tag:blogger.com,1999:blog-5574479.post2832276108724830111..comments2024-03-29T06:00:27.896+00:00Comments on The IPKat: On poisonous priority: taking the debate furtherVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger87125tag:blogger.com,1999:blog-5574479.post-64585743344047826592013-07-10T08:04:06.245+01:002013-07-10T08:04:06.245+01:00Looking forward to the fresh posting from the orig...Looking forward to the fresh posting from the original authors, specially as this is one of the Kat's most-read Posts.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-83495036464550648632013-06-24T10:04:54.340+01:002013-06-24T10:04:54.340+01:00Thanks Fly, and for pointing out that Arnold J. an...Thanks Fly, and for pointing out that Arnold J. and the Division considered the same claim under the same matrix of fact and the same law. <br /><br />Yes indeed, let us now wait, with 'bated breath, for the authors' promised posting. I hope we won't have to hold our breath for too long though.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-2708400309929118072013-06-23T23:57:22.803+01:002013-06-23T23:57:22.803+01:00MaxDrei: and is actually having a hard time findin...MaxDrei: <i>and is actually having a hard time finding a flaw in it.</i><br /><br />Yup, at least in my pie interpretation of the argument, but please don't quote me on this. It still doesn't feel right.<br /><br />I don't see why the exchanges are somewhat sensitive, it's not as if anything trivial like money or careers were at stake. A cross-cultural communications issue? <br /><br />The EPO division's <a href="https://register.epo.org/espacenet/application?documentId=ETDPV6M19091FI4&number=EP09007962&lng=en&npl=false" rel="nofollow">decision</a> on the second auxiliary request was on the same claim which was discussed before Arnold J. Point 6.7 of G2/98 is cited to deny priority, and the claim is then found to read upon D1's drawings. (Page navigation should be repaired by July 2nd according to the EPO.) The pattern seems to fit the one outlined in that German book.<br /><br />I should withhold eventual further comments for the follow-up promised by the original posters.Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-68489233867848128702013-06-21T18:05:39.906+01:002013-06-21T18:05:39.906+01:00Following the news that there will be a follow-up ...Following the news that there will be a follow-up post summarising what's been said, I'd just like to add that it would be nice to clearly distinguish two possibilities, namely entitlement to priority versus avoidance of your own priority (and divisional/parent) applications. But I may well be stating the obvious, if so sorry!<br /><br />Suppose you have a first published application A disclosing X+Y together, and a second application B claiming priority from A, claiming X. The two questions are:<br /><br />1) Should X in B get the priority date of A because X+Y is in A?<br /><br />2) Should X in B lack novelty because X+Y is published in A?<br /><br />1 is what Berend Brandsma for example is saying would be unfair (I think), and I'd agree because it allows you to avoid third party's applications as well as your own.<br /><br />However, for myself at least a solution that satisfied 2 but not 1 would seem fair to the applicant of A and B, as you'd not knock yourself out merely due to arbitrary circumstances of the prosecution, but also wouldn't get you an after-the-fact way to get past other people's applications (i.e. X gets an earlier priority date even though X alone was never disclosed in the earlier application). I think 2 is the effect that Tufty and others are trying to achieve.<br /><br />(Finally, to give an example of an "arbitrary circumstance of prosecution", imagine you have a never-published application disclosing X+A and X+B. You file an application claiming X.<br /><br />First scenario, the application is granted, but post-grant X is discovered in independent prior art. You amend to sub-inventions X+A and X+B, all fine as lack of unity is ok after grant, and the first application disclosing X+A and X+B was never published.<br /><br />Second scenario, X is discovered in independent prior art before grant. To get both sub-inventions X+A and X+B you need to file divisionals, but then they are both knock each other out, so you don't get either. The difference is purely because of the stage at which the prior art was found, well after all the disclosures and filings (except the divisional of course).