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schestowitz 08 00:31
-TechrightsBN/#boycottnovell-@spiritdawound: @schestowitz dead people make no incomeNov 08 00:31
schestowitz 08 00:31
-TechrightsBN/#boycottnovell-@jamesabernard: @schestowitz If I use "untrackme" (android - from fdroid) on your link I get error 500 or page does not exist in th… 08 00:31
-TechrightsBN/#boycottnovell-@jamesabernard: @schestowitz If I use "untrackme" (android - from fdroid) on your link I get error 500 or page does not exist in th… 08 00:31
schestowitz"If I use "untrackme" (android - from fdroid) on your link I get error 500 or page does not exist in the browser. If I allow tracking & open link with browser it works fine."Nov 08 00:31
schestowitz 08 00:32
-TechrightsBN/#boycottnovell-@mmIOvOImm: I know @schestowitz won't respond to this. This is just to illustrate what some technical people seem to think abou… 08 00:32
-TechrightsBN/#boycottnovell-@mmIOvOImm: I know @schestowitz won't respond to this. This is just to illustrate what some technical people seem to think abou… 08 00:32
schestowitz"Nov 08 00:32
schestowitzI know @schestowitzNov 08 00:32
schestowitz won't respond to this. This is just to illustrate what some technical people seem to think about twitter. @SMauriziNov 08 00:32
schestowitz Nov 08 00:32
schestowitz"Write-only account; follow/reply to me in Federation / Or Diaspora"Nov 08 00:32
schestowitzI don't know his exact view. But I know Julian had similar sentiments.Nov 08 00:32
schestowitz"Nov 08 00:32
schestowitz 08 00:32
-TechrightsBN/#boycottnovell-@mmIOvOImm: 08 00:32
-TechrightsBN/#boycottnovell-@Suzi3D: Julian Assange often said things which doubters struggled to believe and yet which turned out to be true. I have l… 08 00:32
schestowitz 08 00:33
-TechrightsBN/#boycottnovell-@TinyAndMe: @schestowitz He will also be an adult, which should be a prerequisite for the job.Nov 08 00:33
schestowitz 08 00:33
-TechrightsBN/#boycottnovell-@hanscees: And inspired by these classic PCs, here is Raspberry Pi 400: a complete personal computer, built into a compact key… 08 00:33
-TechrightsBN/#boycottnovell-@hanscees: And inspired by these classic PCs, here is Raspberry Pi 400: a complete personal computer, built into a compact key… 08 00:33
schestowitz"Nov 08 00:33
schestowitzAnd inspired by these classic PCs, here is Raspberry Pi 400: a complete personal computer, built into a compact keyboard,Nov 08 00:33
schestowitz#raspberrypi400Nov 08 00:33
schestowitz"Nov 08 00:33
schestowitz 08 00:34
-TechrightsBN/#boycottnovell-@TrudoLemmens: “The real message of this election is not that Trump lost and Democrats triumphed. It’s that a weak and untalented… 08 00:34
-TechrightsBN/#boycottnovell-@TrudoLemmens: “The real message of this election is not that Trump lost and Democrats triumphed. It’s that a weak and untalented… 08 00:34
schestowitz"“The real message of this election is not that Trump lost and Democrats triumphed. It’s that a weak and untalented politician lost, while the rest of his party has completely entrenched its power over every other branch of government”"Nov 08 00:34
schestowitz\Nov 08 00:34
-TechrightsBN/#boycottnovell-@SiQuizas: El Negocio de las cárceles privadas ... antes de Trump, con Trump y después de Trump - en serio - ¿va a cambiar al… 08 00:34
-TechrightsBN/#boycottnovell-@SiQuizas: El Negocio de las cárceles privadas ... antes de Trump, con Trump y después de Trump - en serio - ¿va a cambiar al… 08 00:34
schestowitz"Nov 08 00:34
schestowitzDisidir & DecidirNov 08 00:34
schestowitz@SiQuizasNov 08 00:34
schestowitz·Nov 08 00:34
schestowitz15hNov 08 00:34
schestowitzEl Negocio de las cárceles privadas ... antes de Trump, con Trump y después de Trump - en serio -  ¿va a cambiar algo en este sentido?Nov 08 00:34
schestowitz"Nov 08 00:34
schestowitz 08 00:35
-TechrightsBN/#boycottnovell-@freedom4all117: @schestowitz Trump wasn't authoritarian. He is not a DemocratNov 08 00:35
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schestowitz> Great Schneier quote, too.Nov 08 08:01
schestowitz> Nov 08 08:01
schestowitz> For what it's worth TR has been ranking rather high in DDG andNov 08 08:01
schestowitz> Startpage.  Previously it was more or less invisible.Nov 08 08:01
schestowitzSomeone mentioned that in IRC yesterday. Nov 08 08:01
schestowitzSeems HTTPS leading to higher ranks might also be a myth, partly...Nov 08 08:01
schestowitz>> What's an FSF?Nov 08 08:23
schestowitz> Nov 08 08:23
schestowitz> The militant wing of the Salvation Army? Probably a Wikipedia article orNov 08 08:23
schestowitz> something.Nov 08 08:23
schestowitz> Nov 08 08:23
schestowitz> Ahh, here we go! 08 08:23
-TechrightsBN/ | Flexible Support Fund - WikipediaNov 08 08:23
schestowitz> <>Nov 08 08:23
schestowitzOh! I see!Nov 08 08:23
schestowitzRe: Unacceptable comments toward a company: 1Nov 08 08:28
schestowitz> I am really glad to be done with "Linux".Nov 08 08:28
schestowitzBut notice the response from LF.Nov 08 08:28
schestowitzThey did not take action.Nov 08 08:28
schestowitzBSD also has a CoC issue.Nov 08 08:28
schestowitz> /> We all need to pressure Biden quite soon/Nov 08 08:34
schestowitz> Nov 08 08:34
schestowitz> Who are you kidding? He betrayed his country more than 20 years ago, andNov 08 08:34
schestowitz> was rewarded with a vice presidency and then presidency. He's celebratedNov 08 08:34
schestowitz> by Techrights staff and former softies who don't seem to care that heNov 08 08:34
schestowitz> fellates the RIAA, who just started flexing their muscles again DURINGNov 08 08:34
schestowitz> the election. (Coincidence? Perhaps, though it seems unlikely.)Nov 08 08:34
schestowitz> Nov 08 08:34
schestowitz> Just what do you intend to "pressure" him with for an encore, *unlimitedNov 08 08:35
schestowitz> sexual favours*? Zero leverage-- the country just threw away the lastNov 08 08:35
schestowitz> remnants of the Constitution by electing its principal murder-rapist.Nov 08 08:35
schestowitz> What DO you do for an encore? LOL, pressure Biden. As if! Not yourNov 08 08:35
schestowitz> fault, by the way. But truly hilarious.Nov 08 08:35
schestowitzThe alternative in this case was 4 more years of greater lunacy.Nov 08 08:35
schestowitzI never liked Biden and still don't.Nov 08 08:35
schestowitzI mentioned his RIAA connections and views on Assange etc.Nov 08 08:35
schestowitzLet's fight; it seems safe now (Trump has no leeway).Nov 08 08:35
