[08:29] schestowitz[TR][08:29] schestowitz[TR]The current version of the Thunderbird GNOME Theme is designed to work with the recent Thunderbird 115 Supernova release, and accommodates many of the various UI changes/enhancements the update sports.
[08:29] schestowitz[TR]
If the EPO can influence the national court's claim interpretation by requiring an amendment of the claims, then the EPO can influence the national court's claim interpretation by requiring an amendment of the description. There is simply no difference.
Again, what the EPO does is examine whether the application (description, claims, drawings) complies [21:32] schestowitz[TR] with the EPC. If it does comply, then the EPO grants a patent. If it does not, then it is the applicant's responsibility to make appropriate amendments to the application (description, claims, drawings).
So the EPO does not examine only the claims. It examines the application (description, claims, drawings).
If you mean that the EPO cannot base the refusal of an application on national case law on claim interp [21:32] schestowitz[TR] retation, then sure. But show me one such refusal.
If the granted patent application is in such a good shape that no expert evidence is required to ascertain the meaning of the claims, then everybody wins. I am under no illusion that this can be achieved by adapting the description to the claims or vice versa, but removing conflicts is a start. Improved legal certainty is a good thing. This is why Art. 84 exists. The appl [21:32] schestowitz[TR] ication of Art. 84 by the EPO in no way violates the independence of national courts.
The application of Art. 69(1) in EPO proceedings is not critical here (and Art. 69(2) definitely cannot be applied). The EPO has the general rule that any passage of a document should be interpreted in the light of the document as a whole. I do agree that it would be good if the EPO used one clearly pronounced standard of claim interpret [21:32] schestowitz[TR] ation, and ideally the EPO and the national courts should use the same standard for validity, but this is a diferent topic." [21:33] schestowitz[TR] "Mr Hagel, your comment reminds me of the notorious...Mr Hagel, your comment reminds me of the notorious Bermuda Triangle found in prosecution before the EPO. The claim lacks novelty, and must be amended. But whatever amendment Applicant comes forward with is deemed to offend Art 84 or Art 123(2) EPC, or both. EPO shrugs its shoulders and declares that Applicant has only itself to blame, that Applicant finds its [21:33] schestowitz[TR] elf in an inescapable trap (another of those!) purely because it declined to pay for competent drafting of the initial patent application as filed.
I thought that there would never be a more perfect real life example of CATCH 22 than the 123(2)/123(3) inescapable trap. But the 54/84/123(2) Bermuda Triangle in which patent applications disappear runs it close. Who would have thought that it could come to this, given the mi [21:33] schestowitz[TR] ssion statement of the EPO under the EPC, to grant useful patents with a scope commensurate with the contribution to the art, and thereby promote the progress of the useful arts, to the benefit of all humanity." [21:33] schestowitz[TR] "Few arguments make sense if they are misquoted. If...Few arguments make sense if they are misquoted. If you re-read my original comment, you will see that my argument was that the EPO's remit does not extend to tying the hands of national courts on matters of claim interpretation.
Is that an argument with which you can now agree? If not, why not?
Of course the EPO has a role in det [21:33] schestowitz[TR] ermining the wording of the claims of a patent. But that is a completely different matter to interpreting the wording of the patent claims.
The EPO's description adaptation practice can, and is indeed designed to, force (onto the national courts) a very specific interpretation of the wording of the claims as granted. That outcome is problematic enough on its own. However, it is made worse by the fact that th [21:33] schestowitz[TR] e EPO:
(a) does not (routinely) apply the principles of Article 69(1) EPC when interpreting the language of the claims;
(b) rarely, if ever, seeks the opinion of experts upon the meaning of certain terms used in the claims;
(c) never considers Article 69(2) EPC when interpreting the language of the claims; and
(d) never considers whether amendments to the description might alter the interpretation o [21:33] schestowitz[TR] f the language of the claims.
If left to their own devices, national courts would interpret the claims by considering not only Article 69(1) and (2) EPC but likely also expert evidence on the meaning of certain terms. So what purpose does it serve for the EPO to demand amendments to the description that can effectively shortcut the national court's deliberations, and force an interpretation of the claims that takes non [21:33] schestowitz[TR] e of the above into account? At least in some cases, would this not render Article 69 EPC effectively otiose?" [21:33] schestowitz[TR] "The argument that the EPO may not "tie the hands of national courts" makes no sense.
The whole purpose of the EPO's granting proceduire is to grant a patent on a text which complies with the requirements of the EPC. The EPO is obliged to insist on a text that meets the requirements, and obviously any amendments made to the text, whether to the description or the claims, will "tie the hands of the national [21:33] schestowitz[TR] courts". Or to put it differently: the text of the patent as granted determines the (national) legal rights conferred by the patent. It makes no sense to argue that the EPO has no business in shaping those rights. The EPO was created to do just that.
As to your other remarks, whether a "clear claim" precludes taking into account the description is an interesting question. One point of view is that the claim [21:33] schestowitz[TR] should always be interpreted in the light of the application/patent as a whole for novelty, inventive step, sufficiency. This does not contradict the Art. 84 requirement that the claim must be clear from its wording alone.
In the end, a claim will always have grey areas which in later opposition, validity or infringement proceedings may need to be elucidated. In that case it only makes sense to look into the description [21:33] schestowitz[TR] and drawings for help, even if the granted claim was "clear" within the meaning of Art. 84 (which is a question which anyway should no longer concern the opposition division or national court)." [21:33] schestowitz[TR] "According to the press release of the EPO EPO practice confirmed on adaptation of the description dated July 7, 2022, the support requirement of Article 84 EPC also serves the aim of ensuring legal certainty for national post-grant proceedings.
Lets take the EPO at its word. To be sure, since the EPO is concerned about legal certainty for national post-grant proceedings, it can but be concerned about 123( [21:33] schestowitz[TR] 2) issues arising from substantial description amendments before a national court or the UPC. After all, any substantial description amendment is a hazard for the validity of the granted patent because of its potential to raise a new matter issue.
Hence this suggestion for a line of argument if you wish to challenge a requirement from the ED to adapt the description to claim amendments, or 71(3) adaptation amendments ente [21:33] schestowitz[TR] red by the ED : point out that the amendment potentially raises a new matter issue ; and place the burden of proof on the ED to demonstrate that the amendments pass Art 123(2) muster.
The recent EWHC decision Ensygnia vs Shell reported on this thread is very much a case in point to show that the new matter issues generated by typical amendments required by the EPO practice, such as the mention that an unclaimed embodimen [21:33] schestowitz[TR] t is outside the scope of the claims.
This line of argument would be all the more justified as the EPOs assessment can be extraordinarily stringent, as illustrated in decision T 1473/19 revoking a patent for a missing comma in a clause entered in claim 1 by the ED at the 71(3) stage.
This line of argument could be used not only to challenge description amendments but also claim amendments as in T 1473/19. A [21:33] schestowitz[TR] typical claim amendment raising a new matter issue is the deletion of the word substantially or approximately as instructed by GL F-IV 4.7 (e.g. delete substantially in substantially vertical when in fact the description does not disclose a strictly vertical geometry).
" ● Aug 01 [23:46] *Now talking on #techbytes [23:46] *Topic for #techbytes is: Welcome to the official channel of the TechBytes Audiocast [23:46] *Topic for #techbytes set by schestowitz!~roy@haii6za73zabc.irc at Tue Jun 1 20:21:34 2021 [23:47] *Now talking on #techbytes