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[11:09]	schestowitz	https://ipkitten.blogspot.com/2022/01/can-amending-description-to-summarize.html?showComment=1641564381558
[11:09]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) - The IPKat
[11:09]	schestowitz	"
[11:09]	schestowitz	Rose, I love reading your stuff and would encourage you to keep posting with undiminished energy, promptitude and thoughtfulness. In this item though, I got a bit confused.
[11:09]	schestowitz	From your text, I took it that the TBA had revoked the patent but I see now that it disagreed with the OD, found no added matter, instead remitted, and instructed the OD to get on with its job and look at the grounds of attack under Art 100(a) and 100(b) EPC. Hooray for the Board!
[11:09]	schestowitz	Your report prompted me to wonder whether the claim in suit was a 2-parter relative to D8. It is an interesting practice point whether doubt about whether D8 does or does not disclose a "robot" is enough to resist the imposition of a c-i-t form of claim. Is that what happened here, I wonder.
[11:09]	schestowitz	Reply
[11:09]	schestowitz	Replies
[11:09]	schestowitz	Rose HughesWednesday, 5 January 2022 at 10:30:00 GMT
[11:09]	schestowitz	Thanks MaxDrei, your comments always provide some food for thought. I take your point in this case (perhaps I was guilty of journalistic tactics to encourage you to read to the end!). I have adding some clarification.
[11:09]	schestowitz	Reply
[11:09]	schestowitz	Patent RobotWednesday, 5 January 2022 at 11:27:00 GMT
[11:09]	schestowitz	The EPC does not require to amend the description to cite the prior art found after the filing date, so the EPO should finally stop requesting these amendments, especially now that you can find the whole file history, including the relevant prior art, in the EPO Register.
[11:09]	schestowitz	Amending the description is useless and may even lead to Art. 123(2) issues.
[11:09]	schestowitz	Reply
[11:09]	schestowitz	Replies
[11:09]	schestowitz	AnonymousWednesday, 5 January 2022 at 14:52:00 GMT
[11:09]	schestowitz	On a wider point, the EPC does not require several things, but the meanings and limits of each article/rule have to be considered by the BoAs and EB.
[11:09]	schestowitz	On your specific point, Rule 42(1)(b) EPC would suggest otherwise. It does not expressly say when this should happen but it certainly doesn't preclude adding prior art identified after filing. 
[11:09]	schestowitz	A blanket refusal to amend the description is not helpful.
[11:09]	schestowitz	Amending the claims is useless and may even lead to Art. 123(2) issues. Just construe them in a way that they are patentable. 
[11:09]	schestowitz	Amending poor quality hand drawn figures is useless and may even lead to Art. 123(2) issues. The public has no right to see that for which a monopoly has been granted.
[11:09]	schestowitz	Amending unclear claims is useless and may even lead to Art. 123(2) issues. Let's ignore Article 84 EPC and the public can start guessing what the monopoly covers.
[11:09]	schestowitz	Most 123(2) issues often arise from a poorly drafted application. But of course, drafting better applications would never be the solution for some. Just blame everyone else and their pesky rules.
[11:09]	schestowitz	AnonymousThursday, 6 January 2022 at 10:13:00 GMT
[11:09]	schestowitz	Your comment is quite nave when you consider T 0471/20. This article is about a patent that was revoked for the way the prior art was acknowledged. This is a formality and it is hard to imagine many other patent offices reaching this decision. Admittedly, the decision was overturned on appeal, but these decisions are commonplace from opposition divisions, which are frequently revoking perfectly good patents on technicalities. When you see 
[11:09]	schestowitz	decisions like this, is it really any wonder that some representatives are unwilling to amend the description? Any safe European practitioner avoids amending the claims and the description unnecessarily. 
[11:09]	schestowitz	Rule 42 actually says that certain background art shall "preferably" be cited in the description. The EPO's practice is that it is mandatory to do so and examiners will refuse applications for not doing so. This is an unusual interpretation of preferably. If it is actually mandatory to do so, perhaps Rule 42 should be amended to remove "preferably" so that the EPO's practice is supported by the EPC. I hope that you see the irony.
[11:09]	schestowitz	AnonymousThursday, 6 January 2022 at 12:20:00 GMT
[11:09]	schestowitz	My comment has be taken in the context of there being supposedly no legal basis in the EPC to reference prior art. Between the Rule itself and the settled law (thanks DXT) it is wrong to say this is not required.
[11:09]	schestowitz	The same criticism could be levelled at any article/rule. Article 54 says nothing about how to assess what is new in the prior art. Article 123 says nothing about how to assess extended SM. 
[11:09]	schestowitz	As to the decision, the issue arose from the applicant's chosen wording to describe D8, not the requirement to reference D8. This opened the door to added-matter problems via Art. 69 (this point is not settled). But of course place all the blame on the pointless formality and OD who were misguided by a rogue practitioner, and not the applicant who freely chose to describe D8 as a non-robot. Referencing D8 by its title alone would have been enough, 
[11:10]	schestowitz	something a safe practitioner would do.
[11:10]	schestowitz	It's irrelevant whether other patent offices would decide differently. The EPC is its own system. When you play the game at the EPO, you are bound by their rules, and you can only bend them so far.
[11:10]	schestowitz	I agree that claims and description should not be amended unnecessarily. When is it necessary? For some, the only justification to amend the application (and only the claims at that) is to address patentability, with no regard to added-matter, clarity, etc. That cannot be the correct. We can't just wish Articles 84 and 123 EPC away. 
[11:10]	schestowitz	AnonymousThursday, 6 January 2022 at 13:42:00 GMT
[11:10]	schestowitz	Finally, Rule 42(1)(b) EPC requires the description to indicate the background art. Doing this by citation is indeed said to be preferable, but that does not negate the requirement to indicate relevant art.
[11:10]	schestowitz	Reply
[11:10]	schestowitz	MaxDreiWednesday, 5 January 2022 at 17:59:00 GMT
[11:10]	schestowitz	That last comment from "anonymous" falls into the category: any problem encountered by Applicant at the EPO is 100% self-inflicted by "poor drafting", and therefore nobody's fault but theirs.
[11:10]	schestowitz	Such comments remind me of the uttereances one hears from time to time from within the EPO. One suspects they come from people who have never gone through the experience of seeing their own claims and specification undergo prosecution at the EPO, and then post-issue opposition. It isn't as easy as some within the Ivory Tower suppose, to secure for the client a scope of protection commensurate with the client's contribution to the art, when the EPO 
[11:10]	schestowitz	applies unimaginatively and brutally its by now unassailable "Gold Standard". One would hope for more minds within the EPO open to, and "willing to understand", the real world of the person skilled in the art.
[11:10]	schestowitz	Reply
[11:10]	schestowitz	Replies
[11:10]	schestowitz	AnonymousWednesday, 5 January 2022 at 20:42:00 GMT
[11:10]	schestowitz	I am the same anonymous to whom you refer. 
[11:10]	schestowitz	May I suggest you are projecting. It is never 100% anyones fault. There is surely a middle ground between perfect specs that will meet the gold standard 100% of the time and actual poor drafting that defines each feature so vaguely to be meaningless, and yet optional. Then there is the issue of coming up with entirely new features altogether during prosecution to the extent intermediate generalisation case law is of no use. 
[11:10]	schestowitz	Anyone who has a basic understanding of the relevant technology should have a rough idea of what might be covered by a patent when reading it. They should not have to come up with all permutations of features themselves. Its really not a lot to ask for a 20 year monopoly. 
