IRC: #techbytes @ Techrights IRC Network: Tuesday, August 15, 2023

schestowitz

When stating that we are turning in circles, Mr Thomas seems to take the role of a self-appointed moderator. I am quite pleased that many interesting comments have followed. If Mr Thomas does not want to contribute other comments, this is of course his personal choice and I respect it. As to his position that he has « only been confronted with possible “practical effects” or hypothetical possibilities, but not with hard

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facts », I have to point out that this exactly matches the EPO’s justification for its practice. The EPO has explained in its press release of July 7, 2022 that its concern was to improve legal certainty in national court proceedings. In addition to the fact that this is beyond its remit, as clear from the case law of the BOAs, this only refers to hypothetical scenarios. A tiny fraction of granted patents are asserted befo

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re national courts. On the other hand, when the description has been substantially amended, the fact is that the defendant always argues that there is new matter and the court has to perform a thorough review of the amendments to assess whether they may alter the interpretation of the claims and constitute new matter. This entails great uncertainty, contrary to the EPO’s stated objective, legal expenses and the risk of revocation of t

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he patent. In addition, the EPO Guidelines assert that any inconsistency between the claims and the description must be removed as this might cause doubt as to the meaning of the words of the claims. Again, this is only a hypothetical. The PCT ISPE Guidelines section 5.29 take the sensible position that inconsistencies need only be removed if they cause doubt (in the present tense) as to the meaning of the words of the claim.

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In this case, the burden of proof is clearly on the examiner or ED. @Hemingway Thank you for your answer. But I disagree with your statement that the notional "skilled person at the filing/priority date" can perfectly well read the claims and description as granted. Of course the claims are the claims as granted. But if we rely on the skilled person at the filing date, the skilled person’s reading of the de

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scription must also rely on the description as filed for consistency. Otherwise, the skilled person’s reading may take into account substantial amendments which may alter the interpretation of the claims by the court.

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Good comment. I agree that the case in England is useful to those defending the EPO's current ultra-strict lines on Art 84 and Art 123(2) EPC. And yes, we can see from the contributions here from DX Thomas that the strict line is just as much about policing the patent owner as it is about teaching the courts how to do patent law properly. In theory, the EBA, with its learned external members making a full contribution, ought

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to be able to create a body of case law in Europe that is the envy of the rest of the world, because it is crafted by top class patent law experts steeped for decades in all the issues, in all their complexity. I think that is what used to happen. But these days, I am sceptical that anybody on the EBA any longer gives much weight to what the external members have to say (perhaps because the EPO-internal members are ever- increasingly co

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ncerned to stay under the radar so that they can then quietly retire with a full pension).

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I struggle to see how this case can be used to show the EPO the alleged danger of its ways. The case at best shows the risk of adding matter by both claim and description amendments. It should be noted that the proprietor made both willingly in 2019 (before the first hardline iteration of the GLs in 2020?) The proprietor shifted the scope of protection to catch an infringement. In general claim 1 as granted requi

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red an electronic sign. The infringement required a static sign. The description is changed to say an electronic sign is outside scope of claims. Considering a hypothetical EPO grant, I sincerely doubt the EPO would have either requested or allowed such a description amendment especially given claim 1 as granted requires an electronic device. We can only speculate what would have happened had these changes been requested via

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central limitation but my gut feeling is it would not have been seen as a limitation and rejected. Were the patent opposed, 123(3) would have put a stop to this amendment. So I am afraid to conclude that this case might actually help the EPO’s approach by showing why a proprietor should tell us that contradictions to claim wording are not within the scope of the claim, or not later assert claimed features as optional. <br

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/> To avoid dismissal of being on a side, I should state I don’t like the EPO’s approach either and doubt its legal basis. However, to have a constructive debate, we need to acknowledge that a Proprietor attempting to contort a claim as granted on the basis of the description serves no one well. In summary, we can’t point to bad EPO for what seems like a well meaning attempt to give the public some certainty and

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turn a blind eye to how this case was conducted. It’s not an exaggeration to say the proprietor attempted to remove a granted feature from the scope of the claims using the description. That cannot be right. When we complain about the EPO binding the courts, do we really mean they are binding the proprietor?

