Our answers to DII 2012
Here a rough answer for the DII 2012. We do not show the full argumentation required for scoring marks.
Looking forward to your comments,
Jelle Hoekstra, Pete Pollard, Roel van Woudenberg
Question 1 Legal status of our patent rights and those of Watergate
EP-1 abandoned, not published
Describes:
- General part: bundle of fibres B [may be of any material, pref. ceramic of class C] in combination with nozzle N [may be of any material, pref stainless steel –S];
effect: removes incrustations - Single specific embodiment: B of C + N of S; combination is essential,
effect: prolonged life
We consider it unclear:
- whether the essential aspect (as described in the only embodiment) also should be seen as essential for the general part in the sense that the general part is not really enabled for anything else than the specific embodiment, or
- that the specific embodiment should only be seen as describing what is essential for achieving the corrosion effect, indicating that the two limitations C and S should be used in combination for this effect and cannot be used individually as there would be no argument for inventive step as a fallback
There is not really enough technical detail in the exam and confusing information (e.g. remark of examiner on essential) to come to a final conclusion on this. We will later on see what the exam committee intended.
So, there are two possible approaches:
- Approach 1: the broad embodiment is enabled; one specific embodiment is shown additionally where C or S cannot be used separately in a fallback position
- Approach 2: it is essential to always use the specific combination N of S + B of C, the broad embodiment N + B is not enabled
In the exam you could best choose one of those approaches and where you have time briefly indicate how it might be in the other approach. We start from approach 1 and will indicate differences for approach 2.
APPROACH 1 Broad claim in EP-1 enabled
PCT-1 single claim: B+N; description: same as EP-1
Claims prio from EP-1, OK; Eff. Date: 31-7-09
New and inventive (for removing incrustations).
However, in approach 2, the claim to prio from EP-1 is not OK, because the use of C and S is essential; Eff. Date: 3-5-10. The broad claim B+N is not enabled [and not new over prior right EP-WG]. So, not patentable.
EP-2
In content similar to EP-1, but: only in the general part N has been broadened to means for injecting air into the fibre bundle (abbrev: I)
- Claim 1: B+I ;
Claims prio from EP-1, Not OK, I is more generic than N in EP-1: Eff. Date: 2-8-10;
Web site disclosure on 30-7-2010 destroys novelty; Also EP-WG is relevant: see below - Claim 2: B of C + I=N of S; Prio OK. Eff.date: 31-7-09.
Only relevant document is EP-WG: see below
US-WG
Describes: N + B of P, pref. N made of stainless steel (S).
Claim 1: N+B; Seems patentable for US.
EP-WG
Same content as US-WG, assumption same claim, can otherwise be amended to it.
Claims prio from US-WG.: OK; Eff. Date: same as US-WG, 30-4-2010
Patentability: prior right situation with respect to EP-2
EP-WG vs. EP-2 – approach 1
EP-WG is earlier for claim 1 of EP-2; the species B+N destroys novelty of B+I
EP-2 earliest for claim 2 (B of C, N of S), EP-2 can get this;
This species in EP-2 destroys novelty for claim in EP-WG.
EP-2 does not disclose N+P, so EP-WG will get it (novelty only)
Summary – approach 1
| Membrain | Watergate | ||
Claimed invention | EP-2 | BR, IN (PCT-1) | EP-WG | US-WG |
B + injector | - not new EP-WG, web site | - not discl | - not discl | - not discl |
B +N | - not discl. | + | - not new EP-2 | + |
B of C, N of S | + | - not claimed | - not discl | - not discl |
B of P, N | - not discl | - not disclosed | + | + |
EP-WG vs. EP-2 –approach 2
EP2 earliest for B+N in specific combination with C and S, destroys novelty of B+N in EP-WG
EP2 does not disclose N+P, so EP-WG will get it (novelty only)
EP-WG earliest for B + N, destroys novelty of B+I in EP-2
EP-WG does not disclose C, nor stainless steel, so EP2 will get N of S + B of C
Summary – approach 2
| Membrain | Watergate | ||
Claimed invention | EP-2 | EP-WG | US-WG | BR, IN (PCT-1) |
B + injector | - not new EP-WG, web-site | - not discl | - not discl | - not discl |
B +N | - not discl. | - not new EP-2 | + | - not enabled |
B of C, N of S | + | - not discl | - not discl | - not claimed |
B of P, N | - not discl | + | + | - not disclosed |
Q2 Coating K
Most relevant prior art: as long IPER not completed: IPEA file not public. So, disclosure of K in that file not yet public; interview tomorrow: not public
Seems new, inventive (stiff, not vulnerable to vibration, cheap)
File new application fast (tomorrow interview, at least until then; not possible to withdraw demand or PCT-1 after 30 m). File new application for fibres of P with coating K or even coating K alone (if new). May also be claimed in combination with N and N made of S.
