tag:blogger.com,1999:blog-8990057754240336385.post2273949351461566857..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: T 287/14 - Disclaimers: do not try this at home!DeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger10125tag:blogger.com,1999:blog-8990057754240336385.post-91827294521788159782017-08-08T17:10:00.778+02:002017-08-08T17:10:00.778+02:00Good point. A way out could be that the scope of p...Good point. A way out could be that the scope of protection of the granted claim without the disclaimer is judged on the effective date of the patent and the narrowing of said scope of protection is interpreted at the date on which the disclaimer has been introduced into the granted claim.<br /><br />A further problem that could turn up in allowing any limiting feature to be introduced during prosecution or opposition (if a patentable invention is already present) is that the newly created claim should become prior art upon publication of its subject-matter in the European Patent Register. :-) <br /><br />In short, a situation is created in which an applicant/proprietor creates (willingly or unwillingly), at said publication date, novelty destroying prior art and prior art relevant for the assessment of inventive step of future patent applications (as long as said subject-matter is enabled, i.e. complies with A. 83 EPC). <br /><br />However, I am not sure if this is really a problem because if the applicant/proprietor would want to create said prior art, he could well create it by other ways as well (e.g. publication on the internet or in a library...). Additionally, what about the situation in which an applicant/proprietor files amendments to claims that violate A. 123(2) EPC and said subject-matter is published in the European Patent Register? If it is assumed said subject-matter is enabled, it should also become prior art at the publication date in the EP Register...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-79455323193981291572017-08-05T09:46:52.472+02:002017-08-05T09:46:52.472+02:00If the EBA would have wanted to follow the thought...If the EBA would have wanted to follow the thoughts of the BGH, it could have done so.<br />There were good reasons not to so. <br />A claim comprising added subject-matter does not have an effective date. When should then the scope of protection be decided? At the date the added matter was incorporated in the claim, or still at the effective date (priority/filing) of the claim without the added-matter? <br />Not very logical to me, even if it is practice of the BGH.<br />Let's hope the UPC, should it ever start, will not come with such a solution.Robinnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-71790571925432060992017-08-03T09:45:16.677+02:002017-08-03T09:45:16.677+02:00That is similar to the well-established German nat...That is similar to the well-established German national post-grant approach for features in a claim that were not originally disclosed to escape the "inescapable trap": such features are ignored when novelty and inventive step are analyzed but are fully taken into account when scope of protection is analyzed. "Ignoring" means you simply mentally delete them from the claim. No considerations about half-eaten apples (EBoA) or set theories or the like. Appears simple and fair to me. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-53606312098719617182017-08-02T13:58:25.688+02:002017-08-02T13:58:25.688+02:00I actually disagree with the analogy. Apparently, ...I actually disagree with the analogy. Apparently, the BoA disagrees as well: Under item 1.12.2, last sentence, the BoA points out that <br /><br />"Therefore, EVEN TAKING INTO ACCOUNT the exception in decision G 1/93, the disclaimer in question constitutes an amendment that contravenes the requirements of Articles 123(2) EPC".<br /><br />If one followed the argument of analogy above, there would have been no point in analysing a possible allowability according to G1/93. To me, it is still questionable what the unwarranted advantage is if the applicant/proprietor has suggested<br /><br />"RESTRICTING the claimed subject-matter to a group of polyolefin compositions having specific technical characteristics and properties"<br /><br />This seems to mean that the claimed subject-matter having the disclaimer is more special vis-à-vis the subject-matter without the disclaimer. However, this will very often be the case when technical features are disclaimed. <br /><br />Is not the most important point the assessment if there is (already) an invention or not?<br /><br />In other words, using the disclaimer in an argumentation for the presence of an inventive step is clearly indadmissible because it clearly provides an unwarranted advantage. <br /><br />However, not using the restricion in an inventive step argumentation (because an invention is already present) in my view only amounts to a limitation in the scope of protection of an (already present) invention.<br /><br />Sorry for taking this extreme position. I agree to you that it is very likely that G1/16 will prove my position wrong. :-)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-22137040813813252842017-08-01T23:59:02.976+02:002017-08-01T23:59:02.976+02:00That its contribution is not necessary does not me...That its contribution is not necessary does not mean it does not provide a technical contribution.<br /><br />In fact, if the criterion was that a non-disclosed limitation does not infringe Art. 123(2) as long as the claim would have been inventive without the limitation, then G 1/93 would have had a very different outcome.<br /><br />The "no unwarranted advantage" idea is the ratio underlying Art. 123(2) but should not be confused with the criterion laid down in Art. 123(2). (It is true that G 1/93 contains some sentences that suggest otherwise.)