Tuesday 23 October 2012

T 132/09 – Not The Same


It is well known that the EPO is quite strict when assessing whether amended claims contain “new matter” (A 123). It is not always well understood that the very same approach applies when it comes to the validity of the priority claim. As a matter of fact, the case law uses the same criterion (“directly and unambiguously”) for amendments (A 123), divisional applications (A 76), novelty (A 54) and priority (A 87). It’s really all of one piece.

The present appeal was filed after the Opposition had revoked the patent under consideration for lack of novelty over some A 54(3) prior art. Unsurprisingly, the validity of the priority claim was discussed in the appeal proceedings.

Claim 1 of the main request before the Board read:
Process for the epoxidation of olefins by
i) reacting an olefin with hydrogen peroxide in the presence of an epoxidation catalyst and an alcoholic solvent, whereby hydrogen peroxide is employed as an aqueous solution containing 10 to 70 wt.-% of hydrogen peroxide or as an alcoholic solution prepared by reaction of hydrogen and oxygen in the presence of a noble metal catalyst and the alcohol;
ii) separating product olefin oxide and unreacted olefin from the reaction product of step i);
iii) recovering a stream comprising the alcoholic solvent,
characterized by
iv) subjecting the recovered stream of step iii) to hydrogenation,
whereby the olefin is propene and propene is used mixed with propane.
The Board found the priority claim to be invalid, for the following reasons:

[2.1] Claim 1 of the main request relates to a process for the epoxidation of olefins comprising steps i) to iv). In step i), an olefin is reacted with hydrogen peroxide in the presence of an epoxidation catalyst and an alcoholic solvent, and, in step ii), olefin oxide and unreacted olefin are separated from the reaction product of step i). According to the feature introduced at the end of claim 1, “the olefin is propene and propene is used mixed with propane” […].

The standard to be applied in deciding whether the claimed priority date is to be acknowledged is whether this subject-matter is directly and unambiguously derivable from the priority document D28 as a whole (see decision G 2/98 [headnote]).

In the claims of priority document D28, the term “propane” only appears in claim 13.


However, in this claim, specific percentages by weight of this component are defined for the product stream and the overhead product obtained from steps i) and ii), respectively. Moreover, claim 13 is dependent on claim 12, which relates to a specific epoxidation reaction wherein “the catalyst is a titanium silicalite and the solvent is methanol”. Hence, this very specific disclosure cannot provide a basis for the much more general subject-matter claimed in claim 1 of the main request.

As regards the content of the description of priority document D28, it is disclosed on page 6, lines 7 to 11, that propene is the preferred olefin to be used in the epoxidation reaction. Further down on the same page, it is specified that “propene may be used mixed with propane in an amount of between 0 and 10 vol.% of propane” (page 6, lines 28, 29; emphasis added). Thus, the propene feed is defined as optionally containing propane, but only in a maximum amount of 10 percent by volume. This passage cannot therefore provide a direct and unambiguous basis for the use mixtures of propene and propane without any limitation as to the relative amounts thereof.

The appellants referred to page 12, lines 11 to 18, and page 16, lines 20 to 24, as providing a basis for a general disclosure of the use of propene mixed with propane in the reaction of step i), without limitation on the amount of propane.

The cited passage on page 12 is embedded in a section starting on page 11, line 4 and ending on page 12, line 24, relating to “one embodiment of the present invention” in which “the reaction mixture is separated in a pre-evaporator into an overhead product containing propene, possibly propane, propene oxide and solvent, and into a bottom product ...” (page 11, lines 4 to 7). Thus, this embodiment illustrates specific means for working up the reaction product of step i), and cannot therefore provide a basis for introducing a definition as to the composition of the olefin to be used in the general context of the epoxidation reaction. Indeed, as an “embodiment of the present invention”, the cited passage must be read in the context of the previous section of the description relating to the epoxidation step i) (see page 6, line 7 to page 8, line 9). Here, the amount of propane that may be present in the propene feed is clearly restricted to 10 volume, as explained in the previous paragraph.

