tag:blogger.com,1999:blog-5574479.post4778443281707703223..comments2024-03-28T09:05:22.006+00:00Comments on The IPKat: EPO Board of Appeal toes the party-line on description amendments (T 1024/18)Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger49125tag:blogger.com,1999:blog-5574479.post-23720528661043884702023-03-27T10:00:05.984+01:002023-03-27T10:00:05.984+01:00On a related point, is anybody else frustrated by ...On a related point, is anybody else frustrated by the Examining Division's increasing propensity to intervene and add amendments of their own to the text intended for grant issued alongside the 71(3) communication? I am yet to see a single case where the Examining Division has made its own amendments without introducing a least one typo, more commonly dozens. I am rejecting almost every text intended for grant that comes by me these daysAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-8801366556232547772022-04-16T20:22:53.074+01:002022-04-16T20:22:53.074+01:00Unfortunately, if the examiner does not notice tha...Unfortunately, if the examiner does not notice that a claim has no support in the description, it is not a ground of revocation if lack of support only becomes apparent after the opposition period has expired. <br /><br />In an infringement action where the client was alleged to have infringed three German-language EP patents, a feature of claim 1 of one patent was an analogue to digital (A/D) converter, a technology I happened to be thoroughly familiar with from my pre-patent career as an electronics engineer and pre-patent attorney career as a patent examiner examining electronic circuitry. It was immediately apparent to me from drawing out the arrangement of claim 1 that the claimed A/D converter related to a completely different type of A/D converter from the one described and illustrated in the description, and that its only support in the description and drawings was in the shorthand form of consistory clause. It did however read on perfectly to an unclaimed A/D embodiment in another of the family of patents. I can only presume that the claims must have got muddled up before filing, and the inventor, who had presumably checked the draft, didn't understand the patentese of the claim language and assumed that the patent attorney knew what he was doing. Because the claim itself, taken in isolation, was perfectly clear, I assume that the EPO examiner hadn't felt it necessary to refer to the description. Advice from our legal team confirmed that this lack of support was not a ground of revocation. So support for claims in the embodiments themselves rather than just via the statement of invention, is something that the patent offices ought to check for during examination. Otherwise the applicant will be granted a monopoly without having provided the public with a proper teaching of how to carry out the invention. Ronnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-71592720662498421782022-04-16T19:41:23.611+01:002022-04-16T19:41:23.611+01:00A few points about UKIPO practice from my personal...A few points about UKIPO practice from my personal experience as an examiner in the 1970's and 80's. <br /><br />The former 1949-Act practice of examiners meticulously reading the entire description and checking its technical accuracy, changed under the 1977 Act, when examiners were, as set out in the publicly-available Manual of Patent Practice, instructed to only read as much of the description at the search stage as was necessary to understand the claims to allow them to carry out a search. Nor were examiners expected to give the description a thorough going-over at the examination stage. The object seems to have been to make the office more efficient (by spending less time on examination to increase productivity and meet performance targets). A couple of decades ago there was even a proposal in a consultation document (not adopted), that amendment of the description should no longer be allowed, in order to save examiners spending time and effort in considering them. From memory, it was alleged to be based on an embryonic EPO proposal that I never did manage to find any trace of. This was the consultation which resulted in omnibus claims ceasing to be allowed. So conforming the description to the claims, which would affect an examiners' productivity, was clearly not high on the Patent Office's objectives, which seem to have been directed to reducing the amount of intellectual effort expended during examination in order to maximize case throughput. . <br />Ronnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-18547396194071426272022-04-16T19:26:58.773+01:002022-04-16T19:26:58.773+01:00Agreement between the description and drawings of ...Agreement between the description and drawings of an embodiment and the claims, does not necessarily clarify the scope of the claims, especially where the patent was granted in a different language from the language of legal proceedings and translations have to be relied on in litigation. I described real-life problems of this nature I had personally encountered in an article that was published in the December 2003 CIPA journal (Pilgrim step-like backwards reproduction: some potential translation problems with the proposed Community patent), highlighting what can happen when there is no exact unambiguous translation of even a word as simple as the German EIN, which can be translated as either "ONE" or "A" in English. <br /><br />Agreement between the claims and description of the German text was of no help in providing legal certainty in the English-language proceedings, where the client's "TWO" would not have infringed the "ONE" of the granted English claims (or the French "UN SEUL") published by the EPO, but might have infringed the "A" of the translation filed with the UK court during preliminary proceedings. <br /><br /><br />The embodiment only described and illustrated a single "EIN " of the item in question.