tag:blogger.com,1999:blog-8990057754240336385.post4872802614927552222..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: T 1649/10 - Closest prior art switchingDeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger9125tag:blogger.com,1999:blog-8990057754240336385.post-70147544410821270822016-01-14T11:31:13.665+01:002016-01-14T11:31:13.665+01:00The appeal was filed in 2010 whereas T399/13 dates...The appeal was filed in 2010 whereas T399/13 dates 8 September 2015 (and was published in december). T399/13 was not even published at the date of the present decision. This sounds like a good excuse to ignore T399/13.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-75808291932404964062016-01-14T09:25:10.757+01:002016-01-14T09:25:10.757+01:00I think that there should be a bar for admissibili...I think that there should be a bar for admissibility. We do not want the boards to waste their time on appeals that clearly lack any coherent argument behind them. Having said that, I think the bar should be a low one. <br /><br />This is not an appeal where the appellant made a mess out of it. He presents a lot of analysis of both relevant documents. I would much prefer that the patent was lost because the board found lack of inventive step than by forcing the proprietor into party as of right.<br /><br />Do we have an invention here, or not? If so the proprietor is entitled to have protection for it. If not he ought to lose it—preferably for that reason.Sander van Rijnswouhttps://www.blogger.com/profile/08074604101159694993noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-43346664974026408182016-01-14T00:48:51.879+01:002016-01-14T00:48:51.879+01:00Raoul, this is not about the rules of procedure bu...Raoul, this is not about the rules of procedure but about admissibility of the appeal.<br /><br />On appeal the proprietor maintained the claims that the OD had found to lack inventive step. Then the proprietor should point out in the statement of grounds of appeal why the OD's objection is not valid.<br /><br />If the OD started from D10 and then combined with D4 to find lack of inventive step, then indeed it is normally not enough to explain why applying the PSA starting from D4 and combining with D10 would lead to a positive conclusion. After all, if a claim lacks inventive step starting from D4, then it does not matter whether or not the same conclusion would be reached starting from a different document.<br /><br />Explaining why D4 is a "closer" prior art than D10 would probably not have been enough. Explaining why D10 would be unsuitable as closest prior art would probably be enough.<br /><br />Sander:<br />"Moreover, the proprietor points out that some features are not disclosed by both D4 and D10 (page 6)."<br /><br />That might have been an argument in favour of admissibility, but ideally the proprietor should have added some explanation why the OD's reasoning dealt with those features incorrectly (or perhaps not at all, I did not check).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-55599726087913995332016-01-13T17:49:12.583+01:002016-01-13T17:49:12.583+01:00If there is no excuse, then what? Plain stupidity?...If there is no excuse, then what? Plain stupidity? Representatives are human; they may have certain motivations of their own; they may try and make the best of things; they may not be aware of certain case law that is very easily cited only after a board has come to a certain decision, and they may well know that a T-decision is not poured in concrete. Please, not everything is black and white.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-59978413683387714822016-01-13T14:00:56.304+01:002016-01-13T14:00:56.304+01:00"Implicitly it must follow" that the app..."Implicitly it must follow" that the appeal should have been deemed admissible. I truly think it was an old school representative. But this is not an excuse. Especially not in view of T 399/13. <br />The pressure on the Boards has increased for well known reasons. This might also be an explanation as to why the Boards are becoming stricter and stricter as well when applying their rules of procedure.Raoulnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-57625572230180138822016-01-13T12:21:48.457+01:002016-01-13T12:21:48.457+01:00Maybe they do understand, but still try. Knowing s...Maybe they do understand, but still try. Knowing some other person's actions does not make one know their rationale.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-48731588571907283362016-01-13T09:40:59.664+01:002016-01-13T09:40:59.664+01:00I think the proprietor got a pretty harsh treatmen...I think the proprietor got a pretty harsh treatment. <br /><br />There a some indications in the statement of grounds that the decision of the opposition division is wrong. <br /><br />For example, the applicant starts of by discussing relevant claim features disclosed by D4 (page 3). It is implicit that it considers D4 the closer prior art for these reasons. Moreover, the proprietor points out that some features are not disclosed by both D4 and D10 (page 6). If true this would imply that any combination of D4 and D10 would not give the claim. It follows that the reasoning of the opposition division must be wrong. Sander van Rijnswouhttps://www.blogger.com/profile/08074604101159694993noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-43790889161698134732016-01-13T09:26:52.520+01:002016-01-13T09:26:52.520+01:00Maybe the representative was "old school"...Maybe the representative was "old school". Only within the last ten years the BOA turned themselves into a "true" second instance, i.e. not accepting requests that could have been filed in the first instance. Before it was different and e.g. quite common that the proprietor could start with a completely new set of requests into appeal proceedings (the BOA then being termed: Board of repair).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-69110425463388501432016-01-13T08:20:35.455+01:002016-01-13T08:20:35.455+01:00Why is it so difficult to understand that at the E...Why is it so difficult to understand that at the EPO the appeal procedure is not the continuation of the first instance proceedings, be it examination or opposition? <br />The Boards have made clear that in order to meet the admissibility requirements, to explain in detail why it considers the decision under appeal to be wrong, be it entirely or in part, thus requiring a clear and direct link between the contested decision and the grounds of appeal, see T 399/13. In said decision the BA goes through a lot of case law relating to admissibility of an appeal, see 1.1.3. of the reasons. <br />In the latter case the appellant wanted even the following question to be brought before the EBA: Is "a statement of grounds of appeal (can be considered as) insufficiently substantiated for the sole reason that it does not state any specific reason why the appealed decision is contested ". Needless to say that the BA declined this request, see 2. of the reasons.Raoulnoreply@blogger.com