tag:blogger.com,1999:blog-2352189175211648260.post1623826558627085668..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 1042/06 – Common Denominator of 54, 87, and 123orhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-2352189175211648260.post-20812098695163171932010-05-08T12:50:44.749+02:002010-05-08T12:50:44.749+02:00I read the article some weeks ago. Is the problem ...I read the article some weeks ago. Is the problem not that different Boards have different views on what is a disclosed disclaimer (for which G 1/03 does not apply)?<br /><br />For example. The application as filed states "any metal, for example iron". Can you now claim "any metal, except iron" (without having to satisfy the conditions of G 1/03)?<br /><br />Some Boards say yes, because iron is disclosed, so "except iron" is a disclosed disclaimer. Other Boards say no, because the application as filed does not disclose that iron is excluded (and A.123(2) requires the connection between the various features to be disclosed in the application as well). T 1107/06 states that the latter approach is in principle correct, but that the skilled reader will always recognise that disclosed subject-matter can be excluded, so that "any metal, for example iron" implicitly discloses "any metal except iron".<br /><br />It seems that T 1443/05 was such a situation as well (but with respect to the priority document), but the Board does not clearly identify it as such and simply states "no". Personally I would agree that the answer is "no" (since the skilled person is a technical expert and not a patent attorney looking how to save a patent application ;)). But the authors of the article have a point that there is case law pointing to "yes".<br /><br />So I think this is more about different Boards applying the same test in a different way, than about (slightly) different tests for A.123(2) and A.87(1).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-4685122927346153692010-05-06T10:04:39.044+02:002010-05-06T10:04:39.044+02:00I just read an interesting article on the concept ...I just read an interesting article on the concept of "unambiguous and direct disclosure" in the March 2010 epi information journal. The authors point out that recent case law decisions have introduced an asymmetry between A 123 and A 87. <br /><br />I think this is due to the fact that G 1/03, by allowing disclaimers, to some extent 'stretched' A 123(2). This was a pragmatic choice, but from a purely academic point of view, disclaimers are problematic under A 123(2). <br /><br />For the time being, the situation is less clear for priority matters, but I trust that the Boards will finally converge towards accepting that disclaimers are not prejudicial to the validity of priority claims, be it only for the sake of coherence. Therefore, I expect the asymmetry between the A 123(2) and A 87 to be short-lived. We need some more decisions to see clear on that matter.Oliverhttps://www.blogger.com/profile/14069112323977591767noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-89883542702293947282010-04-29T20:03:29.898+02:002010-04-29T20:03:29.898+02:00Ok, I see what you meant and I should probably hav...Ok, I see what you meant and I should probably have read what you wrote using the common general knowledge of the (legally) skilled person ;)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-72203088901583463212010-04-29T08:48:31.195+02:002010-04-29T08:48:31.195+02:00Fair enough.
I did not say (or at least intend to...Fair enough.<br /><br />I did not say (or at least intend to say) that the claim of the second application has to be deriveable from the claims of the first application only, but that it must in principle be possible to amend the claims of the first application (the amendments being based on claims, description and/or drawings) so as to obtain the claim of the second application WITHOUT INFRINGING A 123(2).Oliverhttps://www.blogger.com/profile/14069112323977591767noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-40292316873375274422010-04-29T01:22:46.407+02:002010-04-29T01:22:46.407+02:00Maybe one could say that a claim lacks novelty if ...Maybe one could say that a claim lacks novelty if its scope includes subject-matter that can be derived directly and unambiguously from a document of the prior art? (This reflects that broadening a claim that lacks novelty will never restore novelty.)<br /><br />For A.123(2)/87/76, the test is then if its subject-matter can be derived directly and unambiguously from the application as filed / the priority document / the parent application, i.e. the exact same combination of features. Both narrowing and broadening a claim can cause the test to fail.<br /><br />Btw, for priority the claim of the second application does not have to be derivable from the claims of the first application; it is sufficient if it can be derived from any part of the first application including the description and drawings (but not the abstract).Anonymousnoreply@blogger.com