<br /><br />As the action was settled before trial, the question of whether the claims published by the EPO or the claims subsequently filed with the court was never decided, but it raised the possibility that, had the "A" claim version been accepted for the UK, and the French "UN SEUL" version accepted for France, client's product featuring "TWO" would have infringed in the UK , but not in France. Ronnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-4844959465109908492022-04-15T12:13:40.482+01:002022-04-15T12:13:40.482+01:00MaxDrei and it is important that well informed nat...MaxDrei and it is important that well informed national appeal judges are picked on the cases the Enlarged Board takes!John Foxehttps://www.blogger.com/profile/06268575847386210874noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-88485445276400214522022-04-15T12:08:29.636+01:002022-04-15T12:08:29.636+01:00Resistance to amending the description is much mor...Resistance to amending the description is much more to do with saving attorney time and cost than in altering the scope of the claims! The former is a given. The discussion on here shows the latter is completely unpredictable.John Foxehttps://www.blogger.com/profile/06268575847386210874noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-59437449733072006232022-04-14T16:59:08.791+01:002022-04-14T16:59:08.791+01:00Daniel, take it as a compliment, that everybody is...Daniel, take it as a compliment, that everybody is trying so hard to persuade you. What this doggedness suggests to me is that they all cherish having you as a debating adversary, and perhaps suppose that "one more push" might succeed in giving you second thoughts. Be happy with that. But I'm with you, in thinking that this thread has by now run its course. <br /><br />For me, it is important that experienced national patent judges serve on the EPO's Enlarged Board of Appeal and actively engage with the cases that get there. Given the situation on "conforming the description", world-wide, I think that sooner or later a case will come up for review by the EBA. And then there will be many "amici curiae" who will make their written submissions to the EBA. That will be an interesting phase in this debate, won't it?Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-31143970165625473602022-04-14T14:00:56.511+01:002022-04-14T14:00:56.511+01:00Dear Proof of the Pudding,
Why are you insisting ...Dear Proof of the Pudding,<br /><br />Why are you insisting this heavily? Do you want to have the last word? <br />You can have it. It does not bother me in the slightest.<br /><br />I have replied to the various comments, sometimes quite in detail, so what else do you want? <br />I could exactly claim what you are claiming, but it does not help any further, so I will refrain. <br /><br />That my comments were not to your liking, is a matter of fact and is actually irrelevant for me.<br /><br />Anything can be argued, but one thing should not be forgotten, at the end of the day it is the EPO which will decide on policy matters under the control of the BA. One, in my opinion odd decision, will not change the policy. It is high time to accept this. DXThomasnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-35600746830913909712022-04-12T21:38:20.143+01:002022-04-12T21:38:20.143+01:00In spite of what I have said before, I need to rep...In spite of what I have said before, I need to reply to A Nony Mouse.<br /><br />Looking at the pemetrexed case, should there have been in the application examples of other salts, then a more general claim to salts of pemetrexed or even just pemetrexed would have been perfectly allowable. The problem is that there were none. And that is why the examiner refused the generalisation and rightly objected under Art 123(2). At the same time it is where the misery starts with description which has not been properly adapted to the claim. <br /><br />In the pemetrexed disodium case, it certainly would not be requested to say in the description that "any embodiments other than the sodium salt are clearly marked as being “not part of the invention” or outside the scope of the claims or however one phrases it". <br /><br />This would be manifestly excessive. But if the only contribution to the art is pemetrexed disodium, any statement which implies that other salts could be used is to be deleted in order to bring the claims and the description into coherence. <br /><br />This is exactly what the applicant did not want to do at the time! He actually wanted a description covering more than what he had actually contributed to the art. At the same time he did not disclosed anything more than pemetrexed disodium. <br /><br />With a description strictly limited to the disclosed example, pemetrexed disodium, I fail to see how it could hinder any national judge to apply the DoE valid in his jurisdiction. <br /><br />To sum it up, I still cannot see where the problem is in adapting the description to what is actually claimed. To this effect any statement implying that the claims may cover something else than what the applicant contributed to the art ought to be deleted or marked as not being part of what is claimed. This again does not hinder any national judge from applying the DoE theory he thinks fit. <br /><br />I leave A Nony Mouse the responsibility of what he has said about the deep confusion and uncertainty and the alleged chaos in matters of Art 69. To allege that the Boards seem to be in a complete fog is really far-fetched, not to say excessive.