tag:blogger.com,1999:blog-8990057754240336385.comments2024-02-27T09:18:36.160+01:00DeltaPatents Case Law blogDeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger886125tag:blogger.com,1999:blog-8990057754240336385.post-46368003283128247382024-01-22T09:14:51.406+01:002024-01-22T09:14:51.406+01:00Thank you for addressing this important topic. Thi...Thank you for addressing this important topic. This Blog really caught my attention. Looking forward to more content like this!<br />Find the information about <a href="https://galaxysuperspeciality.com/product/dasatinib-tablets-50mg/" rel="nofollow">dasatinib brand name</a>.Galaxy Super Specialityhttps://www.blogger.com/profile/03523111220149592818noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-62737757045047321902024-01-04T08:12:34.185+01:002024-01-04T08:12:34.185+01:00World of Urology helps people feel more at ease an...World of Urology helps people feel more at ease and confident again by providing comprehensive care for incontinence.<a href="https://www.worldofurology.in/blogvats-12-what-is-the-best-treatment-for-urinary-incontinence" rel="nofollow"> treatment for urinary incontinence </a> Our qualified urologists tailor treatment for urinary incontinence to address the underlying cause using less invasive proceduresworldofurologyhttps://www.blogger.com/profile/00511532252305060544noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-37115129791779944602023-12-23T20:06:04.281+01:002023-12-23T20:06:04.281+01:00Greaat shareGreaat shareMBE Thinkshttps://mbethinks.blogspot.com/noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-90020496319498476162023-11-15T11:41:46.451+01:002023-11-15T11:41:46.451+01:00Supplement to my comment above:
See also "j...Supplement to my comment above: <br /><br />See also "joint applicant"-approach in the GL (2023) A-VI, 1.6, 4th and 5th para.:<br /><br />"Since the international application has been filed jointly – which shows that the applicant who filed the earlier application consents – there is no need for a special transfer of priority right to the other (additional) applicant(s)."<br /><br />"For example:<br /><br />– The earlier application from which priority is claimed names X as applicant. The international application names X and company A as applicants. A transfer of the priority right from X to A is not required in order for A to enjoy a priority right in the proceedings before the EPO as designated Office."Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-68561098912161093022023-11-15T11:29:49.693+01:002023-11-15T11:29:49.693+01:00In my view, in item 109, the EBA refers to the dat...In my view, in item 109, the EBA refers to the date at which the priority is claimed (e.g. in the PCT request form or later, i.e. within 16 months after the filing date of the priority application). Put differently, the EBA does NOT refer to the date in which the certified copy of the priority application is submitted to the IB or EPO. Thus, the relevant date is not the expiry of the time limit of the R. 163(2) invitation because at this point of time, a priority claim can no longer be validly made, i.e. it is (much) too late.<br /><br />What is interesting regarding the decision are in my view the following points:<br /><br />1. <br /><br />As far as I know, it has previously been assumed in many (if not all cases) that if the subsequent application mentions A and B as applicants and the priority application only mentions A as applicant, the priority right must be valid because A and B form a group sharing the right to priority. Since the right to priority relates to all PC countries (Art. 4A(1) PC), it does not play a role whether the subsequent application is filed with applicants A and B for separate countries (i.e. for different designated states). In short, applicant B MUST have the right to priority for every country with this (previous) concept. <br /><br />However, headnote II of G 1/22 now states that this is not necessarily the case, i.e. there must be an implicit agreement between A and B that allows B to have the right to priority, which implicit agreement may be disputed. Put differently, the EBA abolishes the concept that A and B necessarily form a group sharing the right to prority if the sole applicant of the priority application was A. Importantly, in case of succesful dispute, B actually does not have a valid right to claim priority. In so far, in my opinion, G 1/22 stipulates stricter requirements regarding a validity to the right to priority than previous practice.<br /><br />2.<br /><br />Under item 4. of the decision, it is states that the right to priority was denied by the OD because, among applicants A, B and C, only applicant A assigned the right to priority to the patent proprietor (i.e. to one of the co-applicants D and E). However, since A, B and C appear to have been coapplicants of the subsequent PCT application (i.e. said application listed A, B, C, D and E as applicants), an assignment of the right to priority to D and E would not have been necessary with the previous "applicant group"-approach, even if A, B and C only designated US, because the designation does not change that A, B, C, D and E formed a group of applicants of said PCT application. If G 1/22 is followed, the missing assignment of B and C to D (or D and E) now implies that an implicit wish to assign has to be assumed, but which can be questioned, e.g. by B and C denying that they wished to transfer the right to priority to D (or D and E) at the date mentioned under item 109. <br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-82892440954102116742023-10-31T13:56:05.031+01:002023-10-31T13:56:05.031+01:00"103. The