IRC: #techbytes @ Techrights IRC Network: Wednesday, August 02, 2023

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<h5><a href="https://www.fsf.org/blogs/community/when-we-work-together-we-achieve-our-goals">When we work together, we achieve our goals</a></h5>

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Please help us welcome our new associate members to the community and thank all the generous donors who contributed to the cause.

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</blockquote>

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-TechBytesBot/#techbytes-www.fsf.org | When we work together, we achieve our goals — Free Software Foundation — Working together for free software

x https://broadbandbreakfast.com/2023/07/congress-should-not-create-ai-specific-regulation-say-techies/

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schestowitz[TR]

Aug 02 14:05

-TechBytesBot/#techbytes-broadbandbreakfast.com | Congress Should Not Create AI-Specific Regulation, Say Techies – Broadband Breakfast

Aug 02 14:05

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x https://ubuntu.com//blog/enhancing-the-ubuntu-experience-on-azure-introducing-ubuntu-pro-updates-awareness

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# did not click

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-TechBytesBot/#techbytes-Enhancing the Ubuntu Experience on Azure: Introducing Ubuntu Pro Updates Awareness | Ubuntu

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schestowitz[TR]

http://ipkitten.blogspot.com/2023/07/board-of-appeal-poised-on-brink-of.html?showComment=1690968497085#c4899132355219718157

Aug 02 20:05

-TechBytesBot/#techbytes-ipkitten.blogspot.com | Board of Appeal poised on the brink of a referral on description amendments (T 56/21) - The IPKat

Aug 02 20:05

schestowitz[TR]

"Anon, As they are straightforward and (I believe) quite logical, I would have thought that my arguments are not that hard to follow. They might be some that find those arguments hard to accept for one reason or another, such as preconceptions about the correctness of the EPO's description adaptation practice. However, not accepting an argument is very different to refuting it by use of (more) logical and robust co

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unter-arguments. You (and Hemingway) insist that, because it forms part of the EPC, the EPO must apply both prongs of Art 84, namely clarity and "support". That is a logically defensible position. What does not necessarily follow from that position, however, is the EPO's current, very strict description adaptation practice. That this is a debatable point is beyond doubt, as evidenced by the divergent line

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s of Board of Appeal case law. But what applies to Art 84 surely also applies to Art 69. That is, Art 69 is a provision of the EPC that cannot be ignored and should not be effectively rendered otiose in practice. This is the context in which my arguments should be understood. You argue that national courts are not bound by BA / EBA decisions. Whilst that is true, it is not relevant to the point that I wa

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s making. My point instead related to the practical effects of the EPO's strict description-adaptation practice, namely the practice that requires either deletion of certain embodiments or insertion of effective disclaimers (such as "not the invention according to the claims"). As a result of the EPO's practice, the national courts will, when applying Art 69 EPC, be looking at a patent description whose c

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ontents include pre-grant amendments that reflect the EPO's interpretation of the claims. As we have seen in the Ensygnia v. Shell EWHC decision, pre-grant amendments to the description can have a profound influence upon the interpretation of the claims. You may think that this is all as it should be. That is, you may take the view that the description must be adapted to the claims and so it is inevitable that such

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adaptation will affect the post-grant interpretation of the claims. However, I would merely ask that you pause to consider the following. If the EPO does not apply (all of) Art 69 EPC when interpreting the claims, how can it be certain that its interpretation of the claims is correct? If the EPO's interpretation of the claims is not correct, could a strict adaptation of the description based upon

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that incorrect interpretation lead to problems post-grant? For example, might a court have no option but to take account of (technically incorrect) pre-grant amendments that the proprietor was obliged to make in order to satisfy the EPO's interpretation of Art 84 EPC? If so, does this mean that the EPO's practice effectively hard-bakes their (potentially incorrect) interpretation of the language of the claims

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into the description that the national court will look at when considering Art 69 EPC? If so, is that an acceptable result, bearing in mind that the EPO's interpretation will not have been arrived at by rigorous application of the principles of Art 69 EPC? Hemingway: as will be evident from the above, my main problem is with the EPO's strict description-adaptation practice. I am not aiming to tack

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le the question of whether there should be any requirement to adapt the description. That is a completely different matter. However, I will say that I am in favour interpreting Art 69 EPC such that it is always the description of the application as originally filed that is used to interpret the claims of a patent. I have explained my reasons for this on another post."

http://ipkitten.blogspot.com/2023/07/board-of-appeal-poised-on-brink-of.html?showComment=1690930898210#c3023282830128834450

schestowitz[TR]

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Proof, I am afraid you have mostly lost me. This blogpost is about the EPO's practice to require that the description be adapted to the claims. The basis for this practice is Art. 84 EPC which requires the claims to define the invention and the description to describe the same invention. A conflict between the claims and the description violates Art. 84 (clarity and/or support, pick your favourite). To overcome such a con

