by Dennis Crouch
In July 2018, Amgen filed its petition for certiorari asking the Supreme Court to reject the Federal Circuit’s imposition of separate “written description” and “enablement” requirements along with their various requirements and standards. Amgen argues that the Court should simply follow the statute — requiring “a written description of the invention . . . in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.” Amgen Inc. v. Sanofi, Aventisub LLC, SCT Docket No. 18-127 (Petition filed July 23, 2018) (Cert Petition).
The basic push here is against the “possession” standard that serves as the core of the Federal Circuit’s written description requirement. Apart from any policy arguments — Amgen argues that the statute spells out the test — and it is enablement, not possession. Rather than focusing on what the inventor possesses, the Act requires the specification simple teach others — “as to enable an person skilled in the art . . . to make and use” the invention.
The brief provides a statutory linguistic argument that makes sense — the “grammatical structure [is] inescapable” and shows that statute provides one standard for judging the written description — the enablement standard.
This statutory argument goes a long way, but in my view will lack compelling force to the Supreme Court (as it did for the Federal Circuit in Ariad). Rather, for 112(a), historical cases are the key since the language of 112(a) all stems directly from the Patent Act of 1793. A grammar diagram (seemingly based upon modern language usage) is a rather weak argument for interpreting this olde language. Rather, a successful argument here should seen in light of the history of the statute and how it has been directly addressed by the Supreme Court over the past 225 years. In Ariad, the Supreme Court looked particularly to the Supreme Court decision in Schriber-Schroth Co. v. Cleveland Trust Co., 305 U.S. 47 (1938) as recognizing a separate written description (possession) requirement that goes beyond mere enablement. Although the cert petition repeatedly cites Schriber-Schroth it doesn’t actually address the portion relied upon by the Federal Circuit that served as the crux of its decision.
(Almost) sad to see this thread fade into the recesses of time – when clarity is at the cusp for the usual posters of MaxDrei (and yet another horse carcas at the well), Night Writer, and Joachim, and perhaps even Paul Morgan (with thanks to helpful contributions from Confused and Peter Kramer).
“clarity is at the cusp”. What’s that then?
I take my hat off to you, anon. But only to scratch my head. If you could only express your thoughts more clearly, you might succeed in getting more replies.
But never mind. It’s a good laugh to see you, after such a long pause, falling back on the hoary old “horses at the well” motif.
Hoary? No. While old, it not trite. but well fitting.
As for your attempted spin of me somehow not being able to explain, just count up the number of actual explanations that you have provided on this thread (that is, things more than your feelings and usual throwing of fecal matter to see what sticks on the wall).
Here’s a hint: it is a single digit beginning with zero.
On the other hand, I have engaged in and provided numerous points on grammar construction, illuminating the conflation of plausibility, explained how treaties work in the US jurisprudence (and why), among other things.
There is a phrase about carrying someone else’s jockstrap that fits you.
I might come back to this topic tomorrow. Today is the last day to provide comments to the USPTO on Berkheimer.
After 6 mos of suffering from vertigo and inability to do anything but think about 101-eligibility doctrine, I can’t pass up this opportunity.
Besides, even though I probably was not the only person to make the suggestions, the USPTO does seem to have accepted some of my suggestions from the last time I commented.
Comment: Joachim Martillo
TRIAL PRACTICE GUIDE UPDATE
Comments on Request for Comments on Determining Whether a Claim Element Is Well-Understood, Routine, Conventional for Purposes of Subject Matter Eligibility
The following comments have been submitted in response to the request for comments titled “Request for Comments on Determining Whether a Claim Is Well-Understood, Routing, Conventional for Purposes of Subject Matter Eligibility,” which was published in the Federal Register at 83 FR 17536 (link is external)(link is external) (April 20, 2018).
To ensure consideration, comments must have been received by August 20, 2018.
Submitters may review this list to ensure their submission has been received. If a comment has not been posted, please resubmit it by e-mail to Eligibility2018@uspto.gov (link sends e-mail).
Some comments in this thread pick up on the notion of “plausibility” that is used a lot in Europe in debates about i) entitlement to priority ii) enablement and iii) obviousness. Is it TRIPS-compliant, they wonder. Likewise, some are troubled by the use of the notion of “possession” when exploring the adequacy of the “written description”.
