YEARBOOK YEARBOOK ANNUAIRE JAHRBUCH ANNUAIRE JAHRBUCH ANNUAIRE YEARBOOK 2016 / IV
|
|
- Vanessa Coral May
- 5 years ago
- Views:
Transcription
1 YEARBOOK 2016 / IV ANNUAIRE YEARBOOK JAHRBUCH 2015 AIPPI WORLD CONGRESS RIO DE JANEIRO OCTOBER 10, OCTOBER 14, 2015 ADDED MATTER: THE STANDARD FOR DETERMINING ADEQUATE SUPPORT FOR AMENDMENTS ASSOCIATION INTERNATIONALE POUR LA PROTECTION DE LA PROPRIETE INTELLECTUELLE INTERNATIONAL ASSOCIATION FOR THE PROTECTION OF INTELLECTUAL PROPERTY INTERNATIONALE VEREINIGUNG FÜR DEN SCHUTZ DES GEISTIGEN EIGENTUMS ANNUAIRE WORKING GUIDELINES, GROUP REPORTS, SUMMARY REPORTS, RESOLUTIONS ANNUAIRE YEARBOOK JAHRBUCH
2 ASSOCIATION INTERNATIONALE POUR LA PROTECTION DE LA PROPRIETE INTELLECTUELLE INTERNATIONAL ASSOCIATION FOR THE PROTECTION OF INTELLECTUAL PROPERTY INTERNATIONALE VEREINIGUNG FÜR DEN SCHUTZ DES GEISTIGEN EIGENTUMS YEARBOOK 2016 / IV 2016 AIPPI WORLD CONGRESS MILAN SEPTEMBER 16, SEPTEMBER 20, 2016 ADDED MATTER: THE STANDARD FOR DETERMINING ADEQUATE SUPPORT FOR AMENDMENTS WORKING GUIDELINES, GROUP REPORTS, SUMMARY REPORTS, RESOLUTIONS 1
3 2016 AIPPI WORLD CONGRESS MILAN SEPTEMBER 16, SEPTEMBER 20, 2016 THE QUESTIONS ON THE AGENDA WORKING GUIDELINES GROUP REPORTS SUMMARY REPORTS RESOLUTIONS The reports and the summaries from the National and Regional Groups are normally reproduced without alteration in content, style and spelling. Dans le cas normal, les rapports et les résumés des Groupes nationaux et régionaux sont publiés sans corrections du contenu, du style et de l orthographie. Die Berichte und Zusammenfassungen der Landes- und Regionalgruppen werden im Normalfall ohne Korrekturen von Inhalt, Stil und Orthographie wiedergegeben. AIPPI General Secretariat AIPPI, Zurich 2017 Edited in the name of AIPPI by the AIPPI General Secretariat, Zurich (Switzerland) 2
4 Linking and making available on the Internet Création de liens et mise à disposition sur Internet Verlinkung und Zugänglichmachung im Internet La creación de enlaces y la puesta a disposición en Internet Requirements for protection of designs Conditions pour la protection des dessins et modèles Voraussetzungen für den Schutz von Designs Requisitos para la protección de los diseños Security Interests over Intellectual Property Sûretés sur les droits de propriété intellectuelle Sicherungsrechte an Rechten des Geistigen Eigentums Garantías reales sobre los derechos de la Propiedad Industrial e intelectual Added matter: the standard for determining adequate support for amendments Eléments ajoutés : les critères de détermination d un support suffisant des modifications Hinzugefügte Gegenstände: Der Beurteilungsmaßstab für hinreichende Stützung von Änderungen Materia añadida: los criterios para determinar el soporte adecuado de las modificaciones 3
5 Study Guidelines by Sarah MATHESON, Reporter General John OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Ari LAAKKONEN, Yusuke INUI and Ralph NACK Assistants to the Reporter General 2016 Study Question (Patents) Added matter: the standard for determining adequate support for amendments Introduction 1) This Study Question concerns the role and effects of impermissible added matter in relation to amendments to patents. 2) The term patent as used in these Study Guidelines refers to a granted patent or an application for a patent, or both, as the context requires. Where it is necessary to distinguish between the two, these Study Guidelines refer to granted patents and patent applications. 3) The term impermissible added matter as used in these Study Guidelines refers to a proposed amendment to a patent that is impermissible because it lacks support (often referred to as basis ) in the application as filed. This includes added matter as referred to in Article 123(2) of the European Patent Convention. 4) The term amendment as used in these Study Guidelines refers to any amendment of, deletion from or addition to a patent specification, including to the description, figures or claims. 5) The primary objective of this Study Question is to define impermissible added matter. It is concerned with examining the support (or basis) for making amendments having regard to the patent application as filed. This Study Question is not concerned as such with: a) extensions of the scope of protection caused by an amendment where the amendment does not otherwise comprise impermissible added matter, e.g. where a claim is added for a combination A+B taught in the specification, making the patent broader that an old claim A+B+C; or b) insufficiency where there is no impermissible added matter, e.g. adding a claim for an embodiment disclosed in the application as filed, but without full instructions being provided in the specification for putting that embodiment into full effect. 6) In addition, a number of other questions arise, described below. Previous work of AIPPI 7) AIPPI has previously considered added matter in the following contexts. a) The Resolution on Q69 Sufficient description of the invention (Munich, 1978) addressed added matter but was mainly focussed on the issue of sufficiency. AIPPI resolved that: 4
6 i. The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art; and ii. Article II, paragraph 4: In addition to the correction of purely immaterial faults, the description of the invention may be amended in the course of the grant procedure, under the control of the examiner, and on the essential condition that this modification adds no new inventive matter to the description. b) The Resolution on Q189 Amendment of patent claims after grant (Gothenburg, 2006) addressed requirements for amending patents after grant, especially from the point of view of the scope of protection of the patent. AIPPI resolved that: 2) Patent claim amendment after grant must not extend the scope of protection of the claims as granted; 3) Patent claim amendment after grant must always have support in the original specification, drawings or claims, and in particular there should be no possibility of adding new subject matter; (emphasis added)... 5) It should be possible to amend patent claims after grant by introducing any subject matter from the specification, claims or drawings into the claims, provided this does not extend the original scope of protection of the claims as granted; Paragraph 3 of Resolution Q189 is highly relevant in the context of this Study Question, and makes it clear that new subject matter should not be added when amending the claims of a granted patent. However, Resolution Q189 does not address the amendment of patent applications. c) The Resolution on Q193 Divisional, Continuation and Continuation in Part Patent Applications (Singapore, 2007) addressed rules for basing divisional applications on matter disclosed or not disclosed in the parent application. AIPPI resolved that: 4) In a divisional application, it should be possible to claim subject matter that was unclaimed, but was disclosed in the parent application. 5) If matter not disclosed in the parent application as filed is included in a divisional application, the divisional application should not be invalid provided that the added matter is deleted prior to grant. (emphasis added) Paragraph 5 of the Resolution on Q193 assumes that the test for impermissible added matter is whether that matter is not disclosed in the relevant application as filed, and also explains that an appropriate corrective action is to delete that impermissible added matter prior to grant. d) The Resolution on Q209 Selection inventions (Buenos Aires, 2009) resolved in paragraph 13 that the impact of late submission of data (i.e. after filing the application) be studied further. 8) It is clear from the Resolution on Q189 that AIPPI has resolved that patent claim amendment after grant should always have support in the original specification, drawings or claims, and in particular there should be no possibility of adding new subject matter. 9) However, AIPPI has not yet squarely addressed the definition of impermissible added matter, the impact of impermissible added matter on amendments to both granted patents and patent applications, the extent to which the analysis depends on the construction of the patent by the skilled person, and relevant date(s) for the construction of the application as filed. It is not the intention of this Study Question to disturb prior Resolutions, but to simply refine the definition 5
7 of impermissible added matter, and to explore methods of remedying impermissible added matter problems. Discussion Impermissible added matter and scope of this Study Question 10) The Agreement on Trade-related aspects of Intellectual Property Rights (TRIPs) does not mandate a support requirement as part of the basic substantive rules relating to patents. However, TRIPs does mandate some disclosure requirements: Article 29 Conditions on Patent Applicants 1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application. 11) If a claim, sought to be introduced by way of amendment, has no basis in the description then it is obviously not described sufficiently clearly and completely. 12) In the United States, 35 USC 132 stipulates: No amendment shall introduce new matter into the disclosure of the invention. 13) In Europe, Article 123(2) of the European Patent Convention (EPC) requires: The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. 14) Article 123(2) has been interpreted in the case law of the EPO s Technical Boards of Appeal such that amendments are permitted within the limits of what the skilled person would derive directly and unambiguously, using common general knowledge from the application as filed (the so called gold standard ; G 2/10; G 3/89; G 11/91 and T 248/12). This is also reflected in the EPO s Guidelines for Examination H, IV ) Moreover, the general principle from the Guidelines following case G 1/93 is: The underlying idea of Art. 123(2) EPC is that an applicant is not allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application (see G 1/93). An amendment should be regarded as introducing subject-matter which extends beyond the content of the application as filed, and therefore unallowable, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art. (Guidelines H-IV, 2). 16) Further, in the situation where features are removed from a disclosed embodiment so as to produce a generalisation of originally disclosed subject matter, EPO case law has established that the following questions should be posed in order to determine whether such a generalisation is allowable: 6
