What is the ‘plausibility’ concept good for?

Plausibility is a big deal nowadays in almost every high stake patent case:

Does the application as filed in view of the common general knowledge at the filing date make it plausible that the invention really works?

This question addresses the sufficiency of disclosure requirement, Art. 83 EPC, when the alleged effect is recited in the claim (i.e. in case of a medical use claim).

Or, when the alleged effect is not recited in the claim, in assessment of the non-obviousness requirement; Art. 56 EPC:

Is it plausible that (essentially) all embodiments covered by the claim really solve the problem the invention allegedly solves?

Frankly, I am constantly struggling with all the hustle and bustle about ‘plausibility’.

What is it all good for?

‘Plausibility’ is nowhere mentioned in the law, and I question that the ‘plausibility’ criterion is sth that is really needed to come to ‘right’ decisions. Thus, I have eagerly awaited the VESPA autumn conference of 31 October 2019:

Plausibilität — Ein neuer Nichtigkeitsgrund in Europa?

Expectedly, it was a phantastic event. Lara Dorigo (Lenz & Staehlin), Prisca von Ballmoos (Merck Group) and Els Cielen (EPO) shed light on the issue from various perspectives. But still, I am struggling with the over-emphasis on ‘plausibility’ in recent times.

Here is why:

Sufficiency of disclosure

Sufficiency of disclosure is all about the basic trade-off in patent law: In accordance with Art. 83 EPC, the invention has to be disclosed in the application as filed

[…] in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art […]

for that it really provides a contribution to the art in a way that enables the skilled person to carry out the invention later, when the patent has lapsed.

Lara rightly pointed out that ‘plausibility’ is frequently associated with the necessity of including data in the specification:

Source: quotes.deming.org/3734

I have at least two issues with that.

First, the EPC in no way requires data or experimental evidence, and I am convinced that one must not introduce such a requirement through the backdoor. An ‘armchair invention’ is perfectly fine. If an inventor correctly anticipates that his invention will work in practice, and the skilled person is enabled to carry out the invention based on the information given in the application as filed and in further view of the common general knowledge, I fail to see any issue under Art. 83 EPC.

And, second, there is just no basis in the law to only trust in god but not to trust an applicant. If there is a firm statement in the application as filed concerning a certain effect being achieved, I cannot see how that could have been held ‘not plausible’ per se. Unless, of course, there are indications to the contrary. But if that is not the case, then a mere statement w/o any data or experiments should suffice, in my opinion.

Play by the rules

Problems typically arise with (overly) broad claims and/or very vague specifications. No applicant / patentee should be surprised to get in trouble in such cases. But ‘plausibility’ is not the real issue, in my perception. I feel that the problem in such cases is rather that the invention just cannot be worked by the skilled person without undue burden. The ‘undue burden’ criterion is established in the case law and EPO practice since ages, and it would well be sufficient to sort out those cases that only confront the skilled person with some indications of how to set up a research program in the hope to finally make the invention. A prime example in this respect is T 609/02 — Salk Institute / AP-1 complex (HTML | PDF), specifically referring to the ‘undue burden’ criterion in ¶ 12. Consequently, the Board held that the alleged invention was insufficiently disclosed.

No need to fiddle around with ‘plausibility’ in such cases.

Obviousness

T 939/92 — AgrEvo / Triazoles (HTML | PDF) is mostly referred to as the origin of all ‘plausibility’ discussions. Interestingly, though, T 939/92 is silent about ‘plausibility’. It rather uses the term ‘credibly’. In a nutshell, T 939/92 had held that an ambitious technical problem (herbicidal activity) could only be taken into account if it could be accepted as having been solved, i.e. if it would be credible that substantially all claimed compounds possessed this activity — which was clearly not the case here.

Now, let’s have a look at the most controversially discussed case T 488/16 — BMS / Dasatinib I (HTML | PDF). The alleged effect was not recited in the claim; the single claim at stake was a straight forward compound claim:

The only claim at stake in T 488/16

Sufficiency of disclosure was not an issue; the alleged effect is not recited in the claim. ‘Plausibility’ was thus dealt with by the Board in the assessment of inventive step. The Board held in ¶ 4.9:

In the board’s judgement, it is not acceptable to draw up a generic formula, which covers millions of compounds, vaguely indicate an “activity” against PTKs and leave it to the imagination of the skilled reader or to future investigations to establish which compound inhibits which kinase and is therefore suitable to treat the respective diseases associated therewith. In this context, the board notes that it has been acknowledged by the appellant that the skilled person would not expect that each compound would be active against all kinases.

