tag:blogger.com,1999:blog-2352189175211648260.post1406011396878160576..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 107/09 – Truth On This Side Of The Ocean …orhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger9125tag:blogger.com,1999:blog-2352189175211648260.post-50268901942550860722013-02-22T23:59:00.606+01:002013-02-22T23:59:00.606+01:00Thanks for that, Myshkin. I think that's a ni...Thanks for that, Myshkin. I think that's a nice way to express the core issue.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-75676238880475983332013-02-22T21:33:37.168+01:002013-02-22T21:33:37.168+01:00@MaxDrei:
But which of these two is needed under A...@MaxDrei:<br /><i>But which of these two is needed under Art 87 EPC to take a claim back to a Paris priority date? The latter, I suppose.</i><br /><br />I think so too. In my view,for an application to benefit from a priority claim, the priority document should already contain all the information that the patent application needs to contain, which includes the information needed to comply with Art. 83 (i.e. enablement over the full scope of the claimed subject-matter). If anything still needs to be added to the priority document, it is not fair to protect the applicant against intermediate disclosures.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-36946208175346523272013-02-21T10:23:44.574+01:002013-02-21T10:23:44.574+01:00Just thinking out loud here but is there not a dif...<i>Just thinking out loud here but is there not a difference between i) the sort of enablement that is needed in a document before it can be useful as a novelty destrover and ii) the sort of sufficiency in the description that is needed to satisfy Art 83 EPC in relation to any particular claim?<br />I'm thinking that in the former case all I need is something enabled within the scope of the claim under attack whreeas in the latter case the sort of enablement I need is the sort that extends over the full scope of the claim.</i><br /><br />This is a very fair and fine distinction, but the present case is not a matter of enablement <i>over the whole scope of the claim</i>. It is <b>the novelty test</b> which is not enabled here.<br /><br /><i>Present claim 1 relates to “[a] soluble ligand which comprises at least a binding portion of an immunoglobulin molecule, in which the immunoglobulin molecule is capable of competitively inhibiting the binding of monoclonal antibody MR1 as produced by a hybridoma cell line deposited with the ATCC and assigned accession number HB 11048, to CD40CR molecule, [...].” </i><br /><br />While it could be that a previous antibody against CD40CR falls under the scope of claim 1, you simply cannot identify it without access to mAb MR1 to do a competition assay. Much less could you produce ANY SINGLE embodiment within the scope of the claim without MR1 or the corresponding hybridoma.<br /><br />To allow such a claim would amount to accepting novelty of a <i>product</i> because the applicant has invented a new <i>test</i> (a new parameter) for it. This would be worse than patents on useless snake oil.ExaMinusnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-22394473899325811742013-02-20T22:55:15.724+01:002013-02-20T22:55:15.724+01:00Just thinking out loud here but is there not a dif...<i>Just thinking out loud here but is there not a difference between i) the sort of enablement that is needed in a document before it can be useful as a novelty destrover and ii) the sort of sufficiency in the description that is needed to satisfy Art 83 EPC in relation to any particular claim?</i><br /><br />Your question sounds reminds of the old debate on whether the skilled person for Art. 56 is the same one for the assessment of Art. 83 compliance.<br /><br />What pops into my mind on this subject are perpetual motion devices, or comparable impossible stuff that you will see in many fields. I already had problems with arguing a lack of inventive step for improbable gibberish. What kind of cr*p artist would constitute a person skilled in the science of nonsense?<br /><br />When I think about this, I even begin having a problem with assessing novelty. An examiner will argue that the invention does not meet Art. 83, and will then for good measure cite a document for Art. 54(2), if she finds one. Usually it could be a paper or a book debunking the fallacy behind the alleged "invention". You will read into it the wording of the claim, but is it "enabling" in the sense of the <a href="http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_vi_4.htm" rel="nofollow">Guidelines</a>? These demand that <i>the information given [in the document] to the skilled person is sufficient to enable him [...] to practise the technical teaching which is the subject of the document, taking into account also the general knowledge at that time in the field to be expected of him [...]</i>. But the document you cite argues exactly the opposite of "enablement".<br /><br />Or, in a similar vein, the inventor was kind enough to publicly brag about his fairy-tale contraption before the filing date. Can you oppose this as prior art if the disclosure is as hare-brained as the application?<br /><br />I do have some very specific cases in mind. <br /><br />The general context: the EPO unfortunately grants <a href="http://worldwide.espacenet.com/publicationDetails/biblio?DB=EPODOC&II=0&ND=3&adjacent=true&locale=en_EP&FT=D&date=19960110&CC=SK&NR=109595A3&KC=A3" rel="nofollow">patents</a> to <a href="http://www.youtube.com/watch?v=axTbVlSgEAE" rel="nofollow">snake-oil peddlers</a>, who then proceed to use this official "endorsement" in their advertising, like they also do with TÜV-certificates. (here is an example from a <a href="http://s4.postimage.org/o8bdhcmdp/zzz0027.jpg" rel="nofollow">competitor</a>, who markets a comparable magic contraption).<br /><br /><i>I'm thinking that in the former case all I need is something enabled within the scope of the claim under attack whreeas in the latter case the sort of enablement I need is the sort that extends over the full scope of the claim.