tag:blogger.com,1999:blog-2352189175211648260.post7585729946202385917..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 567/10 – Half A Loaf Is Better Than Noneorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-2352189175211648260.post-87235022909264867642013-09-10T16:02:55.019+02:002013-09-10T16:02:55.019+02:00In reply to LBZ and Myshkin, I recall a recent cas...In reply to LBZ and Myshkin, I recall a recent case in the Patents Court in London, where a publication (call it D1) in biotech, perhaps 2 years earlier than the date of the claim, would have rendered obvious a claim a day after its publication, but failed against the claim in suit dated 2 years after D1 was published, because developments in the technical area, during those two years, had produced in the PHOSITA a mindset that dismissed D1as something that would not succeed. <br /><br />Novelty falls to be determined on the publication date of D1. So I can imagine such a case in which D1does in fact destroy novelty but fails on Art 56 EPC. MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-35316592073904363302013-09-10T11:49:18.416+02:002013-09-10T11:49:18.416+02:00@Myshkin
I don't see why you would not be abl...@Myshkin<br /><br />I don't see why you would not be able to recast any novelty objection in the framework an inventive step objection. As you also acknowledge, if a document is novelty destroying, there are no distinguishing features in the claim and therefore no associated technical effect that would require a modification of the prior art. Hence, it would be obvious for the skilled person "having regard to the state of the art" to take the teaching of any document belonging to the state of the art and apply it as it is.<br /><br />The two cases you mention do not constitute, in my opinion, an exception to this rule. <br /><br />Even in the case of an accidental disclosure, the choice of starting point is in principle free; in any case, I would be hard pressed to consider a more promising "springboard" to an invention than a document that discloses the exact same thing. <br /><br />I am not sure I understood completely the second exceptional case that you mention, but in general terms I would expect the common general knowledge at priority date to contain more notions than the common general knowledge at the publication date of a prior art document. Hence, reading a document with the knowledge available at a later date would in principle support the implicit disclosure of more features, not less. If I understood you correctly, the situation you describe could occur only in the case where the prior art document has been published so long ago that a paradigm shift has occurred in the technical field in the meanwhile, and where at the same time the claimed invention still relies on the "old" way of doing things. This situation seems to me so exceptional that it can be considered for all intent and purposes a practical impossibility - at least in the technical area I am familiar with.L.B.Z.noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-62428623150804621462013-09-09T03:31:59.238+02:002013-09-09T03:31:59.238+02:00Not strange. In appeal proceedings, the Board cann...Not strange. In appeal proceedings, the Board cannot introduce a fresh ground for opposition without the permission of the patentee. See G 7/95 (mentioned above).<br /><br />Whether any objection under Art. 54(2) can be formulated as an objection under Art. 56 is an interesting question. The answer is likely "no". For example, an accidental disclosure that takes away novelty probably does not take away inventive step. There might also be cases where one could argue that a document that anticipates all the features of the claim when interpreted using the common general knowledge at the date of publication of the document would not anticipate all the features of the claim (and might not even be relevant for inventive step) when interpreted using the common general knowledge at the priority date of the invention. Of course these are very exceptional situations, but the point is that lack of novelty does not logically imply lack of inventive step. In most cases, a novelty destroying document will be good enough as closest prior art and then leave no distinguishing features that could give anything inventive.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-79252331464215013772013-09-08T20:13:38.694+02:002013-09-08T20:13:38.694+02:00Strange decision. The board could just have introd...Strange decision. The board could just have introduced the ground on novelty by itself. Now it seems that inventive step can take care of novelty as well, in which case we would no longer need A.54(2).Ludefunoreply@blogger.com