It is pretty evident from the above that a second medical use claim, i.e. a product claim with the alleged effect being recited in the claim, would have been doomed for lack of sufficiency of disclosure. No discussion of ‘plausiblity’ would have been necessary at all; it could have been a straight forward revocation based on the ‘undue burden’ criterion, essentially in line with T 609/02 — Salk Institute / AP-1 complex (HTML | PDF), ¶ 12.

But since a claim on the compound per se was at stake, the Board had to deal with it in the assessment of inventive step; Art. 56 EPC. But that claim is even broader than any medical use claim. Could the result be any different? That would have been somewhat strange, wouldn’t it?

This is where T 1329/04 — Johns Hopkins / Factor-9 (HTML | PDF) comes into play (hn):

The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve.

Against this standard, the patentee in T 488/16 failed and the patent was revoked. The Board was not convinced that the technical problem had already been solved at the filing date, in particular by dasatinib. Apparently, two post-published documents were the first disclosure showing that for dasatinib the purported technical problem has actually been solved. In accordance with established case law, these documents were therefore not taken into consideration in the assessment of inventive step. Thus, the problem to be solved had to be defined in a less ambitious way, namely as the provision of a further chemical compound — a non-starter at the EPO in any event.

I fully agree with the result, but I am not convinced that one really needs the concept of ‘plausibility’ for that. I feel the Board could just have held that the specification re dasatinib was so vague and unspecific that it appears that the invention (in terms of an actual ‘contribution to the art’) had not yet been made on the filing date.

Lara pointed out that the concept of ‘plausibility’ has not yet appeared in Swiss jurisprudence. Frankly, I feel it is not being missed.

Tobias Bremi mentioned in the final discussions that the concept of ‘plausibility’ is sth that judges in various jurisdictions are struggling with. Lack of ‘plausibility’ may have been useful to sort out some cases, but any broader application might well have the (unwanted) consequence that ‘armchair’ inventions were prohibited.

Reported by Martin WILMING

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Sign-up now for the next epi Roundtable on August 28, 2019

German version below.

All European patent attorneys are members of the Institute of Professional Representatives before the European Patent Office (epi). epi represents the interests of its members in relation to the EPO. In this respect, the European Patent Practice Committee (EPPC) with its various technology groups and working groups is an important body that deals with issues that arise in daily practice.

A large number of epi committees is staffed with Swiss members. The lively exchange between the members of the Association of Swiss and European patent attorneys in private practice (VESPA) and the delegates is essential. Therefore, VESPA has launches the ‘epi Roundtable’, to establish a platform for VESPA members to get first-hand information about current projects and changes at the EPO. On the other hand, it also is a chance to point the delegates to issues that should be dealt with in the EPPC or other epi committees, and to discuss questions they might have relating to epi and the EPO.

Date: August 28, 2019
Time: 5:15 – 7:15 pm
Apéro riche therafter
Place: Au Premier
Zurich Main Station (Google maps)
Costs: free of charge for VESPA members
Sign up: Online form
PDF form

Alle europäisch zugelassenen Patentanwälte sind Mitglied des Instituts der beim Europäischen Patentamt zugelassenen Vertreter (epi). Dieser Verband nimmt die Interessen seiner Mitglieder in der Zusammenarbeit mit dem EPA wahr. Ein für Fragen der täglichen Praxis wichtiges Gremium ist das European Patent Practice Committee (EPPC) mit seinen diversen Technologie- und Arbeitsgruppen.

Die Schweiz stellt Delegierte in sehr vielen epi-Ausschüssen. Wesentlich ist der lebendige Austausch zwischen den Mitgliedern des Verbands der freiberuflichen Europäischen und Schweizer Patentanwälte (VESPA) und den Delegierten. Dafür hat der VESPA den ‘epi Roundtable’ ins Leben gerufen. Er soll eine Plattform sein, über welche sich die VESPA-Mitglieder einerseits aus erster Hand über aktuelle Projekte und Änderungen beim EPA informieren können. Andererseits bietet er auch die Möglichkeit, den Delegierten Anliegen zur Einspeisung und Vertretung im EPPC oder in anderen epi-Gremien zu unterbreiten und Fragen zu aktuellen Themen im Zusammenhang mit dem epi oder dem EPA zu stellen.