content of the priority application..."103. The content of the priority application is, in general, not published or otherwise made accessible to third parties before the expiry of the twelve-month time limit for filing subsequent applications. A copy of the priority application must be filed with the EPO within sixteen months after the filing of the priority application under Rule 53(1) EPC while the publication of the priority application normally occurs eighteen months after its filing date. Moreover, the applicant of the subsequent European application must provide documentation that cannot normally be obtained without the cooperation of the priority applicant. In particular, a copy of the priority application certified as correct by the authority where the priority application was filed, must be filed with the EPO (Rule 53(1) EPC, see also Article 4D(1) Paris Convention)."<br />and<br />"109. Priority entitlement is not relevant before the priority is claimed by the subsequent applicant in accordance with Rule 52 EPC, normally at the filing date of the subsequent application or otherwise within sixteen months from the filing date of the priority application. Consequently, the presumption of entitlement exists on the date on which the priority is claimed and the rebuttal of the presumption must also relate to this date."<br /><br />However, if the subsequent application is a PCT application, and no certified copy of the priority application is filed within the 16m of PCT Rule 17.1, the applicant may file the certified copy at entry in the EP phase (normally 31m after the priority date) or even only after an invitation issued early in the EP phase (with a time limit of 2m) -Rule 163(2)-, so much later than publication of the priority application. <br />So, would in that case the relevant date be the expiry of the time limit of the R.163(2) invitation?Roel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-63061899536443765042023-10-25T13:03:37.622+02:002023-10-25T13:03:37.622+02:00I am surprised at consideration 99: 'In most ...I am surprised at consideration 99: 'In most jurisdictions, rights to obtain a patent can be transferred without any written agreement or other formalities'<br /><br />This is (IMHO) in contradiction with the position of EPO as follows from the 'designation of inventor' form 1002. This form 1002 recognizes, see its footnotes, only three cases: (explicit) assignment executed on a specific date, inventions by employees, and succession by inheritance, and it insists upon a date in case of 'agreement'.<br /><br />If the EBA is right in that 'rights to obtain a patent can be transferred without any written agreement or other formalities' another category should be present on form 1002, something like: 'non-written transfer with unknown date'<br /><br />In my practice the present form 1002 creates significant problems: I represent a lot of 1 or 2 person companies as applicant, and then the owner/inventor (not employee!) requests that the applicant should be his company. (It can be considered a gift, decided upon at some unrecorded moment in the past). There is at present no way I can file an application in such a case without seriously bending the truth.<br /><br />Statement 99 of the EBA in this case is therefore very welcome to me in supporting in the future why none of the three cases on form 1002 is applicable.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-75878131313587655752023-04-05T17:36:09.927+02:002023-04-05T17:36:09.927+02:00To me, answer 2 seems to indicate that there is us...To me, answer 2 seems to indicate that there is usually no point in post filing experimental evidence. If the technical effect (both assertion as well as achievement of it) are sufficiently understood by the skilled person, post-filed evidence makes no difference, and if they are not, post-filed evidence makes no difference either.<br /><br /><br />Or am I missing something? <br /><br />[I have a client who often reasons: 'We'll file experimental evidence later if needed' despite my reservations, so this is quite an important issue to me]<br /><br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-63568777110869045842022-12-20T22:46:17.453+01:002022-12-20T22:46:17.453+01:00Dear Mariya,
in my opinion, no, the conclusion can...Dear Mariya,<br />in my opinion, no, the conclusion cannot be drawn that the Examining Division would be obliged to issue any particular number of communications under Article 94(3) EPC until the application is amended in such a way that patentability under Articles 52-57 EPC can usefully be adressed.<br />For an Examining Division to be able to refuse an application, a single deficiency (under Article 84 or 123(2) EPC or otherwise) is sufficient to be able to refuse the application, provided it has given the applicant an opportunity to state its point of view on this deficieny, in writing, and/or, if requested, during oral proceedings.<br />There is no requirement put on an Examining Division to exhautstively deal with all requirements of the EPC before refusing an application.<br />However, when upon appeal, the board disagrees with the Division's finding on the deficiency that founded the refusal, the consequence will be a remittal to the Examining Division for further examination with regard to the other substantive (e.g. patentability) requirements of the EPC.hobonoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-3749093593581399562022-11-22T10:13:59.644+01:002022-11-22T10:13:59.644+01:00The section that you quote confirms that postal no...The section that you quote confirms that postal notification remains the standard. In such a case the reasoning, that deemed delivery of the postal notification is on the day it was sent (which is what new R126(2) states) BECAUSE there is also faster electronic notification available (without any obligation by the applicant to use it) does not make sense. It is illogical reasoning.