DII 2019: Shoe soles
The DII paper of 2019 related to shoe soles for running shoes. Your client is a German shoe manufacturer, FASTER, whose main markets are Germany and Austria. FASTER has its only factory in Germany. Its owner found out that all metal nanoparticles modify the foam structure of a shoe, thereby improving the energy storage of the shoe sole. The increase depends on the type of material (any metal, in particular copper; Silica) and on the size of the nanoparticles. Slightly more than a year ago, your client had filed several patent applications, EP-F1, EP-F3, EP-F2.
An Australian competitor, HIKE, is also active in the field of running shoes, and has its only factory in Austria. HIKE made several announcents of the internet, and has two patents: a national Austrian patent AT-H with a broad claim scope, and a European patent EP-H which has a problem with its translation (EP-H was originally filed by a Chinese company, LONGRUN, in Chinese, and the English translation has a major error in it).
There is also a Mr Furious, a former employee of tours, who sold information to HIKE when he was angry for not getting promoted.
In this paper, analysis of priority was a key topic, and partial priority was present very pronouncedly -as expected-. Mr Furious' acts are an evident abuse against your client, and gave the opportunity to file a new application for Silica nanoparticle soles.
Below we give our answer, with a quite complete discussion as to whether priority is valid or not, what all the prior art is, novelty, inventive step, provisional protection, full protection, etc.
(For DI, see here; for general impressions to D as a whole, see here).
Our answer:
Q.1 Outline the patent situation as it currently stands for the claims of FASTER’s applications
a) EP-F2
Filed on 25/2/2018 by FASTER
Claims priority from EP-F1
• Also filed by FASTER, so same applicant
• Within 19/1/18 + 12m -> 19/1/19 (Sat) -> 21/1/19, so in time for valid priority
• So, priority is valid as far as the claims relate to the same invention as disclosed in EP-F1 (description and claims) – see below
Describes:
• =EP-F1, so:
• Increased energy storage (effect usable for inventive step; note: not indicated whether the different degrees of increased energy storage are described in the application)
• S + metal NP
• S + metal NP < 80 nm
• S + Cu NP < 80 nm
Claims:
• 1. S + metal NP
• 2. S + metal NP < 80 nm
• 3. S + Cu NP < 80 nm
Claim 1: S + metal NP
• EP-F1 does not disclose other metal NP than Cu NP
• Metal is a generalization from Cu, so not the same
• So, the claim to S + metal NP does not benefit from priority
• But its conceptual part that is also in EP-F1 does benefit from partial priority
• Which is S + Cu NP < 40 nm
• So, the first conceptual part of claim 1, corresponding to S + Cu NP < 40 nm, has an effective date of 19/1/18
• Whereas the remaining conceptual part of claim 1, S + metal NP but not S + Cu NP < 40, has an effective date of 25/2/18
*Remark: we do an extensive partial priority discussion by straightforward application of the headnote of G 1/15:
“Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.”
One could take a shortcut by following the steps of r.6.4 of G 1/15, wherein partial priority analysis is only done in detail if there is a relevant disclosure in the priority interval:
“6.4 In assessing whether a subject-matter within a generic "OR" claim may enjoy partial priority, the first step is to determine the subject-matter disclosed in the priority document that is relevant, i.e. relevant in respect of prior art disclosed in the priority interval. This is to be done in accordance with the disclosure test laid down in the conclusion of G 2/98 and on the basis of explanations put forward by the applicant or patent proprietor to support his claim to priority, in order to show what the skilled person would have been able to derive from the priority document. The next step is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic "OR"-claim not enjoying this priority but itself giving rise to a right to priority, as laid down in Article 88(3) EPC.”
First conceptual part – S + Cu NP < 40, eff.date 19/1/18
• EP-H was filed on 18/7/16, so before the eff date of the first conceptual part, and published on 21/2/18, so after the eff date of the first conceptual part, and is thus an Art.54(3) prior right w.r.t. the first conceptual part
• The 54(3) effect of EP-H is given by the CN text as originally filed, so it only shows S + Cu NP 70-80 micron. It is thus not novelty destroying for S + Cu < 40 nm. As 54(3), it is not to be considered in inv step.
• AT-H was published in April 2017, so before the eff date of the first conceptual part.
• AT-H only shows S + NP, but does not specify any material, size, or the effect of increased energy storage. The first conceptual part is thus novel w.r.t. AT-H due to the material being any metal.
• The first conceptual part is thus novel.
• The first conceptual part is inventive due to the increased energy storage.
Second conceptual part – S + metal NP, but not S + Cu NP < 40, eff. date 25/2/19
• AT-H was published in April 2017, so before the eff. date of the second conceptual part.
• AT-H only shows S + NP, but does not specify any material, size, nor the effect of increased energy storage). The second conceptual part is thus novel w.r.t. AT-H.
• EP-H was filed published on 21/2/18, so before the eff date of the second conceptual part, and is thus an Art.54(2) prior art w.r.t. the second conceptual part.
• EP-H (in the English translation) describes S + Cu 70-80 nm. As the error in translation was not obvious, and the English text is technically sensible, as well as enable (confirmed by the client's experiment in [006]), this erroneous translation forms prior art.
• EP-H (in the English translation) thus discloses S + Cu 70-80 nm,
• and destroys the novelty of the second conceptual part,
• Also EP-H (Chinese) became publicly available in the file of EP-H on 21/2/18, but that relates to particles of 70-80 micron and is thus not novelty-destroying for this claim, which relates to nanoparticles, which are 3 orders of magnitude smaller.
• The website Announcement B, of 21/2/18, is also prior art. It discloses S + Cu 70-80 nm (sole B),
• And also destroys the novelty of the second conceptual part.
• The second conceptual part is not novel.
• And as a consequence, claim 1 lacks novelty.
Claim 2 – S + metal NP < 80 nm
• The analysis given for claim 1 applies mutatis mutandis:
• EP-F1 does not disclose other metal NP < 80 than Cu NP < 40
• EP-F1 does not disclose the genus metal, nor the size 80 nm
• So, the claim to S + metal NP < 80 nm does not benefit from priority
• But its conceptual part that is also in EP-F1 does benefit from partial priority
• Which is S + Cu NP < 40 nm
• So, the first conceptual part of claim 1, corresponding to S + Cu NP < 40 nm, has an effective date of 19/1/18
• Whereas the remaining conceptual part of claim 1, S + metal NP < 80 but not S + Cu NP < 40, has an effective date of 25/2/18
First conceptual part – S + Cu NP < 40, eff. date 19/1/18
• See claim 1’s first conceptual part: novel due the material being metal and the size being < 80 nm
• The first conceptual part is thus novel.
• The first conceptual part is inventive due to the increased energy storage.
Second conceptual part – S + metal NP < 80, but not S + Cu NP < 40, eff. date 25/2/19
• AT-H was published in April 2017, so before the eff date of the second conceptual part.
• AT-H only shows S + NP, but does not specify any material, size, or the effect of increased energy storage). The second conceptual part is thus novel w.r.t. AT-H.
• EP-H was filed published on 21/2/18, so before the eff. date of the second conceptual part, and is thus an Art.54(2) prior art w.r.t. the second conceptual part.
• EP-H (in the English translation) describes S + Cu 70-80 nm. As the error in translation was not obvious, and the English text is technically sensible, this erroneous translation forms prior art.
• EP-H (in the English translation) thus discloses S + Cu 70-80 nm,
• and the S + Cu 70 nm end point destroys the novelty of the second conceptual part S + metal NP < 80 as Cu is a type of metal and the 70 endpoint is within the range < 80.
• Further, the 80 nm end point may be considered to overlap with the range < 80 (or ≤80), also destroying its novelty.
• The website Announcement B, of 21/2/18, is also prior art. It discloses S + Cu 70-80 nm (sole B), and destroys the novelty of the second conceptual part for the same reasons as EP-H (in the English translation).
• The second conceptual part is not novel.
• And as a consequence, claim 2 lacks novelty.
Claim 3 – S + Cu NP < 80 nm
• EP-F1 does not disclose the complete range Cu NP < 80 nm
• So, the claim to S + Cu NP < 80 nm does not benefit from priority
• But its conceptual part that is also in EP-F1 does benefit from partial priority
• Which is S + Cu NP < 40 nm
• So, the first conceptual part of claim 1, corresponding to S + Cu NP < 40 nm, has an effective date of 19/1/18
• Whereas the remaining conceptual part of claim 1, S + Cu NP 40-80 has an effective date of 25/2/18
First conceptual part – S + Cu NP < 40 nm, eff. date 19/1/18
• See claim 1’s first conceptual part
• The first conceptual part is thus novel.
• The first conceptual part is inventive due to the increased energy storage.
Second conceptual part – S + Cu NP 40-80 nm, eff. date 25/2/19
• AT-H was published in April 2017, so before the eff date of the second conceptual part.
• AT-H only shows S + NP, but does not specify any material, size, nor the effect of increased energy storage). The second conceptual part is thus novel w.r.t. AT-H due the material being Cu and the size being 40-80 nm.
• EP-H was filed published on 21/2/18, so before the eff date of the second conceptual part, and is thus an Art.54(2) prior art w.r.t. the second conceptual part.
• EP-H (in the English translation) thus discloses S + Cu 70-80 nm (see above),
• and the S + Cu 70 nm end point destroys the novelty of the second conceptual part S + metal NP < 80 nm as Cu is a type of metal and the 70 nm endpoint is within the range < 80.
• Further, the 80 nm endpoint may be considered to overlap with the range < 80 (or ≤80), also destroying its novelty.
• The website Announcement B, of 21/2/18, is also prior art. It discloses S + Cu 70-80 nm (sole B), and destroys the novelty of the second conceptual part for the same reasons as EP-H (in the English translation).
• The second conceptual part is not novel.
• And as a consequence, claim 3 lacks novelty.
• Note: as the application includes the description of EP-F1, claim 3 could be amended into an explicit OR-claim to “S + Cu NP < 40 OR S + Cu NP 40-80”. An explicit OR could be examined for patentability and priority using multiple priorities of an OR-claim of G 2/98, rather than the specific partial priority of G 1/15 performed above. The first alternative is novel and inventive, the second however not. Thus, to obtain a novel and inventive claim, the claim would need to be amended to “S + Cu < 40 nm” . See Q.3.
Conclusion EP-F2
• None of claims 1, 2 of 3 of EP-F2 is novel and thus not patentable, as it currently stands.
b) EP-F1
Filed on 19/1/2018 by FASTER
No priority claimed
Describes:
• Increased energy storage (effect usable for inventive step)
• Note: we assume the increased energy storage is only described with reference to the claimed embodiment, i.e. S + Cu < 40 nm, even though it could be read as to also refer to the frist sentence of [002], i.e. "all metal nanoparticles modify the foam structure of a show sole, thereby improving the energy storage of the shoe sole". I.e., we assume that "all metal nanoparticles" are not described. This is not fully unambiguous from the paper and we did not initially all have the same understanding.
Claims:
• 1. S + Cu NP < 40 nm
Intentionally no fees paid
Loss-of-rights received June 2018
So too late to revive using FP (<June 2018 + 2m), and RE not possible as intentionally not paid
So EP-F1 itself cannot lead to any patent protection
Further, the priority period lapsed 19/1/18 + 12m -> 19/1/19 (Sat) -> 21/1/19 (Mon), so no new application can be filed validly claiming priority from EP-F1. Priority has however already been claimed by EP-F2
EP-F1 also not published and will never be, so will itself not be 54(2) or 54(3) prior art against any later filing.
c) EP-F3
Filed on 2/2/2018 by FASTER
No priority claimed
Describes:
• Addition of metal NP 35-80 nm increases energy storage
• Any metal can be used
Claims:
• 1. S + metal NP 35-80 nm
Intentionally no fees paid
Loss-of-rights received July 2018
So too late to revive using FP (<July 2018 + 2m), and RE not possible as intentionally not paid
So EP-F3 itself cannot lead to any patent protection
Further, the priority period lapsed 2/2/18 + 12m -> 2/2/19 (Sat) -> 4/2/19 (Mon), so no new application can be filed validly claiming priority from EP-F3.
However, a priority claim from EP-F3 could be added to EP-F2 until 16m from EP-F2’s earliest priority, so until 19/1/18 + 16m -> 19/5/19 (Sun) -> 20/5/19 (Mon)
EP-F3 also not published and will never be, so will itself not be 54(2) or 54(3) prior art against any later filing .
d) no application for
S + SiO2 35-45 nm
Want to sell these on April 2019, no announcement made yet
Q.2 As the situation currently stands, are FASTER or HIKE free to produce or sell the following products in Austria of Germany?