I see a distinction between i) using the notion of “possession” as a notion useful for teasing out the right answer to the statutory WD requirement, and ii) a court decision that declares a patent invalid for want of “possession”.
Likewise, courts in Europe do not revoke for a lack of plausibility but, rather, for a lack of priority, inventive step or enabling disclosure.
So how can either possession or plausible be an offence against TRIPS. Makes no sense to me. Or does TRIPS go so far as to impose a mandatory structure of argument to get to the result on the statutory ground of invalidity? I think not!
Right on cue, here a link to a blog item dated today, Aug 17, linking possession and plausible:
link to justpatentlaw.blogspot.com
EPO Decision T2274/14. Lipid composition for improving brain function. Priority 2007, issued 2011, revoked 8/2018.
Despite no data, no Worked Example, in the application as filed, patent granted. But then Nestec opposed.
The content of the application as filed, says the Board, fails to render it “plausible” that the invention delivers the effect of which Applicant boasts. There is no “inventive step” discernible from the application as filed.
What is not TRIPS compliant about any of that?
Max, it is not that difficult to understand. However, one must first be open to the possibility that a patentability test concocted by the Boards of Appeal of the EPO might not be legally sound under TRIPS. Frankly, it does not appear to me that you are open-minded enough from this perspective.
Anyway, here goes: TIPS Art. 29.1 sets a standard for enablement. If a patent application passes that standard, then it is enabled as far as TRIPS is concerned (though this says nothing about whether the application is novel, inventive, etc.).
The whole purpose of TRIPS is to establish an approximately level playing field, so that Member States cannot artificially raise or lower their patentability standards in order to gain unwarranted advantages for local industries (or create non-tariff barriers to international trade). Therefore, TRIPS does not allow Member States to set an enablement bar that is any more (or less) onerous than that set out in Art. 29.1.
Thus, based upon the language of Art. 29.1, the ONLY relevant “test” for enablement is whether the application discloses “the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art”.
You will note that this test does NOT refer to concepts such as “plausibility” or “possession”. It merely requires the claimed invention to be reproducible by those skilled in the art, in the light of the disclosures of the application.
Other patentability bars under TRIPS are less well defined. Thus, for example, TRIPS indicates that patents shall only be granted for inventions that “involve an inventive step” … but does not prescribe a method for determining the presence of an inventive step.
This does not provide Member States with carte blanche to conduct inventive step assessments however they see fit. For example, I think that it is pretty clear that inventive step has to be assessed relative to the prior art. However, I am pretty certain that TRIPS permits the use of constructs such as the EPO’s problem-and-solution approach … and hence most likely permits the EPO to consider whether a claimed invention (plausibly) solves the objective technical problem that it addresses.
Thanks, Confused. On enablement, I take it that there is no difference in text between TRIPS Art 29.1, the PCT, and EPC Art 83. Where there is a dispute between parties, whether any given disclosure is or is not enabling, who bears the burden of proof, and what shall be the standard of proof? Given a conflict between the witness evidence of opposed technical experts, does not “plausibility” have a role to play, in helping the tribunal to judge which of the opposed experts adduces the more persuasive evidence?
Where am I not seeing it right? In all of this, where does non-compliance with TRIPS creep in? Can you help me further?
Yes, I can help you further.
Similarity / identity of wording between the EPC and TRIPS is not enough. It is the end result of the (patenting) process that counts.
Allowing Member States to put the “right” words into their patent laws but then allowing them to interpret (or enforce) those laws in any way that they see fit would render TRIPS entirely ineffective.
So this then begs the question of whether the “plausibility” standard used in Europe to assess sufficiency of disclosure falls within the bounds of the correct interpretation of Art. 29.1 of TRIPS.
One can quibble over the “correct” interpretation of Art. 29.1. That is no doubt where your views and mine part company. However, I would ask you to consider this question very carefully: if, as a matter of fact, the patent application as originally filed provides sufficient information to enable reproduction of the claimed invention, how is it possible to nevertheless find the application to be “non-enabled” under TRIPS Art. 29.1?
It is perfectly possible for a patent application to provide an enabling disclosure at a time when the applicant was not “in possession” of the claimed invention. Those are the situations where the applicant makes a “lucky” (or “educated” / “informed”) guess about what will work. My view is it is not the purpose of patent law to deny protection to an inventor who has held up his side of the bargain (ie an inventor who has told the world how to work his invention).
