Hence, the advice to a client, to have a divisional pending as one goes through the opposition period is well-taken.<br /><br />Spoken about here are divisionals with "virtually identical" claims. Not unusual, if we are talking about avoiding the EPO's inescapable trap, with its ever more bizarre and unworldly assessments under the (no joke) "Gold Standard". A change of one word can escape the trap, without changing the substance of the subject matter claimed.<br /><br />I think that the root of the problem lies in the word "derivable". It means one thing to me but something else entirely to many Examiners and Technical Members at the EPO. Could it be that the EPO has a special difficulty with Art 123(2) EPC, not found in other Patent Offices and courts, because examination at the EPO is carried out by Examiners with a first language other than the language of the proceedings: it results in them concentrating excessively on the letter of the wording of one phrase or sentence of the specification, and not enough on the overall teaching, delivered to the notional skilled technical reader by the specification as a whole. After all, the reader is deemed to be technically skilled and to be reading the document with a mind willing to understand, and hungry to learn all they can from the written content of the document.<br /><br />Compare, for example, two recent TBA Decisions, T1442/16 and T524/17, on what the skilled reader makes of a paragraph of disclosure that opens with the words "In an embodiment....." What is "derivable" from such a statement? The way I see it, the Rapporteur of the one Board is (bravo) present in the real world and is alive to the issue while the other hasn't even begun to think the issue through, instead merely trotting out the unreal and unrealistic EPO "party line". Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.com