[11:10]	schestowitz	My response to patent robot was to illustrate the absurdity in their position that amending descriptions is useless, whilst seemingly concerned with 123(2) compliance. 
[11:10]	schestowitz	For the record, I am actually a practitioner and have both won and lost on 123(2). I can in all honesty say all findings were correct. It may be a harsh rule, but it gives you and the public a reasonable level of certainty.
[11:10]	schestowitz	MaxDreiThursday, 6 January 2022 at 10:31:00 GMT
[11:10]	schestowitz	Well said, that anonymous. I too am a practitioner who has won and lost on 123(2). I too find the Gold Standard "harsh" but that's of course just fine and dandy in those cases when I'm representing the Opponent. As a representative, one is always at risk of being convinced by the power of one's own arguments. Better to attend oral proceedings as a interested member of the public, disinterested in the outcome, to assess the fairness of the EPO's 
[11:10]	schestowitz	harsh Gold Standard in actual practice.
[11:10]	schestowitz	The benefit for legal certainty is evident, as soon as it is a US law firm from which one takes one's instructions. In the USA, it is often intimated that the patent system is a lottery. In my experience, US lawyers are bemused by the confidence with which experienced European patent attorneys (thanks to the Gold Standard) assess from the get go whether i) matter has been added ii) D1 destroys novelty or iii) Paris Convention priority is or is not 
[11:10]	schestowitz	there. 
[11:10]	schestowitz	Much criticism of the EPO's people and established jurisprudence is unfair, emanating from representatives who have lost an important case and need to convince their client that it is the EPO to blame, not them.
[11:10]	schestowitz	Reply
[11:10]	schestowitz	DXThomasWednesday, 5 January 2022 at 18:46:00 GMT
[11:10]	schestowitz	Again, in my humble opinion, a big upheaval for nothing much. 
[11:10]	schestowitz	The question whether the prior art has to be acknowledged is not in dispute and cannot be considered adding subject-matter provided the acknowledgement is purely factual.
[11:10]	schestowitz	The case was settled in the 80ties.
[11:10]	schestowitz	I refer to Point V of the headnote in T 11/82:
[11:10]	schestowitz	V. The mere addition to the description of a reference to prior art cannot reasonably be interpreted as the addition of "subject- matter", contrary to Article 123(2) EPC. Nor is it inevitable that the addition of a discussion of the advantages of the invention with reference to such prior art would constitute a contravention of that Article. Whether it did so would clearly depend on the actual language used and the circumstances of the case.
[11:10]	schestowitz	I also refer to T 276/07 in which it was held that the amendment to the description to add an acknowledgement of the prior art does not bring any new content to the disclosure of the invention, even if it could be considered to put the invention in a different light.
[11:10]	schestowitz	Any effect or advantages linked with the new prior art can however be considered as adding subject-matter if the effect emphasised is not deductible by a person skilled in art from the application as filed. For the same token, acknowledgement of the prior art revealed by the search report may only be factual, cf. F-II, 4.3.
[11:10]	schestowitz	It should also not be forgotten that the passages relating to background art in the application as filed cannot serve as a basis for an amendment during examination/opposition. See e.g. T 1084/06, T 912/08 or T 1652/06.
[11:10]	schestowitz	The present decision is simply putting matters straight and the OD was ill inspired when it considered the amendment introducing D8 adding subject-matter. 
[11:10]	schestowitz	I would also allow myself to add that the document acknowledged as closest prior art in the description of the patent is always part of the opposition proceedings, cf. T 536/88, T 541/98, T 454/02, T 86/03.
[11:10]	schestowitz	The whole system foreseen by case law and the upheaval created by T 1989/18 is taking proportions which are well beyond belief. 
[11:10]	schestowitz	To sum it up: adding a mention of the prior art and especially indicating the closest prior art does not infringe Art 123(2). That in some jurisdictions, e.g. in the US it might have consequences is irrelevant for the EPO which is only bound by the EPC.
[11:10]	schestowitz	Reply
[11:10]	schestowitz	francis hagelThursday, 6 January 2022 at 14:50:00 GMT
[11:11]	schestowitz	I fully agree with Patent Robot. Amending the description to mention a prior art document is useless since the entire file history is available online and opens up 123(2) issues as clear from this case. Ths is sheer waste of time and money for the EPO and the applicant, this is just shooting in one's foot. The applicant should resist an ED request to amend the description whenever this could raise a 123(2) issue.
[11:11]	schestowitz	Reply
[11:11]	schestowitz	Replies
[11:11]	schestowitz	AnonymousThursday, 6 January 2022 at 15:12:00 GMT
[11:11]	schestowitz	Amending the claims to overcome a prior art document is useless since the entire file history is available online and opens up 123(2) issues. Everyone can clearly figure out the patentable bit. 
[11:11]	schestowitz	The applicant in this case just didnt mention the prior art, they incorrectly characterised it. It takes no meaningful time or money to cite a document.
[11:11]	schestowitz	Reply
[11:11]	schestowitz	Patent RobotThursday, 6 January 2022 at 16:26:00 GMT
[11:11]	schestowitz	Rule 42(1)(b) EPC: The description shall indicate the background art which, AS FAR AS IS KNOW TO THE APPLICANT, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art.
[11:11]	schestowitz	Therefore, once an applicant indicates in the application the background art KNOWN TO HIM AT THE FILING DATE, there is nothing in the EPC which should force him to add the background art found BY THE EPO.
[11:11]	schestowitz	The EPO tradition of adding the citation of the prior art in the description comes from the time where the file wrapper was hard to obtain but nowadays the cited documents and the discussion on their relevance can be found in real time in the online Register, so that amending the description just for this purpose is totally useless, a waste of time and money. Moreover, it may even create 123(2) issues, as we have seen here, and further formal issues 
[11:11]	schestowitz	(e.g. due to the page renumbering).
[11:11]	schestowitz	P.S.: which other patent office has the same requirement?
[11:11]	schestowitz	Reply
[11:11]	schestowitz	Replies
[11:11]	schestowitz	AnonymousThursday, 6 January 2022 at 18:11:00 GMT
[11:11]	schestowitz	"AT THE FILING DATE" is not in Rule 42(1)(b) EPC. Cited art is known to the applicant.
[11:11]	schestowitz	In any case, the EPC doesn't expressly require lots of things, and the meanings have been clarified by the BoAs and EB, the same with any other legal system.
[11:11]	schestowitz	One's dislike for this requirement does not make it go away. For it to go away, Rule 42(1)(b) EPC needs to be deleted. Pointing to a conflict with Article 123(2) is tenuous at best, as found by the Board in this case. 
[11:11]	schestowitz	Other patent offices' requirements are irrelevant.
[11:11]	schestowitz	FragenderThursday, 6 January 2022 at 20:00:00 GMT
[11:11]	schestowitz	In German patent law there is 34 Abs. 7:
[11:11]	schestowitz	"Auf Verlangen des Deutschen Patent- und Markenamts hat der Anmelder den Stand der Technik nach seinem besten Wissen vollstndig und wahrheitsgem anzugeben und in die Beschreibung (Absatz 3) aufzunehmen."
[11:11]	schestowitz	Rough translation: On request of the DPMA the applicant has to state the state of the art to his best knowledge completely and truthfully and include it in the description.
[11:11]	schestowitz	There is a corresponding paragraph in the PatV ( 10 Abs. 2 lit. 2) requiring this (for the initial description).
[11:11]	schestowitz	Many applicants don't name any state of the art (if the examiner finds state of the art by that very applicant often 124 - duty to truthfulness - is mentioned...).
