tag:blogger.com,1999:blog-5574479.post1878877470431251293..comments2024-03-29T13:59:42.629+00:00Comments on The IPKat: Not so secret agent: when Bond isn't 007 but 0.77Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger14125tag:blogger.com,1999:blog-5574479.post-54241689832937024522015-06-30T11:39:31.573+01:002015-06-30T11:39:31.573+01:00Thanks Anon at 11:27 - in the UK at least I think ...Thanks Anon at 11:27 - in the UK at least I think you are allowed to argue that the claim as construed including equivalents lacks novelty - I don't think that the EP2000 and its version of Art 69 Protocol has changed this. Other countries may take a different view. I am happy to be corrected if someone can point to contrary a decision. But the post EPC 2000 UK judgments all still seem to adopt the single construction approach.Darren Smythhttps://www.blogger.com/profile/04252776942038752516noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-33676245092954946932015-06-30T11:27:21.993+01:002015-06-30T11:27:21.993+01:00Darren, while I agree that the UK has traditionall...Darren, while I agree that the UK has traditionally construed claims such that for both validity and infringement a common construction applies, this must be subject to question in the light of EP2000 and the A. 69 protocol - are you now allowed to argue that equivalents destroy novelty? I don't think so. They are, however, to be considered under Article 2 of the Protocol.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-46286830250355348962015-06-30T11:00:34.740+01:002015-06-30T11:00:34.740+01:00Thank you all for further and interesting comments...Thank you all for further and interesting comments. I feel moved to respond to a few. I am posting this on both threads relating to this Court of Appeal decision as there is some overlap with the comments.<br /><br />To the US Anon:<br /><br />I agree that “the treatment of numbers in so far as "1" has a different meaning than "1.0" is NOT a new thing”. However, as this case shows, it is not the case “that difference is very straightforward” – as explained in the post there is no settled caselaw (and in fact no case that I am aware of) that grapples with this question of whether the number should be interpreted according to number of significant figures or number of decimal places, which gives a different answer (in this case with infringement being found in the latter case but not the former).<br /><br />Moreover, it is not the only consideration. There have been cases where courts have additionally or instead looked at the accuracy to which the measurement can be made, and those commenters who have referred to this aspect also raise an important and valid point.<br /><br />I don’t see how you think that the decision saves rather than destroys existing patents – by expanding the range there runs the risk of it embracing prior art and therefore rendering them invalid. (To the Anon who says in this regard that "claimed subject matter" and the "scope of protection" are not one and the same – I do not believe that you are correct under UK jurisprudence. Once the claim has been construed, that construction applies to validity and infringement. So under the Court of Appeal construction, disclosure of 0.9% would be novelty destroying). <br /><br />To Raoul in respect of your second comment:<br /><br />You say that “The mere fact that it is possible to circumvent the patent by simply stating that the arbitrary value of 0.77 is not infringing makes me cringe.” The value of 0.77 is not arbitrary – it was selected to be outside the scope of the claim. You refer to “Art 69 and the Protocol on interpretation” – what about the part of that which refers to “reasonable degree of legal certainty for third parties”? Do you not think that third parties are entitled to work outside the terms of the claim so that they don’t infringe? I also don’t think it is fair to say that the courts came to diametrically opposite conclusions – they agreed on many things – that the claim did not mean precisely “1”, that rounding should be taken into consideration. They disagreed on the relatively minor issue of what rounding convention should be employed; it just so happens that this made the difference between infringement and non-infringement.<br /><br />The prosecution history is interesting, but I don’t think it takes us much beyond what we conclude by looking at the claims – the 1-25% range has to be given a limiting effect. The question is only how much. Lord Justice Floyd has just reiterated that prosecution history should not be considered when construing claims (see http://ipkitten.blogspot.co.uk/2015/06/a-novel-becomes-saga-actavis-v-lilly.html).<br />Darren Smythhttps://www.blogger.com/profile/04252776942038752516noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-33690805050702170972015-06-30T09:25:31.314+01:002015-06-30T09:25:31.314+01:00It would appear to me that people are taking the c...It would appear to me that people are taking the concept of the "claimed subject matter" and the "scope of protection" as being one and the same. They are not. a claim reciting between 1 and 25% is novel over a disclosure of 0.9% but adopting the reasoning of the Court of Appeal would most likely be non-inventive over this disclosure. A bit like the German "Formstein" approach - the claim cannot be interpreted to be read on to an arrangement which is not inventive over the prior art. Of course, absent any relevant prior art, the patentee is entitled to a broader scope of protection. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-72815385564610061552015-06-30T04:51:13.131+01:002015-06-30T04:51:13.131+01:00Same points of clarity I made earlier today on the...Same points of clarity I made earlier today on the Round thread apply with equal force here:<br /><br /><br />- the treatment of numbers in so far as "1" has a different meaning than "1.0" is NOT a new thing.<br />- that difference is very straightforward<br />- The decision "may" move goalposts - but in the opposite direction of which you speak and saves - not destroys - existing patents.<br /><br />I do wonder if I am correcting the same person.THE US anonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-73901366993457690942015-06-29T21:10:23.166+01:002015-06-29T21:10:23.166+01:00Anonymous at 11:56:00:
