Imminent EBA referral confirmed on the question of using the description to interpret the claims (T 0439/22)
It is now confirmed that there will be a referral to the Enlarged Board of Appeal (EBA) on the correct approach to claim interpretation. The Board of Appeal in T 0439/22 had previously indicated that they were minded to refer a question to the EBA on how much the description should be used to interpret the claims (IPKat). The published minutes of oral proceedings from a hearing in the case last week confirm that the Board of Appeal intends to follow through on this intention.
Case background: Spiralled or gathered?
T 0439/22 relates to an appeal of the opposition decision to maintain the Philip Morris patent EP3076804. In the Board of Appeal's view, the case hinges on the question of whether the description should be taken into account when interpreting otherwise clear claim language. Interpretation of the claims in line with the description favours the Opponent's case, whilst ignoring the description favours the Patentee.
The patent EP3076804 claims a cartridge for a smoking device comprising "gathered" smoking material (e.g. tobacco). The prior art cited for novelty described a cartridge comprising smoking material that is "spirally wound". The description of the patent provided a definition of gathered that the Board of Appeal viewed as broader than the industry norm. Included in this definition were materials that were "convoluted, folded, or otherwise compressed or constricted". The Board of Appeal found that if the non-standard definition of gathered provided in the description was used to interpret the claims, the claims would lack novelty.
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| Did someone say a new referral? |
Referral to the Enlarged Board of Appeal confirmed
Questions may be referred to the EBA by Boards of Appeal "in order to ensure uniform application of the law, or if a point of law of fundamental importance arises" (Article 112 EPC). In their preliminary opinion, the Board of Appeal in this case noted contradictory case law, both on whether the description can be used to interpret prima facie clear claim language and on the broader question of whether the description as a whole can be used to construe the claims in view of Article 69 EPC and/or Article 84 EPC. In T 1924/20, for example, the Board of Appeal found that "a skilled reader of a patent claim would, for many reasons, interpret the claims based essentially on their own merits [...] This is because the 'subject-matter of the European patent' [...] is defined by the claims and only by them". By contrast, in T 1473/19, the Board of Appeal found that the claims of a patent should be interpreted holistically, taking into account the drawings and description, pursuant to Article 69 EPC.
The Opponent in the case did not agree that a referral was necessary, and the question of the referral was discussed at ViCo oral proceedings last week. According to the minutes "after deliberation by the Board the Chairman indicated that a referral to the EBA appeared necessary to allow for the Board to come to a conclusion on the decisive question of the case." The Board of Appeal will therefore issue an interlocutory decision on 10 June 2024, including its referral to the EBA.
Final Thoughts
There is of course no guarantee that the EBA will accept the referral once it is issued. The EBA may not, for example, be convinced that the case law is sufficiently divergent to justify a referral. This Kat is sceptical that the case law on the particular question of using the description to interpret prima facie clear claim language is as divergent as presented by the Board of Appeal in their preliminary opinion (IPKat). Boards of Appeal generally find that definitions in the description cannot change the meaning of otherwise clear claim language (IPKat). Furthermore, the broader question of whether the description as a whole should be consulted to interpret the claims appears less relevant to the facts of the case. The EBA may also, as it so often does, choose to amend the questions set to it. We now await the written decision from the Board of Appeal and confirmation of the referred questions. In the meantime, we are also still waiting for confirmation of the referral on the related question of description amendments in T 0056/21 (IPKat).
Further Reading
- Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (April 2021)
- Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description (Jan 2023)
- EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (March 2023)
- Construing the claims to include technical effects mentioned in the description (T 1924/20) (April 2023)
- The risk of pre-grant description amendments (T 450/20) (July 2023)
- Benefits and pitfalls of functional patent claims (and why the UK is out of step with the EPO on claim construction): Astellas v Teva [2023] EWHC 2571 (Pat) (Nov 2023)
- Will we have a referral on using the description for claim interpretation or is the Board of Appeal jumping the gun? (T 439/22) (Jan 2024)
Reviewed by Rose Hughes
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Thursday, April 18, 2024
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Posts
In view of the diverging case law on the application of Art 69 in procedures before the EPO, the referral is more than welcome.