[11:11]	schestowitz	Examiners usually require the state of the art found during examination to be added to the description. Using 34 Abs. 7, a refusal to do so will lead to a rejection of the application. Often, this is a nice shortcut for examiners and also the BPatG, when an applicant gives up on the application but a written decision is necessary, as this is usually the shortest possible decision.
[11:11]	schestowitz	Patent RobotFriday, 7 January 2022 at 08:52:00 GMT
[11:11]	schestowitz	Ok, you have convinced me: it is now time to cancel or at least amend Rule 42(1)(b) EPC and the corresponding German rule so that applicants do not have to USELESSLY amend the description.
[11:11]	schestowitz	FragenderFriday, 7 January 2022 at 10:46:00 GMT
[11:11]	schestowitz	@Patent Robot
[11:11]	schestowitz	I see this differently. In German patent proceedings, the claims are construed using the patent publication. The prosecution file could be used only in exceptional cases. So while the public may be informed about the state of the art, the court would not necessarily consider this.
[11:11]	schestowitz	And, actually, putting the state of the art into the description can be helpful to the applicant, as the BGH states the claims should (usually) be construed to not cover the state of the art, from which the applicant tries to differ. So, without mentioning the state of the art, the claims might be construed wider and the state of the art then lead to invalidity of their matter. As long as the German courts deal with validity-proceedings for EP-
[11:11]	schestowitz	patents, I think it would be advisable to mention the state of the art in the description.
[11:11]	schestowitz	Following from this, I think the description of the state of the art could in extreme cases lead to "added matter". To be honest, unless this is done on purpose, I can not imagine a real world case for this happening. 
[11:11]	schestowitz	Reply
[11:11]	schestowitz	AnonymousThursday, 6 January 2022 at 16:53:00 GMT
[11:11]	schestowitz	It seems to this reader that the best way to acknowledge prior art is for the examiner to cite it such that it appears on the front page of the B-spec, the agent then being free to deal with other matters instead of having to take a case to court to avoid complete revocation over something so minor.
[11:11]	schestowitz	Reply
[11:12]	schestowitz	MaxDreiThursday, 6 January 2022 at 17:52:00 GMT
[11:12]	schestowitz	All this talk about the online EPO file as the basis of claim construction strikes me as a distraction. The UK Supreme Court, faced with a claim to construe, asks itself what the skilled reader would conclude from the B publication as answer to the question "What was the writer of the claim using the words of the claim to mean". To perform that task, the court takes the B publication as a single coherent document. Accordingly, it strikes me that it 
[11:12]	schestowitz	is not just the EPO that wants to see in the B publication conformity, and the invention set in the context of the prior art, but also the court. It's in the public interest too. A patent is a restraint on free trade. It should be granted only when Applicant presents a case persuasive enough to cancel free trade. Applicant protects an invention in words of their own choosing so they'd better be positively persuasive ones. Applicant lives or dies, 
[11:12]	schestowitz	not by the sword, but by words of their own choosing. Long may it continue to be so.
[11:12]	schestowitz	Reply
[11:12]	schestowitz	Replies
[11:12]	schestowitz	Patent RobotFriday, 7 January 2022 at 09:18:00 GMT
[11:12]	schestowitz	There is no need to amend the description to convince an examiner to grant a patent. A letter and claim amendments are usually sufficient. Introducing the discussion on novelty and inventive step in the description is useless and moreover opens a door to art. 84, 123(2) and (3) EPC issues, considering how strict the EPO is on these provisions.
[11:12]	schestowitz	IMHO the description should never be amended, unless there are evident mistakes.
[11:12]	schestowitz	AnonymousFriday, 7 January 2022 at 10:35:00 GMT
[11:12]	schestowitz	Your comments focus on the way things should be IYHO, not how they are. Some of us have to live in the the real world where the description and Article 84 EPC just cannot be ignored.
[11:12]	schestowitz	Article 84 EPC needs amended or deleted to achieve your goal. What's stopping you moving this forward yourself? It is you that has the problem with it after all. Perhaps draft and file a test application that will get refused under Article 84 for not amending description, take it to BoA, and request a referral to EB and then explain why Article 84 has been leading us down the garden path for nearly 50 years.
[11:12]	schestowitz	Patent RobotFriday, 7 January 2022 at 14:06:00 GMT
[11:12]	schestowitz	As I wrote in the other thread, there is nothing in the EPC that requires the description to be supported by the claims (art. 84 requires the OPPOSITE), therefore the description should not be adapted to the claims and in particular there is no need at all to delete subject-matter not covered by the claims. Such a deletion may even raise issues of art. 123(2) and (3) EPC.
[11:12]	schestowitz	AnonymousFriday, 7 January 2022 at 15:05:00 GMT
[11:12]	schestowitz	You clearly have an understanding of the EPC at odds with accepted jurisprudence that the description should correspond to the claims. 
[11:12]	schestowitz	You interpret article 84 literally and ignore all BoA decisions who have interpreted it differently (the recent decision doesnt even address the contradictory decisions, and has some seriously questionable reasoning) Even your literal interpretation has problems. For the description to support the claims, either the description or the claims can be amended for this to occur. Article 84 EPC is silent on how this can occur. So no, Article 84 EPC 
[11:12]	schestowitz	does not require the opposite as you put it.
[11:12]	schestowitz	Reply
[11:12]	schestowitz	AnonymousThursday, 6 January 2022 at 19:33:00 GMT
[11:12]	schestowitz	Reading this thread makes me wonder what role do practitioners have to play in this?
[11:12]	schestowitz	Ultimately, this line of attack was advanced by a practitioner. Some might say the rules are there to be exploited. That may be true but the choice to do so is entirely yours however.
[11:12]	schestowitz	Reply
[11:12]	schestowitz	Proof of the puddingFriday, 7 January 2022 at 12:08:00 GMT
[11:12]	schestowitz	It is important to stand back and view this case in context. That is, much like T 1989/18, it is just one decision that may or may not be followed by other Boards of Appeal.
[11:12]	schestowitz	This means that, unless and until the view of the Board in T 0471/20 is established as "settled" case law, it would make sense for applicants to (continue to) take care not to add any text to even the "Background" section of the description that could arguably be viewed as introducing a subjective interpretation of the disclosures of a prior art document.
[11:12]	schestowitz	It also means that, despite the ruling in T 1989/18 (and despite how convincing one might find the reasoning of that decision), there is as yet no clear reason for the EPO to abandon its long-established practice of requiring the description to be brought into line with the claims as allowed.
[11:12]	schestowitz	Lastly, it also means that, despite the issuance of Board of Appeal decisions that demanded a "strict" approach to adaptation of the description, the EPO was under no obligation whatsoever to update its Guidelines for Examination to effectively demand adherence to such a strict approach. The decisions in T 1989/18 and T 0471/20 illustrate perfectly why taking such a hard-line stance was not only legally questionable but also extremely "applicant-
[11:12]	schestowitz	unfriendly".
[11:12]	schestowitz	In this regard, it is noteworthy that the EPO did not consult with its users before introducing changes to the Guidelines that have been strongly opposed by the patent profession. One has to question why this happened, especially now that the EPO appears to be prepared to backtrack at the earliest possible opportunity. Based upon the evidence, my conclusion is that the EPO now rules by diktat, unless it is forced to do otherwise. Other evidence 
[11:12]	schestowitz	supporting this includes so-called "consultations" that the EPO has recently conducted (such as that on Art 15a RPBA) ... where it seems that the conclusion is predetermined, and where those expressing different or contradictory views are simply ignored.