<br /><br />The line of the boards is clearly to say that Art 69 is of the domain of the national judge, and should it, by exception, be in need to be applied, when the claim as granted is deeply unclear, or when applying Art 123(3). In both cases it has to be applied with great caution. <br />For instance, Art 69 cannot be used to give a feature in a claim different from that which results from the wording of the claim, cf. T 794/19. <br /><br />It is very clear that Art 123(3) does not extent extend to equivalents, whatever definition they might have, but should be limited to what has been directly and unambiguously disclosed. There again, I fail to see how a national judge might be hindered in its application of the DoE valid in his jurisdiction. DXThomasnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-280438053725684242022-04-12T17:26:04.095+01:002022-04-12T17:26:04.095+01:00Part 2 of 2
Now let us imagine a second universe ...Part 2 of 2<br /><br />Now let us imagine a second universe in which the description is instead amended to obliterate any reference to the non-sodium embodiment. Now, the EPO would say, the description is consistent with the claims because it does not contain any text which is contrary to their clear wording. But what is more relevant here, compared to the first universe, is what it does not say. It does not say that non-sodium embodiments are outside the claims, or that they do not form part of the invention. Now in this universe do we not have an even better illustration with the zealous EPO approach? What is to stop a court from determining here that non-sodium embodiments do fall within the claims, or that they do constitute equivalents? There is nothing in the specification telling them otherwise. There is no file wrapper estoppel providing a context in which the court could say “well, you deleted those embodiments, so you must have abandoned them” – and even if there were, the applicant could easily argue that the amendments or deletions were only made in light of the (they might say, excessively strict) EPO approach to added matter or the (they might say) peculiarities of EPO practice on description amendments, without being intended to say anything at all about the claim interpretation, being faced with the choice of complying with these facets of EPO procedure, despite their disagreement, or not getting a patent at all. So here, again, even though the description has been “adapted”, the courts still have freedom to determine that the claims provide protection beyond the scope of the sodium embodiment.<br /><br />All of this, to me, illustrates that adaptation of the description cannot serve to increase certainty about what the claims do and do not cover – and leads to the perverse conclusion that deletion of “conflicting” statements altogether might serve the goal of complying with a strict interpretation of EPO practice while nevertheless putting the patentee in a more favourable position than if they had not adapted the description at all.<br /><br />On a final point: to me, all of this speaks to a deep confusion and uncertainty in the heart of the EPO as to the roles of Articles 84 and 69. If one looks into the case law for citations of Article 69, the result is total chaos. The Boards are, it seems to me, completely unable to come to a common position on whether the scope of protection under Article 69 EPC is a legitimate consideration in post-grant proceedings at the EPO or whether it is solely the domain of national courts; and, if it does form part of the competency of the EPO, the Boards seem to be in a complete fog as to how (if at all) it interacts with the requirements of Article 84 EPC. All of these discussions around the relevance of the description seem to be symptomatic of that broader debate.<br />A Nony Mousenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-55409800313281500062022-04-12T17:24:38.251+01:002022-04-12T17:24:38.251+01:00Part 1 of 2
Picking up from the line of comments ...Part 1 of 2<br /><br />Picking up from the line of comments relating to permetrexed disodium above - <br /><br />I often perceive that there is a tendency from the side of the EPO to assume that there would be no problem if only the patent was drafted "better" in the first place. This is an assessment that is very easy to make with hindsight but only rarely possible in advance. At the outset of the drafting procedure the Applicant themselves might not know exactly what form the eventual commercial product is going to take, it is impossible to know for sure what prior art might emerge during the EPO's search unless the drafter happens by chance to carry out their own search with exactly the same parameters and keywords in exactly the same databases available to the EPO examiner, and it is impossible to know for sure how the EPO examiners will view any possible amendment from the point of view of added matter, sufficiency, novelty or inventive step. Drafting is an art, not a precise science. (In this context, on a slight tangent, surely I can’t be the only practitioner who finds the standard EPO language “Contrary to the requirements of the EPC, document D1 is not identified in the description…” unnecessarily accusatory in tone when included in a Search Opinion or first Examination Report, as though criticising the drafter for their lack of clairvoyance?)