07.14.17

Gemini version available ♊︎

“EPO Enlarged Board of Appeal Has Brought an Unprecedented Level of Certainty to the Law,” But Benoît Battistelli Crushes It

Posted in Europe, Law at 2:37 am by Dr. Roy Schestowitz

A shocked Battistelli
Context: The Boards of Appeal Openly Complain (in the EPO’s Web Site) About Battistelli, But Don’t Tell Battistelli About It…

Summary: The systematic erosion of patent quality at the EPO, including attacks on the appeal boards, means less patent justice in the rest of Europe, even in the Supreme Court of Britain

YESTERDAY, only a few days after shaming strikers, the EPO released a pile of lies (warning: epo.org link) that we already debunked in many articles several months ago. These were paid-for lies — a hallmark of the Battistelli regime. They try to pretend that everything is OK and that things are improving. The reality is, many people are leaving (management also) and patent quality declined so fast that even applications the USPTO would reject are being accepted by the EPO.

“They try to pretend that everything is OK and that things are improving. The reality is, many people are leaving (management also) and patent quality declined so fast that even applications the USPTO would reject are being accepted by the EPO.”Yesterday morning we used the term “Gold Standard” and someone later used it as well, essentially by asking, “where is the EPO’s Gold Standard now?” As Mr. Battistelli basically turned the EPO into rubbish (in many respects, ranging from working conditions to patent quality), calling the EPO “gold” anything would make no sense, except maybe the gold diggers that Team Battistelli became.

We’ve gone though the comments thread at IP Kat and highlighted the relevant bits below:

I too am worried about the Art 54(3) point. If a claim defining “sodium” now encompasses in its scope “potassium”, how should an applicant formulate his claim to be clear of Art 54(3) art disclosing potassium, but not sodium? Or now does the test of “disclosure” have now to encompass that which is directly and unambiguously disclosed and also Improver equivalents thereto? Or, put another way, where is the EPO’s Gold Standard now?

How do the Germans sort this out, with their DoE?

MaxDrei?

I would agree with LordBeefBurger and the GuestKat that this judgement is quite surprising.

When considering that the original disclosure only relates to disodium, stating that dipotassium also falls under the scope of the claims, would mean that actually in such a situation the applicant/proprietor could amend its specification after filing in order to envisage any other salts which were not specifically disclosed in the original application.

Even if one would not adopt the strict approach of the BA of the EPO, there is no doubt that such an amendment would plainly offend Art 123(2) EPC.

When one looks at the contribution to the art, the proprietor has only disclosed the association of permetrexed disodium with vitamin B12 or a pharmaceutical derivative thereof, and nothing else. There is well a general statement in § [0005] and [0022] of the patent referring to antifolates as a class associated with a methylmalonic acid lowering agent as vitamin B12. But that’s it.

All further statements in the patent refer exclusively to permetrexed disodium. See for example § [0010], [0011], [0016], [0034], [0039], [0045] or [0047] of the patent specification. The judgement refers to some of those §, but then takes a different route.

The limitation to permetrexed disodium is thus a clear choice of the proprietor. Why the proprietor should then be allowed to obtain protection for something he has not invented? I fully agree with LordBeefBurger “that “disodium” is not a term amenable to variation in practice”. It cannot be compared with “vertical” in Catnic.

The problem with Art 2 of the Protocol on Art 69 in EPC 2000 is that, although it mentions equivalents, the diplomatic conference was not able to reach an agreement on the definition of what is an equivalent. The EPO had made proposals to this effect, but no agreement could be reached. Taking pretext of this new article in the Protocol to go as far as here is quite daring and certainly not enhancing certainty in UK.

One gets the feeling that the mistake done in the Epilady case had to be corrected and a more lenient stance adopted. And for this it was convenient to rely on Art 2 of the Protocol.

The judgement might look interesting, but it should remain a one-off, as in my opinion it totally disregards the actual contribution to art by the proprietor.

I think that now we are Brexiting we can return to formulating our own unique case law and making our purposive construction doctrine broader, without needing to worry about the way Europe or the EPO look at claim language.

The EPO have increasingly viewed the ‘invention’ as the literal claim scope since getting rid of the Snackfood test (https://www.epo.org/law-practice/case-law-appeals/recent/t880073ep1.html)

At least the UK can now go back to reconsidering claims and inventions based on essential and non-essential features, and not let limitations relating to non-essential features get in the way of catching infringers using the same the invention.

Still not had time to read through the decision but let that not stop me indulging myself with a rant.