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schestowitz 08 11:08
-TechrightsBN/#boycottnovell-@0xCEDE: @schestowitz Nah, but it's a good start.Nov 08 11:08
schestowitz 08 11:09
-TechrightsBN/#boycottnovell-@HilaryEllary: @schestowitz All MS software is grossly a toppling jenga puzzle.Nov 08 11:09
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schestowitz 08 12:54
-TechrightsBN/ | Hague Court of Appeal sets Dutch approach to equivalence, reversing District Court in pemetrexed saga - The IPKatNov 08 12:54
schestowitz"Nov 08 12:54
schestowitzJustice must be done....Nov 08 12:54
schestowitzReplyNov 08 12:54
schestowitzCricket DunyaSunday, 1 November 2020 at 11:01:00 GMTNov 08 12:54
schestowitzThis is where the key point that I am making comes into play. This is because it is not entirely clear whether it is permissible for Eli Lilly to rely upon that post-filing data to support sufficiency and/or inventive step for the non-literal scope of their patent claims. To answer that question, one needs to decide whether, based upon the evidence, the disclosure of Eli Lilly's patent renders PLAUSIBLE the relevant technical effectNov 08 12:54
schestowitz(of inhibiting tumor growth) for the "equivalent" salt forms. This is a question that, to date, the national courts in Europe appear not to have considered in any depth. Personally, I find this alarming, as it suggests that the patentability standards for non-literal claim scope are much lower than those for literal claim scope ... which simply cannot be right.Nov 08 12:54
schestowitzReplyNov 08 12:54
schestowitzMaxDreiSunday, 1 November 2020 at 21:54:00 GMTNov 08 12:54
schestowitzWARNING: I'm going to be provocative here. But I do it deliberately, to stimulate further debate, because I think that would be beneficial.Nov 08 12:54
schestowitzI welcome the exchange of views prompted by my Comment #1 but have an uneasy feeling that Mr Dijkman lacks long years of experience drafting pharmaceutical patents and so is not in a position to judge what an elementary goof occurred in the drafting of the patent here in suit. Nov 08 12:54
schestowitzWhat I'm suggesting is that it is not a good idea for the courts to rescue Applicants who make egregious drafting errors. It is not good for the health of the patent system to excuse such grotesque failures of drafting.Nov 08 12:54
schestowitzThe point is that in the invention we have here there is an anion and a cation, of which the anion is the active complex organic principle (pemetrexed) and the cation is merely a necessary but trivial electrical charge-balancing positively charged inorganic counterpart particle (sodium ion, potassium ion, or something similar). Nothing could have been more self-evident or obvious than to claim at the level of generality of "Nov 08 12:54
schestowitzpemetrexed salt". Had Applicant claimed that invention, the true invention, at that level of generality ie precisely the level of generality supported by the disclosure and rendered plausible by the disclosure, litigation would not have been needed. No hindsight was needed, to see that a claim to pemetrexed was indicated, right from the get go, the blank sheet of paper on which the claims are first drafted. Any qualified European Nov 08 12:54
schestowitzPatent Attorney would have seen that instantly. The problem here is that the case was drafted and filed in the USA, which when it comes to patent drafting is "on a different planet" from the rest of the world.Nov 08 12:54
schestowitzNow, Mr Dijkman, and other readers, my question to you. Should the courts be in the business of fomenting more patent litigation or should they instead concern themselves with efforts to damp down the amount of patent litigation? I ask because the way this case has turned out is, in my opinion, a potent generator of more litigation, arising from a reduced level of legal certainty about how claims are to be construed in Europe, and Nov 08 12:54
schestowitzwhat counts as an infringement.Nov 08 12:54
schestowitzI see you are an associate of a leading patent litigation firm. Your assessment then as to what attitude the patent courts of Europe should take towards levels of quality in patent drafting interests me greatly.Nov 08 12:54
schestowitzReplyNov 08 12:54
schestowitzRepliesNov 08 12:54
schestowitzLéon DijkmanMonday, 2 November 2020 at 08:48:00 GMTNov 08 12:54
schestowitzDear Max, thanks for your thoughts--and I appreciate you being outspoken, even provocative. Nov 08 12:54
schestowitzI agree with you that the doctrine of equivalence should not be relied upon to correct sloppy drafting. The patent social contract places great power in the hands of patentees by allowing them to draft their own claims, and I think they should be subject to strict scrutiny when doing so. This has been recognized in Dutch case law for a long time, and a 2016 decision by the Supreme Court serves to illustrate this (Bayer/Sandoz, ECLI:Nov 08 12:54
schestowitzNL:Nov 08 12:54
schestowitzHR:2016:196). There, the patent claimed a method and the claims specified that it should be performed with an acid. But the description mentioned it could just as well have been applied with a base. The Supreme Court (and the CoA before it) refused to apply the doctrine of equivalents in this case, since an acid is simply not a base, and if the patentee would have wanted to claim protection for both, they should have done so.Nov 08 12:54
schestowitzNow, let's take a look at what happened in the present case.Nov 08 12:54
schestowitzThe initial claim 1 read as follows: 1. Use of a methylmalonic acid lowering agent in the preparation of a medicament useful in lowering the mammalian toxicity associated with an antifolate, and the medicament is administered in combination with an antifolate.Nov 08 12:54
schestowitzThis claim therefore generally covered antifolates, but because a combination of vitamin B12 and an antifolate was not novel, the claim was subsequently amended to cover only pemetrexed, which was understood to mean pemetrexed in combination with any acceptable salt, including (as specified in claim 4), pemetrexed disodium:Nov 08 12:54
schestowitz1. Use of pemetrexed in the manufacture of a medicament for use in combination therapy for inhibiting tumor growth in mammals wherein said medicament is to be administered in combination with vitamin B12 or a pharmaceutical derivative thereof.Nov 08 12:54