ReplyDeleteLet’s hope that the questions will be clear enough to elicit a comprehensive decision of the EBA and not end up with a mere or less complicated and abstract answer, which in the end is not really helpful.
Let’s further hope that the EBA will not be tempted to give a further “dynamic interpretation” of the EPC. The matter is too serious for it.
May be the EBA could spend some words on the question of adaptation of the description to the claims. This topic ranges under Art 84, support, but is undisputably linked with interpretation of the claims under Art 69.
Some words on this topic in the present referral could avoid bringing more or less the production of DG1 and of the boards to a hold, should it be subject of a separate referral.
The essential question is whether, in EPO proceedings, suboptimal drafting should go against the drafter of the application or against the public.
ReplyDeleteYes and No, Yo-Yo. To my mind, the essential question goes wider. How shall the EBA lay down a path that enriches rather than empoverishes EPO jurisprudence. IThe EBA has a duty to nurture rather than weaken the practical implementation of the EPC. By that, I mean that it has to lay down case law that will encourage tribunals to do justice between the litigants and, more widely, balance the legitimate interests of patent owners and of their competitors by delivering "fair" protection for inventors with "reasonable" legal certainty for those competing with the patent owner.
DeleteActions should have consequences. Incompetent drafting of patent applications should have negative consequences. But inventors ought not to lose all protection for a new, useful and clever contribution to the art just because (say) the drafter was in the USA, conscientiously doing their best to get their client a full measure of scope due to the inventor, following best US patent drafting practice.
Boards, courts and tribunals need to be given enough "wiggle room" on claim construction to strike the balance accurately. The EPO should allow inventors "their day in court" rather than using the combined effects of Art 84 and 123(2) in prosecution to deprive the Applicant of a chance, after grant, to enforce claims of scope proportionate to the contribution to the art.
I think it not impossible for an enlightened EBA to achieve all these objectives. Fingers crossed, thumbs pressed.
Dear Max Drei,
DeleteI can agree with you that the EBA has a duty to nurture rather than weaken the practical implementation of the EPC, and that inventors ought not to lose all protection for a new, useful and clever contribution to the art. Where my agreement stops is why should the EBA actually bother about the drafting practice in the US?
I have heard often in my active time, and not later than this week during a consultation, that US applicants, or applicants first filing in the US, actually want obtain the same claims as in the US. This is alas wishful thinking.
As far as Art 84 and Art 123(2) are concerned, the way the EPO deals with those questions is certainly more severe than in the US. After 45 years of European practice, should it not be manifest that the law and rules on both sides of the Atlantic are fundamentally different? US applicants had time enough to adjust to the situation.
Courts and tribunal have all the wriggle room they need, and no national court or the UPC is legally bound to follow the case law of the EBA and of the BA of the EPO. The case law of the EBA on topics linked with novelty, added matter, and identity of invention, has one advantage: it is clear and coherent. All applicants/proprietors are on a par and when they get their patent and opponents also know where tey stand.
Daniel, I like to think that, here as in the past, there is more on which we agree than disagree. My comment on US drafting was prompted by two thoughts, as follows:
Delete1. whether methods of treatment by surgery or therapy are eligible for patent. I vaguely recall a case at the EPO where the issue was with a US Applicant with such claims and the question was whether an amendment to EPC-confom substitute claims could be inserted without offence to the relevant EPC provisions (Art 123(2) I guess). Was there not some expression of apppreciation of Applicant's predicament in that case?
2. The Golden Rule, namely, do not do to others that which you would want them not to do to you. European applicants draft in the European way and then, sometimes, they go on to file in the USA. One would hope that the US courts are not tempted to find invalid or unenforceable such patents as are issued by the USPTO, just because they fail to satisfy all the pernickety, esoteric and abstruse elements of US law that are these days listed under the heading "Patent Profanity".