The problem though, Confused, is that inventive step has become a shell game.
IF one were to take the inventor at their word (as would be required if your Article 29.1 were acknowledged to have been met, then plausibility – as has seeped into the various other sections of EP law – must also be met.
Plausible – by definition – in and of itself is directly on point as to being enabled. It is but a gossamer veneer to say that there is no incentive step BECAUSE something (either directly in the claim, or in the supporting specification) was not enabled and thus something was not plausible.
There is nothing that can have “inventive step” that has not been enabled. The epitome of not enabling something is that THAT something is not plausible. A rose by any other name, and all.
What I see here (per our other discussion points) is that there is a ceiling provided by 29.1 that is being broached by importing (purportedly) higher enablement requirements by Trojan horse changes in other sections.
Are these other items actually higher? That may be a fair discussion point. If 29.1 is met, and somehow that is NOT enough to establish plausibility – no matter where else plausibility is inserted – then THAT is your TRIPS violation (per your suggested vice of the US).
Confused,
I do not think the following statement of yours is quite correct in how you may be applying it:
“The whole purpose of TRIPS is to establish an approximately level playing field, so that Member States cannot artificially raise or lower their patentability standards in order to gain unwarranted advantages for local industries (or create non-tariff barriers to international trade). Therefore, TRIPS does not allow Member States to set an enablement bar that is any more (or less) onerous than that set out in Art. 29.1.”
As it seems that you are applying it, TRIPS must be a ceiling across the board, and no Sovereign may differ (anywhere).
But that is not the proper interpretation, and I think that the view of some “world wide” level is to blame.
Instead, a Sovereign remains open to set some things as a floor and others as a ceiling – but must do so regardless of applicant nation of origin. There is NO “world wide set level.” There is – and remains – a Sovereign by sovereign level (with that sovereign by sovereign level to be the same for any one of any nation electing to play in that sovereign.
Anon, TRIPS is accommodating of a range of different patent laws, in the sense that (in relation to most but not all aspects of the patenting process) it sets both minimum and maximum bars for patentability.
Signing up to TRIPS (ie being a Member State of the WTO) means committing to bringing your patent laws within the “acceptable” range. A Member State can pick and choose their own way of doing things within that range. What they cannot do, however, is set laws (or tolerate judicial interpretations) that produce results outside of the acceptable range. If that happens, then other Member States are entitled to institute dispute resolution proceedings at the WTO.
We may well be both correct, Confused – leastwise to the extent that a Sovereign has enacted specific treaty elements into law. I suggest though that there remains NO “One World Order” of a single, complete, and binding “must,” and patent law remains – as it always has been – a “sovereign centric” domain of law.
Anon, I never suggested otherwise … or at least did not intend to. Indeed, you will note that I started the thread on TRIPS by talking about the OBLIGATIONS of the US under that treaty.
Whilst there was a brief question mark about whether ratification of TRIPS by the US made (parts of it) directly applicable under US national law, I think that we have now established that Public Law 103-465 only enacted TRIPS with respect to the provision governing patent term (and not any other provisions, whose effect under US national law were explicitly disavowed).
This means that the US is free to carry on as it wishes regarding current, national patent law. However, it also means that there could be (international, dispute resolution) consequences for the US, in view of the fact of the obligations under TRIPS that the US is not honouring. This happened to Canada, where the situation was eventually resolved by amendments to Canada’s patent law (to bring it into line with the TRIPS provision that Canada’s previous law had violated).
We are in accord on this point, Confusion.
“Likewise, courts in Europe do not revoke for a lack of plausibility but, rather, for a lack of priority, inventive step or enabling disclosure.”
Obtuse. Is it deliberate?
“I see a distinction between
i) using the notion of “possession” as…statutory WD requirement, and
ii) a court decision that declares a patent invalid for want of “possession”.
??
Did you mean to leave the comment like that?
Yes.
Do you realize that leaving the comment like that means that you intended to say nothing meaningful?
No.
Your lack of realizing that is NOT a small part as to why your posts so often are challenged as ludicrous.
It is one thing to have an opinion (everyone has one, and anyone can share theirs).
It is another to have an informed opinion (which makes legal discussions actually valuable).
It is yet another to not even care or bother to realize that what you are posting is tripe, and eminently meaningless – as are the comments of your so very often.
