IRC: #techbytes @ Techrights IRC Network: Sunday, May 29, 2022

schestowitz

-TechBytesBot/#techbytes-rakudoweekly.blog | 2022.21 Math Like – Rakudo Weekly News

schestowitz

schestowitz

<p>The minutes of the first online meeting of people working on the Raku Documentation have been published. Wanna get involved? Check out the rest of the documentation wiki or show yourself on the #raku-doc IRC channel!</p>

schestowitz

</blockquote>

schestowitz

</li>

schestowitz

<li>

May 29 06:15

schestowitz

<h5><a href="https://linuxgizmos.com/coffee-lake-based-rugged-pc-offers-flexible-display-support-and-extensive-storage-capacity/">Coffee Lake based rugged PC offers flexible display support and extensive storage capacity</a></h5>

-TechBytesBot/#techbytes- ( status 520 @ https://linuxgizmos.com/coffee-lake-based-rugged-pc-offers-flexible-display-support-and-extensive-storage-capacity/ )

schestowitz

schestowitz

<p>Taiwan based Cincoze, released a compact and robust PC that is powered by 9/8th Gen Intel Core CPUs (i7, i5, i3) and up to 128GB of DDR4 memory. The company claims the DV-1000 PC has a footprint of half a sheet of an A4 paper but it packs several interfaces to meet demands in industrial, robotics, in-vehicle computing and many other applications.</p>

schestowitz

<p>For storage options, the DV-1000 includes one SATA tray, two mSATA slots, one M.2 Key M 2280 slot for NVMe SSD. In addition to supporting legacy displays such as two VGA ports, the rugged PC provides one DisplayPort and one HDMI port. </p>

schestowitz

</blockquote>

schestowitz

</li>

x https://www.cnet.com/tech/computing/windows-11-vs-windows-10/#ftag=CADf328eec

*psydruid (~psydruid@jevhxkzmtrbww.irc) has joined #techbytes

May 29 06:24

schestowitz

May 29 06:39

-TechBytesBot/#techbytes-Windows 11 vs. Windows 10: What Are the Real Differences? - CNET

May 29 06:39

schestowitz

<li>

schestowitz

<h5><a href="https://blog.arduino.cc/2022/05/24/this-sun-tracker-uses-an-arduino-to-increase-solar-panel-efficiency/">This sun tracker uses an Arduino to increase solar panel efficiency</a></h5>

-TechBytesBot/#techbytes-blog.arduino.cc | This sun tracker uses an Arduino to increase solar panel efficiency | Arduino Blog

schestowitz

schestowitz

<p>Ruediger Loechenhoff has been able to create a far cheaper solar tracker controller, which relies on an Arduino Uno to drive a set of two motors that position the panel. To achieve this, the Uno was connected to a 9-axis MPU-9250 compass module for internal positioning, a DS3231 real-time clock for accurate timing, and a DIY shading beam sunlight sensor to detect optimal angles. Operating the

schestowitz

tracker is also quite simple since the firmware only requires an occasional calibration step after a set number of days.</p>

schestowitz

</blockquote>

schestowitz

</li>

schestowitz

[02:42] <Source> How many people reach her site anyways[02:42] <schestowitz> whose?

schestowitz

[02:42] <schestowitz> Taylor?

schestowitz

[02:43] <Source> Your side

schestowitz

[02:43] <Source> Site[02:44] <schestowitz> ah, *your*

schestowitz

[02:44] <schestowitz> it is hard to measure because we do a lot more than https

schestowitz

[02:44] <schestowitz> we're actually against the Web to some extent

schestowitz

[02:44] <Source> Sorry I'm driving[02:45] <schestowitz> and it's more a question of who, not how many

schestowitz

[02:45] <Source> OK anybody that matters?[02:46] <schestowitz> quantity over quality, like EPO examiners as audience, not random people

schestowitz

[02:46] <schestowitz> yes, many Free software people respect TR

schestowitz

[02:46] <schestowitz> your patents and mine would not matter if they read it

schestowitz

[02:46] <schestowitz> they're not coders

schestowitz

[02:46] <Source> well I suppose that's how he heard about it[02:46] <Source> I don't have any patent[02:47] <schestowitz> oops

schestowitz

[02:47] <schestowitz> I means parents xxxxxxxxxxxxxx

schestowitz

[02:47] <schestowitz> I typs "patents" too easily

schestowitz

[02:47] <schestowitz> *type

schestowitz

[02:47] <schestowitz> *meant

schestowitz

[02:48] <Source> Well my xxxxxxxxxxxxxxxxxxxx dad's dead so whomp whomp

schestowitz

[02:48] <schestowitz> we do about 200gb in http traffic a month

schestowitz

[02:48] <schestowitz> gemini, ipfs, text aside

schestowitz

[02:48] <schestowitz> sorry to hear that

schestowitz

[02:48] <schestowitz> he was an ethical dentist

schestowitz

[02:48] <schestowitz> which is rare

schestowitz

[02:48] <schestowitz> they love overcharging

schestowitz

[02:49] <Source> Self effacing ethical

schestowitz

[02:49] <Source> It's complicated

schestowitz

[02:50] <schestowitz> people are complicated

schestowitz

[02:50] <schestowitz> daemonfc is super-complicated

schestowitz

[02:50] <schestowitz> bipolt

schestowitz

[02:50] <schestowitz> asperger

schestowitz

[02:50] <schestowitz> gay

schestowitz

[02:50] <schestowitz> and saying offensive things to people

schestowitz

[02:50] <schestowitz> if we're inclusive we need to at least be a little understanding

schestowitz

[02:50] <schestowitz> which is what I get flak for

schestowitz

[02:51] <schestowitz> today I got a legal threat by post

schestowitz

[02:53] <Source> Hmmm xxxxxxxx

schestowitz

[02:54] <Source> About github?

schestowitz

[02:55] <Source> I don't support non inclusion [02:55] <Source> But allowing somebody to be racist also makes a space not inclusive

schestowitz

[02:56] <schestowitz> I know

schestowitz

[02:56] <Source> Just like having a misogynist that thinks he's the top 1% and deserve special privilege makes a place not inclusive

schestowitz

[02:56] <Source> In fact that's what many people have said about xxxxxxxxxxxx that he's just mentally ill[02:58] <schestowitz> I'll give you a scenario

schestowitz

[02:58] <schestowitz> both hypothetical and real

schestowitz

[02:58] <schestowitz> you have a person who has insensitive tendencies connected to something like asperger

schestowitz

[02:59] <schestowitz> but you want to also welcome those with social tact isuse

schestowitz

[02:59] <schestowitz> RMS is one example

schestowitz

[02:59] <schestowitz> so by banning them you basically so we cannot be understanding of those who are poor at cues

schestowitz

[03:00] <schestowitz> so it becomes a double-edged sword

schestowitz

[03:01] <schestowitz> btw

schestowitz

[03:01] <schestowitz> the legal threats I got today

schestowitz

[03:01] <schestowitz> it's about something daemonFC wrote

schestowitz

[03:01] <schestowitz> and of course it's wrong to try to hold me accountable for it

schestowitz

[03:01] <schestowitz> it's legally invalid

schestowitz

[03:02] <Source> You're in the UK right

schestowitz

[03:02] <Source> No guaranteed free speech?[03:02] <schestowitz> yes

schestowitz

[03:02] <schestowitz> notorious risky here wrt free speech

schestowitz

[03:03] <schestowitz> but anyway, a us person should take on the other us person

schestowitz

[03:03] <schestowitz> not a site in the uk

schestowitz

[03:03] <Source> I heard some people started a war over that

schestowitz

[03:03] <Source> Or taxes[03:03] <schestowitz> you got upset at me after writing a false tweet

schestowitz

[03:03] <schestowitz> from the same person who stalks me and tried to shut me down

schestowitz

[03:03] <schestowitz> with that legal letter

schestowitz

[03:04] <schestowitz> he has done this for ages

schestowitz

[03:04] <Source> me?