Through the second half of my long career as a patent agent/attorney, I have defended “purposive construction” against the notion of “infringement by equivalent”. The notion that the claim means the same, whether for validity or infringement, is precious to me. You know, the notion that “What comes after, and infringes, if coming before, anticipates”. You know, the notion that the Act provides only one sort of infringement and there is no justification to debate whether any given act of infringement is “direct” infringement or infringement “by equivalent”.

I remember at a Seminar about 20 years ago, when discussing not Improver but HILTI, speaker Nick Pumfrey cautioned me that such a notion might seem to me unassailable while being simultaneously given no houseroom at all, on The Continent.

What chance does the UK SC have, of getting to the right result, when both sides are represented by professional litigators for whom, the more legal uncertainty there is, the more money they can make? Who is there to point out to the judges the perils and unwisdom of overturning a century of established patent law? One would like to think that the wisdom of the vastly experienced patent judges in the High Court and Court of Appeal would carry more weight. But no, weight is instead given to the jurisprudence of non-specialist, indeed generalist, judges in the civil law jurisdictions of Continental Europe, for whom Binding Precedent is what you find on a Different Planet, but not on grounded Earth.

There are ways and means, in civil law jurisdictions, to live with legal uncertainty. See how the EPO Enlarged Board of Appeal has brought an unprecedented level of certainty to the law of novelty, obviousness, clarity, added matter, sufficiency, Convention priority. Poisoning an English law jurisdiction with a near fatal dose of it though and what do you get? Litigate like in America? Do you know over there how to construe a claim, or what is or is not definite, enabled, enjoys sufficient written description, entitled to priority, old or obvious?

Somebody asked me about Germany. I’m not qualified to advise. But here is a thought to play with, nevertheless. Take the claim, construe it (purposively, if you will) assess validity, assess if there is “direct” infringement. You are nearly done.

Just one more thing, equivalence. Is it “fair” to go outside the claim scope, to nail the infringer? Would it do un”reasonable” damage to “legal certainty” so to nail the infringer? If not, nail him.

But what if he has a Gillette Defence, that his act, whether or not it touches validity of the claim as you have construed it, is nevertheless no more than an obvious variant of the prior art. In Germany, it works. They call it their “Formstein” defence.

HILTI by the way was the case in which a Swiss patentee litigated its patent all over EPC-land. It lost in every jurisdiction bar one. But the reasons were different in each jurisdiction. Which was the one jurisdiction in which it prevailed. Go on, you can probably guess: their home jurisdiction CH.

There is a lot wrong with Europe. We should harmonise. I suppose that’s what the SC in this case has in mind. but was the sacrifice worth it?

BTW, does any reader remember the Chef America case about the bread-making oven. The claim recited heating the dough “to” 400°F when they meant baking it “at” 400°F, that is, an oven temperature of 400°F. How to construe that claim then, to be “fair” to its owner. With purposive construction, no problem. But how does one apply a “Doctrine of Equivalents” to such a claim element? I for one lament the sacrifice of purposive construction on the international altar of the appalling DoE.

It needs to be remembered that one purpose of Supreme Court decisions in all jurisdictions is for basic principles of case law to be invented or substantially changed, and then the lower courts and patent offices need to deal with the fallout on individual future cases. The take home message here is that it is time to reconsider how we are going to deal with equivalents.

As the previous comments have pointed out the present decision will cause issues in validity, and the next 10 years will be a sort of experiment as to how the patent system deals with that. Perhaps validity does need to get stricter in some way, and if that leads to narrower (literal) claim scope on granted patents that might benefit the system in the long run.

This means that the scope of protection for infringement goes beyond the meaning of the claim, but the test for novelty uses only the meaning of the claim without the extra scope provided for infringement. So a granted patent covers more than what it had to overcome in order to be granted.

It’s not the judgement’s fault – the problem is with paragraph 2 of the Protocol to Art 69 which sets up this situation. The judge has simply applied what it says rather than trying to come up with a way to ignore it (as in Kirin Amgen).

I would argue that “a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties” (from paragraph 1 of the Protocol) can only be achieved by NOT having a doctrine of equivalents, as having a different scope of protection for infringement than for interpretation of novelty is not fair. But that makes the “due account” to be taken of equivalents from paragraph 2 of the Protocol be “no account” of equivalents! That interpretation is clearly unreasonable so we must take some account of equivalents when considering infringement and must therefore allow patents to cover more than what the claims state.

It’s a sad place to be but that’s the law our country has signed up to with EPC 2000.

The Protocol only relates to the scope of protection conferred by the claims, and it does not apply to the issue of validity. The law therefore accepts that a patent claim may encompass what has gone before. It is valid, but infringed.