Similarly, the cited passage on page 16, lines 20 to 24, is embedded in the section of document D28 relating to specific examples (see page 15, line 16 to page 18, line 16). On page 16, line 4, there is a reference to “a propene feed”, but it is not specified that this contains propane. However, the overhead product, separated in the pre-evaporation stage, contains propane (page 16, lines 15 to 17), and an uncondensed portion of this stream containing propane is returned to the epoxidation reaction (page 16, lines 22 to 24). It can therefore be concluded that the propene feed used in the examples must contain some propane, but it is not specified how much. This is not equivalent to a direct and unambiguous disclosure that unlimited amounts of propane may be present in the propene feed, particularly not in the context of a more general disclosure as now claimed.

For these reasons, the board concludes that the subject-matter of claim 1 of the main request is not entitled to the priority date of 2 May 2002, but only to the filing date of 29 April 2003 […].

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

31 comments:

MaxDrei said...

If the decisive question is "What does the document disclose" it is no wonder that the tests for priority, novelty and added subject matter are the same. For 30+ years patent attoprneys have been successful in persuading EPO Examiners that D1, almost the same as the claimed subject matter, nevertheless does NOT prejudice novelty. No wonder then, that that by now the EPO is equally strict in denying priority and in detecting that subject matter has been added. "The Biter Bit" one might well think. What is Sauce for the Goose is Sauce for the Gander too.

oliver said...

I would agree. Perhaps one could state things more positively: it does not really matter where exactly the cursor is positioned, as long as the treatment is the same for A 123, A 54, A 76 and A 87.If for some reason the EPO would become more relaxed on A 123, it should remain consistent and adopt the same standard for novelty, divisionals and priority.

MaxDrei said...

I agree that the cursor should always be in the same place, but if it is, then we had better define that key location with as much precision as we can manage.

Me, I'm troubled by "unambiguous". I think it encourages EPO Examiners and Board Members who are using English as a foreign language from time to time to treat unreasonably and urealistically harshly the authors of English language text works.

Words are inherently ambiguous. There is ambiguity every time we resort to mere words to describe a technological concept. No mere text is ever 100% clear, in the sense that it is 100% free from ambiguity.

Therefore, to fix the key location of the cursor with the word "unambiguously" is to my mind tantamount to treating unfairly every author of every document that comes under the attention of the EPO.

Take a simple word like "bank". It's ambiguous, isn't it? It could be a river bank or a money bank. Words stripped of context are effectively meaningless.

When will EPO Examiners concede that a word (like "bank") in a claim is unambiguous only when it is construed in context?

Myshkin said...

@MaxDrei:
"Me, I'm troubled by "unambiguous". I think it encourages EPO Examiners and Board Members who are using English as a foreign language from time to time to treat unreasonably and urealistically harshly the authors of English language text works."

How are they treated harsher than the authors of French or German texts?

I don't think the language used was relevant for the present decision. I would be interested in an example where an amendment was incorrectly considered to be infringing Art. 123(2) due to a lack of English language skills on the side of the Board. I've seen the argument come by often, but I'm not convinced that it holds much water.

MaxDrei said...

Fair comment from Myshkin. I should "put up or shut up" shouldn't I.

Recently I had to survey 123(2) caselaw. I found what I thought were harsh Decisions in English language cases and was mildly surprised to find what I thought were more liberal Decisions where the language of the proceedings was French (or German). I don't have the Decision numbers to hand just at the moment but, if this dialogue continues, I will root them out for you.

Meanwhile I confess, perhaps I'm seeing what I want to see, am not free of bias and am just riding one of my hobby horses, just for the sake of stimulating a discussion.

MaxDrei said...

In the Decision, I'm bothered by the para bridging pages 8 and 9. Here we see that the patent told us that the propene feed "contains propane" whereby the Board concludes that "the propene feed used in the Examples must contain some propane, but it is not specified how much".

In the very next sentence, the Board tells us: This is not equivalent to a direct and unambiguous disclosure that unlimited amounts of propane may be present in the propene feed.

NOT EQUIVALENT? Really? In what sense is "not specified how much" not equivalent to "not limited"? Never mind "equivalent": it is the same, isn't it?