schestowitz

[03:04] <schestowitz> no

schestowitz

[03:04] <Source> I have not tweeted anything about you[03:04] <schestowitz> sorry, I meant

schestowitz

[03:04] <schestowitz> you saw some tweet

schestowitz

[03:04] <schestowitz> linking to something daemonfc said with some random person who popped up online,a janitor somewhere

schestowitz

[03:05] <Source> Oh that's no good

schestowitz

[03:05] <schestowitz> yeah

schestowitz

[03:05] <schestowitz> terrible

schestowitz

[03:05] <schestowitz> but they sit there 24/7 in irc waiting for such things

schestowitz

[03:06] <Source> Well words or one thing[03:06] <Source> Are one thing[03:07] <Source> I was actually talking to some guy I used to date recently[03:07] <Source> He honestly said some pretty terribly stuff to me about why he didn't want to date me

schestowitz

[03:08] <Source> That I "wasn't interesting" but he still wanted to sleep with me

schestowitz

[03:08] <Source> I thought he liked me a lot but he didn't[03:08] <Source> He said it's because he's autistic[03:08] <Source> Asperger's is out of date by the way

schestowitz

[03:08] <Source> It's linked to Nazis so you shouldn't use it

schestowitz

[03:08] <Source> It's considered offensive now[03:09] <schestowitz> I wrote about it

schestowitz

[03:09] <schestowitz> hang on..

schestowitz

[03:10] <schestowitz> I did a few articles about this

schestowitz

[03:10] <schestowitz> that was years ago

schestowitz

[03:10] <schestowitz> it was how calling people "autistic" was used as a political weapon

schestowitz

[03:11] <Source> Oh yeah it's definitely a thing nowadays

schestowitz

[03:11] <Source> People online saying that they're autistic so they can get away with being assholes

schestowitz

[03:11] <schestowitz> but, apropos: http://techrights.org/2019/07/16/haar-dark-historical-shadow/

schestowitz

[03:11] <Source> Ppl saying that they're adHD so they can be late to everything[03:12] * schestowitz nods

-TechBytesBot/#techbytes-techrights.org | EPO Looney Tunes – Part 2: The “Difficult Legacy” and Its Dark Historical Shadow | Techrights

schestowitz

[03:13] <schestowitz> you can see daemonfc

schestowitz

[03:13] <schestowitz> he goes on and on for hours

schestowitz

[03:13] <schestowitz> even if nobody speaks back to him

http://ipkitten.blogspot.com/2022/05/board-of-appeal-agrees-that-description.html?showComment=1653566353836#c1219961219872815923

*liberty_box_ (~liberty@hcdms2vr9hu9e.irc) has joined #techbytes

May 29 08:00

*u-amarsh04 (~amarsh04@v6xmmrhxmbafc.irc) has joined #techbytes

May 29 09:11

schestowitz

-TechBytesBot/#techbytes-ipkitten.blogspot.com | Board of Appeal agrees that the description amendment requirement lacks legal basis (T 1444/20) - The IPKat

schestowitz

schestowitz

This was also my understanding of the origin of the EPO's new approach to adaptation of the description. If this explanation is true, then it is deeply troubling in many ways.

schestowitz

Firstly, all of the relevant discussions and decisions took place behind closed doors, and without the knowledge of the (broader) EPO user community. This is outrageous, especially when the change in practice is so substantial (and consequential for applicants).

schestowitz

Secondly, it is simply not within the EPO's remit to police how national courts conduct their assessments of claim scope. Ensuring that descriptions do not contain statements that flatly contradict the claims is one thing. However, it is quite something else to insist upon the insertion of statements that effectively serve as disclaimers. The former practice does not tie the hands of the national courts, whereas the latter practice does (and does so

schestowitz

by design).

schestowitz

Thirdly, whilst a harmonious approach is desirable, we have to remember that, despite various ratifications of the UPCA, the national laws governing infringement have still not been harmonised. The national courts are therefore fully entitled to reach their own decisions regarding infringement. Neither the EPO nor any other national court can or should have any say over this. This is because, when it comes to interpreting Article 69 EPC and its

schestowitz

Protocol, no decision of the EPO, or of any national court, is in any way binding on any (other) national court.

schestowitz

Fourthly, if the problem identified was a "rogue" court, then the most appropriate solution would have been dialogue with that court. This would have been infinitely preferable to a "solution" that deprives patentees of their rights, and effectively renders otiose Article 2 of the Protocol.

schestowitz

I can understand that there may not have been any questionable motivations behind the EPO's actions here. However, I think that it is well past time that the EPO recognises that it has not hit upon the best solution to this problem, and engages in good faith with the user community to identify a more acceptable (and legally justifiable) solution.

schestowitz

schestowitz

schestowitz

Patent RobotMonday, 23 May 2022 at 16:34:00 GMT+1

schestowitz

Finally, more and more people are realizing that there is not any provision at all in the EPC requiring applicants to delete unclaimed subject-matter from the description.

schestowitz

schestowitz

Replies

schestowitz

Terrible VladSaturday, 28 May 2022 at 14:09:00 GMT+1

schestowitz

Even the Guidelines do not generally require unclaimed subject-matter to be deleted. What they do require is that the description does not suggest that protection is sought for embodiments which conflict with the claims. This can be achieved e.g. by referring to such subject-matter not as "embodiments (of the invention)" but as "examples".

schestowitz

The claims should be clear from their wording alone, but that does not mean that statements in the description cannot lead to a lack of clarity. Obviously any attorney in opposition or national proceedings will refer to the description and Art. 69 EPC to try to convince the deciding body to interpret the claim to his client's advantage.

schestowitz

Absolute clarity cannot be achieved and in most cases it is perfectly fine that the description and drawings are there to help resolve questions about the interpretation of the claim, in particular in post-grant proceedings. But that also means that the description can affect the clarity of the claims (Article 84 EPC).

schestowitz

schestowitz

Attentive ObserverMonday, 23 May 2022 at 18:00:00 GMT+1

schestowitz

When Patent robot claims that "more and more people are realizing that there is not any provision at all in the EPC requiring applicants to delete unclaimed subject-matter from the description", I invite him to look at the composition of the boards in both cases.

schestowitz

it does not really come as a surprise that in both cases we find the same legal member.

schestowitz

All other boards apply the existing long line of case law according to which the description ought to be adapted.

schestowitz

Hoping for a referral to the EBA in view of these facts might remain a hope for quite a while.

schestowitz

T 1444/20 has already be commented on another blog:

schestowitz

Just have a look. It could be quite helpful.

https://blog.ipappify.de/t-1444-20-no-need-to-adapt-the-description-at-grant/

schestowitz

schestowitz

I also invite you to have a look at T 2766/17. in this decision the BA, being aware of T 1989/18 concurs with it, in that the claims should be clear by themselve, but only to the extent that the description should not contain statements contradicting the plain claim wording.

-TechBytesBot/#techbytes-blog.ipappify.de | T 1444/20 – No need to adapt the description at grant – IP.appify Blog

https://www.epo.org/law-practice/case-law-appeals/recent/t172766eu1.html

schestowitz

-TechBytesBot/#techbytes-www.epo.org | EPO - T 2766/17 () of 17.3.2022

schestowitz

In other words, the description has to be adapted.

schestowitz

schestowitz

AnonymousMonday, 23 May 2022 at 19:44:00 GMT+1

schestowitz

Defenders of the EPO’s current approach often cite T 1808/06 as though that is the final, definitive word in the matter. However, that brief decision provides absolutely no legal reasoning, merely citing the relevant passage of the Guidelines as it stood at the time. Compared to the actual analysis provided in T 1989/18, I find myself unconvinced by the earlier pro-amendment decision.

schestowitz

In any event, even if T 1808/06 is correct, it is not at all apparent how that could both support the EPO’s older, more permissive approach to the description *and* suddenly render it *imperative* that a more stringent line should be taken. Compared to the new situation, relatively few users had major complaints about the older approach.

schestowitz

What seems to be lacking among defenders of the EPO’s new, hardline approach are:

schestowitz

1. A cogent legal analysis which explains why the EPC requires amendments to the description, on at least an equal footing with the detailed legal analysis in T 1989/18; and

schestowitz

2. An explanation of why the self same older case law which apparently both required and supported a more lenient approach to description amendments can suddenly no longer justify the maintenance of such an approach, but instead *necessitate* a shift to a hardline approach from which any step back is unthinkable.

schestowitz

schestowitz

Replies

schestowitz

Patent RobotTuesday, 24 May 2022 at 07:58:00 GMT+1

schestowitz

I would add:

schestowitz

3. Why on earth the EPO is the only patent office requiring such amendments despite all PCT and EPC member states having the same requirements (actually Art. 6 PCT is even stricter) of Art. 84 EPC?

schestowitz

schestowitz

MaxDreiMonday, 23 May 2022 at 20:23:00 GMT+1

schestowitz

As Attentive points out, both decisions which fail to follow the established line emanate from the same single Legal Member. Is that Member a lone maverick?

