tag:blogger.com,1999:blog-1454051731189268002.post4559949219463530007..comments2024-03-27T11:29:23.559-03:00Comments on Sufficient Description: Claim Defined in the Alternative: A Circle of Logical ContradictionUnknownnoreply@blogger.comBlogger4125tag:blogger.com,1999:blog-1454051731189268002.post-408612701073656372015-02-03T09:28:39.723-04:002015-02-03T09:28:39.723-04:00Anon
Thanks for your detailed analysis. I agree t...Anon<br /><br />Thanks for your detailed analysis. I agree that the decisions are reasonably consistent on whether or not s27(5) applies, if the type of language used in the claims is considered. One might debate whether the decisions, though consistent, are correct on the question of whether 27(5) should apply in terms of particular language. I avoided talking about the particular language because I did not want to to address that question, important though it is in its own right. My concern in this post is to point out that the decisions are, in my view, inconsistent as to what the consequences are if 27(5) does or does not apply. <br /><br />I agree with your interpretation of Phelan J’s obiter remarks, but as I see it, that interpretation is not consistent with Hughes J’s interpretation of 27(5). Even though Hughes J was dealing with different language, the key point is that he held that 27(5) does apply, and that is why the alternatives stand or fall separately, and not, as Phelan J would have it, together.<br /><br />(I also agree that "alternatives/group members" would be a better heading for the second column.)Normanhttps://www.blogger.com/profile/17573687140337856397noreply@blogger.comtag:blogger.com,1999:blog-1454051731189268002.post-15382985125376872032015-02-02T17:15:18.414-04:002015-02-02T17:15:18.414-04:00The left column of your summary chart is a bit mis...The left column of your summary chart is a bit misleading. What is not shown here is what type of language was considered in the determination of whether or not s27(5) applies: Markush language ("which is selected from the group consisting of X, Y, *AND* Z"), or alternative language ("which is X, Y, *OR* Z"). Claims drafters in other jurisdictions use these two formats relatively interchangeably now. There was a historical preference for Markush groupings in the U.S., as you may know, but only because it was not possible to claim in the alternative there in the early part of the 20th century.<br /><br />I also think it is a misnomer to title the second column of your summary chart "alternatives". I know what you are getting at, but as the members of a Markush grouping are not strictly considered to be alternatives, I believe that something like "alternatives/group members" would be more appropriate for this heading.<br /><br />In any case, the decisions are at least consistent on whether or not s27(5) applies, if the type of language used in the claims is considered, and the Hughes J decision is a bit of a different kettle of fish. <br /><br />- von Finckenstein J considered Markush language and found the s27(5) did not apply.<br /><br />- Phelan J also considered Markush language and similarly concluded that s27(5) did not apply. In obiter, he considered what would happen if the claim had been expressed in the alternative, using "or". In this case, he said s27(5) would apply, but would not have saved the claim because s27(5) does not refer to s58. So I think even your qualified left-hand "Yes" here is a bit misleading; the "Yes" was only to different/hypothetical claim language.<br /><br />- Snider J considered alternative language and found that s27(5) did apply.<br /><br />- de Montigny J considered Markush language and found the s27(5) did not apply.<br /><br />Up to this point, we at least have consistency in that s27(5) does not apply to Markush groupings, but does apply to alternatives. I certainly agree that, thereafter, the de Montigny J decision takes a rather “different course”! <br /><br />- Hughes J was dealing with claim dependency language, which does not fit neatly into either the "alternative" basket or "Markush" basket. It is a convention that is required by CIPO (MOPOP 11.06). In Canada, the options are to state "according to claim 1, 2, or 3" or "according to any one of claims 1 to 3" (interestingly, the Patent Office does not permit the Markush-y "selected from" to be included in latter as a matter of policy). The latter tends to predominate only because it is impractical to write out "according to claim 1, 2, 3, 4... 99, or 100", and much easier to write "according to any one of claims 1 to 100". <br /><br />As you say, it is also difficult to know what the purpose of s27(5) is intended to be; I cannot imagine that the statute drafters intended it to apply differently to Markush language and alternative language, and, up to the decision of de Montigny J, the practical result of having one invalid “option” recited in claim has been the same, no matter how the claim has been formulated.<br /><br />However, On the assumption that s27(5) was not intended to apply differently to Markush and alternative language (i.e. on the assumption that the initial finding of von Finckenstein J in this regard was wrong), the only explanation I have come up with for an intended meaning consistent with Phelan J’s subsequent obiter view on s58 is that s27(5) reminds us that "alternatives" (I use the term loosely) should be ASSESSED SEPARATELY for the purposes of determining claim date (28.1), utility (s2), novelty (s28.2), and obviousness (s28.3): in short, individual options are to be scrutinized SEPARATELY, but fall TOGETHER. In this way, a list of options (however formatted) would function very much like any old collective noun.<br /><br />But, alas, we have the Markush/alternative split in treatment, and now yet another confusing decision to factor in…Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-1454051731189268002.post-12913331453330759062015-01-27T10:13:21.205-04:002015-01-27T10:13:21.205-04:00Anon, very amusing (though depressing at the same ...Anon, very amusing (though depressing at the same time) thanks for pointing that out.Normanhttps://www.blogger.com/profile/17573687140337856397noreply@blogger.comtag:blogger.com,1999:blog-1454051731189268002.post-60668445775148202262015-01-26T18:49:48.318-04:002015-01-26T18:49:48.318-04:00Adding an additional layer of logical uncertainty,...Adding an additional layer of logical uncertainty, I note that CIPO will often object to the claim language "in the alternative" as being unclear, where it is used in an effort to unambiguously invoke 27(5). Perhaps these cases illustrate that CIPO is correct, although one could reach an alternative conclusion.Anonymousnoreply@blogger.com