D2 2023: nappies getting wet...
This year's D2 was a paper of 2 h 45 min (14:00 - 16:45 CET) and only 45 marks, the shortest D2 ever (that I know of).
As in 2021 and 2022, the paper had to be taken fully from the screen in Wiseflow - nothing was printable. The pdf of the paper could be viewed side-by-side with the editor, without annotation possibility; or in one or more separate tabs, with annotation possibility. As last year, no calendars were given with the exam paper, but candidates had to bring their own lists of Saturdays and Sundays and had to check EPO closure dates in the OJ.
The paper was of a quite common design, with quite some different subject-matter. A careful patentability assessment was needed, followed by a who-is-free-to-do-what analysis, and then an improvement question. There were no really strange legal topics, which is probably the main reason why this D2 had less marks and time than the earlier D2s.
Candidates had to deal with:
- Nappies with control unit, electrodes, warning means, substances… The subject-matter of the D2 will have triggered some “unscheduled breaks” …
- Electrodes for detecting presence of urine. Special electrodes G or P for measuring glucose or pH. Electrodes made from metal, silver, copper, platinum, gold, or conductive plastic.
- Visual warning means, acoustic warning means, transmitter for sending signals to a baby phone.
- Substance X, already known from different fields, but now used to neutralize odours.
- A Journal of 2016 and a Handbook of 2017.
- A competitor with a recently granted patent with quite a wide scope…
- Validity of priority, undisclosed disclaimer, and a presumed 54(3) that turned out to be a 54(2)…
- Non-unity, non-claimed subject-matter, the 71(3) already being approved…
- A wrong parent application indicated with the divisional that was filed yesterday…
- Client based in Sweden, producing and selling in EP, US, China. A competitor announcing the release of a new product in the US. Client currently only has EP applications…
We look forward to your comments!
Comments are welcome in any official EPO language, not just English. So, comments in German and French are also very welcome!
Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 07-03-2023 23:24"), whereas using your real name or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in or make an account - it is OK to just put your (nick) name at the end of your post.
NB: for D1 comments, please refer to our D1 2023 blog; for fist impressions and general comments to D 2023, see here
Annex I - added 8 March 11:30
Questions D2 2023
1) Analyse
the patent situation for the following subject-matter:
(a) nappies
comprising a control unit and electrodes made of metal for detecting the presence
of urine (CU-Em),
(b) nappies
comprising acoustic warning means, a control unit and electrodes made of metal
for detecting the presence of urine (CU-Em-sound),
(c) nappies
comprising a control unit and the electrodes G for measuring glucose in the urine
(CU-EG),
(d) nappies
comprising a control unit and the electrodes P for measuring the pH of the urine
(CU-EP),
(e) nappies
comprising a transmitter for sending a signal to a baby phone, a control unit and
electrodes made of metal for detecting the presence of urine (CU-Em-transmit),
(f) nappies
in which the absorbent comprises substance X.
2) As the
situation currently stands
(a) is Zuma
free to produce and sell nappies that neutralise urine odours and in which the absorbent
comprises substance X, and
(b) are we
free to produce and sell:
━
nappies comprising acoustic warning means, a control unit and electrodes made
of gold for detecting the presence of urine (CU-E(Au)-sound),
━
nappies comprising a transmitter for sending a signal to a baby phone, a
control unit and electrodes made of gold for detecting the presence of urine
(CU-E(Au)-transmit),
━
nappies comprising a control unit and the electrodes G for measuring glucose in
the urine (CU-EG), and
━
nappies comprising a control unit and the electrodes P for measuring the pH of
the urine (CU-EP)?
3) What can
we do to improve our rights and position?
Our answers to D2 2023:
1)
Analyse the patent situation for the following subject-matter:
(a) nappies comprising a control unit and electrodes made of metal for detecting the presence of urine (CU-Em),
EP-Y filed in
November 2016 is the earliest application disclosing CU-Em. The claim is
directed to silver electrodes.
Status:
withdrawn shortly after publication in May 2019 and cannot lead to patent
protection.
EP-Z filed by
Zuma on 14/01/2019 discloses CU-Em and has been granted with a claim to CU-Em,
metal not silver.
Silver has
thus been disclaimed, which was not disclosed in the application as filed. This is
allowable to overcome Art.54(3) prior art (G 1/03) and it seems that EP-Y was considered to be Art. 54(3) prior art, as it was filed before the priority date of EP-Z and published afterwards.
Application
claims priority from US-Z filed on 15/01/2018.
EP-Z was
filed before priority period of US-Z expired on 15/01/2018 and both were filed
by Zuma.
However, US-Z
discloses electrodes made of conductive material, with specific examples of
conductive plastic. There is no disclosure in US-Z of metal electrodes as claimed in
EP-Z.
Consequently,
EP-Z does not relate to the same invention and is not entitled to priority (note: also not to partial priority).
The effective
date of the claim is 14/01/2019.
The handbook
of 2017 and Journal article of March 2016 are Art 54(2) prior art.
Journal discloses a nappy with a strip of paper -so not metal- on the nappy’s outer part that changes colour when the nappy gets wet.
Handbook discloses nappies comprising an electronic visual indicator, a control unit and electrodes to detect the presence of urine and teaches that the detection of the presence of urine can be achieved with electrodes made of any conductive material. The examples in the handbook show electrodes made of conductive plastic - so not metal.
