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"Clear, concise, and supported"

By Lawrence B. Ebert, Esq.

A comment on Patently-O speaking of indefinite claims notes:br /br /iIn Europe, Article 84 requires the claims to be "clear, concise and supported". After issue, the claims as granted is immune to Art 84-based attacks, until the patent owner seeks to amend. Then, the content of the amendment is fair game for Art 84-based attacks. I think this scheme keeps the show on the road, by encouraging Applicants to go to issue with impact-resistant claims. The USA can scrutinise the last 30 years of operation of the EPC, take what makes sense and disregard the rest, and I think Dennis, the USPTO and the CAFC sometimes look wistfully at Europe, but can't bring US opinion round to an open mind on borrowing good stuff from Europe./ibr /br /Of the matter of bsupported/b--br /br /from the guidelines for examination part C:br /br /"11.10 Arguments and evidence submitted by the applicantbr /br /The relevant arguments and evidence to be considered by the examinerbr /for assessing inventive step may either be taken from the originally-filedbr /patent application or submitted by the applicant during the subsequentbr /proceedings (see 11.7.2 above and VI, 5.3.4, 5.3.5 and 5.3.7).br /Care must be taken, however, whenever new effects in support ofbr /inventive step are referred to. Such new effects can only be taken intobr /account if they are implied by or at least related to the technical problembr /initially suggested in the originally filed application (see also IV, 11.7.2,br /T 386/89, not published in OJ, and T 184/82, OJ 6/1984, 261).br /br /Example of such a new effect:br /br /The invention as filed relates to a pharmaceutical composition having abr /specific activity. At first sight, having regard to the relevant prior art, itbr /would appear that there is a lack of inventive step. Subsequently, thebr /applicant submits new evidence which shows that the claimed compositionbr /exhibits an unexpected advantage in terms of low toxicity. In this case, it isbr /allowable to reformulate the technical problem by including the aspect ofbr /toxicity, since pharmaceutical activity and toxicity are related in the sensebr /that the skilled person would always contemplate the two aspects together.br /The reformulation of the technical problem may or may not give rise tobr /amendment or insertion of the statement of the technical problem in thebr /description. Any such amendment is only allowable if it satisfies thebr /conditions listed in VI, 5.3.7. In the above example of a pharmaceutical br /composition, neither the reformulated problem nor the information onbr /toxicity could be introduced into the description without infringingbr /Art. 123(2)".

Full post as published by IPBiz on December 20, 2008 (boomark / email).