8 (1) are the features explained as essential in the disclosure; (2) are the features, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and (3) does the removal require any real modification of other features to compensate for the change? 17) From a practical perspective, the nature of patent prosecution and judicial processes has tended to influence the manner and way in which added matter is assessed. Whilst courts in some countries have access to expert evidence which assists the court in understanding what the skilled person would have gleaned from the application as filed, in other countries the court may not have access to such evidence and might instead itself need to construe the application as filed or under the guidance of technical judges. 18) Similarly, patent offices will typically not have access to expert evidence to guide them on the meaning of the application as filed. 19) The EPO s direct and unambiguous requirement has, in particular, become a vexed issue in that it hints at a more literal approach than that set out in Article 123(2) of the EPC, and the principles established in G 1/93. Recently, some decisions of the Board of Appeal have taken a softer line and, moreover, a 2014 revision to the Guidelines for Examination introduced some wording which appeared to soften the strict assessment: When assessing the conformity of the amended claims to the requirements of Art. 123(2), the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole. (Guidelines H-IV, 2.2) This still leaves open the question of what is directly and unambiguously derivable from the application as filed by the skilled person. On an analytical level, this question is about what the patent application as a whole teaches the skilled person. Of course, the scope of a granted patent (and in some situations and in some countries, the scope of a patent application) is highly relevant to issues such as infringement, novelty and obviousness. 20) These issues are further complicated by the nature of the analysis in determining scope and teaching. In some countries, construing the scope of the patent claims is a matter of law and therefore not directly determined with the assistance of expert evidence, while the teaching of the patent application as filed is guided much more by expert evidence. In other countries, there is no difference between the nature of the analysis when determining scope and teaching. 21) If the teaching is narrower than the claim scope, then the patent can be bad for insufficiency if it does not enable the invention to be practised to its full claimed scope. As noted above, this Study Question does not directly address sufficiency, but simply the permissibility of a later increase in the teaching of the patent, potentially with a commensurate broadening in scope, if that increase in teaching was by way of an amendment to a claim. 22) However, if the scope of the patent has been broadened by amendment, e.g. by deletion of a limitation in the claim, thereby broadening the claim, but there is no increment in the teaching, that broadening is not due to impermissible added matter. This Study Question is not directed specifically to extensions of scope if such extension is not due to impermissible added matter. 7
9 23) If the scope of the patent has been narrowed by amendment, e.g. by adding claim integers, the additional information taught by those claim integers may be impermissible added matter. 24) The teaching of the patent application as filed might be said to be: a) the literal disclosure of the patent application as filed; b) the literal disclosure of the patent application as filed, supplemented with all matter that can be directly and unambiguously derived from the patent application as filed; c) the patent application as filed, unchanged, read with the common general knowledge of the skilled person; d) the application as filed incorporating all uninventive routine workshop variations (or nonmaterial changes) of the application as filed; e) the application as filed and anything which was obvious to the skilled person from the application as filed; or f) something else. 25) Another way of looking at this question is to ask what the skilled person would do, when the application as filed is placed in front of them and they are asked to implement the invention in accordance with it. When the skilled person has an objective in mind and is implementing the invention, what might or could be obvious to the skilled person from the application as filed may be less relevant if it is not directly related to the objective in mind. 26) A highly relevant consideration is what approach would promote greater certainty for both patentees and third parties, especially as many patent portfolios have an international dimension with families of patents in more than one country or region. That question is the primary issue addressed in this Study Question. 27) Further issues that arise are: a) what, if any role does the skilled person play in analysing impermissible added matter? b) what should be the relevant date of knowledge for the notional skilled person in evaluating the permissibility of an amendment? c) should the definition of impermissible added matter depend on when an amendment is made (for example, before versus after grant)? d) should the definition of impermissible added matter prohibit the addition of claims per se (as opposed to adding or removing limitations to claims)? e) should the definition of impermissible added matter be the same when applied by a patent office as when applied by a court? f) how can impermissible added matter be remedied? Questions I. Current law and practice You are invited to submit a Report addressing the questions below. Please refer to the Protocol for the preparation of Reports. You are reminded that a reference to patent in the following questions refers to both a granted patent and an application for a patent. 8
10 If your answer differs depending on the distinction between a granted patent and an application for a patent, please answer the questions for each, as applicable. 1) Under your Group s current law, are amendments to the description and/or figures of a patent possible? 2) Under your Group s current law, are amendments to the claims of a patent possible? 3) Further to your answers to questions 1) and 2), please indicate: a) the standard for determining whether such amendments are permissible and indicate whether this standard exists in statutes, regulations, patent office guidelines, and/or in case law. b) whether there are the differences between the substantive standards for amendments under 1) and 2) above. If so, what? 4) To the extent your answer to question 3) depends on timing (e.g. after filing but before examination, after allowance but before grant, and after grant), please explain how the standard changes and during which time periods. 5) Further to your answer to question 3), if impermissible added matter is a ground for refusing an amendment, please explain how impermissible added matter is defined. 6) In any assessment of impermissible added matter under your Group s current law, please explain: a) how the patent application as filed is interpreted; b) if interpreted as the notional skilled person would understand the patent application as filed, what is the relevant date of knowledge of the notional skilled person? 7) If an amendment that was made to a patent application prior to grant is later reviewed by your patent office or a court in a post-grant proceeding and determined to contain impermissible added matter, is there a mechanism for the patentee to remedy the defect, for example by removing portions of the amendment found to be impermissible? II. Policy considerations and possible improvements to your current law 8) How does your Group s current law strike a balance between allowing a patent applicant to make appropriate amendments during the examination process and preventing the applicant from adding impermissible matter? 9) Are there aspects of these laws that could be improved? 10) Does your Group s current law allow amendments post grant? If so, how does your Group s current law strike a balance between allowing a patentee to make appropriate amendments to a granted patent (such as amendments necessary to sustain its validity) and preventing the patentee adding impermissible matter? 11) Are there aspects of these laws that could be improved? 12) If your Group s current law uses, at least in part, the notional person skilled in the art to determine the permissibility of amendments, is this approach effective? Are there aspects of this that could be improved? 9
11 III. Proposals for harmonisation 13) Is harmonisation of the definition of impermissible added matter desirable? If, please respond to the following questions without regard to your Group s current law. Even if no, please address the following questions to the extent your Group considers your Group s laws could be improved. 14) If, please propose a definition of impermissible added matter that you believe is appropriate. 15) Should this definition depend on when an amendment is made (for example, after filing but before examination, after allowance but before grant, and after grant)? If, please explain. 16) Should rules against impermissible added matter prohibit the addition of claims per se, as opposed to adding limitations to claims? 17) Should rules against impermissible added matter prohibit the removal of claims per se, as opposed to removing limitations from claims? 18) Should the definition of impermissible added matter be the same when applied by a patent office as when applied by a court? 19) If your proposed definition refers to the notional skilled person, what should be the relevant date of knowledge for the notional skilled person in evaluating the permissibility of an amendment? 20) If the deletion of impermissible added matter by amendment would result in an impermissible extension of scope, how should the impermissible added matter defect be remedied in these circumstances? 21) Please comment on any additional issues concerning any aspect of impermissible added matter you consider relevant to this Study Question. 10
