tag:blogger.com,1999:blog-5574479.comments2024-03-18T17:10:35.838+00:00The IPKatVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger39396125tag:blogger.com,1999:blog-5574479.post-63003051555620883962024-03-18T13:36:40.857+00:002024-03-18T13:36:40.857+00:00Hear Hear!
Para 98 of the judgement says:
Neithe...Hear Hear!<br /><br />Para 98 of the judgement says:<br /><br />Neither Article 41(1) of Regulation No 6/2002 nor Article 4 of the Paris Convention – which, moreover, does not have direct effect in the EU legal order – makes it possible to claim priority for an international application filed under the PCT when filing a subsequent design application within a period of 12 months, irrespective of whether that international application concerns a utility model or a patent. Thus, in accordance with those provisions, in the first of those situations, the period for claiming a right of priority on the basis of that international application is set at six months whereas, in the second of those situations, the existence of such a right is precluded from the outset.<br /><br />So the Paris Convention does indeed allow cross IP priority claims. It's just that you only get 6 months when claiming priority for a design from a Utility Model (e.g. a PCT application).Marknoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-73904995125447573312024-03-18T10:01:15.857+00:002024-03-18T10:01:15.857+00:00Wow, what an amazing reversal of fortunes. I don&...Wow, what an amazing reversal of fortunes. I don't think many people saw this coming, even after G1/22 came out. The Broad was very lucky that G1/22 went to the EBA when it did! It's completely saved their bacon on this issue. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-3653642207757303552024-03-16T19:13:39.329+00:002024-03-16T19:13:39.329+00:00A few years ago, a company called AstraZeneca obta...A few years ago, a company called AstraZeneca obtained an SPC extension based on the wrong, later, marketing authorisation date. They were not entitled to rely on this later date and using their illegitimate monopoly to block competition was found by the European Commission to be anti-competitive. >50 million EUR fine for a few weeks of abuse.<br /><br />Imagine the scenario where a pharmaceutical obtains many years of patent life based on a priority claim to which they are not entitled, even though upheld by the EPO during opposition proceedings. I wonder whether that would be deemed anti-competitive. Italy found a standard divisional application filing to be an abuse.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5720832163026366412024-03-14T13:09:10.907+00:002024-03-14T13:09:10.907+00:00Do anyone know if there has been filed an appeal o...Do anyone know if there has been filed an appeal on the matter?Annanoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5225807065847833102024-03-12T19:34:55.025+00:002024-03-12T19:34:55.025+00:00I think it is almost automatic using the filing so...I think it is almost automatic using the filing software.Kantnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-47186212003067622452024-03-12T15:58:57.362+00:002024-03-12T15:58:57.362+00:00This post (as well as the CJEU decision) is a bit ...This post (as well as the CJEU decision) is a bit confusing. I would argue that within 6M after filing a PCT application, filing a design application claiming the PCT application's priority should be possible:<br /><br />Art. 41(1) CDR states that "A person who has duly filed an application for a design right or for a utility model in or for any State party to the Paris Convention [...], shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design or utility model, a right of priority of six months from the date of filing of the first application." This establishes a 6M period to claim the priority of a utility model application. <br /><br />Art. 11(4) PCT states that "Any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Convention [...]". <br />..and Art. 41(2)-(3) CDR state: <br />"2. Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements shall be recognised as giving rise to a right of priority.<br />3. ‘Regular national filing’ means any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application."<br /><br />Finally, par. 5.055 of the PCT Applicant's Guide (Intl. Phase) states that "[... T]he filing of the request constitutes the indication that the international application is [...] for the grant of every kind of protection which is available by way of the designation of that State. Examples of such kinds of protection are an inventor’s certificate, a utility certificate, a utility model, [...]"<br /><br />Hence: <br />1) Filing a PCT application aims at patent protection as well as utility mode protection. <br />2) Filing a PCT application is equivalent to a regular national filing.