tag:blogger.com,1999:blog-1949935810569534550.post2304329907628997818..comments2023-08-17T14:09:24.945+01:00Comments on PatLit: the patent litigation weblog: Mined Regions - T 2231/09Unknownnoreply@blogger.comBlogger4125tag:blogger.com,1999:blog-1949935810569534550.post-27559994131543819052014-08-19T21:45:22.614+01:002014-08-19T21:45:22.614+01:00The discretionary decision of the Board of Appeals...<i>The discretionary decision of the Board of Appeals whether or not the ordinary language expression "region" is clear</i><br /><br />The examination of Art. 84 EPC may in practice leave lots of room for discussion, but legally speaking there is no room for discretion.<br /><br />Also the board's decision to raise the clarity objection in the first place was not a discretionary one (G 10/93).<br /><br />The board did have discretion to remit the case to the ED for examination of clarity, but that might not have made much sense in this case.<br /><br />Anyway, from reading the decision I get the impression that the clarity problem was introduced (or maybe highlighted) by the appellant when trying to amend and/or argue around the reasons for the refusal by the ED.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-1949935810569534550.post-83118117943539412432014-08-09T18:18:40.280+01:002014-08-09T18:18:40.280+01:00The expression "Bermuda Triangle" is bel...The expression "Bermuda Triangle" is beloved of DG1 when it presents its "Examination Matters" yearly seminars. Ever more cases, of clearly patentable subject matter, and otherwise sailing through substantive examination within DG1, nevertheless disappear without trace, in the Triangle formed by EPC Articles 54, 84 and 123(2). Here's how:<br /><br />Using "broadest reasonable interpretation" the claim lacks novelty and so must be narrowed. But all attempts to secure novelty by such an amendment founder on the rocks of Art 84 or 123(2).<br /><br />DG1 has no conscience. It has no experience how to draft and so blithely supposes that there is no difficulty at all, for any Applicant that takes the trouble to draft competently the patent application before filing it.<br /><br />Mind you, it may have a point, to some extent. In the recent Nautilus case, the Supreme Court of the USA looked at clarity and the behaviour of attorneys deliberately to draft with ambiguity. At least at the EPO, if you try to have it both ways, you might end up with nothing.<br /><br />I will now copy this to Patently-O, which might attract comment here, from readers there.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-1949935810569534550.post-18830773102569363402014-08-09T10:45:47.067+01:002014-08-09T10:45:47.067+01:00This does sound harsh, but I would guess that the ...This does sound harsh, but I would guess that the EPO gives more consideration to third parties than the other patent offices. Sometimes unclear words can cause the claim to 'perhaps' cover embodiments which are not patentable, and if the Board felt that there were particular embodiments in the prior art that could 'perhaps' be covered they would be strict about clarity. I know how much trouble such unclear terms can cause to innocent third parties, and if we are going to have a system where patents have a presumption of validity then such harshness has its place.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-1949935810569534550.post-35259682657169396782014-08-08T21:41:42.654+01:002014-08-08T21:41:42.654+01:00The post seems not entirely accurate. According to...The post seems not entirely accurate. According to 3.1.9, the "in a region" was deleted, which was critical for the clarity objection. From 3.1.4 to 3.1.6, I understand that there was formal basis for deleting it, but that a lack of clarity was induced, as the division into regions was essential for achieving the technical effect underlying the invention (3.1.9). Perhaps lack of inventive step was a kinder way of phrasing it, but the applicant could have filed an auxiliary request with the feature of "regions"?Timnoreply@blogger.com