tag:blogger.com,1999:blog-5574479.post8224233566376288462..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: Implausibly incredible or just plain insufficient?Verónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger12125tag:blogger.com,1999:blog-5574479.post-53542818838610132902017-06-02T09:43:27.126+01:002017-06-02T09:43:27.126+01:00In response to MaxDrei, yes, case law is always fa...In response to MaxDrei, yes, case law is always fashioned through actual cases, and that keeps it relevant to the new technologies that are emerging, and new tricks developed by patent attorneys. It's important for higher courts to have that freedom to go beyond the literal wording of the legislation whenever they need to.Suenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5532788122665092532017-06-02T07:58:41.914+01:002017-06-02T07:58:41.914+01:00That last commenter refers to one of the old inval...That last commenter refers to one of the old invalidity grounds, which disappeared in 1977. Of course, there are many of them.<br /><br />But the reasons why a claim ought to be struck down haven't changed. You know, all that "scope commensurate with the contribution" stuff.<br /><br />So today, when the courts see an over-wide claim, they are obliged to get creative with the law on insufficiency and inventive step. What else are they supposed to do?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-73801590330090257682017-06-01T19:21:28.410+01:002017-06-01T19:21:28.410+01:00'Biogen Insufficiency' seems to this fossi... 'Biogen Insufficiency' seems to this fossil an attempt to re-enact invalidity for lack of fair basis, which ground of revocation disappeared from our law with the repeal of the '49 Act.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-61816657199560371992017-06-01T17:24:50.110+01:002017-06-01T17:24:50.110+01:00....and how about Section 1 (1) (c) of the 1977 Ac.......and how about Section 1 (1) (c) of the 1977 Act, industrial applicability. Is "plausible" the wrong enquiry?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-57604550551069958022017-06-01T17:06:24.588+01:002017-06-01T17:06:24.588+01:00I find it helpful to think of "plausibility&q...I find it helpful to think of "plausibility" as an evidential requirement rather than a legal test. The legal requirement is that the skilled person should be able to perform the invention across the full breadth of the claim - ie the skilled person, with the teaching of the patent and his common general knowledge, should be able to make anything falling within the scope of the claims. To perform "the invention", you need the physical thing that falls within the claim but in addition the thing must have the quality that caused the patentee to claim it - the quality(ies) identified for the invention in the patent (that's what I take the AGREVO line of cases to mean). The problem is that, as a matter of evidence, nobody is going to have the time to make and test everything to see whether it has that quality. So we work with a rebuttable presumption that the thing will have the quality if it is plausible, on the basis of what the specification says plus common general knowledge, that it will have that quality. Post-filed evidence can confirm that what is plausible is in fact the case, or the presumption can be rebutted by evidence that the qualities are lacking. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-19619731700409242592017-06-01T16:13:33.233+01:002017-06-01T16:13:33.233+01:00This also presumably means the infringement test f...This also presumably means the infringement test for a skinny label Swiss style claim could change again (and that is all about the plausibility the infringer trying to stop people from carrying out the patented use!)Suenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-61752418308618166232017-06-01T12:14:21.408+01:002017-06-01T12:14:21.408+01:00Plausibility is important to have as a separate co...Plausibility is important to have as a separate concept from being able to carry out the invention. EPO decision T1329/04 is important here because it shows it needs to be shown in the specification that the molecule in question has the properties needed to solve the problem. <br /><br />So plausibility is needed for biotech/pharma case law to continue to function, and it's good for it to develop in the UK as a separate enablement requirement (different from being able to carry out the invention or Biogen insufficiency)<br /><br />Given that the EPO is actively using plausibility as a criterion I cannot see how the Supreme Court could decide against itKarnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-20775805245136971872017-06-01T11:07:43.417+01:002017-06-01T11:07:43.417+01:00The ordinary civil burden of proof is - more likel...The ordinary civil burden of proof is - more likely than not. I wonder, is - plausible - no more than a reference to that standard?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5344180923138589282017-06-01T04:01:13.704+01:002017-06-01T04:01:13.704+01:00Does this also help us with novelty, for example w...Does this also help us with novelty, for example where a patent publication discloses that a compound is useful for a large number of conditions, including condition (a), but without "plausibility/credibility", and then we claim the compound for treating this condition, with data to back it up?TokyoJoenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-30880854430587869372017-05-31T23:24:11.312+01:002017-05-31T23:24:11.312+01:00Nonsense comment. The patent claimed the use for t...Nonsense comment. The patent claimed the use for the treatment of neuropathic pain. The compound is, in fact, suitable for treating neuropathic pain. The patent teaches you to take a tablet of the drug to treat said pain. Seems sufficient to me. What more do you want?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-32475964803966362932017-05-31T23:09:13.525+01:002017-05-31T23:09:13.525+01:00I do find it odd that, whereas the UK courts seem ...I do find it odd that, whereas the UK courts seem to treat decisions of the lower EPO Boards of Appeal as having the same legal precedent authority as decisions of the UK courts, the EPO itself does not. <br /><br />There are many references to this scattered throughout published EPO decisions, for example T0910/06 http://legal.european-patent-office.org/dg3/biblio/t060910eu1.htm<br /><br /><i>"...unlike some Anglo-Saxon legal systems which are precedent driven the instances of the European Patent Organisation work within a codified system of law, i.e. the European Patent Convention and its implementing regulations, and are constrained by case law only in the case of decisions handed down by the Enlarged Board of Appeal. Further the ratio descendi of a decision of a Board of Appeal is only binding, in the case of remittal, on the department whose decision was appealed in so far as the facts are the same (Art 111(2) EPC). " [Reasons, 2.8]</i><br />ex-examinernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-66471510407832965322017-05-31T20:57:39.975+01:002017-05-31T20:57:39.975+01:00It is just plain insufficient. Surely that is, an...It is just plain insufficient. Surely that is, and should be, the end of the story. But with so much money riding on this, the creative silks will surely have their way with the Supreme Court judges. Then whatever decision they ultimately hand down (good, bad or ugly) will be for everyone else to have to deal with. Anonymousnoreply@blogger.com