12 Argentina Report 2016 Study Question (Patents) in the name of the Argentina Group by Alicia ÁLVAREZ, Eduardo MCCALLUM, Gastón RICHELET and Ignacio SÁNCHEZ ECHAGÜE Questions Added matter: the standard for determining adequate support for amendments The Groups are invited to answer the following questions under their national laws. I.) Current law and practice You are reminded that a reference to patent in the following questions refers to both a granted patent and an application for a patent. If your answer differs depending on the distinction between a granted patent and an application for a patent, please answer the questions for each, as applicable. 1) Under your Group's current law, are amendments to the description and/or figures of a patent possible? Yes. 2) Under your Group's current law, are amendments to the claims of a patent possible? Yes. 3) Further to your answers to questions 1) and 2), please indicate: a) the standard for determining whether such amendments are permissible and indicate whether this standard exists in statutes, regulations, patent office guidelines, and/or in case law. Section 19 of the Regulating Decree No. 260/96 (to the Argentine Patent Law No. 24,481) states: As from the date of filing of the patent application and for NINETY (90) days afterwards, applicant may add supplements, corrections, and amendments, provided that they do not imply an extension of the object thereof. After said term, only the elimination of deficiencies found by the examiner shall be authorized. The new embodiments that might be added shall be complementary for a better understanding of the invention. No right can derive from supplements, corrections or amendments which imply an extension of the original application. In practice, the Argentine PTO accepts amendments to the claims at any time during prosecution. It should also be borne in mind that a decision in re Pfizer (2012) allowed amendments, during prosecution, to the claims and specification as long as they are obvious to the subject matter originally disclosed. b) whether there are the differences between the substantive standards for amendments under 1) and 2) above. If so, what? Yes. The provisions for amending the description and drawings are more restrictive than those related to claims. 11
13 4) To the extent your answer to question 3) depends on timing (e.g. after filing but before examination, after allowance but before grant, and after grant), please explain how the standard changes and during which time periods. N/A 5) Further to your answer to question 3), if impermissible added matter is a ground for re- fusing an amendment, please explain how impermissible added matter is defined. According to section 19 of Regulatory Decree No. 260/96, impermissible added matter is that which extends the scope of the subject matter. 6) In any assessment of impermissible added matter under your Group's current law, please explain: a) how the patent application as filed is interpreted; By persons of ordinary skill in the art and available common knowledge. b) if interpreted as the notional skilled person would understand the patent application as filed, what is the relevant date of knowledge of the notional skilled person? Date of filing the application or, if pertinent, the priority date. 7) If an amendment that was made to a patent application prior to grant is later reviewed by your patent office or a court in a post-grant proceeding and determined to contain impermissible added matter, is there a mechanism for the patentee to remedy the de- fect, for example by removing portions of the amendment found to be impermissible? no There are no provisions on this respect. It should also be borne in mind that there is no postgrant procedure in Argentina. Thus, should an amendment were found to be illegal, then the claim or the patent would be revoked. II.) 8) Policy considerations and possible improvements to your current law How does your Group's current law strike a balance between allowing a patent applicant to make appropriate amendments during the examination process and preventing the applicant from adding impermissible matter? An amendment is deemed appropriate if the overall disclosure as changed is derivable from the application as filed (including matter in priority documents) by persons of ordinary skill in the art. 9) Are there aspects of these laws that could be improved? Yes, we consider that it would be advisable to expressly state that amendments to both the specification and claims are permissible as long as they do not include new non-obvious matter. 12
14 10) Does your Group s current law allow amendments post grant? If so, how does your Group's current law strike a balance between allowing a patentee to make appropriate amendments to a granted patent (such as amendments necessary to sustain its validity) and preventing the patentee adding impermissible matter? No. 11) Are there aspects of these laws that could be improved? Yes, we consider that it would be advisable to expressly state that amendments to the specification and claims are permissible as long as they do not include new non-obvious matter. 12) If your Group's current law uses, at least in part, the notional person skilled in the art to determine the permissibility of amendments, is this approach effective? Are there as- pects of this that could be improved? We know of no substantial problems heretofore with this approach. III.) 13) Proposals for harmonisation Is harmonisation of the definition of impermissible added matter desirable? If, please respond to the following questions without regard to your Group s current law. Even if no, please address the following questions to the extent your Group considers your Group s laws could be improved. 14) If, please propose a definition of impermissible added matter that you believe is ap- propriate. Subject-matter non-obvious from the original specification or claims. 15) Should this definition depend on when an amendment is made (for example, after filing but before examination, after allowance but before grant, and after grant)? no 16) Should rules against impermissible added matter prohibit the addition of claims per se, as opposed to adding limitations to claims? No. 17) Should rules against impermissible added matter prohibit the removal of claims per se, as opposed to removing limitations from claims? no 18) Should the definition of impermissible added matter be the same when applied by a patent office as when applied by a court? 13
15 19) If your proposed definition refers to the notional skilled person, what should be the rele- vant date of knowledge for the notional skilled person in evaluating the permissibility of an amendment? Date of filing the application or, if pertinent, the priority date. 20) If the deletion of impermissible added matter by amendment would result in an imper- missible extension of scope, how should the impermissible added matter defect be remedied in these circumstances? The examiner should reject the amendment via an official action. Applicant may comply deleting or else amending the added matter to comply with the examiner s grounds, or may traverse the latter, for the examiner to reconsider. 21) Please comment on any additional issues concerning any aspect of impermissible added matter you consider relevant to this Study Question. Please indicate which industry sector views are included in part III. Proposals for harmoniza- tion of this form: Summary No discrimination of any industry sector. 14
16 Questions Australia Report 2016 Study Question (Patents) in the name of the Australia Group by Clare CUNLIFFE Added matter: the standard for determining adequate support for amendments The Groups are invited to answer the following questions under their national laws. I.) Current law and practice You are reminded that a reference to patent in the following questions refers to both a granted patent and an application for a patent. If your answer differs depending on the distinction between a granted patent and an application for a patent, please answer the questions for each, as applicable. 1) Under your Group's current law, are amendments to the description and/or figures of a patent possible? Yes. A patent specification and figures can be amended in the Patent Office if no litigation is on foot, under s 104 of the Patents Act 1990 (Cth) (Patents Act) or in the Court if litigation is on foot, under s 105 of the Patents Act (It should be noted that it is desirable to amend under s 104 where possible, since the court has a discretion as to whether to allow amendments under s 105, even if those amendments are otherwise permissible under the Patents Act, as set out further below). However, some amendments will not be allowable (s 102 of the Patents Act). The limitations on amendment will depend on the legislative regime applicable to the patent: For complete patent applications filed before 15 April 2013 for which examination had been requested before 15 April 2013, and for innovation patents granted before 15 April 2013 for which examination had been requested before 15 April 2013 (Pre Raising the Bar Patents): amendments are not allowable if the amended specification would claim matter not in substance disclosed in the specification as filed. amendments which convert divisional applications for innovation patents (similar to utility patents) into standard patents are not allowable; and amendments which seek to remove lawful grounds of objection to the validity of the patent in circumstances where the patentee had not furnished prior art searches for corresponding applications to the Patent Office are not allowable. Further, amendments after: the acceptance of a standard patent or the examination of an innovation patent are not allowable if a claim of the amended specification would not in substance fall within the scope of the unamended claims; or the specification would not comply with the old fair basis and sufficiency requirements (it should be noted that these requirements have been replaced in the Post Raising thr Bar Regime by support and enablement requirements, which are intended to be more onerous, although they have not yet been tested). Section 102 does not prevent amendments for the purpose of correcting a clerical error or obvious mistake. (It should be noted that many Australian patents are still under the Pre Raising the Bar Regime) 15