FASTER’s patent applications were discussed under Q.1:
FASTER has no valid claims as it currently stands, so cannot stop or prevent HIKE to produce or sell
HIKE’s patent applications/patents will discussed here first, before concluding on FASTER’s freedom to produce or sell.
AT-H was granted as a national application in AT to HIKE
AT-H claims S + NP
We have no information allowing to invalidate AT-H
HIKE can thus stop and prevent you from selling any shoes with S + NP, i.e., whether made from metal, Cu, SiO2, and irrespective of exact size as long as it is nanoparticles,
• in AT
• as long as AT-H in in force
AT-H cannot be used to stop or prevent us from producing in our factory in DE, as AT-H is only valid in AT
EP-H was granted 16/1/2019
EP-H claims S + Cu 70-80 nm
EP-H was filed (in Chinese; and subsequently an English trabslation was filed) by LONGRUN, but transferred to HIKE, with the transfer registered by the EPO in Feb 2018, so before the grant
HIKE is thus the owner of EP-H
Although EP-H is not validly granted (see Q.3):
• it is currently in force in DE, where validation automatic due to London agreement,
• …so that we can be stopped to produce any shoe with a S + Cu 70-80 sole in DE where our factory is located; we also cannot sell in DE.
• it may have been validated in AT or can still be validated in AT until at least 16/1/19 + 3m -> 16/4/19, by complying with the national requirements, such as translation of the complete description and claims into DE. We will check the AT register.
• …so that we could be stopped to sell any shoe with a S + Cu 70-80 sole in AT.
LONGRUN has transferred its EP-H to HIKE and has no further patent rights (as far as we know).
a) shoes with sole A (= S + SiO2 35-45 nm)
The protection of claim directed to a sole encompasses that of a shoe with such sole
FASTER:
• As this is within the scope of the claim “S + NP (of any size, material, effect)” of AT-H:
• HIKE could stop from selling in AT using AT-H
• HIKE cannot stop us from selling or producing in DE using AT-H
• SiO2 is not Cu, and sizes in the range if 35-45 are not in 70-80 nm, so this shoe is not within the scope of the claim “S +Cu 70-80” of EP-H
HIKE:
• We have no valid patent claim to stop them
b) shoes with sole B (= S + Cu 70-80 nm)
FASTER:
• Shoes with solde B within the scope of the claim “S + NP (of any size, material, effect)” of AT-H:
• HIKE could stop from selling in AT using AT-H
• HIKE cannot stop us from selling or producing in DE using AT-H
• Shoes with sole B are fully covered by the scope of the claim “S +Cu 70-80” of EP-H:
• HIKE could stop us from selling and from producing in DE using EP-H, if EP-H is validated there and as long as it is kept in force there
• HIKE can stop us from selling in AT using EP-H, as long as it is kept in force there
HIKE:
• We have no valid patent claim to stop them
Q.3 How can you improve the situation for FASTER?
We will
a) Invalidate EP-H, or threaten to do so
b) File a new application for S + SiO2 35-45 (Sole A) using Art.55 evident abuse
c) Add a priority claim from EP-F3 to EP-F2, to get claim 2 patentable
d) Amend claim 3 in EP-F2 to overcome the novelty problem
e) Check whether we can extend our territorial scope to also cover China
f) Conclude
a) Invalidate EP-H, or threaten to do so
EP-H was filed, in Chinese, describing S + Cu 70-80 micron
EP-H was incorrectly translated into English as S + Cu 70-80 nm
EP-H was granted with the incorrect translation.
As it is not evident from the English text alone that there is an error, the error can not be remedied as an obvious error, …
… and the skilled person is presented with information that was not directly and unambiguously derivable from the Chinese-language application as filed, such that the English text violates Art. 123(2) (w.r.t. toe Chinese-language application as filed)
In principle, the English translation can be brought into conformity with the Chinese-language application as filed
But, if this is done after the grant, extension/shift of scope is not allowed, Art. 123(3) EPC
So we need to:
File an opposition against EP-H:
• Ground: extension of subject-matter (Art.100(c) + 123(2)): 70-80 nm (as granted) not derivable from 70-80 micron (as filed)
• In En/Fr/De
• Evidence: the certified translation
• At the latest: 16/1/19 + 9m -> 16/10/19 (Wed)
HIKE will not be able to remedy this, as they are in a trap between Art.14(2) and 123(3) for bringing into conformity, and 123(2) and 123(3) for amending to 70-80 micron
HIKE will thus lose their EP-H patent for S+ Cu 70-80 nm
And can no longer stop us in DE.
Their AT-H will however still hamper us.
As it is only February, we could alternatively discuss the situation with HIKE and ask for a free license in return of not attacking their patent
b) File a new application for S + SiO2 35-45 nm (Sole A) using Art.55 evident abuse
No one has an application for S + SiO2 35-45 nm (Sole A)
Sole A has been publicly available on the website of HIKE on 30/1/19
So, a new application directed to it would in principle not be new
However, HIKE has bought the information from Mr. Furious
Mr Furious admitted in a written statement that he was angry of not getting a promotion from us, when he was till our employee, and therefore had sold the information to HIKE on 24/12/18
This sale can be considered an evident abuse against us, as it is clear from Mr Furious’ statement that he had the intent to harm us with that sale.
The website announcement is clearly in consequence of that sale.
Therefore, we can file a new application directed to Sole A, and benefit from Art.55 to discard the website announcement of 30/1/19, and if needed also the sold info of 24/12/18
Legally, we need to file the new appl at the latest 30/1/19 + 6m -> 30/7/19, or -to be safe- 24/12/18 + 6m -> 24/6/19.
The announced sales from HIKE could also be discarded, as they are in consequence of the sold info, but I recommend to file our appl before their sales start.
The critical date is determined by our wish to sell ourselves in April: we should file it before we start our sales, as our own sales will otherwise be novelty-destroying prior art.
We can use the written statement of Mr. Furious as evidence.
The website announcement can thus be discarded as prior art.
AT-H, EP-H and the website announcement B are full prior art, but as none discloses SiO2, our claim will be novel w.r.t. each of these.
EP-F2 is not yet published as we did not (yet) ask for early publ and publ is expected promptly after 19/1/18 + 18m -> 19/7/19 , so probably 24/7/19, so EP-F2 will be Art.54(3) prior art vs the new appl
As EP-F2 does not mention SiO2, our new claim will be new.
As no other information on SiO2 is publicly available, we don’t need to limit our claims to 35-45 nm to be novel.
In 35-45 nm, the energy storage is increased by 300%, so a claim directed to this range is definitely inventive.
I propose to add a wider range as well, where we can assume the energy storage also to be significant. Please provide me such info. I propose for now to use 25-55 nm as a broader claim, as well as < 80.
Although there may be a risk that the claim will not be considered inventive over the whole scope, I propose we also include a claim without size limitation to get the broadest possible protection. Inventive step may arise from using SiO2, which is not a metal, and for which the effect is unexpected.
So, I propose to file as soon as possible, but at the latest before you announce your sales of Sole A:
• A new EP application EP-F4
• In German
• Describing and claiming S + SiO2, incl size ranges
• Claims:
1. S + SiO2 NP
2. Si + SiO2 NP < 80 nm
3. Si + SIO2 NP 25-55 nm
4. Si + SiO2 NP 35-45 nm
We will request early publication to create provisional protection in DE and AT to prevent HIKE from producing and selling Sole A (Si + SiO2 35-45 nm)
• (note: any possible continued prior use is not considered, even though there may be such possibility for HIKE in view of the announcement A of 30/1/19. Such continued prior use however relies strongly on national law, and is ignored in the D papers)
We will accelerate the grant, by paying the examination fee early, waiving the R.70(2) communication, requesting PACE examination as soon as the examining division is responsible).
We can then stop and prevent HIKE from producing and selling Sole A.
HIKE can however also still stop us from doing so in AT, in view of their AT-H.
c) Add a priority claim from EP-F3 to EP-F2, to get claim 2 patentable
We should add a priority claim from EP-F3 to EP-F2
Before 19/1/18 + 16m -> 19/5/19 (Sun) -> 20/5/19 (Mon)
c-i) effect on claim 2
Then, claim 2 gets a partial priority to S + metal NP 35-80 nm, which is disclosed in EP-F3
Claim 2, S + metal NP < 80 nm may then be conceptually split into
• a first conceptual part S + metal NP 35-80 nm that benefits from priority from EP-F3* and
• a second conceptual part S + metal NP < 35 that does not benefit from priority
*Note that EP-F1 is the first application for the further conceptual part S + Cu < 40, which is encompassed by this first conceptual part of claim 2. So, this first conceptual part does, strictly speaking, not benefit in full from priority from EP-F3, but in part from EP-F1. That complication/subtlety is ignored herein. As priority is also claimed from EP-F1, and there is no relevant disclosure in the time interval between EP-F1 and EP-F3, there is no real need to expand on this subtlety.
Hereby, the originally novelty destroying EP-H becomes a 54(3) prior right for the first conceptual part
…and the first conceptual part is novel, as EP-H’s 54(3) subject-matter is Cu 70-80 microns (whereas it was 54(2) u 70-80 nm before we added the priority).
Hereby, the originally novelty destroying EP-H remains a 54(2) prior art for the second conceptual part
Also the second conceptual part is novel, as EP-H’s does not show < 35 nm, but only 70-80 nm
Claim 2 thus becomes novel.
Claim 2 is also inventive due to its increased energy storage.
Claim 2 thus becomes patentable
…and we can get it to grant and validate in DE and AT
..so we can stop/ prevent HIKE to produce sell S + Cu NP 70-80 in DE and AT
c-ii) effect on claim 3
Adding the priority claim has no effect on claim 3.
c-iii) effect on claim 1 (added on 4-3-2019/ 6-3-2019)
Adding the priority claim has an effect on the priority situation for claim 1, but arguable not for its patentability:
Then, claim 1 gets a partial priority to S + metal NP 35-80 nm which is disclosed in EP-F3
Claim 1, S + metal may then be conceptually split into
• a first conceptual part S + metal NP 35-80 nm that benefits from priority from EP-F3 and
• a second conceptual part S + metal NP, but not 35-80 nm that does not benefit from priority
(Note: the first comceptual part if not the first application for its conceptual part S + Cu < 40 nm, as EF-F1 is, but as priority is claimed from that as well, we did not explicitly include that partial priority om claim 1 as well here, but referf to Q.1)
Hereby, the originally novelty destroying EP-H becomes a 54(3) prior right for the first conceptual part
…and the first conceptual part is novel w.r.t. EP-H, as EP-H (Chinese) 54(3) subject-matter is Cu 70-80 microns (whereas it was 54(2) u 70-80 nm before we added the priority).
Hereby, the originally novelty destroying EP-H (English) remains a 54(2) prior art for the second conceptual part
Also the second conceptual part is novel over EP-H Cu NP 70-80 nm, as the second conceptual part is limited to "not 35-80 nm", so excludes 70-80 nm.
• Note: one could argue that ">80 nm" is not novel over "70-80", as it could be considered an overlapping range and/or using the "seriously contemplating" argument. However, as the part that would be overlapping has priority, this argument probably does not stand.
The second conceptual part is also novel over EP-H (Chinese) which is a 54(2) as it is available from file inspection as of EP-H's publication.
But that shows microparticles (1 micron = 1000 nm) and not nanoparticles (< 100 nm), so more than an order of magnitude larger, so the second conceptual part is novel hereover.
Claim 1 thus becomes novel.
However, the second conceptual part S + metal NP, but not 35-80 nm (or, S + metal NP < 35 or > 80 nm) is not inventive w.r.t. EP-H Cu 70-80 nm.
The only effect we know is increased energy storage, but this is better with the prior-art Cu than with other metals from the claimed genus NP, and is better at smaller sizes whereas claim 2 is directed to larger sizes.
So, Claim 1 is not inventive.
Claim 1 thus remains unpatentable when the priority claim to EP-F3 is added.
• Note: as far as we know, there is no case law as to how to deal with inventive step in a partial priority situation. G 1/15 was decided in the context of (presumed) Art.54(3) situations. The case is also complex because of the upper end-point of the conceptual part with partial-priority (80 nm) and the lower end-point of the conceptual part without partial-priority (80 nm) coinciding with a prior-art end-point. Luciky, the client only needs claim 2 (and preferably claim 3)...