<br /><br />Another way to prevent this arbitrariness would be the suggestion above of having the claims of an application able to lack novelty over its description, of course ...)Tnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-20325577762513200762013-06-21T07:52:11.777+01:002013-06-21T07:52:11.777+01:00Indeed. The "pie" analogy is good visua...Indeed. The "pie" analogy is good visually, and amusingly drawn, but like all analogies, not quite fitting and therefore a bit dangerous.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-81853950078195008312013-06-20T20:22:53.158+01:002013-06-20T20:22:53.158+01:00Perhaps my whiskers are too finely tuned at the mo...Perhaps my whiskers are too finely tuned at the moment. I think any flaw comes from the possible misinterpretation based on the pie analogy.Tufty the Cathttps://www.blogger.com/profile/09803006996232662500noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-17095584735992101142013-06-20T14:09:12.393+01:002013-06-20T14:09:12.393+01:00Tufty, I was surprised to read that you suspect th...Tufty, I was surprised to read that you suspect the Fly of teasing you. The way I read him, he is coming to terms with your "divide the claim, but only in your imagination" approach, and is actually having a hard time finding a flaw in it. Fly?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-61997694945336548612013-06-20T13:23:44.114+01:002013-06-20T13:23:44.114+01:00In the Memo relating to priority issues considered...In the <a href="http://www.dvarim.fr/law-practice/Memorandum.pdf" rel="nofollow">Memo</a> relating to priority issues considered in the Munich Diplomatic Conference referenced on the K’s law blog, an example was given relating to multiple priorities.<br /><br />A first filing described a composition including chlorine and a second priority filing "claiming the use of bromine, iodine or fluorine" so that the total disclosure of both priority filings is the collective "halogen" and the memo considers that an EP application directed to "halogen" has a valid priority claim since each possible member was disclosed in one of the claimed priority filings.<br /><br />My argument would be, however, that since the collective term “halogen” is not disclosed in any of the priority filings, there is no valid claim to priority for this broader term. Only claims directed to either “chlorine” or “bromine, iodine or fluorine” would have a valid priority, which goes against what the drafters of the EPC were intending to achieve with the concept of claiming multiple priorities.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5645789413183549532013-06-20T13:03:34.323+01:002013-06-20T13:03:34.323+01:00In response to the latest comment from Mr Firefly,...In response to the latest comment from Mr Firefly, I think one part of the example is different to how I would usually see it. I would expect application A2 to claim WOTP and also disclose everything that was in A1, i.e. including SOTP, as well as some support for generalising to WOTP. This makes the definition of what has a right to priority (SOTP) and everything else (ROTP) quite clear, without the need to start talking about the Emperor's new clothes (see T 1222/11 for example). Without the disclosure of SOTP in A2, the example becomes one that is open to being made fun of, as Mr Firefly appears to be doing. An applicant who does not include the whole content of an application to which priority is claimed is, in my opinion, not doing things right and risks all sorts of problems with later amendments (which of course have to be based on the application as filed, not the priority application).Tufty the Cathttps://www.blogger.com/profile/09803006996232662500noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-34647869324175315242013-06-19T21:30:42.609+01:002013-06-19T21:30:42.609+01:00Well Fly I've read your stuff, and I'm ver...Well Fly I've read your stuff, and I'm very sure I am not the only one. Many thanks for those thoughts: I hope they will encourage Tufty and his friends, to pursue the issue further. I see that as another opportunity to plot for European patent law a course forward that can see off all legitimate criticism from the rest of the world.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-78143295729382166792013-06-19T20:15:16.887+01:002013-06-19T20:15:16.887+01:00Part 5/5