Deciding whether specific subject matter is “enabled” is problematic because one cannot do it fairly unless one has the evidence of technical experts, tested by cross-examination.
This is not necessary for deciding whether Applicant had “possession” at the filing date or, as the EPO would see it, added matter during prosecution at the PTO.
In this way, the notion of “possession” provides an efficient way for the PTO to rule on priority contests under the FtF regime of the AIA.
Discuss!
On what basis do you claim “this is not necessary?”
It is absolutely necessary – even for running on ANY priority contests. And how often would your (supposed) out of a priority contest occur in a FtF regime, let alone a FItF regime under the AIA (under the AIA, there is no FTF, as the regime is correctly labeled a First Inventor to File regime).
Your sense of “efficiency” seems misguided at best, and a ludicrous reach on its face.
I’m reading the Auris decision (Fed Ct on “possession”) in the context of the current Battle Royal going on before the Boards of Appeal of the EPO between the CRISPR Group in Califonia and the one in New England. Which of those Groups was the First to File?
One patent was just revoked at the EPO, inter alia for want of “written description”, which reminds me of the Auris case. There is a lot of money involved in that revoked European patent. EPC-land has 600 million consumers. And although the Decision is hot news it is only by the Opposition Division. The Appeal Board has not yet spoken.
How about enablement, as the issue to resolve the dispute between the parties? Thinking on this, I recall MM’s comments on the eligibility issue in software patents. Neither side will attack for lack of eligibility because that attack bites back on its own patent portfolio just as effectively. So it is, that in chem/bio, one refrains from putting enablement in issue for fear of blowing away one’s own patent holding. In the CRISPR patent priority contest at the EPO, both sides deploy WO publications drafted to best practice standards. Which of the two parties is ready to assert that the other’s disclosure is non-enabling?
But somehow the priority contest has to be resolved. The notion of “possession” fits perfectly with First to File environment and the 40+ years the EPO Boards of Appeal have accrued in adjudicating priority contests. Under the EPC, by the way, the Established Caselaw of the Boards of Appeal of the EPO is unassailable, because no national Supreme Court sits atop the EPO’s Appeals Directorate. Good so, I say. Non-specialist Supreme Courts laying down Binding Precedent tend to impede rather than promote the quest for legal certainty in matters of patent validity.
I await with interest to see how the “possession” doctrine thrives under the interference-free FItF (call it what you will, Rose by Any Other Name) AIA. It’s simple to understand, it’s intuitively right, it’s relatively easy to adjudicate. Bring it on!
If plausibility is involved, brush away the veneer of which (other) section of law is such being inserted into and return to answer the question of enablement.
If indeed enabled, then must be plausible, then the insertion of plausible wherever else is moot.
23.2.1
Inapposite to the immediate point.
You continue to be obtuse, even with the gentle chiding from Confused. You need to open your mind and see through the thin veneer concocted with “plausibility.”
See the shell game in process.
Understand that if the single section of enablement is actually met, then the hobby horse of plausibility must disappear – and disappear wherever it is being inserted.
Determining enablement is a question of law based on underlying factual findings.
Indeed. Just like obviousness. And no easier than obviousness.
There are easier routes to a finding that a claim is not valid, aren’t there Joachim?
There is a practical need to resolve questions of validity of a claim without resorting to a full-blown enquiry into what was obvious. Aren’t there Joachim?
Whether or not there are easier ways to challenge a granted claim – alleging it to be not valid – ALL elements of the law must be met while examining claims (and yes, amendments to claims).
As such – any type of “relative ease” is at best a minor point. “Inquiry” as it were (examination) does NEED to properly cover all of the items.
As I have noted, what I can see in the EPO treatment of “plausibility” is a leakage of not properly gauging enablement in a first instance. If properly gauged (and engaged), something deemed enabled cannot possibly have an issue with “plausibility,” no matter where that “plausibility” is imported into considerations.
It’s amazing that no one as yet called out the shell game so obviously [pun intended] going on.
Just a side note. Don’t most obviousness judgments result from underreading KSR v. Teleflex?
Cobbling together limitations is a no-brainer for the most part, but KSR v. Teleflex requires more, for it states, “If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.”
Maybe I have mostly read poorly argued office action and review proceeding documents that argue for obviousness, but the party claiming obviousness really should create a workable design and plan to implement the combination alleged to be obvious as if he had no knowledge whatsoever of applicant’s or patent owner’s invention including its existence.
