The patent relates to the field of orally administrable pharmaceutical dosage units such as soft chews, especially for administration to non-human animals.
Chews comprising pamoic acid or a pharmaceutically acceptable salt thereof can be easily processed in forming machines and therefore facilitates manufacturing such soft chews on an industrial scale.
Brief outline of the case
The patent was revoked as the OD came to the conclusion that claim 1 of the MR filed during opposition was infringing Art 123(2). Claim 1 of the MR is identical to claim 1 as granted.
AR 1 did not meet the requirements of Art 84. AR 2-10 were considered infringing Art 123(2) for the same reasons as the MR.
The proprietor appealed the decision.
The board held that the MR did not infringe Art 123(2) and remitted the case to the OD for further prosecution.
The claims at stake
Claim 1 as filed comprised the following proviso in the composition of the soft chewable veterinary pharmaceutical product:
A soft chewable veterinary pharmaceutical product comprising….
– “pamoic acid or a pharmaceutically acceptable salt thereof, provided that such pamoic acid or pharmaceutically acceptable salt thereof is not an active pharmaceutical ingredient”
Claim 2/1 as filed specified that the chewable composition comprises sodium pamoate.
In claim 1 as granted, the pamoic acid or a pharmaceutically acceptable salt thereof with the proviso was replaced by sodium pamoate. This claim was also in the MR before the board.
As the disclaimer/proviso was disclosed in the application as filed, it can be considered as a disclosed disclaimer and does not fall under G 1/3-G 1/16 or G 2-10.
However, removing a disclaimer can in general have two effects
- end up with an extension of object not allowable under Art 123(2)
- increase the scope of protection under Art 11223(3)
Here board found that removing the disclaimer/proviso did not infringe Art 123(2).
The opponent’s position
With the deletion of the feature and its proviso, claim 1 of the MR now also covered a soft chewable product comprising not only sodium pamoate but also for example pyrantel pamoate and/or pamoate oxantel. These possibilities were expressly excluded throughout the application filed by the proviso “provided that such pamoic acid or pharmaceutically acceptable salt thereof is not an active pharmaceutical ingredient”.
Furthermore, several documents D18 to D20 and also D22 had been provided, showing that sodium pamoate is a pharmaceutical active ingredient. Therefore, it was clear that sodium pamoate could not fall within the class of non-active pamoic acid derived ingredients of claim 1 as filed.
The opponents also argued that the omission of the proviso in the claims changed the scope of claim 1, resulting that the claimed object was contrary to Art 123(2).
The proprietor’s position
For the proprietor, the application as filed directly and unambiguously disclosed sodium pamoate as ingredient of the soft chewable veterinary pharmaceutical product, being a preferred embodiment of “pamoic acid or a pharmaceutically acceptable salt thereof” as compound per se for use as an ingredient in the soft chewable veterinary product of the invention, without any indication of its role as active or non-active ingredient, see e.g., page 7, lines 7-16.
The term “sodium pamoate” could thus replace the whole deleted expression in claim 1 as filed including the proviso.
The OD’s position
The OD agreed with the opponents and held that the MR did not meet the requirements of Article 123(2) EPC in view of the deletion of the feature “pamoic acid or a pharmaceutically acceptable salt thereof, and the corresponding proviso.
The board’s position
A direct basis for the sodium salt of pamoate is disclosed in original dependent claim 2. Sodium pamoate is also present in all examples and is presented several times as the preferred salt in the description of the application as filed, see page 3, line 11; page 7, lines 10-11 and 21.
The subject-matter of claim 1 of the MR results from the deletion of the proviso present in original claim 1.
The deletion of a proviso/disclaimer explicitly disclosed in the application as originally filed as “not forming part” of the invention might not be admissible if the deletion results in the “non-part” being still partially claimed or if there is no disclosure in the original application as a whole which renders the remaining claimed subject-matter directly and unambiguously derivable therefrom.
For the board, claim 1 of the original application makes a distinction between the presence of “one or more active pharmaceutical ingredients” and the remaining components of the product, including pamoic acid, even if the original proviso is not taken into consideration. The wording of the term “one or more active pharmaceutical ingredients” suggests indeed that the remaining components of the product including pamoic acid or a salt thereof are not considered as active pharmaceutical ingredients.
Moreover, the description discloses, on page 2, lines 15-20, the presence of pamoic acid or its salt in the soft chewable veterinary product without specification of its function and all examples according to the claimed invention comprise an active ingredient and sodium pamoate, without specification of the function of the latter.
