Treaty News; A Discussion On Collocations

PCT gathers to a greater extent than adherents

WIPO's PCT Notification No.175 informs the IPKat that Malaysia is signing upwardly to the Patent Cooperation Treaty, which volition piece of employment inward into strength at that topographic point on 16 August 2006. That's 1 twenty-four hr flow earlier Republic of El Salvador becomes PCT-operational, according to PCT Notification No.176.

Full text of PCT here; electrical flow listing of adherents here


Viet Nam signs upwardly for Madrid

notes that the Communist authorities inward Viet Nam is sufficiently sensitive to the needs of rampant capitalists as well as the consumer bourgeoisie that it has decided to sign up for the Madrid Protocol - 1 of the keys to smoother, to a greater extent than cost-effective globalisation - alongside upshot from 11 July 2006.

Viet Nam IP resources here


Two for Uzbekistan

The Republic of Uzbekistan has acceded to the Locarno Agreement Establishing an International Classification for Industrial Designs, alongside upshot from 19 July 2006 - as well as on the same twenty-four hr flow the Patent Law Treaty enters into force. These steps may non convey directly noticeable results on the streets of Tashkent, but they are welcome anyway: edifice an IP infrastracture's a long-term project.

Contracting parties to Patent Law Treaty here (14, including Uzbekistan); contracting parties to Locarno Agreement here (47, including Uzbekistan)


A give-and-take on collocations

's friend Luke Ueda-Sarson writes: "I receive got been waiting the final span of months to encounter if anybody would comment on the determination inward the ex parte O/083/06 hearing of application GB0205795.8 of Mr P Thorpe. But, since nobody seems to receive got made whatever comments either hither or anyhwhere else, according to Google, I am at nowadays wondering if it has simply slipped beneath the radar.

The hearing officeholder to my heed made a serious error that, fifty-fifty if overturned on appeal, could behave upon large numbers of applications inward the meantime if it represents the office's seat generally. The indicate turns on the "law of collocation" expounded upon latterly yesteryear Lord Hoffmann inward Sabaf. Sabaf was an number of obviousness. The hearing officeholder expanded the approach into the realm of novelty with, at to the lowest degree to my eyes, startling results. He said:

33 Following the reasoning inward Sabaf, I must conclude that the application relates to ii form out inventions, namely innovation 1 comprising characteristic H5N1 as well as innovation 2 comprising characteristic B. I must consider each of these inward plough applying to each innovation the private tests for patentability. Although the examiner has argued on the footing of lack of inventive step, it is perhaps to a greater extent than appropriate to get-go whatever consideration alongside the enquiry of novelty. If an innovation is shown to hold upwardly lacking inward this observe as well as so it is non necessary to consider the enquiry of inventive step.

34 I would perhaps comment inward passing that I was surprised that Lord Hoffmann did non address the number of the novelty of the ii inventions inward the Sabaf patent since neither of the features appeared to hold upwardly new.

[Says Luke: I would response this yesteryear maxim the ground he did non so address the number is because it is incorrect to create so: encounter to a greater extent than anon]

35 [considering whether whatever of the features at number are novel]. Therefore both inventions neglect the essay of novelty.

36 I am witting that inward relying on a lack of novelty inward cases such equally this I am perchance departing from the approach previously taken. But this approach is the logical conclusion of the SABAF judgment which is a judgment I am outflow to follow.

[Luke adds: The logic escapes me. Never earlier has anybody demaded that whenever an innovation is made, at to the lowest degree 1 of the components of the innovation must itself hold upwardly new. This agency no affair how bright a combination is, no affair how inventive, if at that topographic point is no synergy involved, it can't hold upwardly patented. This is exactly why Sabaf did non extend to novelty. One must demonstrate non simply that the components are non new, but they are obvious to role equally well. See Sabaf at 27: "... he was so dealing alongside ii alleged inventions, each of which had to transcend the essay seat downward inward department 3. He identified the *inventive step* inward each". Section iii of course of teaching is purely nigh obviousness, non novelty:

3.- An innovation shall hold upwardly taken to involve an inventive stride if it is non obvious to a mortal skilled inward the art, having regard to whatever affair which forms component subdivision of the province of the fine art yesteryear virtue exclusively ofsection 2(2) inward a higher house (and disregarding department 2(3) above).

It does non state "[a]n innovation shall hold upwardly taken to involve an inventive stride if it is non novel". So a combination tin withal hold upwardly non-obviousness if at to the lowest degree on the the components involves an inventive step. This may or may non receive got been the instance here, but the hearing oficer explitly made no finding on the issue.

The hearing officeholder as well as so attempts to exhibit his novel approach (in both senses of the word) would inward whatever instance brand no difference, since the EPO would create upwardly one's heed the same]

40 ... [EPO guidelines] However, where the claim is simply an "aggregation or juxtaposition of features" as well as non a truthful combination, it is plenty to exhibit that the private features are obvious to evidence that the aggregation of features does non involve an inventive step.

41 Therefore the EPO would turn down the application equally an aggregation that does non involve an inventive step.

[Says Luke: Unfortunately, the hearing officeholder made the same error here. The EPO guideliness clearly state aggregation volition hold upwardly obvious when the components are obvious. The hearing officeholder constitute the components were non novel, equally opposed to maxim that they were obvious, encounter indicate 35. So the EPO would brand no finding at all here]

is fascinated yesteryear exercises inward the deconstruction of instance law. When he read Lord Hoffmann's spoken communication inward Sabaf he assumed that it was inventive stride that his Lordship was concerned with; it never occurred to him that the collocation number had whatever bearing on novelty too.