Datum: 28. August 2019
Zeit: 17:15 – 19:15 Uhr
anschliessend Apéro riche
Ort: Au Premier
Zürich Hauptbahnhof (Google maps)
Kosten: gratis für VESPA Mitglieder
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Tackling questions of law and questions of fact, again …

The annual INGRES event of 2 July 2019 (‘Praxis des Immaterialgüterrechts’) has been very interesting and enjoyable, as always. I am not intending to anticipate the full report about the event that will be prepared by Estelle SEILER for publication in sic!, but there was one specific discussion following-up on Susanna RUDER‘s presentation that I am still digesting.

Susanna had opened the discussion with the following (somewhat provocative) questions:

May the court correct a claim construction mutually agreed upon by the parties? If so, under which conditions?

May the court correct divergent claim constructions of the parties if they both are wrong? If so, under which conditions?

In first place, this gave rise to some discussion about the difference between questions of fact on the one hand (governed by the principle of party presentation [Verhandlungsmaxime]), and questions of law on the other hand (which the court may freely assess).

Michael RITSCHER teased the Supreme Court judges in the room with the remark that aspects are typically considered questions of law when the Supreme Court wants to decide on them. Else, they are (only) questions of fact and remain untouched by the Supreme Court.

In reply, Kathrin KLETT clarified that a question of fact is something about which evidence can be gathered. A legal issue, on the other hand, is something that can be discussed.

Next, on an abstract level of the discussion, there was some agreement that claim construction is a question of law. And I fully concur therewith — in general. But life is complicated. In an attempt to nail the abstract discussion down with an example, I mentioned the following example of a nullity case (adapted from some thoughts on this Blog here):

A claim feature of the attacked patent is “round” (rund);

The parties mutually agreed that “round” means “circular” (kreisrund).

The patent is only attacked for lack of inventive step / obviousness because the prior art on file only showed a polygon, but no circular shape (i.e. “round” as mutually agreed upon by the parties). Let us further assume that the attack for lack of inventive step is weak, for any reason whatsoever.

But: In a single, isolated example 97 on page 35 of the patent, the shape of a “polygon” is used. Neither party ever pointed to that example.

Now, just imagine the potential consequences if the court points to that example on page 35 and corrects the claim construction mutually agreed upon by the parties: The prior art on file would in fact be novelty destroying. I argued that this should not happen because it contravenes the principle of party presentation (Verhandlungsmaxime).

Interestingly, Mark SCHWEIZER jumped in and said that there are two separate issues involved: First, the court should indeed not pinpoint to the example on page 35. Second, he confirmed that in his view claim construction is a question of law which can and should be adressed by the court.

I did not manage to follow-up on this remark. Now, what does that mean when both issues are intermingled in a specific situation like the example above? In my perception, proper claim construction can only be done in light of the specification. But may the court only construe the claim in light of the specification to the extent pleaded?

Any thoughts, anyone? Or would someone please get this clarified in a case to be decided by the FPC? 😉

Reported by Martin WILMING

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The annual must-attend event on case-law of the FPC on March 28, 2019

vespa.swiss

Don’t miss VESPA‘s annual evening seminar about recent case law of the FPC on Thursday, March 28 in Zurich; see the program below.

Gain first-hand insight from Tobias BREMI (second ordinary judge at the FPC) in the Haus zum Rüden, Limmatquai 42, 8001 Zurich; see map.

The event is free of charge for VESPA members; the fee for non-members is CHF 90,–. An apéro riche afterwards is offered for CHF 60,–.

Space will be limited; please use the registration form below or save your spot online.

Reported by Martin WILMING

Header image by Roland zh (Own work) [CC BY-SA 3.0], via Wikimedia Commons.

PROGRAM 

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VESPA launches ‘epi Roundtable’ – sign-up now for August 28 to save your spot!

German version below.

All European patent attorneys are members of the Institute of Professional Representatives before the European Patent Office (epi). epi represents the interests of its members in relation to the EPO. In this respect, the European Patent Practice Committee (EPPC) with its various technology groups and working groups is an important body that deals with issues that arise in daily practice.