AND, in any case, I fail to see in this Decision any discussion whether the feature extracted from the Examples and plugged into the claim is truly separable from the other features or, on the contrary, is too intimately bound up with the other features to be separable from them.

Roufousse T. Fairfly said...

Me, I'm troubled by "unambiguous". I think it encourages EPO Examiners and Board Members who are using English as a foreign language from time to time to treat unreasonably and urealistically harshly the authors of English language text works.

Max, I have can neither prove or disprove your assertions. I will submit two hypotheses:

- Applications are nowadays predominantly filed in the English language, and are overrepresented in the cases you are exposed to.

- Applications in French or German are very likely to be drafted by a qualified EP practitioner who knows how amendments are likely to be welcomed and will plans accordingly, whereas those in the English language are more likely to have been drafted overseas in, shall we say, a somewhat looser style.

Your argument appears to imply that linguistic competence is lacking amongst staff. One could suggest that in an institution of multilingual character such as the EPO, one will become with the passage of time more sensitive and pickier to the syntax and grammar of texts in any particular language.

Could the interpretation problem, if there really is one, lie in the English language itself?

"When I use a word," Humpty Dumpty said, in rather a scornful tone, "it means just what I choose it to mean -- neither more nor less."
"The question is," said Alice, "whether you can make words mean so many different things."
"The question is," said Humpty Dumpty, "which is to be master ­- that's all."


According to the Wikipedia the classic Humpty Dumpty authority is cited in hundreds of US court cases, and in a few UK ones. The UK and US being, of course, countries divided by a common language, as once famously said Shaw, Wilde, Churchill or whomever.

MaxDrei said...

Thanks Fly. You are always good for a pleasant debate.

My suggestion is that, amongst all the Patent Offices of the world, the EPO is unique in that its individual Examiners examine in a language of the proceedings (English) which is for them not their first language. Everywhere else in the world, representative and Examiner debate the information content of documents written in a language (Japanese, Chinese, English, German) that is their common first language. In that common tongue, it is relatively easy for reasonable minds (even those of two assertive Humpty-Dumpty types) to debate with courtesy and at the highest level of sophistication, what the document on the table would mean to a third person of that common language and having ordinary skill in the art. I imagine that is how it is, at INPI, at the DPMA and at the IPO in Wales (putting to one side the Welsh language aspect).

Now imagine you are an Examiner in the Japanese Patent Office. The representative assures you that his departure from the verbatim text of the application as filed is most definitely totally free of anything remotely like new matter. How easy or difficult is it, for you to accept his blandishments and allow the amendment? Would you feel more comfortable allowing a non-verbatim amendment if it were written in your first language?

reverting to the EPO, what I'm suggesting is that text in German or French is examined, in the main, by EPO people (notably in DG3) who have that langauge as their first. Otherwise with English. There it is rare for a case to be examined by English native speakers.

Just a suggestion. Is it nonsense? Readers?

Anonymous said...

I have experienced that a native German EPO examiner examining an English-language application has readily accepted the ambiguous (as they frequently are) English abstract of a Japanese patent publication as prior art, in fact getting (a) sense of out of nonsense. This was provable by a EUR 7000 translation of the whole Japanese publication, paid for by the applicant, not the EPO. The alarm bells of ambiguity that were obvious to an English skilled person did not ring for this examiner. This was no substantial procedural violation, oh no! The usual argument is that reasonable minds may differ. In my view this is utterly unreasonable.

I am very much afraid of the patent prosecution highway, because it permits reuse of deficient prosecution.

Kind regards,

George Brock-Nannestad

MaxDrei said...

Not sure what to reply to that comment. What the world expects of EPO Examiners is that they challenge Applicants to satisfy them, that the application complies with all provisions of the EPC. Answering that challenge cost your client serious money but was the Examiner's challenge in any way illegitimate. It seems OK to me. Bear in mind that I do not want lazy Examiners, who let everything through. That only costs my clients much more, in the long run. I would prefer to amend before rather than after the patent issues.

manolis said...