[11:12]	schestowitz	"
[11:12]	schestowitz	https://ipkitten.blogspot.com/2021/12/breaking-board-of-appeal-finds-no-legal.html?showComment=1641370256032
[11:12]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18) - The IPKat
[11:12]	schestowitz	"
[11:12]	schestowitz	MaxDreiMonday, 27 December 2021 at 09:22:00 GMT
[11:12]	schestowitz	For me, this decision is a bolt out of the blue but, on reflection, perhaps we should have been expecting it. Striking out the requirement for strictly conforming the description to the allowed claims will deliver a huge boost (to use the technical term de jour) to efficiency at the EPO. Such a huge uplift in efficiency would clear the way for management to reduce the numbers of highly paid EPo Examiners quite considerably. Besides, the Americans 
[11:12]	schestowitz	don't do it, and their courts can still manage to do patent litigation, so why should we Euro's worry, eh?
[11:12]	schestowitz	One would have thought that Boards of Appeal are unswayed by thoughts about efficiency. Not any more though. The topic seems to weigh more and more heavily in their delibarations. Perhaps the members of this deciding Board are all still young, in tune with the times, and at this stage of their career within the EPO find thoughts about improving efficiency particularly persuasive.
[11:12]	schestowitz	Meanwhile, if past performance is any guide to the immediate future, we shall all have to continue delivering strict conformity, that is, until the Examiners' Bible, The Guidelines, suffers its next revision by management.
[11:12]	schestowitz	Reply
[11:13]	schestowitz	Attentive ObserverMonday, 27 December 2021 at 11:19:00 GMT
[11:13]	schestowitz	Dear Max Drei,
[11:13]	schestowitz	I can agree with you that it would help if the description would not have to be adapted to the new claims like in the US.
[11:13]	schestowitz	There are however two conditions to fulfil:
[11:13]	schestowitz	1) the last sentence of Art 84 should be deleted, and this needs an amendment of the EPC other than by "secondary legislation";
[11:13]	schestowitz	2) like in the US, the behaviour of the applicant/proprietor during examination should be taken into account.
[11:13]	schestowitz	The problem is that there is a fluctuating legislation about the doctrine of equivalents. This results to a large part of the refusal of the contracting state to adopt a definition of equivalents in the protocol on Art 69 during the diplomatic conference of 2000. An Art 2 has been added, but the Art 3 about equivalents has been rejected.
[11:13]	schestowitz	The EPO cannot cater for the various ways equivalents are dealt with by the national jurisdiction and can thus not accept that what is claimed is not really what is claimed but could also be something else.
[11:13]	schestowitz	By the way the BA in T 1989/18 seems to have confused clarity of the claims as such (first part of Art 84) and support by the description (last sentence of Art 84).
[11:13]	schestowitz	Last but not least, it is, at least for the time being, a single decision.
[11:13]	schestowitz	Should the Guidelines be adapted, it might indeed take quite a while. 
[11:13]	schestowitz	How long did it take to remove the purposive selection in the Guidelines?
[11:13]	schestowitz	The three points test = ex essentiality test is still in the Guidelines in spite of the heavy criticism by the BA. 
[11:13]	schestowitz	Reply
[11:13]	schestowitz	AnonymousMonday, 27 December 2021 at 11:27:00 GMT
[11:13]	schestowitz	There is a lot of discussion on LinkedIn about this decision.
[11:13]	schestowitz	There are two distinct threads but both are about the same decision:
[11:13]	schestowitz	https://www.linkedin.com/feed/update/urn:li:activity:6880822812777443328/
[11:13]		-TechBytesBot/#techbytes-www.linkedin.com | Rose Hughes on LinkedIn: Board of Appeal finds no legal basis for the requirement to amend | 106 comments
[11:13]	schestowitz	https://www.linkedin.com/feed/update/urn:li:activity:6880931690655584256/
[11:13]		-TechBytesBot/#techbytes-www.linkedin.com | Sebastian Roth on LinkedIn: T 1989/18 (Adaptation of the description/HOFFMANN-LA ROCHE) of 16.12.2021
[11:13]	schestowitz	Reply
[11:13]	schestowitz	AnonymousMonday, 27 December 2021 at 14:33:00 GMT
[11:13]	schestowitz	Shouldn't this pave the way for a further referral by the President to the EBoA? Clearly, conflicting decisions by different Boards concerning a point of fundamental nature.
[11:13]	schestowitz	Reply
[11:13]	schestowitz	Attentive ObserverMonday, 27 December 2021 at 15:26:00 GMT
[11:13]	schestowitz	There is one decision T 1989/18 which goes against T 1808/06 which is the reference in matters of adaptation of the description.
[11:13]	schestowitz	Should the president file a referral for every decision which is contrary to another one the legal department of the EPO would only be busy with such matters. This is not reasonable.
[11:13]	schestowitz	To me there is one referral which could be useful: depending on the BA to which the file goes, the absence of a measuring method is considered sometimes as a matter under under Art 83 which leads to the revocation of the patent. For other BA it is a mere problem of Art 84 which under G 3/14 cannot be discussed in opposition. 
[11:13]	schestowitz	This lottery effect should be brought to an end, and if a BA is not prepared to refer the question to the EBA, then the president should do so. 
[11:13]	schestowitz	The adaptation of the description seems to become kind of fixation that puts representatives in a trance.
[11:13]	schestowitz	Reply
[11:13]	schestowitz	Replies
[11:13]	schestowitz	AnonymousMonday, 27 December 2021 at 16:56:00 GMT
[11:13]	schestowitz	Arguing that we shouldn't seek legal certainty in one area because there are other bigger issues in another area is a fallacy. 
[11:13]	schestowitz	Description amendments put us in a trance because they waste our clients' money and do not improve legal certainty enough to justify the additional costs. When I am prosecuting, description amendments are purely a waste of my time and the client's money. When I am reviewing third parties' patents, it makes essentially no difference to my infringement opinions whether the description has been amended. So what is the point, particularly when the legal 
[11:13]	schestowitz	justification is so weak? Article 84 requires the description to support the claimed invention, but a bridge can support many cars simultaneously.
[11:13]	schestowitz	Reply
[11:13]	schestowitz	MaxDreiMonday, 27 December 2021 at 17:51:00 GMT
[11:13]	schestowitz	I'm a representative, Attentive, but I'm not one of those put into a trance. I am somwhat equivocal about the whole issue of conforming the description. If we see the description as a historical record of what was filed by the Applicant on the filing date of the application, then any effort to conform it to the allowed claims is misguided. Conversely, if the description of the B publication is to be that which informs the task of construing the 
[11:13]	schestowitz	issued claims, then it should be conformed.
[11:13]	schestowitz	For me, the more interesting choice is whether to excise passages of the description or, instead, hang on to them but preface them with words indicating that they are not descriptions of subject matter within the ambit of the claim. I find that my decision varies from case to case, often turning on Art 83 EPC considerations. Sometimes I want to hang on to those passages but in other cases I am thinking that the scope of infringement by equivalent is 
[11:14]	schestowitz	best optimised by excision of such passages of the descrption. As ever , Applicant has to decide what text goes to issue.
[11:14]	schestowitz	Reply
[11:14]	schestowitz	Attentive ObserverWednesday, 29 December 2021 at 19:50:00 GMT
[11:14]	schestowitz	Dear Max Drei,
[11:14]	schestowitz	I only used the word trance as I have rarely seen a topic in which so many representatives commented on a decision. 
[11:14]	schestowitz	You might not have spotted the cheek in my tongue. 