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-41705460149529863702017-08-01T22:24:20.864+02:002017-08-01T22:24:20.864+02:00I have some reservations to speak about inventive ...I have some reservations to speak about inventive step in presence of a prior art under Art 54(3).<br /><br />It appears irrelevant that the disclaimer might be allowable in view of G 1/93, what I doubt, but it is not allowable in view of G 1/03.<br /><br />I see this in analogy with established case law: if there one reason for which a claim is not allowable in view of the prior art available, e.g. due to lack of IS, it is irrelevant that it might appear allowable with respect to a different prior art also available.allowable with respect Robinnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-28758444015005718922017-08-01T17:26:11.331+02:002017-08-01T17:26:11.331+02:00I also completely agree with the analysis of the B...I also completely agree with the analysis of the BoA and with Robin, but with one minor exception: <br /><br />Under item 1.12.2, the BoA arrives at the conclusion that the introduced disclaimer is also inadmissible according to the headnote of G1/93 because it "necessarily" provides a technical contribution. The reason for the technical contribution given by the BoA is that beta-nucleating agents are excluded from the claimed subject-matter and this exclusion contributes to the presence of an inventive step.<br /><br />However, under item 1.10 of the reasons, the BoA points out that there is no pointer in D1 to arrive at the specific (claimed) three-fold selection. This seems to imply that the three-fold selection is non-obvious and is (already) sufficient to acknowledge the presence of an inventive step.<br /><br />Inevitably, this means that a contribution of an exclusion of beta-nucleating agents is not necessary to render the claimed subject-matter inventive. <br /><br />In short, the exclusion of beta-nucleating agents just limits the scope of protection - which is no unwarranted advantage for the proprietor. <br /><br />In summary, in my view, the disclaimer is clearly inadmissible according to G1/03, but might be admissible according to G1/93.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-69592213587652556062017-08-01T16:17:05.395+02:002017-08-01T16:17:05.395+02:00Thanks Anonymous. You are welcome!
I offered an a...Thanks Anonymous. You are welcome! <br />I offered an article on this topic two years ago to GRUR and IIC. They were not interested. As it was not about SEP and FRAND licences, it was apparently not interesting for publication. <br />Believe me, a lot can be said on norms in claims and descriptions.Robinnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-46511109091474615822017-08-01T12:27:09.046+02:002017-08-01T12:27:09.046+02:00Thanks Robin, interesting decisions. It appears in...Thanks Robin, interesting decisions. It appears in T1888/12 the Board did not even investigate whether the norm did really ever change. It appears that it is sufficient for them that it could have changed and puts the burden of proof on the applicant. The situation appears to have been similar in T783/05 where no one bothered to check whether there was indeed a relevant change to the norm. Anyway, thanks for raising awareness! Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-49303651713338708112017-08-01T11:24:09.890+02:002017-08-01T11:24:09.890+02:00An interesting decision indeed. Which gives more t...An interesting decision indeed. Which gives more than it looks at a glance.<br /><br />The undisclosed disclaimer vis-à-vis of D1 was not necessary, as what was taken as basis in D1 in order to justify the undisclosed disclaimer was not directly and unambiguously derivable from D1. It resulted from a combination of features for which no pointer in said D1. The disclaimer had thus a technical contribution. Nothing to say but to agree.<br /><br />That the examiner did not look at the disclaimer in too much detail is understandable, as it allowed him to grant after a plurality of exchanges (2 communications and one telephone conversation, and the applicant was happy, he got a patent.<br /><br />Knowing the RPBA, which exist in their present form since 2005, it was quite daring from the proprietor not file claims to overcome the disclaimer problem at the outset of the appeal, but waiting the reply of the opponent for AR1-3, and 3 days before the OP for AR 4-5! No surprised that they were not admitted.<br /><br />Supplementary note:<br />The patent has been revoked, so it is moot to discuss other grounds for revocation, but to me the ground under Art 100,b) is applicable here, as the patent had been granted with dateless norms.<br /><br />When looking at the claim as granted, it contains 3 different norms. DIN 53752, ISO 1133, and DIN ISO 1628-1 (October 1999). It is thus only the last norm which has been properly identified with its date. As the other have undergone changes, they are not properly identified. <br />Not knowing which version of the norm is valid, the person skilled in the art is not in a position to carry out the invention. As the norms were in the claims as granted, an objection under Art 84 in opposition would fail. <br /><br />In T 783/05 the BA held that the mention in an amended claim in opposition by introducing a norm without its date, offended Art 84 for this reason! See Point 2.<br />Similar conclusion in T 1888/12 in examination. See Point 2.1.<br /><br />In the present case, the examiner insisted in introducing the norms in claim 1. He should have known better, and the file should have been refused under Art 84 (or 83).<br /><br />To be honest, the BA are not always aware of the problem of undated norms in claims, and have let through a number of such claims.Robinnoreply@blogger.com