Thursday, 15 March 2012

Our answers to DII 2012

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

Looking forward to your comments,

Jelle Hoekstra, Pete Pollard, Roel van Woudenberg


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

EP-1 abandoned, not published

Describes:

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

We consider it unclear:

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

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

So, there are two possible approaches:

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

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

APPROACH 1 Broad claim in EP-1 enabled

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

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

EP-2

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

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

US-WG

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

EP-WG

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

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

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

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

Summary – approach 1

Membrain

Watergate

Claimed invention

EP-2

BR, IN (PCT-1)

EP-WG

US-WG

B + injector

- not new EP-WG, web site

- not discl

- not discl

- not discl

B +N

- not discl.

+

- not new EP-2

+

B of C, N of S

+

- not claimed

- not discl

- not discl

B of P, N

- not discl

- not disclosed

+

+

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

Summary – approach 2

Membrain

Watergate

Claimed invention

EP-2

EP-WG

US-WG

BR, IN (PCT-1)

B + injector

- not new EP-WG, web-site

- not discl

- not discl

- not discl

B +N

- not discl.

- not new EP-2

+

- not enabled

B of C, N of S

+

- not discl

- not discl

- not claimed

B of P, N

- not discl

+

+

- not disclosed

Q2 Coating K

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

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

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

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

Q.3 Improvement

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

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

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

Approach 1:

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

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

Membrain

Watergate

Possible claims

EP-2

BR, IN, EP (PCT-1)

New

EP-WG

US-WG

B+injector

-

-

-

-

B +N

-.

+

-

+

B + N of S.

-

-

-

+

B of C, N of S

+

+

-

-

B of P, N

-

-

+

+

B of P + N of S.

-

-

+

+

(fibre P+) K

+

B + any nozzle

-

-

-

-

-

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

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

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

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

Approach 2

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

Membrain

Watergate

Possible claims

EP-2

BR, IN (PCT-1)

New - membrain

EP-WG

US-WG

B+injector

-

-

-

-

B +N

-.

-

-

+

B + N of S.

-

-

-

+

B of C, N of S

+

+

-

-

B of P, N

-

-

+

+

B of P + N of S.

-

-

+

+

(fibre P+) K

+

B + any nozzle

-

-

-

-

-

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

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

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

Q.4

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

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

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

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

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

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

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

26 comments:

  1. I took approach 1 and was quite confident that they wanted to hear that, because:

    - Our client provided the test data.
    - The essential feature was only essential for the embodiment.
    - The broad subject matter was disclosed in the general part.
    - There was the office action of the IPEA, but examination in international phase is merely a first opinion and sorted out later in the national phases. We did not have enough information to decide how this would be handled in different national phases.
    - The solution became symmetric this way: two priority problems because of broadened claim (PCT and EP2), one works, one doesn't. :)

    ReplyDelete
    Replies
    1. Precisely the same approach I took, for exactly the same reasons.

      If I tried to discuss every "what if..." I'd have had no time to address what appeared (to me) to be the core issues.

      Jed

      Delete
  2. Thanks a lot!

    Also the late entry of PCT being useful in approach 1 only may indicate that this is the preferred approach. However, who knows what they want.

    Could one of the Delta Patent team figure out what the in-person hearing at the EPO meant? According to the HTG-II and the description of the new second Office Action at the EPO as IPEA, only telephone contact is permitted (HTG-II says something about "only possible way to make contact is via telephone...". I was quite confused by that.

    ReplyDelete
    Replies
    1. The HTG-II of July 2011 states:

      385 Before the IPER is established, consultation by telephone between the applicant or his representative and the EPO examiner responsible for preparing the report may be useful. Reference is made to point 372 for information regarding a change to the present practice on establishing a second written opinion in Chapter II proceedings.

      386 Applicants wishing to avail themselves of this opportunity must be aware of the fact that a WO-ISA established by the EPO as ISA will be considered a first written opinion of the EPO as IPEA (see point 365).
      Therefore, a request for personal communication should preferably be filed together with the demand. If such request is filed after expiry of the time limit for filing the demand, the IPER may already have been established, so that the request cannot be granted.

      In HTG-II of April 2008 it stated: "Therefore, a request for personal communication by telephone in which it is indicated what is to be discussed should preferably be filed
      together with the demand".

      So, it seems that the word telephone has been removed

      Delete
  3. 388
    "A request for personal communication may be granted by the EPO acting as IPEA only in the form of consultation by telephone."

    ReplyDelete
    Replies
    1. Indeed, also the new IPEA procedure of OJ 2011, 532 only mentions telephone, but does not hard forbid anything else.
      Anyhow, the personal interview is simply there and even if not allowed, there are no legal consequences of that.

      Delete
    2. You are right of course. However - not very careful drafted by the committee. You have enough to think about in a DII exam, it is not necessary to create extra confusion (even if in a very minor point).

      Delete
    3. We're told time and time again that "every word in DII is carefully chosen for a reason". So what's the "carefully chosen reason" for specifically saying that the interview is in person?

