tag:blogger.com,1999:blog-5574479.post1213673901383344900..comments2024-03-29T09:21:58.696+00:00Comments on The IPKat: An improved Improver? UK Supreme Court moves towards a UK Doctrine of Equivalents in Lilly pemetrexed battle Verónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger109125tag:blogger.com,1999:blog-5574479.post-11709557558004004752017-08-22T07:34:16.396+01:002017-08-22T07:34:16.396+01:00I cannot but agree with Max Drei.
Lord Neuberger...I cannot but agree with Max Drei. <br /><br />Lord Neuberger might indeed have been wiser not to chose this case if he wanted to establish a UK DoE. <br /><br />Sorry for the pun, but the present decision is not an Improved Improver, rather a Worse Improver.<br /><br />It is not for no reason that the definition of equivalents was not added in the protocol on Art 69, although a proposal was made.<br /> <br />Now the patent community has to pay the price of a political compromise taken at the Revision Conference in 2000, by introducing an Art 2 talking about about equivalents, but without defining them.<br /><br />So every court in Europe can decide what it understands under equivalents. Is really this what is bringing matters forward?<br /> <br />That case law evolves is something to be wished, but not to rock the boat and bring in uncertainty as this decision has done.Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-55016406624452406272017-08-21T09:11:41.178+01:002017-08-21T09:11:41.178+01:00Who but MaxDrei can answer that last question from...Who but MaxDrei can answer that last question from Observer?<br /><br />Lord Neuberger had to choose between i) going along with the established caselaw of the English courts, and ii) joining the herd of courts outside the UK, a herd which supposes that a DoE is indispensible for doing justice. My hunch is that he judged the moment right, to give up the "hold out" stance of England against the rest of the world.<br /><br />I really dislike the DoE, because of its destruction of legal certainty, and its destruction of symmetry between infringement and validity. Given the special circumstances of this case (the drafting carelessness) I would have wished that Lord Neuberger had left the established caselaw in England undisturbed. There was no over-riding need to destroy it.<br /><br />I expect that in England, from now on, the DoE will always be argued but will succeed only once in a Blue Moon.<br />MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-12515192520803519732017-08-21T03:27:29.567+01:002017-08-21T03:27:29.567+01:00To John,
A patent is granted in view of its contr...To John,<br /><br />A patent is granted in view of its contribution to the art. When is this contribution defined? At the effective date of a claim, no more no less. Here we can see that speculative drafting has been encouraged. Is this in the interest of the patent system? Allow me to express strong reservations.<br /><br />If the UKSC found it necessary to flex its muscles, why not. But then it should have limited the effect of its judgement to its territory of competence, the U.K., and not decide in the same breath for other European countries! And this on what can be considered as a somehow disputable analysis and interpretation of the protocol on Art 69, and especially its Art 2. To decide for other countries is an aspect of the ruling which is disturbing to say the least. Can you imagine a ruling of the UKSC under the UPC, with or without the post Brexit participation of the UK.<br /><br />That the UK judgement on Epilady was raising eyebrows is one thing, but to go as far as it has gone now is not right, even for a court as respectable as the UKSC.<br />Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-79622127600200194482017-08-20T20:57:28.164+01:002017-08-20T20:57:28.164+01:00Does Max Drei's last comment (18 August 2017 a...Does Max Drei's last comment (18 August 2017 at 22:44:00 BST) show that he might not be so at ease with the decision taken by the UKSC?<br /><br />One can only support the view expressed by anonymous of 18 August 2017 at 11:01:00 BSTObservernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-74214621807613111742017-08-20T14:39:26.532+01:002017-08-20T14:39:26.532+01:00I might be wrong, but when looking at the recently...I might be wrong, but when looking at the recently published decision T 883/16<br /><br />http://www.epo.org/law-practice/case-law-appeals/recent/t160883eu1.html<br /><br />the consequences of the decision of the UK SC could be as follows:<br /><br />In T 883/16, the whole disclosure was about the use of a specific galantamine derivative in the form of Gln-1062 for use as a medicament in the treatment of a neurodegenerative or psychiatric or neurological disease associated with a cholinergic deficit.<br /><br />Here the disclosure was exclusively related to the use of Gln-102.<br /><br />If tomorrow a competitor comes up with anther galantamine derivative, e.g. Gln-X (I am not as specialist) which for instance also brings about a reduction in side effects, will he be infringer? <br /><br />The debate is open.Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-61393223379314613212017-08-18T22:44:21.657+01:002017-08-18T22:44:21.657+01:00That last comment referencing AHP v Novartis is in...That last comment referencing AHP v Novartis is interesting for its suggestion that specialist patent judges are no nonsense types, who hold patent owners to the consequences of slips in their claim drafting. Perhaps SC judges are more generous?