Oddfellow August 2019

J.A. McStea, Teemacs GmbH

But is it plausible?

Bubendorf 23 August 2019

Nowhere in the EPC will you find that plausibility is a ground for invalidating a patent application. Yet it is appearing more and more frequently in EPO office actions. This was the subject of a particularly good talk in the regular Basel Intellectual Property Lecture series, which does such a useful job in filling in my CPE requirements.

It is not just an objection as to lack of clarity, but it also finds its way into inventiveness objections. It works something like this. You have claimed everything out to the orbit of Neptune, but you have exemplified only your office and the one next door. The EPO will then say that the invention has not been plausibly shown to work over the entire scope of the claimed invention, thus, there is a sufficiency problem. In addition, the EPO’s problem-solution approach to inventiveness requires (a) identification of an objective technical problem not solved by the prior art, and (b) an assessment as to whether the claimed solution in fact solves the technical problem. For a positive assessment of inventiveness, the invention must be plausible. i.e. that is solves the technical problem across the entire claimed scope. The monopoly given by the patent must correspond to the technical contribution actually made by the disclosed invention.

The whole thing seems to have started with T932/92 (AgrEvo) where it was held by the Board that the technical effect was not credibly achieved for all the claimed herbicidal compounds. This, as you can imagine, is potentially a particular trial for pharmaceutical patents, which have been filed long before they get anywhere near clinical trials, and therefore before the winnowing out of what is often a broad generic scope to the most likely commercial candidates. However, the EPO realizes the problems here, and it allows in vitro evidence, provided that the effect demonstrated directly and unambiguously reflects a therapeutic application. However, more than a simple verbal statement that the thing works is needed. Post-published evidence may also be taken into account, but not always – in one case T1329/04 (John Hopkins), post-published evidence was not allowed as the original application had nothing whatsoever that could be reinforced by such evidence.

The talk also mentioned that, in several UK cases, lack of plausibility has been advanced as attacks on both industrial applicability and priority entitlement (HGS v. Eli Lilly and Merck, Sharp and Dohme v. Ono)

As you all know, Brexit did not take place when scheduled, so no problems in my last two jaunts to Belfast. It’s now set for Hallowe’en, when strange spirits (of varying degrees of proof) stalk abroad. Will it happen? We wait and see. Especially worrying is the arrival of Boris Johnson, a slightly more erudite version of Donald Trump, as Prime Monster, and he is engaged in a dangerous game of chicken with the EU over Northern Ireland and its border with the Irish Republic. This is something that has the potential for financial/economic catastrophe for both parts of Ireland, and it could even bring back the nasties with the guns and bombs. However, surveys have shown that much of the Conservative Party would be happy to pay the price of the break-up of the UK for the achievement of Brexit. And hostility towards Irish residents in England is rising, as Ireland is being blamed for being an obstacle to Brexit. A friend and ex-Givaudan colleague, also from Belfast, but a long-time resident of England (unlike myself, no discernible Belfast accent), an Anglican churchwarden and a pillar of the local community, was recently told to “p*** off back where you came from”.

The problem is that the UK is run by upper-class twits, all jolly hockey sticks public school and Oxbridge chap(esse)s. A very good article in the Irish Times recently pointed out that many of the spiffing chaps were members of the Oxford Union, the celebrated debating society, where eloquence, panache and sheer verbosity can often trump (if you’ll pardon the expression) facts – or as you folk would say, bull**** baffles brains. And they take this mentality into public life (and, remember, the public schools were meant to produce people to lead the country) and Parliament is merely a game of one-upmanship, of winning the argument, not of improving the lot of the common man, about whom they couldn’t give a fig. And, of course, these wealthy chap(esse)s will be largely unaffected by Brexit woes.

The renewal of our C-permits (Swiss equivalent of the US’s green card permanent residence document) is due in October. Last time, my wife’s Australian passport has expired – and to renew it, you have to go personally to the Australian Permanent Mission in Geneva. Having just lost one-third of her large intestine to an operation, she was in no shape to go anyway, so I asked the local authorities whether her Irish passport (acquired through me) would do. No problem, they said, so the new permit has her nationality as IE rather than AU. I might use my Irish passport this time, as Ireland will remain an EU member.