[11:14]	schestowitz	I fully agree with your statement about the B publication, but construing the claims does not mean for me leaving in the description statements which could put doubts about what the claim cover.
[11:14]	schestowitz	Reply
[11:14]	schestowitz	DXThomasWednesday, 29 December 2021 at 20:11:00 GMT
[11:14]	schestowitz	I would like to draw the attention to T 1399/17 which came to a different conclusion.
[11:14]	schestowitz	As the claims amended during the OP before the OD which lead to maintenance in amended form were not adapted to the description and hence left doubts about the scope of protection, the MR was not allowable. 
[11:14]	schestowitz	https://www.epo.org/law-practice/case-law-appeals/recent/t171399eu1.html
[11:14]	schestowitz	See Point 2 of the reasons
[11:14]		-TechBytesBot/#techbytes-www.epo.org | EPO - T 1399/17 (Balanced myristate- and laurate-containing edible oils/BRANDEIS) of 5.3.2021
[11:14]	schestowitz	Reply
[11:14]	schestowitz	MaxDreiSaturday, 1 January 2022 at 23:44:00 GMT
[11:14]		*psydroid4 (~psydroid@cqggrmwgu7gji.irc) has joined #techbytes
[11:14]	schestowitz	I suppose this comments thread has gone to sleep now but, if not, I offer the following comment and hope for reaction.
[11:14]	schestowitz	I find para 5. of the "reasons"in the written Decision somewhat superficial because it fails to address the question what does the word "support" mean (in the context of Art 84 EPC). Does it mean i) "backs up" or "corroborates", or does it mean ii) "enables" the claimed subject matter.
[11:14]	schestowitz	Suppose I file at the EPO, with a claim to the feature combination A+B+C+D, the EPO searches and finds in prior publication P1 exactly that feature combination. In reply I file a 2-part independent claim to "A+B+C+D characterized by X". I leave the description unamended, whereby it continues to declare that the invention is A+B+C+D. That was true when the patent application was filed but it is manifestly false, as soon as D1 is brought to light. The 
[11:14]	schestowitz	unamended WO description text enables the granted claim but does it corroborate the granted claim? I think not. Consider witness testimony at trial. Witness A gives evidence of fact and, later, Witness B gives evidence which flatly contradicts that given earlier by A. Does Witness B "support" Witness A? Isn't that contention a bit of a stretch?
[11:14]	schestowitz	Reverting to Para 5 of the Reasons, after the first two sentences, the text simply recites the constraints on using the description to construe the claim. But just because you can't use the description to get to an artificial meaning for the claim does not mean that it is obligatory and in all cases and circumstances to construe the claim as if you have not already read the description (or that the description doesn't even exist). I mean, the B 
[11:14]	schestowitz	publication is a single document with several parts. One supposes that the legislator envisaged that the person construing the claim would do it only after reading all the parts of the document, to gain a cumulative undertsanding of its teaching. Shouldn't those different parts then be rendered consistent with each other, to spare the court construing the claim unnecessary stress and confusion? If a description in an EPO B publication flatly 
[11:14]	schestowitz	contradicts the granted claim in regard to what the subject invention is, to what extent does that description "support" that claim? In other words, will an enabling description always satisfy the Art 84 requirement that it "support" the claim, regardless how egregiously the description contradicts the claim in its statements of what the invention is?
[11:14]	schestowitz	The EPO has an ongoing practical problem with the strictness of its Gold Standard. Applicants with a deserving invention nevertheless often find themselves in the Bermuda Triangle, needing to amend to comply with Art 84 but unable to do so without offending one or both of Art 123(2) or 84. I wonder whether the motivation for this Decision is to reduce the number of deserving inventions that perish in the Bermuda Triangle. The problem with that is 
[11:14]	schestowitz	that easing the requirement to conform the description strictly to the allowable claims will do nothing to help in that regard.
[11:14]	schestowitz	Alternatively, the EPO Boards of Appeal are looking for ways to remove aspects of practice peculiar to the EPO (of which conforming the description is one) which increase prosecution costs at the EPO and which therefore irritate bulk corporate EPO filers and so occupy their powerful lobby. 
[11:14]	schestowitz	Reply
[11:14]	schestowitz	Replies
[11:14]	schestowitz	AnonymousSunday, 2 January 2022 at 16:00:00 GMT
[11:14]	schestowitz	Thanks for sharing your thoughts. As to your first point, an applicant submits the application with the belief that the invention as described is patentable. If the examining body of competent jurisdiction disagrees, the applicant has an opportunity to amend the claims until they are found to be allowable, or to appeal the refusal. However, any "concession" made by the applicant to obtain a patent is not admission that the allowed claims define the 
[11:14]	schestowitz	broadest scope of the invention. Rather, it is a compromise offered in exchange for a grant of IP rights (better to get something than to get nothing). Thus, it is not necessarily a contradiction for the description of the invention to be broader than the allowed claims if one (correctly) presumes that the claims, and not the description, define the scope of protection of the granted patent. As long as the scope of the claims are clear (as required 
[11:14]	schestowitz	by the EPC), then any description broader than the claims can be understood to be beyond the scope of the patent rights and not confused as to being some alternative interpretation of those rights (that is what the claims are for).
[11:14]	schestowitz	The problem with the Gold Standard (other than the tension between Art 84 and Art 123(2)) is that there is no clear requirement for amending the description. From a practical standpoint, most patents are shelved. The few that are asserted are likely to have sufficient value that the parties (either on their own or through the courts) can spend the time and money to litigate what the patent covers and what it doesn't. This acknowledges that the 
[11:14]	schestowitz	patent examiner doesn't, and shouldn't, have the final word in an ex parte proceeding. While the goal of clarity is admirable, and we should want to reduce the number of bad patents that are granted, it also seems like forcing the applicant to commit to the Examiner's interpretation prior to grant is like putting the cart before the horse because patents are not self-enforcing. In the U.S., the USPTO (for better or for worse) has adopted the 
[11:14]	schestowitz	broadest reasonable interpretation standard in an attempt to mitigate these sorts of post-grant interpretation issues. If an Examiner believes that the claims are too broad, then the Examiner should make a refusal on that basis and not, instead, force the applicant to hew to the Examiner's interpretation of what the invention is (as opposed to what aspect of the invention the applicant has agreed the claims cover).
[11:14]	schestowitz	MaxDreiMonday, 3 January 2022 at 17:52:00 GMT
[11:14]	schestowitz	Excellent arguments, Anonymous. They reminded me of the Pemetrexed litigation, in which the courts gave the claims a wider scope of protection than their literal wording would seem to allow. In that case, an unconformed description might have been more helpful to the court than one strictly conformed to the claims after prosecution amendment. Where's the harm in everybody agreeing that if Applicants wants it, the "support" requirement of Art 84 EPC 
[11:14]	schestowitz	can still be met even if the description remains as filed, even on into the B publication?
[11:14]	schestowitz	One consequence of the importation of a DoE (Doctrine of Equivalents) into the EPC is that it wipes out the ages-old maxim that what comes after and infringes would, if coming before, destroy novelty. Could it be that an unintended consequence of the arrival of the DoE is that it clears the way for descriptions to go to B publication without being conformed?
[11:14]	schestowitz	Reply
[11:14]	schestowitz	Patent RobotTuesday, 4 January 2022 at 09:07:00 GMT
[11:15]	schestowitz	Art. 84 EPC requires the claims to be supported by the description (to avoid that what is claimed cannot be found also in the description).
[11:15]	schestowitz	However, there is nothing in the EPC that requires the descriiption to be supported by the claims.