<br /><br />Anon, you set me thinking that, in the litigation here, perhaps neither side fancied explaining to the SC the EPO habitual no nonsense brutal approach to claims to an undisclosed intermediate generalisation. That would explain Neuberger's observations on the EPO prosecution events.<br /><br />But how might it be, that neither side educated the court? The patent owner would perhaps not want to alert the judges to its drafting slip lest the judge take the easy line, and punish him for it, as in the AHP case. The accused infringer would not want the unfortunate momentary drafting slip discussed lest it lead the SC to sympathise with the patent owner, conclude that a finding of no infringement would be disproportionately heavy punishment for a moment's carelessness, and serve justice by finding infringement. <br /><br />Does any reader know how much education the SC got from the parties, on undisclosed intermediate generalisation practice at the EPO? MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-20816921099445942322017-08-18T15:51:49.516+01:002017-08-18T15:51:49.516+01:00"If the protocol questions were fixed to the ..."<i>If the protocol questions were fixed to the priority date then engineering around the claims would be easier, for example, and so there are downsides to only looking at variants at the priority date</i>".<br /><br />John - nobody said that there were no "downsides" to fixing the infringement assessment based upon the knowledge of those skilled in the art at the priority date. After all, Article 1 of the Protocol indicates that the patentee's interest in receiving a fair reward should be balanced with the interest of third parties in establishing legal certainty.<br /><br />In short, neither the patentee nor third parties should get absolutely everything that they would ideally like... but the answer should always provide third parties with a <b>reasonable</b> degree of legal certainty.<br /><br />Perhaps I am lacking imagination on this point, but I fail to see how requiring third parties to shoot at a moving target could be construed as providing a reasonable degree of legal certainty.<br /><br />Also, "engineering around" the claim would not be all that easy under the reformulated question 2 that I proposed. This is because the claim would still cover all "equivalents" that (based upon information available at the relevant priority date) <b>plausibly</b> achieve substantially the same result as the invention, and do so in substantially the same way as the invention. In other words, the only "equivalents" for which no protection would be afforded is those that would have been implausible at the priority date.<br /><br />That's not so bad, is it? Based upon the case law of the EPO, if such implausible embodiments fell within the "normal" claim scope, they would invalidate the claim (as not plausibly solving the objective technical problem addressed). Viewed from this perspective, my proposed reformulation of question 2 would simply prevent claim scope for the purposes of infringement from covering subject matter that is invalid in view of the limitations of the disclosure of the patent.Proof of the puddinghttps://www.blogger.com/profile/14209291532431506713noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-79152297507202099082017-08-18T11:01:44.288+01:002017-08-18T11:01:44.288+01:00I always liked AHP v NOvartis (2001, CoA) because ...I always liked AHP v NOvartis (2001, CoA) because the judge did not allow infringement by extending beyond the literal scope of the claim (either by constructive interpretation or original improver I cannot remember) and simply blamed it on shoddy drafting practice by the patent attorney! <br /><br />I think this decision now blows that decision out of the water and basically lets anyone involved in the prosecution of a patent to grant off the hook! Restrict your claim too much to appease an Examiner- no problem, just get a judge to decide on whether it was fair later! <br /><br />Not good for UK patent attorney profession in my opinionAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-25750008870292530072017-08-18T10:18:53.102+01:002017-08-18T10:18:53.102+01:00MaxDrei - you are now starting to delve into the h...MaxDrei - you are now starting to delve into the heart of the establishment and the elite that controls the world. At this time the establishment probably continues to identify with innovator/research side of things rather than the generics and copycat people, though distinctions are blurring, and this pro-patentee decision is in line with that. However I suspect Neuberger will have been keen to maintain the function of the Supreme Court to 'change' things as per the need, dramatically if needed. The essential thinking being that control means you need the means to change established case law/practices, etc, otherwise you don't have control any more and the principles developed by case law have taken over. I suspect this was more a demonstration of, and a reminder to us all of, the power of the Supreme Court. The acceptance of power by everyone is part of maintaining it, and that means it must flex its muscles occasionally.