<br /><br />It's like EPO is saying: ' You could have had it earlier if you really really really wanted to, and therefore the deemed delivery date of the paper notification method is changed'. The applicant should not be punished for not accepting a voluntary option but sticking to the default notification method.<br /><br />To me that's equivalent to: You could have had the paper notification earlier if you had put your office in Munich instead of on the Outer Hebrides islands, so the Munich date is decisive.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-35242275631189895322022-11-21T16:11:42.143+01:002022-11-21T16:11:42.143+01:00Where else will it be? It is either Rule 126(2) or...Where else will it be? It is either Rule 126(2) or -if the party so requested- Rule 127(2).<br /><br />See CA/30/22 Rev. 2 item 84: "While the Office's proposals aim to promote the uptake of digital services and workflows, postal notification will remain fully available. Any switch to electronic notification will remain voluntary and subject to the express consent of the addressee.")Roel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-58425411966750633842022-11-21T14:40:15.555+01:002022-11-21T14:40:15.555+01:00The confusing bit is that r126(2) still refers to ...The confusing bit is that r126(2) still refers to r126(1) which (only) mentions registered letters. The fact that a communication is ALSO, besides being underway by registered letter, available somewhere else (where you have to actively go and look for it!), does not make that the deemed date of receipt of the registered letter should change.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-8200449460383661192022-11-21T10:44:39.981+01:002022-11-21T10:44:39.981+01:00The transition provisions in CA/D 10/22 provide: &...The transition provisions in CA/D 10/22 provide: "Rules 126, 127 and 131 as amended by Article 1 of this decision shall apply to documents to be notified by the European Patent Office on or after 1 November 2023."<br /><br />This leaves me a bit puzzled:<br />A document dated 30.10.2022 would be deemed notified, according to current Rule 126(2), on 9.11.2023. But that is after 1 Nov 2023, so that the new Rules applies? But according to the new Rules, notification would be on 30.10.22, so that they do not apply?<br /><br />I assume the trick is in the "to be" in the transitional provision? <br />What would be the reason that the transitional provision does not refer to "the date that the document bears"?Roel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-22996018555759599312022-11-21T10:21:33.434+01:002022-11-21T10:21:33.434+01:00It is confusing that the example in item 72 in CA/...It is confusing that the example in item 72 in CA/30/22 Rev. 2 uses dates at which the amended Rules for notification do not yet apply (it uses an examination report under Article 94(3) EPC bearing a date of 10 March 2022). This may be due to a possible earlier intention to have the amendment enter into force already by 1 March 2022. Roel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-59636395811710015252022-11-21T09:54:57.048+01:002022-11-21T09:54:57.048+01:00CA/30/22 Rev. 2, item 22 (on Rules 46 and 49):
Th...CA/30/22 Rev. 2, item 22 (on Rules 46 and 49): <br />The proposal does not contain changes to the requirements concerning the<br />presentation of documents and **the first decision of the President under the enabling clauses is foreseen to restate the current requirements**. Changes to the presentation requirements themselves will be made only after discussion at international level (in the PCT context), with contracting states and users. The procedure for that consultation is set out in more detail in the following paragraphs 23 and 24.Roel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-78122480795498864352022-11-08T12:11:59.868+01:002022-11-08T12:11:59.868+01:00By the way, also registered surface mail is someti...By the way, also registered surface mail is sometimes received on the day of the document or even one or two days before when you are at close postal distance to the EPO...Roel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-73458867936813690592022-11-08T12:10:43.987+01:002022-11-08T12:10:43.987+01:00https://www.epo.org/applying/online-services/mailb...https://www.epo.org/applying/online-services/mailbox.html<br />https://www.epo.org/applying/online-services/myepo.htmlRoel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-68118022450865190792022-11-07T16:26:02.454+01:002022-11-07T16:26:02.454+01:00AFAIK the EPO does not communicate official commun...AFAIK the EPO does not communicate official communications by email (contrary to WIPO). So how are we supposed to have received something on the day it was sent by EPO?