Even in the predictable arts that may be very hard. As far as I know, no one else has managed to do what we did at Clearpoint with parasitic or stray capacitance or inductance. It required developing a test suite to determine PCB characteristics that combined a lot of standard tests and a lot of math partially developed by experimentation.
Clearpoint tended to operate by trade secret, but suppose it patented a board and provided full enablement for the manufacture of that board. Suppose that the patent claims were challenged on obviousness grounds by cobbling together a bunch of prior art references. The petitioner would never have been able successfully to create a working board without the information contained in the patent to Clearpoint’s invention.
Given the discussions in this thread about written description in the context of amending a claim during prosecution, I want to invite readers to review on the PatentDocs blog, August 7, 2018, the case of Otonomy v Auris.
Auris US ‘865 issued June 30, 2015. It tracked back to a PCT filing on September 28, 2005. The DC gave Auris the benefit of that date, thereby seeing off Otonomy’s prior art
But the Fed Ct found that the only WD Support for the claimed invention was in an amendment that Auris filed at the PTO in the year 2014. Accordingly, Auris lost on appeal to the Fed Ct its priority contest with Otonomy.
As the Fed Ct observes: the test for sufficiency of WD is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession…..”. Possession in 2005? Or not until 2014? The difference is enormous.
What the EPO calls “Free from added matter” the Fed Ct calls “Possession”.
Now that the USA is immersed in a First to File environment, to throw Schriber-Schrott jurisprudence out of the window would have grotesque and egregious repercussions.
Max, is contravention of 37 CFR 1.121 (f) during prosecution grounds for revocation of a granted patent? If so, then I think that the “possession” standard applied to 35 U.S.C. 112 is entirely unnecessary … especially as it appears that there is no reason for the courts not to apply that standard to unamended claims.
Do courts frequently revoke patents during prosecution for violation of 37 CFR 1.121 (f)?
I have only amended a written description and drawings in preliminary amendment, and I have made minor corrections under 37 CFR 1.312. In preliminary amendment (and I suppose in written description and drawing amendments during substantial prosecution), I carefully detail and justify the changes. If there were a problem, the examiner should have caught it.
Here is an example preliminary amendment.
link to drive.google.com
I meant:
Do courts frequently invalidate patents during proceedings for violation of 37 CFR 1.121 (f)?
I didn’t mean:
Do courts frequently revoke patents during prosecution for violation of 37 CFR 1.121 (f)?
to NOT understand Schriber-Schrott (and my – unanswered – point vis a vis what is nigh boilerplate) would have even more grotesque and egregious repercussions.
Interesting in parts, this thread, for its discussion of the concepts of enablement, new matter and “possession”.
With the arrival of the AIA and FtF, the concepts of “conception” and “diligence” are futsch. Instead, as between rival filers, the only thing that “counts” is who filed what, when, at the PTO. It happens very often, that trade rivals P1 and P2 file at much the same time, P2 just after P1, for much the same subject matter, concept X, but with different illustrated embodiments of X, and a rule is needed, to sort out who gets what in terms of exclusive rights.
Further, it often happens, that i) the PTO search reveals that concept X, as such, is unpatentable and ii) P1’s perusal of P2’s 18 month PTO “A-publication” alerts the earlier filer (P1) to what is the still patentable invention (Xabc) of true commercial value. That is, what P2 claimed and what P1, with hindsight knowledge of P2’s disclosure, should have claimed in P1’s application as filed, on P1’s (earlier) filing date.
P2 was the party who was in truth the first to file on Xabc, but now P1 has slid into his pending application a claim to Xabc. Shall P1 be allowed to take that claim to issue, to deprive P2 of the chance to practise his own invention?
Some here assert that P1 fails for want of an enabling disclosure. Others would assert that P1 fails because the inserted claim adds matter. I say that what we in Europe call “new matter” the courts of the USA dub a want of “possession” at the P1 filing date.
I’m curious to see how the courts decide such cases, as more AIA cases go to trial.
You assume your own conclusion and STILL do not follow the conversation below.
The “hook” has not changed one whit in regards to the passage of the AIA. Our law on the disclosure/enablement/“possession” triad remains as it was prior to the AIA. I know that YOU “want” it to be different, but your desire has no place here.