<br /><br />Proof of the Pudding and Observer - it is simply part of the patent system that claims cover future emobodiments (even if those embodiments are not enabled at the priority date for example). In the pharma field post-grant clinical trials might find holes in enablement (say when certain antibodies are found not to be therapeutic) and so post-grant events and findings do affect patent claims and that cannot be escaped from. If the protocol questions were fixed to the priority date then engineering around the claims would be easier, for example, and so there are downsides to only looking at variants at the priority date.Johnnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-43565168528026023262017-08-18T10:15:42.822+01:002017-08-18T10:15:42.822+01:00Kant - you are looking in the wrong place. Article...Kant - you are looking in the wrong place. Article 2 of the Protocol is a guide to the interpretation of Article 1. This means that the overriding principle set out in the Protocol is that the extent of protection should combine "a fair protection for the patent proprietor with <b>a reasonable degree of legal certainty for third parties</b>".<br /><br />Now, how are third parties to be provided with "a reasonable degree of certainty" if it is impossible for them to determine even the likelihood of (non-)infringement until after a putative "equivalent" has been made and tested?<br /><br />Remember that we are talking about the preparation and testing of embodiments that fall <b>outside</b> of the scope of the claim under any other interpretation. Thus, in contrast to embodiments falling inside of the claim, third parties would, under Neuberger's question 2, effectively be asked to conduct testing not only to determine the properties of the putative "equivalent" but also to re-define the boundaries of the very claim that they are trying to avoid. In other words, third parties would be asked to shoot at a moving target.<br /><br />Not the best recipe for "a reasonable degree of certainty" is it?Proof of the puddinghttps://www.blogger.com/profile/14209291532431506713noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-89272726752474414162017-08-17T22:42:20.372+01:002017-08-17T22:42:20.372+01:00I cannot but agree with Proof of the Pudding.
Wh...I cannot but agree with Proof of the Pudding. <br /><br />What is disturbing, especially in the pharmaceutical field, is that a slight change in one of the components can have a deleterious effect and is often not predictable. <br /><br />Hence, post grant considerations should not be taken into account when equivalents come into play. What was the knowledge of the person skilled in the art art the time the invention was filed, and as well important, what was the actual contribution to the art by the applicant? Otherwise it is too easy to bring into the description some general, purely speculative statements, in view of the actual disclosure. <br /><br />This decision should not end up in a premium for speculative drafting of applications. This would not help the patent system as a whole.<br /><br />Reading the whole decision, one cannot refrain from thinking that the UK SC was determined to consider Actavis' products as being infringing. Especially the way the file history has been dealt with leads to this feeling.<br />Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-79860092814891300372017-08-17T19:33:30.622+01:002017-08-17T19:33:30.622+01:00Proof, I do not see any temporal restriction in th...Proof, I do not see any temporal restriction in the second clause of the protocol. Why do you think there should be one?Kantnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-53437674336747408752017-08-17T10:41:25.352+01:002017-08-17T10:41:25.352+01:00It is pleasing how this thread keeps going, and wi...It is pleasing how this thread keeps going, and with intelligent and well-informed contributions. True, we shall never know what Neuberger thoughts lay behind his formulation of Q2. Me, I think he was striving for conformity to the Art 69 Protocol. For him it was important to preserve the overall reputation and integrity of the patent system, as perceived by those he mixes with.<br /><br />Who does Lord Neuberger mix with?<br /><br />As I see it, non-specialists in patent litigation and licensing (particularly his peer group, those who go to Davos or belong to the Bilderberg Group, those who could lobby politicians to get rid of the patent system, or make it "stronger") could accept the Q2 formulation as just as "fair" for patent owners as it is "reasonable" to those competing with the patent owner.<br /><br />Patent owners have a strong lobby, don't they? MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-74902013943370190552017-08-17T09:23:45.781+01:002017-08-17T09:23:45.781+01:00It is the hindsight part of Neuberger's analys...It is the hindsight part of Neuberger's analysis that creates the most uncertainty. Thus, my suggestion for "re-tuning" the decision would be to re-write Neuberger's question 2 as follows:<br />"Would the person skilled in the art, reading the patent at the priority date, find it <b>plausible</b> that the variant achieves substantially the same result as the invention and that it does so in substantially the same way as the invention?".