Thursday, 15 March 2012

Our answers to DII 2012

Here a rough answer for the DII 2012. We do not show the full argumentation required for scoring marks.

Looking forward to your comments,

Jelle Hoekstra, Pete Pollard, Roel van Woudenberg


Question 1 Legal status of our patent rights and those of Watergate

EP-1 abandoned, not published

Describes:

  • General part: bundle of fibres B [may be of any material, pref. ceramic of class C] in combination with nozzle N [may be of any material, pref stainless steel –S];
    effect: removes incrustations
  • Single specific embodiment: B of C + N of S; combination is essential,
    effect: prolonged life

We consider it unclear:

  • whether the essential aspect (as described in the only embodiment) also should be seen as essential for the general part in the sense that the general part is not really enabled for anything else than the specific embodiment, or
  • that the specific embodiment should only be seen as describing what is essential for achieving the corrosion effect, indicating that the two limitations C and S should be used in combination for this effect and cannot be used individually as there would be no argument for inventive step as a fallback

There is not really enough technical detail in the exam and confusing information (e.g. remark of examiner on essential) to come to a final conclusion on this. We will later on see what the exam committee intended.

So, there are two possible approaches:

  • Approach 1: the broad embodiment is enabled; one specific embodiment is shown additionally where C or S cannot be used separately in a fallback position
  • Approach 2: it is essential to always use the specific combination N of S + B of C, the broad embodiment N + B is not enabled

In the exam you could best choose one of those approaches and where you have time briefly indicate how it might be in the other approach. We start from approach 1 and will indicate differences for approach 2.

APPROACH 1 Broad claim in EP-1 enabled

PCT-1 single claim: B+N; description: same as EP-1
Claims prio from EP-1, OK; Eff. Date: 31-7-09
New and inventive (for removing incrustations).

However, in approach 2, the claim to prio from EP-1 is not OK, because the use of C and S is essential; Eff. Date: 3-5-10. The broad claim B+N is not enabled [and not new over prior right EP-WG]. So, not patentable.

EP-2

In content similar to EP-1, but: only in the general part N has been broadened to means for injecting air into the fibre bundle (abbrev: I)

  • Claim 1: B+I ;
    Claims prio from EP-1, Not OK, I is more generic than N in EP-1: Eff. Date: 2-8-10;
    Web site disclosure on 30-7-2010 destroys novelty; Also EP-WG is relevant: see below
  • Claim 2: B of C + I=N of S; Prio OK. Eff.date: 31-7-09.
    Only relevant document is EP-WG: see below

US-WG

Describes: N + B of P, pref. N made of stainless steel (S).
Claim 1: N+B; Seems patentable for US.

EP-WG

Same content as US-WG, assumption same claim, can otherwise be amended to it.
Claims prio from US-WG.: OK; Eff. Date: same as US-WG, 30-4-2010
Patentability: prior right situation with respect to EP-2

EP-WG vs. EP-2 – approach 1
EP-WG is earlier for claim 1 of EP-2; the species B+N destroys novelty of B+I

EP-2 earliest for claim 2 (B of C, N of S), EP-2 can get this;
This species in EP-2 destroys novelty for claim in EP-WG.

EP-2 does not disclose N+P, so EP-WG will get it (novelty only)

Summary – approach 1

Membrain

Watergate

Claimed invention

EP-2

BR, IN (PCT-1)

EP-WG

US-WG

B + injector

- not new EP-WG, web site

- not discl

- not discl

- not discl

B +N

- not discl.

+

- not new EP-2

+

B of C, N of S

+

- not claimed

- not discl

- not discl

B of P, N

- not discl

- not disclosed

+

+

EP-WG vs. EP-2 –approach 2
EP2 earliest for B+N in specific combination with C and S, destroys novelty of B+N in EP-WG
EP2 does not disclose N+P, so EP-WG will get it (novelty only)
EP-WG earliest for B + N, destroys novelty of B+I in EP-2
EP-WG does not disclose C, nor stainless steel, so EP2 will get N of S + B of C

Summary – approach 2

Membrain

Watergate

Claimed invention

EP-2

EP-WG

US-WG

BR, IN (PCT-1)

B + injector

- not new EP-WG, web-site

- not discl

- not discl

- not discl

B +N

- not discl.

- not new EP-2

+

- not enabled

B of C, N of S

+

- not discl

- not discl

- not claimed

B of P, N

- not discl

+

+

- not disclosed

Q2 Coating K

Most relevant prior art: as long IPER not completed: IPEA file not public. So, disclosure of K in that file not yet public; interview tomorrow: not public

Seems new, inventive (stiff, not vulnerable to vibration, cheap)

File new application fast (tomorrow interview, at least until then; not possible to withdraw demand or PCT-1 after 30 m). File new application for fibres of P with coating K or even coating K alone (if new). May also be claimed in combination with N and N made of S.

