●● IRC: #boycottnovell @ FreeNode: Sunday, November 08, 2020 ●● ● Nov 08 [00:31] schestowitz https://twitter.com/spiritdawound/status/1325216672349827072 [00:31] -TechrightsBN/#boycottnovell-@spiritdawound: @schestowitz dead people make no income [00:31] schestowitz https://twitter.com/jamesabernard/status/1325198987813482498 [00:31] -TechrightsBN/#boycottnovell-@jamesabernard: @schestowitz If I use "untrackme" (android - from fdroid) on your link I get error 500 or page does not exist in th https://t.co/kQDrZ9cZX7 [00:31] -TechrightsBN/#boycottnovell-@jamesabernard: @schestowitz If I use "untrackme" (android - from fdroid) on your link I get error 500 or page does not exist in th https://t.co/kQDrZ9cZX7 [00:31] schestowitz "If I use "untrackme" (android - from fdroid) on your link I get error 500 or page does not exist in the browser. If I allow tracking & open link with browser it works fine." [00:32] schestowitz https://twitter.com/mmIOvOImm/status/1325172969577046016 [00:32] -TechrightsBN/#boycottnovell-@mmIOvOImm: I know @schestowitz won't respond to this. This is just to illustrate what some technical people seem to think abou https://t.co/1yTAAdX4HG [00:32] -TechrightsBN/#boycottnovell-@mmIOvOImm: I know @schestowitz won't respond to this. This is just to illustrate what some technical people seem to think abou https://t.co/1yTAAdX4HG [00:32] schestowitz " [00:32] schestowitz I know @schestowitz [00:32] schestowitz won't respond to this. This is just to illustrate what some technical people seem to think about twitter. @SMaurizi [00:32] schestowitz [00:32] schestowitz "Write-only account; follow/reply to me in Federation / Or Diaspora" [00:32] schestowitz I don't know his exact view. But I know Julian had similar sentiments. [00:32] schestowitz " [00:32] schestowitz https://twitter.com/mmIOvOImm/status/1325174009462366216 [00:32] -TechrightsBN/#boycottnovell-@mmIOvOImm: https://t.co/EPSUIltcnW [00:32] -TechrightsBN/#boycottnovell-@Suzi3D: Julian Assange often said things which doubters struggled to believe and yet which turned out to be true. I have l https://t.co/R0kM0q8HrV [00:33] schestowitz https://twitter.com/TinyAndMe/status/1325041268280451077 [00:33] -TechrightsBN/#boycottnovell-@TinyAndMe: @schestowitz He will also be an adult, which should be a prerequisite for the job. [00:33] schestowitz https://twitter.com/hanscees/status/1324996651233243136 [00:33] -TechrightsBN/#boycottnovell-@hanscees: And inspired by these classic PCs, here is Raspberry Pi 400: a complete personal computer, built into a compact key https://t.co/KCZm29LF4s [00:33] -TechrightsBN/#boycottnovell-@hanscees: And inspired by these classic PCs, here is Raspberry Pi 400: a complete personal computer, built into a compact key https://t.co/KCZm29LF4s [00:33] schestowitz " [00:33] schestowitz And inspired by these classic PCs, here is Raspberry Pi 400: a complete personal computer, built into a compact keyboard, [00:33] schestowitz #raspberrypi400 [00:33] schestowitz " [00:34] schestowitz https://twitter.com/TrudoLemmens/status/1324995481714438144 [00:34] -TechrightsBN/#boycottnovell-@TrudoLemmens: The real message of this election is not that Trump lost and Democrats triumphed. Its that a weak and untalented https://t.co/0Sx7gqOieo [00:34] -TechrightsBN/#boycottnovell-@TrudoLemmens: The real message of this election is not that Trump lost and Democrats triumphed. Its that a weak and untalented https://t.co/0Sx7gqOieo [00:34] schestowitz "The real message of this election is not that Trump lost and Democrats triumphed. Its that a weak and untalented politician lost, while the rest of his party has completely entrenched its power over every other branch of government" [00:34] schestowitz https://twitter.com/SiQuizas/status/1324993843146739712\ [00:34] -TechrightsBN/#boycottnovell-@SiQuizas: El Negocio de las crceles privadas ... antes de Trump, con Trump y despus de Trump - en serio - va a cambiar al https://t.co/lSlZW4m8eV [00:34] -TechrightsBN/#boycottnovell-@SiQuizas: El Negocio de las crceles privadas ... antes de Trump, con Trump y despus de Trump - en serio - va a cambiar al https://t.co/lSlZW4m8eV [00:34] schestowitz " [00:34] schestowitz Disidir & Decidir [00:34] schestowitz @SiQuizas [00:34] schestowitz [00:34] schestowitz 15h [00:34] schestowitz El Negocio de las crceles privadas ... antes de Trump, con Trump y despus de Trump - en serio - va a cambiar algo en este sentido? [00:34] schestowitz " [00:35] schestowitz https://twitter.com/freedom4all117/status/1324985153899225089 [00:35] -TechrightsBN/#boycottnovell-@freedom4all117: @schestowitz Trump wasn't authoritarian. He is not a Democrat ● Nov 08 [06:33] *oiaohm has quit (Read error: Connection reset by peer) [06:34] *oiaohm (~oiaohm@unaffiliated/oiaohm) has joined #boycottnovell ● Nov 08 [08:01] schestowitz > Great Schneier quote, too. [08:01] schestowitz > [08:01] schestowitz > For what it's worth TR has been ranking rather high in DDG and [08:01] schestowitz > Startpage. Previously it was more or less invisible. [08:01] schestowitz Someone mentioned that in IRC yesterday. [08:01] schestowitz Seems HTTPS leading to higher ranks might also be a myth, partly... [08:23] schestowitz >> What's an FSF? [08:23] schestowitz > [08:23] schestowitz > The militant wing of the Salvation Army? Probably a Wikipedia article or [08:23] schestowitz > something. [08:23] schestowitz > [08:23] schestowitz > Ahh, here we go! https://en.wikipedia.org/wiki/Flexible_Support_Fund [08:23] -TechrightsBN/#boycottnovell-en.wikipedia.org | Flexible Support Fund - Wikipedia [08:23] schestowitz > [08:23] schestowitz Oh! I see! [08:28] schestowitz Re: Unacceptable comments toward a company: 1 [08:28] schestowitz > I am really glad to be done with "Linux". [08:28] schestowitz But notice the response from LF. [08:28] schestowitz They did not take action. [08:28] schestowitz BSD also has a CoC issue. [08:34] schestowitz > /> We all need to pressure Biden quite soon/ [08:34] schestowitz > [08:34] schestowitz > Who are you kidding? He betrayed his country more than 20 years ago, and [08:34] schestowitz > was rewarded with a vice presidency and then presidency. He's celebrated [08:34] schestowitz > by Techrights staff and former softies who don't seem to care that he [08:34] schestowitz > fellates the RIAA, who just started flexing their muscles again DURING [08:34] schestowitz > the election. (Coincidence? Perhaps, though it seems unlikely.) [08:34] schestowitz > [08:35] schestowitz > Just what do you intend to "pressure" him with for an encore, *unlimited [08:35] schestowitz > sexual favours*? Zero leverage-- the country just threw away the last [08:35] schestowitz > remnants of the Constitution by electing its principal murder-rapist. [08:35] schestowitz > What DO you do for an encore? LOL, pressure Biden. As if! Not