So, the handbook and the journal do not
disclose metal electrodes, so claim is novel over both.
EP-Y was
published before effective date of claim and is thus Art. 54(2) prior art.
EP-Y
discloses nappy with CU and silver electrodes for detecting urine.
Since the
disclaimer in the granted claim is only allowed for Art. 54(3) prior art and
not for full prior art, the claim contains an extension of subject matter and
has been invalidly granted.
(See Q.3 for improvement)
However, at
the moment, EP-Z gives patent protection for CU-Em for electrodes made of
metals other than silver (in all EPC countries were validated).
US-Z has been
abandoned so does not lead to protection in the US.
No patent/
patent application in CN.
(b) nappies comprising acoustic warning means, a control unit and electrodes made of metal for detecting the presence of urine (CU-Em-sound),
EP-WA filed
on 8/09/2020 is earliest application and Whiter’s first application for
Cu-Em-sound.
The effective
date of the claim to Cu-Em-Sound is
8/09/2020.
The handbook
of 2017, Journal article of March 2016, EP-Y and EP-Z are Art 54(2) prior art.
Do not
disclose metal electrodes and/or acoustic warming means, so claim is novel over
these.
Also the
search report cites no documents of relevance, so the claim is novel.
The claim is
also inventive because it removes the disadvantage of having to take off a
baby’s clothes to see if nappy / baby is wet.
EP-WA will
therefore lead to valid patent protection for CU-Em-sound.
No patent/
patent application in US or CN.
(c) nappies comprising a control unit and the electrodes G for measuring glucose in the urine (CU-EG),
EP-WB filed
on 8/09/2020 is earliest application and Whiter’s first application for CU-EG.
Claim 1 is
directed to CU-EG
Effective
date of claim: 8/09/2020
Handbook,
journal article, EP-Y, EP-Z are Art 54(2) prior art.
None disclose
the specific electrodes G for measuring glucose so claim 1 is novel.
Claim also
inventive because although (non-specific) electrodes as such were known, they
were known only in the food industry and it is surprising that they can be used
to detect urine.
Claim 1 can
be validly granted.
It will be
granted soon as the renewal fee has been paid and text for grant has been
approved, fees paid and claims translated.
EP-WB will
give patent protection in states where validated for CU-Em.
No patent/
patent application in US or CN.
(d) nappies comprising a control unit and the electrodes P for measuring the pH of the urine (CU-EP),
EP-WB filed
on 8/09/2020 is earliest application and Whiter’s first application for CU-EP.
Claim 2 as
filed was directed to CU-EP, but was deleted due to non-unity objection.
The claim
cannot be re-introduced and so EP-WB cannot lead to patent protection for
CU-EP.
EP-WA is
still pending today
So divisional
filed yesterday from EP-WA for CU-EP is filed while parent as pending
But EP-WDIV
was filed as a divisional from the wrong application, directed to a different
invention (CU-EM-sound) and not disclosing CU-EP;
So that
EP-WDIV extends beyond the indicated parent EP-WA and this divisional also
cannot give protection.
It might be
possible to correct the wrongly indicated EP-WA parent application on request
form 1001 under R 139 as an obvious mistake, but since no fees have paid yet
for DIV, I advise to not pay these fees and file a new divisional application
(see Q. 3)
No other
applications exist in EP, so at present no-one has patent protection for CU-EP.
No patent/
patent application in US or CN.
(e) nappies comprising a transmitter for sending a signal to a baby phone, a control unit and electrodes made of metal for detecting the presence of urine (CU-Em-transmit),
EP-WC filed
on 6/05/2022 is earliest application and Whiter’s first application for CU-Em-transmit.
Claim 1 is
directed to CU-Em-transmit
Effective
date of claim 6/05/2022
Handbook,
journal article, Ep-Y, EP-Z are Art 54(2) prior art.
EP-WA and WB
will have been published in mid March 2022 and are also Art. 54(2) prior art.
None of these
documents disclose a nappy with a transmitter for sending a signal to a baby
phone.
The search
report did not cite any documents of relevance, so the claim is novel.
The claim is
also inventive, since a caregiver is alerted to the wet nappy situation in a
manner that does not disturb the baby’s sleep oin contrast to acoustic warning
signals.
Claim 1 can
lead to patent protection EP states where validated for CU-Em-transmt
No patent/
patent application in US or CN.
(f)
nappies in which the absorbent comprises substance X.
EP-WC filed
on 6/05/2022 is earliest application and Whiter’s first application to disclose
absorbent +X.
This sjm is
not claimed, however, so at present there is no protection for X.
No patent/
patent application in US or CN.
2) As
the situation currently stands
(a) is
Zuma free to produce and sell nappies that neutralise urine odours and in which
the absorbent comprises substance X,
At present,
Zuma is free to produce and sell these nappies everywhere, as no-one has any
patent protection or provisional protection.
In
particular, there is no filing in the US at present, so Zuma is fee to go ahead
with the planned launch next month in the US.
(b) are we
free to produce and sell:
━
nappies comprising acoustic warning means, a control unit and electrodes made
of gold for detecting the presence of urine (CU-E(Au)-sound),
These nappies
currently fall under the scope of EP-Z directed to CU-EM, not silver. Also the additional
presence of sound in the nappie does not make it escape the scope of the claim.