17 For complete standard patent applications filed on or after 15 April 2013, standard patent applications for which examination had not been requested before 15 April 2013, innovation patents granted after 15 April 2013 or innovation patents for which examination had not been requested for before 15 April 2013 (Post Raising the Bar Patents), a different regime applies.for these patents: amendments are not allowable if the amendment would result in the specification claiming or disclosing matter which extends beyond that disclosed in the complete specification as filed and other prescribed documents (Prescribed documents is defined to include an abstract that was filed with the complete specification; a missing part or element of a complete specification that was incorporated into the specification, in accordance with the regulations or the PCT; or an amendment that has been made to the complete specification after filing, for the purpose of correcting a clerical error or obvious mistake or complying with the deposit requirements applicable to micro-organisms). Amendments which convert divisional applications for innovation patents into standard patents are not allowable; and Amendments after acceptance of a standard patent or the examination of an innovation patent are not allowable if a claim of the amended specification would not in substance fall within the scope of the claims of the specification before amendment; or the specification would not comply with the new enablement and support requirements (the new enablement and support requirements are intended to be consistent with the standards applied in European jurisprudence, although the requirements have not yet been tested by Australian courts). The regulations place some further restrictions on amendments which: would convert standard patent applications into innovation patent applications and vice versa or would convert an accepted complete application into a divisional patent, or would convert an application into a divisional application after the time for filing a divisional, or would amend a patent request after grant, or would mean that the micro-organism deposit requirements are not met, or are made before an opponent can be heard, or would amend an innovation patent before grant, or would result in an innovation patent claiming excluded subject matter, or are made by the Patent Office while proceedings are on foot in relation to the Patent (including appeals from oppositions). Section 102 does not prevent amendments for the purpose of correcting a clerical error or obvious mistake. For the sake of brevity, the remainder of this response only deals with Post Raising the Bar patents, unless it is necessary to refer to the Pre Raising the Bar regime to explain the changes to the law. Any questions about the operation of the pre-raising the Bar regime, which worked quite differently, should be directed to the author. 2) Under your Group's current law, are amendments to the claims of a patent possible? Yes, subject to the limits set out above. Most relevantly for Post Raising the Bar Patents, amendments are not allowable if: the amended specification would claim or disclose matter that extends beyond that disclosed in the complete specification as filed and prescribed documents, or for standard patents which have been accepted or innovation patents which have been examined, a claim of the amended specification would not in substance fall within the scope of the unamended claims, or the amended specification would not comply with the new enablement and support requirements. The Court will also have a discretion as to whether to allow amendments if amendments are made during the course of litigation under s
18 3) Further to your answers to questions 1) and 2), please indicate: a) the standard for determining whether such amendments are permissible and indicate whether this standard exists in statutes, regulations, patent office guidelines, and/or in case law. Prior to 15 April 2013, the position was that an invention need only be fully described (disclosed) at the date of grant. This was the result of a decision of the Full Federal Court, in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224, that a filed specification could disclose a claimed invention in substance without necessarily satisfying the requirements under s 40 for the invention to be described fully, including the best method known to the applicant, at the time of filing, for performing the invention. This meant that it was possible for a patentee to file an inadequate description that could be subsequently remedied by amendment in order to meet the full description requirements before the date of grant. The legislature considered that this was problematic because: it meant that a patentee could gain protection for the period before it had adequately met its obligation to provide the public with a complete disclosure of the invention; and it created uncertainty for the public and competitors in the period between publication of the patent specification and grant, because the public and competitors may not be able to determine their freedom to operate. Accordingly, although the new sections have not yet been tested, the intention of the amendments is that an applicant will not be able to amend a Post Raising the Bar patent to remedy inadequate disclosure, so that a patent cannot be amended to disclose new matter. Amendments which affect claim scope Amendments will have the effect that a claim of the amended specification would not in substance fall within the scope of the unamended claims if a proposed new claim would extend the patent monopoly in the sense that it would make something an infringement which was not an infringement already: AMP Incorporated v Commissioner of Patents (1974) AOJP at page 322 (High Court). Such amendments are not allowed after acceptance/examination. This test is applicable to both Pre Raising the Bar Patents and Post Raising the Bar Patents. b) whether there are the differences between the substantive standards for amendments under 1) and 2) above. If so, what? There are no differences between the substantive standards for amendment to a specification and amendments to claims, although particular considerations apply to amendments which affect claim scope after acceptance (in the case of standard patents) or examination (in the case of innovation patents). Amendments which affect claim scope so that matter which was not previously claimed is claimed are prohibited. It should be noted that these considerations apply whether the amendment which affects claim scope is to the specification (for example, by changing the definitions of terms subsequently used in the claims which change the claim scope, or by adding or removing limitations to the description) or to the claims. 4) To the extent your answer to question 3) depends on timing (e.g. after filing but before examination, after allowance but before grant, and after grant), please explain how the standard changes and during which time periods. As set out above, after acceptance of a standard patent or examination of an innovation patent it is not possible to amend the patent in a way which would make something an infringement which was not an infringement already. 17
19 5) Further to your answer to question 3), if impermissible added matter is a ground for re- fusing an amendment, please explain how impermissible added matter is defined. For Post Raising the Bar Patents, impermissible added matter is matter which means that the specification claims or discloses matter that extends beyond that disclosed in the complete specification as filed (and prescribed documents), or (after acceptance/examination), matter which means that a claim of the amended specification would not in substance fall within the scope of the unamended claims, or the amended specification would not comply with the new enablement and support requirements. The case law provides that in identifying added matter, the Patent Office or the Court should engage in a two stage process: 1. identifying the precise nature of the proposed amendment - what is it that is changed?this requires a comparison between the specification before amendment and after amendment, and enables the identification of what matter results from the amendment. 2. Determining whether that matter is disclosed by the specification as filed (See RGC Mineral Sands Limited v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458). As noted above, it may be the case that the scope of the claims is affected by a change to the specification. 6) In any assessment of impermissible added matter under your Group's current law, please explain: a) how the patent application as filed is interpreted; In order to ascertain the invention described and claimed, it is necessary to refer to the specification as a whole: Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 at p 610 per Dixon CJ, Kitto and Windeyer JJ. The complete specification, which includes both the body and the claims (see Kimberley-Clark Australia Pty Limited v Arico Trading International Pty Limited and Others [2001] HCA 8; (2001) 207 CLR 1 at [14], per Gleeson CJ, McHugh, Gummow, Hayne and Callinan JJ), must be construed in the light of the common knowledge in the art before the priority date and must not be read in the abstract. The Court must place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the relevant time (being the priority date): Kimberley-Clark Australia Pty Limited v Arico Trading International Pty Limited and Others at [24], per Gleeson CJ, McHugh, Gummow, Hayne and Callinan JJ. Because the patent instrument is not a document operating inter partes, but rather a public instrument, it must define the monopoly in such a way that it is not reasonably capable of being misunderstood. Even though the specification must be read as a whole, it is necessarily made up of parts which have different functions. It is not legitimate to narrow or expand the boundaries of the monopoly, as defined by the claims, by adding to the language of the claims, glosses drawn from other parts of the specification. Further, if the language of a claim is clear, it is not to be rendered obscure simply because obscurities can be found in particular sentences in parts of the specification: Welch Perrin v Worrel at p 610, Dixon CJ, Kitto and Windeyer JJ. A proper analysis of the specification may show that references to a particular embodiment are by way of illustration and explanation of the invention rather than a definition of it : Welch Perrin v Worrel at p 612, Dixon CJ, Kitto and Windeyer JJ. 18