The days when US Applicants demand in Europe the "same" claims as they got in the USA are drawing to a close. Applicants are more sophisticated, these days. They have come to realise that their representatives can sometimed get them broader protectionin Europe than they got in the USA, all from the same starting PCT application.
I agree that patent owners "know where they are" to a higher degree in Eiurope than in the USA, where litigation still seems to me to be as much of a lottery as ever it was in the past. Perhaps even more so, these days. That is thanks mainly to the EPO and its clear pan-European jurisprudence handed down by expert specialist patent judges. Something we can all treasure.
DeleteDear Max Drei,
I think that there are more cases in which we do agree than disagree. Sometimes our views might be different, but the discussion is always fruitful.
As far as the US application for a medical method was concerned, we accepted as an ED/OD to include a disclaimer in the claim for the medical method, a long time before such a disclaimer was declared allowable under G 1/03. The method at stake was also applicable outside the medical filed and since the original disclosure also related to such a non-medical use, the disclaimer was the best solution. The proprietor was indeed grateful for the solution to the problem which had been found.
In another case, there was no disclosure of such a non-medical use and the disclaimer was not allowable and contravened Art 123(2). Non-medical uses were obvious, but not disclosed. .
It is good to hear that the days when US Applicants demand in Europe the "same" claims as they got in the USA are drawing to a close. But I experienced this not later than last week during a consultation.
You still see US applications in which it is crawling with “may” in almost every sentence. Good luck when it will come to selecting some embodiments rather than others.
Case law of the EPO, especially in matters of disclosure might be more severe, but it has the advantage of being clear and coherent.
Daniel, I agree. The way I explain to Americans why prosecution amendments are scrutinised for added matter more strictly in Europe than at the USPTO is that the courts in the USA have not yet had many years of adjudicating "priority contests" between rival filers under a "First to File" (FtF) patent system. When two powerful corporate filers file on much the same blockbuster subject matter on interlaced filing dates, and the courts are required to decide which of them filed first, then every word of every prosecution amendment can be decisive.
DeleteUnder a "First to Invent" (FtI) patent system, it is not so decisive what wording Applicant files at the Patent Office, and in the USA there haven't yet been enough decades of case law under FtF to bring home to patent jurists in the USA that lax treatment of prosecution amendments can have the consequence under FtF that a party who was not the first to file ends up with the dominant patent position.
A nice example for academic study might be the blockbuster CRISPR-Cas9 (Charpentier et al) priority contest, ongoing at the EPO and in the USA (interference proceedings). But I expect the parties to settle: and that would be a pity, not only for this observer but also for the educational benefit which the contest in Europe could deliver to US patent practitioners.
Thinking about the reasons for having a patent system at all, it seems to me that FtF is better than FtI for (as the US Constitution has it) promoting progress in the useful arts.
Will the referral also include a question as to whether explanations given by the applicant/proprietor during pre-grant prosecution and post-grant opposition, present in the file, can -or shall- be used to interprete the claim, especially (or only?) in case such explanations rendered the claim patentable whereas without such explanation they were not? Could be explanations relating to novelty (the explanation giving, e.g., a more narrow interpretation than the, possibly not fully clear, claim term as such), to inventive step or enablement (e.g., in relation to post-filed evidence)? If such explanations were essential to get the claim granted, it seems undebatable that they shall also be used when interpreting the claims in opposition as well as in national/UPC revocation and natiomal/UPC infringement, isn't it?
ReplyDeleteDear Roel,
DeleteI would like to summarise your comment as follows: do deciding bodies of the EPO or national courts/UPC have to take into account file prosecution history or not? This is a decision which is reserved to national courts and the EPO has no say into it.
A local section of the UPC has tried recently to interpret a claim according to file history, but I do not think that the CoA of the UPC agreed with it.
The only thing the EPO can do during examination and opposition, is to check whether, depending on the deciding body, the applicant/proprietor or the opponent do not come up with diverse interpretations of the claims. This is clearly not tolerable, but happens from time to time.