<br /><br />In the permetrexed case the amendment to the sodium salt was made in reply to an objection of added matter. For whatever reason (which is unknowable from the EPO file) the proprietor chose not to contest this. Perhaps they could have contested it and maybe even prevailed depending on the Examiner and depending on the persuasiveness of the representative’s hypothetical arguments in respect of a broader claim scope. But it does us little good to speculate here.<br /><br />What is relevant is to think about how the permetrexed case might have played out if the description had been adapted aggressively in line with EPO practice as proponents such as Mr Thomas advocate.<br /><br />Let us imagine a first universe where the description is amended so that any embodiments other than the sodium salt are clearly marked as being “not part of the invention” or outside the scope of the claims or however one phrases it. In that universe, the argument from the EPO’s point of view is, then, that there is no uncertainty about whether the claims protect such embodiments or not. However, this seems to me to overlook the fact that although Article 69 says that the description shall be employed to interpret the claims, it does not say that interpretation based on the description shall be determinative. And Article 2 of the Protocol makes it clear that due account shall be taken of equivalents – without defining whether or not the description is relevant for determining what those equivalents might be. So even in this universe, even if the description is amended to mark the non-sodium embodiments as not being claimed, isn’t there a flaw in the logic? Don’t Article 69 and its Protocol leave it open to national courts to decide – notwithstanding any indications in the description – that such non-sodium embodiments are indeed within the claims, or least equivalent? After all, neither Article 69 nor the Protocol place any real constraints on national judges as to the extent to which they should pay heed to the description, or how exactly they can determine what is or is not an equivalent, or whether they are allowed to bring external evidence or knowledge to bear in making that assessment.<br />A Nony Mousenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-86520767703557575892022-04-12T17:14:13.375+01:002022-04-12T17:14:13.375+01:00Dear Daniel,
CL II.A.5.1 not only gives an genera...Dear Daniel,<br /><br />CL II.A.5.1 not only gives an general interpretation of art. 84 EPC last sentence ("it is not admissible to claim something which is not described"), which is more in line with my interpretation, but also cites four decisions at CL II.A.5.3 (Bringing the description into line with amended claims).<br />The first two decisions (T 977/94 and T300/04) relate to the inclusion of claimed features in the description and the third decision (T 298/02) is in favour of the applicant, so they are substantially irrelevant.<br /><br />On the other hand, the last decision (T 1808/06) is considered the keystone on deletion of unclaimed subject-matter (or at least it was until T 1989/18 came up).<br /><br />However, if you read the whole T 1808/06 decision (9 pages, wow!) you will notice that the reasons for the decisions (a good 3 pages) focus on art. 69(1) EPC and do not analyze art. 84 EPC, apart from page 5, second paragraph, which is just... a copy/paste of the Guidelines!<br /><br />In other words, the Case Law 2019 on deletion of unclaimed subject-matter is just a copy of the Guidelines.<br /><br />I hope that the EBoA will take these cases on-board, though I have some doubts after G 3/19 and G 4/19.<br /><br />At any rate, I agree with you...that we disagree on this matter.Patent Robotnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-26836138351748695992022-04-12T16:59:41.119+01:002022-04-12T16:59:41.119+01:00To all the other commenters,
In my reply to Paten...To all the other commenters,<br /><br />In my reply to Patent Robot, I made clear what my position is.<br />I just looked at the case law and its different ways to look at the requirement of support of the claim in the light of Art 84 as it stands. <br /><br />Anything which can allow interpretations other than what can be deduced by the person skilled in the art from the claim should be deleted or characterised as not being claimed. This is independent of how a national judge might look at a claim. <br /><br />That an applicant might not necessary want to delete parts of the description is understandable, but where is the difficulty then in stating that certain parts of the description are not covered by the claims? In a case as flagrant as in T 121/20 it is simply not tolerable to leave such a contradictory statements. The same applies when granted claims are combined and then the optional character of the subject-matter of a former dependent claim is deleted. <br /><br />The day Art 84 is amended and the EPC makes it clear that no adaptation of the description is required whatsoever, then I will agree with the commenters. But then, like in the US, the behaviour of the applicant