schestowitz

As to hanging on to the WO claims, all the way into the B publication, as numbered paragraphs at the end of the description, I suspect that retention of the words "invention" and "embodiment" (as in this decision) are a provocation to all those inside the EPO who argue that Art 84 EPC imposes requirements for conformity over and above those found in the Implementing Regulations. But why do we try to retain beyond grant that reservoir of words of the

schestowitz

PCT application as filed? To retain their disclosure content, I would suggest. So what's wrong with introducing those numbered paragraphs at the end of the description offered for allowance with a preamble such as "The following numbered paragraphs constitute part of the present disclosure:" Might that escape censure by the zealots within the EPO?

schestowitz

schestowitz

Attentive ObserverMonday, 23 May 2022 at 21:25:00 GMT+1

schestowitz

T 1808/06 is by no means the only decision in which the adaptation of the description to the claims is required. There is a long line of case law which goes in the same direction. The frenzy created in the profession by T 1989/18 and T 1244/20 is hard to follow.

schestowitz

The day the last sentence in Art 84 is deleted = support by the description, then the description will not have to be adapted. But until then, there is no reason to simply forget this requirement. Why should statements be left in the description which are just there to be able in national procedures to shed a different light on the scope of the claims? The EPO is not there to cater to all possible DoE in all possible contracting states.

schestowitz

The allegedly “detailed legal analysis” in T 1989/18 has one big drawback as made clear in T 1024/18: it only relies on the clarity of the claims as such and ignores the link between claims and description. In T 1444/20, the analysis is not much better. No wonder as it emanates from the same pen.

schestowitz

There is no “hardline approach from which any step back is unthinkable”, it is just to apply Art 84 in its full breadth. That some divisions have been rather lenient on this point (it allows to produce more) and other overly pedantic, warranted a reminder in the Guidelines of what has to be done.

schestowitz

To insert a sentence of the style "The following numbered paragraphs constitute part of the present disclosure:", when part of the disclosure is not any longer covered by the claims is as good and useful as putting a plaster on a wooden leg! There is behaving as zealots in the EPO. It just asking to do what is required and has been established by case law.

schestowitz

It would be better to spend some time to look at the actual quality of the work done at the EPO. The production might have increased, but the same cannot be said about the quality. When you realise in opposition that the search has just been sub-optimal, what does it bring to get excited about the necessary adaptation of the description when the proportion of patents revoked or maintained in amended form, sometimes even severely limited, is steadily

schestowitz

increasing and the number of cases in which the opposition is rejected is steadily diminishing.

schestowitz

Or are patents just there for show or to compare the height of the respective piles when discussing between patent holders?

schestowitz

schestowitz

Replies

schestowitz

Patent RobotTuesday, 24 May 2022 at 07:49:00 GMT+1

schestowitz

"The day the last sentence in Art 84 is deleted = support by the description, then the description will not have to be adapted."

schestowitz

The same sentence is present in all EPC CS national laws and even in Art. 6 PCT, where the word "fully" is added: "They [the claims] shall be fully supported by the description."

schestowitz

So why no patent office in the world requires the deletion of unclaimed subject-matter? Is the EPO wrong or is it the rest of the world?

schestowitz

If you read the TP of the EPC you will notice that the word "fully" was deleted from the first drafts, so the intention of the legislator was to have a more relaxed provision, not a stricter one.

schestowitz

Do you really think that the object of Art. 84 EPC was to require the deletion of unclaimed subject-matter and not what is simply written there? Do you really think that such a heavy burden did not deserve a specific article or rule in the EPC? Come on...

schestowitz

Attentive ObserverTuesday, 24 May 2022 at 08:38:00 GMT+1

schestowitz

Dear Patent robot,

schestowitz

In case you had not realised it, it is the third part of Art 84 which does the job, so that there is no need to have a specific article or rule in the EPC to this effect.

schestowitz

Just take notice oof the long line of case law, exemplified for instance by T 1024/18 or T 2677/17.

schestowitz

I do not know why "no patent office in the world requires the deletion of unclaimed subject-matter", and actually it is irrelevant as what matters is what happens at the EPO.

schestowitz

If all lemmings would jump down the cliff, would you follow? I doubt it, so your comparison is not relevant at all.

schestowitz

AnonymousTuesday, 24 May 2022 at 10:41:00 GMT+1

schestowitz

(I am the Anon of Monday, 23 May 2022 at 19:44:00)

schestowitz

Dear AO,

schestowitz

Your insistence (both here and also under another name elsewhere) on the last sentence of Article 84 EPC being the source of the requirement to amend the description is very well-known. However, all that the last sentence of Art 84 says is:

schestowitz

"They [the claims] shall be clear and concise and be supported by the description".

schestowitz

There does not seem to be any serious dispute that the amendment of the description does not relate to clarity or conciseness. The - perhaps irreconcilable - philosophical difference between the two camps in this debate therefore seems to be what is meant by "supported".

schestowitz

If the original disclosure says that the invention relates to embodiments A, B and C, but the claims as approved for grant relate only to A and B, does the continued presence of embodiment C in the description mean that a claim to A and B is not "supported"? If so, why? After all, it is well established that the claims should normally be read on their own, therefore if the claim when read on its own clearly relates to "A and B" why should the

schestowitz

presence of C in the description matter?

schestowitz

Now, those of you on the "pro-amendment" side might say, conversely, that if the claim on its own clearly relates to A and B, what is the point of retaining C in the description. In response I would say that it is the EPO that is positively requiring applicants to do something, namely to amend the description, then the onus must be on the EPO to explain why that requirement is necessary, just as the onus is on the EPO to raise objections such as

schestowitz

those based on the prior art in order to necessitate amendments to the claims. Merely pointing to the last sentence of Art. 84 does not, to me, seem to be enough, since there is an unsettled debate as to what "supported" might mean in this context.

schestowitz

You also say that "there is no “hardline approach from which any step back is unthinkable”, it is just to apply Art 84 in its full breadth" and suggest that the recent amendments to the Guidelines are simply intended to remind the divisions of what they should have been doing all along. That simply does not match the experience of those of us outside the EPO. What you suggest was an (unduly?) lenient approach taken by "some" divisions in the

schestowitz

past was, to the contrary, the normal experience of the vast majority of us with the vast majority of divisions, and we could live with that. That approach was apparently in line with the case law. What we face now is more like an inversion of that, where the "pedantic" approach has become the norm. It is clearly not simply a case of reasserting the "proper" approach as it always existed - it is a total change in practice. While it might not look

schestowitz

like that from a purely legal, academic standpoint, it is nevertheless the practical reality. That, dear AO, is why there is such controversy now, where there was not really such dispute before.

schestowitz

AnonymousTuesday, 24 May 2022 at 11:14:00 GMT+1

schestowitz

Dear AO,

schestowitz

T 1024/18 refers to T 1808/06, which as pointed out above contains no actual reasoning.

schestowitz

It also refers to T 977/94, which provides only scant reasoning for its position (referring to Art 84, second sentence and to Art 69, but without really exploring why the "support" requirement necessitates amendments) and to T 300/04, which again merely refers to Articles 84 and 69, and cross-refers to T 977/94, but does not expand upon the very scanty reasons provided therein.

schestowitz

Is this really the best reasoning that the "long line of case law" can come up with? I am hardly convinced, if so.

schestowitz

(T 2677/17 cannot be found in the Boards of Appeal database - perhaps there is a typo here?)

schestowitz

Might I suggest that one of the reasons for such excitement about more recent decisions starting with T 1989/18 is because these decisions are clearly contrary to existing practice (thus inherently of interest, even if they are not eventually followed more widely by the EPO); and because they seem for the first time to really go into detail in exploring what the purported legal justification for description amendments might actually be, which is

schestowitz

something the previous case law hardly seems to have bothered to do. Even if the analysis turns out to be wrong, it is still notable for at least this reason.

schestowitz

Patent RobotTuesday, 24 May 2022 at 15:30:00 GMT+1

schestowitz

Dear AO,

schestowitz

you write "In case you had not realised it, it is the third part of Art 84 which does the job, so that there is no need to have a specific article or rule in the EPC to this effect."

schestowitz

Art 84 EPC does not say "Subject-matter which is not claimed shall be deleted from the description".

schestowitz

Case Law 2019 says instead that "Art. 84 EPC stipulates that the claims must be supported by the description. This requirement means that the subject-matter of the claim must be taken from the description and it is not admissible to claim something which is not described."

schestowitz

Even Case Law 2019 is wrong?