A large number of epi committees is staffed with Swiss members. The lively exchange between the members of the Association of Swiss and European patent attorneys in private practice (VESPA) and the delegates is essential. Therefore, VESPA launches the ‘epi Roundtable’, to establish a platform for VESPA members to get first-hand information about current projects and changes at the EPO. On the other hand, it also is a chance to point the delegates to issues that should be dealt with in the EPPC or other epi committees, and to discuss questions they might have relating to epi and the EPO.

Date: August 28, 2018
Time: 5:15 – 7:15 pm
Apéro riche therafter
Place: Au Premier
Zurich Main Station (Google maps)
Costs: free of charge for VESPA members
Sign up: Online form
PDF form

Alle europäisch zugelassenen Patentanwälte sind Mitglied des Instituts der beim Europäischen Patentamt zugelassenen Vertreter (epi). Dieser Verband nimmt die Interessen seiner Mitglieder in der Zusammenarbeit mit dem EPA wahr. Ein für Fragen der täglichen Praxis wichtiges Gremium ist das European Patent Practice Committee (EPPC) mit seinen diversen Technologie- und Arbeitsgruppen.

Die Schweiz stellt Delegierte in sehr vielen epi-Ausschüssen. Wesentlich ist der lebendige Austausch zwischen den Mitgliedern des Verbands der freiberuflichen Europäischen und Schweizer Patentanwälte (VESPA) und den Delegierten. Dafür ruft der VESPA den ‘epi Roundtable’ ins Leben. Er soll eine Plattform sein, über welche sich die VESPA-Mitglieder einerseits aus erster Hand über aktuelle Projekte und Änderungen beim EPA informieren können. Andererseits bietet er auch die Möglichkeit, den Delegierten Anliegen zur Einspeisung und Vertretung im EPPC oder in anderen epi-Gremien zu unterbreiten und Fragen zu aktuellen Themen im Zusammenhang mit dem epi oder dem EPA zu stellen.

Datum: 28. August 2018
Zeit: 17:15 – 19:15 Uhr
anschliessend Apéro riche
Ort: Au Premier
Zürich Hauptbahnhof (Google maps)
Kosten: gratis für VESPA Mitglieder
Anmeldung: Online Formular
PDF Formular

REGISTRATION FORM

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State of the art: Which art has to be considered?

An invention cannot be patented according to Art. 52(1) EPC if it

The fate of a patent application thus critically depends on the ‘state of the art’. Now, what is comprised in the ‘state of the art’? The EPO educates its customers in the Inventors’ handbook in plain and simple words:

A prehistoric cave painting can be prior art. A piece of technology that is centuries old can be prior art. A previously described idea that cannot possibly work can be prior art. Anything can be prior art.

Easy, isn’t it? Not so, the closer you look.

In legal terms, the ‘state of the art’ is defined in Art. 54(2) EPC which reads as follows in the three official languages of the EPC (emphasis added):

German English French
Den Stand der Technik bildet alles, was vor dem Anmeldetag […] der Öffentlichkeit […] zugänglich gemacht worden ist. The state of the art  shall be held to comprise everything made available to the public […] before the date of filing […]. L’état de la technique est constitué par tout ce qui est été rendu accessible au public avant la date de depot […].

There are at least two issues that have recently been looked at more closely in relation to the term ‘state of the art’ in Switzerland:

  1. How shall a pre-published, non-enabling disclosure be dealt with?

The Swiss Supreme Court recently held that even a non-enabling disclosure well belongs to the ‘state of the art’ (contrary to what the EPO typically does, i.e. to just ignore it; see Guidelines, G-IV, 2). But, in the Supreme Court’s view, such a piece of prior art cannot be assessed with the EPO’s problem-and-solution approach because the objective technical problem in such a case is just to find a working solution for what had been insufficiently disclosed previously, and there is an inherent motivation to search for that solution; see this Blog here.

  1. What actually is the ‘art’ referred to in ‘state of the art’?

At the INGRES annual meeting of July 5, 2018, Hannes Spillmann briefly discussed a clash between two Board of Appeal decisions at the EPO, i.e. T 0172/03 and T 2101/12. The latter explicitly disagrees in its headnote with the headnote of the earlier decision T 0172/03, in the fundamental question of what actually is meant with

state of the art.