Speaking of folk who may be affected by Brexit woes, here we go again…from the latest CIPA Newsletter:

The 2019 European Qualifying Examination (EQE) results have been released and they continue to show that year-on-year, the high standard of training in the United Kingdom is delivering world-leading European patent attorneys.

It always reminds me of Michael Flanders and Donald Swann:

The English, the English, the English are best!

I wouldn’t give tuppence for all of the rest!

The failure to distinguish between passing an exam and delivering on the job for the client continues. But then, to paraphrase the immortal words of Mandy Rice-Davies, they would say that, wouldn’t they? The soon-to-be separation of the UK from the EU has them badly worried, so they’re banging the “aren’t we just wonderful” drum as hard as they can. It has to be remembered that the British don’t make anything much any more – the financial/insurance services of the City of London generate around 22% of the UK’s GDP, so it’s important to get in as many foreign clients as possible. Thankfully for the UK, the EPO is not an EU organization, so the filing and prosecution of European patents is unaffected, and, as English is the language of over 60% of EP applications, this gives the UK a substantial advantage.

I can’t quite get over my native city (Belfast), a rather drab, Victorian place in, admittedly, a rather nice location, being a tourist destination. Seeing a busload of tourists get off at the tourist office facing the City Hall and being fallen upon by a host of tour operators, offering tours to the “Titanic” Museum, up the Antrim Coast, the Giant’s Causeway, “Game of Thrones” tours, etc. etc. was a bit like the feeding frenzy you see when chum is thrown into shark-infested waters. I seem to be back rather a lot now, courtesy of my mother’s health – I’ll be over again in September. Some weeks ago, she (95) fell and broke her hip, and had to be stuck together again, so I was over as Entertainments Officer while my brother had a well-deserved holiday. She also has mild but increasing dementia, and, while she still recognizes me (but frequently calls me by my brother’s name), she is often confused, and still wants to leave the old people’s home and go back to “me own wee house”. Explanations to the effect that she needs professional care that we can’t give go nowhere. It’s sad to see the person you knew and loved slowly vanishing before your eyes, getting weaker and more confused.

Perhaps better to emulate my old friend and former colleague, Prof. Dr. György Emil Fràter, former head of Givaudan Fragrance Research, who died of a stroke in a restaurant in July. George, as he was universally known, a professor at the University of Zürich and former President of the Swiss Chemical Society, was a Hungarian refugee from the 1956 uprising so ruthlessly suppressed by the Russians. He was one of the last of an old-fashioned management style, which reminded me very much of Dulux before more “professional” management took over. George was interested only in good chemistry – and anything that got in the way of good chemistry got kicked violently out of the way. He hired me to be Head of the Patent Department at Givaudan – I suspect that a shared love of good tea might have had something to do with it. When he retired, he went on to help found XiMo, a company making metathesis catalysts (metal complexes, useful in olefin rearrangement chemistry for petroleum feedstocks), and Teemacs got a bit of work for XiMo as a result. As I commented to his daughter, in time, she may see her father’s means of departure as a blessing, going out, still full of life and ideas, rather than having to watch the lights going out slowly.

Our younger daughter, Megan “Biggles” McStea, has moved on to flying Airbuses for Edelweiss, a subsidiary of Swiss and ultimately Lufthansa. This she finds tricky – Airbuses are fly-by-wire, that is, there’s a computer between you and the control surfaces, whereas she is used to direct control in her previous aircraft. Moreover, the Airbus uses a joystick, as in a computer game, rather than the traditional wheel, so she had to get used to that. She successfully did her practice flights, but as the most experienced trainee, she went straight from those to a flight to Catania in Sicily. When they got there, the airport was closed because of bushfires burning right to the edge of the airport, so they had to divert to Palermo. This led to an unscheduled overnight stop in Palermo, in a very noisy hotel, in which she got very little sleep. Next day, the airline thought they could just squeeze in a flight to Greece, before they were out of flying time. They made it back to Zürich with 10 minutes to spare. She visited us shortly thereafter and was so tired that she went to bed at 10 and was still there at 10 the following morning. But she’ll get there.

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