May I point out that the term "unambiguously" does not refer to the actual words of the disclosure. It does not say "unambiguously disclosed" it says "unambiguously derivable".
So, the test is whether from what you read in the description you can unambiguously derive what is in the claim. There is always a step to take between the written disclosure and the feature being assessed. The whole issue turns around how this step is to be understood in the context of the written disclosure.

MaxDrei said...

What a nice distinction, Manolis. I had never quite seen it like that before. Thank you.

Myshkin said...

@MaxDrei:
"In the Decision, I'm bothered by the para bridging pages 8 and 9. (...)

NOT EQUIVALENT? Really? In what sense is "not specified how much" not equivalent to "not limited"? Never mind "equivalent": it is the same, isn't it?"

I think the technical reasoning behind what the Board writes is sound.

The claim does not in any way limit the amount of propane. In the example of the priority document, the amount is limited in the sense that the mixture of propane and propene is the result of earlier process steps. From a technical point of view, the claimed process allows any amount as input, while in the disclosed example the amount seems very hard or impossible to control.

Maybe the real problem is that the example is simply way too specific, but to translate that into solid reasoning it helps to concentrate on one detail.

In any case, this not about the linguistic question whether in English "not speficied how much" means the same as "not limited".

@Manolis:
I completely agree. I think most of the language issues disappear once the translation into technical concepts is made.

MaxDrei said...

I get the feeling I'm talking with EPO folks here.

So tell me, is the "directly and unamiguously" standard for 123(2) really the same as for Art 54 and 87? My sense is that identity of substantive technical teaching concept is always necessary but, in the special case of 123(2), not sufficient. In practice, to get a prosecution amendment accepted as meeting the provisions of 123(2) there needs to be identity of text as well. That is because, as soon as there is a text discrepancy there is a discrepancy of technical teaching content, is there not?

Myshkin said...

The test for Art. 123(2) is certainly the same as the test for "same invention" of Art. 87(1) and Art. 88(4) (G 2/98).

For Art. 54(1), a novelty destroying disclosure must also be "directly and unambiguously derivable". However, this directly and unambiguously derivable disclosure may be more specific than what is claimed: iron is novelty destroying for metal, but iron is not the "same" as metal. So in this sense there is a big difference with Art. 123(2).

"That is because, as soon as there is a text discrepancy there is a discrepancy of technical teaching content, is there not?"
Not, but if there is broadening or narrowing of scope, this is a problem for Art. 123(2).

If you have an example... ;-)

Roufousse T. Fairfly said...

is the "directly and unambiguously" standard for 123(2) really the same as for Art 54 and 87?

The "directly and unambiguously derivable" (DAUD) standard is referred to in all the versions of the Guidelines I know of, dating back to the 1990s (I just checked some GLs dating back from the long gone days they were still published in A5 format and fitted in much less than half as many pages as they have today).

I remember that I was particularly attentive to the "DAUD" criterion when I was objecting novelty on the basis of a 54(3) disclosure, with occasional agonizing bouts of frustration when assessing claims.

Take for instance a claim for a "gizmo comprising X, Y, and Z, wherein the gizmo is called Daniel". (I believe that my example isn't as preposterous as it sounds, but I'd rather not provide the exact context).

Interfering EP application D1 shows a gizmo comprising X, Y and Z, but has nothing about the name of the gizmo, or that the gizmo disclosed is called Anton. D1 is otherwise just SO close... I felt rather queasy, and wasn't entirely sure that a board (or the division) would follow me if I simply dismissed and disregarded "Daniel", regardless of what G2/88 said. I therefore ended up making a backup inventive step argument based on (weaker) 54(2) documents.

Concerning Art. 87, I would venture to say that the DAUD approach as confirmed by G2/98 is actually applicant friendly, as it provides a workable, mechanical definition of the expression "the same invention" used in Art. 87 EPC.

The situation in Germany is comparatively somewhat more complicated, if I am to believe a somewhat old (and outdated?) short treatise
(Edgar Lins, Das Prioritätsrecht für inhaltlich geänderte Nachmeldungen, Europäische Hochschulschriften, Verlag Peter Lang, 1992). Art. 40 PatG 1981 adopted the wording of the EPC, including the "same invention", which was not present in Art. 4 PVÜ. This resulted in compatibility problems with other acceptations of the concept of "invention" contained in the earlier German law.

