tag:blogger.com,1999:blog-2352189175211648260.post3845293004134765320..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 1496/11 – Bending & Foldingorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger23125tag:blogger.com,1999:blog-2352189175211648260.post-35581272891225529732012-11-30T09:35:06.103+01:002012-11-30T09:35:06.103+01:00good stuf from Myshkin.
There's a paper on th...good stuf from Myshkin.<br /><br />There's a paper on the EPO website about Art 54(3) under the rubric of the Tegernsee Group of patent law experts. It shows us that self-collision is peculiar to the EPC. In other parts of the world it is not allowed - too inconvenient for the attorneys who draft patent applications.<br /><br />There is a piece on this T decision on the Kluwer patent law blog. But no comments there yet.<br /><br />MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-69249558325244740482012-11-30T01:32:51.978+01:002012-11-30T01:32:51.978+01:00@pantagruel:
You are asserting that G 1/03 contain...@pantagruel:<br />You are asserting that G 1/03 contains a "basic flaw" that has introduced an "inconsistency", but I understand you will not explain why.<br /><br />I don't know how I would personally have decided G 1/03 had I been in the position to decide it, but as far as I can tell there is no basic flaw in it. Sure, the decision introduces an exception to the general rule of Art. 123(2), and one might not be happy with exceptions (or with this specific exception), but an exception to a legal rule is not an inconsistency.<br /><br />@Anonymous:<br />"May I throw in G2/10 ... according to this decision the G1/03-disclaimer would probably not be allowed ..."<br /><br />You have a very good point, since G 2/10 indeed very explicitly states that G 1/03 is not concerned with the situation in which the subject-matter excluded by a disclaimer is disclosed in the application. So in the situation we are discussing here, the allowability of the amendment "B minus A" cannot be based on G 1/03.<br /><br />What is more is that G 2/10 also states that "B minus A" is not directly and unambiguously derivable by the "rule of logic" that if an application discloses generic B and specific A, it also discloses B minus A. (I completely agree with that.)<br /><br />However, G 2/10 does not seem to say that a "G 1/03-type" disclaimer is not allowable in the case that the excluded subject-matter is disclosed in the application as filed. It only states that G 1/03 did not decide that question.<br /><br />In G 2/10, the president of the EPO had suggested, in the context of a disclaimer excluding disclosed subject-matter, that "where the subject-matter remaining in the claim is not directly and unambiguously derivable from the application as filed, the criteria established in decision G 1/03 should be applied regarding the allowability of the disclaimer" (G 2/10, point 4.7). The reason for this suggestion was that "because otherwise, in the case of a state of the art according to Article 54(3) EPC, an applicant disclaiming disclosed subject-matter could be in a worse position than an applicant disclaiming subject-matter for which there was no disclosure in his application. This was so since according to decision G 1/03 in the latter case the applicant did not have to show that the subject-matter remaining in the claim after the introduction of the disclaimer was also disclosed as such in the application as filed." The EBA however saw no justification for adopting the suggestion, and did not hold this discrepancy to exist.<br /><br />I am not sure exactly what to make of the EBA's reasoning in point 4.7 of G 2/10, but all in all I would say that G 2/10 leaves open whether an (undisclosed) disclaimer excluding disclosed subject-matter is allowable in the case of Art. 54(3) prior art.<br /><br />Maybe the next Board having to decide on a case of self-collision could be so kind to refer the question to the EBA.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-89368729448140903842012-11-29T10:26:19.098+01:002012-11-29T10:26:19.098+01:00Had I known that you would open this Pandora box, ...Had I known that you would open this Pandora box, Anonymous, I would have remained silent ! ;-)pantagruelnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-59811709105053126502012-11-29T09:33:22.894+01:002012-11-29T09:33:22.894+01:00May I throw in G2/10 ... according to this decisio...May I throw in G2/10 ... according to this decision the G1/03-disclaimer would probably not be allowed ...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-9884942782152855042012-11-29T01:29:16.956+01:002012-11-29T01:29:16.956+01:00I have not given this much thought (nor will I, be...I have not given this much thought (nor will I, because I have many other things on my mind right now), but I think that your paradox is based on the basic flaw of G 1/03. G 1/03 has introduced an inconsistency into the A 123 construction, and, very much like a fold in the carpet, you can drag it wherever it suits you. This is why I said that G 1/03 is not a good basis for legal reasoning. In my opinion, it is the premises that are flawed, and not your reasoning as such. No holes spotted. Cheers.pantagruelnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-60537009432163570402012-11-29T00:35:30.525+01:002012-11-29T00:35:30.525+01:00Well, at least for now G 1/03 is law. Could you po...Well, at least for now G 1/03 is law. Could you point at a hole in my argument?Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-87665869522239570502012-11-28T23:00:54.039+01:002012-11-28T23:00:54.039+01:00No offense meant, Myshkin. Please feel free to att...No offense meant, Myshkin. Please feel free to attack what I call patent parricide with all available means. <i>C’est de bonne guerre. </i>What I have seen so far appears to be of little persuasive power: paradoxes based on flawed decisions, questionable approaches (« the parent application and the divisional are one », « why should the dividing applicant be in a worse position than the inert one » etc. etc.), arguments drawn from the silence of the <i>travaux préparatoires</i> … Most of it is handwaving, although I do indeed understand that people are uncomfortable with patent parricide. In my opinion, as the law stands, parricide is possible. If this is unacceptable, the law should be changed. In the meantime,be careful when dividing.pantagruelnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-54727538426286579812012-11-28T21:46:52.057+01:002012-11-28T21:46:52.057+01:00If G 1/03 saves the patent, why not base your reas...If G 1/03 saves the patent, why not base your reasoning on it? It gives a solution for dealing with unjustified consequences of the construction of fictitious disclosures, and I would say the self-collision problem we have here is even less justified (and surely was never intended).Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-55587461162882326412012-11-28T21:09:49.295+01:002012-11-28T21:09:49.295+01:00I may be wrong, but I would base as little as poss...I may be wrong, but I would base as little as possible on G 1/03.<br /><br />G 1/03 was a very pragmatic decision. Disclaimers were needed, so the EBA had to find a way to declare them allowable. But from a purely legal point of view, I would think that G 1/03 is rather unfortunate, and, in my opinion, the legal reasoning is not very persuasive. We will have to live with this – it is the price for allowing disclaimers in spite of A 123 – but I think it will remain a thorn in the flesh.pantagruelnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-51443281587846276302012-11-28T20:45:46.230+01:002012-11-28T20:45:46.230+01:00I'm not sure why none of these decisions consi...I'm not sure why none of these decisions considers G 1/03.<br /><br />If an application discloses specific A and claims general B, and the priority document only discloses A, then the disclosure of specific A in a divisional or parent application will in principle be novelty destroying for generic B.<br /><br />However, we can now apply G 1/03. The claim to B can be amended to a claim to B minus A. This claim is new.<br /><br />In addition, we can also just claim A. The disclosure of A in the parent or divisional application is not prior art for this claim. So this claim is also new.<br /><br />Now it is also permissible to claim "B minus A" OR "A". Interestingly, this claim has the same scope as the original claim B.<br /><br />Since it makes no sense to force an applicant to artificially split up B into "B minus A" OR "A", the applicant should be allowed to keep the claim to simply "B".Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-39942318416878737702012-11-28T11:51:31.231+01:002012-11-28T11:51:31.231+01:00Anonymous, are you perhaps (knowingly or unknowing...Anonymous, are you perhaps (knowingly or unknowingly) alluding to the provisions of Section 52(1) of the UK Patents Act of 1949, which did NOT make it into the EPC of 1973? That's the provision about publication of the subject matter of the prio doc, after the prio date, being deemed NOT to anticipate claims which cannot get back to the prio date.<br /><br />Yes, it is a general situation. Back in 1973, UK pragmatism was sacrificed on the altar of clarity and legal certainty. Today, more than ever, we need clarity and legal certainty, no? MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-65147090581410500852012-11-28T09:22:08.540+01:002012-11-28T09:22:08.540+01:00It is not only that a divisional could become nove...It is not only that a divisional could become novelty killing for the parent, but the core question is actually based on a more general situation: can a "general" claim be killed by an Art54(3) document disclosing as novelty disclosure a specific embodiment for which the parent has a valid earlier effective date than the Art 54(3) document/disclosure?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-63233885102203977302012-11-27T17:54:27.691+01:002012-11-27T17:54:27.691+01:00This Decision is only a problem for those who woul...This Decision is only a problem for those who would declare more than one priority date and then divide, or divide in order to claim inventions which are not the "same" as the inventions disclosed on the priority date in the priority document.<br /><br />Anybody see a problem if you stick to one prio and the same invention?