●● IRC: #techbytes @ Techrights IRC Network: Sunday, July 30, 2023 ●●
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[09:46] schestowitz[TR] "Anonymous replies to my argument why the Office should stop meddling with the as-filed disclosure with the retort that the specification of the patent application as filed fulfils important functions when the granted patent is litigated. Indeed. I would even say that it is indispensible." http://ipkitten.blogspot.com/2023/07/board-of-appeal-poised-on-brink-of.html?showComment=1690579727571#c939323543586143969
[09:46] -TechBytesBot/#techbytes-ipkitten.blogspot.com | Board of Appeal poised on the brink of a referral on description amendments (T 56/21) - The IPKat
[09:46] schestowitz[TR] "Anonymous replies to my argument why the Office should stop meddling with the as-filed disclosure with the retort that the specification of the patent application as filed fulfils important functions when the granted patent is litigated. Indeed. I would even say that it is indispensible. In litigation, jurisdictions other than the EPO "keep it simple" by making that document not only necessary but sufficient. Only the EPO
[09:46] schestowitz[TR] demands wholesale editing of that document thereby setting two versions of the disclosure in opposition to each other (heaven for those seeking to put validity in issue) , thereby rendering the litigation more complex and issue-rich, rather than keeping it as simple as it can be made to be.
And all this capriciously added complexity is for what? Perhaps those administrators at the top of the EPO Ivory Tower have, even
[09:46] schestowitz[TR] since the debacle about the independence of the Boards of Appeal, reached a consensus that they, rather than the national courts, are the ones best equipped to handle patent litigation, infringement and validity, and to safeguard the interests of justice between the opposed parties, legal certainty and the public interest.
After all, let's face it, the EPO has become (but only in recent years) the only Patent Office that
[09:46] schestowitz[TR] is not held in check by judgments imposed on it by an independent judicial instance, a supervisory supreme court."
[09:46] schestowitz[TR] "The Guidelines applied at the time stated: "Finally claim-like clauses must also be deleted prior to grant, since they otherwise may lead to unclarity as to the actual scope of protection.".
The current guidelines state: "Finally, claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they otherwise may lead to unclarity on the subject-matter for which protecti
[09:46] schestowitz[TR] on is sought."
What changed to make amendments allowable?
The explanation of the section has been amended in every version without links to case law. For a clear EPC-derived position, what is going on?
Looks like a retired EPO person has become a patent attorney, so now even patent attorneys agree with the need to waste time and money fiddling with the description! How amusing!"
● Jul 30
[12:02] schestowitz[TR] > From: Wade Liu
[12:02] schestowitz[TR] > Subject: schestowitz
[12:02] schestowitz[TR] >
[12:02] schestowitz[TR] > Message Body:
[12:02] schestowitz[TR] > (Please kindly forward this to your CEO, because this is urgent. If you believe this has been sent to you in error, please ignore it. Thanks)
[12:02] schestowitz[TR] >
[12:02] schestowitz[TR] > Dear CEO,
[12:02] schestowitz[TR] >
[12:02] schestowitz[TR] > This email is from China domain name registration center, which mainly deal with the domain name registration in China. On 26-07-2023, we received an application from Hongqing Ltd requested "schestowitz" as their internet keyword and China (CN) domain names (schestowitz.cn, schestowitz.com.cn, schestowitz.net.cn, schestowitz.org.cn). But after checking it, we find this name conflict with your company name or trademark. In order to
[12:02] schestowitz[TR] deal with this matter better, it's necessary to send this message to your company and confirm whether this company is your distributor or business partner in China?
[12:02] schestowitz[TR] Hi,
[12:02] schestowitz[TR] This is a fake, an imposter.
[12:02] schestowitz[TR] They have no connection to that family name. No "schestowitz" even visited China.
[12:02] schestowitz[TR] Regards,
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[22:31] schestowitz[TR] http://ipkitten.blogspot.com/2023/07/board-of-appeal-poised-on-brink-of.html?showComment=1690731343821#c4824680209476275079 The number of people retired from the EPO becoming...The number of people retired from the EPO becoming patent attorneys can most probably be counted on the fingers of one hand.
Why go from one hamster wheel to the next?
The situation is different for people lea
[22:31] schestowitz[TR] ving the EPO before retirement. There are quite a lot of people doing so once they have passed the EQE.
Those would rather agree with the rest of the profession, rather than with the EPO.
As long as Art 84 is as it stands, adaptation of the description and deletion of claim-like clauses will be required. It might not be amusing, but it is part of life's rich tapestry. Amending the description during examinatio
[22:31] schestowitz[TR] n or post-grant to give "alkyl" its correct meaning could easily result in infringement of Art 123(2).
The "alkyl" example is one reason why only chemists should be alloweds to draft chemistry patent applications, and anyone else doing so is negligent. Am I allowed to say that? It's a regulatory requirement for attorneys to only work in areas they are competent to practice, but that would cause all s
[22:31] schestowitz[TR] orts of problems.
If the description defines alkyl in the nonsense way suggested, as is commonly done (!), the examiner should make a clarity objection. The skilled person would not read "alkyl" and understand it to include phenyl. However, picking all of these things up requires time, time EPO examiners are not being given (Chinese and other examiners pick this up). Once granted, of course, there is a clear p
[22:31] schestowitz[TR] roblem if only the claim is read, but the description definition is relevant to interpreting the claim.
But such negligence is beneficial to the applicant, yes? They have obtained a broader scope of protection, possibly the result of the examiner failing to search the broader scope. Except, the wonderful broader claim may lack novelty or be obvious, and when the valuable patent is enforced, it may be revoked.
[22:31] schestowitz[TR] In this instance, the need for bringing the description into line with the claims is addressed by patentability requirements. @Harris
The fact that as you mention the Ensygnia v. Shell EWHC decision deals with a UK national patent does not affect its relevance. The discussion of whether and which - description amendments are inadmissible new matter would be the same for the UK part of a European patent. It is indeed v
[22:31] schestowitz[TR] ery interesting that a national court provides such a detailed analysis. It is of note that the decision in s. 114 describes Art 69 EPC as an overarching principle of claim interpretation. In a not too distant future, it could be that the UPC has to delve into the subject.
Meantime, it remains to be seen how the referral suggestion of BOA 3.3.04 will fare. The EPO practice of description amendments has shown its systemic
[22:31] schestowitz[TR] toxicity : Art 123(2) issues, BOA divides over the interpretation of Art 84, over the application of Art 69 to the examination of applications, uncertainty over the description referred to in Art 69. Judging the tree from the fruit, it is evident there is a serious problem and it must be cured.
A simple solution would be to draw inspiration from the PCT ISPE Guidelines Section 5.29, which requires adaptation of the
[22:31] schestowitz[TR] description only when necessary i.e. if the terms of the claim are unclear, and states that there is no need to remove any inconsistency between the claims and the description.
[22:31] -TechBytesBot/#techbytes-ipkitten.blogspot.com | Board of Appeal poised on the brink of a referral on description amendments (T 56/21) - The IPKat
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