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flict, the applicant can either amend the claims or the description, but because of how the examination procedure is conducted this will normally come down to amending the description. Somehow you seem to be unhappy about this. But instead of arguing that the EPO does not understand Art. 84, you keep insisting that the EPO is trying to "tie the hands" of national courts (which presumably is a really bad thing).<

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br /> Amendments made during EPO grant proceedings to bring the application (description, claims, drawings) into compliance with the EPC *obviously* and *necessarily* affect the rights conferred by the granted patent and thus also the determination of those rights by the national courts. "For example, where a disclosure of the original description is labelled as "not the invention according to the claims&qu

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ot;, which national court will feel able to ignore that statement?" For example, when a claim states "a mobile phone", which national court will feel able to ignore that statement? The applicant is resposible for the text of the application (description, claims, drawings). If an applicant believes that the application complies with the EPC and that a proposed amendment is unnecessary and could ne

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gatively affect his rights, then he should probably not agree to it. I agree with you that an example in the description that does not fall under the claims does not have to be labelled as "outside the claims", as long as the description does not state that it is inside the claims when it is not. But is this your only point? Weren't you arguing that the EPO may *never* require amendments to the description?

-TechBytesBot/#techbytes-ipkitten.blogspot.com | Board of Appeal poised on the brink of a referral on description amendments (T 56/21) - The IPKat

schestowitz[TR]

"Dear Max Drei, A nice example of an inescapable trap between Art 123(2) and Art 84. I would like to draw the attention to T 2195/18 published today. It is about turbine blades and the measurement of an angle “along or near the leading edge”. https://new.epo.org/en/boards-of-appeal/decisions/t182195eu1.html The patent had been maintained in amended form according to AR7 and both propri

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etor and opponent appealed. The Board concluded that a blade angle measured “along and near' the leading edge” is the only direct and unambiguous disclosure in the application as filed. Consequently the omission of the wording 'and near' results in the subject-matter of claim 1 as granted extending beyond the content of the application as filed. Claim 1 of AR 7has been amended to define the inducer having

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“positive local blade angles along and near the leading edge”. The objection under Art 123(2) was thus overcome, but the amendment was considered lacking clarity. For the board, it remained ambiguous at what distance to the leading edge the blade angle is to be measured e.g. 0.5mm or perhaps 3mm or more? It was evident that, dependent upon how the expression 'near the leading edge' in claim 1 is interpreted, a turbine

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wheel may, or may not, fall under the scope of the claim. The long and short is that the patent has been revoked. I will not contribute to the discussion on the adaptation of the description as my position is well known. "

schestowitz[TR]

"Yes, there is a difference. The EPO may examine the claims in accordance with the EPC, but it certainly does not examine the interpretation of the claims according to the standard set by the EPC. There are consequences to the fact that the EPO does not conduct a proper assessment of the true meaning of the wording of the claims. If the true meaning of the claims has not been determi

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ned, it becomes impossible for the EPO to accurately determine the disclosures of the description that "conflict" with the claims. It also makes it perfectly possible for the EPO's interpretation of the claims to be "problematic", for example in the sense that it ascribes to the claims a meaning that is not clearly and unambiguously derivable from the disclosures of the application as filed, or

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that provides the patentee with an inadequate reward for their disclosure of the invention. Further, adaptation of the description in accordance with a "problematic" interpretation of the claims can have a binding effect upon the national courts, for example where a disclosure is improperly labelled as "not the invention according to the claims". The potentially binding effect upon national

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courts is perhaps the most worrying consequence. To illustrate, consider a claim that the EPO has determined to meet the requirements of the EPC and a description that has been adapted to the EPO's interpretation of the wording of those claims. With regard to the claims, and despite the fact that the EPO will have examined them to check that they comply with the provisions of the EPC, a national court will remain free to

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disagree with the EPO's assessment on matters such as novelty, inventive step and sufficiency of disclosure. With regard to the interpretation of the claims, however, it is possible that the national court may have no option but to accept the EPO's assessment, no matter how imperfect. For example, where a disclosure of the original description is labelled as "not the invention according to the claims", wh

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ich national court will feel able to ignore that statement? In such a scenario, the national court might effectively be forced to accept the EPO's interpretation of the claims, despite the fact that the EPO will not have arrived at that interpretation in accordance with the provisions of the EPC. With regard to their practical effects upon the national courts, can you now see the distinction between pre-grant a

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mendments to the claims and (certain) pre-grant amendments to the description?"

-TechBytesBot/#techbytes- ( status 404 @ https://new.epo.org/en/boards-of-appeal/decisions/t182195eu1.html<br )