Wednesday, 8 March 2017

DII 2017: metal beams having projections formed by rolling processes - our answers


How difficult was this DII? Opinions differ whether this was quite a standard DII in style and difficulty level, or whether it was much more evolved than in 2014-2016...  Again several PCTs that become, or not, Art.54(3) against others. Also non-published applications, deemed to be withdrawn applications, one grant, and one R.71(3) for which the time limit was missed. Again an application from which you can still claim priority and a competitor in China where you do not have any applications yet, so a need to file a PCT claiming priority from an earlier application to get something against your Chinese competitor. One may have been tempted to do entitlement to the ST-EP2 part of CB-PCT, but as that part is novelty-destroyed by ST-EP2 (or rather, the new application claiming priority from that), there is no need and no use. And product-by-process claims as well as product-directly-obtained-from-the-process protection. Also a transfer of an application and a priority right, supplementing the transfer of a granted patent and the transfer of an opposition in DI. Further difficulties to handle: quite a lot of claims to deal with, and priority was not valid for all claims in each application;  inventions were longer phrases written as product by process, making it more difficult to compare; there was also disclosures & application for a process; a lot of the issues were not straightforward when you looked in detail - e.g. trade fair had demonstration + test results + video; a lot of possible options to consider before you get to end - not possible to clear all of them up with certainty.



We do not give a full analysis, but summarize the conclusions of all questions below. A full answer needs full discussion as to whether priority is valid or not, what all the prior art is, novelty, inventive step, provisional protection, full protection, etc.


The outline of our answer:

Question 1) Situation as it currently stands

my timeline for this DII - indispensable tool - as long as you can understand your own timeline it is OK, I am sorry if you cannot understand mine... In this DII, it becomes messed up quite easily, so you may need to make it a second time (in fact, the one above is my second one after the article, CB-PCT filing, ST-EP3 filing, sales Oct 16 all got cluttered together)

a) [any]:
We (can) validly get ST-EP1, claiming prio from ST-GB1.
The product claim of ST-EP1 is a product-by-process claim, and gives protection to the metal beam having projections as such. As the beam obtained by the roller process is distinguishable (see par [005]) from the known metal beam having projections that are stamped on it from OLD1, the beam as claimed is novel.
But we just missed the R.71(3) period, so it is deemed to be withdrawn (can be remedied, see Q.2-a).
The process claim of ST-EP1 is also new and inventive, as it results in a new and inventive beam with projections.

ST-EP1’s content corresponding to ST-GB1 is Art.54(3) vs CB-EP. CB-EP’s process to a forming a beam by rolling a metal strip between a pair of rollers is not novel over our process in ST-EP1 of forming a beam by rolling metal strip between a pair of rollers having teeth (genus not novel over species).
Even though CB-EP’s claim is not novel, it is a granted patent as it currently stands.

Remark: [011] gives only little information about CB-EP. If one would read “rollers” to be “rollers without teeth”, CB-EP would be novel w.r.t. ST-EP1, unless ST-EP1 would describe a process with “roller without teeth” in the background section – which is likely in view of the way the invention is presented in [002]. CB-EP could then get its inventive step over OLD1 from absence of stress effects that is also obtained by rolling processes without teeth – see [005], second sentence. However, [005] in the same sentence clarifies that “a rolling process” can be “with or without teeth”, such that it does not seem expected to read the term “rollers” as “rollers without teeth”, but just as “any type of rollers”.

Note that the video of the rolling process shown in UAE in Nov 2013 is too late to be prior art against CB-EP.

b) [SHAPE-A]:
ST-EP1 novelty-destroyed by the demo in UAE

Your sales to Casistas in ES in October 2016 are infringing on the CB-EP, as directly obtained by a rolling process, if CB-EP was validated in ES (we can check). Not relevant that rolling process as claimed does not specify teeth or SHAPE-A teeth. CB may try to stop us.