The examiner looks at Tufty's reply,...Part 5/5<br /><br />The examiner looks at Tufty's reply, racks his brains, and wonders:<br /><br />- Must the virtual dotted line lie at the boundary between SOTP and ROTP, or could it be elsewhere?<br /><br />- Should the dotted line be apparent in the claim?<br /><br />- Was the scope really narrowed? Or am I being bamboozled again?<br /><br />- Wait! Aha! I have an objection! What about double patenting (<a href="http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_iv_5_4.htm" rel="nofollow">GL G-iv-5.4</a>)?<br /><br /><i>The EPC does not deal explicitly with the case of co-pending European applications of the same effective date filed by the same applicant. However, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. [...] It is permissible to allow an applicant to proceed with two applications having the same description where the claims are quite distinct in scope and directed to different inventions. The applicant may, for example, be interested in obtaining a first quicker protection for a preferred embodiment <b>and pursue the general teaching in a divisional application (see G 2/10)</b>. However, in the rare case in which there are two or more European applications from the same applicant [...] and the claims of those applications have the same filing or priority date and relate to the same invention, the applicant should be told that he must either amend one or more of the applications in such a manner that the subject-matter of the claims of the applications is not identical, <b>or choose which one of those applications he wishes to proceed to grant.</b></i><br /><br />The claims of A1 and A2 cover overlapping subject-matter, SOTP, presumably addressing the same problem, and the representative took pains to explain that the A2 contains a dotted line neatly delianating SOTP, at least virtually.<br /><br />However, if A1 was withdrawn, like in the Nestec case, then I have nothing left to argue. No risk of overlapping coverage.<br /><br />If A1 was still pending or was even granted, then wouldn't be much either I could say, as the EPC is sorely lacking effective provisions prohibiting double patenting. I could try to sound menacing and bark like a nasty little yapper, the exact opposite of Teddy Roosevelt's "talk soft and carry a big stick". Case <a href="http://k-slaw.blogspot.ca/2010/05/t-142307-double-patenting-and-internal.html" rel="nofollow">T1423/07</a> comes to mind.<br /><br />Not very good for job satisfaction. Coming to think about this, I did see cases analogous to this one.Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-83788511045156506662013-06-19T20:14:17.116+01:002013-06-19T20:14:17.116+01:00Part 4/5
The thread diverged on a slightly aggres...Part 4/5<br /><br />The thread diverged on a slightly aggressive exchange about how the self-collision could be avoided or argued away in case of a broadened 2nd filing. I don't have access to the CIPA journal. Here's my take on Tufty's approach.<br /><br />Definitions: <br /><br />SOTP: A slice of the pie<br />WOTP: The whole of the pie<br />ROTP: The rest of the pie [without the slice]<br /><br />Scenario:<br /><br />Application A1 discloses and claims SOTP, with no mention of WOTP.<br /><br />Application A2 discloses and claims WOTP, with no mention of SOTP. Priority of A1 is claimed.<br /><br />A1 is published, and belongs to the prior art for A2 under Art. 54(3).<br /><br />Examiner deems priority of A1 invalid, and dares cite A1 against A2 alleging a lack of novelty.<br /><br />Representative Tufty argues as follows:<br /><br />The claimed pie contains a virtual dotted line, as visible as the Emperor's new clothes, that separates WOTP into ROTP and SOTP.<br /><br />The ROTP part of the claim is cut away from WOTP by the virtual dotted line and is patentable through the logic of undisclosed disclaimers, <a href="http://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_v_4_1.htm" rel="nofollow">GL H-v-4.1</a><br /><br /><i>Limiting the scope of a claim by using a "disclaimer" to exclude a technical feature not disclosed in the application as filed may be allowable under Art. 123(2) in the following cases (see G 1/03 and G 2/03, and F-IV, 4.20):<br /><br />(i) restoring novelty over a disclosure under Art. 54(3)<br /><br />[...]<br /></i><br /><br />The virtual dotted line makes the ROTP part of the claim entirely novel against A1, as it virtually disclaims SOTP.<br /><br />Then let's look at the SOTP part. The slice within the virtual dotted line coincides exactly with the disclosure of A1, and is therefore entitled to its priority. Therefore A1 cannot be cited against the SOTP section.<br /><br />Since the claim's WOTP is the exact union of SOTP and ROTP, which are both allowable, then the claim as a whole is allowable. If the examiner insists on being a jerk, I can file a claim for "SOTP+ROTP" instead of "WOTP", just to make the seam connecting visible, but I'd rather not. <br />Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-57827939544733723282013-06-19T20:13:39.774+01:002013-06-19T20:13:39.774+01:00Part 3/5
Will non-Europeans understand it?