• Note: claim 1 could be amended as an explicit OR-claim S + metal NP <=80 OR S + metal NP > 80 (as the point 80 nm is disclosed). This would change the partial priority discussion (of conceptual parts) into a multiple priority dsicussion (of explicit alternatives), where the first alternative (S + metal NP < 80 nm)needs the same partial priority discussion as claim 2; there is no reason why that would change the final conclusion as to patentability. However, it cannot be amended into an explicit OR-claim S + metal NP 35-80 OR S + metal NP < 35 OR S + metal NP > 80 (as the point 35 nm is disclosed in EP-F2), which would have let to a pure multiple priority discussion of these three explicit alternative sibject-matters in claim 1.
d) Amend claim 3 in EP-F2 to overcome the novelty problem
We will amend claim 3 of EP-F2 from S + Cu NP < 80 to S + Cu NP < 40
• Amended claim 3 thus corresponds to the first conceptual part of original claim 3 (see Q.1-2) – S + Cu NP < 40, eff. date 19/1/18
• See claim 1’s first conceptual part
• Amended claim 3 is thus novel.
• Amended claim 3 is inventive due to the increased energy storage.
Claim 3 thus becomes patentable
…and we can get it to grant and validate in DE and AT
..so we can stop/ prevent HIKE to produce sell S + Cu NP <40 in DE and AT
For EP-F2 to get to grant, we thus need to:
• Delete original claim 1
• Add a priority claim to EP-F2, such that original claim 2 becomes patentable
• Amend claim 3, such that it becomes novel and patentable
e) Check whether we can extend our territorial scope to also cover China
As discussed above, the priority periods from EP-F1 and EP-F3 have already expired, so we cannot file a new application (CN, PCT) validly claiming priority from any of these. A new application would thus not ne novel and inventive.
The priority period from EP-F2 expired 25/2/18 + 25/2/19 (Mon) = yesterday, so also too late to file a new application validly claiming priority from this.
We could file the new application (see Q.3-b) to S + SiO2 (35-45) as a PCT application, or file a subsequent PCT appl, or file a subsequent CN application to get protection in China.
• We could then negotiate with LONGRUN, e.g. to get license income from LONGRUN.
f) Conclusion and advise
After all the above actions:
HIKE will still have AT-H, with which they can stop you:
• from producing and selling Sole A, Sole B and any sole with NPs
• in AT, but not outside
• so you will need a license from them to be able to sell any sole with NPs, incl sole A and sole B, in AT
You will have a valid claim to S + SiO2 NP 35-45 nm via EP-F4 (300% improvement)
• or potentially an even broader scope (broader size range)
• with you can stop/prevent HIKE to produce and sell Sole A where you validate
You will have a valid claim to S + Cu NP 70-80 nm via EP-F2 (150% improvement)
• with you can stop/prevent HIKE to produce and sell Sole B where you validate
You will have a valid claim to S + Cu NP <40 nm via EP-F2 (200% improvement)
• with you can stop/prevent HIKE to produce and sell such soles where you validate
We recommend to negotiate a cross-license with HIKE:
• wherein HIKE allows you to produce and sell any sole with NP in AT, by giving you a license on AT-H for AT
without that, you cannot produce any of the mentioned soles, also not sole B that you are so keen to use
• wherein you allow HIKE to produce sole B in AT, and sell outside our main markets (not in DE and AT)
to give them something in return, but not competing with you
• if this is not acceptable for you as you do not want anyone else to produce and sell sole B, or if this is not acceptable for HIKE, you can consider to offer a license for a different product range or for other countries
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 impressions about D 2019: it is here.
The D paper is available here in English, ici in French and hier in German.
Roel, Diane, Jelle
(c) DeltaPatents 2019
An Australian competitor, HIKE, is also active in the field of running shoes, and has its only factory in Austria. HIKE made several announcents of the internet, and has two patents: a national Austrian patent AT-H with a broad claim scope, and a European patent EP-H which has a problem with its translation (EP-H was originally filed by a Chinese company, LONGRUN, in Chinese, and the English translation has a major error in it).
There is also a Mr Furious, a former employee of tours, who sold information to HIKE when he was angry for not getting promoted.
In this paper, analysis of priority was a key topic, and partial priority was present very pronouncedly -as expected-. Mr Furious' acts are an evident abuse against your client, and gave the opportunity to file a new application for Silica nanoparticle soles.
Below we give our answer, with a quite complete discussion as to whether priority is valid or not, what all the prior art is, novelty, inventive step, provisional protection, full protection, etc.
(For DI, see here; for general impressions to D as a whole, see here).
Our answer:
Q.1 Outline the patent situation as it currently stands for the claims of FASTER’s applications
a) EP-F2
Filed on 25/2/2018 by FASTER
Claims priority from EP-F1
• Also filed by FASTER, so same applicant
• Within 19/1/18 + 12m -> 19/1/19 (Sat) -> 21/1/19, so in time for valid priority
• So, priority is valid as far as the claims relate to the same invention as disclosed in EP-F1 (description and claims) – see below
Describes:
• =EP-F1, so:
• Increased energy storage (effect usable for inventive step; note: not indicated whether the different degrees of increased energy storage are described in the application)
• S + metal NP
• S + metal NP < 80 nm
• S + Cu NP < 80 nm
Claims:
• 1. S + metal NP
• 2. S + metal NP < 80 nm
• 3. S + Cu NP < 80 nm
Claim 1: S + metal NP
• EP-F1 does not disclose other metal NP than Cu NP
• Metal is a generalization from Cu, so not the same
• So, the claim to S + metal NP does not benefit from priority
• But its conceptual part that is also in EP-F1 does benefit from partial priority
• Which is S + Cu NP < 40 nm
• So, the first conceptual part of claim 1, corresponding to S + Cu NP < 40 nm, has an effective date of 19/1/18
• Whereas the remaining conceptual part of claim 1, S + metal NP but not S + Cu NP < 40, has an effective date of 25/2/18
*Remark: we do an extensive partial priority discussion by straightforward application of the headnote of G 1/15:
“Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.”
One could take a shortcut by following the steps of r.6.4 of G 1/15, wherein partial priority analysis is only done in detail if there is a relevant disclosure in the priority interval:
“6.4 In assessing whether a subject-matter within a generic "OR" claim may enjoy partial priority, the first step is to determine the subject-matter disclosed in the priority document that is relevant, i.e. relevant in respect of prior art disclosed in the priority interval. This is to be done in accordance with the disclosure test laid down in the conclusion of G 2/98 and on the basis of explanations put forward by the applicant or patent proprietor to support his claim to priority, in order to show what the skilled person would have been able to derive from the priority document. The next step is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic "OR"-claim not enjoying this priority but itself giving rise to a right to priority, as laid down in Article 88(3) EPC.”
First conceptual part – S + Cu NP < 40, eff.date 19/1/18
• EP-H was filed on 18/7/16, so before the eff date of the first conceptual part, and published on 21/2/18, so after the eff date of the first conceptual part, and is thus an Art.54(3) prior right w.r.t. the first conceptual part
• The 54(3) effect of EP-H is given by the CN text as originally filed, so it only shows S + Cu NP 70-80 micron. It is thus not novelty destroying for S + Cu < 40 nm. As 54(3), it is not to be considered in inv step.
• AT-H was published in April 2017, so before the eff date of the first conceptual part.
• AT-H only shows S + NP, but does not specify any material, size, or the effect of increased energy storage. The first conceptual part is thus novel w.r.t. AT-H due to the material being any metal.
• The first conceptual part is thus novel.
• The first conceptual part is inventive due to the increased energy storage.
Second conceptual part – S + metal NP, but not S + Cu NP < 40, eff. date 25/2/19
• AT-H was published in April 2017, so before the eff. date of the second conceptual part.
• AT-H only shows S + NP, but does not specify any material, size, nor the effect of increased energy storage). The second conceptual part is thus novel w.r.t. AT-H.
• EP-H was filed published on 21/2/18, so before the eff date of the second conceptual part, and is thus an Art.54(2) prior art w.r.t. the second conceptual part.
• EP-H (in the English translation) describes S + Cu 70-80 nm. As the error in translation was not obvious, and the English text is technically sensible, as well as enable (confirmed by the client's experiment in [006]), this erroneous translation forms prior art.
• EP-H (in the English translation) thus discloses S + Cu 70-80 nm,
• and destroys the novelty of the second conceptual part,
• Also EP-H (Chinese) became publicly available in the file of EP-H on 21/2/18, but that relates to particles of 70-80 micron and is thus not novelty-destroying for this claim, which relates to nanoparticles, which are 3 orders of magnitude smaller.
• The website Announcement B, of 21/2/18, is also prior art. It discloses S + Cu 70-80 nm (sole B),
• And also destroys the novelty of the second conceptual part.
• The second conceptual part is not novel.
• And as a consequence, claim 1 lacks novelty.
Claim 2 – S + metal NP < 80 nm
• The analysis given for claim 1 applies mutatis mutandis:
• EP-F1 does not disclose other metal NP < 80 than Cu NP < 40
• EP-F1 does not disclose the genus metal, nor the size 80 nm
• So, the claim to S + metal NP < 80 nm does not benefit from priority
• But its conceptual part that is also in EP-F1 does benefit from partial priority
• Which is S + Cu NP < 40 nm
• So, the first conceptual part of claim 1, corresponding to S + Cu NP < 40 nm, has an effective date of 19/1/18
• Whereas the remaining conceptual part of claim 1, S + metal NP < 80 but not S + Cu NP < 40, has an effective date of 25/2/18
First conceptual part – S + Cu NP < 40, eff. date 19/1/18
• See claim 1’s first conceptual part: novel due the material being metal and the size being < 80 nm
• The first conceptual part is thus novel.
• The first conceptual part is inventive due to the increased energy storage.
Second conceptual part – S + metal NP < 80, but not S + Cu NP < 40, eff. date 25/2/19
• AT-H was published in April 2017, so before the eff date of the second conceptual part.
• AT-H only shows S + NP, but does not specify any material, size, or the effect of increased energy storage). The second conceptual part is thus novel w.r.t. AT-H.
• EP-H was filed published on 21/2/18, so before the eff. date of the second conceptual part, and is thus an Art.54(2) prior art w.r.t. the second conceptual part.
• EP-H (in the English translation) describes S + Cu 70-80 nm. As the error in translation was not obvious, and the English text is technically sensible, this erroneous translation forms prior art.
• EP-H (in the English translation) thus discloses S + Cu 70-80 nm,
• and the S + Cu 70 nm end point destroys the novelty of the second conceptual part S + metal NP < 80 as Cu is a type of metal and the 70 endpoint is within the range < 80.
• Further, the 80 nm end point may be considered to overlap with the range < 80 (or ≤80), also destroying its novelty.
• The website Announcement B, of 21/2/18, is also prior art. It discloses S + Cu 70-80 nm (sole B), and destroys the novelty of the second conceptual part for the same reasons as EP-H (in the English translation).
• The second conceptual part is not novel.
• And as a consequence, claim 2 lacks novelty.
Claim 3 – S + Cu NP < 80 nm
• EP-F1 does not disclose the complete range Cu NP < 80 nm
• So, the claim to S + Cu NP < 80 nm does not benefit from priority
• But its conceptual part that is also in EP-F1 does benefit from partial priority
• Which is S + Cu NP < 40 nm
• So, the first conceptual part of claim 1, corresponding to S + Cu NP < 40 nm, has an effective date of 19/1/18
• Whereas the remaining conceptual part of claim 1, S + Cu NP 40-80 has an effective date of 25/2/18
First conceptual part – S + Cu NP < 40 nm, eff. date 19/1/18
• See claim 1’s first conceptual part
• The first conceptual part is thus novel.
• The first conceptual part is inventive due to the increased energy storage.
Second conceptual part – S + Cu NP 40-80 nm, eff. date 25/2/19
• AT-H was published in April 2017, so before the eff date of the second conceptual part.
• AT-H only shows S + NP, but does not specify any material, size, nor the effect of increased energy storage). The second conceptual part is thus novel w.r.t. AT-H due the material being Cu and the size being 40-80 nm.
• EP-H was filed published on 21/2/18, so before the eff date of the second conceptual part, and is thus an Art.54(2) prior art w.r.t. the second conceptual part.
• EP-H (in the English translation) thus discloses S + Cu 70-80 nm (see above),
• and the S + Cu 70 nm end point destroys the novelty of the second conceptual part S + metal NP < 80 nm as Cu is a type of metal and the 70 nm endpoint is within the range < 80.
• Further, the 80 nm endpoint may be considered to overlap with the range < 80 (or ≤80), also destroying its novelty.
