Patently-O Bits and Bytes by Juvan Bonni

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25 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

  1. 2

    I commend to readers the 79 page Boundy Paper. at least for me, it is a “Must Read” for its revelation of the mindset of those law firms in the USA which routinely instruct me to do things during prosecution at the EPO that fail to maximise the legal position of their client in Europe.

    Is there a way to maximise patent value simultaneously, inside and outside the USA, or must one choose one or the other? I want to know. Reading the Paper will help me answer my own question. Meanwhile, perhaps readers have anecdotal experience of USPTO/RoW prosecution dilemmas that they would choose to share with me here?

    1. 2.1

      I agree with your reading recommendation, but would shift the focus of your follow-on subtly to the great legal answer of “it depends” (answering a slightly different question).

      It depends on the client.

      One serves the client, and the client may desire some simplified “One World Order” approach.

      Of course, what the client desires should (must) EVER be framed in the legal reality that (may on occasion) rightfully frustrate a client’s desires.

      In the realm of a patent law, one such legal reality is that there is NO such “One World Order,” and I would posit that there should NOT be any such “One World Order” based on the fact that the use patent law has always been a Sovereign-Centric type of law.

      Clients of the “Big Corp” type (aka, large established multi-nationals, often, but not always associated with Efficient Infringers) pine (and I dare say scheme) for a different reality, but that messes with the core nature of innovation protection and a Sovereign’s role therewith.

      1. 2.1.1

        Typed too quickly and missed the auto correct – please read “the use patent law” as “patent law.”

      2. 2.1.2

        Some clients file only USA, never PCT, never Europe. I’m interested though in the ones that file both at the USPTO and in the EPO. Have they ever been in a dilemma, how to reconcile maximising the value of their portfolio within the USA with maximising the value of their portfolio in Europe. That’s my interest.

        Suppose the patent is for, say, a drug-eluting stent. There are 600 million potential purchasers in Europe and the competition from other stent makers just as vigorous in Europe as in the USA (and almost as litigious). So, where are the most profits to be made, while the patent term runs? The USA or Europe? So, how does one balance the advice of outside US patent counsel with that of outside European patent counsel, when those advices conflict with each other? That’s my interest.

        1. 2.1.2.1

          Thanks MaxDrei — I understand what drives your interests. As I noted though, I would shift focus a bit based on the nature of innovation and Sovereign protection thereof.

          Those clients that DO file in multiple sovereigns would (of course) like to minimize disparities and remove as much as possible (for those items of potential detriment) having to make trade-offs. I am sure that the management of such things is interesting indeed.

    2. 2.2

      “…its revelation of the mindset of those law firms in the USA which routinely instruct me to do things during prosecution at the EPO that fail to maximise the legal position of their client in Europe.”

      Please provide some particular examples. Thank you.

    3. 2.3

      Max, it would be interesting and useful if you provided here a specific list of some of the avoidable things U.S. attorneys have insisted on doing in their equivalent EPO cases that have negatively impacted European litigation or licensing.

      1. 2.3.1

        I will mull over how much it is proper to reveal.

      2. 2.3.2

        What have they insisted on doing? Amending claim 1, to place the patent, post issue, in the inescapable trap set by the interaction of Art 123(2) and 123(3) EPC. What was it that prompted the amendment? Objection under Art 84 EPC (clarity ie indefiniteness).

        The thing is, you see, post issue, indefiniteness is not something you can use to put in issue the validity or enforceability of claim 1 in Europe, and file wrapper estoppal is an alien concept. So who cares, if the claim going to issue is to any extent within the wrapper “indefinite”? Perhaps it is even advantageous, giving the claim a (pace Prof. Mario Franzosi) Angora cat appearance (big in the infringement court, much smaller when under validity attack).

        Anybody here ever heard of the EPO’s “Bermuda Triangle”, the zone where patent claims disappear? The three vertices are Art 84 (definiteness) Art 54 (novelty) and Art 123(2) EPC (added matter).

        Tell me, do, you guys, whether all of this is old hat to you, well-rehearsed already. Or, to the contrary, incomprehensible.

        1. 2.3.2.1

          That was completely unhelpful in understanding what your specific objections to his paper are.

          1. 2.3.2.1.1

            Certainly, AJ, I must immediately agree with you.

            My utterance was indeed utterly unhelpful as far as that specific issue is concerned.

            Why? Because I don’t have (not yet anyway) any “objections” at all of the Boundy Paper. How did you come to that particular idea?

            1. 2.3.2.1.1.1

              MaxDrei,

              If you look at AAA JJ’s first quote of yours at post 2.2, the term “its” is being read as “Boundy’s paper.”

              As I read your post at 2, I too came to the view that somehow you were taking Boundy’s paper as some type of reflection on a mindset that prompted your questions.

              Maybe you just wanted to contrast US practice. Maybe you haven’t even read Boundy’s paper. Be that as it may, you raise an issue to which I view as being more tangential to any contrasts of Sovereign law (which is what drives that “mindset” that ever seems to mystify you).