Which ‘art’ does Art. 54(2) EPC refer to? Can something described previously be excluded right from the outset just because it is not related to classic ‘technology’? The headnotes of T 0172/03 suggest exactly that (emphasis added):

1.   The term state of the art’ in Article 54 EPC should, in compliance with the French and German text, be understood as ‘state of technology’, which in the context of the EPC does not include the state of the art in commerce and business methods. The term everything’ in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology.

2.   From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons).

Points 8 to 10 of T 0172/03 referred to in hn 2 leave no doubt that the gist really is to just exclude certain publications from any consideration as ‘state of the art’ whatsoever:

[T]he decision under appeal […] identifies the closest prior art as “the existing order placing mechanism” as if such a business scheme qualified as prior art as any other piece of technical information. […]

It can hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art to take notice of everything, in all fields of human culture and regardless of its informational character. A consistent construction of the patentability provisions requires the term “everything” in Article 54(2) to be understood as concerning such kind of information which is relevant to some field of technology.

Catch-22

I am having difficulties to read an element (“art” / “Technik” / “technique”) of the phrase that is to be defined (“prior art” / “Stand der Technik” / “l’état de la technique”) in Art. 54(2) EPC into the definition itself. This is a Catch-22, in my perception; see also T 2101/12, ¶6.6 in this respect.

Luckily, T 2101/12 sets it right again; the hn reads as follows:

Article 54(2) EPC does not exclude non-technical disclosures from the prior art, in disagreement with Catchword 2 of T 172/03.

I fully concur with this. Whatever has been made available to the public is to be considered ‘state of the art’ in the sense of Art. 54(2) EPC, irrespective of whether it relates to a field of ‘technology’ or not.

It remains to be seen how the case law of the Boards will develop. Note that T 2101/12 only explicitly disagrees with hn 2 of T 0172/03. However, a quotation from hn 1 of T 0172/03 even made it into the EPO Guidelines for Examination (G-VII, 2):

The ‘state of the art’ for the purposes of considering inventive step is as defined in Art. 54(2) (see G‑IV, 1). It is to be understood as concerning such kind of information as is relevant to some field of technology (see T 172/03).

It is not that I have an issue with this quote. Even a non-technological ‘state of the art’ may well be relevant to some field of technology, e.g. when a mere business method as ‘state of the art’ is automated, and it is patentable when this is achieved in a new and non-obvious manner. This is how T 2101/12 approached it. But this understanding clearly is not what T 0172/03 advocated for. Incomplete reference to only part of hn 1 of T 0172/03 is misleading, at best. In my opinion, reference to T 0172/03 should be deleted from the Guidelines completely.

The following is just to name a few examples of state of the ‘art’ not taken from what one would typically consider a ‘field of technology’. Have fun.

1.   SpongeBob

I once had a hard time to properly communicate to a client that a U.S. examiner held SpongeBob to anticipate his invention:

The cartoon SpongeBog SquarePants Episode 1 ‘Help Wanted’ teaches a shearing tool which is mounted coaxially, rotatable, wherein the shearing tool comprises at least a bent arm wherein the tool has at least one opening.

The examiner referred to the following screenshot:

SpongeBob SquarePants, Episode 1, ‘Help Wanted’; © Stephen Hillenburg et al. (Nickelodeon)

See the tool in motion here, if this meets your sense of humor; the screenshot was taken at approx. 1:04 min.

I do not think the examiner did a bad job. In fact, the MPEP 2125 (‘Drawings as Prior Art’) fully supports this approach:

Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. […] The origin of the drawing is immaterial. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.

Luckily, the SpongeBob reference was overcome and the application proceeded to grant; US 8,622,507 B1, see the SpongeBob reference on the title page (‘Other Publications’).

2.   The Beano

An entry signal system for pets is described and claimed in GB 2 117 179 A (filed March 18, 1983 and claiming priority of March 18, 1982). The applicant had been faced with the comic strip ‘The Beano’ (No. 2015 of February 28, 1981) as ‘state of the art’:

Reference to ‘The Beano, No. 2015, page 1’ is indicated on the title page of GB 2 117 179 A, under the heading ‘Documents cited’.