Gold is a
metal, so in countries where EP-Y has been validated, Whiter is not free to
sell or manufacture..(but see Q.3)
There are no
patents outside of Europe, so Whiter is free to sell (and manufacture) in their
markets US and China.
━
nappies comprising a transmitter for sending a signal to a baby phone, a
control unit and electrodes made of gold for detecting the presence of urine
(CU-E(Au)-transmit),
These nappies
currently fall under the scope of EP-Z directed to CU-EM, not silver. Also the additional
presence of transmit in the nappie does not make it escape the scope of the
claim.
Gold is a
metal, so in countries where EP-Y has been validated, Whiter is not free to
sell or manufacture (but see Q.3)
There are no
patents outside of Europe, so Whiter is free to sell (and manufacture) in their
markets US and China.
━
nappies comprising a control unit and the electrodes G for measuring glucose in
the urine (CU-EG),
The
electrodes G are not made of metal and so do not fall under the scope of EP-Z.
There are no
other IP rights covering this topic.
Whiter is
therefore free to sell/manufacture in their markets: EP, US and China
━
nappies comprising a control unit and the electrodes P for measuring the pH of
the urine (CU-EP)?
The
electrodes G are not made of metal and so do not fall under the scope of EP-Z.
There are no
other IP rights covering this topic.
Whiter is
therefore free to sell/manufacture in their markets: EP, US and China
3) What
can we do to improve our rights and position?
Improve
FTO – oppose EP-Z
File
opposition against EP-Z.
Granted on
17/8/2022, so 9m opposition period expires on 17/5/2023.
File
opposition at the latest on this date and pay the fee.
Grounds of
opposition: added subject matter, due to unallowable undisclosed disclaimer.
In
opposition, Zuma cannot remove the disclaimer in an amended claim directed to
nappy + metal electrodes, as this would increase the scope of protection and
violate Art 123(3). Furthermore, that claim would not be novel w.r.t. EP-Y (54(2)
due to invalid priority).
Zuma might
amend to a narrower claim, based on the only metal electrodes disclosed in
EP-Z: copper and platinum.
Such a claim
is novel over EP-Y, but inventivess is not clear.
However, even
if EP-Z were maintained in amended form with claim to: Nappy with CU and copper
or platinum electrodes for detecting urine, this does not cover the product
with gold electrodes which you have been selling for over a year and there is
no infringement.
So free to
make and sell the nappies listed in Q.2.
EP-WA –
CU-Em-sound
Priority
period has expired and no new applications can be filed to increase territorial
coverage.
The designation
fees have been paid. The request for examination has also been completed by
paying the examination fee.
Since EP-WA
received a positive search report, a R. 71(3) communication can be expected
soon.
When
received, pay the fee for grant and printing and translate the claims.
The renewal fee in respect of 3rd year was due on 30/09/2022. The paper does not indicate whether this was paid or not, so I advise to check whether it was. If not yet paid, pay the renewal fee with a 50% additional fee at the latest on 31/03/2023, so that EP-WA can proceed to grant [R.71a(4)] [added 9/3/2023 in reaction to comments from Dino and others]
After grant,
validate in EP countries where important markets are located.
EP-WB –
CU-EG
Will soon be
granted to give protection for CU-EG. After grant, validate in EP countries
where important markets are located.
EP-WB’s second
aspect – CU-EP
As we
responded to the 71(3) only a week ago 28/2/2023, EP-WB is still pending
To obtain
protection for CU-EP file a new divisional application EP-WBDIV2 from EP-WB
with claim directed to CU-EP, before the decision to grant EP-WB is published.
Pay the relevant fees, including the renewal fee for the 3rd year (as that was already due for the parent EP-WB) within 4m of filing EP-WBDIV2 [added 9/3/2023].
The divisional
inherits the filing date of EP-WB: 08/09/2020.
Handbook,
journal article, EP-Y, EP-Z, US-Z (file inspection if EP-Z) are Art 54(2) prior
art.
None disclose
specific electrodes P for measuring pH so claim 1 is novel.
Claim also
inventive because although electrodes as such were known, they were known only
in the food industry and it is surprising that these specific electrodes P can
be used to analyse urine to measure the pH of the urine
EP-WBDIV2 can
give valid patent protection in European states where validated for CU-EP.
EP-WC’s
aspects– CU-EM-transmit & nappies w absorbent comprising X
The priority
period for this application does not expire until 06/05/2023 (Sat) -> 08/05/2023 (Mon).
To increase
territorial coverage, I advise to file a new PCT application PCT-NEW at the EPO as rO before or on 08/05/2023,
with an independent claim directed to CU-EM-transmit and another independent
claim direct to nappies with absorbent + X., claiming priority from EP-WC. Pay fees.
The claims
are non-unitary, so a partial search report can be expected and an invitation
to pay an additional search fee.
Since CU-EM-transmit
has already been searched by the EPO, the initial search fee will be refunded if
we put CU-EM-transmit as first invention – so I advise to out that first.
I advise to
pay the additional search fee to also get Absorbent + X searched.