schestowitz

Attentive ObserverTuesday, 24 May 2022 at 16:02:00 GMT+1

schestowitz

The right number is T 2766/17

https://www.epo.org/law-practice/case-law-appeals/recent/t172766eu1.html

schestowitz

-TechBytesBot/#techbytes-www.epo.org | EPO - T 2766/17 () of 17.3.2022

schestowitz

Terrible VladSaturday, 28 May 2022 at 14:25:00 GMT+1

schestowitz

You wrote:

schestowitz

"The day the last sentence in Art 84 is deleted = support by the description, then the description will not have to be adapted."

schestowitz

I would argue that the requirement of clarity of the claims can be infringed by conflicting statements in the description and can therefore necessitate amendments of the description even after deletion of the last sentence of Art. 84.

schestowitz

As you put it yourself: "Why should statements be left in the description which are just there to be able in national procedures to shed a different light on the scope of the claims?" Does this not show that this is perhaps even more about clarity than about support? See indeed T 2766/17.

schestowitz

schestowitz

MaxDreiTuesday, 24 May 2022 at 07:04:00 GMT+1

schestowitz

On reflection, Attentive, I should not have used the loaded word "zealot" to describe those EPO Examiners who are the most zealous about every perceived "disconformity" between the description and the otherwise allowable ie clear, claims. But having now read the decision you tip us off about, T2766/17, I see that what bothers that Board are flat contrdictions between the claim and the description. To my mind, not every trifling "disconformity"

schestowitz

amounts to a "contradiction" which destroys the clarity of an otherwise perfectly allowable set of claims.

schestowitz

Or do I see it wriong, readers? Must every "disconformity" be struck out because it is indeed a flat contradiction, a dangerous thing which kills the delicate flower that is the experienced specialist reader's understanding of the B publication.

schestowitz

Attentive, I think you might attract some flak from some readers when you assert that the EPO

schestowitz

".... is not there to cater to all possible DoE in all possible contracting states". Not sure what you have in mind with "cater" but to my mind the EPO ought to recognise the reality that a DoE exists and the vourts in the Contracting States are doing there best to harmonise it, a task that will take them at least a generation, I should think.

schestowitz

schestowitz

Atttentive ObserverTuesday, 24 May 2022 at 08:32:00 GMT+1

schestowitz

Dear Max Drei,

schestowitz

I might not have been clear enough and I apologise for this. What I meant is simply that every national court has his own way to apply the DoE. This could mean indeed that it is best not to adapt the description, but this is not what is in the EPC.

schestowitz

This is why I said before that it is the duty of the EPO to put all applicants/proprietor on a par and do not let slip certain things through just because the representative is more cantankerous and refuses to adapt anything.

schestowitz

What is not correct is a pedantic approach by EDs/ODs, but I am convinced that a sound application should not be an obstacle.

schestowitz

I will not get tired repeating that the chance to come to a harmonised DoE has been missed at the EPC 2000. There was a proposal for the definition of equivalents in an Art 3 of the protocol. the contracting state did not want to agree and we ended up with an Art 2 of the protocol which speaks about equivalents but without whatsoever defining them.

schestowitz

This is the reason why we are in such a mess at present, but it is not the EPO to be blamed.

schestowitz

schestowitz

Replies

schestowitz

AnonymousTuesday, 24 May 2022 at 10:51:00 GMT+1

schestowitz

I don't want to re-run all of the arguments relating to equivalents here, AO, as it is plain that you have your opinion and will not be moved from that. But I wish to make a broader point to the audience here, which is that the EPO is merely one (albeit very important) part of the overall legal picture. I often have the feeling that the EPO would simply rather not consider the reality of everything that takes place outside the walls of the EPO - in

schestowitz

other words, the reasons why applicants seek patents in the first place, and what they seek to do with them after the EPO has granted them, and how those goals might be achieved, be it in the context of litigation, FTO, licensing, etc etc. In the words of Tom Lehrer's famous song, "Once the rockets are up, who cares where they come down? That's not my department! says Wernher von Braun"...

schestowitz

The EPO surely cannot simply continue to stick its head in the sand and ignore that wider context - or, even worse, assume that any objections from outside the sacred halls of the EPO can only be due to excessive legal nit-picking or from nefarious and underhand motives on the part of applicants or their representatives. Remarks such as yours where you seem to affect complete incomprehension at the so-called "frenzy", and lash out at so-called "

schestowitz

cantankerous representatives", sadly seem to be symptomatic of that lack of interest in why this is such an important topic, and of that inherent suspicion that critics of the EPO approach are up to no good.

schestowitz

There may be good and legitimate reasons for applicants (not just their representatives) to wish to retain as much of the original disclosure as possible, and it would behove the EPO and supporters of its approach to seek to understand those reasons rather than dismissing them out of hand or, like Dr von Braun in the song, merely shrugging and saying "not our department".

schestowitz

AnonymousWednesday, 25 May 2022 at 23:53:00 GMT+1

schestowitz

Ironically, the reason behind the EPO introducing this hardline approach to description amendment is because of complaints it has received about subsequent litigation of the patents. It has been advised that at least one court was interpreting the claims in a significantly broader fashion than was intended by the EPO, solely on the basis of wording in the description which fell outside the claim scope. To ensure that the courts fully understand the

schestowitz

claim scope that the EPO intends to grant, it is ensuring that there is nothing in the description that could lead to such a broadening misinterpretation.

schestowitz

Proof of the puddingThursday, 26 May 2022 at 12:59:00 GMT+1

schestowitz

This was also my understanding of the origin of the EPO's new approach to adaptation of the description. If this explanation is true, then it is deeply troubling in many ways.

schestowitz

schestowitz

schestowitz

by design).

schestowitz

schestowitz

Protocol, no decision of the EPO, or of any national court, is in any way binding on any (other) national court.

schestowitz

schestowitz

schestowitz

schestowitz

AnonymousTuesday, 24 May 2022 at 10:32:00 GMT+1

schestowitz

If only the Guidelines for Examination would be clear, concise and supported by the EPC...

schestowitz

schestowitz

Proof of the puddingTuesday, 24 May 2022 at 11:26:00 GMT+1

schestowitz

FACT: during examination of patent applications, the EPO does not consider the doctrine of equivalents. (Also, during examination, the EPO never seeks evidence from persons of ordinary skill in the art regarding the literal meaning of the wording of the claims.)

schestowitz

FACT: the EPO's practice of forcing applicants to label each and every disclosure of the description as being either "in" or "out" of the claimed invention is likely to have an impact upon the determination of equivalents by national courts.

schestowitz

Putting the above two facts together, it seems to me that not only is the EPO's description amendment practice based upon inadequately reasoned (and likely ill-informed) "conclusions" regarding the scope of the claims, but it is also (potentially) highly prejudicial to applicants.

schestowitz

I had thought that the role of the EPO was to grant patents, and that the role of the national courts was to interpret the claims of those patents in connection with matters of infringement and validity. I am curious as to why the EPO now considers that it has a role in telling the national courts how they should interpret the claims (when it comes to assessing which disclosures of the description of a patent fall within the scope of those claims).

schestowitz

schestowitz

Replies

schestowitz

AnonymousTuesday, 24 May 2022 at 13:03:00 GMT+1

schestowitz

Indeed so, Proof. Our friend the Attentive Observer (DXT) laments the fact that the Protocol to Article 69 does not provide a definition of equivalents and blames that for the current mess, but I fail to see the logic of the argument which flows from the starting points of "neither infringement nor the DoE are the business of the EPO" and "Article 69 and the Protocol fail to define equivalents" through to the conclusion "we must take a scorched

schestowitz

earth approach and eliminate anything in the description that might conceivably be relied on as an equivalent".

schestowitz

Why is that the logical conclusion and not (as I think you and I would agree) "we, the EPO, should therefore leave the description alone and allow national courts to determine how to interpret the claims and apply the DoE"?

schestowitz

It seems internally inconsistent to say in one breath that post-grant claim interpretation and the DoE are none of the business of the EPO, and in the next breath therefore to conclude that it is incumbent on the EPO to take a bulldozer to anything that might have relevance to those considerations.

schestowitz

Proof of the puddingTuesday, 24 May 2022 at 14:26:00 GMT+1

schestowitz

Anon, I have reason to believe that the EPO's recent, strict practice on adaptation of the description was a reaction to the UK Supreme Court's decision in the pemetrexed case (where, in essence, a potassium salt was found to be an equivalent of a sodium salt recited in the claims).

schestowitz

If my belief is well founded, then you have to wonder about the decision-making process within the EPO. This is because:

schestowitz

(1) the UK Supreme Court found that the retention in the description of disclosures that were arguably inconsistent with the claims did not justify stretching the "normal" interpretation of the claims beyond the single (sodium) salt defined in those claims; and

schestowitz

(2) the Court's decision on DoE did not in any way rely upon the allegedly inconsistent disclosures.