It is...Part 3/5<br /><br /><i>Will non-Europeans understand it?</i><br /><br />It is certainly easier to grasp and accept than, say, the (former) Hilmer doctrine, or the use of late documents for 103 rejections... <br /><br />As mentioned in my first comment, this risk isn't new. But how often did such a case occur in 35 years of EPO operation? Not too often, I think. As I argued earlier,you should also consider the other elements of the case, before you concentrate on the fairness of the priority collision.<br /><br />The problem I have with grace periods of any kind is that they create an inquiry into the identity of the party who made the disclosure, and revives the question of the respective rights of the inventor and of the employer. The First-to-File system would begin to look a bit like a First-to-Invent one. E.g.: prof. X publishes his great idea in a paper, and gets hired shortly thereafter by BigCorp, who thinks it would be nifty to get a patent on X's work, and files an application. Who made the original disclosure? Prof. X or Bigcorp? Who gets the benefit of the grace period? Prof. X or Bigcorp? Can BigCorp retroactively obtain rights on X's idea? Or Prof. X's university?<br /><br />The issue isn't only academic.<br /><br />Should you be shielded of your own prior application whose priority you do NOT claim? What if the first, colliding, application was filed by BigCorp's US operation (drafted in US style and with US inventors), and the second, collided, one by its European branch? Same applicant? I've met that one. Did the left hand really did not know what the right one was doing?<br /><br />I have been mentally building a number of cases with Alice filing EP applications A1 and A3, and Bob filing A2 in between. Depending on what is disclosed and claimed and whether A1 is published or not I get outcomes that don't quite feel fair to Bob if there were to be some sort of prohibition of self-collision or grace period.<br /><br />US-style CIPs and Jerome Lemelson also come to mind.<br /><br />It seems to me that the introduction of a grace period in EP law not very likely, considering the discussions made by the <a href="http://bit.ly/19KO5wg" rel="nofollow">Tegernsee</a> group:<br /><br /><i>[The] Tegernsee heads should consider whether to mandate a closer examination of the feasibility of creating a common pool of international secret prior art under the PCT, by determining that a published PCT application will become prior art as of its priority or filing date, as well as the policy issues which such a change would raise.</i><br /><br />My translation and extrapolation: PCT applications wouldn't even need to be translated into an official language or enter the regional phase to be considered as interfering rights. One benefit: examiners wouldn't have to wait 31+ months before deciding whether that cute WO document could be used to attack novelty.<br /><br />I read this as an extension of the prior that falls under Art. 54(3), probably through an amendment to Art. 153(5), which technically could be promulgated by the Council alone under <a href="http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/ar33.html" rel="nofollow">Art. 33(1)(b)</a>, should the work of this group eventually find its way into an international Substantive Patent Law Treaty or even the PCT itself.<br /><br />An amendment narrowing the scope of Art. 54(3) for avoiding self collision would, on the other hand, or introduce a form of free-for-all into Art. 88, probably require a full diplomatic conference, and would go against the general trend implied by a broadening of the 54(3) base envisaged above.Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-7267006311804000732013-06-19T20:12:43.963+01:002013-06-19T20:12:43.963+01:00Part 2/5
We should ask the question: what is the ...Part 2/5<br /><br /><i>We should ask the question: what is the damage to society if the priority application is published?</i><br /><br />The "damage" does not come from the publication itself, since the public would be apprised of the content of the prior application whose priority is claimed at the exact same time anyway, through Rule 53(1) and the opening of the second application under Art. 128). It comes from the <i>birth of provisional rights</i> conferred by <a href="http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/ar67.html" rel="nofollow">Art. 67(1) EPC</a>.<br /><br />The publication informs the world that by maintaining the prior application you intend to obtain the rights defined claims published, either in their original form, or through amendments filed after the receipt of the search report and before publication under Rule 137(2). These rights can potentially conflict with other rights you may later effectively seek, and Art. 54(3) (under the condition of <a href="http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/ar153.html" rel="nofollow">Art. 153(5)</a>) is the provision that takes care of this.