File priority then go PCT or immediately PCT, then go to EP, US, BR, IN.

Q.3 Improvement

Based on PCT-1: add claim on B of C, N of S in BR, IN.

Not useful to just claim B of C, N or B, N of S because for the special anti-corrosion effect C and N must be used in combination.

N+P or B + any nozzle cannot be filed anymore, already anticipated via, e.g., EP-WG, US-WG

Approach 1:

Can still enter EP with PCT-1 via further processing; this gives coverage in EP for B+N. After having completed this EP-2 can be withdrawn.

Watergate can in WG-US still claim where N of S. To be new in EP-WG over EP-2 this must be claimed in combination with P.

Membrain

Watergate

Possible claims

EP-2

BR, IN, EP (PCT-1)

New

EP-WG

US-WG

B+injector

-

-

-

-

B +N

-.

+

-

+

B + N of S.

-

-

-

+

B of C, N of S

+

+

-

-

B of P, N

-

-

+

+

B of P + N of S.

-

-

+

+

(fibre P+) K

+

B + any nozzle

-

-

-

-

-

Use of nozzles other than N in combination with any known bundle is free for everybody.

WG get B+N but only in US. Client gets B+N in EP, BR, IN. Can block one another in those countries. May consider cross-license to get rights in all those states.

WG gets bundle of P + N in both EP and US. Client cannot use this in those countries (BR, IN seem free). Client gets K (+P), can offer cross license for the use of P+N.

Client gets B of C + N of S in EP, BR, IN, and possibly US. Can also throw this into the deal.

Approach 2

Difference with respect to approach 1. Since the only possible claim in PCT-1 is B of C, N of S, and this is the same as claim in EP-2, a late entry with PCT-1 into EP is not useful.

Membrain

Watergate

Possible claims

EP-2

BR, IN (PCT-1)

New - membrain

EP-WG

US-WG

B+injector

-

-

-

-

B +N

-.

-

-

+

B + N of S.

-

-

-

+

B of C, N of S

+

+

-

-

B of P, N

-

-

+

+

B of P + N of S.

-

-

+

+

(fibre P+) K

+

B + any nozzle

-

-

-

-

-

WG will get B+N but only in US; so, client cannot use that in US, but seems not main market. EP, BR, IN are free.

WG will also get bundle of P + N in both EP and US. Client cannot use this combination there, but BR, IN seem free. Client gets K (+P), can offer cross license for the use of P+N.

Client gets B of C + N of S in EP, BR, IN. Can also throw this into the deal and try to get right to use B+N in US.

Q.4

Art.106/108 – appeal by Dialab within 2m i.e. before 27/2/12+10d+2m à 9/5/12.

Dialab could also file new ground, but -G10/91, hn3- however, new ground only allowed in appeal if proprietot agrees.

After appeal filed (G4/91; G1/94), client can intervene in the pending opposition (appeal) proceedings – Art.105(1)(a) within 3m from 6/2/12+3mà6/5/12 – so appeal must actually be filed also before this date.

Intervenor can base intervention on new ground and shall then be remitted to first instance G1/94, r.13.

Intervener does not become party to the appeal - G3/04, r.10. But after remittal, sole appellant can withdraw G3/04.

New ground = lack of inv,step over D1 + common general knowledge.

Encyclopedia is published on filing date of EP-CART, not before, so Enclopedia is itself no prior art. But Encyclopedia = proof of common general knowledge at that time T766/91.

Monday, 12 March 2012

Our answers to DI 2012

Based on input from 3 legal tutors, we think the core part of the answers should be as follows. A real answer would probably require additional comments for full points - anyone think that we are missing something?

Q.1 [5 marks]
•    Correction R.140 permitted by EPO of own motion – G8/95
•    Correction is retroactive – e.g. T212/88.
•    Decision and its notification keep original date.
•    So appeal period expires 27/12/11 + 10d + 2m => 6/3/2012 = TODAY [Art.108, R.131(4)]
•    File appeal + pay appeal fee (RFees 2(1).11) today – Art.108.
•    If withdrawn before end of 4m (7/5/2012 Mon) and before filing grounds: refund of appeal fee R.103(1)(b): still 2 months, so client can use the few weeks he needs to decide.