schestowitz

This suggests to me that it is no accident that the EPO insists upon labelling "non-claimed" embodiments with wording including phrases such as "not encompassed by the wording of the claims", "not according to the claimed invention" or "outside the subject-matter of the claims". Those phrases differ from a potentially more palatable alternative ("not encompassed by the LITERAL MEANING OF the wording of the claims") in one important respect, namely

schestowitz

that they could be perceived as precluding a national court from deciding that any such "non-claimed" embodiments are equivalents of the claimed subject matter.

schestowitz

Attentive ObserverTuesday, 24 May 2022 at 20:28:00 GMT+1

schestowitz

What Proof of the Pudding forgets to mention is that Lord Neuberger found it necessary to blame the examiner for having raised an objection under Art 123(2) against of claim not limited to pemetrexed disodium.

schestowitz

In the absence of any proof that other salts would work as well, the examiner had no choice and I find this comment of Lord Neuberger totally misplaced and unreasonable.

schestowitz

Any national jurisdiction can apply the DoE it thinks appropriate, but any national jurisdiction should refrain from interfering with the dealings of the EPO.

schestowitz

The aim of Lord Neuberger was to overrule the disastrous Improver decision and set new rules for a UK DoE.

schestowitz

§ 12-20 of the UKSC decision say something quite different from what Proof of the Pudding claims in § 1 and 2 above. The UKSC did well take into account what was written in the introductory part of the description to come up with its new DoE.

schestowitz

And here lies the problem. The description says much more than the claims!

schestowitz

Proof of the puddingWednesday, 25 May 2022 at 13:19:00 GMT+1

schestowitz

Wow! So you believe that "any national jurisdiction should refrain from interfering with the dealings of the EPO". Why is that? And do you not think that the reverse should (also) be true?

schestowitz

My comment (below) from earlier today explains why paras 12 to 20 of the UKSC's decision do not support your views. However, I would also challenge your assertion that Lord Neuberger's comment was "totally misplaced and unreasonable". This is because I believe that you are referring to his comment on Art 123(2) EPC, which was:

schestowitz

"It is unnecessary to decide the issue, but, at least as at present advised, I am inclined to think that the examiner was wrong in taking that view".

schestowitz

To me, this comment suggests that, based upon the prevailing interpretation of (the UK legal provision equivalent to) Art 123(2) EPC, Lord Neuberger was inclined to think that there was an arguable case that an amendment pursued by the applicant during prosecution did not add new matter. Of course, after grant, there was no way for the patentee to challenge the examiner's decision on this point. But, especially in the context of the case, this does

schestowitz

not make it unreasonable for the judge to make an obiter comment regarding his views on this issue.

schestowitz

AnonymousWednesday, 25 May 2022 at 17:21:00 GMT+1

schestowitz

It is important to note that common general knowledge plays a role in whether an amendment adds subject matter and UK courts have far more experience of hearing expert evidence of common general knowledge than EPO examiners do. They also have much more time to do so. There are different levels of generality in all patent applications and a well-drafted application will explicitly spell those out. In this particular case, the application did not

schestowitz

provide literal basis for a claim whose degree of generality was somewhere between the originally-filed claims and the granted claims. However, literal basis is not required and the absence of literal basis does not in itself mean that the skilled addressee could not have derived an intermediate level of generality, based on the teachings of the specification and their common general knowledge. Having studied the evidence in more detail than any of

schestowitz

us have, Lord Neuberger's view was that the skilled addressee would have been able to derive an amendment that the EPO did not allow. That is hardly a surprise and it is disrespectful to suggest that his comment on added subject matter was "totally misplaced and unreasonable", when it was merely a difference of opinion. Courts criticize judgements from lower instances all the time.

schestowitz

schestowitz

AnonymousTuesday, 24 May 2022 at 12:35:00 GMT+1

https://www.patentlitigation.ch/for-discussion-has-the-requirement-that-claims-be-supported-by-the-description-been-perverted-over-time/?no_cache=1653391679

schestowitz

schestowitz

schestowitz

Attentive ObserverTuesday, 24 May 2022 at 16:35:00 GMT+1

schestowitz

To the preceding commenters,

schestowitz

I do not wish to be confused with another person. Any association of AO with anybody else, is, as would be said in a movie purely fortuitous and should not be take for something else than this.

-TechBytesBot/#techbytes-www.patentlitigation.ch | For discussion: Has the requirement that claims be «supported by the description» been perverted over time? | FPC Review

schestowitz

I do not lament whatsoever and the case law of the BA has made it clear what it means to adapt the description to the claims. Any inference that the claims could be interpreted differently than their plain wording is to be deleted, whether the profession likes it or not. just have a look at T 2677/17, it could not be clearer.

schestowitz

None of the commenters so eager not to amend the description seem not to have grasped the idea that the job of the EPO is not to allow fancy interpretations of the claims by leaving statements which can give a different meaning to the claims. That is what is required by Art 84.

schestowitz

And indeed interpretation of the claims and the way the DoE is applied by national jurisdictions is not a matter for the EPO. But I maintain that it would have brought some harmonisation if the protocol would have defined what is to be understood by an equivalent.

schestowitz

When part of the disclosure is not any any longer part of the invention as defined in the claims, what does it bring to insist upon leaving it as being part of what is claimed? I do not like using the word cheating, but in my opinion it is what it boils down to. That the EPO wants to put all applicants on a par is just a legitimate aim.

schestowitz

When I see the pemetrexed case, it becomes abundantly clear what has happened there. Thanks to a very broad statement in the introduction of the description, the proprietor was able to claim an invention he had never made at the time. The only example disclosed was pemetrexed disodium and nothing else. The applicant at the time had manifestly no other data at hand otherwise he would have submitted further information about other salts. But he

schestowitz

bluntly refused to limit the disclosure to pemetrexed disodium.

schestowitz

No surprise that after this case, the screws had to be tightened at the EPO. Please do not forget.

schestowitz

I do not intend to continue a long discussion on this topic, be it on this thread or on any other. The arguments on both sides have been exchanged and there is nothing to add.

schestowitz

Let's agree that we disagree, but do not claim from the EPO something which it cannot deliver in view of the long lasting line of case law on this topic.

schestowitz

The description has to be adapted and it is not a single legal member who will be able to change things, even he might be convinced of his point of view. other boards have shown him how to look at Art 84 which does not limit itself to clarity but also mentions support by the description.

schestowitz

schestowitz

Replies

schestowitz

AnonymousTuesday, 24 May 2022 at 17:07:00 GMT+1

schestowitz

T 2677/17 does not exist. It is T 2766/17 and you made the same typo in your comment on your blog.

schestowitz

Proof of the puddingTuesday, 24 May 2022 at 18:15:00 GMT+1

schestowitz

AO, before making statements about what becomes "abundantly clear" from the pemetrexed case, I would encourage you to (re-)read the UK Supreme Court's judgement in that case.

schestowitz

The approach of the UKSC was to:

schestowitz

(a) determine whether Actavis' products infringed on the basis of a "normal" interpretation of claim 1 (FINDING: no infringement on this basis);

schestowitz

(b) consider whether Actavis' products represented an "immaterial variation" of the subject matter of claim 1.

schestowitz

Further, the UKSC conducted step (b) by:

schestowitz

- initially disregarding the prosecution history; and

schestowitz

- then, having reached a provisional conclusion, addressing that history and its effect on the provisional conclusion.

schestowitz

The UKSC's provisional conclusion was:

schestowitz

"Looking at matters more broadly, the addressee of the Patent would, as I see it, understand that the reason why the claims were limited to the disodium salt was because that was the only pemetrexed salt on which the experiments described in the specification had been carried out. However, it does not follow that the patentee did not intend any other pemetrexed salts to infringe: the suggestion confuses the disclosure of the specification of a

schestowitz

patent with the scope of protection afforded by its claims. Particularly given the facts set out in para 25 above, it seems to me very unlikely that the notional addressee would have concluded that the patentee could have intended to exclude any pemetrexed salts other than pemetrexed disodium, or indeed pemetrexed free acid, from the scope of protection".

