IRC: #techbytes @ Techrights IRC Network: Friday, August 25, 2023

schestowitz

Full disclosure: I strongly dislike the UKSC's decision in the pemetrexed case. The main reason for my dislike is UKSC's decision that equivalency can be decided based upon a knowledge base that includes post-filing information. With regard to sufficiency and inventive step (ie matters for which "plausibility" might come into play), this appears to set a lower patentability standard for equivalents vs. subject matter fa

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lling inside of the "ordinary" scope of the claims. The lower patentability standard for equivalents can produce some odd results. The pemetrexed potassium salt is a good example. Scenario A: the potassium salt is disclosed and claimed in the application as filed. Based upon the facts determined during litigation (re: lack of plausibility for efficacy of the potassium salt), the EPC2000 claim

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to the potassium salt would have been invalid due to insufficiency and/or lack of inventive step. Scenario B: what happened in real life, ie no mention of the potassium salt in the application as filed; claim at "pemetrexed" level of generality deleted in response to objections (both inventive step and added matter). Outcome: the potassium salt infringes by equivalence. This raises the questio

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n: in Scenario A, could the potassium also salt be deemed to infringe the patent by equivalency? I would have though not, given that the claim specifically directed to that salt would have been determined to be invalid (either during examination or post-grant litigation). Conclusion: when it comes to equivalents in the UK, the fewer ("speculative") embodiments that you mention in your application as filed, the broad

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er protection you are likely to receive. An odd result indeed.

http://ipkitten.blogspot.com/2023/08/adding-matter-by-amending-description.html?showComment=1692780789399#c3057887723965706280

schestowitz

schestowitz

Max, I can agree with your comment there. My point - which was not aimed at you specifically, and I am sorry if you perceived it that way - is that it does not advance the debate one jot for us to speculate on why the application was drafted as it was, or to go on lengthy digressions about the policy rationale underlying Article 69, or to debate added matter, and so on. These do not focus on the central points which you identify above,

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and simply provide DXT with further opportunity to steer the conversation in circles on side issues again rather than addressing the core of the debate. I can fully agree with you that we want to know whether "strict conformity" would have changed the outcome of the decision. My point is that we can address this thought experiment without all the tangents above. We know what the granted specification said, and what

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influence that had (or did not have!) on the judge's approach to the question of equivalents. The starting point for the counterfactual scenario is therefore relatively straightforward to establish: all we need to do is imagine that the specification was amended to either remove all references to anything other than the salt named in the claims; or to mark such references as being "not the invention" - whether or not we agr

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ee that such an approach is, in actual fact, correct. With that starting point in mind we can then try to establish why, in DXT's view, this would both have changed the outcome while at the same time, in no way "tying the hands of the court" in its conclusions. What I was trying to convey is that it is perfectly possible to imagine this counterfactual without needing to speculate on why the application was draft

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ed as it was, or getting into quasi-theological discussions on topics such as what the "invention" was, whether the EPO was justified in its objections during examination, or how plausibility might or might not come into any of the above. I fear that whenever pemetrexed comes up, too many commenters are getting bogged down in these points and ending up talking past one another without shedding any further light on t

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he issue. I am trying, desperately, to issue a plea for all parties to keep the pemetrexed discussion focused on the central issue of the relationship between the description and the claims of the patent as granted in that specific case, and the question of whether a different description - which we can readily imagine, whether we agree with it or not - would have led to a different outcome. This is in the hope that this exercise

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might then illustrate a principle of wider applicability, and help to further refine the points of real legal disagreement between the sides of the debate. Everything else, I submit, is an unhelpful distraction which simply provides more opportunities for bad-faith whataboutery.

http://ipkitten.blogspot.com/2023/08/adding-matter-by-amending-description.html?showComment=1692727161053#c9072825380317379515

schestowitz

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Mouse, I agree with you, to the extent that what is relevant is what influence the description in the B publication has on the interpretation of the claims under Art 69, EPC. And what we are arguing about is whether strict conformity under The Guidelines might have the consequence that a claim of the granted patent which, absent strict confomity, would have been held infringed under the DoE, is held not to infringe as a consequence of t

