tag:blogger.com,1999:blog-2352189175211648260.post3175604350160174258..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 2245/10 – Contradictionorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger6125tag:blogger.com,1999:blog-2352189175211648260.post-17654012336422767292013-05-15T10:18:28.638+02:002013-05-15T10:18:28.638+02:00No real problem with the decision. As others have ...No real problem with the decision. As others have stated the searching for a further benefit after filing to support inventiveness is akin to adding matter.<br /><br />I suspect the reasoning is that second use inventions exist for this reasonDrZnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-61680723386905956372013-05-15T09:47:23.276+02:002013-05-15T09:47:23.276+02:00I presume you mean A.54(4) or A.54(5).
Please bea...I presume you mean A.54(4) or A.54(5).<br /><br />Please bear in mind that most "medical use" applications do not focus on the disease but on dose, regimen or formulation details to "improve" on a well-known therapetic application. This is the case here.<br /><br />As to arguing "benefit B", the case law (T1329/04) is quite clear: Post-published document (2) can only be introduced into the procedure if the application as filed already contains some pointer to this effect.<br />You have to invent first and then file. You can't file first and then go in the lab fishing for some "unexpected effect" which could help your application.ExaMinusnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-50152118544204986302013-05-15T09:20:05.272+02:002013-05-15T09:20:05.272+02:00ExaMinus, your comment to me indicates that the Bo...ExaMinus, your comment to me indicates that the Board is using the term "problem" in a manner more akin to the "method" referred to in A54(3). I would agree that a patent directed to a method for treating disease X cannot be amended to be directed to a method of treating disease Y. If my patent describes a new form of drug which has benefit A over prior art (1) and benefit B over prior art (2) then my opinion is that I should be able to argue this benefit B as showing patentability even if the specification is silent as to this benefit for the reason that document (2) was unknown at the time of drafting.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-62940010819448064662013-05-14T15:06:14.076+02:002013-05-14T15:06:14.076+02:00@MaxDrei
No, it doesn't. But [2.3.5] nicely pu...@MaxDrei<br />No, it doesn't. But [2.3.5] nicely puts what you can or cannot do by "reformulating the problem".<br /><br />@Anonymous<br />The definition of the problem is not merely a tool. To achieve the claimed technical (therapeutic) effect is an essential feature of medical use claims. You <b>need</b> proper experimental data to support your medical uses claims (see T1273/09, discussed yesterday), so the problem to be solved cannot be defined out of what your data can support...<br /><br />There was nothing extraordinary in the outcome of this reformulation. The ED had refused under Art. 56 based on D3 + D4/5/6/9/10. The Board rather takes D5 as closest prior art... and then refuses under Art. 56 based on D5 + D3. The applicant cannot complain that his position has been artificially worsened by the shift from D3+D5 to D5+D3.ExaMinusnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-53590056469932832902013-05-14T10:55:11.700+02:002013-05-14T10:55:11.700+02:00Jumping in here (even though I have not yet read t...Jumping in here (even though I have not yet read through the full text of the Decision) in order to debate with the writer of the comment above.<br /><br />Fair scope of protection in relation to the contribution to the art? Yes, by all means. But, to my mind, fairness to the subjective knowledge of the inventor ought not to over-ride the imperative to decide obviousness objectively.<br /><br />So we do not ask what was obvious to the named inventor, or any other real person. Instead, we ask what was obvious to that mythical beast, the person skiled in the art, who knows all the prior art but lacks any inventive faculty. there is nothing unfair about that: we do it for novelty so why not also for obviousness?<br /><br />So it is right to re-formulate the technical problem, to render it the objective technical problem and so render the obviousness enquiry objective, as a whole.<br /><br />But now think "First to File" and "added subject matter". Also on grounds of fairness and objectivity, an inventor ought not to be allowed to "improve his position" after filing.<br /><br />Hence the rule on post-filed evidence of technical effects: they can confirm that which the appln as filed announced and made plausible but ought not to be effective to get on its feet some technical effect not announced in the appln as filed.<br /><br />I ask: Does this decision do anything more than just confirm the existing fair caselaw?.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-6669258946362075862013-05-14T09:45:41.617+02:002013-05-14T09:45:41.617+02:00I have had concerns along these lines for several ...I have had concerns along these lines for several years now. The definition of the "problem to be solved" is, unless the problem is defined in the patent, a work of fiction determined by the disclosure of the cited prior art. Since the proprietor was unlikely to have had a knowledge of this prior art, it is unfair to tie them to the content of the disclosure with regard to the definition of the problem. <br /><br />What you have is the disclosure of the patent and the contents of the prior art. In order to determine if there is an invention, the EPO has formulated the problem and solution approach but the definition of the problem is not part of the application documents - it simply a tool to be used by the organs of the EPO. Consequently, there should be no bar on how this tool should be configured as it is being carried out post filing using knowledge not available to the applicant. Anonymousnoreply@blogger.com