A specific passage on page 7, lines 17-21 of the description states furthermore explicitly that “In one aspect…and pamoic acid or salts are included in the soft chew composition as an (non-active) ingredient or excipient”.
From this passage on page 7 it follows that the specific sodium pamoate was considered in the application as filed as a non-active ingredient and this passage appears to constitute a direct basis for the omission of the proviso and its replacement by the disclosed equivalent feature and specific compound “sodium pamoate”.
The board also found that the fact that pamoate salts, such as in particular the sodium salt, are presented in some prior art documents as pharmaceutical active ingredients, such as in D18-D20 or D22 as argued by the respondents, is irrelevant to the present case.
For the board, this argument appears to be irrelevant for the assessment of the requirements of Art 123(2), since the relevant question for the purposes of Art 123(2) is whether the amendments remain within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, from the whole of the application as filed, cf. the “gold standard” of G 2/10, OJ 2012, 376.
The board held that the interpretation of the OD and of the opponents is inconsistent with the subject-matter of original claim 1 in combination with claim 2, which encompasses this possible combination.
The board disagreed with the opponents as far as the scope of the claim was concerned. In the board’s view, such criteria relating to the scope of the originally filed claim is inappropriate for the assessment of compliance with Art 123(2), which refers explicitly to the content of the application as filed, and not to the scope of the claims. Here again, the board referred to the “gold standard” of G 2/10, OJ 2012, 376.
Comments
In the present file the disclosed disclaimer/proviso has been deleted.
The proviso has been replaced by a positive statement. The deletion remains problematic as the reason for the proviso has indirectly been deleted.
The applicant made clear in the application as filed that pamoic acid helps in the manufacture of soft chewable veterinary pharmaceutical products, although it can be considered, as such, as a medicine.
This does not seem known from the prior art and might warrant a patent, but with the proviso.
Whether keeping silent on a well-known property of an ingredient, as considered by the board, is really making a difference is debatable. The decision could, and probably should, have been different.
The reason of the proviso is found for example in § [0013] which reads: “It has now been found that the soft chews that comprise sodium pamoate can be easily processed in a forming machine and that sodium pamoate facilitates manufacturing of such soft chews on an industrial scale using a forming machine”. Used in this way, sodium pamoate is indeed meant to have no therapeutic effect.
Sodium pamoate is, as shown by the opponents, a product which can have a therapeutic effect. In the claim accepted by the board, the proviso has been removed. The medical use of sodium pamoate is thus not excluded by the claim as it stands.
Therefore, a feeling of unease remains as the proviso is completely removed and it cannot be concluded from the wording of the claim that the sodium pamoate does not have any therapeutic effect.
When looking at the disclosure as a whole, the addition of sodium pamoate might not have the effect it normally has, that is a therapeutic effect, but it has the effect of allowing easy processing of the chew.
There are lots of decisions of the boards saying that when a claim is clear as such and makes technical sense, the description cannot be taken into account in order to imply a limitation of what is clearly expressed in the claim.
It can be agreed with the board that sodium pamoate is present in all the examples, but with the effect of easing manufacture. Here the board has looked at the description, but has overlooked the effect achieved by the presence of sodium pamoate when it comes to the manufacture.
It remains thus doubtful that the deletion of the proviso is acceptable when looking at the disclosure as a whole.
As the file has been remitted for further prosecution, the OD is bound by the ratio decidendi of the decision, but the patent is not yet saved.
It seems that a minimum amount of sodium pamoate (1,5%) is necessary to avoid clogging of the manufacturing machine , cf. Claim 2 as granted. The effect not being claimed, avoiding clogging of the manufacturing machine, the applicable objection is then not a lack of sufficiency, but a lack of IS, see for instance T 2001/12, catchword.
It will thus be interesting to see what happens under Art 100(a) when the procedure is reopened before the OD.
https://www.epo.org/law-practice/case-law-appeals/recent/t211577eu1.html
Comments
21 replies on “T 1577/21 – Deletion of a disclaimer/proviso in a claim – Not infringing Art 123(2)? ”
Daniel, I got a wry smile when I read your write-up of this case, thinking about the issues that can arise when one ventures to declare in the description of a patent application what is “not” the invention. I am of course alluding to our earlier discussions about “conforming” the description to the allowable claim.
It seems to me here that:
…. the invention might best be defined as the “use” of pamoic acid to facilitate the manufacture of a soft chew composition, and
…..it is irrelevant to patentability whether in the composition created by the claimed use the pamoic acid is “active” or “non-active”.