<br /><br />This would bring the decision much more into line with the EPO's approach to assessing validity (eg as in Johns Hopkins). It would also help to afford third parties a more reasonable degree of certainty. This is because it might at least allow an assessment of freedom to operate to be conducted at the point when "variants" are first conceived, as opposed to only after they have been made and tested. Whilst that might not keep up-front FTO costs down at the level they were prior to the SC's decision, it would not have as much of a chilling effect on competition as the SC's current version of question 2.Proof of the puddinghttps://www.blogger.com/profile/14209291532431506713noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-59149310185938237102017-08-16T16:27:54.169+01:002017-08-16T16:27:54.169+01:00It will not come as a surprise that I cannot agree...It will not come as a surprise that I cannot agree with Max Drei. The decision of the SC is in no way " an optimal compromise between fair protection for the patent owner and reasonable legal certainty for those under threat from the patent". <br /><br />I am however fully agreeing with Proof of Pudding. What is indeed disturbing is that after grant, the SC put something under protection which had never been envisaged by the applicant/proprietor who deliberately accepted a limited claim. <br /><br />And that Lord Neuberger found that on the basis of what was available to the ED during prosecution it acted incorrectly is going a trifle too far.<br /><br />Re-tuning of the decision is to be hoped, or at least a decision which is not as borderline as the present one. Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-31720207729743513602017-08-16T09:06:38.415+01:002017-08-16T09:06:38.415+01:00Agreed. But it is not as if this SC Decision intro...Agreed. But it is not as if this SC Decision introduced uncertainty as to scope where there was none before. Those giving clearance opinions have always had to take account of the Art 69 Protocol. Caselaw evolves but the Protocol endures. Clearance opinions have always had to take into account how the caselaw will evolve during the life of the patent in view, to reflect the Protocol. In practice. how much more vague will they be, as a result of this Decision? A great deal, not much, or hardly at all?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-90596395787371827892017-08-15T15:56:13.230+01:002017-08-15T15:56:13.230+01:00Proof of the Pudding that is a very good point. &#...Proof of the Pudding that is a very good point. 'Immaterial variants' could also change status to become 'material' as prior art is discovered after grant and the problem that is solved changes.<br /><br />I agree with you that Patent Offices cannot be expected to factor 'equivalents' into examination, and so we are left with a situation where the claim scope only gets precisely defined once a possible infringement is identified.<br /><br />We'll never know Neuberger's inner thoughts about this. Perhaps he feels not enough licencing is happening or that patent litigation is too costly and expensive and this is his way of forcing parties to talk to each other or pave the way for compulsory cross-licensing to come into being. He could never say such things in public as his prestigious position also hamstrings him in what he can say, even though he would be highly qualified to have opinions such as these. Neuberger will have his own opinions on how best the system is served by the patent system or the courts, and this parting shot before he retires might be the radical step that he believes is needed to trigger 'vigorous re-tuning' of the whole system. I don't know<br />Johnnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-38128063778840794252017-08-15T11:50:26.628+01:002017-08-15T11:50:26.628+01:00Apart from the issue regarding untested validity, ...Apart from the issue regarding untested validity, there is another problem with "stretching" the extent of protection to encompass "equivalents".<br /><br />The courts only ever need to answer the question of whether a very specific embodiment (or at most a handful of very specific embodiments) represents an "equivalent" of the claimed invention. However, third parties and patent offices do not have the luxury of only considering such a small number of precisely defined, putative "equivalents".<br /><br />For patent offices, it is essentially impossible to assess validity for all "equivalents" of a claimed invention. This is because it is impossible to predict in advance which embodiments falling outside of the literal claim scope might, with the benefit of hindsight, prove to be "immaterial variants" of the claimed invention.<br /><br />Third parties face the same problem, with the consequence that those seeking to "design around" the claims of a patent will face far greater uncertainty regarding freedom to operate for far longer than is currently the case. This will clearly have a chilling effect on competition.<br /><br />Is this the patent system that we all want? Don't get me wrong, I am all for providing patentees with a fair reward for disclosure of their invention. However, my view is that the importance of providing that reward needs to be balanced against the importance of ensuring a reasonable degree of certainty for third parties.