schestowitz4. Use according to any one of claims 1 to 3 wherein pemetrexed is pemetrexed disodium.Nov 08 12:54
schestowitzNow comes the crucial part. The examiner raised a 123(2) objection because the only working example of pemetrexed that had been disclosed was pemetrexed disodium:Nov 08 12:54
schestowitzThe subject matter of present claims 1 reading “use of pemetrexed…” and claim 13 “a product containing pemetrexed…” do not find base in the application documents as filed. The term “pemetrexed” in the wording of these claims and the corresponding passages on amended description is certainly a distinct compound (CAS Registry number 137281-23-3) of the “pemetrexed disodium” (CAS Registry number 150399-23-8) Nov 08 12:54
schestowitzexpressed on original document description page 2, line 6 and page 6, line 16. Said amendment beyond the content of the original document is therefore not allowable (Art. 123 (2) EPC).Nov 08 12:54
schestowitzConsequently, the claims had to be limited to pemetrexed disodium. However, the CoA held (and I understand that this was not really disputed) that (i) the skilled person would, on the basis of the common general knowledge, know that the invention would also work with different salts; and (ii) the application clearly said so much, even as filed in the PCT stage.Nov 08 12:55
schestowitzLéon DijkmanMonday, 2 November 2020 at 08:52:00 GMTNov 08 12:55
schestowitzThe key question for the doctrine of equivalents here is whether this limitation, clearly on the basis of art. 123(2) EPC, also limits the scope of protection. The CoA explains why not, and I think the reasoning is persuasive: after all, all patent documents (including the PCT application) must be interpreted on the basis of Art. 69 EPC, whereas the test for art. 123(2) EPC is novelty. Those methods of interpretation are different, Nov 08 12:55
schestowitzwith novelty being much more literal than scope of protection. Hence, a PCT application, and the patent subsequently filed on the basis thereof, will have a certain scope of protection, but because of the more literal test applied for the purposes of at. 123(2) EPC, that scope of protection might not be capable of being claimed as such.Nov 08 12:55
schestowitzThe CoA held here that this means a 123(2) EPC limitation cannot be an indication that the scope of protection is limited accordingly. I think that's right.Nov 08 12:55
schestowitzIt's not clear to me from your comment whether you disagree with that finding: you think this is a case of poor drafting. My question to you is: where was the drafting error made?Nov 08 12:55
schestowitzI could see the argument that it happened already in the PCT stage, i.e. the original application should have disclosed more specific examples than just pemetrexed disodium (which was Eli Lilly's own product and therefore mentioned as a preferred embodiment). But at that stage, the application related to antifolates generally: was the patent holder nonetheless obligated to write down every single salt that could be used with Nov 08 12:55
schestowitzpemetrexed? What about other antifolates? The purpose of art. 69 EPC is to avoid imposing such strict conditions on patentees, so long as the proper breadth of the inventive concept is clearly disclosed, and satisfies all material requirements for patentability. I think that is the case here, so I think the case was properly decided.Nov 08 12:55
schestowitzAnd, having disclosed the invention in a manner that makes clear that it would work with any salt, the next question is: what reasonable expectation can third parties entertain that Eli Lilly nevertheless wanted to limit its scope of protection to pemetrexed disodium, specifically? This happened explicitly in the context of art. 123(2) EPC, so for the reasons set out above, it doesn't imply a willful limitation of the scope of Nov 08 12:55
schestowitzprotection.Nov 08 12:55
schestowitzReturning to the example of Bayer/Sandoz, the case was decided differently there because the invention as initially claimed was limited to a SPECIFIC COMPOUND, even if there had been a disclosure that it would work with others as well. Here, it was not limited in that way: a general class of compound (antifolates) was disclosed and claimed, then narrowed down to pemetrexed generally, then -- on the basis of a formal objection -- Nov 08 12:55
schestowitznarrowed down to pemetrexed disodium. It's a fine line, but I think it can clearly be drawn: in the first case the patentee signalled interest in a limited scope of protection by failing to claim the other compound as well, but here Lilly did no such thing.Nov 08 12:55
schestowitzYou're right that I don't have a lot of experience drafting pharmaceutical patents--I'm not a patent attorney by training. But I did think about this problem as I wrote the post, and I'd be curious to hear where you think my analysis is wrong.Nov 08 12:55
schestowitzLastly, on your point of inviting litigation. If I may, I would criticize your post for posing a false dichotomy: courts don't face just the two options you present, but instead must come to a balanced and fair decision given the circumstances. Of course I don't think that increased legal uncertainty and, as a consequence, a rise in litigation rates are a good thing. But I also don't think that fair protection for patentees should Nov 08 12:55
schestowitzbe sacrificed to maximize legal certainty. If maximum legal certainty were the purpose of the patent system, it would look very different. But instead art. 69 EPC directs us to find a middle ground, and I think the CoA did so properly in this case.Nov 08 12:55
schestowitzReplyNov 08 12:55
schestowitzMaxDreiMonday, 2 November 2020 at 09:53:00 GMTNov 08 12:55
schestowitzOK, Leon, thanks. I want to keep this pot boiling.Nov 08 12:55
schestowitzYou set out this claim:Nov 08 12:55
schestowitz1. Use of pemetrexed in the manufacture of a medicament for use in combination therapy for inhibiting tumor growth in mammals wherein said medicament is to be administered in combination with vitamin B12 or a pharmaceutical derivative thereof.Nov 08 12:55
schestowitzand explain that it appeared for the first time during prosecution. Leon, my point is, very simply that i) precisely that subject matter is the contribution to the art ii) it would have been screamingly obvious, already the day before filing the PCT application, that it should have been claimed (and stated) at that level of generality in the PCT as filed. No excuse not to (except perhaps that the lapse doesn't matter in the USA) iiiNov 08 12:55