Q.2 [6 marks]
•    Amended R.36 entered into force 1/4/2010.
•    Transitional provision: if 24m expires before 1/10/2010: could file new div until 1/10/2010.

a)
•    DIV1 (14/12/2009):
-    old A.76, R.36(1): pendency of parent EP1 ; old R.36(2): in language of proceedings = EN
•    DIV2 (30/9/2009):
-    R.36(1)(a): 13/12/09+24m already expired; so could file until 1/10/2010: OK
Parent EP1 was pending (G1/09)
-    R.36(2): in language of proceedings or EP1 filing language =EN
b)
•    new div: EP1 and DIV2 no longer pending – R.36(1), G1/09. R.36(1)(a) expired.
•    DIV1 still pending. New R.36(1)(b) not triggered by partial search report, so cannot be validly filed.
•    If examination requested and non-unity maintained in the first R.71(1) communication, will have at least 24m to file new divisional out of DIV1 (or until end of pendency of DIV1).

Q.3 [5 marks]
a)
•    file SIS request with IB – PCT R.45bis.1(a). 5/10/10 + 19m => 5/5/12, so still possible
•    Request EPO=SISA R.45bis.1(b)(ii), OJ 2010, 304
b)
•    Pay SIS fee (RFees2(1).2) and suppl.search handling fee (PCT SoF 2) to IB – R.45bis.3 (a)+(b) and R.45bis.2(a)
o    within 1m (R.45bis.3(c), R.45bis.1(a))
o    after filing request
•    File translation into EN, FR, or GE – R.45bis.1(c)(i); OJ 2010, 304, Art.3(4)+ Annex E(1)
•    SIS will be performed on claims as filed, R.45bis.6 so cannot amend; request EPO to search second invention, R.45bis.1(d)


Q.4 [4 marks]
a) No
•    A1 not in EP-X: late filed claims must have basis in application as filed under Art.123(2) [GL A-III 15]; species A1 cannot be based on genus A ]
•    A1 is in PCT1 as filed
•    No valid priority – A.87(1) - for EP-X in EP-phase (not same invention): eff.date is 17/11/2010
•    In EP-phase, document is Art.54(2): A1 not novel
b)
•    Then A1 in EP-X, and priority valid. So novel and patentable.

Q.5 [5 marks]
a)
•    AG-IP 9.004; PCT Art.21 + R.48
•    Application (CN)
o    including claims as filed (CN)
•    A.19 amendments (CN) – claims as amended
•    A.19 statement (CN)
•    R.48.3(c): also in English: ISR (was available), title, abstract, text in the abstract figure(s)
b)
•    yes – via website: AG-IP 9.020, R.86(2)(a)

Q.6 [6 marks]
•    Priority only claimed from IT1 with inv1, priority valid, effective date: 28/10/10
•    Publication of doc D is too late [Art.54(2)], inv1 claim is novel

•    Inv2 not disclosed in Inv1, so effective date inv2 claim: 28/10/11
•    So D1 novelty-destroying A.54(2) for inv claim 1, unless we can claim priority of IT2

•    16m period for adding prio-claim to IT2 expired 28/2/12 – R.53(2). R.131(4)
•    So too late for R.53.
•    Exceptionally, it may be possible to request R.139, 1st sentence correction
•    Techn.prep. R.67(1) will be completed 28/10/10+18m = 28/4/12 – 5w => 31/3/2012 (OJ 2007, SE3, D.1).
•    So have time to correct and EPO has time to include a warning in publication (GL A-V, 3)
•    So can still do – need to satisfy EPO that mistake was made – J6/91 (based on same date and unity, obvious should have claimed prio in subsequent application)

•    If priority added: inv2 has eff.date= f.d. IT2, D1 not A.54(2) and inv2 claim=novel.

Q.7 [4 marks]
a)
•    Diagnostic methods may be excluded from patentability – A.53(c) – if they comprise all steps: deductive decision phase, data collection and analysis (tissue sample in analysing liquid); interactions with human body (biopsy) – G1/04 hn4.
•    So it could be patentable if method of diagnosing did not include the deductive decision phase.

•    Diagnostic method is certainly excluded from patentability if it includes step which can be seen as a surgery [G 1/07 hn.2a]
•    Biopsy of the liver is an invasive surgical method = extracting tissue sample from liver entails substantial health risk, even if carried out by the medical practitioner indicated – G1/07,hn.1.
•    Taking tissue sample is not essential - Art.84, so biopsy step can be left out of claim, and the method would not be excluded (it would be patentable)
•    This also removes the human body interaction step, so exclusion under G1/04 is made impossible

Q.8 [5 marks]

•    Improved subject-matter not in EP1 as filed, so its inclusion in EP1 violates Art.123(2) => no valid protection via EP1 possible

•    Improved subject-matter is in EP2 as filed, so no Art.123(2) problem for EP2

•    As EP1 already published (on 10/3/10), response to OA became publicly available shortly after submission (in June 2011) - Art.128(4)- and therefore A.54(2) against EP2 (filed 9/12/2011).
•    So, novelty destroying => no valid protection via EP.

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