The booklet cites T81/87, which anticipated IMO the outcome of the President's referral of ten years later.

MaxDrei said...

Thank you very much, both of you, Myschkin and Fly. In a hurry now, but two instant comments come to mind.

Myschkin, change of scope instantly prompts a 123(2) objection but should it? I think it does not automatically follow, that a change of scope introduces new technical teaching. Yet, when i ask the Examiner to tell me what new technical teaching i have introduced I get the brush off. For some Examiners any intermediate generalisation is a per se breach of 123(2). I disagree.

Fly, yes well, it is always hard for an old hegemon to bend the knee to the new one (EPO jurisprudence) isn't it. It took the BGH 30 years on the law of novelty. On "same invention" I expect little further resistance.

Myshkin said...

@MaxDrei:
"Myschkin, change of scope instantly prompts a 123(2) objection but should it? I think it does not automatically follow, that a change of scope introduces new technical teaching."

I'm not sure what you understand by "technical teaching", but Art. 123(2) requires that that what is claimed is already disclosed in the application as filed. What is claimed must be disclosed, either explicitly or implicitly. Implicitly disclosed is only that which is unambiguously implied by the text (and drawings) of the originally filed application.

Intermediate generalisations generally are not allowable. In a particular case there might be a reason why it is allowable. A feature only found in the context of a specific example of the invention can be added to a more general claim if the skilled person understands that the example serves to illustrate that this feature is an advantageous further improvement of the claimed invention. But a feature that just happens to be disclosed as part of an example cannot be added to a more general claim.

MaxDrei said...

Thanks Myshkin (and sorry about the mis-spelling) for that very revealing answer. My suspicion that you are inside the EPO grows. My anger with the way DG1 currently handles 123(2) grows even more. It's about time DG3 stamped on the notion that, absent special circumstances, every amendment adds matter, just as long as an Examiner can categorise it as an "intermediate generalisation".

Amendments during prosecution are allowable, unless they offend one provision or another of the EPC. If you can show that they introduce a technical teaching that is not directly and unambiguously derivable from the app as filed, reject them. But if you can't do that, don't object under 123(2) automatically, just because Applicant has narrowed the claim to get patentable over the prior art. The default should be to allow, not to refuse. If you disagree on that ground principle, please now say.

I would be happy if the 123(2) standard applied were the same as is used for novelty objections. Imagine (setting aside just for a moment the separate point that the particular deprives the general of novelty)what happens when an Appicant argues that the claim under examination is a generalisation intermediate between D1's claim 1 and its Example 1 and so is NOT disclosed by D1.

OF COURSE, in the field of "selection inventions" everybody has to watch out for undisclosed intrermediate generalisations that might turn out to be the basis of an enforceable selection invention claim of which there was no trace in the app as filed. But from that special situation to move to the position that narrowing amendments always offend 123(2) unless they import into claim 1 one of the dependent claims as filed is unfair to deserving inventors and NOT in accordance with the provisions of the EPC.

Myshkin said...

@MaxDrei:
"But from that special situation to move to the position that narrowing amendments always offend 123(2) unless they import into claim 1 one of the dependent claims as filed is unfair to deserving inventors"

Where did you read this??

The EPC is how the Boards interpret it. The Enlarged Board has been quite clear on how Art. 123(2) should be interpreted.

Myshkin said...

And maybe you could be less preoccupied with who or what I and others here might be. This blog is usually a very friendly place.

MaxDrei said...

Where did I read it Myshkin? Here:

"Intermediate generalisations generally are not allowable."

That was you, above. As far as I can see, that sets up the default position that, absent something special, that is, in general, ANY intermediate generalisation per se imports new matter. That's what upset me. But did I misunderstand you? If so, would you care to put me straight?

Don't quite follow you, that guessing where you are coming from is being unfriendly. I'm just a representative, a fan of EPO caselaw, trying to get fair protection for my clients, in line with what the EPC contemplates.

Myshkin said...