schestowitz the outcome at the EPO would have been different, had that claim been there, present, in the PCT as filed. The drafting was (I say) negligent and that negligence should not have been condoned, let alone handsomely rewarded.Nov 08 12:55
schestowitzReplyNov 08 12:55
schestowitzMaxDreiMonday, 2 November 2020 at 09:57:00 GMTNov 08 12:55
schestowitzLeon, I should have said more about why the outcome at the EPO would have been different. Against the 123(2) point, Applicant was powerless. But when that point is not available to the Examining Division, it comes down to a debate about support and plausibility, which Applicant would have easily won.Nov 08 12:55
schestowitzReplyNov 08 12:55
schestowitzMaxDreiMonday, 2 November 2020 at 10:06:00 GMTNov 08 12:55
schestowitzAs to the question why Applicant did not fight against the 123(2)objection, my explanation is that to fight on the public file, and lose, leads to worse outcomes than not to fight at all. Nov 08 12:55
schestowitzApplicant got that judgement right, I think. But I'm no litigator. What do you think? Would Applicant have fared better in the courts if it had vigorously disputed the legitimacy of the Art 123(2) objection with the EPO Examining Division and then with the Technical Board of Appeal (and in the end still lost)?Nov 08 12:55
schestowitzReplyNov 08 12:55
schestowitzLéon DijkmanMonday, 2 November 2020 at 12:28:00 GMTNov 08 12:55
schestowitzHi Max, thanks for this. I think the answer to your first question is that the PCT application was initially even broader and pertained to the use of antifolates, of which pemetrexed combinations are only a single example. But because claiming antifolates with B12 was too broad -- i.e. not novel -- Lilly had to narrow down. And they couldn't narrow down to pemetrexed generally, because there was no basis for that in the PCT Nov 08 12:55
schestowitzapplication. But that doesn't mean the invention behind it wasn't in there.Nov 08 12:55
schestowitzThe entire point in the CoA's reasoning is that it was indeed screamingly obvious that the claims were directed to pemetrexed generally, as in the claim you cite, and that this was comprised in the PCT application as filed. You can't fault the patentee for failing to list every conceivable antifolate in this original application, and it doesn't mean that they forfeit protection for other salts than those specifically listed when theNov 08 12:55
schestowitzdisclosure clearly relates to all antifolates, including salts.Nov 08 12:55
schestowitzI wish I was more versed in the underlying technology so I could better understand the relation between the salt eventually claimed and other antifolates. But the way I read the CoA's decision is that it says the original application was broad enough that it wouldn't have made sense, at that point in time, to already limit the claim in the way you suggest. This is not to say it wouldn't have been better to include it, if only as a Nov 08 12:55
schestowitzdependent claim; and I'm curious to learn how differences in US prosecution rules may have caused this omission (is it because you have to pay per claim?).Nov 08 12:55
schestowitzBut I wouldn't say it is an error, as in the Bayer/Sandoz example where the claimed invention as such is directed at a different compound, and the omission was failing to claim at a broader level of generality. In fact the opposite happened here: the invention as originally claimed was broad enough, but offered no formal basis to describe the claims at a level of generality that would have best served legal certainty.Nov 08 12:55
schestowitzAs for the second question, I'm not sure that it would have mattered. If Lilly fights and loses the 123(2) challenge, that still doesn't necessarily compromise the patent's scope of protection--provided you subscribe, as I do, to the CoA's explanation in this respect.Nov 08 12:55
schestowitzBut to further clarify my question: do you think that a 123(2) challenge, regardless of whether the patentee decides to fight it, signals to third parties that the scope of protection is limited to the restricted wording from the PCT application? If so, how do you reconcile that with art. 69 EPC?Nov 08 12:55
schestowitzReplyNov 08 12:56
schestowitzMaxDreiMonday, 2 November 2020 at 14:21:00 GMTNov 08 12:56
schestowitzThank you Leon.Nov 08 12:56
schestowitzWell, Ladies and Gentlemen Readers, there you have it. Here you can see my abject failure, as a European Patent Attorney who drafts patent applications under a vigorously contested First to File patent law and well knows the sensitivity of prosecution amendments that illegitimately "improve the position" of an Applicant at its filing date, to communicate to a patent litigator the notion of an "undisclosed intermediate generalisationNov 08 12:56
schestowitz under Art 123(2) of the EPC, the notion of "plausibility" and the notion of "support" under Art 84 EPC.Nov 08 12:56
schestowitzDo we see here a need for more communication between the patent litigation and the patent drafting and prosecution communities. What does that tell us about the future of opposition practice at the EPO?Nov 08 12:56
schestowitzLeon, you ask me for my opinion: what difference would it have made, in the litigation, if Lilly had argued against the 123(2) objection? Don't ask me, I'm not a litigator. But why should it be any different in patent disputes than in everyday life, where the general Rule is that it is better if you can to put a fight off till tomorrow than to fight it out today and be seen to have lost. And here, there is no doubt whatsoever that Nov 08 12:56
schestowitzif they had made a fight of it at the EPO, they would have lost. But if in the PCT as filed they had competently claimed their invention, they would have won both before grant and after it, both at the EPO and (if it ever got as far as litigation) in the courts as well.Nov 08 12:56
schestowitzReplyNov 08 12:56
schestowitzMaxDreiMonday, 2 November 2020 at 18:58:00 GMTNov 08 12:56
schestowitzForgive me, Leon, for not yet responding to your "I am curious" sentence. You wonder whether the difference between US and Rest of the World (RoW) drafting standards is fees per claim. Well, no, that's not what I had in mind.Nov 08 12:56