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Well, I think that last comment from DX Thomas is useful, in its statement that: "it has to be made clear what belongs to the claimed invention and what does not belong to it." Is M. Thomas here referring to the claim or to the description? I think he has in mind the description as the location where "it has to be made clear". That is more than Art 84, EPC requires though, isn't it? <br /

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>A question of interest to me is whether, in a case where the language of a claim amended in prosecution is clear, the text of the originally-filed description, still present in the granted patent, can render that claim so unclear that it fails to comply with Art 84, EPC. Another question is whether insisting on strict "compliance" of the description with the claim as amended during prosecution is, in fact, going to

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simplify a full-blown, post-grant, inter Partes dispute over both infringement and validity of the duly issued and, in itself, satisfactorily clear claim. I have my doubts and can well imagine that in many cases it will increase rather than thin out the number of contentious issues between the parties. And what about writing a Freedom to Operate opinion? Will an elaborate program of prosecution amendment of the description

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to conform it to the claims do anything to enable the opinion-writer to achieve a higher level of confidence in the accuracy of their opinion? I am still not convinced by M.Thomas' conviction that the description "has to be" strictly conformed in the interests of legal certainty and the orderly and fair administration of justice in a dispute over infringement and validity. Inside the EPO this much, it seems, is self-evident. N

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ot to me though.

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@Francis Hagel Not sure what you disagree with, but my point is that the existence of Art. 64 ("rights conferred by the patent") and Art. 67 ("rights conferred by the patent application") explains why Art. 69 mentions both "European patent" and "European patent application". There are situations in which you need to determine the extent of the protection conferred by the application (se

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e Art. 67) and there are situations in which you need to determine the extent of the protection conferred by the patent (see Art. 64). This then decides whether you interpret the claims as granted with the help of the description as granted (Art. 67) or whether you interpret the claims as filed with the help of the description as filed (Art. 64). In all cases the claims should be interpreted with the help of the description and claims t

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hat correspond to it. Patent application as filed = description+claims+drawings as filed, patent as granted = description+claims+drawings as granted. Anyway, if I understand correctly, then we agree that the claims as granted have to be interpreted with the help of the description and drawings as granted. Your statement about equivalents is not inconsistent with this at all. The notional "skilled person at the

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filing/priority date" can perfectly well read the claims and description as granted (I don't think you seriously meant to suggest that assessment of equivalents should involve the claims as filed?). The "at the filing/priority date" part simply refers to the notional state of knowledge and abilities of the notional skilled person. And yes, added subject-matter can lead to revocation. There is no dispute on thi

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s. See what I wrote above.

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Mr Thomas, I can fully agree that you are in disagreement with many of the other commenters here. With the utmost of respect, though, the fact that this conversation is "turning in circles" is one that I lay squarely at your door. This is a curious type of debate, in which one side repeatedly and indignantly insists that it is right, but when asked to explain why, can only point to the second sentence of Article 84

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and argue - by way of bare assertion - that this requires amendment of the description. The reason that so many of us continue to argue this point is in the hope of getting beyond this initial stage. The Board responsible for T 1989/18, and for the potential new EBA case, has looked at the functioning of Article 84 EPC in detail and has come to the conclusion that it does not clearly have the sole interp

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retation and sole consequence that you assert. They - and other Boards - have explained in detail why they disagree with the current practice of the EPO. From this it should be clear that reasonable minds can differ on this point. There is clearly therefore room for reasonable minds to differ on the interpretation of Article 84 EPC. Despite that, the dialogue continues to go one way - we have heard the Boards' argument

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s why Article 84 does not justify amendment, and we are genuinely curious to know what the arguments are in the other direction. And yet, answer comes there none. You simply insist on putting the cart before the horse, asserting the conclusion and declaring the debate closed, as though that is all there is to it, without explaining how you arrive at that conclusion. The shifting of goal posts is also hard to ignore. Up