The import and sales of SHAPE-A into/in ES by CHINABEAM of February 2017 would infringe ST-EP1 is still alive.

c) [SHAPE-B]:
ST-EP2 is first application. But it is deemed to be withdrawn as no fees were paid, and too late to remedy (more than 2m after July 2016). Can be used as priority applicat6ion for a new filing (see Q.2-c)

ST-EP3 has valid pri from ST-EP2 for SHAPE-B, as pri was transferred before ST-EP3 was filed
    - ST-EP1 is published shortly after 29/3/13+18m->23/3/15, so Art.54(2); ST-EP3 is novel and inv as SHAPE-B not disclosed and considerably improved strength
    - The demo in UAE is Art.54(2), but ST-EP3 is inventive over it due to considerably improved strength
    - so, SHAPE-B novel and inv in ST-EP3

CB-PCT is novelty-destroyed in EP by ST-EP3 and by the article in the trade journal of 11/4/16
    - CB-PCT has no valid pri, as ST-EP2 and its priority right were already transferred to ST
    - but if priority issue not detected, CB-PCT may be invalidly granted (see Q.2-c)

d) [SHAPE-B1]:
ST-EP3 is novelty-destroyed by CB-PCT in EP if PCT enters EP

ST-EP1 was published promptly after 23/9/13 + 18m  23/3/15, i.e. before CB-PCT was filed, so is full prior art
CB-PCT’s –B1 is new over –B in ST-EP1 and over –A in UAE and over OLD1
and can get protection in EP if it enters

The recent offer of SHAPE-B1 to Casistas ES ([008]) by CHINABEAM would infringe ST-EP1’s broad claim if it would have been still alive –but it is not-, and could infringe ST-EP3’s -B1 claim if that would already have been published – but it will only in mid Sep 2017.

Question 2) Improvements

a) [any]:
ST-EP1: remedy missed R.71(3) (TL expired 28/2/17): FP for fees and translations, flat FP fee, within 2m from the to be received notification
As claim 2 of ST-EP1 (directed to SHAPE-A) is not novel: advise to amend to by deleting claim 2 and waive second R.71(3) to avoid opposition against ST-EP1.

Oppose CB-EP due to lack of novelty over ST-EP1 (Art 54(3)).
File notice of opposition and pay the opposition fee by 8/6/16 + 9m  8/3/17 = tomorrow!!

b) [SHAPE-A]:
noone can get a valid claim to it

c) [SHAPE-B]:
file a PCT appl, ST-PCT, claiming prio from ST-EP2 (for SHAPE-B) and –just in case CB-PCT does not enter EP – also from ST-EP3 (for SHAPE-B1), by 11/3/16+12m->11/3/17 (Sat)->13/3/17
Enter China and UAE with our new ST-PCT

File third party observations against CB-PCT in international or EP-phase: lack of novelty ST-EP2 (but as Art.54(3) it will be more useful to do so in EP phase) and lack of novelty article I the trade journal 11/4/16.
Include invalidity of priority as part of the novelty-argumentation: the transfer documents are on file at the EPO in the file of ST-EP2 and will be inspectable after its publication promptly after 11/3/16 + 18m -> 11/9/17.

d) [SHAPE-B1]:
cannot invalidate SHAPE-B1 in CD-PCT, but in case they do not enter EP, we can with  ST-PCT (see c)

Question 3) What we and CB can / cannot do in the future

a) [any]
we free, as long as not SHAPE-B1

we can stop CB from making -with any type of process-, selling and importing beams with protrusions of any shape, including A, B & B1 with ST-EP1's product claim, after grant and where validated. Validate at least in GB to prevent others to sell and import in our home market & in ES to prevent others to sell and import in our major market and esp to our major clients Casistas

we can also stop CB from making beams with protrusions of any shape using a process using rollers with teeth, including A, B & B1 with ST-EP1's process claim, after grant and where validated. The process claim can also be used to stop CB from making, selling and importing beams with protrusions of any shape which are directly obtained from this process, including A, B & B1

CB not free in EP due to ST-EP1, free outside EP

b) [SHAPE-A]:
we free

CB not free in EP due to ST-EP1’s generic, free outside EP

c) [SHAPE-B]
we free, as long as not SHAPE-B1

CB not free in EP due to ST-EP1’s generic, ST-EP3, ST-PCT and not free outside EP where we enter with ST-PCT, i.e., at least CN and UAE

d) [SHAPE-B1]
if CB-PCT enters, we not free; same elsewhere

CB not free in EP due to ST-EP1’s generic, ST-EP3’s SHAPE-B, ST-PCT’s SHAPE-B and not free outside EP where we enter with ST-PCT, i.e., at least CN and UAE

As SHAPE-B1 is technically superior, suggest cross-licence to allow STEELCO to import & sell B1 in ES to Casistas and to allow CB e.g. to operate in CN (but not in our markets).