The claim to
CU-EM-transmit is novel and inventive (see Q.1) and can lead to valid patent
protection in countries where nationalized: CN and USA. No need to nationalize
in EP, as WP-WC already covers it and we cannot get both in EP in view of the
double patenting prohibition.
The effective
date of claim to nappy w absorbent +X is EP-WC filing date: 06/05/2022.
Handbook,
journal article, Ep-Y, EP-Z, EP-WA, EP-WB are Art 54(2) prior art.
None disclose
nappy w absorbent + X.
X is known as
an absorbent, but has not been used in nappies, so claim is novel.
Claim is also
inventive because X is surprising effective at neutralising odours.
So granted
patent protection can be obtained in the states where PCT-NEW is nationalized:
CN, US and EP. Upon European entry, only need to enter with claim directed to nappy
w absorbent + X.
To obtain
protection for both inventions in the USA and China, it will likely be
necessary to file divisional applications.
In view of Zuma’s
announcement: To obtain fast protection in USA, I advise to request early entry
to the US phase and perform any necessary actions to accelerate grant
proceedings based on a claim directed to nappy w absorbent + X.
Whiter can then stop Zuma from making and selling the nappies with X in the US.
EUROPEAN
QUALIFYING EXAMINATION 2023
Paper D2
This paper
comprises:
Part II:
Legal Opinion
Questions 1-3
(45 points)
[001] Today
(7 March 2023) you received the following letter.
[002] We,
Whiter, are a manufacturer of nappies based in Sweden. We develop nappies for
newborns who
have to be hospitalised. The health of such newborns has to be checked
frequently
and one way to do so is by analysing their urine. We produce and sell our
nappies
in Europe,
China and the USA.
[003] Nappies
that indicate the presence of urine with a visual indicator on the nappy have
been known
for a long time. They are disclosed, for example, in a journal article
published in
March 2016
describing a nappy with a strip of paper on the nappy’s outer part that changes
colour when
the nappy gets wet. This type of indicator has a major drawback: it is
necessary
to look at
the nappy and thus remove the newborn’s clothes to see if urine is present.
[004] We have
been doing some research and come up with the idea of using a control unit
(abbreviated
“CU”) and electrodes (abbreviated “E”) to detect the presence of urine. When
urine is
present, an acoustic signal is generated to warn someone taking care of the
newborn
wearing the
nappy. The acoustic signal remedies the above drawback.
[005] When
doing this research, a member of our team remembered the “Handbook of
UrineDetection”,
which was published in May 2017 and discloses nappies comprising an electronic
visual
indicator, a control unit and electrodes to detect the presence of urine. The
handbook
teaches that
the detection of the presence of urine can be achieved with electrodes made of
any
conductive material. The examples in the handbook show electrodes made of
conductive
plastic.
Albeit electronic, this indicator is still visual, and therefore it is still
necessary to remove
the baby’s
clothes to see if urine is present.
[006] Our
research also revealed that a nappy with a control unit, besides merely
detecting the
presence of
urine, can surprisingly also be used to directly analyse the urine on the nappy
by
means of
specific electrodes. In this way, the newborn’s health can be checked more
efficiently.
[007] Based
on our research, on 8 September 2020 we filed European application EP-WA,
which
discloses and claims a nappy comprising acoustic warning means, a control unit
and
electrodes
made of metal for detecting the presence of urine (abbreviated “CU-Em-sound”).
[008] On the
same day we also filed European application EP-WB, which discloses and
claims:
━ in
independent claim 1, a nappy comprising a control unit and specific electrodes
G made
of conductive
plastic (abbreviated “CU-EG”), wherein the control unit and the electrodes
are
configured to measure glucose in the urine, and
━ in
independent claim 2, a nappy comprising a control unit and specific electrodes
P made
of conductive
plastic (abbreviated “CU-EP”), wherein the control unit and the electrodes
are
configured to measure the pH of the urine.
Such specific
electrodes belong to the state of the art, but have previously been used only
in
the food
industry.
[009] Both
applications were filed using EPO Form 1001 without claiming priority. They
were
searched by
the EPO.
[010] For
EP-WA the search report only cites documents in category A, including the
abovementioned handbook. The examination and designation fees for EP-WA were
paid.
[011] The EPO
found that EP-WB lacked unity. We did not pay any additional search fee and,
upon entering
the examination phase, we restricted EP-WB to the first invention, i.e. CU-EG.
The renewal
fee for EP-WB was paid in August 2022. The Rule 71(3) communication was
issued for
EP-WB, and we replied to it on 28 February 2023 by paying the prescribed fees
and
by filing the
translations of claim 1 as filed.
[012] For
about a year, we have been producing and selling nappies comprising acoustic
warning
means, a control unit and electrodes made of gold (a known metal) for detecting
the
presence of
urine. CU-E(Au)-sound
[013] We have
also realised that the second aspect of EP-WB is worth pursuing. Therefore
yesterday we
filed European divisional application EP-WDIV, directed to a nappy comprising a
control unit
and the electrodes P made of conductive plastic for measuring the pH of the
urine.
We have not
paid any of the required fees for this divisional application yet, but we plan
to pay
them
tomorrow. When preparing this letter for you, we realised that we made a
mistake by
indicating
EP-WA as the parent application in the EPO Form 1001 for EP-WDIV.