Had the Lilly case been an example of such a situation (i.e. the prior art disclosed the potassium salt) the judges may have been more aware of the implications of their poor judgement, and may have tread more wearily. In the present case, a claim literally covering the potassium salt (i.e. the claim used the word ‘potassium’ in big bold letters with flashing lights and dancing nubile naked dancers pointing at it) would have been valid on the grounds of novelty and inventive step and sufficiency, but such a claim would have been rejected for added matter.

When watching sections of the Supreme Court hearing, I got the impression that most of the judges had no grasp of the issues or understanding of patent law. A couple of judges, including Neuberger, fared better, but still they showed a dangerous ignorance in many of their questions.

Re Snackfood’s comment: Brexit doesn’t come into it. You sound like one of the Supreme Court judges.

I am, myself, looking forward to some more original insight from the Beefburger. Copy and Paste, M’Lud? Can you advise us to follow the US attorney strategy in future? “Draft narrow, claim broad”? Is ‘Observer’ correct that the judgement should remain a one-off? Or would my Learned Friend advise that a decision of the Supreme Court is no such thing? Pray tell!

I am going to go against the grain of the earlier comments and say that this decision seems to make sense. There has long been a disconnect between Article 69 and UK law. This decision seems to address it, without going through the intellectual hooplah of Kirin-Amgen. While Kirin-Amgen is superficially beautifully simple as Lord Neuberger says here, it does not answer the question of equivalents which fall outside any reasonable interpretation of the claim.

As for “file wrapper estoppel” (note, it isn’t even called that) the judgement is clear: it can only be useful when it is useful.

We expect a lot more to be said about this decision in the coming days. We wrote about it yesterday and not so many people have read the decision yet.

Share in other sites/networks: These icons link to social bookmarking sites where readers can share and discover new web pages.
  • Reddit
  • email

Decor ᶃ Gemini Space

Below is a Web proxy. We recommend getting a Gemini client/browser.

Black/white/grey bullet button This post is also available in Gemini over at this address (requires a Gemini client/browser to open).

Decor ✐ Cross-references

Black/white/grey bullet button Pages that cross-reference this one, if any exist, are listed below or will be listed below over time.

Decor ▢ Respond and Discuss

Black/white/grey bullet button If you liked this post, consider subscribing to the RSS feed or join us now at the IRC channels.

DecorWhat Else is New


  1. [Meme] Rowing to the Bottom of the Ocean

    The EPO‘s Steve Rowan (VP1) is failing EPO staff and sort of “firing” workers during times of crisis (not at all a crisis to the EPO’s coffers)



  2. EPO Gradually Reduced to 'Fee Collection Agency' Which Eliminates Its Very Own Staff

    Mr. Redundancies and Mr. Cloud are outsourcing EPO jobs to Microsoft and Serco as if the EPO is an American corporation, providing no comfort to long-serving EPO staff



  3. Linux Foundation 2021 Annual Report Made on an Apple Mac Using Proprietary Software

    Yes, you’re reading this correctly. They still reject both “Linux” and “Open Source” (no dogfooding). This annual report is badly compressed; each page of the PDF is, on average, almost a megabyte in size (58.8 MB for a report of this scale is unreasonable and discriminates against people in countries with slow Internet connections); notice how they’re milking the brand in the first page (straight after the cover page, the 1991 ‘creation myth’, ignoring GNU); remember that this foundation is named after a trademark which is not even its own!



  4. Links 7/12/2021: OpenIndiana Hipster 2021.10 and AppStream 0.15

    Links for the day



  5. Microsoft “Defender” Pretender Attacks Random Software That Uses NSIS for installation; “Super Duper Secure Mode” for Edge is a Laugh

    Guest post by Ryan, reprinted with permission



  6. Links 6/12/2021: LibreOffice Maintenance Releases, Firefox 95 Finalised

    Links for the day



  7. “Wintel” “Secure” uEFI Firmware Used to Store Persistent Malware, and Security Theater Boot is Worthless

    Guest post by Ryan, reprinted with permission



  8. No Linux Foundation IRS Disclosures Since 2018

    The publicly-available records or IRS information about the Linux Foundation is suspiciously behind; compared to other organisations with a "tax-exempt" status the Linux Foundation is one year behind already



  9. Jim Zemlin Has Deleted All of His Tweets

    The Linux Foundation‘s Jim Zemlin seems to have become rather publicity-shy (screenshots above are self-explanatory; latest snapshot), but years ago he could not contain his excitement about Microsoft, which he said was "loved" by what it was attacking. Days ago it became apparent that Microsoft’s patent troll is still attacking Linux with patents and Zemlin’s decision to appoint Microsoft as the At-Large Director (in effect bossing Linus Torvalds) at the ‘Linux’ Foundation’s Board of Directors is already backfiring. She not only gets her whole salary from Microsoft but also allegedly protects sexual predators who assault women… by hiring them despite repeated warnings; if the leadership of the ‘Linux’ Foundation protects sexual predators who strangle women (even paying them a salary and giving them management positions), how can the ‘Linux’ Foundation ever claim to represent inclusion and diversity?