You cling (seemingly perpetually) to a hobby horse that is just not pertinent.
I’m not suggesting it is new. Just that under FtF it will assume greater importance in the administration of justice and the resolution of disputes between rival filers at the USPTO. There are more than 1000 trials of patent validity, between rival parties, at the EPO, each year. A high proportion of them are between parties who file heavily and continuously, on similar subject matter. Representing these parties is how I earn my crust.
“I’m not suggesting it is new.”
I am glad to hear that. As it is, your posts though are not in sync with the sentiment that you are expressing.
“Representing these parties is how I earn my crust.”
Nice to see the admission as to the source of your bias, and to see how your “not suggesting” keeps on coming across as actually suggesting.
It is beginning to dawn on me that the problem here is, not for the first time, a lacuna in the US statute that the courts are struggling to plug.
TRIPS does not directly address the issue of how to handle amendments to the claims that introduce new subject matter. However, that does not mean that it is impossible to interpret TRIPS Article 29 as permitting Member States to set a bar that requires the application as originally filed to contain a clear and unambiguous disclosure of “the invention” defined in the claims.
Other Member States have legal provisions that directly address this point. In the US, however, all we have is 35 U.S.C. 112. Frankly, that provision seems ill-equipped to address the issue at hand. This is because requiring 35 U.S.C. 112 to perform a dual (enablement AND added matter) function necessitates interpreting “The specification shall contain a written description of the invention” to simultaneously have two, very distinct meanings: the first meaning being that the specification must provide an enabling disclosure and the second meaning being that the specification must provide a clear and unambiguous disclosure.
With this in mind, it seems to me that such “forced” / improbable interpretations of the statute (and all of the crazy arguments over sentence constructions) could be eliminated simply by amending 35 U.S.C. to include a separate provision that prohibits the addition of new matter.
Any takers?
Hooray! Somebody who gets the point.
Years ago, when the AIA came into effect, I explained that under a First to File regime, the S 112 “written description” requirement would assume additional importance. Whether you call it “added matter” after filing or “possession” at the filing date doesn’t matter to me. What does matter is covetous claiming. Or, if you will, a workable FtF successor to interference proceedings, to ensure that it is indeed the first to file at the PTO with an announcement of the invention claimed in the issuing patent, together with an enabling disclosure of that subject matter, that gets the exclusive rights to that very subject matter. And not misappropriator P, who re-writes his claims to capture the invention he discovers in the A-publication of q’s patent application, filed a week later than his own patent application.
I think the correct interpretation of S 112 is not one that is “forced”. In short, if they are so minded, the courts can fix the issue without any need to amend the Statute. But will they? Are they being briefed adequately? are they smart enough to see the core issue?
This is not an AIA related issue.
Never has been.
“I think the correct interpretation of S 112 is not one that is “forced”. ”
I am still waiting for you to provide your version of the controlling grammar.
For all of your “Hooray” about someone reaching what you think the point is, you seem unable or unwilling to actually make the point yourself.
Confused, please see Peter Kramer at 14.1.1.1.2.1.1 below. Can you answer his point about the long reach of the notion of “enablement”? Is it long enough to deal with your worry about added matter?
Me, I’m mulling it over still.
Not to diminish Peter’s part, but I laugh at your refusal to give credit where credit is due.
Would it pain you that much to recognize my prodding of you?
No, it does not deal with my concern. Non-enablement and addition of new matter are, in conceptual terms, entirely distinct from one another. For one thing, there can be no added matter objection to an original claim, whereas non-enablement can apply to either an original or an amended claim.
This debate is starting to remind me of the case currently being considered by the UK Supreme Court, as it relates to the use of the “plausibility” standard for assessing enablement. To my mind, “plausibility” (much like “possession”) has no place in the assessment of enablement. This is because the standard set by TRIPS merely requires the disclosure of the patent to enable reproduction of the claimed invention. That is a matter that can be decided purely on the facts, without any need to consider whether, based upon the disclosure of the patent and common general knowledge at the filing date, it was “plausible” that what the patent tells the skilled person to do would actually work as claimed.
It is a different question entirely whether TRIPS permits Member States to use different legal grounds to deal with purely “speculative” (but subsequently justified) claiming. For example, I am not sure if there is any basis under TRIPS to object to the European Patent Office applying a “plausibility” standard for the assessment of inventive step.