<br />3) Filing a PCT application gives rise to a 6M period wherein priority for a later design application can be claimed.SHnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-48051356507463885442024-03-12T00:03:07.029+00:002024-03-12T00:03:07.029+00:00I think the title of this article is a bit mislead...I think the title of this article is a bit misleading as Art 4(E) Paris *does* allow a design application to claim priority to a utility model application. Effectively the real question was whether a PCT, which itself may be considered to be a patent application or a utility model (Art 2 PCT), gives rise to priority period of 12 months or 6 months for a subsequent design application (i.e. depending on what type of right the PCT was considered to be). The answer was that for a design application to be able to claim priority, the PCT had to be considered to be a utility model application falling under the scope of Art 4(E)(1) Paris for which the priority period was set at 6 months. The concluding comment in the article above (which refers to 'PCT patent application') may therefore be misinterpreted as, while not strictly inaccurate, it has to be read in context (as it is referring to particular subset interpretation of PCT applications, not all PCT applications as some may think). It may be appropriate to rephrase accordingly, as a design application can generally claim priority to a PCT application if it is within a 6 month period (on the basis that a PCT may be considered to be a utility model application rather than a patent application for this purpose) pursuant to Art 41(1) CDR, Art 4(E)(1) Paris and Art 2 PCT.Chris Hemingwaynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-69396267684053493712024-03-11T21:55:03.969+00:002024-03-11T21:55:03.969+00:00"Therefore, a priority right can be based on ..."Therefore, a priority right can be based on a PCT application only if the latter’s subject is a utility model. - what does this mean? When is a utility model the subject of a PCT application?PLUnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-56756301637635287672024-03-10T18:00:06.767+00:002024-03-10T18:00:06.767+00:00For the kat to find evidence said to cast doubt on...For the kat to find evidence said to cast doubt on the independence of the lawyer suggests the kat is in private practice. Speaking as an in-house lawyer I find myself acting more independently and in the interests of the company than our external counsel who are eager to please and do not go above and beyond at no charge (unlike myself) to ensure legal advice is sound.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-74316761880204274922024-03-07T14:42:30.830+00:002024-03-07T14:42:30.830+00:00Quite surprised by the lack of comments on this bl...Quite surprised by the lack of comments on this blogpost tbh. Has everything been said elsewhere (e.g. in relation to earlier Kat thoughts on the US Dabus decision)?Honestly not a robotnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-85127327377118389542024-03-06T10:03:16.344+00:002024-03-06T10:03:16.344+00:00A very interesting text, as usual, and a very intr...A very interesting text, as usual, and a very intriguing judgement. I think it is worth clarifying a few things for potential readers. <br /><br />First of all, in relation to the liability of hosting providers, it should be noted that the DSA provides for exemptions for all types of liability, as stated in recital 17 of the DSA:<br /><br />"Furthermore, the exemptions from liability established in this Regulation should apply in respect of any type of liability as regards any type of illegal content, irrespective of the precise subject matter or nature of those laws." This therefore refers to both primary and secondary civil, criminal and administrative liability.<br /><br />However, the provisions of Article 17 of the DSM Directive are lex specialis to the DSA and do not affect the concept of public communication of a work. It is therefore a legal fiction that even if there is no communication of a work within the meaning of the InfoSoc Directive, it is still deemed to take place if the conditions of Article 17 of the DSM Directive are met (primarily as not new, unless "popular", OCSSPs, see Article 17(6)). This is clearly confirmed by the European Commission's Communication COM(2021) 288 final (and the aforementioned DSA recitals): <br /><br />"Article 17 is a lex specialis to Article 3 of Directive 2001/29/EC and Article 14 of Directive 2000/31/EC. It does not introduce a new right in the Union’s copyright law. Rather, it fully and specifically regulates the act of ‘communication to the public’ in the limited circumstances covered by this provision ‘for the purposes of this Directive’. This is confirmed by Recitals 64 and 65. Recital 64 states that Article 17 does not affect the concept of communication to the public or of making content available to the public elsewhere under Union law 5 , nor does it affect the possible application of Article 3(1) and (2) of Directive 2001/29/EC to other service providers using copyright-protected content. Recital 65 states that whilst Article 14 of Directive 2000/31 does not apply to the liability under Article 17, this should not affect its application to such service providers for purposes falling outside the scope of the Directive. Due to the lex specialis nature of Article 17, the Member States should specifically implement this provision rather than relying simply on their national implementation of Article 3 of Directive 2001/29/EC."Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-16648234975670158432024-03-06T07:08:34.585+00:002024-03-06T07:08:34.585+00:00It's interesting to see how courts handle digi...