              The tone of your own answers when pushed for specifics (by Paul and AAA JJ, sounds more in you noting a practice difference (file wrapper effect), and really (and merely) saying in effect, “everyone should use my eyeglasses, they work for me.”

              1. 2.3.2.1.1.1.1

                Well thanks, anon, for your sincere efforts to explain how I am failing to understand AJ’s point. Indeed, I still think that US attorneys who instruct me what claim amendments to make at the EPO have a mindset that they have acquired during the practice of law in their home jurisdiction. I want to read Boundy’s Paper so I can better understand “where my clients are coming from”. My solicitation of comments here was intended to draw out further stories of misconceptions and confusions in the course of dialogue between European and US patent attorneys. In short, I’m selfishly using these columns to try to understand my clients a bit better.

                1. No prob — admirable goal.

                  I think that Paul and AAA JJ were looking for items of the paper that you personally thought “well, that’s going to be a problem here.”

            2. 2.3.2.1.1.2

              None of the available eye roll emojis are adequate.

    4. 2.4

      Dear Max —

      I have often had the mirror-image question. I’d be delighted to work with you to find the answer. (Interestingly, the main book I rely on for my RoW drafting — Erstling, Helfgott & Reed, The Practitioner’s Guide to the PCT, makes suggestions for RoW prosecution that largely track my recommendations for the U.S.).

      It’s easy to find me and email me; I’ll preserve your anonymity. I hope to hear from you.

      David

      1. 2.4.1

        Dear David, I see both your missives and will think on them. But meanwhile, my first thought is that you can make progress most efficiently by talking to a sample of those of your US patent attorney colleagues who routinely defend patents granted by the EPO against oppositions filed against them in the 9 month post grant window. Such colleagues can tell you more persuasively than me, how US-style drafting and prosecution, when practised at the EPO, is liable to leave the issued patent as “easy meat” for post-grant validity attacks.

        In your Paper, at the outset, II A, you flag up the asymmetry, that patent owners in the USA often lose on infringement but seldom on validity attacks. I would say that there is no such asymmetry in Europe. Quite the reverse. When a patent is asserted in Europe, the first thought of the accused infringer is to put validity in issue because that, typically, will see off the threat. The entire philosophy of prosecution is different, when absolutely no deference is given, after issue, to any pre-grant decision in the EPO, and any party putting validity in issue has only to get to a “more likely than not” standard of evidence/argument, to bring the issued patent down.

        First port of call for validity attacks in Europe is not the prior art but the EPO prosecution file. Seldom does claim 1 get to issue free from a narrowing amendment during prosecution. And any such amendment could be the basis of a validity attack under Art 123(2) and (3) EPC from which the patent owner cannot escape.

        You tell us in your Paper that the CAFC is tightening up on WD. This will not surprise any FtF practitioner. Strict WD standards are an artefact of FtF. Under the EPC it is adjudicated under Art 123 (added matter). The tightening of the ratchet will continue, with every litigation between parties who invented much the same subject matter at much the same time. Interferences are history. Keep an eye on the CRISPR litigation, for example. Compare the litigation, ongoing both in the USA and at the EPO, and see how the jurisdictions are converging.

        As I say, ask around, amongst those US colleagues that have the conduct of defending patents at the EPO against oppositions. I’m now retired, and not sure I would relish any longer the sheer hard work of co-operating with you at the level of detail you would I suspect be looking for.

        1. 2.4.1.1

          I’m now retired, and not sure I would relish any longer the sheer hard work of co-operating with you at the level of detail you would I suspect be looking for.

          Wow.

          Even for you, MaxDrei, that’s weak. You want answers and have time (being retired), but you want others who are not retired (or even semi-retired) to do the legwork and reach out over to those who may be doing work on your side of the pond?

    5. 2.5

      Dear MaxDrei —

      An earlier reply has apparently fallen into another Bermuda Triangle. So here’s a replacement.

      I would be delighted to work with you to identify such similarities/differences in U.S. vs. RoW. I don’t know of any direct conflicts, but I have a suspicion that the importance of “problem solution” in EP is in tension with (but not entirely incompatible with) the “just the technology, no sell, no arguments in the specification” approach I teach in the chapter.

      I’m easy to find by google. I will preserve your anonymity.

      And yes, I found your anecdote at 2.3.2 incomprehensible. I need more context–what was the history that got you in, and why is it impossible to get out.

      Thanks, looking forward to discussing compare/contrast with you.

      David

      1. 2.5.1

        Dear David, as anon has pointed out, I’m retired (almost) and so am in the lucky position that I can please myself, what I do with my precious time. So, I’m hesitant to “work with you”. Frankly, your reference to the Helfgott book brought me up short. The best of those US attorneys and firms with which I work (or used to work) have a good grasp of how very different is Prep & Pros for RoW. Would you recommend the Helfgott book for RoW attorneys needing to get up to speed on patent value maximisation within the USA (After all, the USA is a PCT member too)?