Any comments, differing opinions, questions are welcome!

Please do not post your comments anonymously: it is more easy to communicate with a person having a name. Nicknames are fine, real names as well.

If you are looking for the DI discussion: it can be found here.
If you are looking for first and general impressiona about D 2017: it is here.

Roel, Pete, Grégory

(c) DeltaPatents 2017

16 comments:

  1. Can we discuss dependency of patents as the protrusions are all dependent to the rolling process ?

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    1. Yes, we can. We already partially did with phrase like "we free to do any shape, as long as not SHAPE-B1", "we free to do [any type of] SHAPE-B, as long as not [the specific] SHAPE-B1" and "we can stop any shape, including A, B & B1 with ST-EP1, after grant and where validated".
      Which specific dependency do you want to discuss?

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    2. I added the two ways with which we can prevent CB to _make_ beams with any type of protrusions:
      1) prevent/stop them to make, with any type of process, the beams based on the product-by-process claim in ST-EP1, and
      2) prevent/stop them to make beams with a process with rollers with teeth based on the process claim in ST-EP1.

      Further, the product-by-process claim can be used to prevent selling/importing/using beams with protrusions _made by any process_, whereas the process claim can only be used to prevent selling/importing beams with protrusions made just by (directly obtained by) the claimed process with rollers with teeth.

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  2. [SHAPE-B] "CB-PCT has no valid pri, as ST-EP2 and its priority right were already transferred to ST"

    Also, CB-PCT may include [SHAPE-B] without entitlement: the part relating to [SHAPE-B] seems to originate from Mr. G due to the abusive priority claim, but MR. G has transferred the right to obtain a patent to ST. Hence, my advice is to sue CB in English court, and, if successful, revoke the EP regional phase of CB-PCT using Art. 61(c) and PoR, Art. 3 and 9.

    NN

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    1. As I already said in the opening paragraph of the blog post, I do not think that an entitlement actracts any marks.

      It is easier, more certain and probably faster to 'revoke' based on lack of novelty over EP-ST2: invalid pri can be argued before the EPO (and other national offices) especially as the EPO already has the transfer document on fil> With pri not valid, the SHAPE-B part of CB-PCT is not novel, no courts needed.

      Further one can also argue that they were entitled: only the ST-EP2 appication and the priority right cretaed by its filing were transferred, not the right to file new applications for the same invention (w/o pri). In my view, that right is still with mr G.
      Ig you are not immediately convinced: if MrG would have filed TWO applications on the same day, with the same content, the transfer of only one to ST would not invalidate the other application, which he could still transfer to CB. Not the situation of the paper, but just to clarify that the right to file/have another application for some subject-matter is not transferred with the transfer of an application for the same subject-matter.
      It will be Art.54(2) and 54(3) that will be decisive who can get what.

      So, just do lack of novelty over EP-ST2.

      Delete
    2. Thanks you very much for the explanation. I commented because I just looked at the relevant section, and the potential entitlement problem was not mentioned; I did not scroll too far down at that time.

      During the exam, I suggested both the novelty attack, although using only Article 54(2) prior art, and the entitlement attack. For the latter I stated that this was not a certain case, but for another reason. I may have written that the right to obtain a patent was transferred with the transfer of the application (despite that I thought that these questions would be better decided by the court, also because more evidence would surface on why Mr. G and CB used ST's priority).

      I have not recommended the PCT filing. Other items seem to be almost the same.

      What range may be expected for such a response?

      With regard to the difficulty level, in my opinion it is like 25% more difficult than last year overall. I was much much better prepared this time, but there was simply too little time.

      NN

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    3. @NN: cannot tell. The marks obtained do not just relate to the topics discussed, but also -and particularly- to the argumentation you gave for "easy" topics such as prior art, novelty and inventive step, as well as difficult issues such as priority, product-by-process allowability and scope of protection, entitlement (I doubt whether there is any marks here to discuss it, as the "non-entitled" (if at all) part of application is novelty-destroyed), dependent patents. But the exams are nowadays designed such that missing out one topic completely (not seeing, or doing it wrongly) does not have a major impact on the rest of the paper (e.g., as long as you find a way, right or wrong, to oppose CB-EP it will be gone and will not get the broadest right to CB but to you), so you can still score many of the marks on exploitation (Q.3) if you miss out on some topics for Q.1 and/or Q.2.