• The website Announcement B, of 21/2/18, is also prior art. It discloses S + Cu 70-80 nm (sole B), and destroys the novelty of the second conceptual part for the same reasons as EP-H (in the English translation).
• The second conceptual part is not novel.
• And as a consequence, claim 3 lacks novelty.
• Note: as the application includes the description of EP-F1, claim 3 could be amended into an explicit OR-claim to “S + Cu NP < 40 OR S + Cu NP 40-80”. An explicit OR could be examined for patentability and priority using multiple priorities of an OR-claim of G 2/98, rather than the specific partial priority of G 1/15 performed above. The first alternative is novel and inventive, the second however not. Thus, to obtain a novel and inventive claim, the claim would need to be amended to “S + Cu < 40 nm” . See Q.3.
Conclusion EP-F2
• None of claims 1, 2 of 3 of EP-F2 is novel and thus not patentable, as it currently stands.
b) EP-F1
Filed on 19/1/2018 by FASTER
No priority claimed
Describes:
• Increased energy storage (effect usable for inventive step)
• Note: we assume the increased energy storage is only described with reference to the claimed embodiment, i.e. S + Cu < 40 nm, even though it could be read as to also refer to the frist sentence of [002], i.e. "all metal nanoparticles modify the foam structure of a show sole, thereby improving the energy storage of the shoe sole". I.e., we assume that "all metal nanoparticles" are not described. This is not fully unambiguous from the paper and we did not initially all have the same understanding.
Claims:
• 1. S + Cu NP < 40 nm
Intentionally no fees paid
Loss-of-rights received June 2018
So too late to revive using FP (<June 2018 + 2m), and RE not possible as intentionally not paid
So EP-F1 itself cannot lead to any patent protection
Further, the priority period lapsed 19/1/18 + 12m -> 19/1/19 (Sat) -> 21/1/19 (Mon), so no new application can be filed validly claiming priority from EP-F1. Priority has however already been claimed by EP-F2
EP-F1 also not published and will never be, so will itself not be 54(2) or 54(3) prior art against any later filing.
c) EP-F3
Filed on 2/2/2018 by FASTER
No priority claimed
Describes:
• Addition of metal NP 35-80 nm increases energy storage
• Any metal can be used
Claims:
• 1. S + metal NP 35-80 nm
Intentionally no fees paid
Loss-of-rights received July 2018
So too late to revive using FP (<July 2018 + 2m), and RE not possible as intentionally not paid
So EP-F3 itself cannot lead to any patent protection
Further, the priority period lapsed 2/2/18 + 12m -> 2/2/19 (Sat) -> 4/2/19 (Mon), so no new application can be filed validly claiming priority from EP-F3.
However, a priority claim from EP-F3 could be added to EP-F2 until 16m from EP-F2’s earliest priority, so until 19/1/18 + 16m -> 19/5/19 (Sun) -> 20/5/19 (Mon)
EP-F3 also not published and will never be, so will itself not be 54(2) or 54(3) prior art against any later filing .
d) no application for
S + SiO2 35-45 nm
Want to sell these on April 2019, no announcement made yet
Q.2 As the situation currently stands, are FASTER or HIKE free to produce or sell the following products in Austria of Germany?
FASTER’s patent applications were discussed under Q.1:
FASTER has no valid claims as it currently stands, so cannot stop or prevent HIKE to produce or sell
HIKE’s patent applications/patents will discussed here first, before concluding on FASTER’s freedom to produce or sell.
AT-H was granted as a national application in AT to HIKE
AT-H claims S + NP
We have no information allowing to invalidate AT-H
HIKE can thus stop and prevent you from selling any shoes with S + NP, i.e., whether made from metal, Cu, SiO2, and irrespective of exact size as long as it is nanoparticles,
• in AT
• as long as AT-H in in force
AT-H cannot be used to stop or prevent us from producing in our factory in DE, as AT-H is only valid in AT
EP-H was granted 16/1/2019
EP-H claims S + Cu 70-80 nm
EP-H was filed (in Chinese; and subsequently an English trabslation was filed) by LONGRUN, but transferred to HIKE, with the transfer registered by the EPO in Feb 2018, so before the grant
HIKE is thus the owner of EP-H
Although EP-H is not validly granted (see Q.3):
• it is currently in force in DE, where validation automatic due to London agreement,
• …so that we can be stopped to produce any shoe with a S + Cu 70-80 sole in DE where our factory is located; we also cannot sell in DE.
• it may have been validated in AT or can still be validated in AT until at least 16/1/19 + 3m -> 16/4/19, by complying with the national requirements, such as translation of the complete description and claims into DE. We will check the AT register.
• …so that we could be stopped to sell any shoe with a S + Cu 70-80 sole in AT.
LONGRUN has transferred its EP-H to HIKE and has no further patent rights (as far as we know).
a) shoes with sole A (= S + SiO2 35-45 nm)
The protection of claim directed to a sole encompasses that of a shoe with such sole
FASTER:
• As this is within the scope of the claim “S + NP (of any size, material, effect)” of AT-H:
• HIKE could stop from selling in AT using AT-H
• HIKE cannot stop us from selling or producing in DE using AT-H
• SiO2 is not Cu, and sizes in the range if 35-45 are not in 70-80 nm, so this shoe is not within the scope of the claim “S +Cu 70-80” of EP-H
HIKE:
• We have no valid patent claim to stop them
b) shoes with sole B (= S + Cu 70-80 nm)
FASTER:
• Shoes with solde B within the scope of the claim “S + NP (of any size, material, effect)” of AT-H:
• HIKE could stop from selling in AT using AT-H
• HIKE cannot stop us from selling or producing in DE using AT-H
• Shoes with sole B are fully covered by the scope of the claim “S +Cu 70-80” of EP-H:
• HIKE could stop us from selling and from producing in DE using EP-H, if EP-H is validated there and as long as it is kept in force there
• HIKE can stop us from selling in AT using EP-H, as long as it is kept in force there
HIKE:
• We have no valid patent claim to stop them
Q.3 How can you improve the situation for FASTER?
We will
a) Invalidate EP-H, or threaten to do so
b) File a new application for S + SiO2 35-45 (Sole A) using Art.55 evident abuse
c) Add a priority claim from EP-F3 to EP-F2, to get claim 2 patentable
d) Amend claim 3 in EP-F2 to overcome the novelty problem
e) Check whether we can extend our territorial scope to also cover China
f) Conclude
a) Invalidate EP-H, or threaten to do so
EP-H was filed, in Chinese, describing S + Cu 70-80 micron
EP-H was incorrectly translated into English as S + Cu 70-80 nm
EP-H was granted with the incorrect translation.
As it is not evident from the English text alone that there is an error, the error can not be remedied as an obvious error, …
… and the skilled person is presented with information that was not directly and unambiguously derivable from the Chinese-language application as filed, such that the English text violates Art. 123(2) (w.r.t. toe Chinese-language application as filed)
In principle, the English translation can be brought into conformity with the Chinese-language application as filed
But, if this is done after the grant, extension/shift of scope is not allowed, Art. 123(3) EPC
So we need to:
File an opposition against EP-H:
• Ground: extension of subject-matter (Art.100(c) + 123(2)): 70-80 nm (as granted) not derivable from 70-80 micron (as filed)
• In En/Fr/De
• Evidence: the certified translation
• At the latest: 16/1/19 + 9m -> 16/10/19 (Wed)
HIKE will not be able to remedy this, as they are in a trap between Art.14(2) and 123(3) for bringing into conformity, and 123(2) and 123(3) for amending to 70-80 micron
HIKE will thus lose their EP-H patent for S+ Cu 70-80 nm
And can no longer stop us in DE.
Their AT-H will however still hamper us.
As it is only February, we could alternatively discuss the situation with HIKE and ask for a free license in return of not attacking their patent
b) File a new application for S + SiO2 35-45 nm (Sole A) using Art.55 evident abuse
No one has an application for S + SiO2 35-45 nm (Sole A)
Sole A has been publicly available on the website of HIKE on 30/1/19
So, a new application directed to it would in principle not be new
However, HIKE has bought the information from Mr. Furious
Mr Furious admitted in a written statement that he was angry of not getting a promotion from us, when he was till our employee, and therefore had sold the information to HIKE on 24/12/18
This sale can be considered an evident abuse against us, as it is clear from Mr Furious’ statement that he had the intent to harm us with that sale.
The website announcement is clearly in consequence of that sale.
Therefore, we can file a new application directed to Sole A, and benefit from Art.55 to discard the website announcement of 30/1/19, and if needed also the sold info of 24/12/18
Legally, we need to file the new appl at the latest 30/1/19 + 6m -> 30/7/19, or -to be safe- 24/12/18 + 6m -> 24/6/19.
The announced sales from HIKE could also be discarded, as they are in consequence of the sold info, but I recommend to file our appl before their sales start.
The critical date is determined by our wish to sell ourselves in April: we should file it before we start our sales, as our own sales will otherwise be novelty-destroying prior art.
We can use the written statement of Mr. Furious as evidence.
The website announcement can thus be discarded as prior art.
AT-H, EP-H and the website announcement B are full prior art, but as none discloses SiO2, our claim will be novel w.r.t. each of these.
EP-F2 is not yet published as we did not (yet) ask for early publ and publ is expected promptly after 19/1/18 + 18m -> 19/7/19 , so probably 24/7/19, so EP-F2 will be Art.54(3) prior art vs the new appl
As EP-F2 does not mention SiO2, our new claim will be new.
As no other information on SiO2 is publicly available, we don’t need to limit our claims to 35-45 nm to be novel.
In 35-45 nm, the energy storage is increased by 300%, so a claim directed to this range is definitely inventive.
I propose to add a wider range as well, where we can assume the energy storage also to be significant. Please provide me such info. I propose for now to use 25-55 nm as a broader claim, as well as < 80.
Although there may be a risk that the claim will not be considered inventive over the whole scope, I propose we also include a claim without size limitation to get the broadest possible protection. Inventive step may arise from using SiO2, which is not a metal, and for which the effect is unexpected.
So, I propose to file as soon as possible, but at the latest before you announce your sales of Sole A:
• A new EP application EP-F4
• In German
• Describing and claiming S + SiO2, incl size ranges
• Claims:
1. S + SiO2 NP
2. Si + SiO2 NP < 80 nm
3. Si + SIO2 NP 25-55 nm
4. Si + SiO2 NP 35-45 nm
We will request early publication to create provisional protection in DE and AT to prevent HIKE from producing and selling Sole A (Si + SiO2 35-45 nm)
• (note: any possible continued prior use is not considered, even though there may be such possibility for HIKE in view of the announcement A of 30/1/19. Such continued prior use however relies strongly on national law, and is ignored in the D papers)
We will accelerate the grant, by paying the examination fee early, waiving the R.70(2) communication, requesting PACE examination as soon as the examining division is responsible).
We can then stop and prevent HIKE from producing and selling Sole A.
HIKE can however also still stop us from doing so in AT, in view of their AT-H.
c) Add a priority claim from EP-F3 to EP-F2, to get claim 2 patentable
We should add a priority claim from EP-F3 to EP-F2
Before 19/1/18 + 16m -> 19/5/19 (Sun) -> 20/5/19 (Mon)
c-i) effect on claim 2
Then, claim 2 gets a partial priority to S + metal NP 35-80 nm, which is disclosed in EP-F3
Claim 2, S + metal NP < 80 nm may then be conceptually split into
• a first conceptual part S + metal NP 35-80 nm that benefits from priority from EP-F3* and
• a second conceptual part S + metal NP < 35 that does not benefit from priority
*Note that EP-F1 is the first application for the further conceptual part S + Cu < 40, which is encompassed by this first conceptual part of claim 2. So, this first conceptual part does, strictly speaking, not benefit in full from priority from EP-F3, but in part from EP-F1. That complication/subtlety is ignored herein. As priority is also claimed from EP-F1, and there is no relevant disclosure in the time interval between EP-F1 and EP-F3, there is no real need to expand on this subtlety.
Hereby, the originally novelty destroying EP-H becomes a 54(3) prior right for the first conceptual part
…and the first conceptual part is novel, as EP-H’s 54(3) subject-matter is Cu 70-80 microns (whereas it was 54(2) u 70-80 nm before we added the priority).
Hereby, the originally novelty destroying EP-H remains a 54(2) prior art for the second conceptual part
Also the second conceptual part is novel, as EP-H’s does not show < 35 nm, but only 70-80 nm
Claim 2 thus becomes novel.
Claim 2 is also inventive due to its increased energy storage.