But, as you say, the TBA addressed only what was necessary to get the case back down to the OD and in the further proceedings before the OD there is still “all to play for”. As the saying goes “this case will run and run”.
I guess that the patent owner wishes it were possible to have a second chance to draft a patent application which defines accurately what was the real invention. Meanwhile though, going to grant with a patent that announces what is “not” the invention seems to me not a good idea, because it is ever increasingly likely to “open up a can of worms”.
Dear Max Drei,
The wording “not forming part” of the invention is nowhere to be found in the description, but has been used by the board, See Reasons, Point 2.4, 1st §. It has thus not been entered in the description by the applicant himself in order to adapt the description to the claims.
I understand your reservations about using the formulation “not part of the invention” as we have discussed at length about this topic. Here this topic is not relevant.
In the present case, what is “not forming part” of the invention is the presence of sodium pamoate used as active ingredient, although it is known as such as a possible active component in other compositions.
Although sodium pamoate is disclosed in various parts of the original disclosure, it is in the present case exclusively used as an excipient and not as an active component.
Sodium pamoate, is one form of pamoic acid which helps in the manufacture of the chew. It increases lubricity on the surface of the soft chew when filling the mould with dough or when removing the dough from the mould or both, cf. § [0029], [0033] and [0035] of the description. It eases manufacture, cf. § [0013].
By deleting the proviso, I am of the opinion that it cannot be excluded that it is used as active ingredient, even if in claim 1 a distinction is made between sodium pamoate and one or more active pharmaceutical ingredients. As it is common general knowledge that sodium pamoate can be an active component, when looking at the claim, it is difficult to exclude as active component. Being in the first position in the claim, one could even consider it as the most active component.
It is only by looking at the description that it is possible to realise that sodium pamoate is exclusively used an excipient as it eases manufacture on a certain type of machine. The proviso could have been deleted, but then at least, the sodium pamoate should have been qualified as excipient.
In the application as filed and in the patent as granted what is the nub of the invention is easy to understand. The eventual purpose of the chew is to fight parasites in the animal body, hence the presence of various active ingredients. When using a moulding machine, a chew without sodium pamoate sticks and slows down the production. There is thus no need to have a second chance to draft a patent application. The present one defines accurately what was the real invention is.
I am not sure that “this case will run and run”. It all depends on the prior art submitted by the opponents which has not been considered up to now.
As I have said, one limitation will have to be brought in that the sodium pamoate has to be present at least with 1,5% w/w, see § [0113]. The upper limit of 30% w/w (claim 2 as granted) or even 50% w/w (description), seems more to result from an arbitrary choice than of a realistic assumption. My guess is rather 5% as in claim 3 as granted. It will have to be seen if a chew with a proportion of 1,5% to 5% is novel and inventive. But this is for later.
Sorry, Daniel. Once again I am guilty of not making myself clear.
First, I typed pamoic acid when I should have written “sodium pamoate”.
Second, I should have referred to EXXON fuel additive, the non-medical “use claim” case. The inventive use was there, regardless whether the fuel additive inhibited corrosion or not. Likewise, here, the technical effect of easier chew manufacture, the new and possibly inventive discovery, is given, regardless whether or not the included sodium pamoate has a therapeutic effect or not.
That is why it seems to me to be chasing after an irrelevant hare, whether or not the claim includes or excludes active or non-active sodium pamoate in the chew.
I have written this again in haste but hope that, this time my point comes across OK.
Dear Max Drei,
I can now better follow your thoughts.
I also thought of the lubricant additive, but I failed to see any reference to G 2/88 in the decision.
The limitation to sodium pamoate in the claim as granted results for a long discussion about an alleged lack of unity. The reasons for the use of sodium pamoate in order to ease manufacture has never been discussed during examination. Neither added matter has ever been discussed.
I see the problem in that the board first stated that the description discloses the presence of pamoic acid or its salt in the soft chewable veterinary product without specification of its function on page 2, lines 15-20, and all examples according to the claimed invention comprise an active ingredient and sodium pamoate, without specification of the function of the latter. This was enough for the board to accept the amendment under Art 123(2).
However, when reading the description as a whole, sodium pamoate has a very specific function or effect, which is to ease out the manufacture.
With no word, the board touches upon the actual teaching which is the use of sodium pamoate in its function as excipient in order to ease manufacture. From the whole content of the application as filed it is the presence of sodium pamoate as excipient which is the nub of the application. To me the essential feature of easing manufacture is not present in the claim, be it directly or indirectly.
In my opinion, wilfully ignoring the fundamental aspect of the effect of the sodium pamoate and not referring to G 2/88 remains problematic in the present decision.
