Oddfellow 25/2
Bubendorf 8 December 2025
Christmas it is here, by golly! Disapproval would be folly!
as the sadly late Tom Lehrer put it. Still, he removed all his works from copyright protection some years before he died, so we can enjoy them as we please.
One of my problems with Australia was that I have the classic Celtic skin, the one that gets sunburn from candles. As a result, I was always careful in the sun – no bronzed athlete I, I’d turn lobster red and then it would all peel off. However, clearly not sufficiently careful. What I thought was a wart on my head turned out to be a non-melanoma skin cancer. “Only a problem if you don’t do something about it,” said the dermatologist. So I did something about it. The removal was very quick, the stitching up took forever. “What is he doing up there?” I wondered. The problem is that, because the head has not much in the way of loose flesh, the incision had to be sufficiently large to allow the skin to be stretched. I had a head substantially completely covered in sticking plaster for 2 weeks before the stitches came out. The dermatologist was pleased with the results and said that the scars should heal completely. However, she said that I had a lot of old skin damage that, while not cancerous, could in time become so. However, this is treatable, so, I know what I’ll be doing in the New Year. The treatment seems to involve getting what originally caused the problem – sunburn!
Speaking of another type of headache entirely, the EPO has come out with a number of G (Enlarged Board of Appeal) decisions of note.
G1/23 concerned the question as to whether a product put on the market before the date of filing could be excluded from the state of the art irrespective of whether the skilled person could analyse and reproduce the product and its composition before that date.
The prior art tendered in an inventive step argument was called ENGAGE® 8400, a complex polymer, which was very much in the public domain before the priority date, but whose exact composition and method of manufacture was not in the public domain. The Enlarged Board went into a long rigmarole in interpreting G1/92, the previous decision on availability to the public, which said:
The chemical composition of a product is [part of the] state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.
The EBA decided that availability, not reproducibility, is the key. As the decision put it:
I. A product put on the market before the date of filing of a European patent application cannot be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person before that date.
II. Technical information about such a product which was made available to the public before the filing date forms part of the state of the art within the meaning of Article 54(2) EPC, irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date.
The practical consequences of this are:
– A product sold or made available is now equivalent to prior art, even if it cannot be analysed or reproduced.
– Any technical distribution (technical sheet, advertisement, etc.) is enforceable as prior art.
I personally find this slightly perplexing. I spent years reading technical trade literature at Dulux, and they all feature a paragraph to the effect that the proprietor reserves the right to change the composition of the product without prior notice. Now I don’t think this happens too often. In the perfume field, we’d all much rather say Iso E Super® than 1-(1,2,3,4,5,6,7,8-octahydro-2,3,8,8,-tetramethyl-2-naphthyl)ethan-1-one, but then, the perfume business is somewhat unique in that it uses trade names as descriptors, and the fact that the fragrance houses only ever sell ingredients to each other – customers get fully-formulated fragrances.
But in fields such as polymers and additives, there is absolutely no guarantee that the exact nature of the material will always remain the same. In the case of polymers, molecular weights are a movable feast. Would this make a difference as to how it works? Perhaps, perhaps not.
One claimed benefit of the decision is that a manufacturer cannot put a product on the market and then later patent it on the ground that it can’t be reproduced and therefore hasn’t been disclosed to the public. In this regard, the EPO decision resembles US law’s on-sale bar.
The other one, mentioned last time, was G1/24 concerning claim construction. The answer was that the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
In a way, this hints at a positive answer to that other perennial question – should the description be amended to accord with amended claims? This is EPO standard practice, although there is no actual basis for it in the EPC. However, it has arisen in another referral, the yet-to-be-decided G1/25, in which the question was the need for conformity in the case of amended claims in opposition or opposition-appeal proceedings. However, examination proceedings were mentioned in question 3:
1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?
Watch This Space…
Inventors frequently send me graphs and illustrations that include colour, and I have to ask them, please, to render them in B/W. This can be a major trial because sometimes removal of the colour can result in the feature becoming invisible in the B/W version and the impact completely lost. However, the EPO has now decided to allow colour and greyscale drawings in electronic filings. The decision of the President of the EPO may be found here (note 2(a)).
While this is very handy for Europe, acceptance of colour is hardly universal. Korea is the only office in the IP5 group that accepts coloured drawings without reservation. The CNIPA and USPTO will accept colour only if it is necessary for the understanding of the technical content and Japan doesn’t accept colour at all. And of course there’s the PCT, which also doesn’t accept colour in drawings (R.11.13(a) PCT). It will accept them in limited cases, but will render them in B/W – and the requirements of the chosen Contracting States will still need to be respected at National Phase entry. The message would seem to be that, unless I’m filing in a restricted country list, I’ll have to continue bothering inventors for B/W illustrations.
The wee 5 year-old tot we brought to Switzerland has just turned 40(!!), so, by way of celebration, the McSteas went on a Mediterranean cruise. The younger ladies are dedicated cruisers, I personally wasn’t keen on the idea, but it was a short one (3 days, Civitavecchia (Rome’s port city) to Barcelona). I actually enjoyed it more than I thought, especially when I found my way around this gargantuan ship, a sort of floating small town. We stopped off at Naples and got to see Pompeii, which was fascinating. The guy on the bus was interesting, saying
that the worry was not Vesuvius, but The Other One, Campi Flegrei, an enormous caldera that encompasses much of Naples and its bay, and which is showing disturbing signs of waking up, as described here. Evacuation plans have been made, and the Neapolitans hope that they have enough time to evacuate, but nobody knows as volcanoes operate on their own timetables – it could go bang next week or in several centuries.
One of the towns on the outskirts of Campi Flegrei is Pozzuoli, and I was pleased to make its acquintance, courtesy of a previous life. The Romans invented concrete, and one of the ingredients in their very effective concrete was volcanic ash from the vicinity of this town. To this day, there are materials that are added to concrete that not in themselves cementitious, but which react with calcium hydroxide to form cementitious materials – they are called pozzolans.
We loved Barcelona. Interesting things to see, broad avenues, excellent public transport, very pleasant vibe. Mrs. McStea just loved being on a beach again. Neither of us speak any Spanish but were surprised at how much Catalan we could read, courtesy of its many similarities to French. Catalan is an official language there, and signs in Catalan are placed above the Spanish language signs. We were also surprised at how many local spoke a bit of English – some of them quite, er, colloquially, such as the lady cyclist who found some folk standing in the bicycle lane near Gaudi’s outrageous Sagrada Familia (finishing date, sometime next decade) and said BICYCLE LANE! GET OUT OF THE WAY! F***ING TOURISTS!!!
And with that I wish you and yours all the very best for Christmas and 2026, which I hope will be somewhat saner, but, given the number of lunatics currently running the asylum, I’m not optimistic.