As an OD is not bound by the decision of an ED or of the decision of a board in appeal upon examination, what you request does not appear feasible. The decision of a different deciding body cannot be restricted to the interpretation of claims given by a preceding deciding body.
This is why you see applications granted or patents revoked when the board does not agree with the interpretation of claim features given by the ED or the OD. Conversely, oppositions have been rejected, by setting aside the revocation or the limitation, based on a different interpretation of the claim by the board. After all, when it comes to patentability, the only benchmark we have ar decisions of the boards.
What a national court and the UPC do of all this is their business, and the EPO has, as said above, no say in the matter.
I have not yet seen a national court or the UPC accepting to base inventive step or sufficiency on post-published evidence considered determining by the EPO under G 2/21. Even some national courts claim to follow the case law of the EBA, but do exactly the opposite.
I sincerely hope that the EBA does not get entangled with considerations as you would like it. Free evaluation of evidence remains a too precious good to stifle deciding bodies or even put them in a straight jacket.
Daniel, I blinked when. I read your:
Delete"The only thing the EPO can do during examination and opposition, is to check whether, depending on the deciding body, the applicant/proprietor or the opponent do not come up with diverse interpretations of the claims."
I guess you are alluding to the job of conforming the description. I have to say that I am sceptical whether the likelihood that litigants will construe a claim differently can be restricted by EPO insistence on amendment in prosecution to achieve strict "conformity" between description and claims. I suspect in fact the opposite. The more amendments a litigator has to work with, the greater the difference between the A and B published description, the more opportunities they have to contend for different claim constructions. I like the mantra "Be careful what you ask for". Patent owners in court should have their feet held to the fire, namely what they asked for in the first place. They should be given full faith and credit for it, but also face the consequences if they were too greedy, too speculative or too vague about what they said, in their WO publication, that they had invented. A gulf of difference between the A and B publication can complicate rather than simplify patent litigation. The aim should be to resolve patent disputes short of going to court. Multiplying the number of issues for resolution by litigation only serves to encourage bullies to take their financially weaker opposed party all the way to court.
Dear Max Drei,
DeleteWhen I wrote about different interpretations of claim features, I did not at all allude to the job of conforming the description to the claims. This is not the topic of the present referral and the issues should not been mixed, although they are somehow linked. See my reply to F. Hagel.
I was alluding to a situation I have experienced from time to time, and I am certainly not the only one, in which one of the parties, in general, the proprietor, came up with a different technical interpretation of claimed features between the ED and the OD or between the OD and a board.
Another situation which can happen is, in case of parallel actions before a national court, the interpretation of a claimed feature was quite different there than that before the EPO. Not that the EPO is bound to what has happened at national level, but in both cases, it makes the argumentation of the proprietor loosing a lot of its credibility.
Such cases illustrate part of your comment: the patent owner wants to wriggle so that it can tailor its requests and argumentation so as to get the maximum he thinks he is entitled too, while at the same time he attempts to bring in some interpretation of features which he could not any longer claim.
To me, a gulf of difference between the A and B publications shows that the applicant was originally too greedy and its pretences have been cut down. That a proprietor would still like to see some of what had to be cut down play a role later is understandable, but the deciding body should not accept this. If the deciding body should overlook such an attempt, the opponent, or the other party, will draw the attention to it.
Bullies with very deep pockets, have and always will, take their financially weaker opposed party all the way to court.
This is why I never understood why the basic fee for a counterclaim for nullity at the UPC is quasi twice as high as the basic fee for infringement. I take bets that most SMEs will rather pay an unjustified license fee rather than to risk an action before the UPC.
To me the problem seems to be, that the boards at the EPO do not seem to think about infringement.
ReplyDeleteThe approach of the German courts is to me more logical: to the wording of the claims can not be added or subtracted, but the claims are interpreted in a way that the claim matter is usually(!) meant to encompass the examples given in the description. Only in exceptional situations an interpretation that none of the examples in the description is covered by the claims is possible.