Fascinating reaction there, Daniel. Thanks for that.
I am looking at the case through the eyes of an attorney who, one day, is representing the patent owner (or Applicant) and the next day representing the Opponent. I am looking to see what went wrong, how to learn from mistakes made by other representatives, how I can better serve my clients in future.
Your outlook seems slightly different. My impression is that you study these cases to assess the “quality” of the decision-making and reasoning, to praise the good and identify the deficiencies in the less good decisions. Such critical commentary is hugely important.
Our different focus is possibly explained by the difference in our respective career paths.
When I was younger, there were no patent law blogs. I’m thinking now how useful a high quality blog can be, for everybody within the “interested circles”, however different their respective viewpoints.
Circling back to my original (NOT the invention) point though, and teasing you again, a claim with a disclaimer in it is, to my mind, an example of a “not the invention” statement. Making statements in a patent application (whether in the description or in the claim) as to what is “not” the invention is, to my mind, rarely a good idea. When conforming my descriptions, for example, I try my best to avoid doing it.
Dear Max Drei,
I do agree with you that our different focus is explained by the difference in our respective career paths.
You see a case through the eyes of the drafter of an application and later of a user of the patent or an opponent to it. I see a case more through the eyes of a (former) member of a granting authority with some experience in the matter.
I certainly do not study cases to assess the “quality” of the decision-making and reasoning. Quality has always been a concern for me, but it would be presumptuous if I saw my role in deciding what a quality decision is and what is not.
I merely find some decisions more convincing than others. No more but no less. It remains the opinion of an individual which is not there to praise the good or to give reprimands.
I look at a lot of decisions and I had a closer look at the decision as it was about the deletion of a disclaimer/proviso. Here the deletion was allowed and this caught my attention. It is after having had many thoughts about the case, that a found a problematic side to the decision.
Not being a representative, I feel somehow freer than other bloggers as I will never have to appear in front of a board. This is why I allow myself to make comments. In any case I always try to clearly distinguish the ins and outs of the case from the comments. Some might not share my view and this is quite normal.
I will always try to remain as factual as possible even in the comments. I do however hope that by selecting a case it is possible to draw the attention of professionals to decisions which might have an influence, be it positive or negative, on their practice.
It is a rare occurrence to find a claim which at filing contains a disclaimer/proviso. I consider those disclaimers as “disclosed” disclaimers. In principle, they are not problematic like “undisclosed” disclaimers (G 1/03) or disclaimers disclosing “part of the invention” (G 2/10). Removing a disclaimer of whatever kind after grant is always problematic, be it under Art 123(2) but more under Art 123(3). In the present case, there was a god reason why there was a disclaimer/proviso in the independent claim as filed.
When it comes to the adaptation of the description, it is not required to say what is not part of the invention, but what does not fall under the claims. I see a difference between the two statements.
Daniel thanks for your final paragraph. You put your finger on a point which I think is somewhat problematic, namely what does it mean, to “fall under” a claim?
In particular, does an infringement by equivalent (an illegitimate taking of the protected invention) “fall under” the scope of protection given by the claim to the owner of the patent?
I’m guessing that your answer would be “no”.
Dear Max Drei,
You might be surprised by my reply, but in all honesty, I do not know. I would certainly answer with a simple “No”.
I do not know, for the simple reason that it is not within the competence of the EPO to decide upon equivalents.
It is for a national judge to decide.
An infringement by equivalent might indeed represent an illegitimate taking of the protected invention.
It could perfectly fall under the wording of the claims in the light of the function disclosed to the features of the claim.
Take as example the famous “Improver/Epilady” case: I think that replacing the spring by a thin rubber roll with slits represents an infringement by equivalence. This was the conclusion in most jurisdictions, but not in the UK. I honestly did not understand the UK decision.
In the application as filed, the only example given was a spring. Even if the applicant had himself thought of the rubber roll with slits, he could not have added it in the description or in the claims under Art 123(2). But he was perfectly entitled to explain to the national judge that the rubber roll with slits was an equivalent to the spring.
The famous “pemetrexed” decision of the UKSC represents an effort to get over the “Improver” decision. in my opinion, the UKSC should have chosen a better case to get over “Improver”. I maintain that the whole behaviour of the applicant/proprietor during prosecution, did not warrant the grant of infringement by equivalence.
As far as Art 123(2) is concerned, and with due respect, Lord Neuberger and Sir Robin Jacob did also not cover themselves in glory. But this is a different story.