Claim 2 thus becomes patentable
…and we can get it to grant and validate in DE and AT
..so we can stop/ prevent HIKE to produce sell S + Cu NP 70-80 in DE and AT
c-ii) effect on claim 3
Adding the priority claim has no effect on claim 3.
c-iii) effect on claim 1 (added on 4-3-2019/ 6-3-2019)
Adding the priority claim has an effect on the priority situation for claim 1, but arguable not for its patentability:
Then, claim 1 gets a partial priority to S + metal NP 35-80 nm which is disclosed in EP-F3
Claim 1, S + metal may then be conceptually split into
• a first conceptual part S + metal NP 35-80 nm that benefits from priority from EP-F3 and
• a second conceptual part S + metal NP, but not 35-80 nm that does not benefit from priority
(Note: the first comceptual part if not the first application for its conceptual part S + Cu < 40 nm, as EF-F1 is, but as priority is claimed from that as well, we did not explicitly include that partial priority om claim 1 as well here, but referf to Q.1)
Hereby, the originally novelty destroying EP-H becomes a 54(3) prior right for the first conceptual part
…and the first conceptual part is novel w.r.t. EP-H, as EP-H (Chinese) 54(3) subject-matter is Cu 70-80 microns (whereas it was 54(2) u 70-80 nm before we added the priority).
Hereby, the originally novelty destroying EP-H (English) remains a 54(2) prior art for the second conceptual part
Also the second conceptual part is novel over EP-H Cu NP 70-80 nm, as the second conceptual part is limited to "not 35-80 nm", so excludes 70-80 nm.
• Note: one could argue that ">80 nm" is not novel over "70-80", as it could be considered an overlapping range and/or using the "seriously contemplating" argument. However, as the part that would be overlapping has priority, this argument probably does not stand.
The second conceptual part is also novel over EP-H (Chinese) which is a 54(2) as it is available from file inspection as of EP-H's publication.
But that shows microparticles (1 micron = 1000 nm) and not nanoparticles (< 100 nm), so more than an order of magnitude larger, so the second conceptual part is novel hereover.
Claim 1 thus becomes novel.
However, the second conceptual part S + metal NP, but not 35-80 nm (or, S + metal NP < 35 or > 80 nm) is not inventive w.r.t. EP-H Cu 70-80 nm.
The only effect we know is increased energy storage, but this is better with the prior-art Cu than with other metals from the claimed genus NP, and is better at smaller sizes whereas claim 2 is directed to larger sizes.
So, Claim 1 is not inventive.
Claim 1 thus remains unpatentable when the priority claim to EP-F3 is added.
• Note: as far as we know, there is no case law as to how to deal with inventive step in a partial priority situation. G 1/15 was decided in the context of (presumed) Art.54(3) situations. The case is also complex because of the upper end-point of the conceptual part with partial-priority (80 nm) and the lower end-point of the conceptual part without partial-priority (80 nm) coinciding with a prior-art end-point. Luciky, the client only needs claim 2 (and preferably claim 3)...
• Note: claim 1 could be amended as an explicit OR-claim S + metal NP <=80 OR S + metal NP > 80 (as the point 80 nm is disclosed). This would change the partial priority discussion (of conceptual parts) into a multiple priority dsicussion (of explicit alternatives), where the first alternative (S + metal NP < 80 nm)needs the same partial priority discussion as claim 2; there is no reason why that would change the final conclusion as to patentability. However, it cannot be amended into an explicit OR-claim S + metal NP 35-80 OR S + metal NP < 35 OR S + metal NP > 80 (as the point 35 nm is disclosed in EP-F2), which would have let to a pure multiple priority discussion of these three explicit alternative sibject-matters in claim 1.
d) Amend claim 3 in EP-F2 to overcome the novelty problem
We will amend claim 3 of EP-F2 from S + Cu NP < 80 to S + Cu NP < 40
• Amended claim 3 thus corresponds to the first conceptual part of original claim 3 (see Q.1-2) – S + Cu NP < 40, eff. date 19/1/18
• See claim 1’s first conceptual part
• Amended claim 3 is thus novel.
• Amended claim 3 is inventive due to the increased energy storage.
Claim 3 thus becomes patentable
…and we can get it to grant and validate in DE and AT
..so we can stop/ prevent HIKE to produce sell S + Cu NP <40 in DE and AT
For EP-F2 to get to grant, we thus need to:
• Delete original claim 1
• Add a priority claim to EP-F2, such that original claim 2 becomes patentable
• Amend claim 3, such that it becomes novel and patentable
e) Check whether we can extend our territorial scope to also cover China
As discussed above, the priority periods from EP-F1 and EP-F3 have already expired, so we cannot file a new application (CN, PCT) validly claiming priority from any of these. A new application would thus not ne novel and inventive.
The priority period from EP-F2 expired 25/2/18 + 25/2/19 (Mon) = yesterday, so also too late to file a new application validly claiming priority from this.
We could file the new application (see Q.3-b) to S + SiO2 (35-45) as a PCT application, or file a subsequent PCT appl, or file a subsequent CN application to get protection in China.
• We could then negotiate with LONGRUN, e.g. to get license income from LONGRUN.
f) Conclusion and advise
After all the above actions:
HIKE will still have AT-H, with which they can stop you:
• from producing and selling Sole A, Sole B and any sole with NPs
• in AT, but not outside
• so you will need a license from them to be able to sell any sole with NPs, incl sole A and sole B, in AT
You will have a valid claim to S + SiO2 NP 35-45 nm via EP-F4 (300% improvement)
• or potentially an even broader scope (broader size range)
• with you can stop/prevent HIKE to produce and sell Sole A where you validate
You will have a valid claim to S + Cu NP 70-80 nm via EP-F2 (150% improvement)
• with you can stop/prevent HIKE to produce and sell Sole B where you validate
You will have a valid claim to S + Cu NP <40 nm via EP-F2 (200% improvement)
• with you can stop/prevent HIKE to produce and sell such soles where you validate
We recommend to negotiate a cross-license with HIKE:
• wherein HIKE allows you to produce and sell any sole with NP in AT, by giving you a license on AT-H for AT
without that, you cannot produce any of the mentioned soles, also not sole B that you are so keen to use
• wherein you allow HIKE to produce sole B in AT, and sell outside our main markets (not in DE and AT)
to give them something in return, but not competing with you
• if this is not acceptable for you as you do not want anyone else to produce and sell sole B, or if this is not acceptable for HIKE, you can consider to offer a license for a different product range or for other countries
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 impressions about D 2019: it is here.
The D paper is available here in English, ici in French and hier in German.
Roel, Diane, Jelle
(c) DeltaPatents 2019
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Thanks Roel, what an answer! I did not provide much details regarding the partial priorities, just jumped straight to G1/15 and concluded that the claims were still not novel. I did not notice AT-H was only for AT (duh). I suggested the new application covering sole shoes comprising Si NP but I did not suggest any detailed claims for the new application. Still, very happy to see I addressed most of the important topics. Cheers!
ReplyDeleteWe donot know whether you were expected to discuss partial priority also where the subject-matter was clearly not novel - you could argue from r.6.4 of G 1/15 that that is not needed.
DeleteYou will (we think) certainly need a detailed partial priority analysis where it results in the claim being novel, i.e. claim 2 after addition of the priority to EP-F3.
We decided to include the full partial priority analysis using the two conceptual parts as that seems to use the most straightforward way to apply partial priority (and reflects the way "normal" priority and nivelty analysis is usually done: first determine priority, then identify the prior art and check its relevance) - and as it also shows clearly where the problems and the opportunities for improvement are.
Good summary, I noticed a typo, in the first mention of EP-H you write:
ReplyDelete"EP-H was filed (in En) by LONGRUN, but transferred to HIKE, with the transfer registered by the EPO in Feb 2018, so before the grant"
Where EP-H was filed in Chinese, which you later acknowledge and elaborate on.
Hi Peter. Thx for spotting it. Now corrected.
DeleteI got stuck in a loop considering whether the subject matter of EP-F1 would be novelty destroying for the subject matter of EP-F3 under Art 54(3) when both priorities are claimed in EP-F2. Consequently I made a last minute panicked summary of an alternative solution removing the priority claim of EP-F1 in favour of the subject matter of EP-F3 and EP-F2 to get to a scope covering Sole B if the client so wished. Was there no such consideration to be made?
ReplyDeleteI donot think so.
DeleteFirst of all, EP-F1 and EP-F3 are deemed withdrawn before publication, so they cannot become 54(3) themselves against any later EP filing.
Secondly, as EP-F2 claims prio from EP-F1 and EP-F3, an extensive and detailed (partial) priority analysis should result in none of them being novelty destroying for what is in EP-F2.
Thirdly, even before G 1/15, it was not commonly accepted that EP-F2's part that benefits from priority from EP-F1 could be 54(3) against EP-F2's part that benefits from priority from EP-F3; nor that EP-F2's part that benefits from priority from EP-F1 and EP-F3could be 54(3) against EP-F2's part that benefits from no priority. I.e., it was not commonly accepted that an application can be in part 54(3) against itself. Now that we have G 1/15, this issue does not pop up any more: any specific subject-matter encompassed in EP-F2's broad claim that is in one of its priorities (and are not in any even earlier application than all of its priorities) benefits from that priority and can thus not be novelty-destroying for the broad claim.
Damn, seems utterly obvious now in hindsight. Thank you Stress for really helping out with my exam.
DeleteI wonder what the total tally results in, I did manage to come to the same as-is conclusion, but without mentioning or analysing the partial priority for each EP-F2 claim. I did elaborate on that the claims as-is extended beyond the sjm of EP-F1 and subsequently proposed a solution of amending based on the included description from EP-F1 to protect the 200% improved sole... apart from the last ditch alternative solution based only on requested prio from EP-F3 alone I also described. I wonder how many points I lost there...
Thanks for the solution, it was quite an analysis. I think your remark about whether an analysis of the partial priority based on G1/15 when the claim is not novel anyway is very pertinent. This, whether it is expected or not, could be confusing for candidates under the pressure of the exam.
ReplyDeleteMy question relates about whether in the answer for question 1-a, the authentic text (Chinese) is the one taken into account for the purposes of A.54(3).
Could it be argued that until the translation is brought in conformity with the Chinese text, it (the translation) is novelty destroying under A.54(3)? Obviously, once the translation is corrected it clearly is not A.54(3) novelty destroying anymore, but if the question is "as the situation stands" and the mistake is not known to EPO yet, could it be that correcting the translation is one of the expected suggested actions?
I do not know if this is to far fetched...
Cheers!
Hi Roel, thank you for your post. You could also argue that, after the prio claim has been added,
ReplyDeleteclaim 1 can be split into eight conceptual parts:
1. Cu 0-35 nm
2. Cu 35-40 nm
3. Cu 40-80 nm
4. Cu 80+ nm
5. Other metal 0-35 nm
6. Other metal 35-40 nm
7. Other metal 40-80 nm
8. Other metal 80+ nm
The combination of parts 1 and 2 is entitled to prio from EPF1 en the combination of parts 2,3,6,7 from EPF3. Leaving 4,5,8 not entitled to any prio, but EPH is not novelty destroying for these parts.
Curious to your thoughts
I came to the same conclusion, with the minor caveat that I don't think part 2 is entitled to priority from EPF3 (only EPF1) because I figured EPF3 is not the first application by F for that part and so cant give rise to a right of priority for that part.
DeleteThe conclusion I got was the same though, so curious to see what others think as well.
Cheers!
Hi Jurre, which claim did you consider? If only parts of the claim are new, that is not Good enough to render the whole claim new, and the claim needs to satisfy 123(2) as well.
ReplyDeleteHi Roel, the eight conceptual parts together form the claim "sole comprising metal nanoparticles", i.e. claim 1 as filed of EPF2. Each of these parts seems novel in respect of the prior art available for each of them.
DeleteHi Jurre,
DeleteYou state that part 3 - Cu 40-80 is entitled to priority from EPF3. That is not correct. EPF does not mention copper. So part 3 is not novel over A 54(2) EP_H and announcement B. Claim 1 of EP-F2 is not novel.
Hi Diane, I disagree. EPF3 describes metal nanoparticles of size 35 to 80 nm. Thus, a conceptual part of claim 1 relating to metal nanoparticles of size 35 to 80 nm is entitled to priority and this conceptual part is formed by (sub) conceptual parts 2, 3, 6 and 7.
DeleteAssuming that EPF2 only claims priority from EPF3, not from EPF1, then claim 1 may be regarded as having two conceptual parts:
A first part relating to metal nanoparticles of 35 to 80 nm.
