Subject Matter Relationships: the need for strictness, complexity and fuzziness

Valentine’s Day made this Kat think about relationships: the cruelty, the complexity and the cuddles. This progressed to patent law and how subject matter ‘relates’ to other subject matter. How is patent law cruel, complex and cuddly? For those of you who are not as obsessed with patents as I am, a few words of background. Practitioners spend a lot of their time showing:

* how claims are novel and inventive over what is known (i.e. patentability over the prior art),
* why the claimed matter represents the same invention as described in the priority document (and so is entitled to priority), and
* why amendments to the claims don't go beyond the contents of the patent application as originally filed (i.e. why the amendments don't add matter).

In patent litigation a lot of people spend a lot of time thinking and arguing over whether the claims cover particular activities being carried out by third parties (i.e. whether there are products and activities which are infringing the claims).

Cruelty: what is the ‘same invention’ for priority and for double patenting?

Good fences make good neighbours

The European Patent Office (EPO) finally decided on what the ‘same invention’ was for priority purposes in G2/98. Before this decision there was the possibility that trivial features or those that did not contribute to the technical effect could be ignored when assessing whether the invention described in the priority document was the same as that described in the Convention application. However, G2/98 held that the ‘same invention’ for priority required a strict test. The example was given of overlapping European applications where one needs to decipher which subject matter in an application is citable against which subject matter in another application, based on the filing date to which it is entitled. That is only possible if the test is strict, essentially requiring every single feature to be present for it to be the ‘same invention’.

That makes sense. However it leads this Kat to wonder about double patenting. Is it the same strict test? Given the logic of G2/98 are trivial features enough to avoid being the same invention for double patenting purposes?

As an aside, priority could become even more cruel. The UK already has a doctrine of poisonous priorities (see Katpost here) and now the EPO Enlarged Board is going to be thinking about it too in a referral from appeal proceedings on T557/13.

Complexity: added matter and who is being protected?

Manipulating matter in a specification

When does added matter arise? On the face of it added matter at the EPO is quite simply about something being ‘directly and unambiguously derivable’. Examiners have treated this as requiring very explicit disclosure. However, increasingly the EPO is accepting ‘implicit’ disclosure. It is clear that ‘implicit’ does not mean what is ‘obvious’ from the text. It is something more subtle (see Katpost here on added matter and the new EPO Guidelines).

If one wants to generalise a feature from a specific embodiment, things gets more complicated, and require consideration of whether the relevant feature is inextricably linked to another feature. Deleting a feature requires this three-part test. Clearly if one is in the situation of having to generalise or delete features, something has probably gone wrong and one is attempting to manipulate the original contents of the specification in ways that were not intended when drafting it. At this point I will only mention selection inventions in passing, to minimise the risk of losing non-chemical readers.

Things get even more complex for disclaimers. At the EPO there are two types of disclaimer. There is the ‘G2/10’ type which is based on disclosure in the application as filed (see Katpost here). Such a disclaimer will add matter if it results in ‘new technical information’. The second type of disclaimer is the ‘G1/03’ type where the wording does not need to come from the disclosure of the application. This is only possible in certain situations: to overcome prior art that is only relevant to novelty and to disclaim embodiments excluded from patentability for legal reasons.

Is all of this fair? Well, third parties should have a level of certainty as to what amendments could be possible. However, equally applicants need to be given a little bit of leniency as they are often surprised by what turns up in the Search. Clearly balancing things in the right way seems to lead to complex tests.

Cuddly: claim boundaries for infringement are malleable

So, we’re now at the point of using our finely honed claim scope, which is entitled to priority and does not add matter, to catch infringers. Here things become a little bit fuzzy. We suddenly find there are different ways of construing the claims and parties in litigation can disagree on about this (see a slightly old discussion of this here from Alan White). In the US different constructions can be used in different forums. The broadest reasonable interpretation is used at the United States Patent and Trademark Office (USPTO), whilst the Courts can use narrower constructions.

The bigger the net, the more
infringers you catch

A little bit of extra scope for catching the infringer

Courts seem to have ways of stretching the claims a little bit to catch infringers. Article 2 of the Protocol on the Interpretation of Article 69 EPC says we can take account of ‘equivalents’ when look at the scope of protection ‘conferred’. In the UK we still have the principle of ‘purposive construction’, occasionally thought of as the ‘Protocol Questions’, and probably no doctrine of equivalents (see Katpost here). The US does have a doctrine of equivalents but this seems to come in and out of fashion, it is difficult to define exactly and it is intimately tied to the prosecution history.

The scope of a claim is complex, but seems to become even more complex, and presumably more unpredictable, in the hands of the Courts. This Kat wonders whether this gives Courts that little bit of flexibility they need to catch an infringer that is a ‘bad guy’. In the UK omnibus claims used to be the way the Courts would give themselves a lot of leeway to find infringement somehow (see PatLit post here on a recent omnibus claims case).

Appreciating all the different factors that impact on patent claims makes one appreciate why things are as they are. This Kat does wonder, though, at how little thought is given to making the patent system easier to use. We don’t have a test for that because it does not directly impact on the tasks that Patent Offices and Courts are doing. This Kat believes that results in users of the patent system finding it more difficult than it should be.