[014] As we
progressed with our research, we filed European application EP-WC on
6 May 2022,
without claiming priority. The description of EP-WC discloses, in a first
aspect, a
nappy which
transmits a signal to a baby phone when urine is present. In this way, someone
taking care
of the baby is warned that the nappy is wet. In a second aspect, independent
from
the first,
the description of EP-WC discloses a nappy in which the absorbent comprises
substance X.
Substance X has been known for decades as an absorbent, but it has never
been used in
nappies, and it is surprisingly efficient at neutralising the odour of the
urine. EPWC contains only one claim, which is directed to a nappy comprising a
transmitter for sending
a signal to a
baby phone, a control unit and electrodes made of metal for detecting the
presence of
urine (abbreviated “CU-Em-transmit”). Last month we received the search report
for EP-WC,
which cites only documents in category A.[015] We are soon going to change our
production line by replacing the acoustic warning
means with
transmitters. We are confident that nappies which transmit signals to baby
phones
improve the
quality of the newborns’ sleep and therefore will be much more appreciated by
our
customers
than the ones emitting the acoustic signal.
[016] Our
competitor Zuma is planning to launch a new line of nappies in the US market
next
month that
neutralise urine odours and in which the absorbent comprises substance X. This
was announced
on its website last week.
[017]
Researching our competitor’s activities, we discovered European application
EP-Z, which
was filed by
Zuma on 14 January 2019 claiming priority from its US application US-Z. The
latter was
filed on 15 January 2018 and then abandoned. Application EP-Z discloses and
claims a
nappy comprising a control unit and electrodes made of metal for detecting the
presence of
urine (abbreviated “CU-Em”). The only metals mentioned in EP-Z are copper and
platinum.
[018] The
European search report for EP-Z was published in July 2019. It cites European
application
EP-Y, which was filed in November 2016, published in May 2018 and withdrawn
after
publication. EP-Y discloses and claims a nappy comprising an electronic visual
indicator,
a control
unit and electrodes made of silver (a known metal) for detecting the presence
of
urine.
[019] We
inspected the file of EP-Z and noticed that a patent was granted with a single
claim
directed to a
nappy comprising a control unit and electrodes made of metal for detecting the
presence of
urine, wherein the electrodes are not made of silver. The mention of the grant
of
the patent
was published on 17 August 2022. Furthermore, we have noticed that US-Z
discloses a
nappy comprising a control unit and electrodes made of a conductive material
for
detecting the
presence of urine, and that the only exemplary embodiment in US-Z concerns
electrodes
made of conductive plastic.
Questions:
1) Analyse
the patent situation for the following subject-matter:
(a) nappies
comprising a control unit and electrodes made of metal for detecting the
presence of urine (CU-Em),
(b) nappies
comprising acoustic warning means, a control unit and electrodes made of
metal for detecting the presence of urine
(CU-Em-sound),
(c) nappies
comprising a control unit and the electrodes G for measuring glucose in the
urine (CU-EG),
(d) nappies
comprising a control unit and the electrodes P for measuring the pH of the
urine (CU-EP),
(e) nappies
comprising a transmitter for sending a signal to a baby phone, a control unit
and electrodes made of metal for detecting
the presence of urine (CU-Em-transmit),
(f) nappies
in which the absorbent comprises substance X.
2) As the
situation currently stands
(a) is Zuma
free to produce and sell nappies that neutralise urine odours and in which the
absorbent comprises substance X, and
(b) are we
free to produce and sell:
━ nappies comprising acoustic warning
means, a control unit and electrodes made of
gold for detecting the presence of
urine (CU-E(Au)-sound),
━ nappies comprising a transmitter for
sending a signal to a baby phone, a control unit
and electrodes made of gold for
detecting the presence of urine (CU-E(Au)-transmit),
━ nappies comprising a control unit and
the electrodes G for measuring glucose in the
urine (CU-EG), and
━ nappies comprising a control unit and
the electrodes P for measuring the pH of the
urine (CU-EP)?
3) What can
we do to improve our rights and position?
I struggled a lot with the terminology in this D2 paper.
ReplyDeleteThe placement of the abbreviations in the paper did not make sense to me; CU-EP and CU-EG were placed before the functional feature, which made it appear as if CU-EP / CU-EG was the structural features without the functional meaning. As a result, I spent some time thinking whether EP actually means electrodes made of conductive plastic. In the end, I spotted the wording "specific electrode P[/G]" which I saw as the distinguishing structural feature.
Perhaps a silly point, but it also took me quite some time to finally and reluctantly accept that conductive plastic is indeed not a metal, despite the (in my view) lack of explicit indication in the paper.
The priority vs prior art situation was also a quite unique one; I've never applied art. 123(3) EPC to the removal of an undisclosed disclaimer before (introduced because of an art. 54(3) EPC document that wasn't actually an art. 54(3) EPC document), so I was still doubtful even at the end of the flow.
Once the above was sorted out, I thought the remaining issues in the paper, especially the client's applications, were quite straightforward. The second question (FTO) also seemed rather straightforward.
I agree that the "specific" made it distinguishable.
DeleteBased on [006]: "can surprisingly also be used to directly analyse the urine on the nappy by means of specific electrodes." and
[0088]: "... a control unit and specific electrodes G made of conductive plastic (abbreviated “CU-EG”)"", "... a control unit and specific electrodes P made of conductive plastic (abbreviated “CU-EP”)" and "Such specific electrodes belong to the state of the art, but have previously been used only in the food industry."