your [08:35] schestowitz > fault, by the way. But truly hilarious. [08:35] schestowitz The alternative in this case was 4 more years of greater lunacy. [08:35] schestowitz I never liked Biden and still don't. [08:35] schestowitz I mentioned his RIAA connections and views on Assange etc. [08:35] schestowitz Let's fight; it seems safe now (Trump has no leeway). [08:37] *hook54321 has quit (Ping timeout: 264 seconds) ● Nov 08 [09:02] *hook54321 (sid149355@gateway/web/irccloud.com/x-viaulajvaswwykrp) has joined #boycottnovell [09:23] *rianne__ has quit (Ping timeout: 260 seconds) [09:24] *liberty_box has quit (Ping timeout: 256 seconds) [09:29] *rianne__ (~rianne@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [09:29] *liberty_box (~liberty@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [09:43] *rianne__ has quit (Ping timeout: 246 seconds) [09:43] *liberty_box has quit (Ping timeout: 260 seconds) [09:48] *rianne__ (~rianne@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [09:50] *liberty_box (~liberty@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell ● Nov 08 [10:07] *rianne__ has quit (Ping timeout: 256 seconds) [10:07] *liberty_box has quit (Ping timeout: 256 seconds) [10:12] *rianne__ (~rianne@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [10:15] *liberty_box (~liberty@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell ● Nov 08 [11:08] schestowitz https://twitter.com/0xCEDE/status/1325385161240956928 [11:08] -TechrightsBN/#boycottnovell-@0xCEDE: @schestowitz Nah, but it's a good start. [11:09] schestowitz https://twitter.com/HilaryEllary/status/1325348454130966528 [11:09] -TechrightsBN/#boycottnovell-@HilaryEllary: @schestowitz All MS software is grossly https://t.co/CBiRQ8NmM2 a toppling jenga puzzle. [11:09] -TechrightsBN/#boycottnovell-Could not resolve host: over-engineered.like; Unknown error ( status 0 @ https://over-engineered.like/ ) [11:19] *rianne__ has quit (Ping timeout: 256 seconds) [11:19] *liberty_box has quit (Ping timeout: 256 seconds) [11:30] *rianne__ (~rianne@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [11:30] *liberty_box (~liberty@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [11:48] *liberty_box has quit (Ping timeout: 256 seconds) [11:48] *rianne__ has quit (Ping timeout: 246 seconds) [11:51] *rianne__ (~rianne@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [11:52] *liberty_box (~liberty@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell ● Nov 08 [12:54] schestowitz https://ipkitten.blogspot.com/2020/10/hague-court-of-appeal-sets-dutch.html?showComment=1604658766857 [12:54] -TechrightsBN/#boycottnovell-ipkitten.blogspot.com | Hague Court of Appeal sets Dutch approach to equivalence, reversing District Court in pemetrexed saga - The IPKat [12:54] schestowitz " [12:54] schestowitz Justice must be done.... [12:54] schestowitz Reply [12:54] schestowitz Cricket DunyaSunday, 1 November 2020 at 11:01:00 GMT [12:54] schestowitz This is where the key point that I am making comes into play. This is because it is not entirely clear whether it is permissible for Eli Lilly to rely upon that post-filing data to support sufficiency and/or inventive step for the non-literal scope of their patent claims. To answer that question, one needs to decide whether, based upon the evidence, the disclosure of Eli Lilly's patent renders PLAUSIBLE the relevant technical effect [12:54] schestowitz (of inhibiting tumor growth) for the "equivalent" salt forms. This is a question that, to date, the national courts in Europe appear not to have considered in any depth. Personally, I find this alarming, as it suggests that the patentability standards for non-literal claim scope are much lower than those for literal claim scope ... which simply cannot be right. [12:54] schestowitz Reply [12:54] schestowitz MaxDreiSunday, 1 November 2020 at 21:54:00 GMT [12:54] schestowitz WARNING: I'm going to be provocative here. But I do it deliberately, to stimulate further debate, because I think that would be beneficial. [12:54] schestowitz I welcome the exchange of views prompted by my Comment #1 but have an uneasy feeling that Mr Dijkman lacks long years of experience drafting pharmaceutical patents and so is not in a position to judge what an elementary goof occurred in the drafting of the patent here in suit. [12:54] schestowitz What I'm suggesting is that it is not a good idea for the courts to rescue Applicants who make egregious drafting errors. It is not good for the health of the patent system to excuse such grotesque failures of drafting. [12:54] schestowitz The point is that in the invention we have here there is an anion and a cation, of which the anion is the active complex organic principle (pemetrexed) and the cation is merely a necessary but trivial electrical charge-balancing positively charged inorganic counterpart particle (sodium ion, potassium ion, or something similar). Nothing could have been more self-evident or obvious than to claim at the level of generality of " [12:54] schestowitz pemetrexed salt". Had Applicant claimed that invention, the true invention, at that level of generality ie precisely the level of generality supported by the disclosure and rendered plausible by the disclosure, litigation would not have been needed. No hindsight was needed, to see that a claim to pemetrexed was indicated, right from the get go, the blank sheet of paper on which the claims are first drafted. Any qualified European [12:54] schestowitz Patent Attorney would have seen that instantly. The problem here is that the case was drafted and filed in the USA, which when it comes to patent drafting is "on a different planet" from the rest of the world. [12:54] schestowitz Now, Mr Dijkman, and other readers, my question to you. Should the courts be in the business of fomenting more patent litigation or should they instead concern themselves with efforts to damp down the amount of patent litigation? I ask because the way this case has turned out is, in my opinion, a potent generator of more litigation, arising from a reduced level of legal certainty about how claims are to be construed in Europe, and [12:54] schestowitz what counts as an infringement. [12:54] schestowitz I see you are an associate of a leading patent litigation firm. Your assessment then as to what attitude the patent courts of Europe should take towards levels of quality in patent drafting interests me greatly. [12:54] schestowitz Reply [12:54] schestowitz Replies [12:54] schestowitz Lon DijkmanMonday, 2 November 2020 at 08:48:00 GMT [12:54] schestowitz Dear Max, thanks for your thoughts--and I appreciate you being outspoken, even provocative. [12:54] schestowitz I agree with you that the doctrine of equivalence should not be relied upon to correct sloppy drafting. The patent social contract places great power