tag:blogger.com,1999:blog-5574479.post6738633182466035942..comments2024-03-29T06:53:23.405+00:00Comments on The IPKat: Does the requirement for a "technical contribution" in a novel selection survive? (if selecting from convergent lists) (T 1621/16)Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger9125tag:blogger.com,1999:blog-5574479.post-4695509950706107582020-03-30T17:59:57.804+01:002020-03-30T17:59:57.804+01:00Attentive, I see your point. Let others comment: I...Attentive, I see your point. Let others comment: I don't have enough recent experience on admissibility of auxiliary requests. <br /><br />As to my concern, about EPO tribunals using Art 123(2) EPC over-zealously, to kill off cases quickly, I am thankful that you recognise that the "temptation" is always there. I must take comfort in your assessment that the Boards are less prone than the Divisions, to get up to this form of mischief. Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-58658078373795127022020-03-30T16:31:05.790+01:002020-03-30T16:31:05.790+01:00Dear Max Drei,
I have always been of the opinion ...Dear Max Drei,<br /><br />I have always been of the opinion that if there is a clear cut problem with Art 123(2) it becomes moot to discuss inventive step, or even novelty, as such a claim has in my humble opinion no effective date. <br /><br />I am looking at lots of decisions of the Boards of Appeal, and I cannot say that I have seen a tendency to overplay Art 123(2) compared to Art 56. I would rather say that the temptation is greater with examining and oppositions than with the boards.<br /><br />What is more problematic to me is the ease with which boards simply decide out of their discretion not to admit requests claiming that they are late filed, and should have been filed earlier. <br /><br />I think that the temptation of the boards to dismiss a case on such grounds is going a trifle too far. I would say that if the applicant proprietor has made a bona fide attempt to overcome the reasons for the decision, it should be admitted. <br /><br />That he should have been proactive in first instance goes without saying, by at least filing auxiliary requests attempting to overcome the objections raised. But waiting to enter appeal in order to file auxiliary requests should not be allowed. That in such a case the boards are strict appears correct. <br /><br />What disturbs me more, is, whilst I can accept that the boards are empowered to decide whether the discretion of first instance divisions has been correctly exercised, there is however no judicial body empowered to decide whether the discretion of the boards has been correctly exercised. <br /><br />For the Enlarged Board acting under Art 112a, if the party has been heard by the board about the non-admissibility of its requests, the matter is settled, and the Enlarged Board will not act. This is not a satisfactory system. <br /><br />In general, the lack of a proper revision instance, be it for procedural aspects (Art 112a being applied in a very restrictive manner), but much more important for substantive matters is one of the drawbacks of the EPO system. And also of the UPC.<br /><br />The four complaints before the German Federal Constitutional about the EPO court are for a great part dealing with this issue. Another one is the independence of the boards. Attentive Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-25186115683148407312020-03-30T09:58:37.364+01:002020-03-30T09:58:37.364+01:00Thank you, Attentive. It is a comfort, that we agr...Thank you, Attentive. It is a comfort, that we agree on so much. If you are still there, if I may, I have another thought for you to ponder.<br /><br />Art 100(c) comes first, in oral proceedings, Art 100(a) later. Working all the way through to Art 56 EPC means a lot of work for the Rapporteur (and the other two TBA members). How much easier, in times of great pressure to raise productivity, throughput, and drive down pendency, in a case where patentee's Art 56 defence is hopeless, to close out the case with Art 100(c). After all, no injustice is being done, and everybody benefits from justice that is economical and expeditious.<br /><br />But that's not right. Not everybody is benefitting. Excessive use of Art 123(2) to knock out a patent that is doomed anyway not only contaminates the case law on "added matter" and the "Gold Standard" but also destroys "quality" at the EPO and eats away the good reputation of the EPO for deciding cases correctly.<br /><br />I hope that such cases are so rare that I need not worry about it. But I do worry. Do you too?Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-690105383138433742020-03-29T14:14:00.337+01:002020-03-29T14:14:00.337+01:00Dear Max Drei,