Some prior arts do have electrodes from conductive plastic, but not such "specific" electrodes.
Why did you apply 123(3)? The claim without the disclaimer would not be new, or? Could Z not simply amend to limit to copper and platinum (which is a "do not care" for our client, as he prefers to use gold)?
DeleteOh, then it seems I missed the combination of (1) removing the disclaimer AND (2) introducing copper/platinum, which together would not contravene art. 123(3) EPC. I saw (1) as an individual issue and stopped there.
DeleteUnfortunately, the main analysis of D2 and the issues above did not leave me with much time to spot that (non)-issue!
Same here, I thought the patent would be revoked (not enough time to write the last answers).
DeleteBut even with amended EPZ with copper/paladium, we would be free to use CU EM sound and transmiter invention, right= There would be no infringement by using gold and any other metal, except paladium/copper.
I agree that the abbreviations used in the paper this year were not very "catchy" and were hard to remember. I regularly needed to consult my annotated timeline to identify which abbreviation related to which subject matter.
DeleteWouldn‘t a limitation to copper/platinum remove more than necessary? The way I understood, EP-Y merely disclosed silver and EP-Z only exemplified copper ans platinum but claimed metal in general.
DeleteClearly, the specific disclosure of silver in EP-Y anticipates the generic disclosure in EP-Z which prompted the introduction of the undisclosed disclaimer. But, limiting to the examples thereby excluding silver AND all metals that are neither of the three appeared to me as removing more than necessary which would contravene the requirements set out in G1/03.
Hence, I figured the disclaimer was allowable and suggested an inventive step attack against EP-Z for merely being directed to an obvious alternative.
Or am I missing your point here?
I agree on the issue with the „specific electrodes“ language making it distinguishable.
Amendment would be to: "a nappy comprising a control unit and electrodes made of metal for detecting the presence of urine, wherein the metal is copper or platinum", based on [017] of the application. That is a normal amendment that does not relate to the conditions for introducing an undisclosed disclaimer of G 1/03 such as the "not more than necessary"-requirement.
DeleteHi Roel,
Deletesince US-Z discloses a nappy comprising a control unit and electrodes made of a conductive material for detecting the presence of urine. And EP-Z discloses a nappy comprising a control unit and electrodes made of a metal for detecting the presence of urine, and metal is a conductive material. it is a partial priority case, right?
the subject matter electrodes made of metal -effective date of EP-Z
the subject matter electrodes made of conductive material non being metal - effective date of US-Z.
in your answer; you stated that EP-Z is not entitled to priority because relates to a different invention, but i do not understand that.
can you give a deeper explanation?
Hi John, no, that would not be partial priority - see the comment from
DeleteDiane Tweedlie 13 March 2023 at 09:18 below (in response to
luis 11 March 2023 at 13:39)
We have added our complete D2 answer to the blog post, at the end.
ReplyDeleteThank's for providing your answer! I wrote about 80-90% the same as you. I ran out of time at the end, unfortunately, so I had to make some facts very short. But I am suprised how I kept right overview after all. That might even save me from my failure in D1-2.
DeleteThanks for the suggested solution!
DeleteI think we should also pay renewal fees for EP-WA, within the 6M period (R51(2)). While for EP-WB, renewal fees were paid in August 2022, for EP-WA, the paper mentioned that only examination and designation fees had been duly paid.
For EP-WC: could we also file two PCT applications each claiming priority from EP-WC and respectively claiming CU-EM-transmit and nappies w X? (since CU-EM-transmit & nappies w X are non-unitary subject matter anyways)
I also suggested to file 2 PCT applications, one for nappies+X and one for CU-EM-transmit, both claiming priority from EP-WC. However, as this is a rather expensive solution, I also mentioned we could instead file national US and/or CN applications to cover the relevant markets.
DeleteThomas
*** meaning suggested US+CN national applications for CU-EM-transmit as the EP market will already be covered by EP-WC, and a new PCT for nappies+X
DeleteIn my view 2 PCTs is also a valid solution, but may get you some marks less as you unnecessarily impose more cost to the client. I would also consider national US and CN a valid solution - with US most important as that is where the short-term activity of the competitor is expected.
DeleteI don't think EP-Z is novel over the handbook. It clearly says "any conductive material", which covers metals.
ReplyDeleteInventive step not novelty surely? EP-Y becomes 54(2) art due to priority not being valid so can cite for inventive step
DeleteGeneric (conductive material) doesn’t anticipate a specific (metal)
DeleteI thought and wrote the same! But I guess one had primary discuss EP-Y for a novelty attack.
DeleteI'm talking about the handbook, not EP-Y. The handbook is a 54(2) document for EP-Z, whether the priority was valid or not, because it was published in 2017. And it states that any conductive material can be used for the electrodes if I'm not mistaken.
DeleteShouldn't that be the case when the specific has its own advantages over the generic solution? This wasn't explained in the annex, so at least, it shouldn't be inventive over the handbook.
DeletePlease use your name or a nickname - it is impossible to distinguish all these Anonymous persons... and makes the communication difficult
Delete"any conductive material" is not a direct and unambiguous disclosure of metal. A genus (conductive material) does not disclose, and hence not anticipate, a species.
