tag:blogger.com,1999:blog-8990057754240336385.post8724202916018419926..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: T 1570/09 - Getting both DeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-8990057754240336385.post-6285976134175196462014-09-27T16:03:19.950+02:002014-09-27T16:03:19.950+02:00Lack of conciseness seems unlikely, as the board n...Lack of conciseness seems unlikely, as the board never mentions Art. 84 in this decision, nor the word conciseness. Plus, if lack of conciseness had been the legal ground it would not have been necessary to discuss whether the "praetorian rule" applies to this case.<br /><br />I admit that the board is not clearly reasoning towards a lack of novelty either. Both the minutes and the decision seem to suggest that deleting either claim would have overcome the objection. It is difficult to understand how deleting one claim could have overcome a lack of novelty of another claim.<br /><br />So there is no clear legal ground. There is evidently a "dislike" of claim sets comprising both claims, possibly fed by the idea "you don't need both". But that's not enough to refuse a request.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-51439524459633299672014-09-12T11:56:32.414+02:002014-09-12T11:56:32.414+02:00At the start of the reasons I thought the board ma...At the start of the reasons I thought the board mainly had lack of conciseness in mind (e.g. see 4.1). This makes more sense to me. If the two claims have identical scope, then you need only one. Also the minutes state explicitly that any one of the two claims was allowable; but not both. <br /><br />Near the end of the reasons the argument seems to veer towards lack of novelty. <br /><br />This would lead to the strange situation that if this applicant wasn't able to formulate a purpose limited claim, then the Swiss format would be novel. But now that he can, it isn't.<br /><br /> <br /> Sander van Rijnswouhttps://www.blogger.com/profile/08074604101159694993noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-59741311928231783182014-09-12T09:15:08.660+02:002014-09-12T09:15:08.660+02:00It seems an astute observation that the Board does...It seems an astute observation that the Board does not state the legal ground for the rejection. I won't guess lack of novelty, rather A 84 (conciseness of the claims). For instance, the Baord suggests in 4.5 filing separate set of claims for different countries, which in this case would nog help to restore novelty (and neither be possible under R 138 and A 118). However, if the ground was indeed lack of novelty, then I agree that T 1780/12 and T879/12 are less relevant. Althoug in those cases, either of the two claims causing (possible) double patenting should be novel. PJnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-58663598887141004762014-09-09T21:40:18.297+02:002014-09-09T21:40:18.297+02:00T 1780/12 and T 879/12 dealt with Swiss-type and A...T 1780/12 and T 879/12 dealt with Swiss-type and Art. 54(5)-type claims in the context of double patenting. The question was whether they were identical in scope.<br /><br />This decision deals with a single set of claims comprising both a Swiss-type claim and an Art. 54(5)-type claim. It does not seem to conflict with T 1780/12 and T 879/12, as it does not state that the two claims have identical scope.<br /><br />The applicant in this case, who is now getting the Art. 54(5)-type claim granted, can still pursue the Swiss-type claim in a divisional. Double patenting is not an objection (provided T 1780/12 and T 879/12 are followed), and I don't see how the fact that he can in principle draft an Art. 54(5)-type claim (as he has in fact done in this "parent" application) would prevent the applicability of the transitional rule of G 2/08. In view of this I have some doubt about this decision. Where does G 2/08 not give applicants an absolute right to having the praetorian rule of G 1/83 applied to them for applications filed during the transitional period?<br /><br />The board seems to require a specific "legal reason" applicable to the present case for allowing the "praetorian rule" of G 1/83. But:<br />- this rule was established for EPC 1973 by the EBA in G 1/83 (G 5/83, G6/83);<br />- this rule has been maintained for EPC 2000 by the EBA in G 2/08 for a transitional period.<br /><br />G 2/08 did not state that the transitional period does not apply where the applicant happens to be able to draft an Art. 54(5)-type claim. It does say "the cause of the praetorian approach ceasing, the effect must cease", but it is still the EBA that made the rule cease... after a transitional period.<br /><br />Imho, the board should either have followed G 1/83 and G 2/08, or referred a question to the EBA.<br /><br />The decision isn't very clear in stating the legal ground for refusing the main request (which can only be lack of novelty).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-76956129617507561402014-09-07T20:37:03.055+02:002014-09-07T20:37:03.055+02:00The Boards seem divided, Board 3.3.08 came recentl...The Boards seem divided, Board 3.3.08 came recently in T0879/12 to the opposite conclusion, following T1780/12. Strange that the Board in this decision T1570/09 does not even acknowledge that it does not follow T1780/12 (which had a "B" publication code).PJnoreply@blogger.com