in the hands of patentees by allowing them to draft their own claims, and I think they should be subject to strict scrutiny when doing so. This has been recognized in Dutch case law for a long time, and a 2016 decision by the Supreme Court serves to illustrate this (Bayer/Sandoz, ECLI: [12:54] schestowitz NL: [12:54] schestowitz HR:2016:196). There, the patent claimed a method and the claims specified that it should be performed with an acid. But the description mentioned it could just as well have been applied with a base. The Supreme Court (and the CoA before it) refused to apply the doctrine of equivalents in this case, since an acid is simply not a base, and if the patentee would have wanted to claim protection for both, they should have done so. [12:54] schestowitz Now, let's take a look at what happened in the present case. [12:54] schestowitz The initial claim 1 read as follows: 1. Use of a methylmalonic acid lowering agent in the preparation of a medicament useful in lowering the mammalian toxicity associated with an antifolate, and the medicament is administered in combination with an antifolate. [12:54] schestowitz This claim therefore generally covered antifolates, but because a combination of vitamin B12 and an antifolate was not novel, the claim was subsequently amended to cover only pemetrexed, which was understood to mean pemetrexed in combination with any acceptable salt, including (as specified in claim 4), pemetrexed disodium: [12:54] schestowitz 1. Use of pemetrexed in the manufacture of a medicament for use in combination therapy for inhibiting tumor growth in mammals wherein said medicament is to be administered in combination with vitamin B12 or a pharmaceutical derivative thereof. [12:54] schestowitz 4. Use according to any one of claims 1 to 3 wherein pemetrexed is pemetrexed disodium. [12:54] schestowitz Now comes the crucial part. The examiner raised a 123(2) objection because the only working example of pemetrexed that had been disclosed was pemetrexed disodium: [12:54] schestowitz The subject matter of present claims 1 reading use of pemetrexed and claim 13 a product containing pemetrexed do not find base in the application documents as filed. The term pemetrexed in the wording of these claims and the corresponding passages on amended description is certainly a distinct compound (CAS Registry number 137281-23-3) of the pemetrexed disodium (CAS Registry number 150399-23-8) [12:54] schestowitz expressed on original document description page 2, line 6 and page 6, line 16. Said amendment beyond the content of the original document is therefore not allowable (Art. 123 (2) EPC). [12:55] schestowitz Consequently, the claims had to be limited to pemetrexed disodium. However, the CoA held (and I understand that this was not really disputed) that (i) the skilled person would, on the basis of the common general knowledge, know that the invention would also work with different salts; and (ii) the application clearly said so much, even as filed in the PCT stage. [12:55] schestowitz Lon DijkmanMonday, 2 November 2020 at 08:52:00 GMT [12:55] schestowitz The key question for the doctrine of equivalents here is whether this limitation, clearly on the basis of art. 123(2) EPC, also limits the scope of protection. The CoA explains why not, and I think the reasoning is persuasive: after all, all patent documents (including the PCT application) must be interpreted on the basis of Art. 69 EPC, whereas the test for art. 123(2) EPC is novelty. Those methods of interpretation are different, [12:55] schestowitz with novelty being much more literal than scope of protection. Hence, a PCT application, and the patent subsequently filed on the basis thereof, will have a certain scope of protection, but because of the more literal test applied for the purposes of at. 123(2) EPC, that scope of protection might not be capable of being claimed as such. [12:55] schestowitz The CoA held here that this means a 123(2) EPC limitation cannot be an indication that the scope of protection is limited accordingly. I think that's right. [12:55] schestowitz It's not clear to me from your comment whether you disagree with that finding: you think this is a case of poor drafting. My question to you is: where was the drafting error made? [12:55] schestowitz I could see the argument that it happened already in the PCT stage, i.e. the original application should have disclosed more specific examples than just pemetrexed disodium (which was Eli Lilly's own product and therefore mentioned as a preferred embodiment). But at that stage, the application related to antifolates generally: was the patent holder nonetheless obligated to write down every single salt that could be used with [12:55] schestowitz pemetrexed? What about other antifolates? The purpose of art. 69 EPC is to avoid imposing such strict conditions on patentees, so long as the proper breadth of the inventive concept is clearly disclosed, and satisfies all material requirements for patentability. I think that is the case here, so I think the case was properly decided. [12:55] schestowitz And, having disclosed the invention in a manner that makes clear that it would work with any salt, the next question is: what reasonable expectation can third parties entertain that Eli Lilly nevertheless wanted to limit its scope of protection to pemetrexed disodium, specifically? This happened explicitly in the context of art. 123(2) EPC, so for the reasons set out above, it doesn't imply a willful limitation of the scope of [12:55] schestowitz protection. [12:55] schestowitz Returning to the example of Bayer/Sandoz, the case was decided differently there because the invention as initially claimed was limited to a SPECIFIC COMPOUND, even if there had been a disclosure that it would work with others as well. Here, it was not limited in that way: a general class of compound (antifolates) was disclosed and claimed, then narrowed down to pemetrexed generally, then -- on the basis of a formal objection -- [12:55] schestowitz narrowed down to pemetrexed disodium. It's a fine line, but I think it can clearly be drawn: in the first case the patentee signalled interest in a limited scope of protection by failing to claim the other compound as well, but here Lilly did no such thing. [12:55] schestowitz You're right that I don't have a lot of experience drafting pharmaceutical patents--I'm not a patent attorney by training. But I did think about this problem as I wrote the post, and I'd be curious to hear where you think my analysis is wrong. [12:55] schestowitz Lastly, on your point of inviting litigation. If I may, I would criticize your post for posing a false dichotomy: courts don't face just the two options you present, but instead must come to a balanced and fair decision given the circumstances. Of course