during grant will have to be scrutinised. One or the other, but not both. <br /><br />What other offices do is actually irrelevant, be it the UKIPO or any other office. Whether different “national courts are perfectly capable of producing inconsistent decisions for reasons that have nothing to do with whether or not the description has been adapted to a "strict" standard””, is not a reason to simply ignore what Art 84 says. <br /><br />There have always been different way to handle the basis patenting requirements in different jurisdictions and there is nothing bad at it. What matters in view of these different ways, is exactly to make clear what is claimed and what is not. <br /><br />Beside the fact that the justification is not weak, this point is actually irrelevant. It is the justification given by the boards and it has to be taken for what it is. <br /><br />When quoting the pemetrexed case, my sole aim was to show that it is actually the non-adapted description which allowed the later interpretation of the claim. The contribution to the art was pemetrexed disodium + vitamin B 12 and nothing else. This should not be forgotten. My aim was never to go into discussions on file-wrapper estoppel, although this is what the District Court in The Hague did, or post filed evidence or plausibility. I simply noted that the contribution to the art was limited to pemetrexed disodium + vitamin B12, and all the various possibilities mentioned in the introduction of the description was no more than guesswork. <br /><br />That the UKSC has come to a different conclusion, is its good right. However, when you read Lord Neuberger’s decision it is the general statement left at the beginning of the description which allowed to draw much more out of the patent than what the contribution to the art at the date of filing. This is why he found it necessary to tell the examiner in charge that he should not have raised an objection under Art 123(2)! That went way too far. <br /><br />I already said it in my reply to Patent Robot, all commenters in favour of T 1989/18 has not managed to convince, and I did neither managed to convince them the other way round. At least I hope that we can all agree that we disagree, but we should leave at this.<br /><br />A late French union leader said once, that everybody should know when to end a strike. I would allow myself to paraphrase him in saying we should know when to end a discussion which is going in circles. I believe, that we have reached this point. <br /><br />I wish you all a good Easter holiday. DXThomasnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-47465765578947867672022-04-12T15:50:54.214+01:002022-04-12T15:50:54.214+01:00Dear Patent Robot,
I have no competence at all to...Dear Patent Robot,<br /><br />I have no competence at all to say whether all patent offices in the world are wrong or it is just a mistake of the EPO. <br /><br />I am just analysing, now for many years, the case law of the boards and the way they interpret the EPC.<br /><br />My conclusions are based on the existing case law, no more, but no less. <br /><br />In my humble opinion T 1989/18 is a one-off and will most probably stay a one-off when seeing the reaction of other boards. I doubt that there will be a referral to the EBA on this point, and should there be one, it most probably will not be from the president. But I can accept to be proved wrong. <br /><br />It is your good right not to agree with the case which does not agree with T 1989/18, but as long as the main line of case law is as it is, you may do what you want, nothing much will change. <br /><br />I beg to disagree with you when you claim that other decisions do not enter into the details of the support requirement of Art. 84 EPC and just copy and paste the Guidelines. In have never seen a decision in which a board simply copy/paste the Guidelines. When parties to appeal mention the Guidelines, the reaction is quite clear: the boards are not bound by the guidelines. <br /><br />In T 2613/18, the board held that the requirement of "support by the description" reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported or justified. If you think logically, the conclusion has to be that anything which does not correspond to the claims as granted or amended and which can instil doubts about what is actually claimed should be deleted. No more but no less. <br /><br />In T 121/20, the board made it clear that it did not agree with the position taken in T 1989/18. It reminded that the “provision of Article 84 EPC relates to claims in general and actually covers three distinct requirements on claims, namely their clarity, their conciseness and their support by the description. According to the present board, the criterion that the claims be "supported by the description" is not in any way subordinate to the requirement of "clarity" of the claims, but is a requirement of its own (as is conciseness of the claims)”. <br /><br />When the claim relate to "a nicotine-free liquid material", but the description states that the "the liquid material includes a tobacco-containing material [...] and may contain nicotine", than clearly the description is at odds with the claim. This is certainly the case when one reads the claim and the description with a will to understand both of them and not to misunderstand both of them. To me it is quite normal with Art 84 as it stands that this contradiction has to be removed. <br /><br />The Board could have remitted for the adaptation of the description, but the absence of the proprietor brought the board not to be lenient and it applied, here as well, a long line of case law and the patent was revoked. <br /><br />I realise that I will not be able to convince you, and neither will you, so I hope that we can at least agree that we disagree and leave it at this.DXThomasnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-26894894572700394992022-04-12T13:23:43.295+01:002022-04-12T13:23:43.295+01:00Dear DXN Thomas
