tag:blogger.com,1999:blog-2352189175211648260.post6182197312233078223..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 1070/10 – Technical Indeedorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-2352189175211648260.post-48561487202955331752012-08-31T01:05:32.192+02:002012-08-31T01:05:32.192+02:00It seems that the Board in T 777/02 took a quite d...It seems that the Board in T 777/02 took a quite different approach to G 1/93 than the Board in this decision.<br /><br />In this decision, the Board seems to consider it decisive that feature A has a technical meaning that restricts the scope of claim 1.<br /><br />On the other hand, in T 777/02 it is undisputed that the contested feature is a "limiting technical feature" (see point 3.2). The Board then reasons:<br />"The Enlarged Board held that if the limiting feature has to be considered as providing a technical contribution to the subject matter of the claimed invention, it would give an unwarranted advantage to the patentee and would, therefore, constitute added subject matter within the meaning of Article 123(2) EPC. (...)<br /><br />Hence, it has to be examined whether the undisclosed limiting feature in claim 1 of the disputed patent involves an unwarranted advantage or even a new invention."<br /><br />The Board then examines whether there is a concrete "unwarranted advantage" and finds none.<br /><br />Imho, the problem with T 777/02 is that the Board sort of twists the words of the EBA. The EBA's reasoning, as I understand it, is that a feature providing a technical contribution by definition gives an unwarranted advantage to the patentee, and therefore infringes Art. 123(2). The idea behind the "unwarranted advantage" is nicely explained in the present decision: further prior art might become known. So "unwarranted advantage" should be understood as any theoretical advantage. In any event, this "unwarranted advantage" only explains the rationale behind Art. 123(2). It is not the test to be performed.<br /><br />The criterion formulated in G 1/93 is whether the feature provides a "technical contribution". I agree with T 1070/10 that, for the purpose of Art. 123(2) and G 1/93, any limiting technical feature provides a "technical contribution" (and that in particular, it is irrelevant whether the feature actually contributes to novelty and inventive step when comparing the claimed invention to the available prior art).<br /><br />Since the wording of G 1/93 leaves a lot of room for discussion and (I believe) is in the Guidelines, it can of course be used to convince an ED to grant an (uncurably invalid) patent.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-60718026878238756602012-08-30T16:07:07.031+02:002012-08-30T16:07:07.031+02:00Thanks, JW, for this reference, which I had not co...Thanks, JW, for this reference, which I had not come across yet.orhttps://www.blogger.com/profile/07992102028406713066noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-54447025517626404602012-08-30T10:16:33.834+02:002012-08-30T10:16:33.834+02:00Check out T777/02 for the application of G1/93...Check out T777/02 for the application of G1/93...JWnoreply@blogger.com