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  3. After thinking about it some more after doing the paper (it is funny how you some things only make sense the next day], I think the explanation in para [005] gives you enough to file an opposition against CB-EP. It says in para 005 that "only a rolling process guarantees avoiding stress effects". So this is a "one-way street", I think. So not inventive based on OLD1 + only one technical solution.

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    Replies
    1. It may be the only way to avoid stress but I wouldn't say that would make it obvious or a one way street. There is no indication in the paper that anyone was rolling beams before the patents in question. It only becomes a one way street if everyone knew that rolling was an alternative to stamping. My view...

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    2. I agree. In my view, it woupd an argument in favour of inventive step, not against it: a problem-solution argumentation would be very straightforward to lead to the conclusion it is, as the problem is solved by an unknown means.

      Delete
  4. 3a/b/c) Surely "We free, so long as the opposition to CB-EP is successful". CB-EP covers any rolling process, so it covers all of the possible shapes. (FWIW, I answered assuming that all invalid patents were successfully opposed/never granted, and then added caveats at the end to how the situation changed if any survived)

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  5. Hi Pete,

    I attended your methodology course November 2016, I think I was a little better prepared this year but thanks for the useful course (no plug intended).

    Could I just ask in relation to opposing CB-EP for any rolling process, whether the opposition could make use of the file containing the letter to the EPO (ST-GB1 and ST-EP1),which would by now be publicly accessible? The letter clearly argued that any rolling process would reduce stress. Kind regards Tom

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  6. Hi all,

    A remark of a candidate of mine made me compare the different language versions of DII.

    To my surprise, I saw that after translation errors and language differences in C 2014 (FR translation having errors due to which no novelty attach was possible against claim 1, see Examiner's Report 2.6 and 3 (claim1, FR version)), the Pre-Exam 2016 (5.4: "a" vs "der"="the", see appeals), and B 2017 (vice versa in [002] in the EN version but not in the DE and FR version), I saw that there is again a difference between the different languages, in the DII of this year:

    The FR text says:
    [007] A la fin mars 2016, nous avons été contactés par un consultant indépendant
    d'Italie, Mr. G, qui avait déposé le _21_ mars 2016, en tant qu'unique déposant, une demande de brevet européen, ST-EP2, sans revendication de priorité.

    The EN text says:
    [007] At the end of March 2016 we were contacted by an independent consultant from Italy, Mr G, who had filed on _11_ March 2016 as sole applicant a European patent application, ST-EP2, without a claim to priority.

    The DE text says:
    [007] Ende März 2016 wurden wir von einem unabhängigen Berater aus Italien
    kontaktiert, Herrn G, der am _11._ März 2016 als einziger Anmelder eine Europäische Patentanmeldung, ST-EP2, eingereicht hatte ohne Priorität zu beanspruchen.

    So, the FR version gives a different filing date for ST-EP2 than the English and German version.

    I am quite surprised that these differences occur in the EQE… and I am worried whether there are maybe more (and more subtle) differences/ errors… Would be interesting to hear from the Exam Committee how these errors can occur, also in view of lessons learned from the past. And how the Exam Committee plans to improve their reviews so that these errors will not occur again in the future?

    And more urgently: could there be any effect of these differences, 21 March in the FR text and 11 March in the EN and DE text? Any effect on the answer? And/or any effect on the state of mind of a candidates that would see the difference while sitting the exam - I can imagine it may confuse them and for that reason make them loose time (e.g., by checking whether there is a difference and, it they consider so, give a double answer)?

    BR, L.

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    1. This comment has been removed by the author.

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    2. I checked whether the Examiner's Report comments on this: it does, on page 10:

      "The different filing date of ST-EP2 in the French version of the paper was inconsequential to the answer and did not result in a different allocation of marks."

      Factually this may be true, but the psychological effect on candidates checking the other language version e.g. because they did not understand a term in their EQE-language should not be denied in by view...

      BR, L.

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  7. Just to complement "Anonymous 22 June 2017 at 20h57": In A 2017, [02], last sentence, of the FRENCH version, it is written: "Cela nous a conduit à développer de nouveaux produits pour laver de vaisselle". The wording is not correct. It should be: "cela nous a conduit à développer de nouveaux produits pour LE lave vaisselle" or "cela nous a conduit à développer de nouveaux produit pour laver LA vaisselle'.
    Btw, I'm a French-native speaker, who is doing his exams in English.

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