<br /><br /><i>Some have argued that for any further improvement in the priority year, another independent patent family should be created.</i><br /><br />Who are those "some"? What about Art. 88? If you create a separate family without any priority connections you run an even greater risk that one application will come to haunt the other one.<br /><br /><i>Moreover, it is not always possible to be novel relative to the priority application without losing scope of protection or without taking at least some risk that the priority application is considered novelty destroying for the subsequent application after all.</i><br /><br />Come on. If you are the one who drafts the first and second application, all you need to do is to add a tiny little bit of subject-matter to render the second application novel w.r.t. the prior one. That's not too difficult, considering how narrowly novelty is assessed. You could for instance include an <i>additional</i> statement somewhere in the second disclosure to the effect that the gizmo comprises a material selected from the transition metals, Mg, C, H, Cl, O, N, Pb, Sn, or Al. (You cover just about any industrially useful material, metal, wood, or polymer). Should you run into problems you could always pull that out of your hat as a claim amendment and solve your problem, without having surrendered any real scope. Try to picture a competitor attempting to build the gizmo out of alternatives left, such as metallic sodium or argon... I had a case once where the claim differed from the 54(3) document (by the same applicant) only by the presence of a casing around the contraption.Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5626567258943558442013-06-19T20:11:57.885+01:002013-06-19T20:11:57.885+01:00Part 1/5
I mulled over this thing over the last d...Part 1/5<br /><br />I mulled over this thing over the last days, and would like to add a few further observations that no one will read.<br /><br /><i>Was all this the intention when the priority system was created in 1883?</i><br /><br />On a formal, nearly pedantic level: the Paris Convention, which is designed to facilitate the filing of second applications in <i>foreign</i> countries, is not relevant here, at least for the reason that the EPO is not a party thereto. The present case concerns an <i>internal priority</i> (EP prio for EP 2nd filing), which is nevertheless regulated by the same Art. 87 and 88 EPC that governs foreign priorities. Those EPC provisions are close to, but not <i>identical</i> with, the Paris Art. 4.<br /><br />So, again, what was the intention of the drafters of the original Paris Union? <br /><br />I stated in my initial comment that the original drafters did not give much thought about what constituted the "same invention". This suspicion got confirmed when I discovered the February 1891 issue of <a href="http://gallica.bnf.fr/ark:/12148/bpt6k54976154/f1.image" rel="nofollow">La propriété industrielle</a>, the OJ of the Bureau International (the forerunner organisation of WIPO).<br /><br />The first three pages contain an article with the title "Portée et application de l'article 4 de la convention, en ce qui concerne les brevets". <br /><br />It was initially envisaged that an applicant could perform a simultaneous foreign filing at the other nation's consular representations. That would have brought about an improvement, as inventors practically had to sail overseas to secure foreign protection, and accomplish the administrative steps in the right sequence. But the accessibility of consulates was not good enough to make this a practical solution.<br /><br />At that point the delegates stumbled upon the idea of mutual recognition of foreign filings. Eight years after the entry into force of the Paris Union it was obvious that there was a large number of practical details that needed to be hammered out. Is a priority declaration sufficient? Essential? Or must a copy of the foreign application be supplied? Should the examination and duration of the national and foreign be linked? etc. etc.<br /><br />You will clearly see in the paper that the question of what constituted the "same invention" just began to be addressed, by mentioning <i>inter alia</i> the possible differences between British provisional and complete applications. The priority delay was shorter (6 months, or 7 months if you lived overseas), which didn't give you that much time for coming up with improvements (the 1 year delay was introduced in the Brussels text to get Germany on board). My conclusion is that in 1883 the drafters implicitly thought that the first and second filing would always be identical in content and thus represent in all cases the "same invention", whatever that means.