Thanks for the information regar...Dear DXN Thomas<br /><br />Thanks for the information regarding recent BOA decisions. This appears to reflect a majority opinion within the BOAs in favour of an interpretation of art 84 requiring the deletion of unclaimed subject matter from the description.<br />What is conspicuous though is the weakness of a justification for this interpretation, when it is placed in a perspective, considering the additional costs and delays for the applicants and the EPO, the scant review of Art 83 at the EPO, and the insignificance of the issue for national courts when they review validity & infringement of EP originated patents.<br />This weak justification is also telling from your line of argument relying on critical comments regarding a specific case and the behaviour of the parties.<br />francis hagelnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-26702725762139680952022-04-12T12:44:21.847+01:002022-04-12T12:44:21.847+01:00In the pemetrexed case, the UK Supreme Court effec...In the pemetrexed case, the UK Supreme Court effectively determined that the limitation to "pemetrexed disodium" was a reaction to an added matter objection. In this regard, it is possible to understand why the Supreme Court felt that the extent of protection afforded by the claims could extend to "equivalents" in which the combination of actives included different salts / forms of pemetrexed.<br /><br />Whilst I have no problem with that logic, I nevertheless believe that the Supreme Court set a dangerous precedent. This is because, compared to embodiments that fall within the "normal" claim scope, it sets different sufficiency and inventive step standards for "variants" that infringe by way of equivalence.<br /><br />In particular, I find it absurd that, for the step of determining whether a putative equivalent works in the same way as the invention, the court can take account of information that was not disclosed in the patent, or otherwise available to those skilled in the art at the patent's filing date. This is impossible to square with the criterion of "plausibility", whether for inventive step (as at the EPO) or for sufficiency of disclosure (as in the UK).<br /><br />However, the fact that the UK Supreme Court has established a doctrine of equivalents that is not (yet) fully consistent with case law on sufficiency and inventive step does <b>not</b> justify the EPO taking steps to tie the hands of national courts regarding the determination of equivalents.<br /><br />As others have pointed out, even when faced with the same patent and the same underlying facts, national courts are perfectly capable of producing inconsistent decisions for reasons that have nothing to do with whether or not the description has been adapted to a "strict" standard. For example, the approach to assessing inventive step in the UK has for many years been quite different to the approaches adopted by the EPO and other national courts. Also, UK courts have developed concepts in other areas (eg industrial applicability, sufficiency of disclosure, indirect infringement) that have not been universally adopted across EPC Member States.<br /><br />Should the EPO therefore take steps to eliminate the lack of harmony in all of those areas too? Or should it stick to its day job of granting patents, and leave the national courts to complete their assessments (of patent validity and infringement) in the best way that they see fit?Proof of the puddingnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-86658942029755173092022-04-12T12:42:24.786+01:002022-04-12T12:42:24.786+01:00Daniel, it is plain as a pikestaff that the tighte...Daniel, it is plain as a pikestaff that the tightening of the EPO's practice on adaptation of the description is a reaction to the pemetrexed decision in the UK. In essence, it seems that you share the same concerns about that decision as those developing "best practice" within the EPO. However, I would encourage you to take a step back, and to consider whether demanding a "strict" adaptation of the description is really an appropriate (or even legitimate) response to what is admittedly a troublesome decision of a national court.<br /><br />If I understand correctly, both you and those determining "best practice" within EPO believe that a stricter adaptation of the description would have prevented any national court from determining that other forms / salts of pemetrexed did not infringe a claim directed to a use in tumour therapy of "pemetrexed disodium" (in combination with "vitamin B12 or a pharmaceutical derivative thereof"). But why do you believe this?<br /><br />For example, do you believe that the UK Supreme Court's decision would have been different if each and every disclosure of the description relating to subject matter broader to (or different from) that described in the claims had been tagged as <b>not</b> being "the invention" of the patent?