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 Also non-published applications, deemed to be withdrawn applications, one grant, and one R.71(3) for which the time limit was missed.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)
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 ) 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:  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 . 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 , second sentence. However,  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.
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.
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)
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 () 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) Improvementsa) [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!!
noone can get a valid claim to it
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.
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 futurea) [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
CB not free in EP due to ST-EP1’s generic, free outside EP
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
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