schestowitzImagine claim 1 as a balloon, defining a scope of protection (namely the entire volume inside the balloon). The "best mode" here the proprietary Lilly ALYMPTA product. It can be seen as a diamond, a pin-point, somewhere within the balloon. The difference between US and RoW drafting is in expectation how much you need to write in the application as filed about intermediate levels of generality between the balloon surface and the Nov 08 12:56
schestowitzdiamond. RoW practises an "onion skin" drafting style, coming down from the balloon to the diamond in successive steps, with each step corresponding to a stated enhancement in the efficacy of the inventive concept, ie the subject matter of claim 1.Nov 08 12:56
schestowitzIn short, you can't just file an absurdly wide claim 1 and a single dependent ALYMPTA claim and wait until during prosecution to figure out what you have invented. You will appreciate that there is more or less infinite flexibility to squeeze the balloon skin this way and that, during prosecution, to avoid the prior art while retaining a scope of protection as close as possible to the original balloon size.Nov 08 12:56
schestowitzSuch behaviour is open to abuse. Can you see that? Hence, everywhere on Earth except the USA, a strict "No New Matter" standard is applied to prosecution amendments.Nov 08 12:56
schestowitzIt's (as so often the case) different in the USA, until recently a First to Invent country. Now that it has joined the community of First to File countries, it will slowly but surely find that it too needs (in order to do justice between rival filers) a strict New Matter standard. But for the time being, drafters in the USA still tend to think that their "Diamond in a Balloon" is the highest expresssion of the draftsperson's art Nov 08 12:56
schestowitzbecause it pleases the litigators never to say in the application as filed what the subject inventive concept actually is.Nov 08 12:56
schestowitzWho feels like disagreeing with me here? I am curious.Nov 08 12:56
schestowitzReplyNov 08 12:56
schestowitzRepliesNov 08 12:56
schestowitzLéon DijkmanTuesday, 3 November 2020 at 07:52:00 GMTNov 08 12:56
schestowitzDear Max, that is super interesting. So if I understand you correctly, the US counterpart to art. 123(2) EPC is much less strict in the sense that there's no added matter so long as you add matter from within the balloon? That's certainly crazy.Nov 08 12:56
schestowitzYou may know that I'm writing a PhD on proportionality in patent law. As part of that, I'd like to understand the prosecution process a bit better--especially ways in which it might be open to abuse, e.g. by delaying publication or specification of the invention until competitors have come to market, etc. You seem very knowledgeable on the subject and also to have some concerns about these issues. Would you be willing to talk to me Nov 08 12:56
schestowitzon this issue in some more detail? If so, maybe you can send me an e-mail: you'll find the address via my personal page, which is linked in my bio under "The IPKat Team" [not sharing it here b/c of spambots]. Nov 08 12:56
schestowitzEither way, this has been -- for me at least -- a very fruitful exchange. Maybe you're right to think that litigators, and perhaps even more so judges, should gain some experience with prosecution to better understand what tactics might be employed before a patent is granted... and I'd be grateful to take up the challenge.Nov 08 12:56
schestowitzReplyNov 08 12:56
schestowitzMaxDreiTuesday, 3 November 2020 at 08:26:00 GMTNov 08 12:56
schestowitzOK Leon, I will get in touch with you by email in due course and would be happy to help.Nov 08 12:56
schestowitzMeanwhile, lest readers baulk at what I have written about how things work in the USA I should mention its statutory requirement that the patent application as filed includes a "written description" (WD) of the invention as claimed. Think of the US WD requirement as its equivalent to Europe's prohibition on adding matter after filing.Nov 08 12:56
schestowitzUntil now, however, the WD requirement has been interpreted liberally. But within the next 25 years or so, as the US courts gather experience in adjudicating priority contests between rival Applicants under the AIA'*s First Inventor to FILE regime, they will find that the WD has to be, in the interests of dispensing justice between the disputants, applied strictly. This will bring the WD requirement into closer conformity with the Nov 08 12:56
schestowitzlaw in Europe under Art 123(2) EPC.Nov 08 12:56
schestowitzThat's the nice thing about patent law: the principles are simple and universal, but each country has its own patent statute under its sovereignty, and is free to choose how it expresses the principles. America, for example, always worships the individual. Until the AIA, a corporate owner of the invention had no status to file a patent application at the USPTO, only the individual, the inventor, could do that. Even now, the system Nov 08 12:56
schestowitzintroduced by the AIA is called the "First INVENTOR to File" system.Nov 08 12:56
schestowitzReplyNov 08 12:56
schestowitzRepliesNov 08 12:56
schestowitzLéon DijkmanTuesday, 3 November 2020 at 09:01:00 GMTNov 08 12:56
schestowitzThank you very much Max, I'll be looking out for your e-mail then :)Nov 08 12:56
schestowitzReplyNov 08 12:56
schestowitzDenverTuesday, 3 November 2020 at 11:37:00 GMTNov 08 12:56
schestowitzMaxDrei, I feel you are being too harsh on the US system. In my experience it is difficult to get claims there which are beyond the contribution the invention makes over the prior art. The US Examiners judge claim scope on the technical content of the spec, not the literal language. In Europe you have to be able to 'predict the future' to draft well, and often you have great data, but not adequate language to claim it once new Nov 08 12:56
schestowitzrelevant prior art is identified. EPO Examiners seem to be learning a lot from overseeing oppositions, and are making ever better added matter 'attacks' (not objections). I do not think EPO Examiners should act like opponents for added matter. This is specific to the EPO. No other courts or patent offices are as strict. I think the EPO needs to return to the system of identifying technical content and judging claim scope accordinglyNov 08 12:57
schestowitzReplyNov 08 12:57
schestowitzMaxDreiTuesday, 3 November 2020 at 14:44:00 GMTNov 08 12:57