<br /><br />Articles 4F(1) and 4F(2) were respectively introduced in the 1934 (London) and (1958) Lisbon texts. <br /><br />From the discussions on this topic I could glean in the issues of the B.I. OJ from the 1920s and early 1930s, it seems to me that it was mainly, or only, the case of "additive" improvements was considered, and not the one of a "lateral shift" or "broadened" scope. Adaptations between first and second filing could however also be brought about by conflicting national requirements, e.g.: your first filing is in a country that allows product claims, but the foreign filing is destined to a place where only process claims are permitted. The question of multiple priorities was entangled for a long time with the one of unity of invention and divisionals. I also see that the consensus was building to favour a "whole content" approach instead of the "prior claims" one.<br /><br />For 4F(2) I don't have (yet) material covering that period.Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-59545235387745853092013-06-19T19:56:56.493+01:002013-06-19T19:56:56.493+01:00From the toxic divisional front T1439/09 issued to...From the toxic divisional front T1439/09 issued today. The opponent was inspired by T1496/11:<br /><br />1.10 The appellant submitted that the priority document of the case under appeal did not disclose this subject matter. Thus, the relevant date for the assessment of novelty was the filing date of the patent application.<br /><br />The appellant further submitted that the divisional European patent application, EP No. 06011535, arising from the patent under appeal, disclosed antibodies falling within the scope of claim 20. In addition, the antibodies according to the divisional application were disclosed in the common priority document. Under these circumstances, claim 20 lacked novelty according to Article 54(3) EPC over its own divisional application.<br /><br />1.11 The appellant submitted, that the legal issues arising from this objection were not complicated and that admitting the novelty objection at this stage of the proceedings would not lead to a significant delay of the procedures.<br /><br />1.12 The board is of the opinion that a sound assessment of the question whether a divisional patent application could anticipate subject matter of its own parental patent application requires a substantial amount of legal analysis which would unavoidably lead to an adjournment of the proceedings. <br /><br />In view of the late filing, i.e. less than two months before oral proceedings were held, in accordance with Article 13(3) RPBA, the board decides not to admit the late filed objection under Article 54(3) EPC into the proceedings.Tomnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-84506456472574207832013-06-19T12:11:15.115+01:002013-06-19T12:11:15.115+01:00Thanks Joe. Art 54(3) is confined to earlier unpu...Thanks Joe. Art 54(3) is confined to earlier unpublished applications in the same jurisdiction. If somebody outside the jurisdiction filed earlier than you, you are not the first to invent, OK, but so what? We don't do "First to Invent" in Europe but your vision of 54(3) is, to me, tantamount to a "First to Invent" philosophy.<br /><br />No, I think 54(3) is to adjudicate between rival filers at the same Patent Office only. They can't all have patents with full scope covering the full area. So we need those who filed first to get first bite of the cake, and those who came later to get the crumbs.<br /><br />As to self-collision, you invoke notions of fairness, to justify poisonous prio docs and poisonous divs. Me, I struggle to see it, but I do think I can see UN-fairness, if 54(3) attacks based on your own prio doc are legitimate. MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-69887593180324916622013-06-19T10:33:17.088+01:002013-06-19T10:33:17.088+01:00@ MaxDrei