<br /><br />The SC's decision affords protection to "equivalents" that can only be identified as such <b>after</b> their creation, and that represent embodiments of the invention that are highly unlikely to have been properly assessed for validity pre-grant. This surely cannot be right, especially in a jurisdiction that is supposed to assess validity and infringement together. On this ground, I think that the SC's decision will need some "vigorous re-tuning" before it truly becomes fit for purpose.Proof of the puddinghttps://www.blogger.com/profile/14209291532431506713noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-73126242422226113372017-08-14T19:12:37.523+01:002017-08-14T19:12:37.523+01:00John I agree with you on "abstract" and ...John I agree with you on "abstract" and I agree that fixing the scope of protection is not the same as identifying the technical effect. I like the Neuberger evolved version of the Catnic Questions. <br /><br />Courts need a residual degree of wiggle room to do justice. Neuberger gives them just enough, but no more than that. Like the EPO's Problem and Solution for framing the obviousness debate, the Neuberger 3 Question rubric gives the parties a framework for efficient debate on scope of protection. <br /><br />In my view, the evolved Three Question routine represents an optimal compromise between fair protection for the patent owner and reasonable legal certainty for those under threat from the patent.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-35141538219814851322017-08-14T12:12:55.643+01:002017-08-14T12:12:55.643+01:00Thanks MaxDrei. I agree with the notion of allowin...Thanks MaxDrei. I agree with the notion of allowing the case law to evolve. Some of the arguments against having a specialist patent appeal court in the US are that it would allow other case law doctrines to evolve if more than one court was involved, and ultimately that makes case law richer and more dynamic, but also of increase uncertainty. There will be directions that are ultimately found to be unhelpful and so case law then has to change direction, etc. <br /><br />However in terms of what a claim is, I don't think it can be said to be the same as the 'technical effect'. Sometimes applicants will want to voluntarily limit their claim scope (for example due to an agreement with another party), or to minimise the chance of an opposition happening (I have been in that situation). And so the literal scope is important as a sign of what the applicant chose to pursue at that time (and chose to limit to in examination). I therefore think that whilst the technical effect is an important component in determining claim scope it cannot be only one. And I agree that the system needs to be thrown into this new uncertainty to decide whether we want to think in terms of a 'flag', and whether a usable test based on that can emerge. [People of course do not like uncertainty and so this will be a painful journey]<br /><br />I think the 'abstract idea' test in the US is interesting because the Supreme Court has chosen to say little about it, and it is being allowed evolve at the hands of the Federal Circuit, where it will I am sure end up being the same as a 'technical effect' test. You will be familiar with the level of criticism that that test has encountered, but I think it is a great experiment. The Supreme Court had the wisdom to be minimalist about it, and let it evolve, realising the test was too complex to be derived by simply thinking of one. A test will come into being which is found to be useful in the cases that the Federal Circuit has before it. <br /><br />Johnnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-42273665012811732062017-08-12T10:30:33.269+01:002017-08-12T10:30:33.269+01:00Thank you John for your kind remarks, but I feel I...Thank you John for your kind remarks, but I feel I must pick you up on one thing you write, namely: "The claim is............a boundary".<br /><br />For years I have invited clients outside Europe to think of the two extremes of the Art 69 Protocol as follows. The Olde English (peripheral claiming) way is using a claim to define the edge of the golf green. The ball is either on the green or it ain't. <br /><br />The Olde German (central claiming) way is to view the claim as the flag delineating the hole, which is somewhere near the middle of the green, where the "best mode" or "most preferred embodiment" lies. Find in the claim a definition of at least the Best Mode, as the point of origin of your imagined crop circle and of the judge's task of fixing the scope of protection you are going to be given.<br /><br />Here, we have di-sodium as the best mode and a claim that flags it up. Judge Neuberger's task was to decide how big to make the green surrounding the hole. He has to ask himself: is di-potassium on the green or in the rough?<br /><br />And while we are mulling over that question, by the way, doesn't the Protocol forbid thinking of the claim any longer as a clear-cut, trim edge "boundary"?<br /><br />I take your point about principle and precedent. But if you compare the USA's "abstract" test with the EPO's "technical" test, which jurisdiction makes a better job of fixing a boundary with legal certainty? Is it the Binding Precedent of an English law Supreme Court or is it the civil law Darwinian evolution of the definition of "technical" as practised by the EPO's EBA?<br /><br />Sometimes a bit of short term uncertainty (as here) is the price to be paid for keeping the overall direction of the evolving caselaw moving in the right direction. <br /><br />Or what do you say?