That’s a very interesting observation, thanks, Confused.
Indeed, the “plausibility” test criterion troubles many people. But I’m not one of them. My practice is largely with oppositions at the EPO, where the OD and the TBA has to find a way to do justice between the opposed sides, upholding good patents and striking down bad ones.
Setting the terms of the validity debate around the concept of plausibility allows both sides to set out their case optimally. Do you disagree? Do you think it skews the result unfairly?
The question at the heart of all of this is whether it is (or should be) a function of the patent system to provide a reward for “educated” (or, as the case may be, “lucky”) guesses made by patent applicants.
To be frank, I do not have a strong opinion either way on this issue. That is, I can see circumstances in which court rulings one way or the other might be genuinely “harsh” on either a patentee or a putative infringer. However, in general, I would be in favour of upholding validity in the case of an “educated” guess.
Nevertheless, if legislators want to prohibit the granting of patents based upon such guesses, then my view is that it would be necessary to amend both national and international laws to achieve this objective. This is because, as things currently stand, there is nothing in TRIPS that permits Member States to apply a higher “disclosure” bar than that set out in Article 29.1.
I remember when the AIA going through Congress and the headless chickens were running amok, fretting that inventors would have to file on mere speculation or else see another get in first, at the PTO. I counselled that filing prematurely was the worst thing to do. Your application would be published at 18 months but you would end up with nothing.
The “plausible” standard seems to me to be working well. Those with a specification that makes their claimed subject matter “plausible” (with in vitro comparative data, for example) do alright. Those with no such data in their application as filed routinely come to grief.
The skill of the drafter (inventor, and inventor’s employer) is to draft a finely graduated set of claims (anon’s Ladder of Abstraction, if you will) that will deliver maximum enforceable scope from a small set of experimental data. But here again, the “plausibility” standard is useful for settling what scope is allowable.
I don’t understand how “plausible” is not in line with TRIPS. Again, see Kramer in this thread.
“I don’t understand how “plausible” is not in line with TRIPS.”
Plausible = f(enablement).
You have yet to answer my questions on point as to 112(a) and the grammatically correct construction. You have “hinted” at “easy,” “no problem,” and the like, and yet nothing solid from you.
Shall we take this thrust here with “plausible” to be that the single “how” clause in 112(a) is the ONLY statutory (and if need be, statutory/treaty-modified) authority on how to judge BOTH of the “what” or “of” clauses?
Is it because this is an area in which you earn your bread that you have NOT committed to an actual answer?
Lucky? A scientist (a friend who was professor ant an Ivy) once went to China (over twenty years ago) to collect urine samples of cancer patients. He realized how unique a hormone in one of the samples was – never before or since – seen in nature. A monoclonal antibody to the hormone was raised and patented, and is still used in diagnostic laboratories throughout the world to this day. Louis Pasteur: “Chance favors the prepared mind.”
Congress: “Patentability shall not be negated by the manner in which the invention was made.”
I think Congress agrees with Pasteur.
Peter: I think that you misunderstand the meaning of “lucky” in the context of my post. It refers to the subject matter of a claim in an application that was filed at a time when the applicant was not “in possession” of the invention described by that claim (or, in European terminology, at a time when it was not “plausible” that the invention would work as claimed … in the sense that the claimed invention was purely speculative at that time).
Confused,
You appear to now be “judging” “possession” under the enablement “how.”
As noted herein, the plausibility = f (enablement).
Was that your intent?
Anon, “plausibility” is currently a confusing (and confused!) concept under European laws.
It is primarily used by the EPO to assess inventive step. In that context, it is most definitely NOT related to enablement.
It has also been used in the context of enablement, in particular by the UK courts. We shall soon see what the UK Supreme Court makes of that approach.
My feeling is that it is not possible to draw a direct connection between either of these approaches and the “possession” standard adopted by the Federal Circuit. However, it seems to me that they attempt to address the same, underlying “evil”: namely, what one might term purely speculative claiming. I will freely admit that I may well be wrong on this, though.
Confused,
Thank you.
I am not sure how the folding in of “inventive step” is contemplated with “plausibility.”
I would think that you either have “inventive step” or you do not, and that judging inventive step is to be taken at taking the description at its word. If that were to be done, then the (seemingly embedded) question of enablement of that word is what is really going on.