3.   James Bond

On his fourth mission ‘Thunderball‘, James Bond aimed to recover two stolen warheads. They had been taken by the evil SPECTRE organization. The world was held hostage and Bond headed to Nassau where he was forced into a thrilling confrontation with SPECTRE agent Emilio Largo, on board and around his boat, the Disco Volante. Bond used a special breathing apparatus:

Sean Connery as James Bond in ‘Thunderball’ (1965; Eon Productions, United Artists); Screenshot at approx. 65 min.

This scene was cited as ‘state of the art’ in GB 2 273 053 A; see ‘Documents cited’ on the title page. Indeed, figure 1 of GB’053 shows a stylized special agent with a somewhat similar breathing apparatus:

GB 2 273 053 A, Fig. 1

4.   The Holy Bible

If I had prosecuted the following claim (US 10/212,636, claim 2 as filed), I surely had not expected to become best buddies with the examiner:

US 10/212,636; claim 2 as filed

But being faced with the Holy Bible as ‘state of the art’ might make one’s blood run cold in one’s veins! The rejection read as follows:

[The claim] is rejected under 35 U.S.C. 102(b) as being anticipated by the Holy Bible (Levite, Moses, et al.)

[…] In Genesis, Chapter 41, we are told that Pharaoh appointed Joseph to be his representative and instructed him to enter into contracts to purchase grain. These contracts included an offer with an activity (supply grain) and a benefit (get paid for the grain). Payment was made upon delivery of the grain. The story of Joseph is about 4,500 years old. Neither Joseph nor Pharaoh were considered innovators – the principal / agent relationship is of immemorial antiquity. It no doubt predates civilization itself. The purpose of rejecting this claim using the Bible as reference is to illustrate how ancient the claimed subject matter is. Many of Applicant’s claims could also be rejected using the same reference.

The applicant took up the fight, and his response really is a good read:

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On a sidenote, I have once been told (but did not manage to independently verify) that a patent application pertaining to a voice-controlled automated lighting system had been challenged at the EPO with reference to the Holy Bible, too. More particularly, with reference to Genesis, Chapter 1:

And God said, ‘Let there be light’, and there was light.

5.   The Law of Agency

Misfortunes never come singly: The claim recited above in (4) had also been rejected in view of the law of agency. The apparently highly motivated examiner held:

Basic agency law teaches that a principal may conduct any business through an agent (representative) that he could conduct in person. This includes entering into contracts. To enter into a contract, one determines a recipient (the other party) and an offer, which includes an activity (e.g., paint my house) and a benefit (consideration). If using an agent, the principal transmits instructions to the agent to provide the offer to the recipient. In any contract, there is the step of determining whether the recipient has performed the activity and providing the benefit to the recipient if the recipient has performed the activity.

6.   Donald Duck

In a 1949 Walt Disney comic, a sunken ship had been raised by Donald Duck and his nephews. They pushed ping pong balls into it to lift it up:

Donald Duck and his nephews in ‘The Sunken Yacht’ (1949); © Carl Banks (Walt Disney)

A similar technology has actually been used later, for the first time in 1964 when Karl Kroyer lifted a sunken ship with 6’000 sheep right in front of Kuwait’s major fresh water intake in the harbor.

Danish newspaper scan (taken from here; primary source unknown)
Prior art database?

Rumor has it that Kroyer’s patent application was rejected in view of the comic strip (as reported e.g. in the newspaper scan above), allegedly by the Dutch patent office — but I could not find any proof for this. Patents have been granted elsewhere (e.g. in Germany and the U.S.).

Nevertheless, I have no doubt at all that this comic strip would have had to be considered as ‘state of the art’ in the assessment of patentability of Kroyer’s invention.

Reported by Martin WILMING

T 0172/03 – 3.5.1
27 November 2003

Chairman: S. V. Steinbrener
Member: R. R. K. Zimmermann
B. J. Schachenmann
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T 2101/12 – 3.5.6
24 January 2018

Chairman: W. Sekretaruk
Member: G. Zucka
M. Müller
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Takeaways from the INGRES annual meeting

It is a good tradition that the President of the Swiss Patent Court takes the opportunity to directly address users of the court at the occasion of the annual INGRES conference, and to remind them (or inform for the first time) of certain procedural aspects of relevance for practitioners.

The new President Mark Schweizer did not break with this tradition:

1.   Workload

Mark Schweizer informed about the current workload at the court and presented the figures of the first six months of 2018. Nothing out of the ordinary, actually.