20 The rational starting point is not to simply turn to the language of the claims and seek to attribute meaning to those words in the abstract. The body of the specification and the claims must be read together as a whole in an attempt to identify the invention and determine whether the meaning of the words used in the claim (that is, the construction of the claim in question) is truly plain and unambiguous. If, having examined the description of the invention in the body of the specification and the definition of the claims, an expression used in the claims is not clear, it is then permissible to return to the body of the specification to either define or clarify the meaning of words used in the claim (see Interlego A.G. v Toltoys Pty Ltd, p 479 per Barwick CJ and Mason J) without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification. See also, to the same effect, Kimberley-Clark Australia Pty Limited v Arico Trading International Pty Limited and Others at [15], per Gleeson CJ, McHugh, Gummow, Hayne and Callinan JJ. (Principles taken from Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29 at [72] to [79] per Greenwood J, Rares J generally concurring at [142]). Two specific observations should be made in relation to best method and sufficiency (now enablement): First, best method and sufficiency under the Pre Raising the Bar regime require the patentee to disclose the best method known to the patentee at the filing date of the patent (not the priority date): Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (31 October 2005) at [375].This probably also applies to enablement and support under the Post Raising the Bar regime (although there is no case law on the issue yet). Second, recent case law suggests that a rigorous standard applies to the best method requirement, so that the requirement to disclose best method is not satisfied simply because there is sufficiency of description (or enablement, under the law applicable to Post Raising the Bar Patents).There is a residual requirement to identify the best method of performing the invention. See Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27. b) if interpreted as the notional skilled person would understand the patent application as filed, what is the relevant date of knowledge of the notional skilled person? Patents are to be construed in light of common general knowledge at the priority date. See Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [24]. 7) If an amendment that was made to a patent application prior to grant is later reviewed by your patent office or a court in a post-grant proceeding and determined to contain impermissible added matter, is there a mechanism for the patentee to remedy the de- fect, for example by removing portions of the amendment found to be impermissible? If a patent has been amended in a way which is impermissible, the claim will lose its priority date: s 114 of the Patents Act. Although it is theoretically possible to amend at a later stage to remove the objectionable matter, where there is litigation on foot and an application is made under s 105 (whether for before Pre and Raising the Bar patents), the Court has a discretion as to whether to allow the amendment. In recent years this discretion has been exercised against the patentee where the Court forms the view that the patentee s conduct is disentitling (for example, because the patentee should have been aware that the claims were invalid at an earlier point). 19
21 There may also be a limitation on a patentee s right to recover damages where a complete specification is amended after becoming open to public inspection and where the court is not satisfied that the specification without the amendment was framed in good faith and with reasonable skill and knowledge (s 115 of the Patents Act 1990 (Cth). II.) 8) Policy considerations and possible improvements to your current law How does your Group's current law strike a balance between allowing a patent applicant to make appropriate amendments during the examination process and preventing the applicant from adding impermissible matter? As set out above, there are two regimes which are currently in place under Australian law. The previous regime (applicable to Pre Raising the Bar Patents) allowed the patentee to make amendments to add matter during the examination process and after grant, provided that the added matter does not have the effect of: claiming matter that was not disclosed in the application as filed; or claiming matter after acceptance/examination which was not previously claimed. This regime (which is still applicable to many Australian patents) took a liberal approach to amendment, on the basis that there is a strong public interest that inventive genius should be encouraged (Ethyl Corporation s Patent [1972] RPC 169). As set out above, the exercise of the Court s discretion under s 105 places some limitations on a patentee s power to amend where a court considers that a patentee had acted in an unreasonable way (such as delaying in making amendments). However, the legislature was concerned that the law was too liberal and allowed patentees to remedy inadequate disclosure at a later date. In light of that concern, the regime applicable to Post Raising the Bar Patents was introduced. Broadly speaking, this regime, which has not yet been tested by the Courts, does not allow patentees to add matter that would have the effect of disclosing matter that extends beyond that disclosed at filing. 9) Are there aspects of these laws that could be improved? no The view of the Australian legislature was that the Pre Raising the Bar regime needed to be improved to ensure that patentees could not supplement inadequate disclosure at a later stage. This is reflected in the (as yet untested) Post Raising the Bar regime. The Post Raising the Bar regime also replaced the requirements of sufficiency and fair basis with those of enablement and support, to make Australian law more consistent with European law. It should be noted that Australia has particular requirements in relation to the disclosure of best method. These requirements are not satisfied merely because the sufficiency requirements (under the old law) are met: see Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27. These requirements are onerous and somewhat subjective (they are assessed by reference to the particular invention claimed), and they apply even where a patentee does not know that alternative methods produce a worse result. Following the Raising the Bar amendments, which prohibit the introduction of matter not disclosed in the specification as filed, it will be impossible to amend a patent to address a failure to comply with best method, which may result in some unfairness to patentees who do not appreciate the nature of the Australian best method requirement. In light of the recent decisions on the best method requirement, the Intellectual Property Law section of the Law Council of Australia recently recommended that the requirement be abolished. 20
2016 Study Question (Patents)
2016 Study Question (Patents) Submission date: 25th May 2016 Sarah MATHESON, Reporter General John OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants
More information2016 Study Question (Patents)
2016 Study Question (Patents) Submission date: 25th April 2016 Sarah MATHESON, Reporter General John OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants
More informationINTELLECTUAL PROPERTY LAWS AMENDMENT (RAISING THE BAR ACT) 2012
INTELLECTUAL PROPERTY LAWS AMENDMENT (RAISING THE BAR ACT) 2012 AUTHOR: MICHAEL CAINE - PARTNER, DAVIES COLLISON CAVE Michael is a fellow and council member of the Institute of Patent and Trade Mark Attorneys
More informationStudy Guidelines Study Question. Conflicting patent applications
Study Guidelines by Sarah MATHESON, Reporter General Jonathan OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK Assistants to the Reporter General Introduction
More informationTitle: The patentability criterion of inventive step / non-obviousness
Question Q217 National Group: China Title: The patentability criterion of inventive step / non-obviousness Contributors: [Heather Lin, Gavin Jia, Shengguang Zhong, Richard Wang, Jonathan Miao, Wilson Zhang,
More informationExCo Berlin, Germany
A I P P I ASSOCIATION INTERNATIONALE POUR LA PROTECTION DE LA PROPRIETE INTELLECTUELLE INTERNATIONAL ASSOCIATION FOR THE PROTECTION OF INTELLECTUAL PROPERTY INTERNATIONALE VEREINIGUNG FÜR DEN SCHUTZ DES
More informationWorking Guidelines Q217. The patentability criteria for inventive step / non-obviousness
Working Guidelines by Thierry CALAME, Reporter General Nicola DAGG and Sarah MATHESON, Deputy Reporters General John OSHA, Kazuhiko YOSHIDA and Sara ULFSDOTTER Assistants to the Reporter General Q217 The
More information2016 Study Question (Patents)
2016 Study Question (Patents) Submission date: 9th May 2016 Sarah MATHESON, Reporter General John OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants
More informationSummary Report. Report Q189
Summary Report Report Q189 Amendment of patent claims after grant (in court and administrative proceedings, including re examination proceedings requested by third parties) The intention with Q189 was
More informationAIPPI Study Question - Patentability of computer implemented inventions
Study Question Submission date: May 7, 2017 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to
More information2016 Study Question (Patents)
2016 Study Question (Patents) Submission date: 3rd May 2016 Sarah MATHESON, Reporter General John OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants
More informationAIPPI Study Question - Patentability of computer implemented inventions
Study Question Submission date: June 1, 2017 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to
More informationshould disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art
Added subject-matter Added subject-matter in Europe The European patent application should disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled
More informationPATENT DISCLOSURE: Meeting Expectations in the USPTO
PATENT DISCLOSURE: Meeting Expectations in the USPTO Robert W. Bahr Acting Associate Commissioner for Patent Examination Policy United States Patent and Trademark Office 11/17/2016 1 The U.S. patent system
More informationAIPPI REPORT OF THE NETHERLANDS GROUP ON 2016 STUDY QUESTION (PA- TENTS) ADDED MATTER: THE STANDARD FOR DETERMINING ADEQUATE SUPPORT FOR AMENDMENTS
AIPPI REPORT OF THE NETHERLANDS GROUP ON 2016 STUDY QUESTION (PA- TENTS) ADDED MATTER: THE STANDARD FOR DETERMINING ADEQUATE SUPPORT FOR AMENDMENTS Members of the working group: Jeroen Boelens; Sophie
More informationAIPPI Study Question - Conflicting patent applications
Study Question Submission date: June 19, 2018 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants
More informationHOW HIGH HAS THE BAR BEEN RAISED? THE AUSTRALIAN PATENT OFFICE ISSUES ITS FIRST OPPOSITION DECISION ON A POST RAISING THE BAR PATENT APPLICATION
HOW HIGH HAS THE BAR BEEN RAISED? THE AUSTRALIAN PATENT OFFICE ISSUES ITS FIRST OPPOSITION DECISION ON A POST RAISING THE BAR PATENT APPLICATION 21 January 2016 Australia, Brisbane, Melbourne, Perth, Sydney
More informationThe use of prosecution history in post-grant patent proceedings. Maria CRUZ GARCIA, Isabel FRANCO, João JORGE, Teresa SILVA GARCIA
Question Q229 National Group: Title: Portugal The use of prosecution history in post-grant patent proceedings Contributors: Filipe BAPTISTA, Maria CRUZ GARCIA, Isabel FRANCO, João JORGE, Teresa SILVA GARCIA
More informationAIPPI Study Question - Conflicting patent applications
Study Question Submission date: April 30, 2018 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants
More informationDawn of an English Doctrine of Equivalents: immaterial variants infringe
Dawn of an English Doctrine of Equivalents: immaterial variants infringe November 2017 The Supreme Court reinvents patent infringement The Supreme Court s landmark judgment in Actavis v Eli Lilly is a
More informationNews and analysis on IP law, regulation and policy from around the world. For the latest updates, visit
WORLD INTELLECTUAL PROPERTY REPORT >>> News and analysis on IP law, regulation and policy from around the world. For the latest updates, visit www.bna.com International Information for International Business
More information11th Annual Patent Law Institute
INTELLECTUAL PROPERTY Course Handbook Series Number G-1316 11th Annual Patent Law Institute Co-Chairs Scott M. Alter Douglas R. Nemec John M. White To order this book, call (800) 260-4PLI or fax us at
More informationAUSTRALIA Patents Act 1990 Compilation date: 24 February 2017 Includes amendments up to: Act No. 61, 2016 Registered: 27 February 2017
AUSTRALIA Patents Act 1990 Compilation date: 24 February 2017 Includes amendments up to: Act No. 61, 2016 Registered: 27 February 2017 TABLE OF CONTENTS Chapter 1. Introductory 1 Short title 2 Commencement
More informationPOST-GRANT AMENDMENT JOHN RICHARDS
23 rd Annual Fordham Intellectual Property Law & Policy Conference Cambridge, April 8-9, 2015 POST-GRANT AMENDMENT JOHN RICHARDS The Problem There is a real life problem in that when filing a patent application
More informationPatent litigation. Block 1. Module Priority. Essentials: Priority. Introduction
Patent litigation. Block 1. Module Priority Introduction Due to the globalisation of markets and the increase of inter-state trade, by the end of the nineteenth century there was a growing need for internationally
More informationArticle 30. Exceptions to Rights Conferred
1 ARTICLE 30... 1 1.1 Text of Article 30... 1 1.2 General... 1 1.3 "limited exceptions"... 2 1.4 "do not unreasonably conflict with a normal exploitation of the patent"... 3 1.5 "do not unreasonably prejudice
More informationArgentina Argentine Argentinien. Report Q193. in the name of the Argentinian Group
Argentina Argentine Argentinien Report Q193 in the name of the Argentinian Group Divisional, Continuation and Continuation in Part Patent Applications Questions I) Analysis of the current law 1) Are divisional,
More informationAdded matter under the EPC. Chris Gabriel Examiner Directorate 1222
Added matter under the EPC Chris Gabriel Examiner Directorate 1222 April 2018 Contents Added matter under the EPC Basic principles under the EPC First to file Article 123(2) EPC Interpretation Gold standard
More informationConsiderations for the United States
Considerations for the United States Speaker: Donald G. Lewis US Patent Attorney California Law Firm Leahy-Smith America Invents Act First Inventor to file, with grace period Derivation Actions Prior user
More informationSelection Inventions the Inventive Step Requirement, other Patentability Criteria and Scope of Protection
Question Q209 National Group: Title: Contributors: AIPPI Indonesia Selection Inventions the Inventive Step Requirement, other Patentability Criteria and Scope of Protection Arifia J. Fajra (discussed by
More informationAIPPI Study Question - Patentability of computer implemented inventions
Study Question Submission date: June 19, 2017 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants
More informationFordham 2008 Comparative Obviousness
Fordham 2008 Comparative Obviousness John Richards Ladas & Parry LLP E-mail: iferraro@ladas.com What is the purpose of the inventive step requirement? 1. Some subjective reward for brilliance 2. To prevent
More informationSecond medical use or indication claims. [Please insert name last name in CAPITAL letters please]
Question Q238 National Group: Title: Contributors: Reporter within Working Committee: New Zealand Second medical use or indication claims Michael BROWN, Partner Helen BELLCHAMBERS, Associate A J Park [Please
More informationThe use of prosecution history in post-grant patent proceedings. The Groups are invited to answer the following questions under their national laws.
Question Q229 National Group: Canada Title: The use of prosecution history in post-grant patent proceedings Contributors: ZISCHKA, Matthew SOFIA, Michel HAMILTON, J. Sheldon HARRIS, John ROWAND, Fraser
More informationAnother Strahan case loss of legal professional privilege
EVIDENCE Another Strahan case loss of legal professional privilege JACKY CAMPBELL,JANUARY 2014 CCH LAW CHAT Jacky Campbell Forte Family Lawyers CCH Law Chat January 2014 Another Strahan case - Loss of
More informationCompilation date: 24 February Includes amendments up to: Act No. 61, Registered: 27 February 2017
Patents Act 1990 No. 83, 1990 Compilation No. 41 Compilation date: 24 February 2017 Includes amendments up to: Act No. 61, 2016 Registered: 27 February 2017 This compilation includes commenced amendments
More informationSummary and Conclusions
Summary and Conclusions In this thesis, results are presented of a study on the alignment of the European Patent Convention and the Patent Cooperation Treaty with requirements of the Patent Law Treaty.
More informationAIPPI Study Question - Bad faith trademarks
Study Question Submission date: April 28, 2017 Sarah MATHESON, Reporter General Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants
More informationAmendments. Closa Daniel Beaucé Gaëtan 26-30/11/2012
Amendments Closa Daniel Beaucé Gaëtan 26-30/11/2012 Outline Introduction Amendments basic types Evaluating amendments basic examples Amendments to the description Additional requirements Correction of
More informationNo. According to the PTO s internal examination guidelines, second medical use claims are not patentable.
Question Q238 National Group: Title: Contributors: Reporter within Working Committee: Argentina Second medical use or indication claims Gastón RICHELET, Ricardo D. RICHELET Gastón RICHELET Date: May 19,
More informationFICPI 12 th Open Forum
"The same invention or not the same invention": That is the question. But what is the answer? FICPI 12 th Open Forum Ingwer Koch, European Patent Office Director Patent t Law Munich, 8-10 September 2010
More informationEPO Decision G 1/15 on Partial Priorities and Toxic Divisionals: Relief and Risks
EPO Decision G 1/15 on Partial Priorities and Toxic Divisionals: Relief and Risks In Europe, the claiming of multiple priorities and the concept of partial priority in the context of a single patent claim
More informationAPPENDIX 1 THE CURRENT AUSTRALIAN TESTS SUFFICIENCY
APPENDIX 1 THE CURRENT AUSTRALIAN TESTS SUFFICIENCY 1. The decisions of two differently constituted High Courts in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR
More informationQuestionnaire. Apotex-Inc. v Sanofi-Aventis
Questionnaire Apotex-Inc. v Sanofi-Aventis 1. Introduction In Apotex Inc. v Sanofi-Aventis, the Supreme Court of Canada has granted leave to Apotex Inc to appeal the validity of a Canadian pharmaceutical
More informationAIPPI World Intellectual Property Congress, Toronto. Workshop V. Patenting computer implemented inventions. Wednesday, September 17, 2014
AIPPI World Intellectual Property Congress, Toronto Workshop V Patenting computer implemented inventions Wednesday, September 17, 2014 Implications of Alice Corp. v. CLS Bank (United States Supreme Court