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until now you have always argued that nobody has been able to point to a case where the amendment of the description had any effect. Now such a case has come to light and you are instead arguing that, well, maybe you might change your mind, but not as a result of this case. It is the "no true Scotsman" fallacy in action. You are arguing over irrelevant facts such as the fact that this was a GB patent and not an EP(GB),

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or that the amendment was made under GB law and not at the EPO, or that the amendment was made for reasons with which you disagree. You are doing this while conveniently ignoring the fact that this case very clearly demonstrates, on the basis of the same legal principles, the key point which those of us on the other side have been arguing all along: it is now beyond a reasonable doubt that amendment of the description can affect

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the interpretation of the claims after grant. With that very serious consequence in mind, we therefore want to know what the legal basis is for the EPO to require Applicants to take a step that is so risky. It is truly, truly odd that you are so unwilling to enter into discussion on this topic in good faith. On your blog you post interesting and thoughtful comments on many different aspects of the EPC, and you are not shy of

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pointing out when you disagree with the EPO's practice or the opinions of the Boards. And yet on this topic your mind is completely closed, and has been since the outset. Why? I do not expect to get any sense out of you any more, but let me ask a general question to the readership of this blog. Is there anyone, anyone at all, out there who is willing to put the EPO's current practice on a solid legal footing, and to e

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xplain the legal arguments which Mr Thomas, Hemingway, and others seem to be so reluctant to bring forward, despite their certainty in their position?

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-TechBytesBot/#techbytes-ipkitten.blogspot.com | Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat)) - The IPKat

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http://ipkitten.blogspot.com/2023/08/bad-cases-make-bad-law-has-dabus-ai.html?showComment=1692002543728#c3261099920080168936

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-TechBytesBot/#techbytes-ipkitten.blogspot.com | Bad cases make bad law: Has DABUS "the AI inventor" actually invented anything? - The IPKat

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"The DABUS flashing light application EP3563896 (“Devices and methods for attracting attention”) is worth reading. It contains self-celebrating statements , including references to “spiritual significance”, “cosmic consciousness”, “deity”, “religion”, which speak volumes about the credibility of Mr Thaler’s claim that DABUS is the inventor of his application. See paragraphs [0019], [0020], [0021] and [00

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58] [0019] Embodiments of the present invention further provide a symbol celebrating the unique tempo by which creative cognition occurs. The algorithmically-driven neural flame may be incorporated within one or more structures that resemble candles or altar fixtures, for instance, to accentuate the light’s spiritual significance. It is noted that that the light source or beacon can incorporate any type of light-emitting de

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vice. [0020] Such embodiments stem from the notion of one perceiving neural net monitoring another imagining net, the so-called “Creativity Machine Paradigm” (Thaler 2013), which has been proposed as the basis of an “adjunct” religion wherein cosmic consciousness, tantamount to a deity, spontaneously forms as regions of space topologically pinch off from one another to form similar ideating and perceiving pairs, each

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consisting of mere inorganic matter and energy. Ironically, this very neural paradigm has itself proposed an alternative use for such a flicker rate, namely a religious object that integrates features of more traditional spiritual symbols such as candles and torches. [0021] Moreover, in a theory of how cosmic consciousness may form from inorganic matter and energy (Thaler, 19978 , 2010, 2017), the same attentional beacons may

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be at work between different regions of spacetime. Thus, neuron-like, flashing elements may be used as philosophical, spiritual, or religious symbols, especially when mounted atop candle- or torch-like fixtures, celebrating what may be considered deified cosmic consciousness. Such a light source may also serve as a beacon to that very cosmic consciousness most likely operating via the same neuronal signaling mechanism. [0058

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] Furthermore, aspects of the present invention provide an object of contemplative focus embodying symbolic meaning of varying significance (e.g., philosophical/religious) due to the fact that the unique fractal rhythms used are those thought to: (1) be exploited by the brain to detect idea formation, and (2) have grandiose meaning as the temporal signature of creative cognition, whether in extraterrestrial intelligence or cosmic consci

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ousness. "