Two questions for you:
1) is having an apparent embedded enablement question an understandable position? That is, does the view “translate” such that you can see that the inventive step examination is perhaps doubling (or even merely sharing) the duty of the enablement examination?
2) per your own views on “floor/ceiling/neither” per TRIPS regulations, is now the EP requiring more than TRIPS allows for the “inventive step” determination?
Confused,
I did some quick checking at lunch and realize that it is far worse that you portray.
“Plausible” appears to be MIS-used and is seeping into several different patent concepts. It’s original seepage into “inventive step” appears to be exactly in line with my initial reaction: there is a conflation of enablement into what is your “obviousness” realm.
One of the articles I read mentioned that ALL of “plausibility” is outside of TRIPS.
If so, then your original foray into US violating TRIPS may be turned around in spades with EPO allowed seepage of “plausibility” into several patent doctrines.
We have such a separate provision.
See Code of Federal Regulations. 37 CFR 1.121 (f):
“No new matter. No amendment may introduce new matter into the disclosure of an application.”
What is meant by “disclosure”? If that encompasses the claims (as well as the description), then I think that settles the matter: the “possession” standard applied by the Federal Circuit represents both judicial overreach and a contravention of the obligations of the US under TRIPS.
One more question, though: why do PTO Office Actions always object to questionable amendments under 35 U.S.C. 112 (instead of under 37 CFR 1.121 (f))?
Disclosure is the submitted application – everything that the applicant has disclosed to the Office.
I do not know the answer to your question as to why the hook of 35 USC 112 is used.
I believe that disclosure is used since amendments may cover more than just the claims. Amendments to other parts of the specification including drawings are covered by 37 CFR 1.121(f).
Anon: are you suggesting that 37 CFR 1.121(f) in some way duplicates part of the scope of 35 USC 112? That would seem a somewhat unlikely explanation.
Not what I am suggesting.
And thank you for above distinguishing that which MaxDrei appears to desire to conflate.
If that is not what you are suggesting, then my original question still stands. Perhaps it will help if I rephrase:
If the PTO is of the view that an amendment to the claims introduces new matter, why do they object under 35 U.S.C. 112 (and not 37 CFR 1.121 (f))?
Put another way, if the PTO’s basis for objecting is the introduction of new matter, why raise 35 U.S.C. 112 at all? If that provision does not duplicate 37 CFR 1.121 (f), then the PTO is effectively trying to deal with a problem of new matter by alleging non-enablement. Whilst I can see how that might work in some cases, I can also see other circumstances in which new matter might be adequately enabled by the disclosures of the application as originally filed.
“If the PTO is of the view that an amendment to the claims introduces new matter, why do they object under 35 U.S.C. 112 (and not 37 CFR 1.121 (f))?”
That is the question that I thought you asked in the first place.
My answer remains the same: “I do not know the answer to your question as to why the hook of 35 USC 112 is used.”
Maybe someone “in charge” at the Office can supply an answer.
first reply is caught in the “do not have a dialogue” count filter.
As to “I can also see other circumstances in which new matter might be adequately enabled by the disclosures of the application as originally filed.”
How? Are you not here just “begging the question” as to what does it mean to possess (noting that the captured/blocked comment touches on that it appears that your version of possessed is TIED TO plausibility = f (enablement)).
Can you explain how a disclosure that properly and fully enables somehow does not “possess?”
Can you do this for OUR 112(a)?
Can you show the grammatically driven reading of our 112(a) that provides for such a view? (and by this, I mean a proper, or at least cohesive grammatically driven reading)
anon asks the following.
I may be able to give an example that even belongs to predictable arts. (Unfortunately, the case was not fully litigated.)
I worked for Clearpoint, whose products were reverse engineered without infringement from patent-protected technologies.
Wang accused a Clearpoint memory product of infringing:
1) patent 4656605, Single in-line memory module
2) patent 4727513, Signal in-line memory module.
The case never went to trial. Clearpoint built its memory product without a capacitor because thanks to careful engineering the Clearpoint board used stray or parasitic capacitance in place of a capacitor.
In a trial we would have argued:
1) there was no literal infringement,
2) Wang did not possess an embodiment that used stray capacitance as a capacitor (a very hard engineering problem that Wang did not solve, but we did),
3) Doctrine of Reverse Equivalents because the Clearpoint memory operated in a substantially different than the technology which Wang patented.