[11:15]	schestowitz	Reply
[11:15]	schestowitz	DXThomasTuesday, 4 January 2022 at 21:18:00 GMT
[11:15]	schestowitz	Dear Max Drei,
[11:15]	schestowitz	It is worth noting that the chair in T 1989/18 was simply deputising. 
[11:15]	schestowitz	By the way, M.Harrisson is chairing BA 3.2.06 and the present decision was taken by BA 3.3.04.
[11:15]	schestowitz	To come back on the case, why on earth does a deputising chair find it necessary to come up with such a decision, even if he is the deputy chair of the BA?
[11:15]	schestowitz	Was the legal member wanting to show off? 
[11:15]	schestowitz	The description has to be adapted to the claims and most of the boards require it. 
[11:15]	schestowitz	When they remit after having found some claims allowable, they remit for further prosecution which mostly means adapting the description. Sometimes they even say so. 
[11:15]	schestowitz	In the absence of the applicant or the proprietor at the OP, most BA refuse the application or revoke the patent. Some are more lenient and remit in spite of the absence of the proprietor. Are all those BA so wrong that they need a telling off by BA 3.3.04?
[11:15]	schestowitz	If the description does not need adaptation then the last sentence of Art 84 should be deleted. But then, like in the USA, the behaviour of the applicant should be taken into account when he starts an infringement action.
[11:15]	schestowitz	To me it was exactly the Pemetrexed case which lead me to think that it was the description which was not amended correctly which caused the upheaval. During the whole examination the applicant wanted a quick decision and accepted to limit its claims to pemetrexed disodium. 
[11:15]	schestowitz	The applicant drew a distinction between subject matter which is relevant to the invention which is indicated as being to which the present invention generally relates and the subject matter provided by the invention which is the subject matter claimed. The applicant further highlighted that the reduction of toxicity of the anti-folate in the use of the combination therapy is relevant and should be retained. 
[11:15]	schestowitz	The only combination therapy ever disclosed or envisaged during examination disclosed was pemetrexed disodium + the anti-folate, i.e. vitamin B12. 
[11:15]	schestowitz	This should not have been left in the description.
[11:15]	schestowitz	Reply
[11:15]	schestowitz	Replies
[11:15]	schestowitz	Patent RobotWednesday, 5 January 2022 at 08:37:00 GMT
[11:15]	schestowitz	As I wrote before, there is nothing in the EPC that requires the description to be supported by the claims (art. 84 requires the OPPOSITE), therefore the description should not be adapted to the claims and in particular there is no need at all to delete subject-matter not covered by the claims. Such a deletion may even raise issues of art. 123(2) and (3) EPC.
[11:15]	schestowitz	Reply
[11:15]	schestowitz	MaxDreiWednesday, 5 January 2022 at 08:10:00 GMT
[11:15]	schestowitz	Thank you, DXT. Perhaps the Board here was doing something like what I enjoy doing on the blogs: set a hare running and see who chases it. Or, as one of my critics on the US blogs often says: throwing stuff against a wall to see what sticks.
[11:15]	schestowitz	Reply
[11:15]	schestowitz	"
[11:15]	schestowitz	https://ipkitten.blogspot.com/2022/01/its-about-time-to-give-music-producer.html?showComment=1641308813925
[11:15]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | It's about time to give the music producer her/his copyright due - The IPKat
[11:15]	schestowitz	"
[11:15]	schestowitz	Mark SummerfieldTuesday, 4 January 2022 at 10:37:00 GMT
[11:15]	schestowitz	This article implies that the 'modern' use of samples and 'artificial instruments' has somehow changed or enhanced the role of the producer. But anyone who has heard the various progressive takes of songs being recorded for the 'Sergeant Pepper' album would recognise that George Martin was a key collaborator with The Beatles. So much so that, following Martin's death in 2016, Paul McCartney said that he, more than anyone else, had earned the title 
[11:15]	schestowitz	of 'fifth Beatle'. Martin produced all of The Beatles albums except for Let It Be (although the recent documentary 'Get Back' shows him as an influential presence throughout many of the recording sessions for that album also).
[11:15]	schestowitz	On the other hand, if you watch the remarkable sequence in which McCartney conjures the core of the song Get Back literally from nothing, you would be hard-pressed to argue that the work of the producer is anything more than spreading the icing on the cake!
[11:15]	schestowitz	Nonetheless, I have long wondered why producers so rarely receive, or even appear to want, songwriting credits. It seems to be a long-established convention in the music business that the producer is akin to another 'instrument' wielded by the artists to bring their visions to fruition, and producers appear mostly to be content with this role. If there is an exception, perhaps it is in the hip-hop scene where artist/producers, such as Dr Dre, are 
[11:15]	schestowitz	more likely to be granted creative credit. Perhaps, however, a rebellion is afoot in Poland!
[11:15]	schestowitz	Reply
[11:15]	schestowitz	Andy JTuesday, 4 January 2022 at 15:06:00 GMT
[11:15]	schestowitz	Dr. Sewerynik's analysis also speaks to a deeper problem with copyright in general. In any other enterprise which doesn't specifically rest on copyright, the rewards due the indiviudal creators are usually settled by contracts put in place ahead of the project. But once the type of ceativity comes within one of the eligible categories for copyright purposes, we are forced to accept the one-size-fits-all approach, irrespective to the aesthetic value 
[11:15]	schestowitz	of the work and the potential for earnings from it. This illogical approach means that an architect is in the same position as the song writer and the computer programmer, yet the economic value of each's work is acheived in different ways and for different periods of time: the architect with a one-off fee and no chance for royalties or repeat fees, the song writer through royalties over a very long period (hoefully) including via very many subsets 
[11:15]	schestowitz	of licences such as grand and sync rights etc, and the computer programmer most likely to be a corporate employee with no chance of roylaties, from a work which may have an economic lifetime of a decade at best. 
[11:15]	schestowitz	If a music producer should be entitled to a song writing credit as of right, why not then the skilled builder or craftsman who realaises the building designed by the architect? The debate is of course just starting when it comes to te role of AI as a creator (or co-creator).
[11:15]	schestowitz	It's about time we stopped seeing copyright as the solution every problem where the goal is the fair distribution of the earnings from a creative work. After 310 years of muddling through, making a creaky old concept (the penniless struggling author) fit ever more varied and novel sets of creative activities, we need a new and fresh approach. And no, I don't believe 'neighbouring rights' provide any sort of solution.
[11:16]	schestowitz	Reply
[11:16]	schestowitz	Kunal BindraWednesday, 5 January 2022 at 05:18:00 GMT
[11:16]	schestowitz	In modern "in-the-box" music production, a considerable amount of software instrument presets and commercially available loops and samples are used, much like how typefaces are used in graphic design applications. 
[11:16]	schestowitz	A hip-hop producer is more likely to make a 'musical' contribution to a song, as compared to maybe a a hard rock/heavy metal producer. The choices that a producer makes (in terms of sounds, samples, and effects) are indeed more creative than that of an audio engineer (mic placement, volume adjustment etc.), but are they really contributions to the composition? Even if we consider that they are, are they something more than just creative 
[11:16]	schestowitz	embellishments and are distinctive and memorable enough to satisfy the joint authorship requirement? (the pre-Infopaq UK standard - Hadley v Kemp, Beckingham v Hodgens, Fisher v Brooker etc.) or do they have the 'personal touch' of the producer? (a la Painer).