I don't think that increased legal uncertainty and, as a consequence, a rise in litigation rates are a good thing. But I also don't think that fair protection for patentees should [12:55] schestowitz be sacrificed to maximize legal certainty. If maximum legal certainty were the purpose of the patent system, it would look very different. But instead art. 69 EPC directs us to find a middle ground, and I think the CoA did so properly in this case. [12:55] schestowitz Reply [12:55] schestowitz MaxDreiMonday, 2 November 2020 at 09:53:00 GMT [12:55] schestowitz OK, Leon, thanks. I want to keep this pot boiling. [12:55] schestowitz You set out this claim: [12:55] schestowitz 1. Use of pemetrexed in the manufacture of a medicament for use in combination therapy for inhibiting tumor growth in mammals wherein said medicament is to be administered in combination with vitamin B12 or a pharmaceutical derivative thereof. [12:55] schestowitz and explain that it appeared for the first time during prosecution. Leon, my point is, very simply that i) precisely that subject matter is the contribution to the art ii) it would have been screamingly obvious, already the day before filing the PCT application, that it should have been claimed (and stated) at that level of generality in the PCT as filed. No excuse not to (except perhaps that the lapse doesn't matter in the USA) iii [12:55] schestowitz the outcome at the EPO would have been different, had that claim been there, present, in the PCT as filed. The drafting was (I say) negligent and that negligence should not have been condoned, let alone handsomely rewarded. [12:55] schestowitz Reply [12:55] schestowitz MaxDreiMonday, 2 November 2020 at 09:57:00 GMT [12:55] schestowitz Leon, I should have said more about why the outcome at the EPO would have been different. Against the 123(2) point, Applicant was powerless. But when that point is not available to the Examining Division, it comes down to a debate about support and plausibility, which Applicant would have easily won. [12:55] schestowitz Reply [12:55] schestowitz MaxDreiMonday, 2 November 2020 at 10:06:00 GMT [12:55] schestowitz As to the question why Applicant did not fight against the 123(2)objection, my explanation is that to fight on the public file, and lose, leads to worse outcomes than not to fight at all. [12:55] schestowitz Applicant got that judgement right, I think. But I'm no litigator. What do you think? Would Applicant have fared better in the courts if it had vigorously disputed the legitimacy of the Art 123(2) objection with the EPO Examining Division and then with the Technical Board of Appeal (and in the end still lost)? [12:55] schestowitz Reply [12:55] schestowitz Lon DijkmanMonday, 2 November 2020 at 12:28:00 GMT [12:55] schestowitz Hi Max, thanks for this. I think the answer to your first question is that the PCT application was initially even broader and pertained to the use of antifolates, of which pemetrexed combinations are only a single example. But because claiming antifolates with B12 was too broad -- i.e. not novel -- Lilly had to narrow down. And they couldn't narrow down to pemetrexed generally, because there was no basis for that in the PCT [12:55] schestowitz application. But that doesn't mean the invention behind it wasn't in there. [12:55] schestowitz The entire point in the CoA's reasoning is that it was indeed screamingly obvious that the claims were directed to pemetrexed generally, as in the claim you cite, and that this was comprised in the PCT application as filed. You can't fault the patentee for failing to list every conceivable antifolate in this original application, and it doesn't mean that they forfeit protection for other salts than those specifically listed when the [12:55] schestowitz disclosure clearly relates to all antifolates, including salts. [12:55] schestowitz I wish I was more versed in the underlying technology so I could better understand the relation between the salt eventually claimed and other antifolates. But the way I read the CoA's decision is that it says the original application was broad enough that it wouldn't have made sense, at that point in time, to already limit the claim in the way you suggest. This is not to say it wouldn't have been better to include it, if only as a [12:55] schestowitz dependent claim; and I'm curious to learn how differences in US prosecution rules may have caused this omission (is it because you have to pay per claim?). [12:55] schestowitz But I wouldn't say it is an error, as in the Bayer/Sandoz example where the claimed invention as such is directed at a different compound, and the omission was failing to claim at a broader level of generality. In fact the opposite happened here: the invention as originally claimed was broad enough, but offered no formal basis to describe the claims at a level of generality that would have best served legal certainty. [12:55] schestowitz As for the second question, I'm not sure that it would have mattered. If Lilly fights and loses the 123(2) challenge, that still doesn't necessarily compromise the patent's scope of protection--provided you subscribe, as I do, to the CoA's explanation in this respect. [12:55] schestowitz But to further clarify my question: do you think that a 123(2) challenge, regardless of whether the patentee decides to fight it, signals to third parties that the scope of protection is limited to the restricted wording from the PCT application? If so, how do you reconcile that with art. 69 EPC? [12:56] schestowitz Reply [12:56] schestowitz MaxDreiMonday, 2 November 2020 at 14:21:00 GMT [12:56] schestowitz Thank you Leon. [12:56] schestowitz Well, Ladies and Gentlemen Readers, there you have it. Here you can see my abject failure, as a European Patent Attorney who drafts patent applications under a vigorously contested First to File patent law and well knows the sensitivity of prosecution amendments that illegitimately "improve the position" of an Applicant at its filing date, to communicate to a patent litigator the notion of an "undisclosed intermediate generalisation [12:56] schestowitz under Art 123(2) of the EPC, the notion of "plausibility" and the notion of "support" under Art 84 EPC. [12:56] schestowitz Do we see here a need for more communication between the patent litigation and the patent drafting and prosecution communities. What does that tell us about the future of opposition practice at the EPO? [12:56] schestowitz Leon, you ask me for my opinion: what difference would it have made, in the litigation, if Lilly had argued against the 123(2) objection? Don't ask me, I'm not a litigator. But why should it be any different in patent disputes than in everyday life, where the general Rule is that it is better if you can to put a fight off till tomorrow than to fight it out today