<br />It's interesting to see how courts handle digital rights. This decision in Spain applied a fair use-like rule, even though it's not in their laws. It shows courts might look to other countries' rules for new situations. It's good to see courts being flexible.Savastan0https://https-savastan0.cc/noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-67508551993882489582024-03-01T16:16:28.517+00:002024-03-01T16:16:28.517+00:00The authors say that "definitional confusion&...The authors say that "definitional confusion" feeds rationalisations of deviant behaviour. I don't think they have evidence for any such thing. They asked participants to define what they think "counterfeit" means and, not surprisingly, the people who gave it the broadest definition ("products which are designer inspired but are clearly different") were more likely to confess to purchasing counterfeits. Nobody is rationalising their deviant behaviour - the respondents who believe in different definitions are just admitting (or not) to completely different things.<br /><br />Sure, in between the question about defining "counterfeit" and the question about how many counterfeits you buy came the authors' definition to "guide the respondents". That definition said:<br /><br />Counterfeits are items that look identical to a genuine product with or without the official branding/logo, but are not made by the brand and may be of lower quality, for example, sneakers of an identical design to Nike Sneakers with or without the Nike logo.<br /><br />Crystal clear then. It might seek to mislead the consumer by use of the official logo, but then again it might not. It might be of lower quality, it might not. It might infringe some IP, but it might not. Hard to see why any respondent would just give up and revert to their intuitive understanding of what a counterfeit is, regardless of the definition that is there to "guide" them.<br /><br />What a load of rubbish.<br /><br />Patent attorney and deviant who sometimes shops in Aldi.<br /><br />Freddie Noblehttps://www.blogger.com/profile/17694201114706054704noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-76174678038903802612024-03-01T15:06:11.911+00:002024-03-01T15:06:11.911+00:00See the low quality of the last years papers I sup...See the low quality of the last years papers I suppose that nextyear with the new exam the old Paper ABCD would be of the flimest quality.Annoyedcandidatenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-38811236597725507762024-02-27T08:06:31.870+00:002024-02-27T08:06:31.870+00:00Please: "Luxemburgum locutum", not "...Please: "Luxemburgum locutum", not "Luxemburgum locuta".Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-31358650539421842502024-02-23T15:51:53.467+00:002024-02-23T15:51:53.467+00:00The discussion wasn’t about whether the defendant ...The discussion wasn’t about whether the defendant could exhibit the original works in the virtual world as they did in the physical world. The discussion was about whether the defendant could exploit the adaptation of the pre-existing original works without the permission of the rightholders.<br />In my opinion, the decision has two main problems:<br />- Firstly, the interpretation of the transformation/adaptation right. According to the Spanish IP ACT, the intellectual property right resulting from the adaptation shall pertain to the author of such, “without prejudice to the author of the pre-existing work’s right to license the exploitation of those results in any form”. <br />- Secondly, the decision resolved the case by applying a foreign legal concept that doesn’t exist in the IP Spanish legal framework. In Spain (like in the rest of the EU) there is no application of the fair use doctrine from the US. <br /><br />The role of law courts should be enforcement of the law, not to make new laws. <br />Patricia Riera-Barsallonoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-47502147722040477882024-02-21T14:23:27.757+00:002024-02-21T14:23:27.757+00:00Playing on words? No. Trying to make a serious poi...Playing on words? No. Trying to make a serious point? Yes.<br /><br />To help you understand the point, take a look at paragraph 78 of the decision of the OD that was the subject of the appeal in T 673/22 (the topic of a post on your blog today). As you will see, Opponent 1 had the impression that objections to the description would be handled by the OD separately from objections to the claims.<br /><br />Now how would the opponent have arrived at that impression? It did not come out of nowhere, and so must have been based upon the impressions that they formed from their prior dealings with the EPO.<br /><br />And one more thing: even if an OD is very careful to pronounce that an amended claim set meets the clarity requirement of Art 84 EPC, there could still be a problem with the OD subsequently dealing with adaptation of the description. This is because, according to one line of case law of the Boards of Appeal, the legal basis for requiring adaptation of the description is the clarity provision of Art 84.