schestowitz

In connection with the effect of the prosecution history, the UKSC concluded:

schestowitz

"It seems to me clear that the reason why the examiner considered that the claims in the patent should be limited to pemetrexed disodium was because the teaching in the specification did not expressly extend to any other anti-folates. It is unnecessary to decide the issue, but, at least as at present advised, I am inclined to think that the examiner was wrong in taking that view. Indeed, in the course of his well-presented argument for Actavis, Mr

schestowitz

Alexander QC seemed to accept that Lilly could have expressed its claims more widely than it did (albeit that this was not a point which was carefully explored). However, even if the examiner was right or at least justified in taking the stance that he did, I do not consider that that consideration can have any bearing on the question whether any pemetrexed salts other than pemetrexed disodium should be within the scope of the patent pursuant to the

schestowitz

doctrine of equivalents. The whole point of the doctrine is that it entitles a patentee to contend that the scope of protection afforded by the patent extends beyond the ambit of its claims as construed according to normal principles of interpretation".

schestowitz

Proof of the puddingTuesday, 24 May 2022 at 18:15:00 GMT+1

schestowitz

The UKSC's conclusions therefore do NOT depend upon "a very broad statement in the introduction of the description". Instead, they rely upon what the UKSC perceived, in the light of all of the available evidence (including the prosecution history) to be "immaterial variants" of the invention defined in the claims.

schestowitz

You therefore appear to be defending the EPO's "tightening of the screws" based upon a misreading of the outcome of the pemetrexed case. In any event, I have yet to hear from you any cogent reason why it is legitimate for the EPO to exceed its remit (of granting patents) by seeking to tie the hands of national courts regarding claim interpretations (and, in particular, the doctrine of equivalents).

schestowitz

Simply, and repeatedly, pointing to ONE POSSIBLE INTERPRETATION of Article 84 is not enough to answer this point. The effects of that POSSIBLE interpretation need to be considered in the broader context, including: the impact on national courts; possible unfairness for patent proprietors; the TP for Article 84 (and related provisions), etc. Remember that you are making an extraordinary claim, in that you are effectively contending that, without ever

schestowitz

considering equivalents, the EPO is entitled to force applicants to adapt patent descriptions in ways that prevent national courts from reaching their own decisions upon which disclosures of the description are equivalents of the claimed subject matter. And extraordinary claims require exceptional evidence.

schestowitz

Atentive ObserverTuesday, 24 May 2022 at 20:46:00 GMT+1

schestowitz

See my comment above. The aim of Lord Neuberger was to come up with an "improved" Improver as stated on IPKat, but the introductory part of the description played a role. See § 12-20 of the judgement.

schestowitz

As far as the typo is concerned, I rectified the mistake somewhere above here.

https://www.epo.org/law-practice/case-law-appeals/recent/t172766eu1.html

schestowitz

schestowitz

Ever heard of the parable of the straw and the beam?

-TechBytesBot/#techbytes-www.epo.org | EPO - T 2766/17 () of 17.3.2022

schestowitz

It does not alter what I inteded to say for a mind willing to understand.

schestowitz

Proof of the puddingWednesday, 25 May 2022 at 09:58:00 GMT+1

schestowitz

AO, you are clutching at straws. Paragraphs 12 to 20 of the UKSC decision simply DISCUSS the specification and claims of the patent. That discussion mentions passages that describe subject matter in general terms (ie terms broader than those used in the claims). However, there is NOTHING in the conclusory paragraphs of the decision that in any way indicate that those passages were relevant (let alone crucial) to the decision on DoE.

schestowitz

Your comments suggest that you believe a more "strictly" adapted description would have prevented the UKSC from concluding that the potassium salt of pemetrexed was an equivalent of the claimed sodium salt. This implies a belief on your part that the EPO would be justified in forcing applicants to effectively disclaim certain embodiments of the description, thereby removing the freedom of the national courts to interpret the claims how they see fit (

schestowitz

in the light of all of the available evidence). However, I have yet to see from you even the slightest hint of a reasonable justification for the EPO assuming such a dominant role in matters concerning post-grant claim interpretation.

schestowitz

The EPO does its job when it identifies relevant prior art, elicits (written) submissions from the applicant during prosecution and helps to determine the final wording of the claims. With the exception of opposition and central limitation proceedings, that is where the job of the EPO ends and where the baton is handed over to the national courts. This is a clear dividing line that the EPO oversteps by seeking to effectively impose upon the national

schestowitz

courts a specific, very limited interpretation of the claims (with regard to "non-claimed" embodiments of the description).

schestowitz

The national courts can and will make mistakes when interpreting the claims. For example, I believe that it was a mistake for the UKSC to conclude that it is OK to rely upon the results of post-filing discoveries to determine equivalency. This appears to me to create a two-tier system of patentability, where plausibility is used to determine inventiveness of embodiments falling within the "normal" interpretation of the claims, but is apparently NOT

schestowitz

used to assess the inventiveness of embodiments that infringe only under the DoE. Nevertheless, the national courts should be free to make such mistakes, and to (hopefully) learn from them. After all, who gets to say what is a mistake and what is not? Remember that, particularly in important cases, the national courts will have considered FAR more (expert / witness) evidence and submissions than any EPO examiner.

schestowitz

schestowitz

MaxDreiTuesday, 24 May 2022 at 17:47:00 GMT+1

schestowitz

Frankly, it might be easier for courts, post-grant, to decide what is "equivalent" to the subject matter of the asserted claim if the description were left in the form it was as filed. If I were the judge, that's what I should like, thank you very much, EPO.

schestowitz

Is potassium "equivalent" to sodium? It depends on the context, doesn't it. And what is the context? In a "First to File" jurisdiction, it is the disclosure content of the application as filed.

schestowitz

AO reminds us that the Applicant on that filing date had data for only one salt (sodium) but nevertheless claimed their invention more broadly. But what else shall a competent patent attorney do, to secure for their client a full measure of the protection deserved by the inventive insight, the real teaching to experienced readers hungry for plausible new lines of development, the real life contribution to the thinking of the skilled reader? If the

schestowitz

sodium salt solves the problem, is it not at least plausible that the K salt will too? For deciding whether K is "equivalent to Na, in a claim having as its date the filing date of the patent application, I think I should want to read the disclosure as originally filed ie on the date of the claim (and I'm not sure whether the "conformed" tweaked amended description insisted upon by the EPO would be of any further help to me in my struggle to set a

schestowitz

limit to what is "equivalent" to the claimed subject matter.

schestowitz

AO, surely you are not intimating that such ordinary (indeed, best practice) drafting behaviour is reprehensible, somehow blameworthy. Or are you?

schestowitz

schestowitz

Replies

schestowitz

AnonymousWednesday, 25 May 2022 at 11:41:00 GMT+1

schestowitz

Unfortunately that appears to be exactly what AO is suggesting (his silence on this, and refusal to engage with any of the actual arguments made in this thread, speaks volumes). One can only hope that his successors in senior positions at the EPO do not take such a contemptuous view of those who use their services, although sometimes I wonder.

schestowitz

Proof of the puddingWednesday, 25 May 2022 at 17:14:00 GMT+1

schestowitz

One can indeed hope. Sadly, I fear that such hope would be misplaced. This is because it appears to me that, in common with AO, the EPO's (senior) management has a worrying tendency to simply ignore, rather than engage with and substantively address, any "inconvenient" points made by those having differing views.

schestowitz

schestowitz

Passing examinerTuesday, 24 May 2022 at 20:39:00 GMT+1

schestowitz

Dr Hughes wrote: "The release of T 1444/20 means that the decision in T 1989/18 can no longer be dismissed as an anomaly that EPO Examiners can legitimately ignore"

schestowitz

Don't hold your breath. Examiners have been provided with standard text citing a dozen of T decisions allegedly supporting the requirement of adapting the description to reply to applicants invoking T 1989/18. I would bet that the only change that you are going to see is that the text is now going to recite "T 1989/18 and T 1444/20 are isolated decisions."

schestowitz

"The position of Examiners is not enviable, given that they will now face, on the one hand, the clear stipulation of the Guidelines requiring adaption of the description in line with the claims, and on the other hand, applicants armed with two recent Boards of Appeal decisions finding no legal basis for description amendments. "

schestowitz

Divisions may face more resistance from applicants, but ultimately they will apply the Guidelines as they normally do for any other issue.

schestowitz

schestowitz

AnonymousWednesday, 25 May 2022 at 00:58:00 GMT+1

schestowitz

T 1988/18 and T 1444/20 are two isolated decisions as they stem from the same legal member.

schestowitz

It will be interesting to see whether this member of the BA will be re-appointed in view of his „performance“.

schestowitz

He has provoked a reaction from the profession which was not warranted.