<br /><br />If so, then I would encourage you to consider what it would mean if a strategy of "strict" adaptation of the description succeeded in its apparent goal (of persuading national courts to view "non-claimed" disclosures of the description as being excluded from the extent of protection afforded by the claims, whether by equivalence or otherwise).<br /><br />Would this not make the EPO Examining Division the <b>sole</b> arbiter of which disclosures of the original description fall within the extent of protection provided by the claims? If so, would it then be pointless for the patentee, during national court proceedings, to provide evidence regarding interpretation of the claims ... perhaps even evidence that convincingly demonstrates that, for certain disclosures of the original description, the ED's determination was incorrect?<br /><br />Also, what would happen if expert evidence were to demonstrate that certain non-claimed disclosures are equivalent to (ie immaterial variants of) the subject matter of the claims? In that event, would a "strict" adaptation of the description tie the hands of the national court? That is, would the national court then view the adaptations to the description as amounting to a disclaimer of any protection for the subject matter of those non-claimed disclosures?<br /><br />The EPO's task is to grant patents. In my view, the EPO has no business attempting to set in concrete a specific interpretation of the language of the claims, thereby tying the hands of the national courts regarding their determination of the scope of protection afforded by the claims.Proof of the puddingnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-21294437581899167902022-04-12T12:17:25.577+01:002022-04-12T12:17:25.577+01:00I find myself with a lot of sympathy towards the p...I find myself with a lot of sympathy towards the positions taken by DX and pudding to the extent that I would love to see the rules changed if the interpretations set out by the dissenters are correct. The reader of a patent, wishing to see if she would infringe by performing certain actions, deserves to see the description as filed as that is what the claims should be interpreted in light of. Instead large amounts of agent and examiner time is wasted on mangling the spec in pursuit of an impossible goal, zero ambiguity. I'm not aware of a single issue arising from the UKIPO's change of practice on this.Curious curatornoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-20170295049198126972022-04-12T10:57:37.340+01:002022-04-12T10:57:37.340+01:00This morning I see that Mr Thomas has been once ag...This morning I see that Mr Thomas has been once again very helpful in developing the debate on whether conforming the description is vital for legal certainty. I used to be an enthusiast for such conforming and was hoping for argumentation from Mr Thomas that would restore my faith but as of now I'm still not persuaded.<br /><br />As to the pemetrexed case, I think we have to be careful to hold keep the debate about conformity separate from that on "file wrapper estoppal", and "post-filed evidence", and the "plausibility" of a claim to pemetrexed + B12 that could so easily have been included in the application as filed but in the event was not. Is conforming the description i) a cure-all for every conundrum of scope of protection ii) not much help to resolve those tricky issues, or iii) positively unhelpful for courts striving to do justice in a world of fierce litigation to decide who was the "First to File" on any given invention. Reasonable minds differ. Good so! Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-10084475552316806522022-04-12T10:27:33.402+01:002022-04-12T10:27:33.402+01:00"T121/20 turns on the expression "nicoti..."T121/20 turns on the expression "nicotine-free" in the claim of AR4 while para [0033] of the application as filed states that the liquid "may contain nicotine". Again, the notion that original para [0033] would throw the court into confusion and doubt, how to construe "nicotine-free" in the claim going to grant strikes me as a fine example of wishful thinking, and of the patronisation I mention earlier in this comments thread."<br /><br />I think this sums it up in a nutshell. The other side is that given there is no doubt what "nicotine free" means, what possibly could be the applicant's objection to saying that "may contain nicotine" embodiments are outside the scope of claim. Is is that the applicant would prefer to argue down the line that nicotine free allows for a certain percentage of nicotine, perhaps up to 25% and not trace amounts (similar to sugar free products), rather than the supposed lack of legal basis forcing them to tidy up the description. Assuming third party certainty counts for nothing, I can see why there is such staunch resistance to the EPO's approach.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-50095859262531470052022-04-12T08:58:12.506+01:002022-04-12T08:58:12.506+01:00@Anonymous - in my experience, the examiners I dea...@Anonymous - in my experience, the examiners I deal with at the EPO are still allowing the practice of leaving the spec alone until agreement is reached on the claims. Some then do it themselves, others give me a call and tell me to bring it into line to secure grant. I prefer the latter approach.Markhttps://www.blogger.com/profile/02413651460818278209noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-36947218074515613002022-04-12T08:55:02.331+01:002022-04-12T08:55:02.331+01:00@John Foxe - Does the UKIPO intend to publish this...@John Foxe - Does the UKIPO intend to publish this change in practice? Or have I missed the publication?<br /><br />I've been dutifully amending the description for years and was shocked when a recent notice of allowance gave us the opportunity to amend before grant, despite the SoIs not being aligned with the claims. Of course we jumped at this chance. Pity the poor blighter who has to work out what the inventive concept of that patent is.Markhttps://www.blogger.com/profile/02413651460818278209noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-7876082117773243262022-04-12T08:42:29.774+01:002022-04-12T08:42:29.774+01:00Dear Daniel,