A second part relating to metal nanoparticles of other size.
Only the first part is entitled to priority. EPH, disclosing Copper particles of 70 to 80 nm, will not be novelty destroying for the second part, because the 70 to 80 nm range does not anticipate sizes out of the range 35-80 nm, which makes claim 1 novel (and inventive presumably).
I don't see how the fact that also priority is claimed from EPF1 can render claim 1 not novel.
Hi Jurre,
DeleteI understand now what you mean. For simplicity, we will disregard the part of claim 1 that has priority from EP-F1 (Cu up to 40 nm).
Claim 1 to metal NP as such, enjoying partial priority from EPF3, would have 3 conceptual parts: part 1: metal NP < 35 nm; part 2: metal NP 35 - 80 nm; part 3: metal NP > 80 nm. Part 2 has priority from EPF3, so EPH is A 54(2) prior art only for parts 1 and 3.
EPH is certainly not novelty destroying for part 1 < 35 nm.
It is less clear where part 3 is concerned. Endpoint Cu NP = 80 nm is disclosed in EPH. It could be argued that this destroys the novelty of metal NP only slightly bigger than 80 nm, which part 3 of the claim encompasses. Even if novel, is e.g. metal NP = 81 nm inventive over EPH? probably not. But to be honest, there is insufficient case law surrounding partial priority to state these things with certainty.
Hi Diane, thank you for your response. I really appreciate it.
DeleteIf it is appropriate to deem the 70-80 range of EPH to also encompass values slightly above 80, then it should also be appropriate to deem the 35-80 range of EPF3 to encompass values slightly above 80. This would then enlarge part 2 that is entitled to priority and, in turn, prevent the 70-80 range of EPH to become novelty destroying for part 3.
Probably parts 1 and 3 are inventive. The objective technical problem with respect to EPH could be formulated something like "how to provide an alternative sole that also has good energy storage properties". The prior art does not provide any hint that this can be achieved with any metal nanoparticle of any size (which also seems mentioned in par. [002] first sentence as invention).
Well, curious as to what the exam committe had in mind here, thanks again.
I still cannot understand how the EPO can add such an unclear formulation in [002], which says, that the guy found out, that all metal-nano particles chance the structure of shoe soles and increase the energy storage. And then it says, EP-F1 discloses the effect?
ReplyDeleteIn your solution you simply say EP-F1 discloses an increased storage!?
What kind of application would that be, that only discloses an effect without mentioning where it comes from? That really does not make any sense.
If you look at the solution, it's quite obvious that the EPO wants to hear, that the priority for claim 1 is not valid for all metals. But only because the solution looks better that way, it does not mean that this is the correct solution. In my opinion it does not make sense, that the effect is disclosed without the technical reason for it. And the reason is obvious: All metal nano-particles in shoes, first sentence of [002]. He came to that conclusion before submitting EP-F1.
Don't you think formulation is quite strange and that it would have been fair to clearly state what is disclosed in EP-F1?
No, we did not "say EP-F1 discloses an increased storage!" "without mentioning where it comes from". We said that we assumed it said that the increased energy storage described in EP-F1 came from the <40 nm Cu nanoparticles and that it was assumed not to be descfribed as coming from any metal nanoparticle.
DeleteIn our comments, we also indicated that it can be debatable argued whether it was just described as comong from the <40nm Cu nanoparticles and not (also) from any metal nanoparticle.
Please refer to my comments "Roel van Woudenberg 27 February 2019 at 17:20" and "Roel van Woudenberg 27 February 2019 at 19:54" in our First impressions blog (https://eqe-d.blogspot.com/2019/02/d-2019-first-impressions.html)
We agree that "because the solution looks better that way, it does not mean that this is the correct solution". But it is a clear hint that an other interpretation that results in a solution that looks worse, needs to let one reconsider whether that othjer interpretation is correct. Whether that reconsideration in the end leads to the one or the other conclusion as to the only possible correct interpretation being the one or the other, or both interpretations being correct is another question - whichm if no clear conclusion can be drawn, may ultimatekly be decided by the Committee, the Examination Board or the DBA. I think it is fair that I/we cannot give the final conclusion on this. Any arguments in support and against any point of view are welcomed on this blog to allow to get all arguments pro and con any view, so that all parties with any type of interest can form a well-balanced opinion.
Whether it would was fair to state what is disclosed in EP-F1 in a the way it was done or whether ot would have been gair or maybe even needed to state it in a different (or, in your wording, more clear) way is not in my competence, even if/ irrespective if I would have appreciated it. Any information given in an exam is a balance between giving just enough information to assess a case but not too much to make it trivial to assess the case.
I think, if who wrote 002 in DII meant only Cu, he or she should have formulated: "EP-F1 describes the effects of increased energy storage WHEN USING CU (or "in connection with Cu) + ... bla bla ".. it's clear that 002 was a huge mistake if you Delta people "assume" and "debate" a lot around it. Really, an exam like this should be about rules and actions and case law not about assuming during the exam what the authors of the papers were thinking..
DeleteBut maybe they acknowledge this and give points both ways, let us pray..
I fully agree. The bad thing is, if you went in the wrong direction with the validity of the priority of claim 1, it didn't really make sense to discuss partial priority in detail anymore, because it didn't improve the situation!!! You already had the broadest protection possible. That was really unnecessary!!!
DeleteIn my opinion they should definitely consider both solutions. It simply does not make sense to add an effect without the technical background (which is in this case, that all metal nano particle increase the energy storage). If they only wanted to say, that F1 discloses the special effect of copper nano particles, then they should have written that or should have changed the order of their last statement. "He claimed copper and describes its special effect". That would have been clear and wouldn't have given so much space to guess. Let's see, how the examination committee will deal with the different solutions of the candidates!
DeleteDear Roel, I apologize for my answer in the D-blog , of course I was not expecting you to work overnight and give us responses at 8:03. What I meant and you also agreed was that 002 was indeed unclear , questionable and so on. If even a Delta Patent tutor had a different opinion imagine a poor candidate losing time and panicking during the exam while trying to figure out... what is meant in the text. So, it's sad that on top of the exam being a pain it's not even clearly drafted and one should spend time because of that instead of spending time to draft a proper answer. It's very demotivating and makes from the exam a lottery
ReplyDeleteApologies accepted ;-)
DeleteAnd thx for actively contributing to the blog!
I misunderstood par 002 too. I have based my answer on the assumption that "Description of the effect of increased energy storage" means all technical information of said paragraph were contained in EP-F1.
ReplyDeleteDo you think this interpretation can be supported enough to get some points in case of coherent answer based on it?
I think, if the exam committee is fair they must admit that there was an clarity issue in 002 (key to exam more or less) and award points for both versions. One can see the clarity issue from the Universe...
DeleteHi Roel, I hope you are doing well, say, the way they grade D exam, do they do a bell curve (kind of a bell curve) based on majority detecting or missing an issue and/or majority struggling to provide a proper answer for an issue? Does committee go back and check if a question was clear enough and do they adjust grading based on that? Any idea? Thank you.
ReplyDeleteI am expecting a similar answer from Roel.
DeleteHi Gokalp, the exam committees first mark a quite sizeable subset of all papers. Then, they decide how to change the marking. It is not publicly known how they adapt and at what level of detail they (re-)distribute and reweigh the marks. It seems like the adjusting is always done to the advantage of the candidates, but no data are publicly available.
DeleteE.g., in DII 2010, the DII had a case where only a very small percentage of all candidates saw the issue and of those only a fraction dealt with it correctly: the total number of marks for that whole case was then reduced, and the marks allocated to the first case. The committee indicated seveal times that there is -in the real marking- only 1 marking table (not the oroginal and the adjusted, but just 1), and that there may be bonus marks for relevant discussions that are not in the marking table.
would be interested to have a statistics how many spotted "all metals", how many spotted "only Cu" and how many spotted that there is a problem and tried to handle both alternatives..
Deleteindeed! the many comments posted on this blog show that the information was not clearly presented, which is required (IPREE 22(3) and appeal decisions), so committee must accept answers based on either understanding, no further discussion needed to come to that conclusion
DeleteHi Roel, thank you for your explanation. I guess we will wait and see.
ReplyDelete"Bayram", doesnt mean "party"?
DeleteBayram means holiday either religious or national. It can also be used to describe a joyful event, for example "having bayram after passing EQE"
DeleteThe partial priority decision G 1/15 was issued in the context of poisonous divisionals directed to a genus which were presumed to have a Art.54(3) prior art effect on a genus claim in the parent, where the genus benefited from priority and the genus not.
ReplyDeleteWith partial priority, you effectively conceptually split the genus claim in an OR of the species and the genus-but-not-species. As a result, there is no harmful 54(3) prior art anymore against the species (same date) and not agaist the genus-but-not-species (as the species is cutout).
Does anyone know any case law in inventive step in partial priorit situations? Would the genus-but-not-species be inventive over the species if that was a 54(2) prior art against it?
With continuous values, an even more complex question rises:
with a point in prio, and a range comprising that point in the later application, the range may be conceptually split as an OR-claim of the point and the range-excluding-that-point. Seems settled for 54(3) situations: the range with the point disclaimed is novel over the 54(3) point.
But what if it is a 54(2) prior art: then it is already debatable whether ange-excluding-a-specific-point is novel over that specific point as a 54(2) - but can it be inventive? And is it different whether the 54(2) prior art point is a point inside the range, or whether the 54(2) point is coinciding with the end-point of the range?
Are the answers to these questions different for partial priority with "conceptual parts with a conceptual disclaimers" than for multiple priorities with explicit OR-claims?
Many room for new case law, many room for future exam questions...
Hi Roel and the team, thanks for the detailed analysis. As for claim 3 of EP-F2, instead of amending the claim to Cu 1-40 nm as in EP-F1, have you considered disclaiming Cu 70-80nm under undisclosed disclaimer?
ReplyDeleteG1/16 ruled that the disclosure test of G2/10 does not need to be applied on undisclosed disclaimer as in G1/03. There are several criteria needed in order to be allowed for undisclosed disclaimer. One being to restore novelty against prior art Art 54(3) EPC as one can never know the content before its publication, which is the case here in EP-H.
Another is to restore novelty due to accidental disclosure, which is also the case here as the translation or a mistake. The disclaimer does not remove more than necessary and does not result in lack of sufficiency of disclosure..
As for the disclaimed range of 70-80nm, FASTER will still be allowed to sell or make such shoe sole under Art70(4)(b) EPC under good faith, if HIKE still has the protection via EP-H.
Does it make sense or have I missed something obvious? Or why do you think undisclosed disclaimer is not applicable in this case?
Almost there
Disclaiming Cu 70-80nm under undisclosed disclaimer is not possible as the website Annoucement B is a Art.54(2) prior art against that claim.
DeleteWhat about disclaiming CU-NP with 70 to 80 microns?
DeleteIn my view, no need to do so, as we just claim Soles with metal NANOparticles - and nanoparticles are defined as being particles with a size < 100 nm in [001].
DeleteSo, already new over particles of 70-80 microns due to their size.
So, intriducing a disclaimer not needed and also not allowed.
Haha, well done! Thanks a lot for your support! J
DeleteNow I see what I have missed! Thanks for the clarification!
ReplyDeleteAlmost there maybe not quite there
One comment about the suggested amendment to claim 3 - we don’t know if EP-F2 has basis for claiming the range disclose in EP-F1. On a general level, I find it interesting that, as a consequence of partial priority, EP-F2 has this allowable embodiment that can’t necesserily be claimed.
ReplyDeleteWith partial priority, the trick is that you do not NEED an amendment to make it an explicit OR-claim, but you can split it into conceptual parts when discussing the patentaibility WITHOUT changing the wording of the actual claim.
DeleteSee the last sentence of G 1/15, 5.2.1: "On its last page, the Memorandum makes it clear that accepting multiple and partial priorities is not the same as allowing amended claims in such a manner that, after amendment, only one priority is claimed for each individual claim. The issue of partial priority would not arise if only one priority was claimed for each individual claim. However, amending a claim set in such a way that an originally filed claim is split up in order to address partial priorities may in many situations be unallowable under Article 123(2) EPC."
Hi Azru, it may indeed happen also that you get partially valid partial priority for the claim (with the pri being valid for one conceptual part but not for the other(, but that you cannot amend to it.
DeleteHere, the paper says in [003] that "EP-F2 contains the entire DISCLOSURE of EP-F1". What is disclosed in EP-F1 is description, claims and drawings, so the claimed subjtec-matter pf EP-F1 is in some form in EP-F2. So here, we can do the amendment.