File priority then go PCT or immediately PCT, then go to EP, US, BR, IN.
Q.3 Improvement
Based on PCT-1: add claim on B of C, N of S in BR, IN.
Not useful to just claim B of C, N or B, N of S because for the special anti-corrosion effect C and N must be used in combination.
N+P or B + any nozzle cannot be filed anymore, already anticipated via, e.g., EP-WG, US-WG
Approach 1:
Can still enter EP with PCT-1 via further processing; this gives coverage in EP for B+N. After having completed this EP-2 can be withdrawn.
Watergate can in WG-US still claim where N of S. To be new in EP-WG over EP-2 this must be claimed in combination with P.
| Membrain | Watergate | |||
Possible claims | EP-2 | BR, IN, EP (PCT-1) | New | EP-WG | US-WG |
B+injector | - | - | | - | - |
B +N | -. | + | | - | + |
B + N of S. | - | - | | - | + |
B of C, N of S | + | + | | - | - |
B of P, N | - | - | | + | + |
B of P + N of S. | - | - | | + | + |
(fibre P+) K | | | + | | |
B + any nozzle | - | - | - | - | - |
Use of nozzles other than N in combination with any known bundle is free for everybody.
WG get B+N but only in US. Client gets B+N in EP, BR, IN. Can block one another in those countries. May consider cross-license to get rights in all those states.
WG gets bundle of P + N in both EP and US. Client cannot use this in those countries (BR, IN seem free). Client gets K (+P), can offer cross license for the use of P+N.
Client gets B of C + N of S in EP, BR, IN, and possibly US. Can also throw this into the deal.
Approach 2
Difference with respect to approach 1. Since the only possible claim in PCT-1 is B of C, N of S, and this is the same as claim in EP-2, a late entry with PCT-1 into EP is not useful.
| Membrain | Watergate | |||
Possible claims | EP-2 | BR, IN (PCT-1) | New - membrain | EP-WG | US-WG |
B+injector | - | - | | - | - |
B +N | -. | - | | - | + |
B + N of S. | - | - | | - | + |
B of C, N of S | + | + | | - | - |
B of P, N | - | - | | + | + |
B of P + N of S. | - | - | | + | + |
(fibre P+) K | | | + | | |
B + any nozzle | - | - | - | - | - |
WG will get B+N but only in US; so, client cannot use that in US, but seems not main market. EP, BR, IN are free.
WG will also get bundle of P + N in both EP and US. Client cannot use this combination there, but BR, IN seem free. Client gets K (+P), can offer cross license for the use of P+N.
Client gets B of C + N of S in EP, BR, IN. Can also throw this into the deal and try to get right to use B+N in US.
Q.4
Art.106/108 – appeal by Dialab within 2m i.e. before 27/2/12+10d+2m à 9/5/12.
Dialab could also file new ground, but -G10/91, hn3- however, new ground only allowed in appeal if proprietot agrees.
After appeal filed (G4/91; G1/94), client can intervene in the pending opposition (appeal) proceedings – Art.105(1)(a) within 3m from 6/2/12+3mà 6/5/12 – so appeal must actually be filed also before this date.
Intervenor can base intervention on new ground and shall then be remitted to first instance G1/94, r.13.
Intervener does not become party to the appeal - G3/04, r.10. But after remittal, sole appellant can withdraw G3/04.
New ground = lack of inv,step over D1 + common general knowledge.
Encyclopedia is published on filing date of EP-CART, not before, so Enclopedia is itself no prior art. But Encyclopedia = proof of common general knowledge at that time T766/91.