After all, the patentee will usually want to protect not only the examples, but the "general idea".
If, as in this case, "spiralled" is not covered by "gathered" an infringement action should no longer be possible against a "spiralling" competitor (I am pretty sure Philips Morris will claim in infringement proceedings, that the Persian Kat is dry, while at the EPO it is wet...).
@ Fragender,
DeleteI do not fully agree with you that the boards at the EPO do not seem to think about infringement. My question is: have you ever thought why it could be that the EPO is not primarily thinking of infringement?
The EPC is for a large part derived from the original four drafts aiming at establishing a patent under the umbrella of the EEC, now EU. This was the aim of the then called Community, later European Patent. It was a complete package associating grant and post-grant procedures. The “travaux préparatoires” are full of references to those four drafts.
One should not forget that, in view of the upcoming of the PCT, and hence the need not to be swamped by unexamined patents, members states of the EEC/EU decided to restart negotiations and open the convention to non-EEC/EU states.
In order to arrive at an agreement between a large number of countries, the only viable way was to separate granting and post-granting procedures, i.e. to open the package previously considered. Post-grant procedures were subject-matter of the Luxembourg Conference of 1975. It was still born for reasons known to all, and has now resuscitated under the avatar of the UPCA and the “Unitary Patent”.
That granting cannot be completely distinguished from post-grant use is not at stake, but this is the reason for Art 69 and the Protocol on interpretation. The only, albeit indirect, reference to the scope of protection, is to be found in Art 123(3).
That German courts have a different approach is a matter of fact and is not to be queried. Before a decision on infringement or invalidity is made, German courts interpret or construe the claims (the famous “Auslegung”) as provided for in Art 69 and in the Protocol. Other courts, like the UK courts, developed their own theory of equivalents. Art 2 of the Protocol mentions equivalents but when the protocol was revised in 2000, the members states did not want to define equivalents. They wanted their jurisdictions to be free to decide what were equivalents.
When granting a patent, the EPO and its boards cannot decide taking into account how national courts might or might not interpret claims in post-grant procedures. Those are much too diverse. They have to put all applicants on a par and decide, as it their duty, what is patentable or not under the EPC and the interpretation of the EPC given by the EBA. Wat is patentable or not has to be derivable directly and unambiguously from the claims and the corresponding description. Claims do not define an invention, they define a scope of protection and not a mere “general idea”. If an applicant/proprietor wants protection for a “general idea”, this “general idea” has to be defined directly and unambiguously in the claims.
The issue in this decision relates to the case of the description used as a dictionary for a term of a claim. It is interesting but very narrow and it did not deserve a referral to the EBA.
ReplyDeleteIn contrast, the issue of the application of Art 69 to validity assessments is handled on a broad level in recent decisions T 447/22 and T 1628/21 from different BOAs, which provide consistent and sensible insights : (i) the primacy of the claims, (ii) the « red line » that unclaimed examples cannot be relied upon by the patent owner to read limitations into the claim, as this is the case for examination of applications, and (iii) the claims must be given the broadest sensible interpretation, as this is the case also during the examination of applications.
An significant implication is that disclaiming clauses or the deletion of unclaimed examples are held irrelevant to the interpretation of claims, which removes the EPO’s argument in support of its policy requiring description amendments to remove inconsistencies between the description and the claims.
On the latter issue, a referral to the EBA is already underway in T 56/21 but it seems to be at a standstill.
Dear Mr Hagel,
DeleteWhen you look at case law of the boards in which the description is used as a dictionary for a term of a claim, the result is rather poor. This was en vogue in certain boards a while ago, but did not find its way in the case law of the boards. I agree with you that it is very narrow and does not deserve a referral.
I can agree but to one of the insights you found in T 447/22 and T 1628/21.
For the board in T 447/22, support by the description is required to avoid inconsistencies between the claims and the description and/or the drawings which could cast doubt on the extent of protection conferred by the patent. The board referred to T 1149/97, Reasons 6.1.11; T 1808/06, Reasons 2; T 2766/17, Reasons 6; T 3097/19, Reasons 24; T 169/20, Reasons 1.2.5).