I have sympathy for your point of ...Dear Max Drei,<br /><br />I have sympathy for your point of view, and the BA have issued some decision which make clear that there are limits to a formalistic approach to added matter. See T 667/08, T 2619/11 and especially T 2179/11 and T 113/16. T 2179/11 is one of those reasoned decision explaining why the intermediate generalisation is implicit. <br /><br />To me the question is where to draw the limits. If you are too lenient, novelty becomes blurred, and then rights of third parties are at stake. <br /><br />When drafting applications, it is difficult to foresee what might happen later during examination when the invention is confronted to prior art which was not known to the inventor. <br /><br />But I have also seen lots of cases in which the application had been so badly drafted, that it does not wonder that it ends up with a lot of added matter when it is properly tided up during prosecution. <br /><br />One thing also to be kept in mind. The responsibility of drafting the application and the claims lies with the applicant or its representative. Once the patent has been granted, the text in which it has been granted was approved by the applicant. <br /><br />In Germany, there is a difference made between grant procedure and procedures after grant. During grant procedure, the criterions established by the German Federal Court is the same as the EPO, see BGH X ZB 5/16 (Phosphatidylcholine). After grant, the BGH has proposed different solutions in an attempt to moderate the deleterious effects of added matter, see BGH X ZR 161/12 (Wound treatment device), but even in Germany there is a price to pay for the proprietor.<br /><br />Simply filing a continuation or a continuation in part, is not a solution either. And there as well if the provisional had been better conceived, it would not be necessary to have to rely on such constructions. <br />Attentive Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-44760965494038133532020-03-27T09:58:57.808+00:002020-03-27T09:58:57.808+00:00As ever, Attentive sets out clearly the establishe...As ever, Attentive sets out clearly the established jurisprudence of the TBA's. I agree with him that the boilerplate paragraph at the end of a typical US-drafted specification, to the effect that the skilled reader can combine everything with everything, is superfluous and adds nothing to the "disclosure".<br /><br />But that's the whole point. It is superfluous precisely because the skilled reader knows that anyway. The skilled reader, scouring the text and drawings, hungry for useful teaching, is doing that anyway and (unlike litigation lawyers) does not need the paragraph at the end to remind him to do that. Who remembers the toy for little girls, with a paper figure accompanied by cut-out items of clothing, hat, blouse, skirt, shoes. My sister could play for hours, artfully combining one skirt with a different hat, gloves and shoes. To say that the only thing "derivable" in the toy was the combination on the top of the box is silly. A bit more effort please, from the Boards of Appeal, to put themselves in the shoes of the real world skilled addressee, not only for the purposes of Art 123(2) but also for Art 54 and Art 87 EPC. <br /><br />Attentive, yes of course the same standard should apply, for all of these, what is "disclosed". As I say, it's much harder 8and takes more time and mental effort) to write a reasoned decision explaining why the intermediate generalisation is implicit (or that D1 does indeed destroy novelty) than it is to cover one eye, say "I don't see it" and find that the claim offends Art 123(2) or that the claim is novel over the disclosure of D1.Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-52899475536139753112020-03-27T08:12:41.717+00:002020-03-27T08:12:41.717+00:00Dear Holistic,
Whilst have a certain sympathy wit...Dear Holistic,<br /><br />Whilst have a certain sympathy with the argument that the applicant might “deserve” certain amendments, the Case Law of the Boards of Appeal is nevertheless very clear in that respect. Inventive step is not what matters, and even if it might be obvious for a person skilled in the art, this is not the criterion adopted by the Boards. <br /><br />When an application is filed, nobody knows in advance whether it will represent a great contribution over the prior art or not. For this reason alone the notion of “deserving” is antonymic to the necessary safety of third parties. And that what the Boards have been saying for a long time. <br /><br />Whilst it is true that the whole reservoir of features originally disclosed can be used /when amending an application or patent, cf. T 81/03, it can however not be considered to be a reservoir from which individual features pertaining to separate sections can be combined in order artificially to create a particular combination, cf. T 1334/09, T 296/96 or T 1306/12.<br /><br />In T 1724/08 it was held that the criterion of "direct and unambiguous disclosure" is quite different from the criterion submitted by the appellant, namely whether a person skilled in the art in view of the disclosure is enabled to achieve the envisaged result, i.e. the claimed functionality, without undue difficulty.<br />This latter criterion would allow many different new definitions of subject-matter, none of which would need to be derivable "directly" and "unambiguously" from the original specification.<br /><br />In T 583/09 it was held that technical information which is clearly and unambiguously derivable from the original application can be explicit or implicit.