tag:blogger.com,1999:blog-2352189175211648260.post1575524716240950609..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 230/07 – Two Is Enoughorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger10125tag:blogger.com,1999:blog-2352189175211648260.post-30882653430591263422010-11-12T10:28:12.332+01:002010-11-12T10:28:12.332+01:00@anonymous: sorry for using the expression "d...@anonymous: sorry for using the expression "double patenting". I did not mean "real" double patenting as Myshkin calls it, what I meant was "two patents protecting the same subject-matter" (the narrow range). EPO examinerAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-30192562268868231842010-11-12T00:24:46.136+01:002010-11-12T00:24:46.136+01:00@EPO examiner:
"This concerns Art. 54 (3) and...@EPO examiner:<br />"This concerns Art. 54 (3) and the point is that double patenting of subject-matter (the narrow range) should be allowed only in the exceptional case when there has been a real contribution from the second applicant."<br /><br />But a real contribution is not a criterion for allowing double patenting at all. Art. 54(3) only requires novelty. (And "real" double patenting, i.e. same applicant, same effective filing date, not even requires novelty but only "some difference in scope".)<br /><br />However, I do sympathise with your example. Of course this is why the Boards came up with the three criteria in the first place.<br /><br />In my view, there is actually quite a lot to be said for criterion (iii), provided one considers that a range not only individually discloses its end points and the range as an entity, but also an "arbitrary specimen". If the "arbitrary specimen" of a range is identical to the "arbitrary specimen" of the subrange (meaning that the subrange does not exhibit a technical effect not already exhibited by the range), the two specimens may be considered identical, so that the range is novelty destroying for the subrange.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-81817121187133775782010-11-11T23:22:30.416+01:002010-11-11T23:22:30.416+01:00@pat-agoni-a:
In the case of a subrange of a large...@pat-agoni-a:<br />In the case of a subrange of a larger range, I would say the subrange is novelty destroying for the larger range even without the use of end points. The subrange itself is more specific than the larger range.<br /><br />In the case of overlapping ranges, I agree you have to assume that a range individually discloses its end points in order to get a novelty destroying effect.<br /><br />I agree it makes sense to get rid of the other two criteria of T 279/89 and to adopt your view. Certainly any novelty approach based on vague criteria such as "narrow" and "sufficiently far removed" is bound to lead to logical inconsistencies.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-83958721436722669932010-11-11T16:43:10.670+01:002010-11-11T16:43:10.670+01:00Thanks for clarifying. I believe the problem you p...Thanks for clarifying. I believe the problem you point out is more fundamental than the three criteria of T 279/89. If I understand you correctly, you do not like that the EPC allows for "double patenting" in cases where the invention in the second application is not inventive with respect to the invention disclosed in the first application, but only novel. I agree that the European approach is criticizeable for being a strange compromise. The U.S. approach, where the prior art is more or less the same for novelty and obviousness, is more severe but also more straightforward, I would say.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-89151113932241853792010-11-11T14:20:51.524+01:002010-11-11T14:20:51.524+01:00Why should double patenting be allowed only if the...Why should double patenting be allowed only if there is a good reason? I've never understood the problem with it. If an applicant is prepared to waste money on multiple applications, that is fine. And if he gets his multiple patents and then uses them abusively, surely that's something for the courts to worry about, not the patent offices? I've always seen this as the reason why the EPC contains no provisions regarding double patenting - it would have been simple enough for the EPC legislators to include double patenting provisions, but they did not.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-71248505393062330782010-11-11T13:13:13.384+01:002010-11-11T13:13:13.384+01:00@oliver: I agree with what you are saying regardin...@oliver: I agree with what you are saying regarding Art. 54 (3) and inventive step. This concerns Art. 54 (3) and the point is that double patenting of subject-matter (the narrow range) should be allowed only in the exceptional case when there has been a real contribution from the second applicant. Imagine a claim towards a compound material. One constituent, which is always present in such a compound, is disclosed in the first application in a very broad range, say 1-1.000.000. The second application (the first application being prior-art under Art. 54 (3)) discloses the same constituent and claims say 100-1.000, which is narrow and far removed. The in reality utile range is 200-300. It is evident that the constituent needs to be there and no importance is given to it in either of the two applications. The second application would, applying the two criteria only, be granted and both would cover the same compound material in its utile composition. Double patenting for no good reason, isn't it ?<br />EPO examinerAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-10623458116187664282010-11-11T11:25:51.396+01:002010-11-11T11:25:51.396+01:00@EPO Examiner
You are right. As long as the Guide...@EPO Examiner<br /><br />You are right. As long as the Guidelines remain unchanged, this new doctrine (if confirmed) will not change the course of examination proceedings.<br /><br />This being said, my understanding is that the present decision only changes things when the prior art is A 54(3) prior art, where only novelty is examined. As soon as inventive step comes in, the third criterion is back because you have to show that the selection is inventive. <br /><br />Therefore, I would say that the present decision is a move towards a better distinction between novelty and inventive step matters, whereas the third criterion mixed up the two.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-7985935723654698162010-11-11T10:51:02.513+01:002010-11-11T10:51:02.513+01:00Good question. Perhaps we could still improve on t...Good question. Perhaps we could still improve on the wording ... ;-)oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-56170402054476363872010-11-11T09:55:14.279+01:002010-11-11T09:55:14.279+01:00There is the basic principle that there should not...There is the basic principle that there should not be two patents covering the same subject-matter. When the second application is granted, there is exactly this situation that both patents cover the narrow range. Thus the idea of the "old" case law apparently was to make an exception where the second applicant has discovered something very special that merits a patent. Thus, yes indeed if you abolish the third criterion, why not the other two criteria, too ? I believe they should keep all three. Also note that the first instance divisions are bound to the Guidelines and not to the case law. Thus unless you are in front of a BoA you will still have to deal with all three criteria.<br />EPO examinerAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-31797799179786440122010-11-11T09:16:47.716+01:002010-11-11T09:16:47.716+01:00I find this decision very interesting, but I wonde...I find this decision very interesting, but I wonder why it did not go the full way and also removed the other two criteria.<br />There are two ways of looking at a range: as a set of points or as an entity in itself.<br />If a range is regarded as an entity, then one range would be new over another simply by being different. If it is regarded as a set, then the criteria of being narrow and sufficiently far removed would not help in making it new.<br /><br />From the A 123(2) point of view it seems that a range is an entity and not a set, since otherwise all the values of the range would be disclosed and allowed as amendments (otherwise I would have difficulty in understanding why a disclosure of a molecule having between 3 and 5 carbon atoms does not disclose a molecule with 4 carbon atoms).<br /><br />Overlapping ranges are a different issue, since in that case although the entities are different there is one (or both) end point(s) of one range which fall(s) within the other range (this assumes that a range is in fact a double disclosure: one disclosure concerning the entity and the other the end and/or intermediate points which are specifically disclosed on their own).<br /><br />May be a nice question to the EBA could be: What the hell is a range?pat-agoni-ahttps://www.blogger.com/profile/14383461539323071512noreply@blogger.com