More informationHungary Hongrie Ungarn. Report Q204
Hungary Hongrie Ungarn Report Q204 in the name of the Hungarian Group by Marcell KERESZTY, András ANTALFFY-ZSÍROS, Judit KERÉNY, Katalin MÉSZÁROS, Imre MOLNÁR, Tivadar PALÁGYI and Zsolt SZENTPÉTERI Liability
More informationDRAFT. prepared by the International Bureau
December 2, 2004 DRAFT ENLARGED CONCEPT OF NOVELTY: INITIAL STUDY CONCERNING NOVELTY AND THE PRIOR ART EFFECT OF CERTAIN APPLICATIONS UNDER DRAFT ARTICLE 8(2) OF THE SPLT prepared by the International
More informationIntellectual Property Reform In Australia
Intellectual Property Reform In Australia January 2013 A summary of important legislative changes PATENTS TRADE MARKS DESIGNS PLANT BREEDER S RIGHTS Robust intellectual property rights delivered efficiently
More informationAIPPI - 41 st Congress of the International Association for the Protection of Intellectual Property (AIPPI) Boston, 6-11 September 2008
AIPPI - 41 st Congress of the International Association for the Protection of Intellectual Property (AIPPI) Boston, 6-11 September 2008 Workshop VI Privilege Treaty (4 to 5.30pm, Monday 6 September 2008)
More information[1] This is an opposed application in terms of section 51(9) of the Patents
IN THE HIGH COURT OF SOUTH AFRICA (TRANSVAAL PROVINCIAL DIVISION) UNREPORTABLE In the matter between: Case No: Patent 2001/3937 B BRAUN MELSUNGEN AG B BRAUN MEDICAL (PTY) L TO First Applicant Second Applicant
More informationQuestionnaire on Exceptions and Limitations to Patent Rights. The answers to this questionnaire have been provided on behalf of:
Questionnaire on Exceptions and Limitations to Patent Rights The answers to this questionnaire have been provided on behalf of: Country: Australia... Office: IP Australia... Person to be contacted: Name:
More information4. COMPARISON OF THE INDIAN PATENT LAW WITH THE PATENT LAWS IN U.S., EUROPE AND CHINA
4. COMPARISON OF THE INDIAN PATENT LAW WITH THE PATENT LAWS IN U.S., EUROPE AND CHINA Provisions of the Indian patent law were compared with the relevant provisions of the patent laws in U.S., Europe and
More informationCOMMENTARY. Antidote to Toxic Divisionals European Patent Office Rules on Partial Priorities. Summary of the Enlarged Board of Appeal s Decision
March 2017 COMMENTARY Antidote to Toxic Divisionals European Patent Office Rules on Partial Priorities Beginning in 2009, the Boards of Appeal of the European Patent Office ( EPO ) issued a series of decisions
More informationOLIVE & OLIVE, P.A. INTELLECTUAL PROPERTY LAW
OLIVE & OLIVE, P.A. INTELLECTUAL PROPERTY LAW Since 1957 500 MEMORIAL ST. POST OFFICE BOX 2049 DURHAM, NORTH CAROLINA 27702-2049 (919) 683-5514 GENERAL RULES PERTAINING TO PATENT INFRINGEMENT Patent infringement
More informationIntellectual Property Laws Amendment Act 2015
Intellectual Property Laws Amendment Act 2015 No. 8, 2015 An Act to amend legislation relating to intellectual property, and for related purposes Note: An electronic version of this Act is available in
More informationAttachment: Opinions on the Draft Amendment of the Implementing Regulations of the Patent Law of the People s Republic of China
March 31, 2009 To: Legislative Affairs Office State Council People s Republic of China Hirohiko Usui President Japan Intellectual Property Association Opinions on the Draft Amendment of the Implementing
More informationDouble Patenting at the EPO
Double Patenting at the EPO I. Summary Recent case law confirms that patents granted on parent and divisional applications cannot contain claims of identical scope, and potentially restricts the ability
More information2015 Noréns Patentbyrå AB
Self-Collision in patent applications How to Avoid Shooting Your Client in the Foot A European perspective with some thoughts on the global situation, including other jurisdictions Jan Modin FICPI Special
More informationQUESTION 89. Harmonization of certain provisions of the legal systems for protecting inventions
QUESTION 89 Harmonization of certain provisions of the legal systems for protecting inventions Yearbook 1989/II, pages 324-329 Executive Committee of Amsterdam, June 4-10, 1989 Q89 Question Q89 Harmonisation
More informationDrafting international applications with Europe in mind. Dr. Matthew Barton, UK and European patent attorney, Forresters
Drafting international applications with Europe in mind Dr. Matthew Barton, UK and European patent attorney, Forresters Introduction The European patent office (EPO) perhaps has a reputation for having
More informationPATENT HARMONISATION. A CIPA policy briefing on: 18-month publication period Conflicting applications Grace periods Prior user rights
PATENT HARMONISATION A CIPA policy briefing on: 18-month publication period Conflicting applications Grace periods Prior user rights By Rebecca Gulbul Foreword by Tony Rollins FOREWORD by Tony Rollins
More information2016 Study Question (General)
2016 Study Question (General) Submission date: 26th April 2016 by Sarah MATHESON, Reporter General John OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK,
More informationEricsson Position on Questionnaire on the Future Patent System in Europe
Ericsson Position on Questionnaire on the Future Patent System in Europe Executive Summary Ericsson welcomes the efforts of the European Commission to survey the patent systems in Europe in order to see
More informationBELIZE PATENTS ACT CHAPTER 253 REVISED EDITION 2003 SHOWING THE SUBSIDIARY LAWS AS AT 31ST MAY, 2003
BELIZE PATENTS ACT CHAPTER 253 REVISED EDITION 2003 SHOWING THE SUBSIDIARY LAWS AS AT 31ST MAY, 2003 This is a revised edition of the Subsidiary Laws, prepared by the Law Revision Commissioner under the
More informationAllowability of disclaimers before the European Patent Office
PATENTS Allowability of disclaimers before the European Patent Office EPO DISCLAIMER PRACTICE The Boards of Appeal have permitted for a long time the introduction into the claims during examination of
More informationA I P P I ASSOCIATION INTERNATIONALE POUR LA PROTECTION DE LA PROPRIETE INTELLECTUELLE
A I P P I ASSOCIATION INTERNATIONALE POUR LA PROTECTION DE LA PROPRIETE INTELLECTUELLE INTERNATIONAL ASSOCIATION FOR THE PROTECTION OF INTELLECTUAL PROPERTY INTERNATIONALE VEREINIGUNG FÜR DEN SCHUTZ DES
More informationEXPLANATORY NOTES ON THE PATENT LAW TREATY AND REGULATIONS UNDER THE PATENT LAW TREATY * prepared by the International Bureau
EXPLANATORY NOTES ON THE PATENT LAW TREATY AND REGULATIONS UNDER THE PATENT LAW TREATY * prepared by the International Bureau * These Notes were prepared by the International Bureau of the World Intellectual
More informationDenmark Danemark Dänemark. Report Q193. in the name of the Danish Group by Ejvind CHRISTIANSEN, Torsten NØRGAARD and Holm SCHWARZE
Denmark Danemark Dänemark Report Q193 in the name of the Danish Group by Ejvind CHRISTIANSEN, Torsten NØRGAARD and Holm SCHWARZE Divisional, Continuation and Continuation in Part Patent Applications Questions
More informationThe Patentability Search
Chapter 5 The Patentability Search 5:1 Introduction 5:2 What Is a Patentability Search? 5:3 Why Order a Patentability Search? 5:3.1 Economics 5:3.2 A Better Application Can Be Prepared 5:3.3 Commercial
More informationSecond medical use or indication claims. Mr. Antonio Ray ORTIGUERA Angara Abello Concepcion Regala & Cruz Law Offices Philippines
Question Q238 National Group: Title: Contributors: Reporter within Working Committee: PHILIPPINES Second medical use or indication claims Mr. Alex Ferdinand FIDER Mr. Antonio Ray ORTIGUERA Angara Abello
More information10 Strategic Drafting of Applications for U.S. Patents by Japanese Companies from an Enforcement Perspective
10 Strategic Drafting of Applications for U.S. Patents by Japanese Companies from an Enforcement Perspective It has become more and more important for Japanese companies to obtain patents in Europe and
More informationChapter 1900 Protest Protest Under 37 CFR [R ] How Protest Is Submitted
Chapter 1900 Protest 1901 Protest Under 37 CFR 1.291 1901.01 Who Can Protest 1901.02 Information Which Can Be Relied on in Protest 1901.03 How Protest Is Submitted 1901.04 When Should the Protest Be Submitted
More informationNote concerning the Patentability of Computer-Related Inventions
PATENTS Note concerning the Patentability of Computer-Related Inventions INTRODUCTION I.THE MAIN PROVISIONS OF THE EUROPEAN CONVENTION II. APPLICATION OF THESE PROVISIONS AND MAINSTREAM CASELAW OF THE
More informationDETAILED TABLE OF CONTENTS
DETAILED TABLE OF CONTENTS Preface... v v About the Authors... xiii vii Summary Table of Contents... xv ix Chapter 1. European Patent Law as International Law... 1 I. European Patent Law Arises From Multiple
More informationIN THE MATTER OF AN ARBITRATION UNDER CHAPTER ELEVEN OF THE NORTH AMERICAN FREE TRADE AGREEMENT AND THE UNCITRAL ARBITRATION RULES (1976)
IN THE MATTER OF AN ARBITRATION UNDER CHAPTER ELEVEN OF THE NORTH AMERICAN FREE TRADE AGREEMENT AND THE UNCITRAL ARBITRATION RULES (1976) BETWEEN: ELI LILLY AND COMPANY Claimant/Investor AND: GOVERNMENT
More informationClaims and Determining Scope of Protection
Introduction 2014 APAA Patents Committee Questionnaire Claims and Determining Scope of Protection for Taiwan Group Many practitioners and users of the patent system believe that it is a fairly universal
More informationRegulations to the Norwegian Patents Act (The Patent Regulations)
Regulations to the Norwegian Patents Act (The Patent Regulations) This is an unofficial translation of the regulations to the Norwegian Patents Act. Should there be any differences between this translation
More informationCASE NO: 657/95. In the matter between: and CHEMICAL, MINING AND INDUSTRIAL
CASE NO: 657/95 In the matter between: JOHN PAUL McKELVEY NEW CONCEPT MINING (PTY) LTD CERAMIC LININGS (PTY) LTD 1st Appellant 2nd Appellant 3rd Appellant and DETON ENGINEERING (PTY) LTD CHEMICAL, MINING
More informationGeneral Information Concerning. of IndusTRIal designs
General Information Concerning Patents The ReGIsTRaTIon For Inventions of IndusTRIal designs 1 2 CONTENTS INTRODUCTION 3 1. What is a patent? 4 2. How long does a patent last? 4 3. Why patent inventions?