The board added that there is a large body of case law developed by the Boards of Appeal, with which the present board concurs, according to which Art 84 is the basis for bringing the description in line with the amended claims in order to avoid inconsistencies, cf. T 977/94, Reasons 6.1; T 1808/06, Reasons 2; T 2293/18, Reasons 3.3.5. Any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be deleted or a statement should be added that an embodiment is not covered by the claims, see e.g. T 1808/06, Reasons 2.
In T 1628/21, the board stated the following in the catchword: “The principle of primacy of the claims seems to exclude the use of the description and drawings for limiting the claims if an interpretation of the claim in the light of common general knowledge already leads to a technically meaningful result. Similarly, the principle, established by case law, according to which "limiting features which are only present in the description and not in the claim cannot be read into a patent claim" is also fully compatible with Article 69 EPC and Article 1 of the Protocol”.
T 447/22 is silent about “unclaimed” examples, and T 1628/21 does by no means say that only “unclaimed” examples cannot be relied upon by the patent owner to read limitations into the claim.
Just an example: if a claim mentions a ventilator, i.e. a device which is moving air, and the description defines a ventilator as only moving hot air, this limitation will not avoid a lack of N if all the features mentioned in the claim are disclosed in a piece of prior art.
It is well known that you are very keen to find arguments against the EPO’s policy requiring description amendments to remove inconsistencies between the description and the claims. The two examples you have given are however of no help in this endeavour.
T 56/21 does not yet exist, and a referral is not underway. In the register of EP 3 094 648 it is possible to see that, since the applicant’s reply to the suggestion of the board of a referral and the latter’s reply to third party observations, nothing has happened in the file since 4 months. I have just looked into it before writing this comment.
Should such a referral be filed, I expect a drastic drop in the production from DG1 and of the boards. I am not sure that this would be greeted positively by the EPO’s upper management and that of the BAs. This might explain why we have reached a standstill. I am thus not even sure that we will ever see a referral on this topic.
Dear Mr Thomas,
DeleteI do not want to make the EPO practice of requiring description amendments the centre of the debate. Let me only mention that the 2024 revision of GL F-IV 4.3 signals a marked improvement in this respect.
Getting back to the topic of the interpretation of Art 69 to the assessment of validity, I think it very likely that the case law of the UPC to be developed in the near future is going to play a prominent role, for the reason that today, many standalone revocation actions have been introduced before the UPC and frequently, there are parallel opposition proceedings before the EPO. This is why I expect there to be strong mutual influence between the EPO and the UPC.
Dear Mr Hagel,
DeleteI may happily acknowledge that you did not want to make the EPO practice of requiring description amendments the centre of the debate, but this is what you actually did by referring to at least one decision in which it was the topic.
I cannot see why the case law of the UPC should play an eminent role. The UPC has vis-à-vis the EPO the same standing as a national court. National courts and the UPC on the one side and the boards of appeal of the EPO on the other side, are independent and will keep their independence.
I therefore cannot see how a strong mutual influence between the EPO and the UPC will occur. The UPC may look at infringement and at nullity=validity. The EPO looks at validity=nullity. When looking at my reply to Fragender, you will see why, for historical reasons, the EPO is not primarily concerned by infringement. The interpretation by the UPC of Art 69 and its Protocol may thus take a totally different turn when it comes to infringement. If the patent is valid, equivalents will play a role. Free evaluation of evidence applies in full and diverging decisions may well occur when it comes to validity.
In case of parallel actions on infringement/validity before the UPC and opposition before the EPO, the last word on validity will be on the boards of appeal of the EPO. If a board revokes a patent any discussion on infringement at the UPC becomes moot. If the patent is severely limited, there might not be any infringement at all at the UPC.
