tag:blogger.com,1999:blog-2352189175211648260.post3639009318598398926..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 1691/08 – Don’t Speculateorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger18125tag:blogger.com,1999:blog-2352189175211648260.post-24528406746888472982011-05-09T22:49:02.829+02:002011-05-09T22:49:02.829+02:00Job well done!Job well done!oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-67510202021569969512011-05-08T00:45:50.740+02:002011-05-08T00:45:50.740+02:00Several decisions cite Art. 111(1) as the basis fo...Several decisions cite Art. 111(1) as the basis for remitting to the first instance with an order to grant. See e.g. T 22/00, T 978/98, T 962/95, T 1221/01.<br /><br /><a href="http://www.epo.org/law-practice/case-law-appeals/recent/t890079ep1.html" rel="nofollow">T 79/89</a> is interesting. In the earlier decision <a href="http://www.epo.org/law-practice/case-law-appeals/recent/t850133ep1.html" rel="nofollow">T 133/85</a> on the same application, the Board refused the main request and remitted the case to the ED with the order "to complete the examination of the application on the basis of Claim 1 of the conditional submission B". The ED then sent a R. 51(4)-communication, but the applicant reinstated the claims of the main request. The ED did not admit these claims and refused the application, the applicant appealed once more.<br /><br />In the summons to the oral proceedings (dated 22.03.1990), the Board expressed the view that, firstly, it followed from Art. 111(2) that the ED was bound by the order of the BoA, so that it had no discretion to re-open examination on the basis of any other claim. Secondly (and for the case that the Board would not maintain the above position), it followed from Art. 111(2) that the ED was bound by the Board's decision to refuse the main request, so that the ED had no discretion to re-open examination of the main request.<br /><br />In the decision, the Board took the second position. Maybe it had some doubt that the order it had given in T 133/85 was really binding on the ED?<br /><br />Turning again to T 1691/08, if we assume for the moment that the ED is not bound by the order itself, does the introduction of new documents really change the facts to the extent that the ED is not bound by the finding of the Board that the claims were new and inventive? If the Board states that certain subject-matter is novel, is this an absolute statement (so that new documents may prove it wrong but cannot undo its binding effect), or only relative to a limited set of prior art (so that new documents can undo its binding effect)?Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-48175137226117175332011-05-08T00:44:52.330+02:002011-05-08T00:44:52.330+02:00I think almost all that can be said has been said....I think almost all that can be said has been said. I too would like to see whether there is any "legal basis" for pat-agoni-a's triptych.<br /><br />The more I think about it, the more I believe that the drafters of A 111 had no "remittal with the order to grant" in mind when they wrote the provision. A 111 appears to cover two situations: either the Board exercises the powers of the first instance (and it can do so until the end, for instance when it revokes an opposed patent), or it remits the case at some point "for further prosecution", whatever this may be. Remittal with an order to grant is somewhat in between and might have been introduced for practical reasons. As it is in between, it is difficult to be sure whether A 111(2) applies or not. Personnally I still believe it does (even formalities qualify as further prosecution), but there have been good arguments against this view.<br /><br />Myshkin's R 102 argument is interesting but I would say that one must not mix up the reasons for the decision and its ratio decidendi. T 934/91, citing Black's law dictionary, has given a definition of the latter: "the "ratio" of any decision is the ground or the reason for making it, in other words, the point in a case which determines the outcome of the judgment". So the reasons under R 102(g) certainly have to express the ratio decidendi but they are not to be confounded with it.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-56981010216406996532011-05-07T18:13:24.517+02:002011-05-07T18:13:24.517+02:00Although I suspect that pat-agoni-a is right, I wo...Although I suspect that pat-agoni-a is right, I wonder what he considers to be the legal basis for a) and b) (where I understand a) to refer to an "order to grant").<br /><br />That the ED is bound by an order to grant does not follow from Art. 111(2), since the order (R. 102(h)) is not a ratio decidendi (R. 102(g)).<br /><br />I also don't see how remitting and ordering the ED to grant a patent is a case of exercising the power of the ED.<br /><br />The "order to grant" seems part of the decision on allowability of Art. 111(1), first sentence. This decision is of course binding. However, Art. 111(1), second sentence, does not seem to give room for giving such an order.<br /><br />Of course the fact of the matter is that most if not all allowable appeals result in one of orders a), b) and c), and I cannot imagine a Board saying that its orders have no binding power.