So it seems you did not read "narrowing amendments always offend 123(2) unless they import into claim 1 one of the dependent claims as filed". You may be a native speaker, but they are not equivalent.

For the rest I refer to the Case Law book, section III.A.2.

MaxDrei said...

Overnight, Myshkin, I have had further thoughts, struggling with the balance between what is new, and what is new matter. Just like you, I now invoke the DG3 caselaw

Time was, that a selection had to be purposive before it could be judged as novel. Now though (thanks to DG3) any selection, however arbitrary, is novel. For me, that is regrettable because it has at least two poisonous consequences.

First, if rich Mr Corporate Goliath applies for Genus AXn he can, in the 54(3) period, apply for an infinite number of novel species AX1, AX2, AX3 etc. Such conduct should not be encouraged.

Second, if arbitrary selections are always new, then every "intermediate generalisation" little David needs to get novelty over Goliath must regrettfully be deemed by the governing DG3 caselaw on novelty to "add subject matter" to his patent application. That ain't right either.

I grant you, it's easier for the EPO to handle selections and intermediate generalisations on this handy off-the-shelf, "One Size Fits All" basis. I just think it's not very fair to anybody.

If EPO caselaw is to maintain its high reputation, it should try very hard to be fair, both to Applicants and to their competitors. Surely we can agree about that.

But if you think I'm wrong about the interplay between selections and intermediate limitations do please tell me. I'm interested.

Meanwhile, fortified with what I've learned here, I will take a look at the White Book as soon as I'm back in the office. I'm sure it will help me, as you suggest.

MaxDrei said...

Intermediate generalisations: more overnight thoughts.

Suppose I claim apparatus with ABCD and characterized by E. The only dependent claim adds features F and G. The EPO search reveals document D1, a 54(3) doc that discloses ABCDEF. I amend claim 1 to ABCDEG, with claim 2 to F alone.

The ED has several possibilities, including:

1. Allow the claims. D1 is evidence that G and H are separable.

2. Find that claim 1 offends 84, 54 and 123(2). Claim 2 proves that F and G are inseparable. It follows that G is implicit in D1.

3. Find claim 1 offends 123(2). No objection though, on 84 and 54.

For me, options 1 and 2 have integrity but I have no expectation of ever seeing them. option 3 is no work for Examiners, and what they all choose, but is it intellectually sound? Either F and G are separable or they are not.

When I have a D1 to rely on, I might be able to separate claim 2. But when Examiners assert that the burden of proof of separability of F and G lies with me, I will likely have to go and see DG3 before I can get my client any progress. That's my grumble.

I've now read III.A.2 of the White Book Myshkin and do find there some comfort for my position.

Would you like to comment?

Myshkin said...

"1. Allow the claims. D1 is evidence that G and H are separable."

The content of D1 is irrelevant for the question whether the amended claim complies with Art. 123(2). The question is what the skilled person, using his common general knowledge, would directly and unambiguously derive from the application as filed.

"2. Find that claim 1 offends 84, 54 and 123(2). Claim 2 proves that F and G are inseparable. It follows that G is implicit in D1."

I don't know why claim 1 would offend against Art. 84 and 54. Claim 2 does not prove that claim 1 offends against Art. 123(2), but claim 2 and claim 1 on their own quite likely do not suffice as a basis for amended claim 1. The description could help.

"For me, options 1 and 2 have integrity but I have no expectation of ever seeing them. option 3 is no work for Examiners, and what they all choose, but is it intellectually sound?"
Are you sure option 1 is more work than option 3? In any case, accusing examiners of laziness when you "lose" seems a bit sore to me. Instead, you could have putten up a fight. Show the passages that disclose that feature F stands on it own as a further improvement of claim 1. The examiner will have to admit you're right, or explain why your arguments fail.

"Either F and G are separable or they are not."
Art. 123(2) is about what the application as filed discloses. If the application only discloses that they go together, then taking them apart adds new information.

That they can be taken apart does not have to be disclosed explicitly. Implicitly is enough. But it has to be unambiguously disclosed. Says the law.

When you just rely on D1, you will have no chance with DG3.

Myshkin said...

I missed this part:

"It follows that G is implicit in D1."