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he imposition of strict conformity. DXT has indicated that the pemetrexed case might be what stimulated the Guidelines authors inside the EPO to toughen up on the conformity issue. My point is that the courts in the pemetrexed case decided in favour of the patent owner. What if strict conformity ("not the invention") would have obliged the courts to come to the opposite conclusion, in accordance with the wishes of

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the authors of the most recent edition of the Guidelines. Can that be right? I think not, but DXT disagrees with me. This is why I think that the pemetrexed fact matrix is useful for exploring the "strict conformity" issue. If that is still not focussing on "the actual problem" and "the issue of concern", readers, I apologise.

-TechBytesBot/#techbytes- ( status 404 @ https://www.imdb.com/title/tt0042200/http://ipkitten.blogspot.com/2023/08/adding-matter-by-amending-description.html?showComment=1692802841539#c7426395420736506212 )

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

-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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schestowitz

<li>

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<h5><a href="https://linuxjedi.co.uk/2023/08/24/making-amiga-iff-thumbnails-work-in-linux/">Making Amiga IFF Thumbnails Work in Linux</a></h5>

schestowitz

schestowitz

I was having an email conversation with Stoo Cambridge, and he mentioned that he was having trouble making his Linux machine display thumbnails of Amiga IFF/ILBM files. It turns out I have a solution for him, so I am sharing it here to help anyone else.

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</blockquote>

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</li>

-TechBytesBot/#techbytes-linuxjedi.co.uk | Making Amiga IFF Thumbnails Work in Linux – LinuxJedi's /dev/null

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Aug 25 10:14

schestowitz

<li>

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<h5><a href="https://www.databreaches.net/ransomware-attack-on-cloudnordic-paralyzes-company-and-customers/">Ransomware Attack on CloudNordic paralyzes company and customers</a></h5>

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The attack was discovered at 04:00, and since then CloudNordic’s IT experts have been working intensively to regain control. Unfortunately, it has proven impossible to recover the lost data, which means that the majority of their customers have lost all data that was stored with CloudNordic. The incident has been reported to the police.

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</blockquote>

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</li>

-TechBytesBot/#techbytes-www.databreaches.net | Ransomware Attack on CloudNordic paralyzes company and customers

..." http://ipkitten.blogspot.com/2023/08/adding-matter-by-amending-description.html?showComment=1692904814146#c7087999196604236168

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schestowitz

schestowitz

Dear Max Drei, I am not a chemist either, and my considerations on the pemetrexed case were triggered by your comment. I maintain that the attitude of the applicant during the whole prosecution was let’s put it like this, rather strange. It is only possible to conclude that the applicant did not have the data at hand allowing to make a generalisation plausible. I also maintain that the pemetrexed ca

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se is exemplary of an incomplete adaptation of the description. You might feel vindicated of invoking, yet again, the pemetrexed litigation. I am not convinced of this. As far as I am concerned, the chapter adaptation of the description is closed and I can leave with the fact that we disagree. This is part of life’s rich tapestry. I might just add that when looking at the rate at which patents are m

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aimed during opposition, the discussion on the adaptation of the description, as important as it might appear to some, will most probably become of secondary importance. Barely 15% of the oppositions are rejected after appeal and more than 50% of the decisions of ODs are set aside by the boards after appeal. Basis: published decisions of the BA after appeal in opposition. My guess is that number of cases in which the decisio

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n of the OD are not appealed is relatively small, so that the trend is nevertheless clear. Some will say that I am trying to switch the subject, but this is to me a much bigger bother than adapting the description. What is it god to have or not an adapted description when a patent is revoked or maintained in limited form, to a large extent on the basis of prior art which was manifestly not found during the initial search. <

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br /> You certainly have heard about the IP Charter. Its conclusions are disputed by the EPO, but in my humble opinion, they appear to have a point.

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