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-42244797811566990252011-05-06T16:02:11.176+02:002011-05-06T16:02:11.176+02:00There are three typical orders in examination proc...There are three typical orders in examination proceedings in decisions from the BoAs following setting aside the decision:<br />a) to grant a patent with the following docs;<br />b) to adapt the description;<br />c) for further prosecution.<br /><br />Only in case (c) is the ED empowered to request amendments to the claims, although following the ratio decidendi of the decision, ie if something was found novel or inventive over some docs the ED is bound by these findings. New material may be cited in these cases. What is not so clear is whether the ED is bound by the interpretation of the claims given by the board or if, on hand of new material, a new interpretation can be given to some features.<br /><br />In any case, in situations (a) and (b) no amendments to the claims are allowed. They were finally decided by the board (res judicata). Opposition although is a new chapter that is still open.pat-agoni-ahttps://www.blogger.com/profile/14383461539323071512noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-56294754584162504062011-05-06T13:49:53.122+02:002011-05-06T13:49:53.122+02:00My last offer: A 111(1,5) applies. ;-)My last offer: A 111(1,5) applies. ;-)oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-34939818931948299232011-05-06T13:27:15.827+02:002011-05-06T13:27:15.827+02:00I can't follow pat-agoni-a's argumentation...I can't follow pat-agoni-a's argumentation.<br />Art 111 is the only article that regulates what the BoA can do for finishing a case: either exercise the power of the first instance (111(1)) or remit the case for further prosecution (111(2)). In the present case clearly Art 111(2) was applied.<br />The ratio decidendi is to grant a patent as set forth in the decision.<br />This however only holds true as long as the facts are the same. In the present case the facts have apparently changed by the additional document which is cited by the applicant but apparently not discussed for reaching the ratio decidendi. Therefore, though the ED cannot deny Art 84/56 with the documents so far on file, the application must be assessed in light of the new document not yet considered.<br /><br />In my opinion this is a straightforward and also cost-effective procedure: for example the same document may be submitted as third party observation - then the ED would also need to take this document into account for the decision (at least the document would be relevant in opposition proceedings).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-6333977437085998452011-05-06T11:42:24.119+02:002011-05-06T11:42:24.119+02:00In principle yes, but as still some formalities ha...In principle yes, but as still some formalities have to be fulfilled (fees, translations, etc) this is handled by the department of first instance. This has administrative reasons, so that DG3 does not need to duplicate all the required administrative infrastructure.pat-agoni-ahttps://www.blogger.com/profile/14383461539323071512noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-57285228484535389652011-05-06T11:34:19.343+02:002011-05-06T11:34:19.343+02:00Well,you may be right. When thinking about this I ...Well,you may be right. When thinking about this I had come to the conclusion that the remittal with an order to grant was a particular case of remittal for further prosecution. If your argument was right, then the Board itself would have to grant the patent, wouldn't it?oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-29180736085449788622011-05-06T11:26:09.949+02:002011-05-06T11:26:09.949+02:00A 111(2) EPC does not apply in this case, as the b...A 111(2) EPC does not apply in this case, as the board did not remit the case "for further prosecution", but decided the case with the order to grant a patent with the listed documents. There is no room for any further action of the ED but to follow this order. In fact it is A 111(1) EPC which applies in this case with the BoA exercising the powers of the ED.pat-agoni-ahttps://www.blogger.com/profile/14383461539323071512noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-67616664696692907202011-05-06T02:23:56.140+02:002011-05-06T02:23:56.140+02:00@Anonymous:
"In short, expressis verbis has n...@Anonymous:<br />"In short, expressis verbis has no support in the EPC or case law, but that seems to be the standard applied."<br /><br />Literal support is indeed not required, but without literal support for an amended claim an applicant will usually have a very difficult time explaining why the claim is not in any respect broader or narrower than what was disclosed in the application as filed (because usually it will be broader or narrower in some respect). The case law of the Boards IS very strict.<br /><br />Of course, if an applicant has done his homework and also clearly explains to the ED how he derived the amended claim directly and unambiguously from the application as filed, it should be expected that the ED does not object.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-29757964920360188002011-05-05T22:34:33.160+02:002011-05-05T22:34:33.160+02:00Thanks, pat-agoni-a, for having shared this notewo...Thanks, pat-agoni-a, for having shared this noteworthy discovery with us.