schestowitzSuper, to get that input from Denver. Thank you.Nov 08 12:57
schestowitzI agree that the EPO is tougher than any other Patent Office on the issue of whether an Applicant, by amendment during prosecution, is adding matter, thereby illegitimately improving its position relative to the one it had on its filing date. The questions are i) why is that and ii) is the EPO position untenable?Nov 08 12:57
schestowitzWhy is it? I think first because, alone amongst the world's leading Patent Offices, the EPO is not told what to do by the community of patent litigators, in the form of a national Supreme Court. Second, the EPO plays a role in certifying who is competent to serve as a "European Patent Attorney". There is a drafting Paper and it is hard to satisfy the Examiners that one's drafting competence is high enough for you to be "let loose onNov 08 12:57
schestowitzthe public". In Europe, it is expected that patent attorneys will draft well enough to get for their clients a full measure of the protection their invention deserves. The EPO holds to account those who do not draft competently.Nov 08 12:57
schestowitzIf we look at the 5 Leading Patent Offices of the World, US, EP, JP, CN, KR, and rank them on a scale of 1 to 100 for the strictness with which they police the "added matter" issue, we could say that the EPO is on 100 while the USPTO is on 1. But where are the other three? Will anybody here report. For the time being, I will assert that they are all on around 80, closer to the EPO view than the US view.Nov 08 12:57
schestowitzFrom the USA it is often advanced that I cannot know what my invention is till after I have received the First Office Action on the Merits (FAOM) . Therefore, for justice, I must have full freedom to define that invention for the first time after I get the FAOM. I started in this profession in the early 1970's. Since then I have advised Patent Applicants, Patent Owners but also Opponents. I think that, given competent patent Nov 08 12:57
schestowitzdrafting, inventors can get a full measure of protection from the EPO, even more so now that the various Supreme Courts of Europe have given their blessing to an expansive DoE. I like to think that Europe, with an EPO free from the yoke of a patent-naive Supreme Court, and with regular brainstorming sessions for the nation Appeal Court judges, can achieve for users of the patent system a level of legal certainty higher than anywhereNov 08 12:57
schestowitzelse in the world, a fair scope of protection, rapid enforcement of claims that are not invalid and rapid revocation of any claim that in dispute is found to be invalid.Nov 08 12:57
schestowitzLest anybody mention Germany, I should say a few words, provocative, of course.Nov 08 12:57
schestowitzThe German Patent Office competes for business with the EPO. The German Federal Patents Court competes for business with the opposition parts of the EPO. One way to distinguish its service offer from that of the EPO, and present it as more user-friendly, is to be more liberal on the issue of added matter. There are always enough other levers in the system of patent law to compensate for any excess liberality in allowing doubtful Nov 08 12:57
schestowitzprosecution amendments.Nov 08 12:57
schestowitzReplyNov 08 12:57
schestowitzMaxDreiTuesday, 3 November 2020 at 18:36:00 GMTNov 08 12:57
schestowitzDenver wrote about the need to "predict the future". I thought about that and in reply have two points to make.Nov 08 12:57
schestowitzWhen patent attorneys draft patent applications, their clients rely on them to "predict the future", but not in the way that Denver contemplates. Rather, they have to imagine how courts will decide patent disputes, over the upcoming 20 year lifetime of the patent. How strict will the courts be, for example, on the issue of admissibility of amendments made during prosecution. If liberal, less effort needs to be put into the drafting Nov 08 12:57
schestowitzof a progression of dependent claims that recite ever stronger patentability, to provide a succession of fall-back positions in the event of closer prior art emerging belatedly. If strict, then more effort is needed, to get those intermediate levels of generality/patentability in the case already at the filing date of the patent application.Nov 08 12:57
schestowitzPatentability is to be assessed objectively, through the prism of the notional skilled person who knows the prior art. The EPC defines the prior art as that which has already been made available to the public by the filing date. With perfect prior art searching, the patent attorney can therefore know all the art known to the notional PHOSITA, when drafting and before filing the application at the Patent Office. The drafter is not Nov 08 12:57
schestowitzrequired to "predict the future" prior art that can emerge only AFTER the filing date of the patent application. Nov 08 12:57
schestowitzOtherwise in the USA, and only the USA. There, even under the AIA, obviousness attacks are routinely made on the basis of "prior art" US patent A-publications that were published only AFTER the patent application is filed. In that sense, when drafting for the USA, you are required to "predict the future". Perhaps this is the reason why the USA allows such liberality with prosecution amendments. Fair's fair, after all, eh? Nov 08 12:57
schestowitzThe other way to look at it is that "Two Wrongs don't make a Right."Nov 08 12:57
schestowitzDenver, any thoughts in reply? Hope so.Nov 08 12:57
schestowitzReplyNov 08 12:57
schestowitzDenverWednesday, 4 November 2020 at 16:27:00 GMTNov 08 12:57
schestowitzThank you MaxDrei. I will need a little but of time to comment on every point, but if I can just for now comment on the reality of EPO search and examination. The EPO is incredibly good at searching, and often finds prior art that applicants are surprised by. So say when we were drafting we predicted about 80% of the types of amendments we would need. Still in 20% of cases we just don't have the claim language which the Examiner Nov 08 12:57
schestowitzwould want. The technical effect is demonstrated, it is enabled, it is a contribution to the field, but we got surprised. It's no one's fault. The data and technical effect are now published. Competitors will use it.Nov 08 12:57