Ordinary
proceedings
received until
June 30
disposed of until
June 30
Infringement w/o counterclaim 5 6
Nullity w/o counterclaim 2 1
Infringement and nullity 1 2
Ownership 1
Claim 1
Miscellaneous 1 1
Total 9 12
Summary
proceedings
received until
June 30
disposed of until
June 30
injunctive relief / preservation 3 1
Description 1 1
Total 4 2

2.   Amendment of the PatCA

The amendements to the PatCA will come into effect as of August 1, 2018, with the most important aspect being that not only the President but also the second ordinary judge (currently Tobias Bremi) may preside over proceedings in the capacity of instructing judge.

See this Blog here for further information about the forthcoming changes.

3.   Anonymisation of decisions

Decisions in summary proceedings will not be anonymised anymore (decisions in main proceedings had not been anonymised anyway); see this Blog here.

No rule without exception: If you feel that special circumstances require your decision to be published only in anonymised form, a reasoned request should be filed.

4.   Case management

a)   Less Doodle

Figuring out a convenient date with Doodle apparently turned out to be more and more time consuming for the court (see this Blog here for further information).

Henceforth, parties will only provided once with a set of only three dates to choose from in a Doodle form (not five dates as under the previous regime), whenever possible in three different weeks and on different days of the week.

b)   Preparatory hearing

The parties are summoned to a preparatory hearing not only when both sides desire so, but even if only one side does. And the hearing will be held even if the other side does not appear.

Again, no rule without exception. But one should be prepared that there is no chance to hide from unpleasant provisional opinions or questions of the court; see this Blog here (item 2) for further information.

c)   Timeline of proceedings

If no settlement can be reached at the preparatory hearing, a timeline is established for the further course of the proceedings, to ease projectability for the parties and the court; see Art. 8 of the Guidelines on Proceedings.

The date of the main hearing will likely not be fixable at the preparatory hearing, since the full panel of judges is not yet established at that time. But still, a time frame for the hearing will be indicated at the preparatory hearing, with the exact date being fixed thereafter.

It remains to be seen how this works out in practice. Mark Schweizer made the reservation that changes to this procedure are not excluded, in view of the planning fallacy:

The planning fallacy is that you make a plan, which is usually a best-case scenario. Then you assume that the outcome will follow your plan, even when you should know better.

— Daniel Kahneman

d)   Single exchange of briefs in summary proceedings

The typical course of actions in summary proceedings is:

  • reqest for interim injunctive relief;
  • defendant’s answer;
  • no second exchange of briefs;
  • plaintiff’s limited reply to validity issues raised by defendant (if any);
  • expert opinion of the judge-rapporteur;
  • the parties comment on the expert opinion at the hearing (orally).

4.   Specific cases

The President briefly presented the following decisions:

  • O2017_025, discussed on this Blog here;
  • S2018_001, discussed on this Blog here.

Reported by Martin WILMING

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Save the date: Pan-European LES Young Members Conference on July 13, 2018

The date for the 6th Pan-European LES Young Members Conference has been fixed; see the flyer below. Save the date:

Friday
July 13, 2018

The event is free of charge for LES members; the fee for non-members is CHF 90,–.

Registration will open soon. The YMCs are very popular, and space is limited. So stay tuned to save your spot at ymc2018.org.

Reported by Martin WILMING

Header image courtesy of Zurich Tourismus.

FLYER

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The annual must-attend event on case-law of the FPC on March 8, 2018

vespa.swiss

Don’t miss VESPA‘s annual evening seminar about recent case law of the FPC on Thursday, March 8 in Zurich.

Gain first-hand insight from Tobias BREMI (second ordinary judge at the FPC) and Christian HILTI as a further panelist. See the program for details.

Please note the new venue, i.e. Haus zum Rüden, Limmatquai 42, 8001 Zurich; see map.

The event is free of charge for VESPA members; the fee for non-members is CHF 90,–. Dinner afterwards is offered for CHF 80,–.

Registration deadline is March 1, 2018; please use the registration form below.

Reported by Martin WILMING

Header image by Roland zh (Own work) [CC BY-SA 3.0], via Wikimedia Commons.

PROGRAM AND REGISTRATION FORM

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Some learnings from the Zurich IP Retreat

The blue elephant in the room
The blue elephant in the room

If you missed the Zurich IP Retreat last weekend, you really missed a lot. I trust there will be some kind of conference proceedings later on, but you will only catch a glimpse of all the fruitful discussions on the various aspects of hindsight that we had on the spot.