There might have been equivalents to be envisaged, but the applicant never made an effort to show this and the claim could not be granted for pemetrexed in general, but only for pemetrexed disodium as it was the only example given.
If a claim is supported by a plurality of specific examples, it can be drafted in a more general way. But examples which cannot prima facie be considered as examples or equivalents cannot be said to fall under the claim. For the same token, equivalents not disclosed in the originally filed documents cannot be added afterwards in the specification.
But, Daniel, when all’s said and done, when the topic of “equivalents” has been exhaustively discussed, I come back to your statement that:
“When it comes to the adaptation of the description, it is not required to say what is not part of the invention, but (it IS required to say) what does NOT FALL UNDER the claims.”
It still gives me the collywobbles, being required by the ED, as a condition of allowance, to state explicitly in my description which parts of it do not “fall under” the claims. But I live in hope of reaching a sensible outcome with any given ED, a pragmatic conforming of the description, that reconciles fair protection for the inventor with “reasonable” (not necessarily perfect) legal clarity for the public.
Dear Max Drei,
I would be the last not to accept that the conforming of the description reconciles fair protection for the inventor with “reasonable” (not necessarily perfect) legal clarity for the public. It has to be discussed on a case by case basis, and the legal certainty, not merely clarity, for the public has to be given.
I would in any case consider that in view of the recent T 2968/19, see my recent post, which gives a good overview in matter of application of Art 69 in procedures before the EPO, that the latter cannot be invoked to have a half-hearted adaptation of the description, for instance talking about possible equivalents which have neither be disclosed nor claimed as falling under the claims.
I generally agree with M. Thomas and MaxDrei’s views. It seems the applicant would have saved trouble by using a positive feature rather than a disclaimer. The description offers ample support for that. I will refrain from any more specific comments since the case is remitted to the OD.
I take from the decision that it dismissed the opponents’ argument based on Art 123(2) as the argument relied on a confusion with the test of Art 123(3). No surprise but this is welcome. From a practitioner’s viewpoint, it is important to keep in mind that it is not inadmissible to broaden the claims during examination, as long as there is support in the description.
Regarding M. Thomas’ comments on the UK Pemetrexed decision, I note that the conclusion of the UK court was not isolated, it was shared by a large number of European courts, including the French Tribunal judiciaire. It is of note that the French court kept away from the doctrine of equivalents, it relied on the French traditional assessment based on whether the essential features of the claim are infringed.
As to MaxDrei’s question regarding equivalents ie whether an equivalent falls under a claim, my (unsurprising answer) is that it depends on the meaning of « the scope of the claims ». My approach is to refer the scope to the (literal) wording of the claim, and to distinguish this definition from the « extent of protection » referred to in art 69, which is the same as the « scope of the claims » without the application of equivalents but can be broader when the defendant’s solution is assessed as equivalent by a court. It seems to me preferable to refer the « scope of the claims » to the literal wording so that the meaning remains the same pre-grant and post-grant, even though the rules of interpretation are different.
This is also advisable to dissuade from any attempt to « inject » the doctrine of equivalents into the assessment of validity during examination or opposition, as this would create considerable confusion as to the interpretation of claims. The case law of the BOAs clearly precludes such attempts anyway, as clear from an array of recent decisions posted by M. Thomas (I take this opportunity to say I regret my misunderstanding in my comment on the French Blog européen des brevets as to what he calls the « second line » of decisions).
Dear Mr Hagel,
I can agree with you that it is important to keep in mind that it is not inadmissible to broaden the claims during examination, as long as there is support in the description. Under those conditions, there is nothing against a broader claim if the actual contribution to the art is more than what was claimed at filing.
I am fully aware that the conclusion of the UK court in the pemetrexed case was not isolated, as it was shared by a large number of European courts. This does not necessarily mean that it was a good decision. One could also think of a kind of peer pressure as other courts did not want to miss the train as it was the case for the UK courts with the “Improver/Epilady” case.
I would just like to remind that in first instance, the District Court of The Hague has refused to accept a potential infringement by equivalents in view of the behaviour of the applicant/proprietor during the whole procedure leading to grant.
The pemetrexed case was exemplary in this respect and the position of the District Court was, in my opinion the right one. The applicant would have had various possibilities to show that disodium could be generalised. One possibility would have to file experimental data under STIN so as to demonstrate that the teaching was applicable to other salts. Another possibility would have been to go for the limited parent with pemetrexed disodium and file a divisional application for a broader claim with just pemetrexed. It is manifest that applicant/proprietor did not have the corresponding data at hand. Otherwise it would have filed it.