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-61323597545438988542022-10-31T15:46:01.996+01:002022-10-31T15:46:01.996+01:00In my view, this new rule might detrimetally effec...In my view, this new rule might detrimetally effect the quality of responses to Office Actions and reduce efficiency of procedure before the EPO. Why is that? Well, there are some clients or foreign colleagues who prefer submitting their instructions VERY close to the due date (which is often communicated without the 10-days rule). Regularly, the 10-days rule allows for sufficient time with the client or foreign colleague to discuss possible problems in her/his instruction (e.g. possible violations of Art. 123(2) EPC which the client or foreign colleague was not aware of). Abolishing the 10-days rule means shorting the time availaible for said discussion with the client. In extreme cases, instructions would have to be realized in a written submission to the EPO which are prone for an objection to be raised, just to meet the due date. Hence, in my opinion, in view of this possible drop in quality of written submissions, the decision to abolish the 10-days-rule might turn out to lengthen procedures before the EPO more than shortening them. Naturally, a way out could be to communicate a sooner due date to the client. However, this measure puts some (calculating) burden on the side of practicioners, which not all practicioners will be fond of and realize.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-18973578787181240412022-10-23T12:21:31.307+02:002022-10-23T12:21:31.307+02:00The EPO published a News Message on 21 October on ...The EPO published a News Message on 21 October on the changes - https://www.epo.org/news-events/news/2022/20221021.html<br /><br />The message provides:<br /><br />"Second package - entering into force on 1 November 2023<br /><br />In alignment with the PCT a new fiction for notification and time limit calculation will apply as of 1 November 2023. The "10-day rule" will be abolished and documents will be deemed to be notified on the date they bear. Safeguards will be available in cases where a document is not received or received exceptionally late (more than 7 days after the date). In the event of a dispute concerning the delivery of a document the Office will retain the obligation to prove that the document was delivered and the date of its delivery. This change affects Rules 126(2), 127(2) and 131(2) EPC. Shifting the focus of the notification system from the paper to the digital world, where electronic documents are delivered on the same day, is key for the Office's digital transformation. Further details will be provided by an OJ Notice well in advance to entry into force of the amended Rules. <br /><br />Users will be informed in more detail soon. Decision CA/D 10/22 of the Administrative Council will be published in the November edition of the Official Journal and will be available earlier on the EPO website. A corresponding Notice of the EPO as well as a Decision of the President of the EPO will be published in the December edition of the Official Journal. The Guidelines for Examination in the EPO 2023, entering into force on 1 March 2023, will reflect the relevant updates."Roel van Woudenberghttps://www.blogger.com/profile/15823355175016282250noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-36549623955439742372022-10-10T12:37:35.113+02:002022-10-10T12:37:35.113+02:00It seems a very important decision for us, dealing...It seems a very important decision for us, dealing with PCT appl. entering EP phase with clarity problems<br />Roel, can we say, based on this decision, that whenever substantive issues as novelty and inventive step are not dealt (examiner has not commented further novelty/inventive step after proposed amendments), just clarity issues /A.84 and A123(2)/, then A.94(3) communications have to continue till substantive point is resolved despite the number of A.94(3) communications?Mariya Georgievahttps://www.blogger.com/profile/10087630180828834986noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-55064173067462662312022-09-22T14:05:55.232+02:002022-09-22T14:05:55.232+02:00Reply to anonymous: Perhaps they never thought the...Reply to anonymous: Perhaps they never thought they would lose and failed to give instruction to the representative? Perhaps because they wanted to evaluate first whether to appeal the substance of the refusal with arguments, or by amendmends via interlocutary revision? Perhaps market circumstances changed and what appeared to be an unattractive scope of invention at the time of the OP became attractive later? <br /><br />There are so many potential reasons. The applicant does not have to accept in an early state that what is known to be allowable, but is allowed to fight.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-32435448961141540472022-09-22T13:53:40.595+02:002022-09-22T13:53:40.595+02:00This is so obviously a mistake by the ED. In such ...This is so obviously a mistake by the ED. In such blatent cases I wonder how come the examiner or his superior did not see this when the file landed on their desk for interlocutary revision. This case should never have gone to the BoAAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-1887204602065813242022-09-07T22:07:35.007+02:002022-09-07T22:07:35.007+02:00Interesting decision, I'll note it. ThanxInteresting decision, I'll note it. ThanxMariya Georgievahttps://www.blogger.com/profile/10087630180828834986noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-32365244059526921322022-09-07T11:21:02.476+02:002022-09-07T11:21:02.476+02:00I don't get it. If there is a grantable claim,...I don't get it. If there is a grantable claim, why wasn't it filed during the OP? Perhaps the Examining division considers the new claims late filed. <br /><br />In any case, isn't this a way to controvert art. 109(2)?. The Examining division cannot comment on the appeal, but it can 'rectify' its decision, refuse the new claims, and comment that way. Anonymousnoreply@blogger.com