<br /><br />Like I say, whilst this may be nitpicking, it has a purpose. That is, it represents a plea for clear, consistent and logical reasoning from the EPO on the interpretation of Art 84 EPC. To date, that has (at least in my view) been sadly lacking in almost all EPO practice and case law on Art 84.Proof of the puddingnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-47976295626034312742024-02-21T13:57:03.785+00:002024-02-21T13:57:03.785+00:00I'm not sure it's that easy to distinguish...I'm not sure it's that easy to distinguish to be honest - it depends on a host of factors, including where the device/composition would be placed. For example, an ink used for tattooing can't be reused but is neither transformed, resorbed or eliminated from the body because it's implanted in a layer of the skin that prevents that. Think also about hormonal contraceptive implants that can be considered to be a device but also possess the features of a composition. There are also vaccine adjuvants that have no real effect in the body alone but when combined with an antigen, enhance the immune response to the antigen. I think attorneys need to have a proactive strategy in mind and consider all the bases when drafting and prosecuting - include suitable language and arguments where your invention bridges device and composition. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-85538495700123106022024-02-20T09:52:00.818+00:002024-02-20T09:52:00.818+00:00@Harm van der Heyden
The reference to PHOSITA in ...@Harm van der Heyden<br /><br />The reference to PHOSITA in respect of IA systems conveys the false anthromorphic perception of IA systems as « intelligent » in a human sense. « Artificial intelligence » is a metaphor but a misleading one. It is wrong to isolate IA systems from human actions. IA systems cannot act autonomously, they are just tools driven, trained, configured, tested and used by human beings.<br /><br />For a very well documented analysis, see « Clarifying Assumptions About Artificial Intelligence Before Revolutionizing Patent Law », Kim et al, GRUR International 14 Feb 2022, htpps://doi.org/10.1093/grurint/ikab174. See also AIPPI Q272 resolution §4(a)-(e) which lists human contributions to be considered for an AI system to yield outcomes of interest.<br /><br />Patent law thus needs no revolution. IA-aided inventons, however, raise challenging issues, especially in respect of the sufficiency of disclosure requirements, the definition of the skilled person for inventive step and sufficiency assessment and the « plausibility » issue.<br /><br />As to sufficiency, I am quite pleased to give you credit for your insighful article « AI inventions and sufficiency of disclosure – when enough is enough » published in IAM Yearbook 2020. I had cited it in my account of EPO decision T 0161/18 (epi-information 4-2022) in which the Board had remarkably raised ex officio an Art 83 rejection for lack of disclosure of training data.<br /><br />It is of note that the revision of the EPO Guidelines recently reported on this blog includes an addition concerning the disclosure of training data in AI systems.<br /><br />As to the definition of the skilled person, it is a fact that AI applications require interdisciplinary teams including data scientists suitably competent in the field or type of data to be used for training and specialists competent in the field of the invention. An interesting example of in-depth discussions around the skills required for AI applications can be found in the file of EP2449150 which relates to Agrosciences.<br />Francis Hagelhttps://www.blogger.com/profile/08804192496786188080noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-56577334925490465672024-02-17T18:23:08.194+00:002024-02-17T18:23:08.194+00:00'Electro-convulsive shocks for the therapy of ...'Electro-convulsive shocks for the therapy of mental disorders' is clearly a method of treatment, so not patentable. The device used for producing the shocks is clearly a device. Define it as a composition using the molecular structure of its components without referring to structure/shape, and I'll give you a patent myself.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-483640850761915922024-02-17T18:19:24.550+00:002024-02-17T18:19:24.550+00:00A substance is defined by its chemical composition...A substance is defined by its chemical composition (small molecule, macrocycle, peptied, DNA molecue, RNA molecule, polymer) either directly or by the eprocess for its manufacture. A composition is a combination of one or more chemical substances. I have no doubt that the hydrogel-forming peptide is clearly a composition, irrespective of its mechanism of action. I'm sure I am not alone in believing this to be the case.<br /><br />"A composition that is an alloy of iron and carbon having structure x with dimensions y" is clearly a device even though it is defined by its molecular composition, because its secondary structure defines shape and not an interaction between the molecules. Contrast this with protein complexes, which are not devices.<br /><br />Lacking the ability to re-use or elimination by the body are artificial definitions that show no understanding of the underlying science. Drugs that are eliminated unmetabolised may be re-used in a technical, if not regulatory, sense. Swallowed cameras are eliminated, but are clearly devices.<br /><br />"The use of a camera capsule to photograph the intestine" is not a method of treatment so the use claim is allowable. "The use of a peptide forming polymer to treat cancer" is a method of treatment so no use claim is allowable.