It is actually thanks to a slapdash adaptation of the description that the proprietor was later enabled to get more out of its patent than its actual contribution to the art which was limited to pemetrexed disodium. The proprietor woke up when Actavis filed for a declaration of non-infringement.
I agree that the notion of equivalents should not play a role during the procedure leading to grant as this is a matter for the national judge to decide in post grant procedures. During prosecution it is the ordinary meaning of the wording of the claims, in its broadest possible interpretation, which should play a role and not any other hypothetical considerations.
Anyone can make mistakes and I appreciate that you have realised that our views are not at all divergent in substance when it comes to the “second line of case law”. I highly value your honesty. We might not always agree, but this is part of life’s rich tapestry.
I like this discussion. But I wonder again if those who are in the chem/bio area have a viewpoint and experience different from those (including me) in the mechanical engineering area, where every drafter uses their own terminology, and where it is hard to answer with a binary “Yes or No” whether any particular design does or does not exhibit feature “X” in a patent claim.
The problem arises, for example, when an Examiner wants a 2-part claim and it is not clear whether D1 discloses feature “X”. This because D1 never uses the word “X”. Instead, it has its own different terminology. It is not that the claim is unclear, and offends Art 84. Rather, it is unclear whether D1 discloses X. To insist on a 2-part claim is unreasonable, and unfair to Applicant.
What is the solution? I say, persuade the ED to allow the application to go to grant with a 1-part claim together with an adequate and accurate summary in the description of the content of the D1 reference.
As to “conforming” the description to the claims, there is a similar issue, whether any given drawing figure depicts an embodiment of the claimed subject matter, or not. Drawings are schematic. In other words, each single drawing figure depicts a multitude of different “embodiments”. What appears to be (for example) a straight line might in reality be far from mathematically straight. Does that single drawing figure depict an embodiment of the claimed subject matter then? Often it is hard to say.
Of course, Applicant alone is responsible for the claims AND the content of the description so an ED can fairly require an Applicant to clarify whether or not the design of any given single drawing figure includes all the technical features of the claim. If Applicant can’t do that, it might suggest that the clarity of their claim is somewhat lacking.
But I still think it unreasonable to demand (under Art 84, EPC) that Applicant states explicitly in the description which drawing figures are “the invention” and which are “not the invention”. Perhaps that which is in Fig 3 is “equivalent” to the X of the claim.
Dear MaxDrei
I share your concerns about two-part claims. They may entail awkward wording when you have to specify in the 2nd part a feature of the 1st part, which is a decent argument to avoid the two-part format.
Another problem arises in a case like yours, if you are forced to include in the 1st part a feature which does not exactly match the feature as disclosed in a prior art document. I have seen sometimes that in order to make a feature of the 1st part consistent with the claim as a whole, it would be needed to generalise a specific feature disclosed in a prior art document, e.g. by a functional definition, which involves a prior art admission broader than what the prior art document really discloses.
The two-part format also may give the ED the opportunity to move ahead the characterised word at the 71(3) stage, I have seen this recently in a case I had to audit.
As to the addition of a discussion of the content of a prior art document in the description, I prefer to keep away from that. The file is available on-line, everybody have easy access to the arguments you submit.
I personally prefer the one-part format as in the US, it makes for a well structured recitation of the features – with a caveat, the « preamble » in US claims is not considered to recite limiting features, so the drafting requires some rewording if the US application claims priority to a European national application or derives from a PCT application.
In the 1980’s and 1990’s, there was a judicial doctrine in the French courts which considered the claimed invention as only defined in the 2nd part so that no argument could be based either for validity or infringement assessment on features of the 1st part, contrary to the EPO. Fortunately this is bygone but it probably explains my reluctance vis-à-vis two-part claims.
Dear MaxDrei
I share your concerns about two-part claims. They may entail awkward wording when you have to specify in the 2nd part a feature of the 1st part, which is a decent argument to avoid the two-part format.
Another problem arises in a case like yours, if you are forced to include in the 1st part a feature which does not exactly match the feature as disclosed in a prior art document. I have seen sometimes that in order to make a feature of the 1st part consistent with the claim as a whole, it would be needed to generalise a specific feature disclosed in a prior art document, e.g. by a functional definition, which involves a prior art admission broader than what the prior art document really discloses.
The two-part format also may give the ED the opportunity to move ahead the characterised word at the 71(3) stage, I have seen this recently in a case I had to audit.
As to the addition of a discussion of the content of a prior art document in the description, I prefer to keep away from that. The file is available on-line, everybody have easy access to the arguments you submit.