[11:16]	schestowitz	"
[11:16]	schestowitz	http://ipkitten.blogspot.com/2020/07/tiktok-signs-copyright-licensing.html?showComment=1641310342758#c8652255997978133643
[11:16]	schestowitz	"Tiktok can be held for copyright infringement and stripped off its rights of safe harbour provisions provided to it as an intermediary."
[11:16]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | TikTok signs copyright licensing agreements with music publishers - The IPKat
[11:16]	schestowitz	http://ipkitten.blogspot.com/2022/01/its-about-time-to-give-music-producer.html?showComment=1641359903033#c8147742284094077573
[11:16]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | It's about time to give the music producer her/his copyright due - The IPKat
[11:16]	schestowitz	"
[11:16]	schestowitz	In modern "in-the-box" music production, a considerable amount of software instrument presets and commercially available loops and samples are used, much like how typefaces are used in graphic design applications. 
[11:16]	schestowitz	A hip-hop producer is more likely to make a 'musical' contribution to a song, as compared to maybe a a hard rock/heavy metal producer. The choices that a producer makes (in terms of sounds, samples, and effects) are indeed more creative than that of an audio engineer (mic placement, volume adjustment etc.), but are they really contributions to the composition? Even if we consider that they are, are they something more than just creative 
[11:16]	schestowitz	embellishments and are distinctive and memorable enough to satisfy the joint authorship requirement? (the pre-Infopaq UK standard - Hadley v Kemp, Beckingham v Hodgens, Fisher v Brooker etc.) or do they have the 'personal touch' of the producer? (a la Painer).
[11:16]	schestowitz	"
[11:16]	schestowitz	https://ipkitten.blogspot.com/2020/09/can-academic-peer-review-learn.html?showComment=1641289555919
[11:16]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | Can academic peer-review learn something from patent prosecution? - The IPKat
[11:16]	schestowitz	"I am just about to start my career in the Patent profession in the UK. This article speaks a lot to why I have left academia and decided to go into this profession. There are too many personal egos in science: my supervisor would regularly mention sympathetic academics and I felt that unless I play the game I would never make it far in academia."
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[16:00]	schestowitz	http://ipkitten.blogspot.com/2022/01/strict-us-written-description.html?showComment=1641729892726#c1010291465080686481
[16:00]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | Strict US written description requirement applied to CAR-T-cell therapy (Juno v Kite) - The IPKat
[16:00]	schestowitz	"
[16:00]	schestowitz	Rose, for me with my engineering cases, the US WT requirement shows up mostly in connection with the admissibility of prosecution amendments to the claims. Is there a WD in the application as filed, for example, for the intermediate generalization the Applicant wishes to claim after receipt of the EESR? My personal view is that a gradual tightening of the WD requirement in the USA is inevitable, as the courts come to terms with the inevitabilities 
[16:00]	schestowitz	of applying First to File law between rival filers, who all filed for much the same subject matter at much the same time.
[16:00]	schestowitz	The US statute does have an "added matter" provision but(as I understand it) it is not applicable to prosecution amendments to the claims. WD is all they've got. So it's inevitably going to get more stringent, isn't it?
[16:00]	schestowitz	"
[16:01]	schestowitz	http://ipkitten.blogspot.com/2022/01/can-amending-description-to-summarize.html?showComment=1641730432967#c2824218826588109672
[16:01]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) - The IPKat
[16:01]	schestowitz	"
[16:01]	schestowitz	I do not ignore the interpretation of Art. 84 EPC given by some BoA: I think that it is wrong and I hope that this issue will be solved by the EBoA.
[16:01]	schestowitz	For some decades, the EDs never asked to delete unclaimed subject-matter from the description, so why should we do it now?
[16:01]	schestowitz	It is sufficient to copy the claims in the descrition to satisfy Art. 84 EPC.
[16:01]	schestowitz	"
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[19:03]	schestowitz	http://ipkitten.blogspot.com/2022/01/can-amending-description-to-summarize.html?showComment=1641736927943#c5258868039540482268
[19:03]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) - The IPKat
[19:03]	schestowitz	"
[19:03]	schestowitz	With astonishment I read from Patent Robot its dismissive view of Article 84, EPC, that to satisfy it all that is needed is to "copy the claims" into the description. So, form is good enough for Article 84, and substance counts for nothing. Not only those who drafted Art 84 would turn in their graves if that became the established view.
[19:03]	schestowitz	For one like me, who qualified for the EPO's Register of representatives through a grandfather clause, one of the greatest pleasures of my long career has been the emergence of the EPC and its Implementing Regulations, and the EPO's Estavblished Case Law. Other than in every other jurisdiction (where a Supreme Court makes the law) the law of the EPC is a triumph of substance over lawyerly "form". I never copy the allowed claimsd into the description,
[19:03]	schestowitz	 believing to this day that it makes no difference to the validity of the patent which the EPO is going to issue to my client.
[19:03]	schestowitz	Or with his newest remark is Patent Robot just making mischief, trolling this thread, being provocative just for the fun of it?
[19:03]	schestowitz	That said, there is of course an ongoing problem with over-zealous Examiners. What makes them do it? Trying to ingratiate themselves with the EPO's Quality Managers, mistakenly supposing that it will further their career.
[19:03]	schestowitz	"
[19:03]	schestowitz	http://ipkitten.blogspot.com/2022/01/in-memoriam-william-bill-cornish-1937.html?showComment=1641740021051#c2935988787586008438
[19:03]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | In memoriam: William (Bill) Cornish (1937 - 2022) - The IPKat
[19:03]	schestowitz	"
[19:03]	schestowitz	I owe so much to my friend Bill Cornish. We met in November 1963 when he was an assistant lecturer at the LSE given the job of teaching the evening students. I started the course a bit late (I was doing the Bar exams too). He was teaching us contract law - the first topic I still remember - how precise must a contractual term be - see Hillas v Arcos - to sell at a reasonable price (cf FRAND). Bill taught my class for 3 of the four years of the 
[19:03]	schestowitz	course - he taught me Industrial Relations one year and Trusts another. Neither of us knew anything about IP. In the last year (1967) he was doing a pupillage in Francis Taylor Building (now 8 New Square) with Blanco. I pupilled there the next. Bill was the first to start teaching an IP course at any UK university - 1967. I helped out with a few lectures in the next few years - he was in part based at Max Planck from about 1969. I would have done 
[19:03]	schestowitz	much less without him. I am so, so sad.
[19:03]	schestowitz	Robin Jacob
[19:03]	schestowitz	Robin Jacob
[19:03]	schestowitz	"
[19:04]	schestowitz	http://ipkitten.blogspot.com/2022/01/in-memoriam-william-bill-cornish-1937.html?showComment=1641740555362#c6533092707127976291
[19:04]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | In memoriam: William (Bill) Cornish (1937 - 2022) - The IPKat
[19:04]	schestowitz	"So sorry to read of Professor Bill Cornish's death. My first encounter with IP Law was at Queen Mary (PGDip, 1989). My teachers included Professor Jeremy Phillips. We used the pale pink, blue and green paperback 'samizdat' early editions of Cornish's 'great and magisterial book'."
