Process Flashcards
The goal of the paper is
The goal of the paper is to prepare an admissible and effective notice of opposition against a European patent.
Goals for analysis:
- Identify claim objects and their effective dates
- Prior art for each object
- Matrix for each object vs prior art
Things to do before claims available:
- Check whether prior art has same applicant as patent
- Notes publication dates on matrix and whether they could be 54(3)
- Familiarise with patent
- Familiarise with prior art
- Read the client letter (framework for paper)
a. Mark up – legal questions, priority (on filing, differences), Art 123 – after filing, during examination, PA demonstrated, published, Q – client questions
b. Don’t answer legal issues now
- Read the patent (understand what is to be attacked)
a. Claims
i. Split the claims into objects and numbers in wiseflow
ii. Add the objects numbers the matrix
iii. If there are 2 claims in 1, 2 attacks will be required
1. Alternatives should be attacked – claim dependencies or “or”
2. Optional features (such as, especially, in particular) non-limiting – F-IV 4.9
b. Description
i. Is there prior art in the patent?
ii. Mark up paragraphs – A123, PA, P, definitions, effects, advantages – link to claim number
1. Complete start of effect matrix
a. Effects
b. Definitions
- Prepare timeline
a. Identify the priority date of each claim
i. If there are 2 in 1 claims, very likely that they will have different priority dates – common wrinkle
ii. Check that the applicant for the “prior art” is not the same as the proprietor of A1 as this can lead to the priority document of the patent not being a valid first filing…- common wrinkle
iii. Art 87 – effective date for each claim object not just claim
1. Divisionals think G1/05, G1/06
2. Can’t add matter at all
3. Non-divisionals
a. Priority date or filing date
4. Run through the Article 87 EPC test:
a. Same applicant
b. Same invention
c. Within 12 months
d. Valid first filing
b. Which documents are prior art?
i. 54(2)
ii. 54(3)
1. Go through test if EP application 54(3)
2. For PCT, check designates EP and is validly published in an EPO official language, filing fee made (Art153(5) EPC and R165EPC…
iii. Neither – if neither, probably include some form of prior use… (common wrinkle).
- Read the prior art (at least 3 emb, usually 5)
a. All in 1 embodiment
b. Identify claim features, problems, effects and advantages – similarly to description
c. Add to the matrix
i. Use black ink for 54(2) prior art features, use red for 54(3) features
ii. If feature needs defining, there will be a definition somewhere throughout the paper that can be used
1. Add definition and basis to the PA matrix
iii. Add effects of each feature to the prior art matrix
- Analysis for each claim:
In series:
-added subject-matter
- novelty
- inv step
Added matter
a. 123(2) – unlikely to be second attack
i. do any of the claims or part of the description included added matter (late filed etc..)
ii. If a claim was not part of the previous claim set, check the description for basis for that claim
Novelty
b. Art 54 – if 54(2) there is not going to be inv step but may be another 54(2) or a 54(3) attack
If 54(3) attack only, there will be an inv step attack (as CPA is not determined)
i. Which documents are PA vs each claims – 54(2), 54(3) etc
ii. Is there an incorporation by reference?
iii. If the prior art is a PCT application, does the PCT designate EP and has published? If so, may be 54(3)…
iv. Novelty is unlikely to be simple:
1. Incorp by reference
2. Ranges
3. Definitions
4. 54(3)
Inventive step
c. Art 56
i. Use the 13 step test (be accurate with how documents should be combined…)
ii. Partial problem (2 or more novel features that provide different effect)
iii. Is invention disclosed in combo of prior art, if so why would PSITA combine (use the effect table for this).
1. Solve same problem
2. Same technical field…
3. Able to combine?
d. Note each attack for write up
i. Note additional attacks that might also be helpful if you have time.
1. Nov vs D1, plus inv step vs D3+D5
- Deal with the formal issues
a. Art 99 and R76 requirements
b. Use answer template to fill in.
i. Who is the opponent – the default is the company rather than the person signing the letter to you.
- Set out dates for each claim (5-10 marks)
a. If splitting claim, explain why this has been split (see section 5 of answer template)
b. Set out the which documents are prior art for each claim and what type of prior art?
- Attack the description for added matter if required
- Attack the description for added matter if required
- Then attack each claim in series
a. Added matter (5 marks)
b. Address novelty (40 marks)
i. What discloses what and why (use quotation copy and paste technique, aids conciseness)
1. A1 discloses X because it disclose Y…
2. X is equivalent to Y because… is further explanation needed…
3. Incorporation by reference
4. Ranges
a. Endpoint within range
b. Two-step test for ranges
c. Address inventive step (40 marks)
i. 13 step problem solution
ii. Once differences identified, decide whether the following apply:
1. Partial problem (2 or more novel features that do not provide synergistic effect)
2. Comvik – does it have a technical effect outside of a computer?
3. Is the feature an alternative or have an actual effect?
a. If alternative, there will likely be a reference to it being an obvious alternative in one of the annexes
iii. ID the CPA
1. Identify the aim or purpose of the claimed invention.
2. Identify the prior art docs that have the same aim or purpose. If there is only one, this is the CPA.
3. If two or more docs have the same aim or purpose, the document which forms the most promising starting point/springboard is the CPA (e.g., features in common can be helpful).
iv. Formulate the OTP
1. Show which features the CPA discloses
2. Identify which features the CPA doesn’t disclose
3. Does the CPA lack the feature or have an alternative
4. ID the technical effect that the difference provides
5. The OTP is how to modify the CPA to provide the technical effect
v. Obviousness
1. Show that the skilled person would consult D2 (same field, same effect)
2. Show that D2 discloses missing feature
3. Show that D2 discloses motivation for applying the missing feature to the CPA
4. Explaining that there are no obstacles for combining and that the skilled person would make further modifications
5. Are there any incompatibilities?
6. Concluding that the skilled person would arrive at claimed invention.