I personally prefer the one-part format as in the US, it makes for a well structured recitation of the features – with a caveat, the « preamble » in US claims is not considered to recite limiting features, so the drafting requires some rewording if the US application claims priority to a European national application or derives from a PCT application.
In the 1980’s and 1990’s, there was a judicial doctrine in the French courts which considered the claimed invention as only defined in the 2nd part so that no argument could be based either for validity or infringement assessment on features of the 1st part, contrary to the EPO. Fortunately this is bygone but it probably explains my reluctance vis-à-vis two-part claims.
Dear MaxDrei
I share your concerns about two-part claims. They may entail awkward wording when you have to specify in the 2nd part a feature of the 1st part, which is a decent argument to avoid the two-part format.
Another problem arises in a case like yours, if you are forced to include in the 1st part a feature which does not exactly match the feature as disclosed in a prior art document. I have seen sometimes that in order to make a feature of the 1st part consistent with the claim as a whole, it would be needed to generalise a specific feature disclosed in a prior art document, e.g. by a functional definition, which involves a prior art admission broader than what the prior art document really discloses.
The two-part format also may give the ED the opportunity to move ahead the characterised word at the 71(3) stage, I have seen this recently in a case I had to audit.
As to the addition of a discussion of the content of a prior art document in the description, I prefer to keep away from that. The file is available on-line, everybody have easy access to the arguments you submit.
I personally prefer the one-part format as in the US, it makes for a well structured recitation of the features – with a caveat, the « preamble » in US claims is not considered to recite limiting features, so the drafting requires some rewording if the US application claims priority to a European national application or derives from a PCT application.
In the 1980’s and 1990’s, there was a judicial doctrine in the French courts which considered the claimed invention as only defined in the 2nd part so that no argument could be based either for validity or infringement assessment on features of the 1st part, contrary to the EPO. Fortunately this is bygone but it probably explains my reluctance vis-à-vis two-part claims.
Dear Mr Hagel,
As far as a two-part vs. one-part form of claims are concerned, see my reply to Max Drei.
It was well before the 1980’s and 1990’s that the form of interpretation of claims you mention was “en vogue”. I even remember reading some articles of doctrine in which the subject-matter of dependent claims could be infringed independently of the subject-matter of the independent claim. This was an indirect consequence of the new patent law of 1968 which introduced the notion of claims in the French patent law.
If I am not completely wrong this idea was coming from a well-known French litigation lawyer who has been writing lots of books which were considered for a long time as the “bible” for French patents. He is also meant to have said that the proprietor discovers its patent on the day of the infringement…. Those times have gone, and nobody regrets them.
Dear Max Drei,
The two-part form of a claim is the preferred form according the EPC, cf. R 43(1,b), but it does not mean that a one-part form is not allowable. The difference is then to be brought to light with the acknowledgment of the prior art. With a two-part form claim the acknowledgment can be fairly simple: the preamble of claim 1 is known from document XYZ, cf. Guidelines F-IV, 2.2
In case of a one-part form of the claim, the acknowledgement has to be more elaborate and the features known from document XYZ must be clearly stated, cf. Guidelines F-IV, 2.3.2, last sentence.
My experience is that in chemistry/biotech two-part form claims are rarely used, and in other technical areas, two-part form claims are frequent. US applicants do not like two-part form claims, Jepson claims in their jargon.
Provided the known prior art is properly acknowledged, there is nothing against a one-part form claim. The problem I have experienced, is that some representatives want a one-part form, but at the same time refuse to correctly acknowledge what is known from document XYZ. This is however a no-go.
What is requested under Art 84, last part, is not what is or is not “the invention”, but what falls or not under the claims. We are here back at the earlier discussion. I will thus not repeat myself.
I would only like to add, that as long as Art 84 is as it is, support of the claims by the description has to be given, and the description has to be adapted to the claim whether you like it or not. Stating “which is in Fig 3 is “equivalent” to the X of the claim” is as well a no-go, as it is not for the EPO to enter a discussion on what could be an “equivalent” or not.
In the last paragraph of your comment you vent once again your fixation on the description adaptation issue (which was not the issue at stake in the decision). I find striking indeed your vehement support for the adaptation requirement. It is fully in tune in particular with the EPO heavy-handed practice of entering description amendments at the 71(3) stage.
Which on the other hand sits awkwardly with the EPO’s mantra that the EPO has no responsibility whatsoever in the content of a granted patent, which is supposed to be « ultimately » the applicant’s sole responsibility.
