This is a short update on the Conference on claims amendments. John Allen made a great speech and he was very appreciated by the audience [and indeed by all of us: see Katpost here].These six cases have all been discussed and decided. Adds Anna Maria: "I will let you have as soon as available the text of the decision issued by the panel". Thanks so much, Anna Maria, we really appreciate this!
1. The European Patent Convention allows limitations and modifications of claims after grant. Articles 105(a) and 123 EPC. When this is done at the EPO (central limitation), the effects are regulated (in a not totally clear manner) by Article 68 EPC. But also most national laws allows limitation or modification of claims of granted patents (local limitation). Each member state may behave differently: local limitations are governed by national laws. These laws should be in conformity with the European system, but full conformity is not guaranteed. The result is that a European patent may be modified differently in different States, thus resulting in different national patents, a variable geometry system. The European patent is granted unitarily, but then may be transformed into different titles, with different scope: quite embarrassing.
2. The first day of the Conference the various systems were compared (UK, DE, NL, FR and IT). What is surprising in the system (and to the present writer, somehow shocking) is that the patentee may change the patent at any time. Therefore claims may be changed in the first year after grant, or the second, or the last. They can be changed even after the patent expires. Whether Article 68 EPC mitigates the inconveniences is a question to be considered.
3. On the second day of the Conference a mock trial (or a series of trials) was conducted, and several patent attorneys discussed whether some modifications were allowable and what not. The results were somehow encouraging.
Although, in principle, all national systems have different rules, ultimately those rules could be interpreted in a not too dissimilar manner. This conclusion was evidenced by the mock trial, where six cases of claim modification were discussed. A mock court composed of mock judges of four mock countries (Sir Robin Jacob, Dr Marina Tavassi, Dr Klaus Bacher, Professor Jean-Christoph Galloux, Professor Mario Franzosi) issued a mock decision on the allowability of modifications.
the Mock Turtle ...
Here's the sample mock patent [which you can read here or download here], with the mock amendments.
Thursday, 24 July 2014
"Limitation and Amendments of claims during litigation" -- a report
"Limitation and Amendments of claims during litigation" was the theme of a conference held in Milan last month, the details of which were sent to us by our good friend Anna Maria Stein (Franzosi Dal Negro Setti). Anna Maria promised to keep PatLit informed of what transpired at this attractive event and, true to her word, this is what she says: Dear Jeremy,