as I wrote before, there is nothing i...Dear Daniel,<br />as I wrote before, there is nothing in the EPC requiring that unclaimed subject-matter must be deleted from the description.<br />Certainly such as an important and heavy requirement should have been explicitly stated somewhere in the EPC.<br />The support requirement of Art. 84, last sentence, does not imply at all that unclaimed subject-matter must be deleted. It just means that the subject-matter of the claims must be taken from the description and it is not admissible to claim something which is not described, as confirmed also by the Case Law 2019 (see also the Traveaux Préparatoires).<br />Moreover, T 1989/18 is the ONLY decision in the case law which analyses in detail the support requirement. <br />The other decisions do not enter into the details of the support requirement of Art. 84 EPC and just copy and paste the Guidelines.<br />The PCT and the other EPC patent laws have the same support requirement but no patent office requires applicants to delete unclaimed subject-matter.<br />So are all patent offices in the world wrong or it is just a mistake of the EPO?Patent Robotnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-58800410616511831272022-04-11T20:25:27.212+01:002022-04-11T20:25:27.212+01:00In reply to Patent Robot: CLBA II.E.2.3.2: "A...In reply to Patent Robot: CLBA II.E.2.3.2: "As summarised in T 1481/14, the grant of a patent is not necessarily an automatic and final cut-off point ruling out any reinsertion of deleted subject-matter whatsoever." The prominent decision suggesting a kind of cut-off effect is T1149/97, but note r.6.1.11 of that decision ("Adaptation of the description and the drawings to the wording of amended claims intended for grant is fundamental under Articles 84 and 69 EPC"). Note also that in r.6.1.15 the Board identified a plain objection under Article 123(2). Peterhttps://www.blogger.com/profile/01894818186743773612noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-23673482109984379832022-04-11T16:56:39.050+01:002022-04-11T16:56:39.050+01:00Reply part 2
Dear Max Drei,
I will not allow myse...Reply part 2<br />Dear Max Drei,<br /><br />I will not allow myself to say that the pemetrexed case was due to negligent claim drafting or was an outlier. In my opinion, the applicant knew very well what he was doing. The only example given in the original description was pemetrexed disodium and the examiner, for good reasons, did not accept a general claim for just pemetrexed + vitamin B12. <br /><br />When looking at the case, it is manifest that the only aim of the applicant was to get a patent as quickly as possible. There was no effort on the side of Eli Lilly to attempt to convince the examiner that other salts could be used. <br /><br />It would for instance have been possible to file further experimental data in order to convince the examiner of the generalisation to any pemetrexed was allowable (plausibility), or even to file a "broader" divisional. <br /><br />I am convinced that should data have been available, it would have been easy for Eli Lilly to provide the necessary experimental data to generalise the claim. It is by not correctly adapting the description to the claims, that later faced by the request of non-infringement of Actavis, that Eli Lilly realised that it could be applied to other salts. This knowledge was manifestly not present at the moment of grant, and the examiner simply gave up, and I not blame him. <br /><br />In his letter dated 08.03.2006, just before grant was decided, Eli Lilly insisted that pemetrexed disodium was a preferred embodiment. There was no preferred embodiment whatsoever, there was only one embodiment: pemetrexed disodium. There was no reason to believe at the time that other salts were also possible. <br /><br />In this letter it is further stated: “The applicant seeks to draw a distinction between the subject matter which is relevant to the invention which is indicated as being that to which “the present invention generally relates” and “the subject matter provided by the invention” which is the subject matter claimed. In particular it is highlighted that the reduction in toxicity of the anti-folate in the use of the combination therapy is relevant to the invention and should be retained” <br /><br />This is exactly the type of statement which should not be accepted as it allowed later an extensive interpretation of what was the actual contribution to the prior art. <br /><br />It is worth noting that the District Court of The Hague had decided in first instance that in view of the behaviour of the applicant during prosecution, the claim was limited to pemetrexed disodium and to nothing else. This decision was rescinded by the Court of Appeal for whatever reason.DXThomasnoreply@blogger.com