schestowitz

Calm down, take a deep breath and now for something completely different (Copyright Monty Pythons)

schestowitz

schestowitz

Once the rockets are up, who cares where they come down?Wednesday, 25 May 2022 at 10:49:00 GMT+1

schestowitz

AO,

schestowitz

You say that the case law of the BA has made it clear what it means to adapt the description to the claims. Any inference that the claims could be interpreted differently than their plain wording is to be deleted, whether the profession likes it or not.

schestowitz

But this attitude simply flies in the face of what has been repeatedly pointed out here, that the case law of the BA has failed to provide any reasoning or justification for such amendments beyond simply pointing to Arts. 84 and 69 and concluding, in circular fashion, that amendment is necessary. It seems to be only with T 1989/18 and its successors that the Boards have really started to engage with an analyis of whether Arts. 84/69 really do

schestowitz

require this, and if so, to what extent. You seem to be determined to stick to the old, unreasoned decisions and ignore the newer, reasoned decisions. That you consider the reasoning of the new decisions to be flawed is fine, and is your prerogative. But given that the Boards have provided some legal analysis, is it not incumbent on you as a defender of the status quo to provide some actual reasoning in the other direction, to explain where T 1989/

schestowitz

18 is wrong? Simply pointing to the old case law, which does not engage with the legal reasoning, will not do.

schestowitz

You also say None of the commenters so eager not to amend the description seem not to have grasped the idea that the job of the EPO is not to allow fancy interpretations of the claims by leaving statements which can give a different meaning to the claims. That is what is required by Art 84.. But, with respect, you seem to be conflating clarity and support here. You have repeatedly told us here and elsewhere that it is the second sentence of Art 84

schestowitz

which is key, and in particular the "support" part. Although clarity and support are both mentioned in that sentence, they are distinct concepts. Which is it that you consider to be the problem? Is it clarity, is it support, or is it both? And if it is support that is the problem, we are still none the wiser as to why a claim saying "A or B" is not any longer supported when the description says "A or B or C".

schestowitz

schestowitz

As already pointed out, there are legitimate reasons for Applicants to wish to retain the original disclosure. Frankly, your attitude here of assuming that users are cheats and frauds is inappropriate.

schestowitz

That the EPO wants to put all applicants on a par is just a legitimate aim.

schestowitz

Given that you have already acknowledged that the DoE is not within the competence of the EPO, why is it a legitimate aim to "put all applicants on a par"?

schestowitz

schestowitz

AnonymousWednesday, 25 May 2022 at 16:37:00 GMT+1

schestowitz

As the discussion is turning in circles, it appears useless to continue.

schestowitz

If you do not understand what it means to put all applicants on a par, I cannot help more.

schestowitz

Some divisions are rather pedantic, some could not care less. This is not correct.

schestowitz

In my humble opinion, there are more serious problems at the EPO. It is the quality of the work delivered. Just have a look at the number of patents revoked or limited and compare it with the number of oppositions rejected.

schestowitz

It is flabbergasting! What does it help too have an adapted description or not, if the prior art revealed during opposition should actually have been found during the original search!

schestowitz

This seems more relevant.

schestowitz

Look also at the lottery effect occurring at the BA. It is not normal that the fate of a patent depends on the board dealing with the case.

schestowitz

This is a source of worries, much more important than the adaptation of the description!

schestowitz

schestowitz

Replies

schestowitz

AnonymousWednesday, 25 May 2022 at 17:08:00 GMT+1

schestowitz

The above anon is clearly AO. "Because there are also problems with X, we shouldn't worry about Y". This is a standard deflection tactic of someone who has no serious answers to any of the points raised. If the conversation is now going in circles, it is clearly AO who is responsible for that by raising points and then refusing to discuss them in good faith.

schestowitz

schestowitz

MaxDreiThursday, 26 May 2022 at 21:26:00 GMT+1

schestowitz

Does anybody know what prompted the EPO to abandon its briefly extant Rule that shut down the opportunity to file a divisional after a specified period. Was it not international pressure from bulk users that saw it off? So, might similar pressure from bulk users (who pay the costs of "conforming the description") be the only thing that makes any impression on the EPO, and the only thing that will give the EPO pause, in its unique obsession with

schestowitz

strict conformity between description and the allowable claims?

schestowitz

Also, I have to say something about the pemetrexed case (supposedly the cause of the EPO's ratcheted-up insistence on strict conformity). The UK Supreme Court decision included some embarrassing remarks about prosecution at the EPO and Art 123(2) EPC. I suspect that both sides in the litigation, for different reasons, chose not to educate the court about the reality of EPO prosecution, both fearing that getting into that area increase the likelihood

schestowitz

of their losing the case. Judges should be cautious about propounding on issues not fully tested by cross-examination of witnesses on each side of the dispute, lest they reveal their ignorance on the issue.

schestowitz

That suspicion might seem far-fetched, but there is another recent case (Claydon) which increases my suspicions that an English court can remain "in the dark" about a particular issue all through the case precisely because both sides have their reasons to keep clear of any issue that might lose them the case. In the Claydon case, it was the science of soil mechanics. In the pemetrexed case it was how Art 123(2) is managed at the EPO.

schestowitz

That being so, it is unfortunate, to say the least, to invoke the pemetrexed case as the basis for ratcheting up the strictness with which ED's at the EPO enquire into "conformity" when examining under Art 84, EPC.

schestowitz

http://patentblog.kluweriplaw.com/2022/05/23/dedicated-tribunal-could-help-settle-labour-disputes-at-the-european-patent-office/#comments

*GNUmoon2 has quit (Ping timeout: 2m30s)

May 29 10:25

*GNUmoon2 (~GNUmoon@yfj9xvtb6yewi.irc) has joined #techbytes

May 29 10:45

*psydruid (~psydruid@jevhxkzmtrbww.irc) has left #techbytes

May 29 11:10

*psydruid (~psydruid@jevhxkzmtrbww.irc) has joined #techbytes

May 29 11:21

*psydruid (~psydruid@jevhxkzmtrbww.irc) has left #techbytes

May 29 12:48

*psydruid (~psydruid@jevhxkzmtrbww.irc) has joined #techbytes

May 29 12:48

*psydroid2 (~psydroid@memzbmehf99re.irc) has joined #techbytes

May 29 13:22

*u-amarsh04 has quit (Ping timeout: 2m30s)

May 29 15:10

*u-amarsh04 (~amarsh04@5tcc2vuaj9aks.irc) has joined #techbytes

May 29 15:21

schestowitz

-TechBytesBot/#techbytes-patentblog.kluweriplaw.com | 'Dedicated tribunal could help settle labour disputes at the European Patent Office' - Kluwer Patent Blog

schestowitz

schestowitz

Attentive Observer

schestowitz

MAY 23, 2022 AT 9:55 PM

schestowitz

The problem at the EPO has been well analysed. For the higher management, immunity means impunity. We have seen this with Battistelli and it continues with Campinos.

schestowitz

The problem is that there is no real possibility of negotiating anything. The staff committee has to be “consulted”, but at the end of the day, the decision rests with the president. Provided there has been a “consultation”, whatever one understands under this wording, the rest is at the discretion of the president.

schestowitz

He can then decide as he thinks fit.

schestowitz

The same goes with the internal appeal committee (IAC). Even if the decision of the IAC is unanimously in favour of the staff member, which is a rare occurrence, the president can refuse to follow its advice or decide something totally different. Battistelli did not only use this possibility, he abused it. It is a real scam and a parody of an internal appeal procedure.

schestowitz

The mere fact that the chair of the IAC is an “independent” personality has not changed anything. The president has not changed its behaviour. It should at least be made clear that in case of a unanimous opinion of the IAC, the president should accept it and not force staff to go to the ILO-AT. It should also not be permitted to the president to take a decision which is more negative for the staff member concerned. A kind of prohibition of the

schestowitz

reformation in peius should be established.

schestowitz

In this respect, the ILO-AT is not an adequate forum. The ILO-AT checks whether the consultation mechanisms have been applied correctly, but will never take a decision which will be against the policy decisions of the management. It is only if the correct mechanisms have not been used or if the discretion has manifestly been misused that the ILO-AT will say something. This is not the protection needed.

schestowitz

This is different with the CJEU and EU staff. A long time ago, the staff and the commission came to an agreement that the salary increase would be in a given range. The commission then went 0,1% above the lowest value of the range. the CJEU decided that when there is a range, it could be expected that the value taken was mid-way of the range and decided that the value was the middle of the range, otherwise, the notion of range would be meaningless.

schestowitz

The commission grudgingly obeyed.