  10. Microsoft GitHub Exposé — Part IX — Microsoft's Chief Architect of GitHub Copilot Sought to be Arrested One Day After Techrights Article About Him

    Balabhadra (Alex) Graveley has warrant for his arrest, albeit only after a lot of harm and damage had already been done (to multiple people) and Microsoft started paying him



  11. The Committee on Patent Law (PLC) Informed About Overlooked Issues “Which Might Have a Bearing on the Validity of EPO Patents.”

    In a publication circulated or prepared last week the Central Staff Committee (CSC) of the EPO explains a situation never explored in so-called 'media' (the very little that's left of it)



  12. Links 6/12/2021: HowTos and Patents

    Links for the day



  13. IRC Proceedings: Sunday, December 05, 2021

    IRC logs for Sunday, December 05, 2021



  14. Gemini Space/Protocol: Taking IRC Logs to the Next Level

    Tonight we begin the migration to GemText for our daily IRC logs, having already made them available over gemini://



  15. Links 6/12/2021: Gnuastro 0.16 and Linux 5.16 RC4

    Links for the day



  16. Links 5/12/2021: Touchpad Gestures in XWayland

    Links for the day



  17. Society Needs to Take Back Computing, Data, and Networks

    Why GemText needs to become 'the new HTML' (but remain very simple) in order for cyberspace to be taken away from state-connected and military-funded corporations that spy on people and abuse society at large



  18. [Meme] Meanwhile in Austria...

    With lobbyists-led leadership one might be led to believe that a treaty strictly requiring ratification by the UK is somehow feasible (even if technically and legally it's moot already)



  19. The EPO's Web Site is a Parade of Endless Lies and Celebration of Gross Violations of the Law

    The EPO's noise site (formerly it had a "news" section, but it has not been honest for about a decade) is a torrent of lies, cover-up, and promotion of crimes; maybe the lies are obvious for everybody to see (at least EPO insiders), but nevertheless a rebuttal seems necessary



  20. The Letter EPO Management Does Not Want Applicants to See (or Respond to)

    A letter from the Munich Staff Committee at the EPO highlights the worrying extent of neglect of patent quality under Benoît Battistelli and António Campinos; the management of the EPO did not even bother replying to that letter (instead it was busy outsourcing the EPO to Microsoft)



  21. IRC Proceedings: Saturday, December 04, 2021

    IRC logs for Saturday, December 04, 2021



  22. EPO-Bribed IAM 'Media' Has Praised Quality, Which Even EPO Staff (Examiners) Does Not Praise

    It's easy to see something is terribly wrong when the people who do the actual work do not agree with the media's praise of their work (a praise motivated by a nefarious, alternate agenda)



  23. Tux Machines is 17.5 Years Old Today

    Tux Machines -- our 'sister site' for GNU/Linux news -- started in 2004. We're soon entering 2022.



  24. Approaching 100

    We'll soon have 100 files in Git; if that matters at all...



  25. Improving Gemini by Posting IRC Logs (and Scrollback) as GemText

    Our adoption of Gemini and of GemText increases; with nearly 100,000 page requests in the first 3 days of Decembe (over gemini://) it’s clear that the growing potential of the protocol is realised, hence the rapid growth too; Gemini is great for self-hosting, which is in turn essential when publishing suppressed and controversial information (subject to censorship through blackmail and other ‘creative’ means)



  26. Links 4/12/2021: IPFire 2.27 Core Update 162 and Genode OS Framework 21.11

    Links for the day



  27. Links 4/12/2021: Gedit Plans and More

    Links for the day



  28. Links 4/12/2021: Turnip Becomes Vulkan 1.1 Conformant

    Links for the day



  29. IRC Proceedings: Friday, December 03, 2021

    IRC logs for Friday, December 03, 2021



  30. Links 4/12/2021: EndeavourOS Atlantis, Krita 5.0.0 Beta 5, Istio 1.11.5, and Wine 6.23; International Day Against DRM (IDAD) on December 10th

    Links for the day


RSS 64x64RSS Feed: subscribe to the RSS feed for regular updates

Home iconSite Wiki: You can improve this site by helping the extension of the site's content

Home iconSite Home: Background about the site and some key features in the front page

Chat iconIRC Channel: Come and chat with us in real time

Recent Posts