@ Mr Hagel,
I do not like to see words like “fixation” or “vehement” in a discussion on patent matters.
It actually reveals more about some traits of the writer than of the addressee.
I would like to reassure you as I have no fixation whatsoever about the adaptation of the description and I have no vehement support for EPO’s position. It happens simply that the position of the EPO is the one I consider correct. I have practised it during all my active time at the EPO. I am loyal to the EPO as it has been my employer for many years, but this does not mean that I follow blindly what is decided there. I retain my free will now, and as I used to do during my active time.
The drafting of an application/patent is indeed the applicant’s/proprietor’s sole responsibility, but this does not mean than the applicant/proprietor is free to do what it wants or likes. There are rules of law to be followed and it is even the duty of the EPO that all applicants/proprietors are put on a par.
One way of doing so is to be sure that the description is adapted to the claims. This means simply that the description cannot contain statements which are at odds with what is in the claim or which allow to see in the claims more than the actual contribution of the applicant/proprietor to the art.
Requiring to amend the description so that a feature comprised in an independent claim cannot be said to be optional in the former, is far from heavy handed. It is very reasonable. The same applies when the EPO requires amendments to the description so that originally disclosed features which are not any longer representing the contribution to the art are identified.
Oh dear, oh dear, oh dear. I try to write with clarity but have, it seems, failed yet again. Achieving clarity is oh so hard, even when the reader has a mind not only willing but really wanting to understand.
My last sentence recited:
“Perhaps that which is in Fig 3 is “equivalent” to the X of the claim.”
I should have explained what I meant. I had in mind that a court considering an infringement issue might recognise the Fig 3 design as somehow “equivalent” to designs in other drawing figures that show, literally, all the features of the claim. Daniel, I was not at all suggesting that I engage in debate with the ED whether it is “equivalent” and not suggesting inserting into the description any statement that Fig 3 is “equivalent”. As you say, that discussion is nothing for an ED to get involved in.
Heavens, we don’t in Europe want what they have in the USA under their § 112(6) that “means + function” in the claim is to be construed (by the Examiner too) as the illustrated embodiment plus embodiments that are “equivalent” to the illustrated embodiment.
Nevertheless, also in Europe, designs similar but not identical to the illustrated embodiment might or might not be an infringement, falling under the scope of protection of the claim even when they don’t embody the literal wording of the claim.
Are we now any closer to clarity, I wonder.
Dear Max Drei,
Contrary to the US, in European procedure, claims to “means + function” are not limited to the actual embodiment disclosed. See Guidelines F-IV, 6.5. In principle one example is enough as long as the claim does not merely boils down to claim a result to be achieved. In my experience, it is always better to have a plurality of examples in order to properly support a claim of the type “means + function” or a broad claim covering various embodiments.
This also avoids an objection under Art 123(2) if only one example is given. Generalising one single example is theoretically possible, but I did not find much cases in which this applied. Just think of a broad claim for “pemetrexed” in general, whereas the applicant only ever disclosed “pemetrexed disodium”. If in such a case the applicant shows with post-published evidence that with other salts the same result can be achieved, then a broader claim might be justified. In this case, the applicant wanted a broader claim without any justification.
Having disclosed a plurality of embodiments, the applicant might not claim all the various embodiments as such in dependent claims. It is however manifest that support for the broad claim is given in the disclosure. In this situation, the examiner cannot require deletion of the embodiment which has not been claimed as such in a dependent claim. All the embodiments can be considered “equivalent” in a meaning acceptable to the person skilled in the art and they thus “fall under the claims”. .
That a court considering an infringement issue might recognise the Fig 3 design as somehow “equivalent” to designs in other drawing figures that show, literally, all the features of the claim, is its good right. It does not mean that it should be a subject of concern for an examiner.
I am sorry for you, but the notion of “somehow equivalent” is unclear as unclear can be. I understand that an examiner does not want to get involved in such a distinction. But letting suppose that Fig 3 might possibly fall under the claims is simply asking too much. The examiner does not have time to come to such very specific considerations.
If it is as clear as you make out, it the duty of the representative to bring the proof before grant that it is indeed equivalent, not just “somehow equivalent”. In case of a later litigation, it will be the role of the representative for the proprietor to show that it could possibly be so.
You still think it unreasonable to demand (under Art 84, EPC) that Applicant states explicitly in the description which drawing figures are “the invention” and which are “not the invention”. I am of a contrary opinion. I cannot find the notion of “somehow equivalent” in the EPC and in the numerous decisions of the boards. At least my position should be clear.
Sorry for the repetition