<br /><br />MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-33016364206020395482017-08-11T13:29:10.948+01:002017-08-11T13:29:10.948+01:00I response to Anonymous of 4:57, I think you'l...I response to Anonymous of 4:57, I think you'll find that when it comes to secondary infringement we already have the situation where the infringement scope can be far removed from the literal claim language,<br /> e.g. William Hill and where the invention is 'put into effect'<br /> [http://www.mondaq.com/x/19051/Patent/William+Hill+Loses+Gamble+with+Internet+Patent]. If you have ever tried to delineate the scope of secondary infringement you'll see that is sometimes very difficult. So using literal scope as the starting point for looking at infringement is not a new concept.<br /><br />MaxDrei - remember the UK is not a civil law country, and so we don't base our law on 'principles' as much as clear rules and boundaries. The claim is not a reflection of the inventive concept, but much more a boundary. I like your legacy and roadmap comments, but I suppose am slightly perturbed as to where this road is going. Johnnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-32191930476133104702017-08-11T04:57:31.435+01:002017-08-11T04:57:31.435+01:00My foremost concern is that the court has, perhaps...My foremost concern is that the court has, perhaps, made a distinction without a difference when it distinguished between interpreting the patent and delineating the scope of protection. The first sentence of art 1 EPO reads, 'Article 69 should not be interpreted as meaning that the extent of protection conferred by a European patent is to be understood as defined by...'. While the sentence goes on to dismiss a literal interpretation of a patent, it is not without significance because the third sentence cites it as wrongful extreme for construing a patent. <br /><br />I believe that the first sentence of art 1 is also significant because, contrary to the court's view, it alludes to a causative relationship between interpreting a patent's language and defining the extent of protection. Although the sentence rebukes the literal approach to claim construction, it also implies that the process of interpreting a patent's language to define the extent of protection is the correct approach. What is important is that there is a balance between literalism and repudiating the importance of the patent claims entirely when a court undertakes this process. <br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-73025624515827806682017-08-10T09:28:27.384+01:002017-08-10T09:28:27.384+01:00Not just Colin Birss but most everybody thought th...Not just Colin Birss but most everybody thought that purposive construction was enough to do justice and satisfy the Art 69 Protocol. It still is, in engineering cases.<br /><br />But then along came a special case in chemistry. Special in many ways. A "perfect storm" ABC, if you will. Special enough to catalyze the creation of a DOE.<br /><br />First and most important, the case was valuable enough to fight up to the wise old heads at the SC. Then: <br /><br />A: The claimed molecule was limited to sodium and the infringer had the same molecule only with potassium. I learned at 12 years old how very similar K is to Na. It is the archetypal teaching example of a small increment of change. With my limited knowledge of higher chemistry, I cannot conceive of a smaller difference in between the molecule of the "accused embodiment" and the one the claim specified.<br /><br />Why was the claim so narrow? Only because of B) a moment of carelessness in drafting the application, failing to include verbatim in the application as filed the vital intermediate generalization to cover BOTH of Na and K, AND C) the extreme strictness of intermediate generalization practice at the EPO.<br /><br />As with Global Warming, the outlook in patent law is for more and heavier storms. But we are now better prepared for them, eh, with our newly minted DoE. I suspect Neuburger wanted to deliver a legacy, an Opinion exhibiting impeccable logic and beautifully readable, a law of claim construction that would serve as a blueprint and road map, not just for the UK but for patent jurists and academics all over the world. What I mean is, something as well-known and respected amongst patent jurists as the OED is, all round the world, amongst philologists and lexicographers.<br /><br />I never tire of pointing out that patent law was fully harmonized in 1973 by the EPC. Germany negotiated its EPC terms on behalf of countries like Japan, Korea and China (who adopt, lock stock and barrel German patent law thinking), while the UK negotiated on behalf of English law countries everywhere. No further harmonization is needed. What a stupendous achievement for Europe.<br /><br />And now, 40 years later, Neuburger finally shows us how to "do" infringement under the EPC, the same in every jurisdiction. <br /><br />MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-87555642597419981252017-08-09T19:16:52.522+01:002017-08-09T19:16:52.522+01:00Referring to my post a long way above, Birss J. wa...Referring to my post a long way above, Birss J. was more than happy to make a direct reference to the protocol in Ipcom.Kantnoreply@blogger.com