tag:blogger.com,1999:blog-5574479.post5892807172363811409..comments2024-03-29T12:23:31.959+00:00Comments on The IPKat: Later evidence may be relied on in patent validity disputes -- but only justVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger11125tag:blogger.com,1999:blog-5574479.post-75803005478655551262013-08-02T18:52:37.903+01:002013-08-02T18:52:37.903+01:00If a paper discloses a chemical compound by struct...If a paper discloses a chemical compound by structure, and states that the compound is a wonder drug useful for curing a specified disease, but the disclosure is non-enabling because the compound cannot be prepared using common general knowledge, then the disclosure cannot be novelty destroying, but could be considered a promising starting point and hence be the closest prior art with the objective technical problem being solving the enablement issue.<br /><br />Real world examples may include a disclosure of a racemate with no cgk method for preparing/isolating the active enantiomer.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-21918594890305319732013-08-02T11:17:25.140+01:002013-08-02T11:17:25.140+01:00Yes, Suleman, I see that. I agree with that. Thank...Yes, Suleman, I see that. I agree with that. Thanks for the thought.<br /><br />Nevertheless, my comments stand, and my regret at the way the Decision is written remains undiminished.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-32526703111087000822013-08-02T10:28:17.149+01:002013-08-02T10:28:17.149+01:00I think MaxDrei that the decision was written in t...I think MaxDrei that the decision was written in the way that it was because the applicant was trying to argue that D7 could not be used as the basis of an inventive step objection (see end of para 5 of the Grounds of Appeal dated 3 Sep 2009 on the online file of European Application 01912088.0). The Board was responding to that line of argumentSulemanhttp://www.hollyip.comnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-7302352442415889912013-08-02T07:22:25.929+01:002013-08-02T07:22:25.929+01:00Readers, I have been thinking about it overnight.
...Readers, I have been thinking about it overnight.<br /><br />It strikes me that the entire "enablement" aspect is a distraction, a "red herring".<br /><br />D7 enabled the gathering of an image of sorts, but a very poor one. By contrast (no pun intended) the claimed subject matter delivers a good and detailed image. <br /><br />So the OTP is to enhance image quality over that delivered by D7. <br /><br />Classic EPO-PSA. Shame that the Board didn't express it like that, in its written decision.<br /><br />Or am I still missing something?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-65666137215357841602013-08-02T00:18:01.006+01:002013-08-02T00:18:01.006+01:00Thanks MaxDrei.
I am always concerned in legal di...Thanks MaxDrei.<br /><br />I am always concerned in legal discussions of any reasoning that flows from a "well, the result is good" type of justification.<br /><br />The "ends justify the means" is definitely not something that should be tolerated in the law. <br /><br /><b>Ever.</b>Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-50675513717162355362013-08-01T21:23:33.142+01:002013-08-01T21:23:33.142+01:00Answers for anon:
It smells wrong because it does...Answers for anon:<br /><br />It smells wrong because it doesn't follow classical PSA formulation of the OTP.<br /><br />It feels right because the outcome strikes one as correct.<br /><br />Mech/EE is predictable, chem/bio less so. So, there is more experience in chem/bio in using experimental evidence to prove that the OTP was solved (or unsolved). I'm not chem/bio. I therefore wonder whether they, unlike me, have already "been there and done that".<br /><br />How's that?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-52319184578877305112013-08-01T15:56:32.676+01:002013-08-01T15:56:32.676+01:00MaxDrei at 12:45,
Can you translate that, or expo...MaxDrei at 12:45,<br /><br />Can you translate that, or expound? <br /><br />Why does it 'smell wrong?'<br />Why does it 'feel right?'<br />Is the art field (chemistry) critical? Are different art fields treated differently?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-32132581651723620122013-08-01T12:45:43.700+01:002013-08-01T12:45:43.700+01:00T1932/09 (Rapporteur is ex-Examiner Mario Stern), ...T1932/09 (Rapporteur is ex-Examiner Mario Stern), reported on K's Law blog, is indeed interesting. In short: is D7 a fair CPA (closest prior art) starting point for the PSA obviousness enquiry even when what D7 discloses is not enabled?<br /><br />The Board finesses out of that conundrum by announcing the objective technical problem (OTP) to be that of "reducing to practice the capsule of D7". It smells wrong but, then again, it feels right. However, I cannot remember any other case where the OTP of the PSA is expressed as how to enable a non-enabled CPA reference.<br /><br />Any chemistry EPA's out there? Paul Cole? MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-83654137439465753592013-08-01T11:08:38.767+01:002013-08-01T11:08:38.767+01:00A recent EPO decision T1932/09 on European Applica...A recent EPO decision T1932/09 on European Application 01912088.0 is interesting because the applicant was forced to argue that the prior art was speculative (i.e. not enabling). It's a reminder that 'plausibility' may also apply to the prior art and so it's important for the UK Courts to develop the correct test for it.Sulemanhttp://www.hollyip.comnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-11082106912694847102013-07-31T12:32:17.384+01:002013-07-31T12:32:17.384+01:00Did the Appeal Court consider whether use of "...Did the Appeal Court consider whether use of "the force" available to Jedi Knights could be used as evidence?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-10708122731752373422013-07-31T09:42:43.233+01:002013-07-31T09:42:43.233+01:00Mr Justice Arnold did need to be corrected in his ...Mr Justice Arnold did need to be corrected in his view that later evidence could not be used to show that an invention was not plausible. I think the Court of Appeal is much more correct to think of the issue in an 'evidence' sort of way.<br /><br />I think it's also encouraging that the Court of Appeal was also able to accept a claim with a 'fuzzy' boundary, which reflects a sensible perspective on sufficiency.Sulemanhttp://www.hollyip.comnoreply@blogger.com