●● IRC: #techbytes @ Techrights IRC Network: Tuesday, August 22, 2023 ●● ● Aug 22 [03:18] *jacobk has quit (Ping timeout: 2m30s) [03:32] *Noisytoot has quit (Ping timeout: 2m30s) [03:34] *Noisytoot (~noisytoot@tkbibjhmbkvb8.irc) has joined #techbytes [03:40] *MinceR gives voice to Noisytoot [03:42] *jacobk (~quassel@32hz32it3ih2k.irc) has joined #techbytes [03:44] *MinceR gives voice to jacobk ● Aug 22 [06:41] *asusbox (~rianne@3stvfjh5iuw88.irc) has joined #techbytes [06:41] *rianne__ (~rianne@3stvfjh5iuw88.irc) has joined #techbytes ● Aug 22 [11:17] *asusbox has quit (Ping timeout: 2m30s) [11:17] *rianne__ has quit (Ping timeout: 2m30s) ● Aug 22 [12:04] schestowitz Ping timeout: 2m30s) ● Aug 22 [14:49] *jacobk has quit (Ping timeout: 2m30s) ● Aug 22 [15:05] *jacobk (~quassel@6wygwq2t5e2hw.irc) has joined #techbytes [15:07] *MinceR gives voice to jacobk [15:13] *asusbox (~rianne@3stvfjh5iuw88.irc) has joined #techbytes [15:13] *rianne__ (~rianne@3stvfjh5iuw88.irc) has joined #techbytes [15:14] *MinceR gives voice to asusbox rianne__ [15:24] *asusbox has quit (Ping timeout: 2m30s) [15:24] *rianne__ has quit (Ping timeout: 2m30s) ● Aug 22 [17:10] *jacobk has quit (Ping timeout: 2m30s) ● Aug 22 [19:24] *jacobk (~quassel@99ed6ukzxymmc.irc) has joined #techbytes [19:25] *MinceR gives voice to jacobk [19:57] schestowitz http://ipkitten.blogspot.com/2023/08/adding-matter-by-amending-description.html?showComment=1692624611666#c6967433248282912849 [19:57] -TechBytesBot/#techbytes-ipkitten.blogspot.com | Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat)) - The IPKat [19:57] schestowitz "@DXT
I have to admit to being more than a little surprised by your allegation that:
"Taking pretext of the Travaux preparatoires for not adapting the description is a cheap argument brought forward a posteriori by those wanting to keep the description as filed unamended."

Reliance upon the TP to interpret a provision of an international convention is expressly permitted by Art 32 VCLT. To quo [19:57] schestowitz te the EBA (in G 2/12):
"Pursuant to Article 31(1) Vienna Convention "a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose."
In summary, this objective method of interpretation is directed to establishing the "authentic" meaning of the relevant provision and its legal ter [19:57] schestowitz ms.
The starting point of interpretation is thus the wording, i.e. the "objective" meaning, regardless of the original "subjective" intention of the contracting parties. To this end, the provisions are to be read in their context so that they comply with the object and purpose of the European Patent Convention.
The preparatory work ("travaux preparatoires") and the circumstances of the conc [19:57] schestowitz lusion of the EPC serve only as supplementary sources of evidence to confirm the result of the interpretation or if no reasonable meaning can be determined by applying the general rule of interpretation (Article 32 Vienna Convention)."

I could agree with you that the TP might not be very relevant for interpreting a provision that unarguably has a clear an unambiguous meaning. However, if that were the case for [19:57] schestowitz Art 84 EPC, then we would not have such a divergence of case law on the alleged legal basis (or lack thereof) for the EPO's current, "strict" practice on adaptation of the description. Indeed, even the case law supporting the EPO's practice divides into two camps, namely those citing "clarity" and those citing "support".

I know that you have strong views on which line of case law you believe is [19:57] schestowitz correct. That is your prerogative. However, if there is to be any advance in this debate, you will at some point need to concede that:
- the correct interpretation of Art 84 EPC (as regards its relevance, or otherwise, to adaptation of the description) has not yet been definitively established; and
- the divergent lines of case law make it clear that there is still room for reasonable minds to differ ... for example with respe [19:57] schestowitz ct to the relevance of the TP to the interpretation of Art 84 EPC.

