tag:blogger.com,1999:blog-5574479.post7793012885139306067..comments2024-03-29T13:59:42.629+00:00Comments on The IPKat: Appeal judges awake to Napp patent issuesVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-5574479.post-91149289391949227492009-04-06T09:51:00.000+01:002009-04-06T09:51:00.000+01:00Thanks Anonymous. I would have to re-visit Kawasa...Thanks Anonymous. I would have to re-visit Kawasaki, and read Napp for the first time, to do justice to your enquiry about free beer. But here's my in haste, off the cuff, reaction to your summary of Kawasaki:<BR/><BR/> On your summary, it looks to me like the Kawasaki Board mixed up obviousness and insufficiency. If I am not mistaken, Lord Hoffmann in Conor warned us against that. I had thought that DG3 (as a matter of principle) would have heartily endorsed that warning, which makes me wonder whether Kawasaki is set to lose authority, especially in these days of cropping back the scope of protection awarded to inventors. Lord Hoffmann found in favour of the owners of the Conor product claim, but would he have found against the owners of the Kawasaki product claim?.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-8926151038643967812009-04-05T15:11:00.000+01:002009-04-05T15:11:00.000+01:00Re: Max Drei, the decision in question was T595/90...Re: Max Drei, the decision in question was T595/90. This decision related to the sufficiency and inventive step of a product known to be desirable (a type of steel), which had several desirable properties which until the invention in question could not be achieved simultaneously in the same steel product since improving one caused the other to deteriorate. The alleged invention in this case was the process for producing this product, which to date, had not yet been produced. However, since it was known that the product in question would have advantageous properties, what had to be assessed was the inventive step of the process for making it. If this were inventive, then the product would have also been inventive, since this would have meant that in order to make this product based on the prior art (which indicated that the product was desirable) the skilled person would still have had to exercise an inventive step (with regard to the process) in order to make it available.<BR/><BR/>The case subject to the current posting differs in that it relates to the relationship between the ability of the skilled person to recognize which known products would have a particular desirable property, irrespective of any process for their production and without defining their technical features (i.e. their chemical composition or structure). Since the chemical composition of the coating is not defined, by definition it must be known to the skilled person what it is, and how to make it, or the claim does not fulfill the sufficiency requirement according to Art.83 EPC.<BR/><BR/>In a nutshell the present posting relates to the inventive step/sufficiency of a technical feature defined in terms of a desirable property where the structural technical features of that feature are not defined (only the function), whereas the T595/90 case defines a product technically (defining the technical features of the steel product) and where the sufficiency and inventive step derive from the allegedly inventive process for making it.<BR/><BR/>I would be interested to hear your take on T595/90 and on so called "free beer claims" where the contribution to the art is defined in terms of the problem. This is sometimes acceptable, where the problem itself was not recognized, but I that is not the case here, since the controlled release of drugs is a well known technical problem/objection. Furthermore, the claim is also unclear, since what constitutes controlled release, which rate of release and under which conditions would fall within this definition?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-35764665905625874542009-04-04T19:35:00.000+01:002009-04-04T19:35:00.000+01:00A question for that Anonymous. Can he offer a com...A question for that Anonymous. Can he offer a comment to distinguish from EPO jurisprudence that follows a case called Kawasaki Steel. This is the week-end and I can't remenmber the T number, but he/she will surely be familiar with the case, and its progeny. Thanks in advance.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-65473311638017687912009-04-04T12:54:00.000+01:002009-04-04T12:54:00.000+01:00Reading this claim I would also have attacked it b...Reading this claim I would also have attacked it based on Art.83 EPC - insufficient disclosure and Art.56 EPC (lack of inventive step). The argumentation goes something like this:<BR/><BR/>Claim 1 of 246 reads: "a coating on said matrix controlling the release of said oxycodone salt". Assuming that the technical problem to be solved by the claimed subject matter is in fact the controlled release of the active agent - viz oxycodone, the only way in which the skilled person (in this case an expert in gallenics) could carry out the invention as defined in this claim would be because it is obvious to him which substances on the coating would provide controlled release. This would mean that the claim lacked inventive step. Since the proprietor clearly wishes the claim to be considered inventive, this means that the way in which the problem is solved is not evident to the skilled person and cannot be repeated by him based on the disclosure of this claim. Therefore the claim is not sufficiently disclosed in respect of its entire scope as required by Art.83 EPC. <BR/><BR/>This argumentation could also be turned on its head - whereby the claim is considered to be sufficiently disclosed (if the skilled person could easily find out how to control the rate of release of the active agent), which would conversely mean that the claim is not inventive as required by Art.56 EPC.<BR/><BR/>Either way, this claim is caught in an inescapable trap between Art.83 EPC and Art.56 EPC.<BR/><BR/>The only possible escape route might be to argue that since there would have been working examples of the coating, these support the disclosure of the claim, although this might not work because the examples would be technically limited and would be unlikely to be considered to provide sufficient disclosure over the whole claimed scope.<BR/><BR/>Basically claim 1 of this patent is drafted as "as solution to the technical problem [<I>controlled release of the drug</I>] characterised in that it solves the problem".Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-57903634110694090822009-04-03T09:56:00.000+01:002009-04-03T09:56:00.000+01:00Can anyone explain this 'dropping down from the Ho...Can anyone explain this 'dropping down from the House of Lords' business? Why do they do it? Just for fun, a change of scenery?Curiosity killed thenoreply@blogger.com