The blue elephant will constantly remind me of hindsight issues …

I noted two points of specific concern for proceedings at the Swiss FPC that I want to share with you:

  1. Closest prior art

It is not uncommon (to say the least) that one party in nullity proceedings is not in agreement with the selection of the ‘closest prior art.’ Mr Brändle made it perfectly clear how this is dealt with at the FPC:

If there are several valid starting points (and everything that cannot be excluded right away is ‘valid’) we look at every single one, and don’t even raise the issue of the closest one. If the patent is found to be obvious over any one of the pieces of prior art, we stop right there. And there is – very important – no room for the argument ‘you did not start from the closest prior art’.

Mr Brändle referred to decisions 138 III 111 (r 2.2) of the Supreme Court and O2013_011 of the FPC in this respect. In sum,

[t]here is absolutely no use to fight over the question which of the prior art brought forward to show lack of inventive step is the closest one. We will look at all of them, unless already one of them renders the invention obvious, which then is the end of the case.

  1. The skilled person’s knowledge – at which point of time?

The knowledge of the skilled person may change over time. Some discussion evolved around the relevant point of time in the assessment of infringement. The skilled person’s knowledge and understanding is relevant e.g. for both the second and third question in the typical assessment of equivalents (see the detailed discussion of the questionnaire on this Blog here).

Mr Brändle emphasized that the FPC relies on the skilled person’s knowledge at the point of time of the infringement in its assessment of infringement.

Reported by Martin WILMING

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A brief wrap-up of the 2017 INGRES conference

The annual INGRES conference took place yesterday, July 5. It is a good tradition that the most relevant patent-related decisions are summarized by an attorney-at-law and a patent attorney. Just in case you missed the event (you shouldn’t, not only because of the famous boat trip on lake Zurich!):

Cyrill RIEDER presented the cases

Claudia BIBUS focused on the Doctrine of Equivalents and expanded on the decisions

  • ‘Urinalventil’ (4A_131/2016 of the Supreme Court); and
  • ‘Pemetrexed’ (O2015_004 of the FPC).

The latter decision could not be discussed on the merits; an appeal is currently pending at the Supreme Court.

Dieter BRÄNDLE, the President of the FPC, presented a very helpful overview of the time limits which are generally set by the FPC for the various procedural steps, including the potenial term extensions. In brief:

Procedural stepMain proceedingsSummary proceedings
advance payment / security obligation2w + 1w1w + 1w
statement of defense / answer to counterclaim6w + 2w2w + 1-2w
answer to counterclaim and reply6w + 2w2w + 1-2w
reply / rejoinder4w + 2w2w + 1-2w
rejoinder and reply to counterclaim4w + 2w2w + 1-2w
rejoinder to counterclaim incl. comments on new factual allegations in rejoinder4w + 2w2w + 1w
limited reply4w + 2w2w + 1w
comments on new factual allegations in the rejoinder2w + 1w1w + 1w
comments on submission with new factual allegations2w + 1w1w + 1w
comments on expert opinion of the judge-rapporteur4w + 2w2w + 1w
comments on procedural motions2w + 1w1w + 1w
comments on security obligations2w + 1w1w + 1w
comments on cost issues1w + 1w1w + 1w
unconditional right to reply10d1w

The overview of time limits will also be made available on the website of the FPC in due course.

Dieter BRÄNDLE also made clear that certain party submissions are just unwanted, ie those which contravene the court’s intention to have an equal number of party submissions per issue on file before the instructional hearing (see eg O2016_012 and O2012_039). Beware: Even a fine for the respective attorney was mentioned in case of non-compliance.

Decision O2016_016 was briefly discussed.

Finally, Dieter BRÄNDLE expanded on dos and don’ts for offers of evidence.  The court won’t search for proper evidence somewhere in the docket when it is merely referred to proof ‘mentioned elsewhere herein’ or the like. Evidence should be properly identified where it is relied on. And it does not make much sense to ‘reserve the right to submit further evidence’: A party either has the right to do so by law (then the statement is not necessary), or the exchange of party submissions is already finished. In the latter case, there is no right to be reserved and the statement is useless.

Reported by Martin WILMING

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