and be seen to have lost. And here, there is no doubt whatsoever that [12:56] schestowitz if they had made a fight of it at the EPO, they would have lost. But if in the PCT as filed they had competently claimed their invention, they would have won both before grant and after it, both at the EPO and (if it ever got as far as litigation) in the courts as well. [12:56] schestowitz Reply [12:56] schestowitz MaxDreiMonday, 2 November 2020 at 18:58:00 GMT [12:56] schestowitz Forgive me, Leon, for not yet responding to your "I am curious" sentence. You wonder whether the difference between US and Rest of the World (RoW) drafting standards is fees per claim. Well, no, that's not what I had in mind. [12:56] schestowitz Imagine claim 1 as a balloon, defining a scope of protection (namely the entire volume inside the balloon). The "best mode" here the proprietary Lilly ALYMPTA product. It can be seen as a diamond, a pin-point, somewhere within the balloon. The difference between US and RoW drafting is in expectation how much you need to write in the application as filed about intermediate levels of generality between the balloon surface and the [12:56] schestowitz diamond. RoW practises an "onion skin" drafting style, coming down from the balloon to the diamond in successive steps, with each step corresponding to a stated enhancement in the efficacy of the inventive concept, ie the subject matter of claim 1. [12:56] schestowitz In short, you can't just file an absurdly wide claim 1 and a single dependent ALYMPTA claim and wait until during prosecution to figure out what you have invented. You will appreciate that there is more or less infinite flexibility to squeeze the balloon skin this way and that, during prosecution, to avoid the prior art while retaining a scope of protection as close as possible to the original balloon size. [12:56] schestowitz Such behaviour is open to abuse. Can you see that? Hence, everywhere on Earth except the USA, a strict "No New Matter" standard is applied to prosecution amendments. [12:56] schestowitz It's (as so often the case) different in the USA, until recently a First to Invent country. Now that it has joined the community of First to File countries, it will slowly but surely find that it too needs (in order to do justice between rival filers) a strict New Matter standard. But for the time being, drafters in the USA still tend to think that their "Diamond in a Balloon" is the highest expresssion of the draftsperson's art [12:56] schestowitz because it pleases the litigators never to say in the application as filed what the subject inventive concept actually is. [12:56] schestowitz Who feels like disagreeing with me here? I am curious. [12:56] schestowitz Reply [12:56] schestowitz Replies [12:56] schestowitz Lon DijkmanTuesday, 3 November 2020 at 07:52:00 GMT [12:56] schestowitz Dear Max, that is super interesting. So if I understand you correctly, the US counterpart to art. 123(2) EPC is much less strict in the sense that there's no added matter so long as you add matter from within the balloon? That's certainly crazy. [12:56] schestowitz You may know that I'm writing a PhD on proportionality in patent law. As part of that, I'd like to understand the prosecution process a bit better--especially ways in which it might be open to abuse, e.g. by delaying publication or specification of the invention until competitors have come to market, etc. You seem very knowledgeable on the subject and also to have some concerns about these issues. Would you be willing to talk to me [12:56] schestowitz on this issue in some more detail? If so, maybe you can send me an e-mail: you'll find the address via my personal page, which is linked in my bio under "The IPKat Team" [not sharing it here b/c of spambots]. [12:56] schestowitz Either way, this has been -- for me at least -- a very fruitful exchange. Maybe you're right to think that litigators, and perhaps even more so judges, should gain some experience with prosecution to better understand what tactics might be employed before a patent is granted... and I'd be grateful to take up the challenge. [12:56] schestowitz Reply [12:56] schestowitz MaxDreiTuesday, 3 November 2020 at 08:26:00 GMT [12:56] schestowitz OK Leon, I will get in touch with you by email in due course and would be happy to help. [12:56] schestowitz Meanwhile, lest readers baulk at what I have written about how things work in the USA I should mention its statutory requirement that the patent application as filed includes a "written description" (WD) of the invention as claimed. Think of the US WD requirement as its equivalent to Europe's prohibition on adding matter after filing. [12:56] schestowitz Until now, however, the WD requirement has been interpreted liberally. But within the next 25 years or so, as the US courts gather experience in adjudicating priority contests between rival Applicants under the AIA'*s First Inventor to FILE regime, they will find that the WD has to be, in the interests of dispensing justice between the disputants, applied strictly. This will bring the WD requirement into closer conformity with the [12:56] schestowitz law in Europe under Art 123(2) EPC. [12:56] schestowitz That's the nice thing about patent law: the principles are simple and universal, but each country has its own patent statute under its sovereignty, and is free to choose how it expresses the principles. America, for example, always worships the individual. Until the AIA, a corporate owner of the invention had no status to file a patent application at the USPTO, only the individual, the inventor, could do that. Even now, the system [12:56] schestowitz introduced by the AIA is called the "First INVENTOR to File" system. [12:56] schestowitz Reply [12:56] schestowitz Replies [12:56] schestowitz Lon DijkmanTuesday, 3 November 2020 at 09:01:00 GMT [12:56] schestowitz Thank you very much Max, I'll be looking out for your e-mail then :) [12:56] schestowitz Reply [12:56] schestowitz DenverTuesday, 3 November 2020 at 11:37:00 GMT [12:56] schestowitz MaxDrei, I feel you are being too harsh on the US system. In my experience it is difficult to get claims there which are beyond the contribution the invention makes over the prior art. The US Examiners judge claim scope on the technical content of the spec, not the literal language. In Europe you have to be able to 'predict the future' to draft well, and often you have great data, but not adequate language to claim it once new [12:57] schestowitz relevant prior art is identified. EPO Examiners seem to be learning a lot from overseeing oppositions, and are making ever better added matter 'attacks' (not objections). I do not think EPO Examiners should act like opponents for added matter. This is specific to the EPO. No other courts or patent offices are as strict. I think