tag:blogger.com,1999:blog-8990057754240336385.post3494381863385061987..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: T 116/18 - Referral to the Enlarged Board on post-published evidence and plausibility of an effect relied on for inventive step (G 2/12)DeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger7125tag:blogger.com,1999:blog-8990057754240336385.post-404865841313568522021-12-21T14:41:33.688+01:002021-12-21T14:41:33.688+01:00T 154/04 in Case Law Book I.D.9.1: "for the p...T 154/04 in Case Law Book I.D.9.1: "for the purpose of the problem-and-solution approach,the problem must be a technical problem which the e skilled person in the particular technical field might be asked to solve at the relevant priority date."Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-81089209935730972522021-12-21T13:53:53.212+01:002021-12-21T13:53:53.212+01:00Interesting related questions are of course:
1) sh...Interesting related questions are of course:<br />1) should the same standard be applied in order to validly claim priority. In other words: if an effect is only alleged and plausible in the priority document, but experimentally demonstrated in the later application, is priority validly claimed? And if the priority document is silent on the effect, but the later document mentions that such an effect is likely: Valid priority claim, yes or no?<br />2) The trap of plausibility vs inventiveness. If an effect is plausible based on accepted theories, is such an effect then not also predictabe, and therefore damaging to inventiveness based on CGK?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-91672866933890301842021-10-25T15:31:50.521+02:002021-10-25T15:31:50.521+02:00The referral appears to distinguish three, alleged...The referral appears to distinguish three, allegedly, distinct interpretations of the applicability of "plausibility" for the assessment of inventive step. In my view, there is no clear contradiction in the Case Law at hand, and the position of the Appeal Board is a bit exaggerated.<br /><br />For example, decision T0184/16 is presented as a case where "ab initio implausability" was followed, vs. "ab initio plausability". The decision does not appear to support two different standards so clearly.<br /><br />It merely states: "2.6 The board has no indication (...) that there is prima facie any serious doubt that the claimed therapeutic effect can be obtained. (...) there is no a priori reason or any indication in the common general knowledge that the claimed therapeutic effect cannot be obtained.<br /><br />Hence, interpretations 1 and 2 merely appear to be two sides of one mirror: unless there are serious doubts rising, from the experimental data, or the lack thereof, the teaching of the applications is a priori plausible and burden of proof rests on the one challenging it.<br /><br />Also, regarding interpretation 3 ("plausibility is not compatible with the problem-invention approach") I also fail to see how this is a thing.<br /><br />First, neither plausibility nor the problem-solution approach are described in the EPC. Both emerge from the case-law and the guidelines. So, why should they be distinguished?<br /><br />Also, why should a problem-solution approach accomodate funny concepts such as "perpetual motion" as part of an objective technical problem?<br /><br />I don't think the conclusion of this referral will provide clear insights. Not much more than the G1/21 which is already disappointing...Gros poissonhttps://www.blogger.com/profile/09712512713351017643noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-91028364971752440512021-10-25T15:30:01.592+02:002021-10-25T15:30:01.592+02:00This comment has been removed by the author.Gros poissonhttps://www.blogger.com/profile/09712512713351017643noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-34400136233243351462021-10-25T11:09:44.721+02:002021-10-25T11:09:44.721+02:00Unfortunately, my question "Where's the b...Unfortunately, my question "Where's the balance" was not clear enough. <br /><br />What I mean is, the balance between i) delaying filing until one can include in the application an enabling disclosure commensurate in scope with the breadth of the claim (ie lots of drawings and worked Examples) and ii) filing earlier (and thus A-publishing earlier) with a more speculative (albeit plausible) disclosure supporting broad claims, and fewer, if any, worked Examples. At what point does too much speculation destroy the benefit to society of early (18 month) publication?<br /><br />Perhaps the EBA has no such duty to help to find the balance? Perhaps Applicants have to work out the balance themselves, on the unique fact matrix of each claim they write? When is it still too early to file? When has one "missed the boat" and given the competitor an opening to be the First to File?<br /><br />Since the AIA, your filing date matters more than ever because, in the USA, you can use your filing for obviousness attacks on all of the claims filed by your competitors, even those filed only one day later than yours. With the USA under the FtF AIA, it's 100% "Winner Takes All". FtF on steroids, you might say. File one day too late and you end up with nothing, your competitor everything.<br /><br />What have you got to say about that, EBA? Can you help filers to find the balance?Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-64132988400636804792021-10-25T09:03:51.775+02:002021-10-25T09:03:51.775+02:00The balance is generally at a well-established 18 ...The balance is generally at a well-established 18 months for patent applications world-wide.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-28428105538229937342021-10-22T12:07:43.938+02:002021-10-22T12:07:43.938+02:00Being a patent attorney with decades of experience...Being a patent attorney with decades of experience in an English common law jurisdiction and then some more on the European mainland, I relish the questions referred because they prompt questions about the relative merits of First to File, First to Invent and First to Publish patent law regimes.<br /><br />More particularly, when with the AIA the USA switched from FtI to FtF, commentators there were quick to criticise FtF as forcing inventors to file prematurely, on mere speculation, resulting in devaluation and corrosion of patent "quality". And now, with this referral, we have a debate between protagonists from the UK and Japan, about what level of speculation is acceptable, what level of "quality" is required, when drafting and filing patent applications. There could hardly be a more fundamental question for the EBA, could there?<br /><br />My answer to the criticism from the USA was that those who file too early under FtF risk losing everything. They don't get to grant but they do publish at 18 months, making all their stuff available horribly early to all their competitors. Yet, generally speaking, society needs to encourage publication of enabling disclosures at the earliest possible date. Where's the balance?<br /><br />I am consumed with curiosity, how the EBA will answer these questions and whether its answers will enhance or damage the reputation of the Established Case Law of the Boards of Appeal of the EPO.Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.com