Art. 54(3) may well be intended to be s...@ MaxDrei<br /><br />Art. 54(3) may well be intended to be solely concerned with stopping double-patenting, but I often think of it in the following way. I do not know if this is consistent with the <i>real</i> intention of the provision, though.<br /><br />When filing a patent application, that there is evidence that an invention was known at the filing date. The details of this invention may not have been made available to the public, but someone somewhere knew of it.<br /><br />Thus, if someone files a later application for the same invention, it is not new, because it was known at an earlier point in time. For a slightly different invention (i.e. novel), and in terms of the second hurdle (inventive step), it would be unfair though to say to an inventor that the notional skilled person has access to unpublished patent documentation when the inventor did not. I find 35USC 103 quite unfair as it allows this.<br /><br />Now, with regard to your question of what function does Art. 54(3) perform as between applications of the same applicant? Well, quite typically, the response is that oft-used phrase "fairness to third parties." Why should an inventor get a patent for something that was known at an earlier date (by virtue of their own filing of a patent application) when third parties would not?<br /><br />That deals with priority. For the Poisonous Divisional® scenario, I think it is (only just!) fair when you look at the above principle. Consider filing two applications on the same day, both declaring a priority date established by the filing of an earlier application. One claims an invention in broader terms than the earlier application, and the other claims it more narrowly. Say the broader application did not validly claim priority, then the other, narrower application would become citable because it is entitled to the priority date.<br /><br />This is of course what, in effect, happens when you file the divisional. An unfortunate consequence of the whole contents approach.<br /><br />At least you have a choice with the Poisonous Divisional® problem. There was a comment on an earlier post in which someone stated that this is all well and good, but the thing you have to worry about "in the wild" is inventors' own disclosures.<br /><br /><br />As an aside, I have noticed an subtle difference in wording between Art. 54(3) EPC and s. 2(3) PA77. The former simply refers to the content of European applications (this must mean <i>all</i> applications. The latter refers to matter contained in applications for <i>other</i> patents. I think either in this thread or another a question was raised as to whether a European application, which, at its date of filing, validly declares a priority date for matter disclosed therein, but whose claims are not entitled to priority, can anticipate itself. I have not (i) seen any comments saying it can't and (ii) I can't find any authority that definitively states otherwise. Help?!<br /><br />I can see now that this discussion has hit around 70 comments. I think this is not a case of beating a dead horse - I think it's both a great reflection of the enthusiasm of all commenters for what (for IP!) is an interesting, foundational and somewhat philosophical topic and emphasises that forums for discussion such as the IPKat are invaluable. Try getting colleagues talking about this sort of thing at the bar after work!Joenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-25200011756884451832013-06-18T22:24:09.405+01:002013-06-18T22:24:09.405+01:00Quick reaction to B Brandsma above is that we must...Quick reaction to B Brandsma above is that we must be careful to keep the discussion free from obviousness issues. 54(3) is not about obviousness, more about adjudicating between rival filers who are all inventive over what has been made available to the public. So, we address novelty tests, photographic, directly and unambiguously derivable, and forget "contribution to the art" and other litmus tests of patentability, for all we have to settle is who gets what scope, amongst rival filers who are all inventive. <br /><br />54(3) is often said to be the antidote to double patenting. For that job, it has to adjudicate between rival filers. What function does it perform, as between parent and divisional of the self-same Applicant? To my mind, that is the issue here. MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-87436533496152793322013-06-18T19:14:20.438+01:002013-06-18T19:14:20.438+01:00In response to the further anonymous comment, if y...In response to the further <a href="http://ipkitten.blogspot.com/2013/06/on-poisonous-priority-taking-debate.html?showComment=1371565325271#c3282081873812985075" rel="nofollow">anonymous comment</a>, if you care to raise a point that is relevant to the problem in question I will see whether it is worth answering. If it is, I am sure either I or somebody else will have a go. Alternatively, of course, you could just be trolling.Tufty the Cathttps://www.blogger.com/profile/09803006996232662500noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-32820818738129850752013-06-18T15:22:05.271+01:002013-06-18T15:22:05.271+01:00News just in: Tufty admits to not being infallibl...News just in: Tufty admits to not being infallible, but is still too important to be bothered with queries raised by unimportant folk.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-60049560209176632862013-06-18T15:21:37.558+01:002013-06-18T15:21:37.558+01:00At I'm a robot-17 June 2013 17:16:00