For good measure, you could also consider providing your detailed, legal analysis of the significance of the TP (and, in particular, the change from "fully supported" to "supported"). This would be purely for the sake of (hypothetical) argument, ie in case, contrary to your assertion, it transpires that the TP are relevant to the int [19:57] schestowitz erpretation of Art 84 EPC." [19:58] schestowitz "Dear Max Drei,
Comment part 1

Whilst I can agree with you that Ensygnia is of little help, this cannot at all be said about the pemetrexed case (EP 1 313 508 B1). The patent has been limited during prosecution at the EPO to the disodium salt of pemetrexed because i) that was the only worked out example, and ii) in the application as filed there was no claim at the "pemetrexed" level of generalisation.

You consider that, had the drafter of the patent included a claim at the "pemetrexed salt" intermediate level of generalisation there would likely have been no litigation and no controversy. I beg to disagree, as the application as filed was silent of any other possibility than pemetrexed disodium.

Indeed, the drafter only presented one example: the disodium salt. During prosecution, the applicant tried to claim [19:58] schestowitz pemetrexed in general, but the examiner has rightly said that claiming pemetrexed in general is not directly and unambiguously disclosed and raised an objection under Art 123(2). The corresponding comment of Lord Neuberger and of Sir Robin Jacob that the examiner was manifestly wrong is anything but acceptable in view of the case law of the boards about added matter.

Had the applicant originally filed a claim for a &q [19:58] schestowitz uot;pemetrexed salt" as intermediate level of generalisation, the information contained in the application as filed was insufficient to allow proper support of such a generalised claim and an objection under Art 83 would most probably have been raised. .

It is to be noted that the applicant has never tried to file supplementary data showing that the teaching was more generally applicable, for example with other pemetrex [19:58] schestowitz ed salts. He could also have tried to file a broader divisional defending pemetrexed as such. I would therefore claim that during prosecution before the EPO, the applicant was not in possession of any data supporting the general teaching he was trying to claim. During examination the applicant was more concerned by the definition of the equivalents/derivatives of Vitamin B12 than by a different pemetrexed salt.

It is also wo [19:58] schestowitz rth remembering that in The Netherlands, the Court of first instance did reject the proprietors plea of general applicability in view of its behaviour during prosecution. This decision was later set aside, but nevertheless existed.

When amending the description, the applicant was adamant to distinguish between the subject-matter which is relevant to the invention which is indicated as being that to which the present in [19:58] schestowitz vention generally relates and the subject matter provided by the invention which is the subject matter claimed.

An example of the first statement is as follows:
[0005] .. The present invention thus generally relates to a use in the manufacture of a medicament for improving the therapeutic utility of antifolate drugs by administering to the host undergoing treatment with a methylmalonic acid lowering agent as [19:58] schestowitz vitamin B12..

An example of the second statement is as follows:
[0010] The invention specifically provides the use of the antifolate pemetrexed disodium 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 a methylmalonic acid lowering agent selected from vitamin B12 and pharmaceutical derivatives the [19:58] schestowitz reof.

The subject-matter claimed was thus limited to the use of pemetrexed disodium as the applicant had not shown that any other salt had been envisaged. The description has thus been amended and the invention limited to what was actually disclosed.

I would infer from the decision of the UKSC that Lord Neuberger wanted to get over the famous Improver case law, but offered to the proprietorthe protection for [19:58] schestowitz an invention he had not made at the date of filing as the whole filing was exclusively about pemetrexed disodium. " [19:58] schestowitz "@Proof of the pudding

I have actually never disputed that the only clause by which claims can be interpreted under the EPC is Art 69.

The only question which has arisen in view of the diverging case law of the boards in matters of application of Art 69, is whether it should be applied systematically during prosecution before the EPO or only in limited number of situations, like a claim lacking clarity as such or [19:58] schestowitz in opposition.

I have never disguised that my preference goes to the second alternative. If each and every claim has to be weighted by a department of the EPO, be it first or second instance outside the exceptional situations I have mentioned, the examination would be much longer and protracted. I doubt that the patent coming out of it would be at all better as what comes out presently.

If we adopt the first poss [19:58] schestowitz ibility, i.e. systematic application of Art 69 at the EPO, a lot of case law can be binned: all case law relating to the notion of directly and unambiguously disclosed, i.e. relating to novelty, added matter and identity of invention when a priority.is claimed.