<br /><br />I guess A 111(2) is the most relevant legal basis, although one might perhaps argue that the facts are not the same when the ED comes across new relevant prior art.<br /><br />As far as case law is concerned, I think the body of res iudicata doctrine would find application. Besides that, I also found T 1399/06 in my case law treasure chest, but the situation is not quite the same: in this case an OD was scolded for maintaining a request that was broader than the set of claims on which the Board based its remittal for further prosecution.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-61097557508725721062011-05-05T19:33:51.239+02:002011-05-05T19:33:51.239+02:00I hope that the applicant does not bend to the obj...I hope that the applicant does not bend to the objections of the examining division and forces a further refusal, so that the board has the opportunity to state their view on such procedure. I cannot view any other outcome than a severe reprimand and the finding of a substantial procedural violation.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-31393320882600335082011-05-05T14:26:08.951+02:002011-05-05T14:26:08.951+02:00I did not mean to sound bitter, just frustrated. T...I did not mean to sound bitter, just frustrated. To be clear, I find most of the ED competent and intelligent. But, their emphasis on formalities can be maddening and can cost an applicant quite a bit of money. In short, expressis verbis has no support in the EPC or case law, but that seems to be the standard applied. <br /><br />Thanks for your reply.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-71677415444136833082011-05-05T14:13:06.742+02:002011-05-05T14:13:06.742+02:00Ah, the ED is introducing new documents instead of...Ah, the ED is introducing new documents instead of keeping to the Board's orders. I don't think the ED has any room for that. Is there case law on this?Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-10681696208823943882011-05-05T13:40:42.862+02:002011-05-05T13:40:42.862+02:00Have you noticed that the examining division issue...Have you noticed that the examining division issued a further communication on April 22 in response to the order of the BoA to grant a patent?pat-agoni-ahttps://www.blogger.com/profile/14383461539323071512noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-65254690339888977892011-05-05T12:55:30.530+02:002011-05-05T12:55:30.530+02:00Well, your comment sounds as if you had some bitte...Well, your comment sounds as if you had some bitter experiences.<br /><br />Clarity is always a difficult matter, because it is more subjective than, say novelty or even inventive step when assessed with the problem-solution approach.<br /><br />I am not so sure that there is such a big gap between the EDs and the Boards as far as intermediate generalisation is concerned. I've seen a great number of decisions where the Boards did not allow requests on this basis. It really boils down to whether the amendment presents the skilled person with information which cannot be derived directly and unambiguously from the original application, and this is a question that can only be decided on a case-by-case basis.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-54050102770477184282011-05-05T12:09:41.366+02:002011-05-05T12:09:41.366+02:00Mr. Randl,
Thanks for posting this decision. It ...Mr. Randl,<br /><br />Thanks for posting this decision. It is not uncommon for some EPO examiners to engage in "making stuff up" MSU when making clarity objections: claim 1 is unclear because the term X is unknown in the art. Often a quick search of past-issued claims or google books reveals that the term is well-known. It appears to me that some examiners do not interpret claims from the perspective of one skilled in the art, but from their own view: any suspect term beyond current or voltage are objected to. <br /><br />The biggest disconnect, though, between the BoA and the ED is the application of Art. 123(2) as it relates to intermediate generalizations. Amended claims that straddle the original claims and a certain embodiment are almost always objected to by examiners, and they typically hint that all features of the embodiment must be included. However, the BoA consistently hold this does not violate Art. 123(2): "In the instance of claim features being extracted in isolation from detailed embodiments in the description, this means, following established case law of T 1067/97, T 714/00 or T 25/03, it should be clearly recognizable that these features are not inextricably linked in terms of function or structure with the remaining features of the embodiment."<br /><br />Further, T 461/05 stated that there should be some reasons articulating why omitted features would be necessary to carry out the invention or why each of the embodiments constitute an indissociable bloc, i.e., inextricably linked.<br /><br />However, some examiners seem to interpret "the absence of any clearly recognisable functional or structural relationship" between claimed isolated features and the original combination of features not on an inextricably linked basis, but merely that they are shown together in an embodiment, which proves they have a functional or structural relationship.<br /><br />What gives?Anonymousnoreply@blogger.com