the EPO needs to return to the system of identifying technical content and judging claim scope accordingly [12:57] schestowitz Reply [12:57] schestowitz MaxDreiTuesday, 3 November 2020 at 14:44:00 GMT [12:57] schestowitz Super, to get that input from Denver. Thank you. [12:57] schestowitz I agree that the EPO is tougher than any other Patent Office on the issue of whether an Applicant, by amendment during prosecution, is adding matter, thereby illegitimately improving its position relative to the one it had on its filing date. The questions are i) why is that and ii) is the EPO position untenable? [12:57] schestowitz Why is it? I think first because, alone amongst the world's leading Patent Offices, the EPO is not told what to do by the community of patent litigators, in the form of a national Supreme Court. Second, the EPO plays a role in certifying who is competent to serve as a "European Patent Attorney". There is a drafting Paper and it is hard to satisfy the Examiners that one's drafting competence is high enough for you to be "let loose on [12:57] schestowitz the public". In Europe, it is expected that patent attorneys will draft well enough to get for their clients a full measure of the protection their invention deserves. The EPO holds to account those who do not draft competently. [12:57] schestowitz If we look at the 5 Leading Patent Offices of the World, US, EP, JP, CN, KR, and rank them on a scale of 1 to 100 for the strictness with which they police the "added matter" issue, we could say that the EPO is on 100 while the USPTO is on 1. But where are the other three? Will anybody here report. For the time being, I will assert that they are all on around 80, closer to the EPO view than the US view. [12:57] schestowitz From the USA it is often advanced that I cannot know what my invention is till after I have received the First Office Action on the Merits (FAOM) . Therefore, for justice, I must have full freedom to define that invention for the first time after I get the FAOM. I started in this profession in the early 1970's. Since then I have advised Patent Applicants, Patent Owners but also Opponents. I think that, given competent patent [12:57] schestowitz drafting, inventors can get a full measure of protection from the EPO, even more so now that the various Supreme Courts of Europe have given their blessing to an expansive DoE. I like to think that Europe, with an EPO free from the yoke of a patent-naive Supreme Court, and with regular brainstorming sessions for the nation Appeal Court judges, can achieve for users of the patent system a level of legal certainty higher than anywhere [12:57] schestowitz else in the world, a fair scope of protection, rapid enforcement of claims that are not invalid and rapid revocation of any claim that in dispute is found to be invalid. [12:57] schestowitz Lest anybody mention Germany, I should say a few words, provocative, of course. [12:57] schestowitz The German Patent Office competes for business with the EPO. The German Federal Patents Court competes for business with the opposition parts of the EPO. One way to distinguish its service offer from that of the EPO, and present it as more user-friendly, is to be more liberal on the issue of added matter. There are always enough other levers in the system of patent law to compensate for any excess liberality in allowing doubtful [12:57] schestowitz prosecution amendments. [12:57] schestowitz Reply [12:57] schestowitz MaxDreiTuesday, 3 November 2020 at 18:36:00 GMT [12:57] schestowitz Denver wrote about the need to "predict the future". I thought about that and in reply have two points to make. [12:57] schestowitz When patent attorneys draft patent applications, their clients rely on them to "predict the future", but not in the way that Denver contemplates. Rather, they have to imagine how courts will decide patent disputes, over the upcoming 20 year lifetime of the patent. How strict will the courts be, for example, on the issue of admissibility of amendments made during prosecution. If liberal, less effort needs to be put into the drafting [12:57] schestowitz of a progression of dependent claims that recite ever stronger patentability, to provide a succession of fall-back positions in the event of closer prior art emerging belatedly. If strict, then more effort is needed, to get those intermediate levels of generality/patentability in the case already at the filing date of the patent application. [12:57] schestowitz Patentability is to be assessed objectively, through the prism of the notional skilled person who knows the prior art. The EPC defines the prior art as that which has already been made available to the public by the filing date. With perfect prior art searching, the patent attorney can therefore know all the art known to the notional PHOSITA, when drafting and before filing the application at the Patent Office. The drafter is not [12:57] schestowitz required to "predict the future" prior art that can emerge only AFTER the filing date of the patent application. [12:57] schestowitz Otherwise in the USA, and only the USA. There, even under the AIA, obviousness attacks are routinely made on the basis of "prior art" US patent A-publications that were published only AFTER the patent application is filed. In that sense, when drafting for the USA, you are required to "predict the future". Perhaps this is the reason why the USA allows such liberality with prosecution amendments. Fair's fair, after all, eh? [12:57] schestowitz The other way to look at it is that "Two Wrongs don't make a Right." [12:57] schestowitz Denver, any thoughts in reply? Hope so. [12:57] schestowitz Reply [12:57] schestowitz DenverWednesday, 4 November 2020 at 16:27:00 GMT [12:57] schestowitz Thank you MaxDrei. I will need a little but of time to comment on every point, but if I can just for now comment on the reality of EPO search and examination. The EPO is incredibly good at searching, and often finds prior art that applicants are surprised by. So say when we were drafting we predicted about 80% of the types of amendments we would need. Still in 20% of cases we just don't have the claim language which the Examiner [12:57] schestowitz would want. The technical effect is demonstrated, it is enabled, it is a contribution to the field, but we got surprised. It's no one's fault. The data and technical effect are now published. Competitors will use it. [12:57] schestowitz So the skilled person is able to replicate the technology, but we just did not have the right language to claim it as per the EPO's standards. If instead the Examiner took the view that the technical teaching is there within the disclosure, so I will let them add a few words to describe it in claim language, that would fix the problem. The Examiner would just need to make sure there