More informationNew Patent Application Rules Set to Take Effect November 1, 2007
INTELLECTUAL PROPERTY October 2007 New Patent Application Rules Set to Take Effect November 1, 2007 The United States Patent and Trademark Office (USPTO) has issued new rules for the patent application
More informationMartín BENSADON, Alicia ALVAREZ, Damaso PARDO, Ignacio SÁNCHEZ ECHAÜE.
Question Q233 National Group: Argentina Title: Grace period for patents Contributors: Martín BENSADON, Alicia ALVAREZ, Damaso PARDO, Ignacio SÁNCHEZ ECHAÜE. Reporter within Working Committee: Martín BENSADON
More informationGrant v Commissioner of Patents and Patenting Knowledge Inventions
Griffith Research Online https://research-repository.griffith.edu.au Grant v Commissioner of Patents and Patenting Knowledge Inventions Author Lawson, Charles Published 2008 Journal Title Journal of Law
More informationReport on the Diplomatic Conference for the Revision of the European Patent Convention. Munich, November 20-29, 2000
REPORTS Report on the Diplomatic Conference for the Revision of the European Patent Convention Munich, November 20-29, 2000 By Ralph Nack (1) and Bruno Phélip (2) A. Background of the Diplomatic Conference
More informationFisher& Paykel Healthcare Limited and the Patents System
2 July 2009 Fisher&Paykel HEALT HCA RE Fisher & Paykel Healthcare Limited 15 Maurice Paykel Place, East Tamaki P O Box 14 348, Panmure Auckland, New Zealand Telephone: +64 9 574 0100 Facsimile: +64 9 574
More informationCongress Passes Historic Patent Reform Legislation
Congress Passes Historic Patent Reform Legislation America Invents Act Transitions U.S. Patent System from a First-to-Invent to First-Inventor-to-File System, Overhauls Post-Issue Review Proceedings and
More informationArt. 123(2) EPC ADDED MATTER A US Perspective. by Enrica Bruno Patent Attorney. Steinfl & Bruno LLP Intellectual Property Law
Art. 123(2) EPC ADDED MATTER A US Perspective by Enrica Bruno Patent Attorney US Background: New matter Relevant provisions 35 USC 132 or 35 USC 251 If new subject matter is added to the disclosure, whether
More informationSummary Report Study Question Patents. Patentability of computer implemented inventions
Summary Report by Sarah MATHESON, Reporter General John OSHA and Anne Marie VERSCHUUR, Deputy Reporters General Yusuke INUI, Ari LAAKKONEN and Ralph NACK Assistants to the Reporter General Introduction
More informationWSPLA (Wash. State Patent Law Assoc.) Lunch Seminar
WSPLA (Wash. State Patent Law Assoc.) Lunch Seminar Date: March 15, 2017 12:00-1:30~2:00 Place: Seattle, WA (Washington Athletic Club 1325 6 th Ave. Seattle 98101) 1 Dos and Don ts of US Inbound & Outbound
More informationOrder on Patents and Supplementary Protection Certificates
1 The Patent and Trademark Office Order No. 25 of 18 January 2013 Order on Patents and Supplementary Protection Certificates Pursuant to section 5(2), section 6(2), section 8a, section 8b(2), section 9,
More informationThe Same Invention or Not the Same Invention? Thorsten Bausch
The Same Invention or Not the Same Invention? Thorsten Bausch FICPI World Congress Munich 2010 CONTENTS The Same Invention or Not the Same Invention? Practical Problems The standard of sameness the skilled
More informationInformation and Guidelines Concerning the Patent and Copyright Process at East Tennessee State University
Information and Guidelines Concerning the Patent and Copyright Process at East Tennessee State University I. Steps in the Process of Declaration of Your Invention or Creation. A. It is the policy of East
More informationBESCHWERDEKAMMERN DES EUROPÄISCHEN PATENTAMTS BOARDS OF APPEAL OF THE EUROPEAN PATENT OFFICE CHAMBRES DE RECOURS DE L'OFFICE EUROPEEN DES BREVETS
Abstract A Euro-PCT applicant who has not carried out a certain procedural act within the time limit prescribed in the PCT can take advantage of the relevant provisions of the EPC concerning re-establishment
More informationMULTIPLE AND PARTIAL PRIORITIES. Robert Watson FICPI 17 th Open Forum, Venice October 2017
MULTIPLE AND PARTIAL PRIORITIES Robert Watson FICPI 17 th Open Forum, Venice October 2017 OVERVIEW What is this all about? Significant events Paris Convention European Patent Convention So what s the problem?
More informationDivisional, Continuation and Continuation-in-Part Applications (Q 193)
Die Seite der AIPPI / La page de l AIPPI Divisional, Continuation and Continuation-in-Part Applications (Q 193) REPORT OF SWISS GROUP * Die Schweizer Gruppe sieht mehrere Vorteile für den Anmelder und
More informationPatent Resources Group. Chemical Patent Practice. Course Syllabus
Patent Resources Group Chemical Patent Practice Course Syllabus I. INTRODUCTION II. USER GUIDE: Overview of America Invents Act Changes with Respect to Prior Art III. DRAFTING CHEMICAL CLAIMS AND SPECIFICATION
More informationAn introduction to European intellectual property rights
An introduction to European intellectual property rights Scott Parker Adrian Smith Simmons & Simmons LLP 1. Patents 1.1 Patentable inventions The requirements for patentable inventions are set out in Article
More informationPre-Issuance Submissions under the America Invents Act
Pre-Issuance Submissions under the America Invents Act By Alan Kendrick, J.D., Nerac Analyst The Leahy-Smith America Invents Act (AIA) was signed into law By President Obama in September 2011 and the final
More informationpublicly outside for the
Q217 National Group: Title: Contributor: Date: Korean Group The patentability criteria for inventive step / non-obviousness LEE, Won-Hee May 2, 2011 I. Analysis of current law and case law Level of inventive
More informationPatent Law of the Republic of Kazakhstan
Patent Law of the Republic of Kazakhstan With an adoption of the Law On Amendments and Additions for some legislative acts concerning an intellectual property of the Republic of Kazakhstan March 2, 2007,
More informationEffective Mechanisms for Challenging the Validity of Patents
Effective Mechanisms for Challenging the Validity of Patents Walter Holzer 1 S.G.D.G. Patents are granted with a presumption of validity. 2 A patent examiner simply cannot be aware of all facts and circumstances
More information