</i><br /><br />I don't really see a problem. If the claim as it stands is understandable and minimally enabled to the skilled person who reads it, then the same should probably apply to your prior art.<br /><br /><i>But which of these two is needed under Art 87 EPC to take a claim back to a Paris priority date? The latter, I suppose.</i><br /><br />It would all depend, classically, on whether you represent the applicant/proprietor or opponent/infringer...Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-70157192572923717412013-02-20T11:03:20.672+01:002013-02-20T11:03:20.672+01:00Just thinking out loud here but is there not a dif...Just thinking out loud here but is there not a difference between i) the sort of enablement that is needed in a document before it can be useful as a novelty destrover and ii) the sort of sufficiency in the description that is needed to satisfy Art 83 EPC in relation to any particular claim?<br /><br />I'm thinking that in the former case all I need is something enabled within the scope of the claim under attack whreeas in the latter case the sort of enablement I need is the sort that extends over the full scope of the claim.<br /><br />But which of these two is needed under Art 87 EPC to take a claim back to a Paris priority date? The latter, I suppose.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-78773949897420802742013-02-19T01:12:42.110+01:002013-02-19T01:12:42.110+01:00Max,
I used the word "specialised" beca...Max,<br /><br />I used the word "specialised" because this decision is really only relevant for the field of biotech and its peculiar <a href="http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/rcii_v.html" rel="nofollow">set</a> of rules.<br /><br />I, as a biotech dilettante, find it curious on a philosophical level that sufficiency of disclosure could be established by a (perishable) physical artifact. It reminds me somehow of the working models which had to be filed up at the USPTO up to the end of the nineteenth century.<br /><br />It would have been surprising in anycase surprised that the outcome of this case would diverge from <a href="http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20100924.html" rel="nofollow">OJ 2010, p. 498</a>:<br /><br /><i>The depository institution and the legal statute under which the biological material is deposited must comply with the requirements of the country in which the previous application was filed. The previous application must also refer to this deposit in a manner enabling it to be identified. For the purposes of disclosure of the invention in the European patent application claiming priority however, the requirements of Rule 31 EPC must be fulfilled, i.e. the deposit must have been effected with a recognised depository institution under the Budapest Treaty not later than the date of filing of the European patent application [...].</i><br /><br />I have a problem with the general conditions under which biological material is made available to the public under the Budapest treaty. Even if the "expert solution" is not retained the applicant is informed of any third-party requests for samples. The wording of the declaration under <a href="http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/r33.html" rel="nofollow">Rule 32(2)</a> is not limited either to designated EPC states, and seems to confer rights to the applicant extending beyond those strictly defined by the patent.<br /><br />The OJ furthermore states:<br /><br /><i>3.3 Applicants are <b>strongly advised</b> to file the deposit receipt issued by the recognised depository institution in order to enable the EPO to ascertain whether the requirements laid down in Rule 31(1) EPC have been fulfilled.</i><br /><br />This advice is provided in several forms, e.g. IIRC in the instructions for filling form 1200. There is no <b>obligation</b> for the applicant to actually provide proof that the deposit really occurred. If as a third party I were to investigate the matter, I see no other way but to make a real request to the deposit authority using EPO form 1140. Furthermore, technical information for maintaining the strain is held by the authority, but not necessarily part of the application.<br /><br />I find it a bit surprising that the prosecution lasted the full term of the patent, considering that it is rather simple (straightforward examination, only one opponent, no procedural fireworks). The wrapper contains a measly 737 sheets. There was incidentally also arguments made concerning sample contamination, but it wasn't a factor in the decision.Roufousse T. Fairflynoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-34038967342901184052013-02-18T13:42:34.405+01:002013-02-18T13:42:34.405+01:00Well, Fly, you call it "a bit specialised&quo...Well, Fly, you call it "a bit specialised" but the principle at stake here, and so usefully here reinforced and confirmed, is not "specialised" at all, is it. How thankful I am that the EPO treats the "disclosure" of a document always the same, irrespective whether is is under Art 54 or Art 123(2) or Art 87. Otherwise, there would be chaos in the house.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-69221424757638403782013-02-18T12:26:25.922+01:002013-02-18T12:26:25.922+01:00An important decision for biotech, and one that ma...An important decision for biotech, and one that may lead to the invalidation of many other patents. Good arguments for deciding either way, but of course the EPO decided against the inventor. Colour me shocked.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-61990042441724543682013-02-18T03:50:58.466+01:002013-02-18T03:50:58.466+01:00Quelle sublime érudition, Blaise comme compagnon d...Quelle sublime érudition, Blaise comme compagnon de chevet!<br /><br />Interesting case, even if it is a bit specialised.<br />Roufousse T. Fairflynoreply@blogger.com