      And in real life, do EPO examiners now give interviews even after the 30 (and even the 31) month deadline has passed? I know practices have changed a little recently, but it just seems a little unlikely to me that this would actually happen. Does anyone have experience or knowledge to suggest otherwise?

      Thanks
      Jed

      Delete
    4. You should accept the facts given. You are told that the client has been invited to an interview during an IPE - are you going to tell him not to go because it shouldn't be allowed? This would be wrong as the law does not forbid it.
      Your goal is to mention the interview in your answer somewhere - for example, give some advice about the essentiality arguments.

      There is a difference between a fact (an interview will take place) and the client asking you whether an interview could take place in the future

      Delete
  4. Why did you not claim the nozzle N as such in EP2 and PCT-1, because it was espcially developed by Membrain?

    ReplyDelete
  5. I don't think there was an indication that nozzle N was disclosed independent from the other features sufficiently.

    ReplyDelete
    Replies
    1. I agree, the nozzle N is adapted to inject air bubbles into bundle B. No other description is given. So, not clear that it can do anything else. A broader claim on just N would for the client not make a difference: he uses N =B.

      Delete
  6. The nozzle N as such he can also claim from EP2 (example, drawings) and he does not need to enter the EP phase via further processing of PCT-1.
    If he goes into the US phase with PCT-1 (unintential missing of the national phase), he can stop WG from producing nozzle N with B=P in the US in case membrain has a claim to the nozzle N as such for PCT-1-US.

    ReplyDelete
  7. Of course all true, but I do not see any suggestion that it was unintentional (entered only in those emerging countries that we are interested in"). Seems too speculative, and you would also have to discuss interference in the US; basically Watergate may have hardly anything left. Not the normal outcome in DII

    ReplyDelete
  8. Pure speculation of course, but do you have a gut feeling of the marks distribution in this exam over the various questions?

    My guess (not based on anything but gut feeling and my own wishful thinking)

    1) 25
    2) 10
    3) 15
    4) 10

    In normal D-2 exams question 3) (improvements and resulting status) should see more marks, but this exam seems very light on improvements. A lot of candidates, like me, had a very unsatisfied feeling at the end of it.

    ReplyDelete
    Replies
    1. Re: feeling unsatisfied at the end, I agree completely. For example, I found the reference to Indian and Brazilian filings a bit frustrating. Other than maybe amending claims of the existing applications in those countries, or considering pursuing those countries if you filed a PCT directed to K, what was their relevance? More than once I felt I was missing something in this exam, but the more I think about it and read other people's thoughts, the more I think the exam was the problem...

      Jed

      Delete
    2. 1) different people having different interpretations of what is meant is not necessarily a problem.
      If it is clear from your answer what your interpretations was (because you explain your conclusions and how you got to them), you can still get points.

      Just like in real life, you have to deal with a mixture of yes/no and unclear issues - this is also part of the DII exam.
      And the more you know, the unclearer it can become ...

      2) DII usually has 4 main issues, and you can still get a good score (30 points) if you deal with those well.
      The modern exams are often self-correcting, so that a wrong answer to one of these legal issues may have only a limited influence on the other issues and the end result.

      Delete
  9. No, I do not know because the exam committee also adapts the marking depending on how it went. Find that difficult to judge. Clearly Q.1 is by far most work.

    ReplyDelete
  10. I also suggested for Q2 to add a claim for p(k) + "means for injecting air", in addition to the other claims.

    ReplyDelete
  11. In my opinion, it was known that "The membranes are usually made of ceramics of class C, but may also be made of a special class of polymers P", when EP-1 was filed.

    Moreover, the nozzles are described in the Handbook of Waste Water Aeration published in December 2009, which states that they are suitable for injecting air into small interstices.

    Hence, as
    "US-WG discloses a module comprising hollow fibre membranes made of polymers of class P, and a nozzle that is identical to our specially designed nozzle N and that is preferably made of stainless steel.", US-WG can not be patentable according to 35.US 103....

    do you agree ?

    ReplyDelete
    Replies
    1. No, I do not agree; the handbook does not disclose special nozzle N. So, clearly inventive.

      Delete
    2. But as specified in p.3 : "The tests revealed that, although suitable for injecting air bubbles into the fibre bundle, these nozzles are not as effective as our specially designed nozzle N." Hence I believed that the claims of US-WG were obvious in view of the teachnings of the handbook combined with the knowledge of one skilled in the art at the date of filing of EP-1....

      Delete
  12. To me this only confirms that indeed nozzle N is better than the known nozzles. The handbook does not describe nozzle N. So, N is new and inventive.

    ReplyDelete
  13. I might be wrong here but I think that EP-1 was in fact published - it was abandoned before publication in Europe BUT it would have been 'published' (i.e. available to the public) from at least the WIPO patscope service on publication of the PCT application by WIPO because the PCT application claims priority from EP-1.

    ReplyDelete
  14. I guess you are right, but it does not seem to make a big difference.

    ReplyDelete
  15. I totally agree - on the other hand, it is a point of law in a law paper and one never knows how it's going to be marked!

    ReplyDelete