Realisti...At I'm a robot-17 June 2013 17:16:00<br />Realistically the situation is rather more likely that the inventor found that 4 and 7 worked, and then considered that 2 to 8 should work, and then added a bit extra and claimed the nice round numbers of 1 to 10;<br />Let’s look at what he then really disclosed: He disclosed 4 and 7, and he disclosed the opinion of the expert that 1-10 might work. That’s his technical contribution to the world, nothing more, nothing less.<br />So now it turns out that 2 is already disclosed. And all of a sudden his expert opinion of what might work changes from 5-10. Yeah, sure….<br />He’s entitled to change his mind of course, but the (perhaps undefined) technical reason why the expert believes that 5 to 10 should work must by definition be different from the technical reason that made him believe that 1-10 should work.<br />Ergo, the 5 to 10 must be based on a new technical disclosure, so it is logical that there is no priority for this.<br />Should his priority document be held against him? That’s a different matter. I see this as a risk he willingly took, and which then backfired.<br />The inventor would argue that he has placed a claim for 1-10, and he is fully entitled to narrow that.<br />But…his true contribution to the art was only 4 and 7. He is entitled to get protection for that. He is entitled to some generalisation as well, based on his expert understanding of the subject matter, but must accept that generalisation carries risks. In short, since he only technically disclosed 4 and 7, anything more is an, arguably undeserved, bonus.<br />A patent application is also a technical document with a technical teaching. Lawyers tend to forget that sometimes, <br />With NESTEC it is even worse. At priority date they considered a feature to be technically important; and later found out it wasn’t. Why then should they get legal priority for the later technical finding that a feature wasn’t important?<br />I would really like to see some reasoning there.<br />And they could have gotten close to what they wanted if the’d continued the prosecution of the priority filing. Instead they chose to play the system, and they lost. They overbet their hand, simple.<br />I can understand that people want milk the system to its max for the benefit of their clients, but realistically, deep in your heart, do you really think it would have been fair if NESTECs claim to priority had been allowed?<br />Berend Brandsmanoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-49029241421319339342013-06-18T14:30:43.990+01:002013-06-18T14:30:43.990+01:00In response to Joe's comment above, my thought...In response to <a href="http://ipkitten.blogspot.com/2013/06/on-poisonous-priority-taking-debate.html?showComment=1371550293943#c3363555650935246328" rel="nofollow">Joe's comment</a> above, my thoughts are that you might be right. If you are, the judgment in Nestec is flawed in more than one way. However, it doesn't really matter as the main point is about whether a narrower priority application can in principle anticipate a broader later application (see <a href="http://www.bailii.org/ew/cases/EWHC/Patents/2013/923.html#para111" rel="nofollow">paragraph 111</a>. It looks to me like the point was not even argued properly.Tufty the Cathttps://www.blogger.com/profile/09803006996232662500noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-51570039949662434492013-06-18T14:23:29.840+01:002013-06-18T14:23:29.840+01:00In response to this anonymous comment, I am not un...In response to <a href="http://ipkitten.blogspot.com/2013/06/on-poisonous-priority-taking-debate.html?showComment=1371548978825#c4623155189941259599" rel="nofollow">this</a> anonymous comment, I am not unable to accept there are questions over the idea, and readily admit I may be wrong. I just don't have the time/inclination to respond to queries where the example facts don't even apply to the problem in question.Tufty the Cathttps://www.blogger.com/profile/09803006996232662500noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-8799718014210585072013-06-18T11:49:30.507+01:002013-06-18T11:49:30.507+01:00I may have missed the point but then this discussi...I may have missed the point but then this discussion does not comply with Arts. 84 and 123(2) EPC<br />I'm a robotnoreply@blogger.com