Wording 6 Flashcards
If opposed on 54(3)…
An independent claim opposed on grounds of lacking novelty under A54(3) EPC should also, if appropriate, be opposed under A56 EPC or 54(2)EPC
(Art54(3)EPC easily subverted by simply establishing trivial novelty to thereby maintain in amended form – want to avoid)
If opposed on 54(2) EPC…
There will not be a 56 EPC attack as no further CPA…
Claim X lacks novelty under Art XXX over A#
Claim # lacks novelty under A54(2) EPC over A#
or
Claim # lacks novelty under A54(3) EPC over A#
A# discloses the features:
- “[copy and paste feature(s) from claim]” because A# recites “[copy and paste features from prior art]”.
For features that require definition – explain the definition and give basis. X means the same as Y because A# discloses that X can be “copy and paste from A#”. - Repeat above for remaining feature(s).
[MAPPING – can be relatively loose in structure – just remember to justify why things are the same]
Therefore, all features of claim … known from A#.
Claim # is not new.
Ranges (selection inventions)
Step 1 - Novelty of a range is destroyed if prior art discloses an example which falls within the range ((Guidelines for Examination G-VI, 8) and T188/83).
Step 2 - (ii) A sub-range selected from a broader numerical range of the prior art is considered novel if both of the following two criteria are satisfied (see T 261/15):
(a)the selected sub-range is narrow compared to the known range;
(b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art.
The meaning of “narrow” and “sufficiently far removed” has to be decided on a case by case basis. (Guidelines for Examination G-VI, 8).
Inherent/implicit
Pay attention to what other prior art says about properties of relevant features, materials, etc.
Well-known, commonly…
Suitable for (usually will be evidence that it is (maybe via a definition)
Why is it suitable?
Would not require additional modification to enable it to be used for… because…[think: properties, form]
GL – F-IV 4.13.1 “Apparatus for carrying out the process …”, this must be construed as meaning merely apparatus suitable for carrying out the process.”
Incorporation by reference
A# contains a specific reference to A#’ for detailed information on [certain feature(s)]. The disclosure of A# is therefore supplemented by incorporation of these features of A#’ which are specifically referenced (Guidelines for Examination G-IV, 8)
2014pp example: made of cuzinal (Annex 5 [0003] referring to Annex 2 [0002], which discloses cuzinal from a single list of materials; according to G-IV 8 (or T422/92, T153/85, T645/91, …) an explicit reference to another document providing more detailed information on the material housing. Therefore, Annex 5 incorporates the possible material housings of Annex 2 and therefore discloses a housing made of cuzinal).
Consider whether incorp by reference feature is part of the art under Art54(3) using Guidelines for Examination G-IV, 8 – key thing is whether the reference document was publicly available before the filing date of the application (the prior art) – see last two paragraphs and H-IV 2.2.1 for this test.
Relative term
Claim … contains the relative term “…” which does not have a well-recognized
meaning.
The definition in the description has to be used to determine the extent of the protection of claim … (A69(1) EPC).
According to the description (A1, para #), [DEFINITION]
or
The description of A1 does not provide any hint as to how [e.g., thick a thin wall should be].
The term “…” therefore has no limiting effect (see Guidelines for Examination F-IV, 4.6.2).
A relative term is to be interpreted in the least restrictive possible way when determining the extent of the protection of claim. As a consequence, in many cases, a relative term is not limiting to the extent of the protection of claim.
Product-by-process
Product is not novel because made by a novel process (T150/82)
Evidence of prior use / sale / etc.
When, where, what, how
In order to show that a product was made available to the public prior to the effective date, it is necessary to provide the following information: when the prior use took place; what was made available; and under what circumstances (Guidelines G-IV, 7.2).
If contested, further evidence will be provided
example 1998pp:
A2 was published on 9 June 1998, which is after the latest priority date for A1 (11 May 1998) and is therefore not prior art. However, it reports on an oral disclosure made by Fireman Spam at the latest on 16 April 1998, which is before the earliest priority date for A1 (4 May 1998). Therefore, the oral disclosure is prior art under Article 54(2).
It can be assumed that the disclosure in A2 accurately reflects what was disclosed by Fireman Spam in his oral disclosure (G-IV, 1). A declaration from a member of the audience confirming that this is the case will be filed shortly (T1212/97).
A2 shows that Fireman Spam disclosed a fire hose 2 having on it annular rings 4. The hose is suitable for use in a structure, such as a burning building, for instance a theatre, cinema or lecture hall. As is shown by A6, such structures include rows of seats. According to A1, page 3, paragraph 9, “passive” indicates that the device does not rely on any energy source to operate the system, such as electricity. A1, page 1, paragraph 3 indicates that “tactiovisual” means that the devices are capable of being seen and also of being detected by the sense of touch. The rings 4 are passive tactiovisual means because no energy source is attached to them, they can be seen (see the drawings in A2) and they can be detected by the sense of touch, even through a thick material, such as a firefighter’s glove (see A2, page 1, paragraph 2). It is disclosed in A2, page 1, paragraph 3 that a firefighter can find his way to the water supply and hence safety by use of the annular rings 4. It is clear that the place of safety will be reached through an exit. Thus, the hose 2 with the annular rings 4 form a system which can be used to find an exit in a structure. Thus, Fireman Spam disclosed all the features of claim 4 which therefore lacks novelty over the oral disclosure evidenced by A2.
Error in the claims - EXAMPLE
2010 pp example:
The text of claim 5 of the European patent on which the decision to grant was based reads “1.8 µm” and is the authentic text. The use of mm (millimetres) instead of µm (micrometres) in claim 5 is an alteration that was produced during printing and is a result of a misprint. According to the Legal Advice 17/90 OJ 1990, 260, the text of a European patent in the language of the proceedings shall be the authentic text in any proceedings before the European Patent Office and in any Contracting State. Mistakes in the specification of a European patent arising in the course of its production have no effect on the content of the granted patent (Guidelines C-VI, 14.8). We cannot use the misprint to oppose the patent under Article 100(c) EPC but we must take it into account in our opposition as microns should be read in claim 5.
Internet disclosures (G-IV, 7.5, and 7.5.1)
Information disclosed on the internet or in online databases is considered to be publicly available as of the date the information was publicly posted.
AX was publicly posted on XX which is considered to be the date which it is publicly available.