schestowitzSo the skilled person is able to replicate the technology, but we just did not have the right language to claim it as per the EPO's standards. If instead the Examiner took the view that the technical teaching is there within the disclosure, so I will let them add a few words to describe it in claim language, that would fix the problem. The Examiner would just need to make sure there was no additional technical teaching introduced, Nov 08 12:57
schestowitzand this is usually very straightforward.Nov 08 12:57
schestowitzWhat I am advocating is that the EPO added matter test should determine the technical content of the case. I believe this more accurately reflects the purpose of the patent system. I know the test will need to be developed by case law, but once that process begins it will start to provide more certainty. At the moment we are spiralling down to more and more strictness, so that amendments based on the description only, for example, Nov 08 12:57
schestowitzare becoming very difficultNov 08 12:57
schestowitzOn another matter, have you read the UK court decision Icescape v Ice-World on doctrine of equivalence and how the Protocol questions are now being used in the UK? I think it is a complete distortion of the original test from Actavis v LillyNov 08 12:57
schestowitzReplyNov 08 12:57
schestowitzMaxDreiThursday, 5 November 2020 at 08:30:00 GMTNov 08 12:57
schestowitzDenver, thanks again. I'm not going to comment here on the Icescape case because I want this thread to be as concentrated as possible. As to your point about the EPO finding better art, that doesn't impress me at all. The drafter has all the tools needed, to do as good a searching job as the EPO, and to do the drafting with the benefit of a full picture of the art. It is not as if the EPO finds stuff undetectable by the drafter. Nov 08 12:57
schestowitzPatentability must be assessed objectively, through the prism of the all-knowing PHOSITA. Allowing it to be decided by a less than fully informed inventor or drafter is the road to nowhere.Nov 08 12:57
schestowitzAnd now to the EPO's Gold Standard, which defines what any given document (priority document, application as filed, or prior art D1) discloses. The GS Medal has two sides. It helps Applicant striving to write a claim that is novel over D1. It is a b8gger though, when Applicant needs to amend the claim during prosecution. I have argued to the EPO for years that the GS must also be applied through the pragmatic eyes of the PHOSITA (Nov 08 12:57
schestowitzrather than through those of a dry as dust lawyer) and there are plenty of EPO decisions that recognise this need. It is up to we advocates to ease the EPO further towards a robust, pragmatic, real world implementation of its GS. Nov 08 12:57
schestowitzWith 123(2), I think it's gradually getting better (in a 2 steps forward, then one step back way), helped by increasing facility with the English language among EPO Examiners. The biggest problem is EPO efforts to raise "productivity", requiring ever more inexperienced young Examiners to make ever harder examination calls. Again, we advocates should complain.Nov 08 12:57
schestowitzReplyNov 08 12:58
schestowitzDenverThursday, 5 November 2020 at 15:53:00 GMTNov 08 12:58
schestowitzMaxDrei, you have given the benefits of a strict approach and better trained Examiners. I can't argue with that. But your analysis does not take into account real-world situations of how we provide good research with the best support for commercialising the invention and making the world a better place. I get objections to intermediate generalisations at the EPO that I do not get in any other territory. Usually no one benefits from Nov 08 12:58
schestowitzthis. My client has to spend more money. Often there are no direct competitors. Your reference to a gold standard is good, but the penalty is paid by research companies, not the EPO or the patent attorney. And patent attorneys clearly do not see themselves as part of the solution. We have an 'academic' approach that does not seem to see that we live in a bubble of our own culture and rules that does not serve industry well. I Nov 08 12:58
schestowitzbelieve there are less strict tests for added matter that could be adopted which would ultimately result in greater resources being used for research and not ending up as attorney fees.Nov 08 12:58
schestowitzReplyNov 08 12:58
schestowitzMaxDreiFriday, 6 November 2020 at 10:32:00 GMTNov 08 12:58
schestowitzDenver, I feel I must reply, on your point about the real world of research. We could not wish for a better example of a priority contest in the real world of ground-breaking and life-saving medical research than the battle for priority between the East and West Coast USA CRISPR-Cas Teams. Let's watch how that pans out at the EPO, in the multiple opposition proceedings just getting under way. Which Coast was First to File is going Nov 08 12:58
schestowitzto be a fascinating battle under the EPC.Nov 08 12:58
schestowitzMany a time, my client is Opponent at the EPO and looking at the file wrapper of the patent I am to oppose I witness in the EPO file a battle to amend during prosecution. Through the eyes of an opponent, one sees how vital it is, to preserve the Principle of "First to File" that the EPO maintains a strict approach on the issue of adding matter to an already filed application. The courts in England are at least as strict as the EPO, Nov 08 12:58
schestowitzon this vital issue of patent law. This, I would say, gives the lie to the assertion that the EPO is uniquely perverse on the issue of "new matter".Nov 08 12:58
schestowitzI seriously doubt there is any legitimate criticism of the Patents Courts of England, that they lack real world awareness of the vital necessity that the patent system shall positively promote the progress of useful arts. Less so the US courts these days. I have in mind not only their negative attitude to eligibility in the field of diagnostic methods, in breach of GATT-TRIPS, but also a tendency to construe claims through the eyes Nov 08 12:58
schestowitzof a lawyer rather than a person skilled in the art. I cite the Chef America case, where the court decided that the claim, to a method of baking bread, specified not the temperature of the oven but, rather, the temperature in the heart of the baked dough (which would have resulted in a block of carbon rather than bread). How perverse is that then? This is not at all "real world" is it?Nov 08 12:58
