tag:blogger.com,1999:blog-2352189175211648260.post2937781621872343163..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 413/08 – Repudiate Quicklyorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-2352189175211648260.post-77098069974069868762010-04-21T02:09:26.600+02:002010-04-21T02:09:26.600+02:00I would say an acknowledgement IS enough to revoke...I would say an acknowledgement IS enough to revoke or refuse, unless the applicant/proprietor resiles from the acknowledgement (in time).<br /><br />The OD in this case was correct to revoke. The proprietor had not resiled, and the OD could not know that the proprietor would resile later in appeal. The OD was obliged to treat the background section as prior art.<br /><br />I don't think the applicant or proprietor has a "right" to resile from any acknowledgement of prior art. He may only resile if in fact the acknowledgement was made erroneously. Parties have no right to (knowingly) lie. (That the ED or OD will usually not be able to verify this is a different matter.)<br /><br />"It has to be remembered that a fair trial, but not the punishment of a party, is the main objective of the appeal."<br />If an appeal is about the correctness of the decision of the OD ("The purpose of the appeal procedure is mainly to give the losing party the possibility of challenging the decision of the OD on its merits.", G 9/91), then imo it is only fair to judge based on the same facts as the OD did. Note that the proprietor could have resiled from the acknowledgement during the opposition procedure. Why should he have the right to arbitrarily delay the resilement, thereby delaying the whole procedure?<br /><br />I'm not saying he does not have this right (and judging from T 413/08 he has the right), but there are arguments to the contrary.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-19210544451101441892010-04-20T09:03:33.530+02:002010-04-20T09:03:33.530+02:00For revoking a patent or refusing an application f...For revoking a patent or refusing an application for lack of novelty or inventiveness there has to be proof that something was indeed known and available to the public. An acknowledgement that something was prior art made by the applicant/proprietor is usually not enough, since it may be that it was made erroneously and only refers to "in-house" knowledge. <br />An exception to this principle was made by the boards (and clearly explained why) when the resilement was made so late that it prevented the other party to react in an appropriate manner, ie to submit evidence that what had been acknowledged as known was in fact known.<br />In the present decision such exceptional circumstances did not arise, since the resilement was made at the beginning of the appeal proceedings. Hence the opponent had enough time to search for adequate evidence which surely would have been admitted by the board.<br />It has to be remembered that a fair trial, but not the punishment of a party, is the main objective of the appeal.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-35118529931798676062010-04-19T21:39:27.307+02:002010-04-19T21:39:27.307+02:00I thought an opposition appeal was primarily inten...I thought an opposition appeal was primarily intended to verify the correctness of the decision of the OD. Isn't it a bit late to resile from an acknowledgement of prior art at that stage? (Well, apparently not ;))<br /><br />In this case the OD's decision to revoke was (probably) correct, the claims haven't changed, but the Board decides to maintain unamended.<br /><br />Maybe the opponent could have worded his questions for the EBA a bit better, because now clearly the answer to Q1 is "yes" and Q2 becomes meaningless. More interesting is the question whether an applicant can resile from acknowledged prior art at all (especially if the application based the technical problem to be solved on that prior art), and if so, if he can still do so in an opposition appeal when he could have resiled during the opposition procedure. (The Board probably would still not have made a referral though.)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-11780767179306256672010-04-19T11:35:33.049+02:002010-04-19T11:35:33.049+02:00True indeed.
Another dangerous thing to do is to ...True indeed.<br /><br />Another dangerous thing to do is to mark drawings as "prior art" (as often required in the States), unless they are really taken from a prior art document.Oliverhttps://www.blogger.com/profile/14069112323977591767noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-44512314803278585372010-04-19T10:11:33.041+02:002010-04-19T10:11:33.041+02:00Thank you Oliver, again an interesting case.
Duri...Thank you Oliver, again an interesting case.<br /><br />During my training period, my tutor always warned me when I used words like "conventional", "generally accepted" or "well known" when drafting a patent application.<br /><br />This case shows the headache such language can cause later on ...EQE Toolshttps://www.blogger.com/profile/17549211485928852883noreply@blogger.com