DeleteI agree with that, but still don't think EP-Z was inventive over the handbook, as the species must have an advantage over the genus to be patentable and said advantage was not specified in the annex.
DeleteThat is why our answer says: "Such a claim is novel over EP-Y, but inventivess is not clear."
DeleteThank you for providing the D2 answer, great help!
ReplyDeleteI agree with nearly all points, except that new PCT claiming priority from EP-WC can be filed until 8.5.2023 (as the 12M period ends on 6.5.2023 which is a Saturday where the EPO is closed, R.80.5 PCT)
Thomas
I also said this
DeleteYou are correct. I should have checked the calendar
DeleteOops, that was missed in our review... I corrected the post: PCT-NEW shall be filed at the latest on 8/5/2023. Thx!
DeleteNote: see also the discussion initiated by Gerben on the D1 blog.
DeleteI also included the following in Q3:
ReplyDeleteRenewal fee in respect of 3rd year for EP-WA was due by 30 September 2022. Pay renewal fee for EP-WA by 31 March 2023 with additional fee for later payment
We had a brief discussion in details of fees in the D2. We do not know whether those details were expected, so we decided to just make a general reference in the blog post. Usually, if details are needed, there is a clear trigger, and there seems not to be a clear trigger to discuss the timing of renewal fees for all applications - the only piont where it is clearly a critical element is as to whether EP-Z is (still) valid in DE (in our view).
DeleteFor me, the trigger was the both were filed on the same day and only 1 had the renewal fee paid. I think they wanted us to catch this reference, but it might worth 1 mark only...
DeleteMaybe, based on comparing [010] and [011]. But on the other hand, it nowhere says that the renewal was not paid for EP-WA. We may need to wait for the Examiner';s Report. I agree it will not be many marks if it would have been expected, maybe 1 or 2?
DeleteSo one could add to the answer:
"For EP-WA, the renewal fee in respect of 3rd year was due on 30/09/2022. The paper does not indicate whether this was paid or not (whereas it does for EP-WB [011]; and whereas it does for examination and designation fee for EP-WA [010]), so I advise to check that in the EP Register. If not yet paid, pay the renewal fee with a 50% additional fee at the latest on 31/03/2023."
Also for the new divisional EP-WBDIV2, one could add details on the fees incurred by its filing:
Delete"Pay the filing fee and search fee within 1m of filing EP-WBDIV2, as well as the renewal fee for the 3rd year (that was already due for the parent EP-WB) within 4m of filing EP-WBDIV2."
@trainee that is what I took to be the trigger too as it’s the reason I even considered the renewal fee in the first place. Either way I agree it will only be 1 mark
DeleteI concluded that it is common general knowledge that metal=species to any conductive material=genus. This resulted to EP-Z priority being valid and EP-Z not being inventive over the Handbook, which was not cited in the search report. I agree otherwise.
ReplyDeleteSee above on "any conductive material" vs metal: "metal" does not benefit from priority from "any conductive material", as "any conductive material" does not directly and unambigously disclose "metal" (use gold standard - change of technical teaching).
DeleteMore simplified example: priority shows "X in a range of 1 - 100" but no specific examples other than X=25. In that case, other points in the range are NOT disclosed, e.g., X=65 - even though the skilled person knows that 65 is in between 1 and 100.
The "using common general knowledge" to conclude what is directly and unambiguously disclosed is NOT adding any technical information or technical detail, it is only used to understand what something means (e.g., transparent means that you can look through something) and to recognize synonyms / abbreviations (e.g., Cu = copper; Fe = Iron).
Regarding the opposition, could the grounds be lack of novelty due to the publication of EPY disclosing Cu EM where the electrode is silver (thus broader disclosure than claim 1 for metal)?
ReplyDeleteThe effective date of claim 1 of EPZ is the filing date (due to invalid priority), which makes claim 1 not novel over EPY publication on May.
I did not see the possible amendment and thus did not discuss IS of copper/palladium over silver....
I thought so at first too, but a claim with extension of subject-matter has no date - the extending matter is simply not allowed to be there) - and is simply not allowable because of Art. 123(2). So, we decided to only have Art.100(c)/ Art.123(2) as ground of opposition.
DeleteMaybe they have this as a safeguard against a knock-on effect: candidates that did not see that there was 123(2) problem due to unallowable amendment now that EP-Y appears not to be a 54(3), would have used lack of novelty as ground and would then -presumably- not have scored marks for the opposition, but did get rid of EP-Z via an opposition -- if EP-Z could not be revoked, the final situation would be very different..., so the Committee made "sure" that you could revoke it, either correctly or incorrectly, but succesful ;)
DeleteI see your point, it makes sense. Thanks for clarifying!
DeleteThanks for providing the detailed response. The issues are very clear from your analysis. I answered one aspect differently: in order to correct error in RfG form for EP-WDiv, I recommended W to request correction under R139. As a precautionary measure I also recommended to file a new divisional. My question is can R139 be used to rectify the error in EP-WDiv? - MG
ReplyDeleteIt is a possibility and is mentioned in our answer. The request form is a document filed with the EPO and it contains a mistake. It should be relatively easy to demonstrate that a presumed parent application relating to different sjm than the divisional does not reflect the true intent of the applicant and that EP-WB - which does contains the sjm on which the divisional is based - does reflect the true intent.