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-65120156731617774482024-02-17T15:22:25.106+00:002024-02-17T15:22:25.106+00:00In the past I have written and filed an applicatio...In the past I have written and filed an application on the use of (a specific form of) electric stimulation for providing therapeutic effects. Although the application was withdrawn because the applicant lost interest, it would have been interesting to have the discussion on a first or second medical use in respect of this technology. I would guess that on basis of what the board now has said in T 1252/20 and on basis of the comments of Daniele Thomas, this claim could have been successful. <br />What would you think: would nowadays a claim such as 'Electro-convulsive shocks for the therapy of mental disorders' be patentable (of course when novel and inventive)?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-18408704450767728512024-02-16T22:01:34.646+00:002024-02-16T22:01:34.646+00:00What I find interesting, is the question whether o...What I find interesting, is the question whether or not a commonly available AI may take on the role of the person skilled in the art which figures in the EPO problem-solution approach. Let me explain:<br /><br />Patents are, when you look at it, a very odd market-disturbing legal oddity. The justification of the existence of patents is a deal that society wants to make with inventors: full disclosure of inventions that would otherwise remain hidden, in exchange for a limited time monopoly on said invention. <br /><br />The whole problem-solution approach is designed to test whether an invention qualifies for this bargain. The PSA delivers an objective technical problem (OTP). Then the key question is, is the claimed answer to the OTP out of reach of the general (non-inventive) population? If yes, a patent may be granted. If no, there should be no patent, society already has access to this invention. <br /><br />What if the general population has access to common AI that can solve the OTP? Society then has nil interest in granting a patent, since the invention is already within reach, thanks to AI. Nowadays still largely an academic question, but with AI's capabilities increasing, it may become more of a skilled "person" than an average human over time. If these super-smart AI's are commonly available to members of the public, then is it still justified to grant patents to inventions that are not within reach of average humans, but which are in reach of commonly available AIs? As I see it, there would be no justification for the bargain. <br /><br />Examination would then boil down over the question of what would be a fair, hindsight free, OTP. Once that is defined, it's just a question of serving that OTP to an AI with training and technology of the patent's priority date, and see if the answer rolls out. If it does, no patent. If it does not, it's an invention.<br /><br />Effectively, this means that once AI's become as smart at combining information as humans, the threshold for inventive step should rise and rise with the abilities of this AI, with the result that there will be less and less inventions that are "smart" enough to qualify for society's bargain.<br /><br />None of this has anything to do with the philosophical question whether AI's are a person or not. It has everything to do with why we have patents in the first place: a monopoly for inventions that are otherwise out of reach of the general public. AI can vastly increase the reach of that general public.Harm van der Heijdenhttps://www.blogger.com/profile/13839633909593221573noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-45505010811188025912024-02-16T18:35:12.724+00:002024-02-16T18:35:12.724+00:00@ Proof of the pudding and Anonymous of 16.02.24
...@ Proof of the pudding and Anonymous of 16.02.24<br /><br />I fully agree with Point 128 in G 1/22, that the subsequent applicant(s) may however still be entitled to claim priority since the rebuttable presumption of entitlement does not depend on whether the involved applicants acted as co-applicants at any stage. <br /><br />I would however observe that, even if the Broad Institute might be prima facie considered as validly claiming priority, the fact that one of the inventors has been squeezed out from the subsequent application, allows to raise doubts about the validity of the priority claimed for this reason alone. <br /><br />When looking at the complete case, we are clearly in the presence of a rebuttable presumption. There is ample room for reasonable doubt. <br />DXThomasnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-54149760003517329772024-02-16T18:21:00.449+00:002024-02-16T18:21:00.449+00:00@ Proof of the pudding alias Doubting Thomas
I ha...@ Proof of the pudding alias Doubting Thomas<br /><br />I have been taught and practised all along my active time at the EPO that first the claims have to be clear and concise and as such allowable, whereby they should manifestly be novel, inventive and not comprise added matter. <br /><br />Only then the question of the adaptation of the description comes into play. I have never confused adaptation of the description with clarity of the claims as such. I have also always accepted that adaptation of the description could wait until the wording of the claims has been ascertained. <br />.<br />You cannot discuss support of the claims without having first discussed their content. This is as objective as objective can be. Any other position would defy lthe most elementary ogic. <br /><br />I have left active service now 12 years ago and a lot of things might have changed. I can even accept this, but you are really playing on words, and it is getting tiring to reply to this game. <br />DXThomasnoreply@blogger.com