<br />The term "implicit disclosure" should not be construed to mean matter that does not belong to the content of the technical information provided by a document but may be rendered obvious on the basis of the content of the disclosure.<br />The term "implicit disclosure" relates solely to matter which is not explicitly mentioned, but is a clear and unambiguous consequence of what is explicitly mentioned<br /><br />But that is exactly what you suggest. If you have disclosed three separate embodiments you have not disclosed a combination of all three embodiments, and the general rubber sentences one can find in general at the end of the description will not help whatsoever. <br /><br />It is hard, but we should not forget that added subject-matter and novelty are the two sides of the same coin. What is lost on one side is gained on the other and vice versa. Attentive Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-21916412871951340602020-03-26T13:52:18.629+00:002020-03-26T13:52:18.629+00:00Thank you, Holistic. If you have the time and the...Thank you, Holistic. If you have the time and the inclination, join us on the Kluwer blog, debating inter alia the EPO's approach to the problem of the undisclosed intermediate generalisation.<br /><br />Yes, I am glad we are both well. The times might already be, as you say, "difficult" but they are going to get a whole lot more "difficult" before they get better. Let us hope that debating patent law, while confined at home, achieves something useful to all of us.<br /><br />http://patentblog.kluweriplaw.com/2020/03/20/reactions-to-ruling-fcc-in-case-unified-patent-court-positive-and-great-disappointment/<br /><br /><br /><br />Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-20034988928024197112020-03-26T13:06:05.925+00:002020-03-26T13:06:05.925+00:00MaxDrei, I hope that you don't mean by 'go...MaxDrei, I hope that you don't mean by 'gold standard' that we take a strict line and simply decide on the basis of the most simple analysis. When selecting from 2 lists there is a genuine issue about how to balance fairness to the applicant and third parties. Taken to the extreme it means that any 'new combination' derived from features in the specification, such as A+B+C, adds matter if those 3 features are not specifically mentioned in combination. Examiners at the EPO do raise such objections even when the features are not disclosed as part of a traditional list, but are being discussed as different embodiments. The EPO seems to have taken the view that some type of inventive step analysis cannot be used to assess whether the combination is disclosed (i.e. using the rule that all obvious combinations are disclosed for the purpose of providing basis for claim amendment). There is the vague notion of implicit disclosure which does not lead to a workable test. After that we are left with 'pointers' to the combination having to be present in the specification, with little certainty as to what a pointer is, but it being related to preferred or exemplified embodiments. I predict none of these approaches will crystallise into the Decision that you desire which seems to be a concrete set of rules to decide on what is disclosed.<br /><br />My alternative approach, which I might as well suggest as coronavirus reshapes the economic landscape, is to ask whether the applicant 'deserves' the amendment they are trying to make in view of the contribution they are making over the prior art. If it is an epic contribution we should be lenient on added matter, and let them claim the invention as they wish. If it is a modest invention we should judge with a lot more caution what 'adds matter' in view of the fact they have contributed little. That does not take away the uncertainty but may make the system 'fairer'.<br /><br />PS. It is good to see that you seem to be well in these difficult times. Holisticnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-30115076544324803232020-03-25T11:38:34.806+00:002020-03-25T11:38:34.806+00:00I'm a fan of the "gold standard" and...I'm a fan of the "gold standard" and the notion of "derivable". What I don't yet see is convincing and uniform mapping of "derivable" onto the knowledge base of the imaginary skilled addressee.<br /><br />What is needed? Top class advocacy and top class membership of the Technical Boards. I am an optimist. Just as the Boards have sorted out (more or less) what is "technical" and what is not, with time they will converge on a methodology and logic that will inform everybody how to work out what the skilled person can and cannot "derive, directly and unambiguously" from any given document.<br /><br />Meanwhile, it is up to we advocates, to help the Rapporteurs and the Chairs of the TBA's, first to take a real world (and therefore necessarily complicated and nuanced) view of the knowledge and thought processes of the skilled reader of a new scientific or engineering disclosure how to solve a technical problem, and then the courage and energy to write a Decision in accordance with that view (as opposed to writing a quick, easy and formulistic Decision just to meet management productivity targets).Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.com