DeleteWould it also be possible to correct the number und R 58 as it is a deficiency in the application document as it does not comply with the requirements of R 57 (b) (which refers to R 41, especially to R 41(2) e))?
DeleteThe number entered in form 1001 does comply with the requirements of R 57(b) and 41(2)e, so there is no formal deficiency. If the number is incomplete or is inconsistent with EP numbering conventions, then that would be a deficiency which can be corrected under R. 58. A missing number can also be corrected. GL-A-IV, 1.3.2.
DeleteI didn't copy the text of the client's letter into my own answer for DII, so I can't check, but I think the client's letter explicitly mentioned paying the renewal fees for EP-WB, but was silent on the payment of renewal fees for EP-WA, so I assumed they were not paid, which feeling was reinforced by the fact that the time limit for paying with surcharge would expire on 31.03.2023 (so pretty soon), which seems like a logical expiration date for an exam if they wanted you to compute that... So I concluded that EP-WA would soon be considered deemed withdrawn, and advised paying the renewal fees with surcharge before the deadline.
ReplyDeleteBut you do not mention this aspect in your answer, so do you think I am too paranoid, or do you agree it may have been expected as part of the answer?
Oh, I see now this was already addressed by Dino, above
DeleteHello, I found scrollling the DII page down to see the arrows to move to another page, and moving forward /backwards the document, and skiping through pages very annoying and slowing down the whole process. DII should be allowed to be printed out or at least be presented as one document that you can easily scroll up and down.
ReplyDeleteThat is when I, when practicing and also during the exam, copied the complete D2 paper into the editor - could easily scroll, search, copy and annotate within the editor window, no need to switch windows/tabs, ...
DeleteRegarding EP-WB, W replied to R.71(3), paid the fees and filed translations on 28.02.2023.
ReplyDeleteSince the mention of grant will be published on the first wednesday after all the requirements of R.71(3) are fulfilled. Is it plausible to think that the grant of EP-WB might be published on 01.03.2023 (a wednesday) ?
No, that is not plausible. The next step in the process is that notification of the decision to grant is handed over to the internal post service for sending out to the applicant. The applicant is informed of when the decision to grant will be published, which is usually around 4 - 5 weeks after notification, taking into account the period for preparations for publication.
DeleteThank you Diane :)
DeleteI thought the same as Diane, but could not find in the Guidelines how long it takes after 71(3) approval. Only C-V, 10 Publication of the patent specification: 'The decision to grant contains the date of the mention of the grant of the European patent and is sent to the applicant when the technical preparations for printing the patent specification have been completed'. Assumed that is the same 5 weeks as the completion of technical preparations for the publication of the application.
DeleteJJ
why do you rhink that US-Z and EP-Z relates to different inventions, metal is also a conductive material, therefore is inside the scope of US-Z. it is a case of partial priority
ReplyDeleteIf US-Z had disclosed metal and EP-Z had been broadened to conductive materials, then that would be a partial priority situation in which the claim part conductive material = metal would have the effective date of the priority application.
DeleteHere, we have the reverse situation. The claim in the subsequent application is narrower than the disclosure in the priority application and the p. application does not specifically disclose the narrower sjm.
I found DII more difficult than the 60 mark questions of the past due to how convoluted the subject matter seemed; there were so many different variations that I found it difficult to unpick and sort out. For example asking about the patent situation for CU-EM was confusing to me because I wasn't sure if they wanted discussion about the specific metal electrodes [CU-EM(Ag/Au/Cu) etc] or just generic. In the end I never really got to grips with who can do what with any certainty.
ReplyDeleteI do not know about anyone else, but to me the improvements were very easy to spot this year I think and some clear indicators were present to assist spotting this.
Terminology was confusing and served no purpose. Improvements were pretty obvious, but I had not enough time to write them out properly… Left me quite unsatisfied tbh…
ReplyDeleteThe Examiners' Report is out!
ReplyDeleteThe general comments on the D2 in Examiners' Report indicate that the paper was of a very common nature:
"Almost all candidates did follow in their response the scheme for the questions and discussed
the patent situation by subject matter, as was asked. This way of structuring the answer was
intended to help the candidate not to lose marks because of an incomplete analysis. The
analysis of the claim of EP-Z was expected as part of the answer for question 1 (as provided
below), but it was also presented by some candidates together with the advice to oppose the
patent in the answer to question 3. Here, the swapping of the corresponding parts of the
answer was not detrimental to completeness and to the awarding of marks. On the other
hand, the candidates who proposed the possible solution for the invalid filing of the divisional
application while analysing the current situation did not always score full marks for this aspect.
The candidates are expected to analyse the available prior art given in the paper, to discuss
the effective date of claimed subject-matter, and to conclude on patentability and/or validity
of the claim(s), even if it is stated in the exam paper that a search report only contains
documents of category A, or that a communication for the intention to grant has been issued.
Some candidates did not provide a complete analysis as outlined above and were not
awarded full marks.
Candidates are reminded that no marks are awarded for speculation beyond the facts given
in the examination paper."
Please refer to the Examiners' Report for comments on the individual questions and on the possible solution.