        Meanwhile though, your suspicions about the conflicts between drafting for USA and for RoW are well-founded.

        In these columns, posters like Night Writer, de Lassus and MM seem to have some grasp of prep & pros before the EPO. Perhaps they can chime in here? At least de Lassus has revealed his true identity. Perhaps they are “up for it” to help your comparative studies?

        As to the 123(2)/(3) inescapable trap, you are in it when i) the claim you take to issue offends the provisions of Art 123(2) , added matter but ii) you cannot excise the added matter from claim 1 without, in so doing, offending the provisions of Art 123(3) EPC (no widening after issue).

        BTW, it’s not just the EPO. The courts of England, for example, are just as merciless in enforcing the trap as the Boards of Appeal at the EPO. The trap is a consequence of the need to balance the legitimate interests of rival filers engaged in fierce priority contests in a FtF jurisdiction. Follow the multi-national CRISPR litigation, as it develops. It will be most instructive.

        1. 2.5.1.1

          MaxDrei,

          As you say, “[you are] in the lucky position that [you] can please [yourself], what [you] do with [your] precious time.”

          Your choices confound.

          You seem intent on wanting to portray the EPO as uber alles, but refrain from actually engaging with any comments with substantive merit.

          For example, why exactly would: “Frankly, your reference to the Helfgott book brought me up short.“…?

          Is that not a book that you are aware of? Would you recommend a different book?

          And then you turn and ask, “Would you recommend the Helfgott book for RoW attorneys needing to get up to speed on patent value maximisation within the USA (After all, the USA is a PCT member too)?” which comes across as a purely disingenuous question, given as Davey** has already told you that his recommendations for “within the USA” are similar — but why would he have his own book for “within the USA” that you started out here recommending, if there was a different book to recommend?

          In these columns, posters like Night Writer, de Lassus and MM seem to have some grasp of prep & pros before the EPO.

          Hmmm, I would say that maybe Greg does (since his Big Pharma bias is one that is often related to a “One World Order” syndrome, but Night Writer typically makes reference to the fact that he trusts the judgment of counsel in ROW that he works with, and Malcolm (MM to newbies), pretty much shows that he does not understand prep and pros anywhere.

          At least de Lassus has revealed his true identity.

          A meaningless point.

          And with your “choice” of following up with “As to the 123(2)/(3) inescapable trap” (which Dave really did not ask for), you reveal that you really seem to only want to crow some more about the EPO way.

          But as we have interacted previously, our Sovereign ALSO has a “no new matter” rule and that rule is one of our patent rules that has very little impact in post-prosecution land.

          Do you really think that the CRISPR litigation will have at its center stage some “new matter introduced” highlight? (asked without snark, as I do not follow the CRISPR litigation).

          **Davey can be a bit stuffy, but his prepared stuff (outside of the blogosphere) really does have quite a bit of merit. Is that why you choose to retreat from engaging? Does facing merit (and the possible implications that EPO is not uber alles) frighten you?

          1. 2.5.1.1.1

            David Boundy wants to discuss comparative law. I pointed out that Greg posts here under his real name, so that David can reach out to him, if he wishes, to tap his experience of prosecution in Europe.

            David found my “Bermuda Triangle” aspect of European practice incomprehensible. The “added matter” provision of EPC law often plays a decisive role in post-issue proceedings on patent validity, routinely nixing hard-won patent rights. That is the reason why I explained it further. As you yourself point out:

            ” our Sovereign ALSO has a “no new matter” rule and that rule is one of our patent rules that has very little impact in post-prosecution land.”

            so the patent value maximisation game is definitely not the same, as between the USPTO and Europe.

            I do fully expect the outcome of the CRISPR litigation in Europe to depend decisively on how the rival parties prosecuted their respective patent applications under the PCT and at the EPO, yes.

            You say that Night appears to “trust” his EPO counsel. My impression is that he has substantial experience of prosecution at the EPO. Trust is needed, when EPO counsel drafts in a different way to that which your own US instincts steer you. The more the paths diverge, the more trust is needed. So your mention of trust vindicates my nomination of Night.

            My point about the Helfgott book is that it seems to have nothing to say about prosecution traps for the unwary. Is it then adequate, to rely on it as your guidebook what to do to maximise patent value in any particular PCT jurisdiction at all (equally whether Europe or the USA)?

  2. 1

    Impeach the lunatic Pwezident again. Jail time is next, and maybe execution of the entire family as well.

    Also: shame on those who sit silently by while innocent people are murdered for no reason. Y’all can rot in hell.

    1. 1.1

      Typically, the recommended response of merely noting your inappropriate for this forum, non-patent law poli-rants would suffice, but here the use of the word “again” calls into question whether or not the first time has been completed. Is Pelosi still playing political games?

      (and fyi, but your “for shame” is an item for BOTH political parties — you really shouldn’t stick your head in the sand and think that only one political party engages so).

    2. 1.2

      No answers Malcolm?

      Can’t say that I am surprised, as is typical of your rants, all that you are really doing is talking a dump here and moving on.

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