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-40662949307745226692012-11-27T15:52:19.876+01:002012-11-27T15:52:19.876+01:00Great decision! In the pharma industry half of the...Great decision! In the pharma industry half of the people are rejoiced and the other half are scratching their heads. <br />A divisional should not be filed anymore as a “safety” net anymore as the “safety” net may come back to haunt one down later. Though full and well drafted divisional application by expurgating of all compromising disclosure which at the end may as well compromise the filing of a divisional application.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-9530082562217908152012-11-27T12:45:46.511+01:002012-11-27T12:45:46.511+01:00Good question from that last anonymous. Why should...Good question from that last anonymous. Why should the act of filing a divisional transform a harmless situation to a harmful situation? Many others argue exactly that.<br /><br />But under the EPC, the earlier filings of an inventor are 54(3) docs against her later filings. Are we to stay with that, or are we to amend the EPC to accord with the rest of the world, in which inventor's own earlier filings are not 54(3) docs?<br /><br />If we stay with the EPC as it is, do we want to encourage Applicants to file for one invention per application, or do we want to encourage Applicants to file (like in Alicante for design patents) one application for a hundred different inventions? If you say divisionals are to be excluded as 54(3) docs then I will be encouraged to put all my hundred inventions in one patent application, and then later file 99 divisionals. Doesn't seem right somehow.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-64407743548663446642012-11-27T10:30:49.470+01:002012-11-27T10:30:49.470+01:00As I understand it, the division is prior art, bec...As I understand it, the division is prior art, because the claimed feature is general, while the divisional and priority document have a specific form of the feature; and there is no priority for the general form.<br /><br />If that is correct, what prevent the parent being its own prior art? It also discloses the specific form, and that specific form does have priority. A54(3) does not say anything about the prior art having to be another application. <br /><br />If we don't like that, why do we like the divisional situation? If we do, of course.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-52415711699726670152012-11-16T08:39:54.544+01:002012-11-16T08:39:54.544+01:00Yes, the issue was quite fashionable a year ago or...Yes, the issue was quite fashionable a year ago or so. But has there been some sort of consensus? <br /><br />I fear such cases are too rare for us to hope for an authoritative word from the EBA. oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-34262714546406487662012-11-16T08:26:36.025+01:002012-11-16T08:26:36.025+01:00The subject of divisionals killing parents has bee...The subject of divisionals killing parents has been repeatedly discussed:<br />in epi information 2/2011<br />and in the CIPA journal of February and March 2012.<br /><br />Manolisnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-10356288589946568952012-11-15T21:47:19.006+01:002012-11-15T21:47:19.006+01:00“What a word means depends absolutely on context.”...“What a word means depends absolutely on context.” I couldn’t agree more.<br /><br />That being said, in the present context, at least the drafter of the claim must have considered “bent” and “folded” not to be synonyms, otherwise he/she would not have added the term “bent”.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-33355531634557634632012-11-15T16:53:47.391+01:002012-11-15T16:53:47.391+01:00Interesting on Art 123(2). Bending and folding are...Interesting on Art 123(2). Bending and folding are not the same. Take a 130cm long, 2mm wide stent delivery catheter which you will push up a tortuous artery, all the way to the stenosis.It MUST bend easily. However, it cannot be permitted to fold for then it is instantly useless.<br /><br />What a word means depends absolutely on context. even so though, bend and fold are different aren't they?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-11700290460337494572012-11-15T13:15:37.915+01:002012-11-15T13:15:37.915+01:00I’ve added the relevant part of the decision to my...I’ve added the relevant part of the decision to my initial post.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-294856051637135282012-11-15T12:37:11.734+01:002012-11-15T12:37:11.734+01:00Yes, I think this is the very situation discussed ...Yes, I think this is the very situation discussed by Tufty et al. <br /><br />Although it is somewhat shocking to see an application killed by its divisional, I do not think that Prof. Vollrath has provided very convincing legal reasons for refusing this possibility. So I for one would agree with the Board.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-58859545978489404692012-11-15T10:48:09.198+01:002012-11-15T10:48:09.198+01:00In this case, a divisional was novelty destroying ...In this case, a divisional was novelty destroying prior art for its own parent, if I read the decision correctly. I don't fully understand this. Is it the issue discussed at http://tuftythecat.blogspot.com/2011/02/article-543-and-ep-divisionals.html ?<br />Thanks for any explanation.<br />Anonymousnoreply@blogger.com