was no additional technical teaching introduced, [12:57] schestowitz and this is usually very straightforward. [12:57] schestowitz What I am advocating is that the EPO added matter test should determine the technical content of the case. I believe this more accurately reflects the purpose of the patent system. I know the test will need to be developed by case law, but once that process begins it will start to provide more certainty. At the moment we are spiralling down to more and more strictness, so that amendments based on the description only, for example, [12:57] schestowitz are becoming very difficult [12:57] schestowitz On another matter, have you read the UK court decision Icescape v Ice-World on doctrine of equivalence and how the Protocol questions are now being used in the UK? I think it is a complete distortion of the original test from Actavis v Lilly [12:57] schestowitz Reply [12:57] schestowitz MaxDreiThursday, 5 November 2020 at 08:30:00 GMT [12:57] schestowitz Denver, thanks again. I'm not going to comment here on the Icescape case because I want this thread to be as concentrated as possible. As to your point about the EPO finding better art, that doesn't impress me at all. The drafter has all the tools needed, to do as good a searching job as the EPO, and to do the drafting with the benefit of a full picture of the art. It is not as if the EPO finds stuff undetectable by the drafter. [12:57] schestowitz Patentability must be assessed objectively, through the prism of the all-knowing PHOSITA. Allowing it to be decided by a less than fully informed inventor or drafter is the road to nowhere. [12:57] schestowitz And now to the EPO's Gold Standard, which defines what any given document (priority document, application as filed, or prior art D1) discloses. The GS Medal has two sides. It helps Applicant striving to write a claim that is novel over D1. It is a b8gger though, when Applicant needs to amend the claim during prosecution. I have argued to the EPO for years that the GS must also be applied through the pragmatic eyes of the PHOSITA ( [12:57] schestowitz rather than through those of a dry as dust lawyer) and there are plenty of EPO decisions that recognise this need. It is up to we advocates to ease the EPO further towards a robust, pragmatic, real world implementation of its GS. [12:57] schestowitz With 123(2), I think it's gradually getting better (in a 2 steps forward, then one step back way), helped by increasing facility with the English language among EPO Examiners. The biggest problem is EPO efforts to raise "productivity", requiring ever more inexperienced young Examiners to make ever harder examination calls. Again, we advocates should complain. [12:58] schestowitz Reply [12:58] schestowitz DenverThursday, 5 November 2020 at 15:53:00 GMT [12:58] schestowitz MaxDrei, you have given the benefits of a strict approach and better trained Examiners. I can't argue with that. But your analysis does not take into account real-world situations of how we provide good research with the best support for commercialising the invention and making the world a better place. I get objections to intermediate generalisations at the EPO that I do not get in any other territory. Usually no one benefits from [12:58] schestowitz this. My client has to spend more money. Often there are no direct competitors. Your reference to a gold standard is good, but the penalty is paid by research companies, not the EPO or the patent attorney. And patent attorneys clearly do not see themselves as part of the solution. We have an 'academic' approach that does not seem to see that we live in a bubble of our own culture and rules that does not serve industry well. I [12:58] schestowitz believe there are less strict tests for added matter that could be adopted which would ultimately result in greater resources being used for research and not ending up as attorney fees. [12:58] schestowitz Reply [12:58] schestowitz MaxDreiFriday, 6 November 2020 at 10:32:00 GMT [12:58] schestowitz Denver, I feel I must reply, on your point about the real world of research. We could not wish for a better example of a priority contest in the real world of ground-breaking and life-saving medical research than the battle for priority between the East and West Coast USA CRISPR-Cas Teams. Let's watch how that pans out at the EPO, in the multiple opposition proceedings just getting under way. Which Coast was First to File is going [12:58] schestowitz to be a fascinating battle under the EPC. [12:58] schestowitz Many a time, my client is Opponent at the EPO and looking at the file wrapper of the patent I am to oppose I witness in the EPO file a battle to amend during prosecution. Through the eyes of an opponent, one sees how vital it is, to preserve the Principle of "First to File" that the EPO maintains a strict approach on the issue of adding matter to an already filed application. The courts in England are at least as strict as the EPO, [12:58] schestowitz on this vital issue of patent law. This, I would say, gives the lie to the assertion that the EPO is uniquely perverse on the issue of "new matter". [12:58] schestowitz I seriously doubt there is any legitimate criticism of the Patents Courts of England, that they lack real world awareness of the vital necessity that the patent system shall positively promote the progress of useful arts. Less so the US courts these days. I have in mind not only their negative attitude to eligibility in the field of diagnostic methods, in breach of GATT-TRIPS, but also a tendency to construe claims through the eyes [12:58] schestowitz of a lawyer rather than a person skilled in the art. I cite the Chef America case, where the court decided that the claim, to a method of baking bread, specified not the temperature of the oven but, rather, the temperature in the heart of the baked dough (which would have resulted in a block of carbon rather than bread). How perverse is that then? This is not at all "real world" is it? [12:58] schestowitz Many criticise the EPO's Problem/Solution Approach and its Gold Standard as artificial, not Real World. I say that such criticism is unfounded. There is nothing wrong with these legal constructs, but a great deal that is less than satisfactory in the individual cases, where poor advocacy results in poorly reasoned individual EPO decisions. [12:58] schestowitz I agree with you, that too many patent attorneys fail to see themselves as part of the solution I hope this thread can change that for the better. [12:58] schestowitz Reply [12:58] schestowitz DenverFriday, 6 November 2020 at 16:28:00 GMT [12:58] schestowitz MaxDrei, just to respond to your point on the strictness of the UK Courts. They are not as strict on added matter as the EPO, and the test is essentially one of 'new information' being