schestowitzMany criticise the EPO's Problem/Solution Approach and its Gold Standard as artificial, not Real World. I say that such criticism is unfounded. There is nothing wrong with these legal constructs, but a great deal that is less than satisfactory in the individual cases, where poor advocacy results in poorly reasoned individual EPO decisions.Nov 08 12:58
schestowitzI agree with you, that too many patent attorneys fail to see themselves as part of the solution I hope this thread can change that for the better.Nov 08 12:58
schestowitzReplyNov 08 12:58
schestowitzDenverFriday, 6 November 2020 at 16:28:00 GMTNov 08 12:58
schestowitzMaxDrei, just to respond to your point on the strictness of the UK Courts. They are not as strict on added matter as the EPO, and the test is essentially one of 'new information' being present. Certainly the UK Courts have a more lenient test for combinations, selection from lists, etc. It is almost unheard of for a patent to go down on added matter in the UK. Nov 08 12:58
schestowitzI would also add that if we think about all possible patent systems that could exist, your defence of the 'Gold Standard' would hinder new thinking on how to look at IP. I am an admirer of what the US Supreme Court did on eligibility, but the subsequent failure to develop new case law is the fault of the Federal Circuit, that could not change its way of thinking appropriately. The US Supreme Court was redefining the 'commons' in Nov 08 12:58
schestowitzimportant areas of activity. I think that was a good thing to attempt, but the reaction was too negative for it to have worked. The Federal Circuit was unable to take on 'visionary' thinking when it got the opportunity, which I think continues to be a lost opportunity.Nov 08 12:58
schestowitz"Nov 08 12:58
schestowitz"Nov 08 12:58
schestowitzThat's an interesting point of divergence between the decisions. The CoA held that "The invention is disclosed in the patent document in such a manner that the skilled person, using common general knowledge, could and also would apply it with other pemetrexed combinations than the claimed pemetrexed disodium".Nov 08 12:58
schestowitzAnd a few paragraphs down, the CoA refers to the decision you cite and the argument made, but finds that even though the therapeutic effects of individual salts were unpredictable, "the skilled person would have a reasonable expectation of finding an alternative salt that is suitable for putting the invention into practice".Nov 08 12:58
schestowitzSo it would appear that the case was argued differently than before the EWHC or, perhaps more likely, that the CoA came to a different conclusion on the basis of the evidence by concluding that finding another salt was within the skilled person's common general knowledge.Nov 08 12:58
schestowitzEven if that finding can be criticized as a factual matter, from a legal point of view your concern was thus addressed by the CoA: if it was common general knowledge to search for equivalent salts, including the salt Fresenius used, then its technical effect must also be plausible. Or am I overlooking something?Nov 08 12:58
schestowitzProof of the puddingMonday, 2 November 2020 at 11:46:00 GMTNov 08 12:58
schestowitzBy concluding that "the skilled person would have a reasonable expectation of finding an alternative salt that is suitable for putting the invention into practice", it is clear that the CoA was not posing the correct question.Nov 08 12:58
schestowitzIn medicinal chemistry, the skilled person ALWAYS has a reasonable expectation of finding alternatives to a claimed active ingredient. But whether or not some UNSPECIFIED alternative is certain to be discovered after further research is not a question that is pertinent to ask in connection with patentability (or scope of protection). The relevant question is instead whether, at the priority date, those skilled in the art would have Nov 08 12:58
schestowitzreasonably expected the SPECIFIC alternative(s) under consideration (here, the allegedly infringing alternative form(s) of pemetrexed) to achieve the technical effect of inhibiting tumor growth (in combination therapy).Nov 08 12:58
schestowitzAt this point, I have to completely disagree with Max Drei. The evidence before the UK courts suggests that those skilled in the art would not necessarily have expected the specific alternative forms (potassium and tromethamine salts and pemetrexed diacid) to inhibit tumor growth in combination therapy. The question here is whether those forms would have been capable of (safely) providing a sufficient concentration of (bioavailable)Nov 08 12:58
schestowitzpemetrexed ion at the tumor site. Given how much PK / PD profiles can vary between different (salt) forms, efficacy for any specific (untested) form is far from a foregone conclusion.Nov 08 12:58
schestowitzPerhaps Eli Lilly can demonstrate that the disclosure of their patent was PLAUSIBLE with regard to a tumor growth-inhibiting effect for pemetrexed diacid and the potassium and tromethamine salts of that acid. However, I find it alarming that the CoA (in common with many other courts across Europe) did not see fit to give detailed consideration to the evidence on this point.Nov 08 12:58
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-TechrightsBN/#boycottnovell-@Sheikh_al_Touar: EPO Insider Explains “Team Leaders” and the Downfall of the EPO #Patents #Europe #Germany #Munich #Berlin… 08 17:56
-TechrightsBN/#boycottnovell-@Sheikh_al_Touar: EPO Insider Explains “Team Leaders” and the Downfall of the EPO #Patents #Europe #Germany #Munich #Berlin… 08 17:56
schestowitz"EPO Insider Explains “Team Leaders” and the Downfall of the EPO #Patents #Europe #Germany #Munich #Berlin #Netherlands #Austria"Nov 08 17:56
-TechrightsBN/ | EPO Insider Explains “Team Leaders” and the Downfall of the EPO | TechrightsNov 08 17:56
schestowitz 08 17:57
-TechrightsBN/#boycottnovell-@Sheikh_al_Touar: The Vote on the Unified Patent Court Agreement (UPCA) Will Happen… Last Month?! #UPC #Patents #Europe #Germany… 08 17:57
-TechrightsBN/#boycottnovell-@Sheikh_al_Touar: The Vote on the Unified Patent Court Agreement (UPCA) Will Happen… Last Month?! #UPC #Patents #Europe #Germany… 08 17:57
schestowitz"The Vote on the Unified Patent Court Agreement (UPCA) Will Happen… Last Month?! #UPC #Patents #Europe #Germany #Bundestag"Nov 08 17:57
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