In a sane system, no. If t...Anonymous at 11:56:00:<br /><br />In a sane system, no. If the patentee wants to catch people using 0.49999999%, he should write a claim with a lower limit less than or equal to 0.49999999%. Why should every number in a claim be changed, often unpredictably, to a different number which is "what they really meant"?<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-54646061658261652932015-06-29T11:56:34.517+01:002015-06-29T11:56:34.517+01:00Anonymous at 10:29,
Let's say the claim was f...Anonymous at 10:29,<br /><br />Let's say the claim was from 0.5% to 25.5%.<br /><br />Along comes a new party, and uses 0.49999999%.<br /><br />Infringe?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-90040560041812939352015-06-29T10:29:55.951+01:002015-06-29T10:29:55.951+01:00The judgement concludes by stating that "the ...The judgement concludes by stating that "the skilled reader would understand the patentee intended the claim to embrace all concentrations of binding agent >0.5% and <25.5%".<br /><br />Does anyone seriously think that that ANY patentee/patent attorney having that intention would write a claim with a range other than "from 0.5% to 25.5%"?<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-81727037378166773002015-06-29T09:17:37.534+01:002015-06-29T09:17:37.534+01:00This decision seems to be saying that “1 to 25” in...This decision seems to be saying that “1 to 25” in the claim really means “0.5 to 25.5” and, following the same logic, “0.9 to 25” in a claim would really mean “0.85 to 25.5”.<br /><br />So, if a claim started out as “0.9 to 25” and the patentee tried to narrow it during opposition to “1 to 25”, there could be an Article 123(3) attack, because the “true” scope of the claim has actually broadened (the lower limit moves from 0.85 to 0.5), even through the claim appears to have been narrowed from 0.9 to 1. This is clearly absurd.<br /><br />The numbers in the claim were selected by the patentee to distinguish over the prior art and should never be rounded (or more precisely, as in this case, "reverse rounded").<br /><br />What they should have done is say "0.77 written to one significant figure is 0.8, and 0.8 is less than 1, so no infringement".Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-52885818725628310002015-06-26T22:52:57.758+01:002015-06-26T22:52:57.758+01:00Posting on behalf of a commenter whose comment was...<i>Posting on behalf of a commenter whose comment was rejected for unknown reasons by the Blogger platform:</i><br /><br />May I suggest another way of looking at the matter?<br /><br />The choice of the value 0.77 by S&N was anything but innocent. Its aim was manifestly to circumvent the claimed range.<br /><br />What was disclosed in the patent was not only the range 1-2.5, but as well 0-1.<br /><br />What S&N did was thus to make a selection within the range 0-1.<br /><br />When applying the novelty criterion of selection inventions as found in the Guidelines under G-VI. 8(ii) one can decide upon the novelty of the selection. To decide positively, three criteria ought to be satisfied:<br /><br />a) the selected sub-range is narrow compared to the known range; 0.77 is certainly narrow compared to the range.<br /><br />(b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range; this point is debatable. For the sake of argument, let’s say that it is fulfilled. <br /><br />(c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention. Here the notion of purposive selection (good morning Catnic), or of a new technical teaching through the selection play a role. <br /><br />The last criterion is manifestly not fulfilled, and a hypothetical patent of S&N would lack novelty with respect of the available prior art. Hence infringement could be ascertained. <br /><br />This way of looking into the matter is certainly daring, but is it not worth thinking of it?David Brophyhttps://www.blogger.com/profile/03756548361266218916noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-34689421269877153092015-06-26T10:10:24.337+01:002015-06-26T10:10:24.337+01:00Like Anonymous (22:43), we are having difficulties...Like Anonymous (22:43), we are having difficulties in understanding how the skilled person - a chemist - would regard 0.5% as falling within a claim specifying "between 1 per cent and 25 per cent". We think that the judges perhaps focused too closely on mathematical/numbering conventions, rather than approaching it from the point of view of a chemist, who would instead look at the issue in terms of margins of error. More at http://patlit.blogspot.co.uk/2015/06/precisely-delineated-claims-and.htmlBrian Whiteheadhttp://www.kempnerandpartners.comnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-40079328032912298972015-06-25T22:43:22.512+01:002015-06-25T22:43:22.512+01:00This sort of thing annoys me. In Catnic (as I unde...This sort of thing annoys me. In Catnic (as I understand it), they had invented a frame with bits that went across and bits that went up, and claimed them as vertical and horizontal. They weren't considering cases in which the parts were nearly-but-not-quite vertical, and so there was a reasonable argument as to whether these should be included.<br /><br />In the present case, the patentees knew that they were specifyng a number to indicate the end of a range - that the number was specifically there to say how far the claim went. One therefore ought to expect them to do so. Instead, we have a judgement saying that the number they actually meant is only half of the number they actually put. This makes a mockery of the requirement that the patentees should specify the protection that they seek, it makes a mockery of having an examination process, and it makes a mockery of the requirement that the claim construction should give a reasonable degree of certainty to third parties.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-14839244674974076972015-06-25T16:59:47.996+01:002015-06-25T16:59:47.996+01:00Thanks, Anonymous -- a slip of the pen, as it were...Thanks, Anonymous -- a slip of the pen, as it were. Now duly amended!Jeremyhttps://www.blogger.com/profile/01123244020588707776noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-51214814686344366852015-06-25T16:13:23.054+01:002015-06-25T16:13:23.054+01:00NB The result of the appeal is described incorrect...NB The result of the appeal is described incorrectly in the 4.0th paragraph. In fact, Convatec's appeal (0.5-25.5%) was allowed and Smith & Nephew's appeal (1.0-25.0%) was dismissed. Anonymousnoreply@blogger.com