Saturday, December 20, 2008

"Clear, concise, and supported"

A comment on Patently-O speaking of indefinite claims notes:

In Europe, Article 84 requires the claims to be "clear, concise and supported". After issue, the claims as granted is immune to Art 84-based attacks, until the patent owner seeks to amend. Then, the content of the amendment is fair game for Art 84-based attacks. I think this scheme keeps the show on the road, by encouraging Applicants to go to issue with impact-resistant claims. The USA can scrutinise the last 30 years of operation of the EPC, take what makes sense and disregard the rest, and I think Dennis, the USPTO and the CAFC sometimes look wistfully at Europe, but can't bring US opinion round to an open mind on borrowing good stuff from Europe.

Of the matter of supported-->

from the guidelines for examination part C:

"11.10 Arguments and evidence submitted by the applicant

The relevant arguments and evidence to be considered by the examiner
for assessing inventive step may either be taken from the originally-filed
patent application or submitted by the applicant during the subsequent
proceedings (see 11.7.2 above and VI, 5.3.4, 5.3.5 and 5.3.7).
Care must be taken, however, whenever new effects in support of
inventive step are referred to. Such new effects can only be taken into
account if they are implied by or at least related to the technical problem
initially suggested in the originally filed application (see also IV, 11.7.2,
T 386/89, not published in OJ, and T 184/82, OJ 6/1984, 261).

Example of such a new effect:

The invention as filed relates to a pharmaceutical composition having a
specific activity. At first sight, having regard to the relevant prior art, it
would appear that there is a lack of inventive step. Subsequently, the
applicant submits new evidence which shows that the claimed composition
exhibits an unexpected advantage in terms of low toxicity. In this case, it is
allowable to reformulate the technical problem by including the aspect of
toxicity, since pharmaceutical activity and toxicity are related in the sense
that the skilled person would always contemplate the two aspects together.
The reformulation of the technical problem may or may not give rise to
amendment or insertion of the statement of the technical problem in the
description. Any such amendment is only allowable if it satisfies the
conditions listed in VI, 5.3.7. In the above example of a pharmaceutical
composition, neither the reformulated problem nor the information on
toxicity could be introduced into the description without infringing
Art. 123(2)".


Post a Comment

<< Home