What should be avoided are diverging decisions on validity between the UPC and the EPO. It might however be difficult to achieve this. The UPC is geared for quick decisions and oppositions at the EPO take longer, be it only because of the built in periods for filing an opposition and/or an appeal.
In a panel discussion between Sir Robin Jacob and the Chair of the Legal board, Sir Robin wanted the chair of the legal board to acknowledge/accept that the EPO will follow the case law of the UPC. The chair of the EPO never acknowledged it, he simply replied “it depends”.
During the same discussion one of the panellists considered that the number of oppositions being filed at the EPO will not decay, be it only for the much lower costs and the time opened, for instance to generic manufacturers of medicines, to keep the fate of a granted patent in limbo.
When you see the rate of survival of patents after opposition and appeal (20%), it might well be that some infringement actions before the UPC are started on the basis of a shoddily granted European patent. In 90% of the cases, the opponent brings PA, also under Art 54(3), which was available in the search files of the EPO.
Dear Mr Thomas,
DeleteInstead of referring to general statements, please consider the current practice of the parties in parallel proceedings before the UPC and the opposition division of the EPO. In the Imagotag vs Hanshow case (EP3883277), opponent Hanshow referred in the notice of opposition to the claim interpretation laid out by patent owner Imagotag in its PI appication before the UPC (see citation D16/MSW19). Hanshow took advantage of the broad interpretation used by Imagotag before the UPC to show a lack of novelty and IS. This shows the significance of consistency as to claim interpretation before infringement and validity assessment. It is noteworthy that the notice of opposition begins with an interpretation of claim features, inspired after arguments submitted before the UPC. In brief, EPO and UPC proceedings are already intertwined.
Intertwined proceedings also occur in the 10X Genomics vs Nanostring case (decision of the UPC Appeal Court of 26 Feb 2024, EP4108782)). Opponent Nanostring filed additional arguments shortly after the UPC decision explicitly based on the deb
Dear Mr Thomas,
DeleteSorry, the end of my comment was missing. This is the complete comment.
Instead of referring to general statements, please consider the current practice of the parties in parallel proceedings before the UPC and the opposition division of the EPO. In the Imagotag vs Hanshow case (EP3883277), opponent Hanshow referred in the notice of opposition to the claim interpretation laid out by patent owner Imagotag in its PI appication before the UPC (see citation D16/MSW19). Hanshow took advantage of the broad interpretation used by Imagotag before the UPC to show a lack of novelty and IS. This shows the significance of consistency as to claim interpretation before infringement and validity assessment. It is noteworthy that the notice of opposition begins with an interpretation of claim features, inspired after arguments submitted before the UPC. In brief, EPO and UPC proceedings are already intertwined.
Intertwined proceedings also occur in the 10X Genomics vs Nanostring case (decision of the UPC Appeal Court of 26 Feb 2024, EP4108782)). Opponent Nanostring filed additional arguments shortly after the UPC decision explicitly based on the debate before the UPC.
Can someone please explain how "gathered" is novel in view of "spirally wound" ?
ReplyDeleteReaders, please let me know, if PR is being facetious and I'm too thick to notice it. But, assuming that PR is serious, I will attempt an explanation.
DeleteFor me, "gathered" and "spiral" are two different concepts. Think about textiles, for example. I can wind my soaking wet towel spirally to squeeze water out of it very effectively. No "gathering" going on at all. In dress-making, and the manufacture of a pleated skirt, one must "gather" material to form the waistband. Nothing "spiral" about that at all. I have no difficulty at all to visualise the compressing of smoking material into a cylindrical shape by winding it spirally, or by gathering it together. I have no difficulty distinguishing the one process from the other and furthermore I can well imagine that smoking characteristics of the resultant respective products are significantly different.
Thank you for your explanation: I was serious and while it is clear to me that "gathered" and "spiral" are two different concepts, I still do not understand why something (e.g. a long rope) which is "spirally wound" isn't also "gathered" to some extent.
DeleteOn the other hand, "spirally wound" is certainly novel in view of "gathered".
P.S.: I am not a native English speaker