present. Certainly the UK Courts have a more lenient test for combinations, selection from lists, etc. It is almost unheard of for a patent to go down on added matter in the UK. [12:58] schestowitz I would also add that if we think about all possible patent systems that could exist, your defence of the 'Gold Standard' would hinder new thinking on how to look at IP. I am an admirer of what the US Supreme Court did on eligibility, but the subsequent failure to develop new case law is the fault of the Federal Circuit, that could not change its way of thinking appropriately. The US Supreme Court was redefining the 'commons' in [12:58] schestowitz important areas of activity. I think that was a good thing to attempt, but the reaction was too negative for it to have worked. The Federal Circuit was unable to take on 'visionary' thinking when it got the opportunity, which I think continues to be a lost opportunity. [12:58] schestowitz " [12:58] schestowitz " [12:58] schestowitz That's an interesting point of divergence between the decisions. The CoA held that "The invention is disclosed in the patent document in such a manner that the skilled person, using common general knowledge, could and also would apply it with other pemetrexed combinations than the claimed pemetrexed disodium". [12:58] schestowitz And a few paragraphs down, the CoA refers to the decision you cite and the argument made, but finds that even though the therapeutic effects of individual salts were unpredictable, "the skilled person would have a reasonable expectation of finding an alternative salt that is suitable for putting the invention into practice". [12:58] schestowitz So it would appear that the case was argued differently than before the EWHC or, perhaps more likely, that the CoA came to a different conclusion on the basis of the evidence by concluding that finding another salt was within the skilled person's common general knowledge. [12:58] schestowitz Even if that finding can be criticized as a factual matter, from a legal point of view your concern was thus addressed by the CoA: if it was common general knowledge to search for equivalent salts, including the salt Fresenius used, then its technical effect must also be plausible. Or am I overlooking something? [12:58] schestowitz Proof of the puddingMonday, 2 November 2020 at 11:46:00 GMT [12:58] schestowitz By concluding that "the skilled person would have a reasonable expectation of finding an alternative salt that is suitable for putting the invention into practice", it is clear that the CoA was not posing the correct question. [12:58] schestowitz In medicinal chemistry, the skilled person ALWAYS has a reasonable expectation of finding alternatives to a claimed active ingredient. But whether or not some UNSPECIFIED alternative is certain to be discovered after further research is not a question that is pertinent to ask in connection with patentability (or scope of protection). The relevant question is instead whether, at the priority date, those skilled in the art would have [12:58] schestowitz reasonably expected the SPECIFIC alternative(s) under consideration (here, the allegedly infringing alternative form(s) of pemetrexed) to achieve the technical effect of inhibiting tumor growth (in combination therapy). [12:58] schestowitz At this point, I have to completely disagree with Max Drei. The evidence before the UK courts suggests that those skilled in the art would not necessarily have expected the specific alternative forms (potassium and tromethamine salts and pemetrexed diacid) to inhibit tumor growth in combination therapy. The question here is whether those forms would have been capable of (safely) providing a sufficient concentration of (bioavailable) [12:58] schestowitz pemetrexed ion at the tumor site. Given how much PK / PD profiles can vary between different (salt) forms, efficacy for any specific (untested) form is far from a foregone conclusion. [12:58] schestowitz Perhaps Eli Lilly can demonstrate that the disclosure of their patent was PLAUSIBLE with regard to a tumor growth-inhibiting effect for pemetrexed diacid and the potassium and tromethamine salts of that acid. However, I find it alarming that the CoA (in common with many other courts across Europe) did not see fit to give detailed consideration to the evidence on this point. [12:58] schestowitz " ● Nov 08 [15:08] *liberty_box has quit (Ping timeout: 258 seconds) [15:09] *rianne__ has quit (Ping timeout: 265 seconds) [15:55] *tr_guest|29593 (3e0b36bc@gateway/web/cgi-irc/kiwiirc.com/ip.62.11.54.188) has joined #boycottnovell [15:56] *tr_guest|29593 has quit (Client Quit) ● Nov 08 [16:37] *rianne__ (~rianne@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [16:38] *liberty_box (~liberty@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell ● Nov 08 [17:13] *asusbox2 has quit (Read error: Connection reset by peer) [17:14] *asusbox2 (~rianne@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [17:56] schestowitz https://twitter.com/Sheikh_al_Touar/status/1325493029290045440 [17:56] -TechrightsBN/#boycottnovell-@Sheikh_al_Touar: EPO Insider Explains Team Leaders and the Downfall of the EPO #Patents #Europe #Germany #Munich #Berlin https://t.co/KQHLSjgWmG [17:56] -TechrightsBN/#boycottnovell-@Sheikh_al_Touar: EPO Insider Explains Team Leaders and the Downfall of the EPO #Patents #Europe #Germany #Munich #Berlin https://t.co/KQHLSjgWmG [17:56] schestowitz "EPO Insider Explains Team Leaders and the Downfall of the EPO #Patents #Europe #Germany #Munich #Berlin #Netherlands #Austria http://techrights.org/2020/11/07/on-" [17:56] -TechrightsBN/#boycottnovell-techrights.org | EPO Insider Explains Team Leaders and the Downfall of the EPO | Techrights [17:57] schestowitz https://twitter.com/Sheikh_al_Touar/status/1325492084195909633 [17:57] -TechrightsBN/#boycottnovell-@Sheikh_al_Touar: The Vote on the Unified Patent Court Agreement (UPCA) Will Happen Last Month?! #UPC #Patents #Europe #Germany https://t.co/RkC5nyQhah [17:57] -TechrightsBN/#boycottnovell-@Sheikh_al_Touar: The Vote on the Unified Patent Court Agreement (UPCA) Will Happen Last Month?! #UPC #Patents #Europe #Germany https://t.co/RkC5nyQhah [17:57] schestowitz "The Vote on the Unified Patent Court Agreement (UPCA) Will Happen Last Month?! #UPC #Patents #Europe #Germany #Bundestag" ● Nov 08 [18:59] *schestowitz has quit (Remote host closed the connection) [18:59] *schestowitz (~schestowi@host81-154-169-118.range81-154.btcentralplus.com) has joined #boycottnovell [18:59] *schestowitz has quit (Changing host) [18:59] *schestowitz (~schestowi@unaffiliated/schestowitz) has joined #boycottnovell [18:59] *ChanServ gives channel operator status to schestowitz gemini://gemini.techrights.org/tr_text_version/irc-log-081120.txt

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