schestowitz

The ILO-AT would never take such a decision, and here is the difference between a proper court and just and administrative court. In order to be protected, staff of the EPO need to be able to address a proper court.

schestowitz

For a dedicated tribunal to solve disputes between staff and management it needs a political will. And in view of the fact that the AC has completely given up and merely rubber stamps the desiderata of the president, there is no hope to be expected from there.

schestowitz

It would be nice, but reality is somehow different. The specific status of intergovernmental organisations allows their heads to act sometimes like manufacture owners in the 19th century thanks to their immunity which they take as synonym of impunity.

schestowitz

Kay

schestowitz

MAY 24, 2022 AT 2:49 PM

schestowitz

Isn’t this Administrative Tribunal a step promised by the previous President?

schestowitz

He presented it as his vision where Social Dialogue will lead to in the last step of reforms, but abolished this the moment the CA approved the first step(s), which increased the power of the administration (which were presented as intermediate step towards the implementation of an internal judiciary with independent judges hired from the national systems).

schestowitz

Like so many reforms, only the first step was implemented, never the second basket(s)….

schestowitz

Realistic Examiner

schestowitz

MAY 25, 2022 AT 1:20 AM

schestowitz

Realistic examiner

schestowitz

Access to justice at the EPO is a long journey with a lot of obstacles.

schestowitz

First, staff needs to file a management review which is dealt by the Conflict Resolution Unit (CRU) which systematically rejects any case of political nature or which challenges general policies.

schestowitz

Second, staff needs to file an appeal in front of the Appeals Committee (ApC) and pay a 200 Eur registration fee. Yes, you read well. One has to pay his own employee to challenge illegal policies of one’s employer. When 1.000 staff members challenge a policy, 200k € enter in the EPO’s pockets.

schestowitz

The Appeals Committee of the EPO has also proven to be deficient. The Tribunal has sanctioned the EPO for the breach of the right to strike in (Judgments 4432-4435) and the fundamental right to freedom of association by interfering with staff committee elections (Judgment 4482). All corresponding cases had been treated and rejected by the EPO Appeals Committee chaired by Sir Paul Mahoney who was a former Judge of the European Court of Human Rights.

schestowitz

Sir Paul Mahoney was unable to identify the breaches of fundamental rights at the EPO and the Tribunal proved him wrong. It seems that as soon as a “prominent” jurist works for the EPO, he forget about legality.

schestowitz

Even in the rare cases when the Appeals Committee issues a unanimous opinion in favour of staff, Mr Campinos may still reject it and dismiss the appeal. Either because Mr Campinos wants to protect the legacy of Mr Battistelli, or because he does not like the appellant: institutionalized harassment continues at the EPO.

schestowitz

Third, staff needs to file a complaint in front of the ILO Administrative Tribunal. The problem is that the Tribunal’s statutes make it impossible for unions or staff committees to file a complaint. The Tribunal does not accept class actions and accepts only individual complaints. And when a judgment is in favour of staff, the EPO does not extend the application of the judgment to all staff and selectively applies as it deems fit. This is for

schestowitz

instance what Mr Campinos did by fully applying judgments 4432-4435 ONLY to staff members who had filed a complaint. To secure their rights, EPO staff MUST file individually and resort to the filing of mass complaints which cause more work for the Tribunal.

schestowitz

Mr Campinos was elected to restore social dialogue and reduce litigation. The recent events proved that he failed to do so. Mr Campinos has even hired an army of litigators by allocating a 5.8 M€ budget to law firms Guillenschmidt & Associates in Paris, and Lenz and Staehlin in Zurich to battle against the complaints of staff at the Tribunal.

schestowitz

EPO management currently relies on major reforms (career system, salary adjustment…) which were pushed while the right to strike was trimmed and staff committee members disciplined. Mr Campinos does not want to address any of these and wants to continue to surf on unlawfully introduced illegal reforms. These illegal reforms helped the EPO to make massive cash surpluses (although the budget is supposed to be balanced) and the Council delegations

schestowitz

are now addicted to cash. In parallel, the quality of patents is melting and the only applicants worth some attention are the major ones. Small companies and the public have long been forgotten.

schestowitz

It is not easy to solve lack of proper access to justice at the EPO. Especially when the current EPO surpluses depend upon it.

schestowitz

The EPO is the best example of how an International Organization enjoying immunity can divert from its original purposes when it is controlled by a management acting in full impunity.

schestowitz

A dedicated tribunal may help to settle labour disputes. But who will control the Tribunal? Who will appoint the judges? Friends of the EPO Administrative Council?

schestowitz

Concerned observer

schestowitz

MAY 25, 2022 AT 11:04 AM

schestowitz

Is the EUR200 registration fee refunded in any circumstances? For example, when the appellant (eventually) prevails? If not, has the ILO AT considered whether that fee complies with principles governing (internal) access to justice?

schestowitz

Realistic Examiner

schestowitz

MAY 25, 2022 AT 12:49 PM

schestowitz

The Appeals Committee recommends reimbursement of the 200€ registration fee when the appeal is won. But Mr Campinos may still depart from this recommendation. I am not aware of ILOAT having said anything about this registration fee yet.

schestowitz

The 200€ registration fee was meant to discourage staff from filing alleged “frivolous” appeals. In the end, it fills up the pockets of the EPO on mass appeals against decisions such as the salary adjustment procedure which is melting the purchasing power of EPO staff.

schestowitz

Concerned observer

schestowitz

MAY 25, 2022 AT 3:18 PM

schestowitz

I can understand a desire to discourage “frivolous” appeals. However, in the absence of strict (and reliable) safeguards, I am extremely sceptical about the concept of an employer charging their employees for INTERNAL appeals relating to disputes over employment matters. There are simply too many inherent (and unavoidable) conflicts of interest in such a set-up. This makes the appeal fee look like nothing more than a (punitive) tax on any

schestowitz

employees who wish to try to defend their rights.

schestowitz

Disgusted Examiner

schestowitz

MAY 26, 2022 AT 9:29 PM

schestowitz

The ILOAT did indeed ‘consider’ the legality of the registration fee the EPO charges its employees when they file an internal appeal. In Judgment 4422, consideration 18, in fine, it (laconically) stated:

schestowitz

“Moreover, there is no legal basis on which to hold that the registration fee which an internal appellant is required to pay upon filing an internal appeal is unlawful or provides a ground to vitiate the final decision.”

schestowitz

Of course, the judgment does not recount which grounds the complainants invoked in support of their objection against the registration fee, nor was the Tribunal bothered about the obvious implications of the (level of the) fee on (equal) access to justice, or the fact that the opinion of the Internal Appeals Committee, a consultative body, primarily serves to enlighten the President (in most cases) on which final decision to take on an internal

schestowitz

appeal; an opinion for which the appealing EPO employees are being made to pay for, but which they receive – icing on the cake – only AFTER the President has seen it and taken his decision thereon (Article 14(1) Impl. Reg. Art. 106-113 EPO Service Regulations, giving hence the President all liberty to send the opinion back to the Internal Appeals Committee for ‘reconsideration’ if needed…).

schestowitz

Neither did the Tribunal bother to put into perspective its own case law, which emphasised that an “Organisation has an obligation to maintain a properly functioning appeal system” (Judgment 4384, consideration 7; as well as Judgment 3027, consideration 6 and Judgment 1968, consideration 5) as part of its duty of care towards its employees, with the obvious implication that it is for the Organisation to ensure the maintenance, that is, the

schestowitz

financing of the registration of internal appeals, such registration quite certainly forming part of the proper functioning of an appeal system.

schestowitz

Simona Fonzi

schestowitz

MAY 25, 2022 AT 11:53 AM

schestowitz

If they want a proper Kangaroo Court, politicians could asign disputes between the staff and the EPO to the Unified Patent Court.

schestowitz

I am sure they could amend the Rules of Procedure without any Parliamentary debate in order to do so.

schestowitz

Attentive Observer

schestowitz

MAY 25, 2022 AT 4:17 PM

schestowitz

When one reads all this one does not wonder why the EPO is not any longer an interesting employer.

schestowitz

For EPO‘s management any appeal is in essence frivolous!

schestowitz

But having to pay a fee for an internal appeal is unheard off.

schestowitz

How twisted must the mind of those having decided such a measure must be.

schestowitz

It is the negation of any justice.

schestowitz

At least in the past, the president applied to all staff a measure having been decided by the ILO-AT. Why, for the mere reason of social peace!

schestowitz

That the quality is dwindling is nothing new, but the glossy and verbose publications of the management is claiming that it has never been better!

schestowitz