Now I understand why you mentioned Art. 54. Indeed this reasoning makes option 2 consistent with option 1. However, both options are based on a misconception of Art. 123(2).

Art. 123(2) is about what the application as filed discloses to the skilled person. The skilled person interprets the application using his common general knowledge, but that does not mean he will bend the content of the application to conform with the technical truth. He will also not supplement the disclosure of Art. 123(2) with elements from his common general knowledge (let alone with elements from documents such as D1).

Of course features F and G will often be "separable" in the sense that ABCDEG makes technical sense. But this is not the question. The question is whether the applicant, at the time of filing, disclosed the combination ABCDEG. If he did, then it does not matter for Art. 123(2) whether the combination actually makes sense.

MaxDrei said...

Many many thanks Myshkin, for that last comment, a window into the mind of an EPO Examiner. Indeed we argue about what "disclosed" means. I see it as what the imaginary Person of Ordinary Skill, with a Mind Willing to Understand the document's disclosure, can "derive" directly and ambiguously from the app as filed.

By contrast, you write:
"The question is whether the applicant, at the time of filing, disclosed the combination ABCDEG. If he did, then it does not matter for Art. 123(2) whether the combination actually makes sense."

I just want the same standard for 123(2)as is used under Art 54, and I want that standard to be one that engineers and scientists can accept as common sense, so that the law sets "real life" standards.


MaxDrei said...

Myshkin, how about a concrete example, to flesh out your position? So: claimed is a pre-fabricated dwelling for disaster relief, same shape and size as an international ship-borne container; claim features ABCD, c-i-t feature E.

It turns out that ABCDE is old. But hang on. Claim 2 recites F: window in the top panel and G: door half way along one long side. Only one ilustrated example of the invention. It includes all of features A to G. Applicant makes claim 1 new by adding F, continues to claim G in claim 2. Has he added matter? As I understand your position, you would say, sadly, YES.

Or have I misunderstood you?

BTW, I'm writing for the readership generally, hoping it includes many EPO Examiners, including the one who is giving my client such a hard time at the moment. So please don't take all this personally.

Myshkin said...

"By contrast, you write:"

There is no contrast. The skilled person uses his technical skills / the common general knowledge to determine what a document discloses. Once it has been determined what a document discloses, it is irrelevant if that might objectively not reflect the technical truth. Coming up with a D1 to show that the disclosure makes no sense does not change the subject-matter that it discloses. If a patent application states that water can burn, then that is what it discloses. Unless it is clear from the application as a whole that "water" somehow got there by mistake.

There may be subtlety here, but there is no contradiction.

This has nothing to do with the mind of an examiner. Knowing the law well is at least as important for an attorney. As far as I am concerned, this whole discussion is not on what the law should be, but on what the law is. Words like "sadly" are unnecessary.

Regarding your example, if this is all, if the description is completely silent on F and G and all you have is F+G in claim 2 and F+G in the drawings, then it is not clear to me that the application as filed discloses the combination ABCDEF. Are you sure that the applicant contemplated this precise combination? I could easily come up with arguments that with some luck might get the claim past an Examining Division though, if that is what the client wants.

The problem could of course have been avoided by an "and/or" in claim 2 as filed. That way there is no need to argue that the "or" is really inevitably there, even though you can't see it.

MaxDrei said...

Thanks again, for that further window into the mind of an Examiner at the EPO. It concludes with the usual line, that all the problems could have been avoided if only the patent attorney had drafted the patent application competently. On that issue, the drafting is usually OK when the drafter already knows D1 when doing the drafting. The problems usually start though, when D1 emerges during prosecution. You should try it sometime.

Other jurisdictions are much more understanding of the difficulties of drafting when the full prior art picture is not known. THe UK always used to be severest on drafting competence but I think it is now second behind the EPO. This is a good thing, when the drive is on, to Raise the Bar and get higher "Quality". Just as long as (to repeat what I wrote above) the EPO doesn't part company with reality.

I see I will need to pray in aid the "common general knowledge" of the skilled person. In the real world, that comes down to the cgk of the ED. Point taken.

Thanks again for your time.