[19:04]	schestowitz	http://ipkitten.blogspot.com/2022/01/in-memoriam-william-bill-cornish-1937.html?showComment=1641746479789#c1669567997043384264
[19:04]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | In memoriam: William (Bill) Cornish (1937 - 2022) - The IPKat
[19:04]	schestowitz	"I learned IP in the 1980's, which was the last decade that one could be an IP autodidact. It was possible only because of Bill Cornish's book, which l devoured and devoured again and again and .... I was not alone. Before there was distance learning, there was the Cornish book, which reached many of us in far flung locales, wherever. My IP adventure has been due in no small part to Bill's erudition and exposition. May his memory be blessed. "
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[20:21]	schestowitz	https://twitter.com/jdm7dv/status/1480162440360960003
[20:21]		-TechBytesBot/#techbytes-@jdm7dv: https://t.co/OHCT9eRQUb @AvrilLavigne Linux and Homelessness
[20:21]		-TechBytesBot/#techbytes--> techrights.org | The GNU/Linux Community Feels Increasingly Isolated, Homeless and Orphaned in a New Age of Corporate Takeovers | Techrights
[20:22]	schestowitz	https://twitter.com/GyroWaveGen_TM/status/1480237962055110663
[20:22]		-TechBytesBot/#techbytes-@GyroWaveGen_TM: @schestowitz Have you noticed that NO ONE ELSE cares in the least in what you have to say?! 
[20:22]	schestowitz	GyroGen(TM) (@GyroWaveGen_TM): "Mostly at the expense of inventors though! In fact, it's almost 100% at the expense of inventors. The PTO used to be at least partially funded by the public. Not anymore. And who are their 'best customers'? Who paid for the AIA to be passed? Who benefits the most from the AIA?" | nitter https://nitter.eu/GyroWaveGen_TM/status/1480237658047762433 #nitter | more in http://schestowitz.com/2022/01/
[20:22]		-TechBytesBot/#techbytes-nitter.eu | GyroGen(TM) (@GyroWaveGen_TM): "Mostly at the expense of inventors though! In fact, it's almost 100% at the expense of inventors. The PTO used to be at least partially funded by the public. Not anymore. And who are their 'best customers'? Who paid for the AIA to be passed? Who benefits the most from the AIA?" | nitter
[20:22]	schestowitz	09/#latest
[20:22]		-TechBytesBot/#techbytes-schestowitz.com | Social Control Media Posts
[20:22]	schestowitz	https://twitter.com/xolve/status/1480136911809171458
[20:22]		-TechBytesBot/#techbytes-@xolve: If anyone brings up the subject of climate change, 8 out of 10 times it's a teenager. https://t.co/cs4PXsmn70
[20:22]		-TechBytesBot/#techbytes-@schestowitz: NEWS #Salon #Health The existential panic in "Don't Look Up" is real. I see it in my clients https://t.co/VqCKjPraMn
[20:22]	schestowitz	https://twitter.com/undulat69/status/1479992848812490757
[20:22]		-TechBytesBot/#techbytes-@undulat69: @schestowitz https://t.co/wMcLkCi2JS
[20:22]		-TechBytesBot/#techbytes--> www.youtube.com | Dax - Propaganda (Feat. Tom MacDonald) [Official Music Video] - YouTube
[20:23]	schestowitz	https://twitter.com/stirlospace/status/1479979307866857474
[20:23]		-TechBytesBot/#techbytes-@stirlospace: @schestowitz macOS classic
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[22:19]	schestowitz	>> On 08/10/2021 18:19, Benny Siegert wrote:
[22:19]	schestowitz	>>>> Is it a good moment to contemplate the relationship between Academic
[22:19]	schestowitz	>>>> Freedom and CoCs?
[22:20]	schestowitz	>>> No, it's not. Certainly not about anything relating to vaccination
[22:20]	schestowitz	>>> skepticism. This is not the hill to die on.
[22:20]	schestowitz	>> The email in question was about the privacy issues with the certificate,
[22:20]	schestowitz	>> there was no reference to anti-vax movements
[22:20]	schestowitz	> 
[22:20]	schestowitz	> Oddly enough, Novak Djokovic is imprisoned 200 meters away from where I
[22:20]	schestowitz	> studied engineering and computer science.
[22:20]	schestowitz	> 
[22:20]	schestowitz	> Novak has conjured an anti-vax mob just 500 meters away from one of the
[22:20]	schestowitz	> world's most respected labs.  I'm not mad about that: if we want to beat
[22:20]	schestowitz	> this pandemic, we need to understand what lies behind social phenomena
[22:20]	schestowitz	> like that.  In 2021 I published photos that I took in the same street.
[22:20]	schestowitz	> 
[22:20]	schestowitz	> Academic Liberty requires us to listen to each other and contemplate all
[22:20]	schestowitz	> sides of the story.  It does not compel us to agree with each other.
[22:20]	schestowitz	> 
[22:20]	schestowitz	> I share evidence.  Emails from "Boarder Force".  A map.
[22:20]	schestowitz	> 
[22:20]	schestowitz	> https://danielpocock.com/novak-djokovic-codes-of-conduct/
[22:20]		-TechBytesBot/#techbytes-danielpocock.com | Novak Djokovic & Codes of Conduct
[22:20]	schestowitz	> 
[22:20]	schestowitz	> I share these insights with the community, just as I forecast Covid
[22:20]	schestowitz	> before FOSDEM 2020.  This email appeared on the FOSDEM list on exactly
[22:20]	schestowitz	> the same day the Doherty Institute published their initial findings in
[22:20]	schestowitz	> January 2020:
[22:20]	schestowitz	> 
[22:20]	schestowitz	> https://lists.fosdem.org/pipermail/fosdem/2020q1/003046.html
[22:20]		-TechBytesBot/#techbytes-lists.fosdem.org | [FOSDEM] Coronavirus
[22:20]	schestowitz	> 
[22:20]	schestowitz	> https://www.doherty.edu.au/news-events/news/coronavirus
[22:20]	schestowitz	> 
[22:20]		-TechBytesBot/#techbytes-www.doherty.edu.au | Doherty Institute scientists first to grow and share 2019 novel coronavirus | Doherty Website
[22:20]	schestowitz	> Suggesting that a concern about Academic Liberty is equivalent to
[22:20]	schestowitz	> anti-vax phenomena is incredibly offensive to the entire academic community.
[22:20]	schestowitz	> 
[22:20]	schestowitz	> Regards,
[22:20]	schestowitz	> 
[22:20]	schestowitz	> Daniel
[22:34]	schestowitz	http://ipkitten.blogspot.com/2022/01/can-amending-description-to-summarize.html?showComment=1641760938470#c8334417294118553110
[22:34]		-TechBytesBot/#techbytes-ipkitten.blogspot.com | Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) - The IPKat
[22:34]	schestowitz	"
[22:34]	schestowitz	On the general topic of consistency between the description and the claims, an important decision is T 1642/17, which appears to reflect settled case law since it is cited in the 2020 issue of the case law of the BOAs (II.A.6.3.) published in the OJ in 2021. Quote from Reason 3 :
[22:34]	schestowitz	However it is established case law that in cases where the claims and the terms used in them are clear when read on their own, for instance because they have a well established meaning in the art, the unambiguous claim wording must be interpreted as it would be understood by the person skilled in the art without the help of the description. (see decisions T 2221/10 and T 197/10, as well as Case Law of the Boards of Appeal of the European Patent 
[22:34]	schestowitz	Office, 9th edition 2019, II.A 6.3.1). As set out in the latter decision, "in the event of a discrepancy between the claims and the description, the unambiguous claim wording must be interpreted as it would be understood by the person skilled in the art without the help of the description".
[22:34]	schestowitz	This implies that there should be no requirement to delete from the description an embodiment not covered by the claims, assuming the wording of the claims is clear.
[22:34]	schestowitz	I recently found a case in which the applicant had deleted a phrase in a claim to overcome an Art 84 objection, only for the ED to withdraw the objection and reinstate the deleted phrase of its own motion as part of the 71(3) communication, citing 123(2) concern.
[22:34]	schestowitz	"
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