This is a short update on the Conference on claims amendments. John Allen made a great speech and he was very appreciated by the audience [and indeed by all of us: see Katpost here].These six cases have all been discussed and decided. Adds Anna Maria: "I will let you have as soon as available the text of the decision issued by the panel". Thanks so much, Anna Maria, we really appreciate this!
1. The European Patent Convention allows limitations and modifications of claims after grant. Articles 105(a) and 123 EPC. When this is done at the EPO (central limitation), the effects are regulated (in a not totally clear manner) by Article 68 EPC. But also most national laws allows limitation or modification of claims of granted patents (local limitation). Each member state may behave differently: local limitations are governed by national laws. These laws should be in conformity with the European system, but full conformity is not guaranteed. The result is that a European patent may be modified differently in different States, thus resulting in different national patents, a variable geometry system. The European patent is granted unitarily, but then may be transformed into different titles, with different scope: quite embarrassing.
2. The first day of the Conference the various systems were compared (UK, DE, NL, FR and IT). What is surprising in the system (and to the present writer, somehow shocking) is that the patentee may change the patent at any time. Therefore claims may be changed in the first year after grant, or the second, or the last. They can be changed even after the patent expires. Whether Article 68 EPC mitigates the inconveniences is a question to be considered.
3. On the second day of the Conference a mock trial (or a series of trials) was conducted, and several patent attorneys discussed whether some modifications were allowable and what not. The results were somehow encouraging.
Although, in principle, all national systems have different rules, ultimately those rules could be interpreted in a not too dissimilar manner. This conclusion was evidenced by the mock trial, where six cases of claim modification were discussed. A mock court composed of mock judges of four mock countries (Sir Robin Jacob, Dr Marina Tavassi, Dr Klaus Bacher, Professor Jean-Christoph Galloux, Professor Mario Franzosi) issued a mock decision on the allowability of modifications.
Not forgetting
the Mock Turtle ...
Here's the sample mock patent [which you can read here or download here], with the mock amendments.
Thursday, 24 July 2014
"Limitation and Amendments of claims during litigation" -- a report
"Limitation and Amendments of claims during litigation" was the theme of a conference held in Milan last month, the details of which were sent to us by our good friend Anna Maria Stein (Franzosi Dal Negro Setti). Anna Maria promised to keep PatLit informed of what transpired at this attractive event and, true to her word, this is what she says:
Dear Jeremy,
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Patents A, B and C as granted are defective, as the disclosure doesn't enable the invention to be performed over the entire range claimed.
Claim 1 of all patents calls for an unspecified animal, whereas the disclosure teaches that only a dog can be used to protect sheep, horses against wolves, or that dogs or wolves can be used to protect dwellings against intruders.
The claim therefore clearly allows unintended combinations resulting in non-functional embodiments, such as a wolf protecting sheep, or sheep protecting sheep, or a man (a species falling in the category "animal") protecting a donkey, or vice-versa.
An amendment would have to overcome Art. 83 objections, while staying within the boundaries set by Art. 123(2) or 123(3). (I feel that this is an exercise on added subject-matter).
For patent A:
Q1: not allowable, Art. 123(2) and (3): intermediate generalisation; the disclosure merely states that sheep belong to the family bovidae, it doesn't teach that the invention is applicable to all possible members of that family. (However, deleting "buildings" while narrowing the scope to "animals" seems allowable under Art. 123(3).)
Q2: not allowable, Art. 123(2): a) A "non-residential building facility" is not identical with a "building facilities with restricted access such as those used for military purposes" originally disclosed; b) only wolves have been noted to exhibit a desirable behavior in the vicinity of certain types of buildings. The amended claim is for a DOG protecting a building.
Q3: not allowable. I find this one a bit tricky. I think it is properly dealt with Art. 123(2): The disclosure remarks that horses and donkeys have several characteristics in common [...] as both belong to the same family Equidae, but what ARE these common characteristics? Are these unspecified characteristics directly and unambiguously disclosed for all members of the equidae family?
Q4: not allowable, Art. 123(2), the application mentions fencing as a part of the prior art, but nothing in the description precludes its use together with dogs/wolves. The description discusses persons and animals, but not necessarily in combination as the term "jointly" implies.
For patent B, I see a problem with the expression "at least one group of", suggesting that a single animal can protect several groups at once. This does not appear to be disclosed in the description (Art. 84: support for the claims), suggesting a possible issue with amendments made during examination, resulting in a potential Art. 123(2)/(3) inescapable trap. Furthermore, the latter part of the claim refers to the "said group of", in the singular, whereas the antecedent is either singular or plural. Clarity is not a grounds for opposition or national revokation, but may need to be examined in the context of amendments.
Q5: Not allowable, Art. 123(3): Claim 1 as granted was for horses, the amendment shifts the scope to donkeys.
Q6: definite "maybe", this amendment could be allowable under Art. 123(2) and (3) ON THE CONDITION that claim 1 as granted was allowable. (The fact that it was granted doesn't mean that it is).
For patent C:
Q7: Not allowable, Art. 123(2). Some "restricted access" buildings are "military", but it is not directly and unambiguously disclosed that all "military" buildings are of "restricted access"; the alleged technical effect is related to the isolation of the building, and the the identity of its user. (is "restricted access" clear in the sense of Art. 84? Is "military" a technical feature?)
Q8: Not allowable, same reasons as Q7. In addition, the disclosure related to buildings was with wolves, not dogs.
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