If it would not have been in it, partial prio assessment and novelty would be the same, but no amendment to get the claim amended would be possible.
So: never draft a subsequent application relying on partial priority - always include the complete earlier disclosures!
What is the reason for amending claim 3? It is narrower than claim 2, which is already patentable.
ReplyDeleteCorrect, is strictly not needed.
DeleteBut a specific claim specifically directed to the best possible subject-matter is always wanted, in the DII paper as well as in real life: as fallback, i.e. for robustness against unknown surprises, and to make infringement discussions and/or licensing easier / more transparent or to get in a batter position fot that.
See also e.g. the Frying pans paper of 2013, where the client has the broadest right, and many many marks (15 or so) for improvements are for getting also two specific (dependent) rights.
Did nobody consider excluding CU-NP with 70-80 microns as an undisclosed disclaimer? Since the Chinese text is the relevant one for Art. 54(3) and refers to microns and not nm. Thus, this would be perfect for Faster in sense of scope of protection.
ReplyDeleteSee abov, my comment 4 March 2019 at 09:37 to your earlier post on the same topic.
DeleteHi Roel, thanks for providing us with this detailed solution. Your solution also is a nice illustration of G1/15 and conceptual parts in practice, for which no well established schemes exist yet.
ReplyDeleteWith respect to the improvement of adding the priority from EP-F3 you convincingly explain why claims 1 and 2 are no longer hit by the prior art due to partial priority.
If I understand you correctly, in the end, only claim 2 will be patentable, because claim 1, although novel due to partial priority, is not inventive.
I like your solution. Thanks.
Hi Andy,
DeleteOur conclusion is indeed that, in the end, only claim 2 will be patentable, because claim 1, although novel due to partial priority, is not inventive.
But we also noted that there seems to be no case law yet on inventive step assessment in partial priority situations with a disclosure in the priority interval that is no prior art for the first conceptual part (with prio), but that is 54(2) prior art for the remainder of the claim (without prio) - and in particular not where that disclosure is exactly an isolated point within the claimed range, or even an end point (metal 80) of a range of that disclosure "COINCIDING" with the (upper) end point of the first conceptual part and the (lower) and point of the second conceptual part.
Our answer is thus based on our interpretation as we think an inventive step assessment can be done in this particular case.
(it would have been less difficult if EP-H would have shown 50-60 rather than 70-80)
To add to the above, note that G 1/15 was referred and decided in the context of what were so-called "poisonous divisionals" and "poisonous priorities", where an alleged 54(3) effect of a species with priority would have been poisonous (novelty-destryoing) for the claim to a genus in the parent/later application. As a result of partial priority, the conceptual part of the genus that corresponded to the species had priority such that the other appl was no prior art and the remainder the claim had no priority such that the species in the appl was prior art against it, but was novel as that remainder had the species not encompassed by it. In thoses cases, inventive step did not come into question as there was only 54(3) prior art to the part of the claim not having priority.
DeleteBy the way, the Guidelines contain hardly any information on partial priority, only one paragraph in F-VI, 1.5, which cites the headnote of G 1/15 but shows no examples and does not expand on it in any other way either:
Delete"According to G 1/15, entitlement to partial priority may not be refused for a
claim encompassing alternative subject-matter by virtue of one or more
generic expressions or otherwise (generic "OR"-claim) provided that said
alternative subject-matter has been disclosed for the first time, directly, or
at least implicitly, unambiguously and in an enabling manner in the priority
document. No other substantive conditions or limitations apply in this
respect."
Most candidates probably have read the complete decision in the D preparation, and may have had some exercises to play with it. It was the golden favourite topic for this year's D paper, as it changed the thinking on priority significantly (even though not all situations and complications have settled yet in case law).
I thought a bit more about this situation. I refer to c-iii) where you adress the effect on claim 1:
DeleteYou say, when adding the priority of EP-F3, claim 1 gets a partial priority for S + metal NP <80 nm.
Should this not be: claim 1 gets a partial priority for S + metal NP 35-80 nm (this is what is disclosed in EP-F3)?
Claim 1 is then split into:
- a first conceptual part S + metal NP 35-80 nm that benefits from priority from EP-F3 and
- a second conceptual part S + metal NP <35nm or >80nm that does not benefit from priority.
I guess this does not change anything for the discussion, though.
The announcement B (copper NP, 70-80nm) is no longer state of the art for the first conceptual part (S + metal NP 35-80 nm). The first conceptual part is thus novel.
The announcement B (copper NP, 70-80nm) stays 54(2) state of the art for the second conceptual part (S + metal NP <35nm or >80nm). The second conceptual part is thus novel.
But is it inventive? The longer I think about it, the less I’m sure. Maybe the inventor should also be honored for finding the broader range if it still has some effect (better energy storage), even if weaker than in the more special prior invention covered by the first conceptual part (better energy storage by 100%)
Indeed, claim 1 gets a partial priority from EP-F3 for S + metal NP 35-80 nm. Thx for noting the error, I will correct/correct it in the post. It does not change the final conclusion.
DeleteAh ok! Regarding the inventiveness: first I thought I got it. Now I am puzzled again.
DeleteIf we follow your approach, claim 1 of EP-F1 has:
- 1. conceptual part (S + metal NP 35-80 nm) benefitting from priority and
- 2. conceptual part (S + metal NP <35nm OR >80nm) not benefitting from priority
this, however, would mean that our own priority document EP-F3 (S + metal NP 35-80 nm) would stay state of the art for the 2. conceptual part.
Already for this reason, we could argue that the 2. conceptual part is not inventive.
Why am I puzzled? Because I thought a major aim of G1/15 is to avoid toxic priorities. Now, we have a toxic priority again, not w.r.t. novelty, but w.r.t. inventiveness.
Maybe G 1/15 could be interpreted in a simpler way, namely like this: claim 1 has
- a conceptual subpart (S + metal NP 35-80 nm) benefitting from priority
our own priority document EP-F3 (S + metal NP 35-80 nm) is covered by this conceptual subpart and thus is *no* state of the art for the *entire* claim. Our own priority document EP-F3 is thus not self-colliding.
This however, would imply that the other state of the art (Announcement B, EP-H) also is covered by this conceptual subpart and thus is *no* state of the art for the *entire* claim. The claim is thus novel *and* inventive.
Just a thought in view of the telos of G1/15...
Ok... for my thoughts above, please let's assume that EP-F3 was already published (which in the paper was not the case, as far as I remember). But it could have been - and then we would run in a toxic priority again...
DeleteHi Andy,
DeleteYou wrote:
"Because I thought a major aim of G1/15 is to avoid toxic priorities. Now, we have a toxic priority again, not w.r.t. novelty, but w.r.t. inventiveness."
but you overlook that EP-F3 would be 54(3) for the part of the claim of EP-F2, so inventive step is not required - as I indicated, G 1/15 was issued in the context of alleged Art.54(3) toxic priorities; G 1/15 did not address Art.54(2) situations.
Further, the relevant prior art for the part that has no priority is the EP-H publication (in English) and the website Annoucement B of 21/2/2018.
Yes that is true. EP-F3 would not be 54(2) state of the art in this D paper. I already recognized this mistake, see my followup comment.
DeleteLet's assume, however, that EP-F3 would have been published already. Then, according to your approach, our own EP-F3 would be a self-colliding document w.r.t. inventiveness (toxic priority again).
However, G1/15 seemed to have the aim of avoiding such toxic priorities. Therefore: maybe G1/15 should be interpreted in light of its aim.
To this end, as I tried to explain above, a scheme would be that once state of the art is covered by a conceptual subpart, it is no longer state of the art, *not even* for the remainder of the claim.
Then, toxic priorities seem not to be possible anymore which is the aim of G1/15.
But maybe I still overlook something.
I agree with you that "toxic priorities seem not to be possible anymore which is the aim of G1/15."
DeleteBut I want to emphasize again that that decision was issued in the context of novelty.
I think that for inventive step, it does not hold. I will illustrate that with the following example (inpired by DII 2005).
The priority document EP-DIMP describes a windmill wing with an arrangement of dimples placed exclusively in a very specific region near the wing tip, whereby they are surprisingly efficient in reducing noise generation.
The subsequent application EP-KNOB describes and claims a windmill wing with an arrangement of knobs placed exclusively in a very specific region near the wing tip, whereby they are surprisingly efficient in reducing noise generation, equally efficient to the dimples of EP-DIMP.
EP-KNOB claims priority from EP-DIMP.
EP-DIMP was published early, in the priority interval.
EP-KNOB has no valid priority from EP-DIMP, as knobs are not the same as dimples. Also it does not have partial priority as dimples are not a specific embodiment of knobs.
EP-KNOB is novel over EP-DIMP.
But EP-KNOB is not inventive over the (early published, hence Art.5492)) EP-DIMP.
So, an embodiment in the priority document that does not lead to valid priority of the claimed subject-matter in the later application, can destroy its inventive step.
What the situation would be if a later application EP-GENERIC would describe and claim "...an arrangement of air turbulence disturbing structures...", which would get a partial priority from EP-DIMP is:
- if EP-DIMP is a 54(3) prior art, EP-GENERIC is new due to partial priority according to G 1/15 and inv step does not need to be assessed w.r.t. EP-DIMP, so patentable;
- if EP-DIMP is a 54(2) prior art, EP-GENERIC is new for due to partial priority, but why would it be inventive? As EP-GENERIC ha a broader claim than EP-KNOB, and EP-KNOB is not inventive, wouldnot it be strange if EP-GENERIC is inventive? As indicated, I donot know for sure and I think we can only know fir sure if the Enlarged Board also ruled on these kind of situations.
Even more general, priority is "protecting" against the SAME disclosures (as well as more specific disclosures) in the priority interval, not against equivalent disclosures ("same invention"). Art.54(3) prior art has the corresponding effect, destroys novelty, not inv step. Should hold for "normal" full priority, not just for partial priority.
DeleteThis is a nice example.
DeleteIf understand it correctly, what you're saying is that when claiming priority from the prepublished EP-DIMP in a subsequent application, there should be no different treatment for the "genus corona" "structrues except dimples" in EP-GENERIC than for the aliud "knobs" in EP-KNOB.
Guess I will think a bit on this, but, indeed, it seems convincing.
Thx ;-)
DeleteIndeed, that what I tried to say. And that the "protection" that (full or partial) priority gives against same disclosures (novelty relevance) does not imply that there is protection against equivalents or alternatives (inventive step relevance). And from that I conclude that an Art. 54(2) disclosure may thus be relevant for the (conceptual part of a) claim that does not benefit from priority and thus for inventive step of that part (and thus of the whole claim), even if that (conceptual part of the) claim is novel over that Art.54(2) disclosure.
By the way, I also noted that I observed a difference in novelty of a disclaimed point w.r.t. Art.54(2) and Art.54(3) prior arts:
G 1/03 explains that you can obtain novelty by disclaiming an Art.54(3) prior right embodiment. So, if your claim relates to a range 10-50% and the prior right shows 20%, you can amend to a novel claim "10-50%, but not 20%".
But, if you have claim to a range of 10-50% and your description shows examples at 10, 20, 30, 40 and 50%, you are allowed to amend to "10-50%, but not 20%" without violating Art.123(2) under G 2/10; however, if then there is a Art.54(2) prior art that shows 20%, the claim "10-50%, but not 20%" will usually not be considered novel in view of the "overlapping range" and/or "seriously contemplating" case law (also referred to in the Guidelines). This "seriously contemplating" case law for novelty is sometimes challenged, but if one would consider it novel the range "10-50%, but not 20%" will not be inventive and anyhow not patentable. Quite a difference again between Art.54(3) and Art.54(2) prior art...
Continuous ranges, real or conceptual disclaimers, Art.54(3) and/or Art.54(2) prior arts, what a terrible (or, if you wish, intriguing) combinations...
i passed the pre exam but am now working in electronics again. is there a way your courses could help me pass this when not working in the patent field?
ReplyDeleteIf you have worked long enoigh (3 yrs fulltime) in the patent field under supervision of a EP patent attorney, you can continue to the main exam. See IPREE for details on requirements of training, as well as the announcement of EQE2020 which will probably be in the April issue of the OJ.
DeleteYou can take any of our main exam courses: we give methodology courses as well as guided exam courses / guided trial run courses, in English, German and French - https://www.deltapatents.com/eqe.html for courses, dates and locations.