Your desire of a perfect evaluation of all possible meanings of a feature in a claim is thus neither realistic nor feasible. Each independent claim contains a certain [19:58] schestowitz degree of generalisation. If this generalisation is supported by the disclosure as filed, I do not see any problem. In the absence of support, there are problems, not only under Art 84 but also under Art 123(2).

When interpretations become speculative, this is a sign that there is a problem, in general of Art 123(2).

I would like to refer here to my comments to Max Drei about the pemetrexed case. I refer here to [19:58] schestowitz the level of generalisation in [0005] and [0016] of the patent as granted which was not supported by the single example given. Those two were not correctly adapted as they went far over what had been the actual contribution to the art at the date of filing and clearly and unambiguously disclosed. During the whole prosecution the applicant never tried to show that the teaching could be generalised.

Considerations appli [19:58] schestowitz ed by a national court are out of the reach of the EPO which has to insure that the whole of the EPC is taken care off and not just Art 69. I am thinking here of Art 54, 84, 87 and Art 123(2). I understand the desire of an applicant to push the boundaries of its contribution to the art as far as possible, but there are limits which should not be trespassed. .

If for you any feature in a claim can only have a roughly appro [19:58] schestowitz ximate meaning you simply want to push the boundaries further than the actual contribution to the art.

In the pemetrexed case the contribution to the art at the date of filing was clearly limited to pemetrexed disodium and the presence of a methylmalonic acid lowering agent. It did not apply to antifolates as a class.

It not clear to me how a possible limitation to what has actually been disclosed can imply ad [19:58] schestowitz ded matter in post grant proceedings before a national court. I am still waiting for the first example of this kind. " [19:58] schestowitz "Dear Daniel, thank you for taking the time to set out your assessment of the pemetrexed case. Bearing in mind that I don't do chemical cases and that my education in chemistry ceased at university first year level, I should probably say no more, lest my remarks reveal greater depths of my ignorance. Nevertheless, I can't resist a short comment in reply.

I had in mind that i) sodium and potassium are so closely adjacent in [19:58] schestowitz the Periodic Table that it would be more than plausible that if the disodium salt works, so will the di-potassium salt too, and ii) a patent application containing (in the application as filed) a claim at the level of generality just wide enought to include di-poassium and other equally plausible alternatives to sodium, but not much more together with iii) a description that rendered it plausible that the disodium salt would not be exc [19:58] schestowitz lusively the only salt with a therapeutic effect. I like to think that with such drafting, the litigation would not have occurred.

I don't know why there was no claim at this intermediate level of generality. I guess because in the drafting jurisdiction, it didn't matter. But I like to assume that the EPO does not refuse all claims except those that are limited to the exact molecule of a worked Example in the description as [19:58] schestowitz filed. Is there not a realtionship between Art 83 EPC and what is plausible?

I like to think that I know why Applicant refrained from advancing belatedly a claim at the required intermediate level of generality in prosecution or in a divisional. Better never to try, than to try and be brought down by, respectively, Art 123(2) or 76 EPC. As we have seen, in that assessment, Applicant was 100% correct." [19:58] schestowitz "Santa, thanks for that. I am at this stage out of my depth. I don't have any sense of the point at which the act of "deriving an algorithm" is technical as is the same as "conceiving a patentable invention".

As to recognising faces in a football crowd, there are human "super-identifiers" and there soon will be, if not already, AI super-identifiers. Whether any of them have invented anything, I [19:58] schestowitz don't know. Your last sentence starts with the word "surely". That is often something of a give-away. It is surprising how often that word is selected when the person who utters it is not actually "sure" at all" ● Aug 22 [20:02] *jacobk has quit (Ping timeout: 2m30s) [20:46] *asusbox (~rianne@3stvfjh5iuw88.irc) has joined #techbytes [20:46] *rianne__ (~rianne@3stvfjh5iuw88.irc) has joined #techbytes [20:46] *MinceR gives voice to asusbox rianne__ ● Aug 22 [21:39] *jacobk (~quassel@99ed6ukzxymmc.irc) has joined #techbytes [21:43] *MinceR gives voice to jacobk [21:58] *jacobk has quit (Ping timeout: 2m30s) ● Aug 22 [23:12] *DaemonFC has quit (Ping timeout: 2m30s) [23:13] *DaemonFC (~DaemonFC@tyh9uypqaqvwk.irc) has joined #techbytes [23:13] *MinceR gives voice to DaemonFC