Friday 20 April 2012

Re-Establishment of Rights After More than One Year

In a very interesting new decision availabe here, the 10th senate of the Bundespatentgericht granted re-establishment of the right to pay the filing fees almost 2 years after the expiry of the time limit. The applicant had filed an application containing only claims and the office had informed him that the minimum requirements for the filing date were not met because a description was lacking. The office furhter noted that any fees would be refunded and that a new filing date could be obtained by filing complete documents.

The applicant responded by arguing that the claims would sufficiently describe the invention to qualify as a description. The argument was found convincing by the examiner who decided to keep the application pending. However, the office did not inform the applicant on this decision. The applicant got aware of this decision only after almost two years, when the GPTO notified the applicant that his right was lost due to non-payment of the filing fee.

Following the "Crimpwerkzeug" theory, the senate judges that re-establishment may be requested even after expiry of the one-year-term

"in specific exceptional cases for reasons of ensuring an effectice legal protection and the right to be heard, in particular when the reasons for the failure to comply with the time-limit do not lie in the sphere of the party but are rather to be assigned to the court/office".

Wednesday 18 April 2012

When Does a Simulation Step Contribute to the Technical Character of a Method?

Oliver Randl has posted an interesting decision (T 1265/09) relating to an application claiming a method for generating schedules in a call-center. The method basically determines staffing requirements split up in different skill group and "adapts" the settings iteratively as a function of the result of a call-handling simulation.

The EPO Board of Appeal refers to the decosion T 1227/05 in an attempt to define necessary conditions to be met by a simulation step in a method to contribute to the technical character of the method.

The board derives from T 1227/05 that:
The board held that beyond its implementation, a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method and, further, it held that a simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose (Reasons, [3.1]). The claimed methods were held to meet these conditions because, firstly, they concerned an adequately defined class of technical items, and, secondly, the stated purpose, ..., was established in the further steps of the claimed methods, .... thereby functionally limiting the claims to the simulation of a noise-affected circuit (Reasons, [3.1.1-2] of T 1227/05, emphasis added).
 The Board further notes that these conditions are necessary but does not sufficient.

In the case at issue, the conditions were not found to be met
"since, in connection with the call handling simulation referred to in claim 1, the telephone call center and, in particular, its performance, are not further specified in the claim and, further, the claimed method does not define the further steps which actually result in the stated purpose, i.e. the call handling simulation." ([1.13] last par.)
 In other words - even if a call-center network is a technical system the simulation of which could be considered a technical task, the claim should cleraly define its technical features determining its performance and give details on how this is simulated.

At first sight, this appears to be somewhat narrower than the broader (and often-cited) statement in T1227/05:
"To that extent, specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In view of this development it must be assumed that the outlay for implementing a technical product will increasingly shift to the numerical simulation phase, while final implementation of the simulation result in the actual manufacture of the product will entail no or only comparatively little extra innovation effort. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product (in effect the German Federal Court of Justice ruled in the same way in its decision of 13 December 1999, X ZB 11/98 - Logikverifikation; Reasons II.4(h))."
 However, the board appears to put emphasis on the words "specific" and "technical" in the first line of the above quote.


Tuesday 17 April 2012

Limiting Factor - Transhydrogenase

The decision "Transhydrogenase (X ZR 115/09)" relates to the use of microorganisms for producing a target substance, wherein the metabolic system of the microorganism is modified "wherein productivity of said microorganism for reduced nicotinamide adenine dinu-cleotide phosphate is enhanced" (cited from original claim 1.

It was known that  nicotinamide adenine dinu-cleotide phosphate (NADPH) plays a role in the metabolic system producing the target substance. However, the prior art did not point out that NADPH is (one of) the limiting factor(s).

The BGH ruled that the skilled person "... has an incentive to consider an improvement of that particular factor in the complicated metabolic system only if it is not known or to be expected with a sufficient degree of certainty that this factor is limiting, i.e. not available in a sufficent amount in the known methods" (cited from the headnote).
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