Interesting point to think about: how to split EP-F1's claim 1 into the correct conceptual parts if you claim prio from EP-F1 and EP-F3. Not really needed in our view for answering the paper, but good to think about:
ReplyDeleteEP-F1 is first application for Cu <40, such EP-F3's metal 35-80 is not the first application for the whole claimed area, and that there is no problem for EP-F2 becaude it claims priority from both.
However, 35 is not disclosed in EP-F1, so I cannot say that EP-F1 benefits from the conceptual part 35-40 Cu from priority. I can however say it benefits from the <40 nm Cu.
So that lead me to conclude that the correct conceptual parts should be:
S + metal NP =
S + Cu NP < 40 nm (EP-F1 is first appl) +
S + metal NP 35-80 nm but not Cu NP < 40 (=not Cu 35-40) (EP-F3 is first appl) +
S + metal NP < 35 where metal is not Cu OR > 80 nm (remainder of claim 1 of EP-F1)
which is the same as:
S + metal NP =
S + Cu NP < 40 nm (EP-F1 is first appl) +
S + metal NP 35-80 nm but not Cu NP < 40 (=not Cu 35-40) (EP-F3 is first appl) +
S + metal NP < 35 where metal is not Cu (remainder of claim 1 at low end of range) +
S + metal NP > 80 nm (remainder of claim 1 of EP-F1 at upper side)
There is no conceptual part S + Cu NP 35-40 nm, as that is neither disclosed in EP-F1 nor in EP-F3.
There is no conceptual part S + metal NP 35 - 40, as there is no disclosure of metal NP 40 nm in EP-F3, nor in EP-F1 (only of the specific Cu NP 40 nm).
I was slightly in doubt about "S + metal NP < 35 where metal is not Cu", as it seems legally incorrect to say that EP-F1 is the first application descriving S + Cu NP < 35, as 35 is not disclosed therein. But G 1/15 indicates that one FIRST needs to identify which CONCEPTUAL parts of the claim are directly and unambiguously disclosed in any of the priority documents, which gets partial pri from that priority document, and SECONDLY concludes that the remainder of the claim is to be considered a conceptual part that does not benefit from any priority - there is no need that this remainder is disclosed, it is just what remains.
But, as we select a species from a genus and a sub-range from a range (unlimited; <80), which is like a two-list selection, is this the right way of dealing with combinations of selections in partuial priority?
The results are out!
ReplyDeleteSee https://eqe-deltapatents.blogspot.com/2019/06/results-eqe-2019-available.html for statistics.
the Examiner's Reports are not yet available.
43 on D....
ReplyDeleteWaiting for the examiner's report for comparison with DP solution. Then will see if worth to appeal
ReplyDeleteThe Examiner's Report is now also available:
ReplyDeletehttps://www.epo.org/learning-events/eqe/compendium/D.html --> http://documents.epo.org/projects/babylon/eponot.nsf/0/837BCDDD81C9ADCBC125841E00407479/$File/ExRep_D_2019_EN_for_web.pdf
Some comments from the Examiner's Report:
Delete"Examiners’ Report Paper D 2019
Purpose and extent of the examiners' report
The purpose of the present examiners' report is to enable candidates to prepare for future examinations (cf. Art. 6(6) of the Regulation on the European qualifying examination for professional representatives).
General comments
Candidates are reminded that they should pay attention to the way the questions are asked and should not simply repeat information from the paper in the answer. Repeating information per se is not awarded any marks.
Alternative answers, one being correct and one being wrong, to the choice of the markers do no attract any marks.
In Part I, full marks were only awarded when the full legal basis was cited to support the analysis. Citing only the legal basis without any further explanation or reasoning does generally not attract any marks. However, alternative relevant legal bases also attracted marks.
An unnecessary amount of points was sometimes lost due to miscalculation of time limits.
It is still noticed that candidates skip entire questions from D1. However, these candidates typically do not pass. All-round knowledge of the syllabus, as tested in Part I, is required to successfully do the legal assessment in Part II.
Candidates are reminded that the PCT questions may make up a substantial part of paper D.
"Examiners’ Report Paper D 2019 – Part II
This year’s Part II of paper D required candidates to demonstrate their knowledge relating to (partial) priority, numerical ranges, the contents of the application as filed, evident abuse and priority claims. Following their analysis of the current situation of the client’s various patent rights, the candidates were required to come up with solutions maximising the freedom to operate for and scope of protection obtained by their client in different contracting states.
Candidates generally did well on the analysis and spotted most of the relevant relationships between the various rights and how they affect the freedom to operate of the parties involved.
It is noted that candidates who immediately proposed improvements without fully analysing the situation as outlined in the paper, missed a lot of relevant issues."
[...]
"Overall, the legal status of EP-F1 and EP-F3 was correctly assessed. Some candidates speculated on possible re-establishment of rights, without any indication in the paper, thereby losing time."
[...]
"On the improvement of the situation, most candidates spotted the need to oppose EP-H on the ground of added subject matter.
The possibility of adding a priority claim to EP-F3 in EP-F2 was also generally well recognised. However, while the candidates understood that the earlier effective date added another part to the “OR-claim” they neither applied it to the partial (lack of) novelty of specific parts of the “OR-claim” in their original assessment, nor did they realise that just adding the priority claim without making claim amendments is not sufficient to get a granted patent out of EP-F2.
The evident abuse and the consequences of being able to file a new application was well recognised. The majority of candidates overlooked that despite the provision for a 6 month period to file the new application, the product launch was intended within 2 months from the date of the exam"
The Possible Solution in the Examiner's Report and our answer largely correspond.
DeleteOur answer expanded in more detail on partial priority, but came to the same conclusions (in the as=is situation as well as in the improvements) as the Possible Solution.
The mark distribution seems to balance the effort for answering the various (sub-)questions. Unfortunately, the mark distribution is not specified per claim in Q.1(a)_(c), and not given in detail for the various improvements Q.3 (it only mentions a single "27 marks"):
Part II - Question 1a 17
Part II - Question 1b 2
Part II - Question 1c 2
Part II - Question 2a 4
Part II - Question 2b 8
Part II - Question 3 27
The Examiner's Report does not comment on any alternative answers based on different interpretations of the paper.
Notably, the unclarity that some candidates and we noted on the comments to this blog w.r.t. [002] is not addressed. It is thus not known whether any marks were awarded to answers based on the alternative understanding.
In view of the comments "Only some candidates made the right assessment and distinguished between the different parts of the “OR-claim”. and ""Many candidates also did not recognise the consequence of partial lack of novelty for the claim as a whole." in the 4th paragraph on page 9 of the Examiner's Report, which seem to be both quite key issues in this DII paper, the pass rate is surprisingly high (pass and comp.fail are almost as high as in 2015, whereby this D-paper is in the top-2 of the single-paper versions of the D paper).
Now that you all have your results, does anyone have you have a clue on what was done with the unclarity in [002]:
ReplyDeleteAs argued on this blog by several, the sentence
"EP-F1 describes the effect of increased energy storage, and claims a shoe sole comprising copper nanoparticles up to 40 nm"
in [002], which further describes
"During my research, I found out that all metal nanoparticles modify the foam structure of a shoe sole, thereby improving energy storage of the shoe sole. Such shoe soles return energy to the runner. In particular, I found out that copper nanoparticles up to 40 nm increase energy storage of shoe soles by 200% compared to soles without nanoparticles."
could, when reading the sentence together with the cited rest, be understood as:
"EP-F1 describes the effect of increased energy storage when using copper nanoparticles up to 40 nm by 200% compared to soles without nanoparticles" [based on the third sentence of [002]]
or as:
"EP-F1 describes the effect of increased energy storage by any metal nanoparticles, as all metal nanoparticles modify the foam structure of a shoe sole, thereby improving energy storage of the shoe sole" [based on first sentence of [002].
One candidate ask me whether the word "In particular" at the beginning of the third sentence was maybe there to clarify that:
- the first two sentences of [002] relate to "EP-F1 describes the effect of increased energy storage" (to the first part of the last sentence): both relate to the genus;
- the third sentence of [002] relate to "[EP-F1] claims a shoe sole comprising copper nanoparticles up to 40 nm" (to the second part of the last sentence): both relate to the optimal species
I can imagine that both interpretations were among the candidates' answers, but the Examiner's Report uses only the interpretation wherein EP-F1 descriptions and claims are only directed to copper and not to metal in general, also not the description.
Any comments?
Hi Roel,
DeleteNO, in my case I don't think there were marks for the other version of interpretating paragraph [002].
How Flora passed with 63 though not giving the official expected answer is a mistery for me, maybe she had 40 in D1 , who knows ?...
I go on holidays now. There is life also outside EQE :)
Cheers and thanks for all advice.
I will let you know if my appeal was "erfolgreich".
I wish a nice vacation everybody and a hot summer. Ciao !
I am waiting for the letter to arrive and will check it. Will get back to you once I get it.
Delete(To respond to a question in my email reading "I donot quit understand how [002] can be understood differently":)
DeleteThe alternative interpretation may be understood better by rearanging the order of the sentences of [002] a bit, to clearly show where -in this alternative interpretation- the phrase "the effect of increased energy storage" refers to.
Original [002] of the DII reads:
During my research, I found out that all metal nanoparticles modify the foam
structure of a shoe sole, thereby improving energy storage of the shoe sole. Such shoe
soles return energy to the runner. In particular, I found out that copper nanoparticles up
to 40 nm increase energy storage of shoe soles by 200% compared to soles without
nanoparticles. Copper is a metal. On 19 January 2018 I filed at the EPO, in the name of
FASTER and without claiming priority, the European patent application EP-F1 in
German. EP-F1 describes the effect of increased energy storage, and claims a shoe
sole comprising copper nanoparticles up to 40 nm
If one splits the last sentence into two, and inserts the first half of that sentence a bit earlier in the paragraph, one gets the following (I also moved the "I filed ..."-sentence up so that the antecedents are OK):
On 19 January 2018 I filed at the EPO, in the name of
FASTER and without claiming priority, the European patent application EP-F1 in
German [sentence moved up, has no effect on meaning/interpretation].
During my research, I found out that all metal nanoparticles modify the foam
structure of a shoe sole, thereby improving energy storage of the shoe sole. Such shoe
soles return energy to the runner. __EP-F1 describes the effect of increased energy storage. [firdt half sentence moved up]__
In particular, I found out that copper nanoparticles up
to 40 nm increase energy storage of shoe soles by 200% compared to soles without
nanoparticles. Copper is a metal. EP-F1 [...] claims a shoe
sole comprising copper nanoparticles up to 40 nm.
In my answer, I said that claim 1 had an effective date of 19-Jan, as EP-F1 "describes effect of increased energy storage of all metal NPs and claims Sole+CuNP>40nm". I think this is the alternative understanding that doesn't fit with that of the Examiner's report?
DeleteI got 16.5/17 for Part II, Q1a, so it would appear that this was a perfectly reasonable understanding and gained all available marks if you used it.
Thx Calum. Indeed I meant "describes effect of increased energy storage of all metal NPs" (and thus describes sole + NP of any size) as the "alternative understanding".
DeleteDo I inderstand correctly that you gave full claim 1 the filing date of EP-F1 as priority date, and thus used classical full priority for the whole of Q1a, and did not discuss partial priority at all? If so, then I agree with your conclusion.
Roel,
DeleteC1: effective date 19-Jan-18
C2: effective date 25-Feb-18
C3: Sole+CuNP<40nm effective date 19-Jan-18
C3: Sole+CuNP40-80nm effective date 25-Feb-18
So classical priority for C1 and C2 but partial for C3, given how the range is larger than that disclosed in EP-F1.
In answer to the Anonymous of 12:32, below, I did then go on to discuss everything else, and it appears that I did it correctly. I'd be happy to share my script, if it would be helpful?
Dear Calum,
ReplyDeletemany thanks for your feedback. And what about claims 2 and 3 of EP-F2? Also, did you correctly discuss all the prior art issues (having considered 19 January as effective date of course)?
Dear Calum,
ReplyDeleteIf the other interpretation of paragraph 002 was indeed accepted then I wonder why is the marking sheet (the distribution of marks) the same as for the “official interpretation” ?
Would, for instance, still make sense to add prio from EP-F3 (Q3 if I am not wrong) ?
In the official answer there was a large discussion about that and I assume adding priority from EP-F3 was worth at least 15 Marks .
Greetings from Hungary,
John
Unfortunately the Examiner's Report for paper D does not indicate for which alternative answers (some) marks were obtained, while the Examiner's Reports for other papers do.
DeleteI have submitted a question relating to that to the Committee for the Tutor Meeting on October 18.