EPO PATENT CLAIM LOSES WEIGHT, LEADING TO SECOND REFERRAL ON CLAIM INTERPRETATION
It is less than a year since the EPO Enlarged Board of Appeal issued G 1/24, which set the standard in Europe on claim interpretation. But already a divergence has arisen between the Boards on how to implement this decision. Contentious points include its applicability in assessing added matter and the more fundamental point of when features in the description can be read into the claims.
T 873/24 turns on the lost “weight” in the patent claim feature “wherein the ratio of titanium to nitrogen is in excess of 3.42.” The claim does not specify whether this ratio is based on the weight, or, e.g. the moles. Critically, the application as filed used only the weight ratio. It was therefore objected that this amendment adds matter. The patentee argued in response that, read in light of the description, the patent claim feature would be interpreted as relating to the weight in view of the following statement in the patent description: “In the composition by weight of the sheet, the weight ratio of titanium content with respect to the nitrogen content is in excess of 3.42 . . ..”
The case turns on the contentious issues above, i.e., whether the patent claim should be interpreted based on the description such that the weight ratio is defined. The Board in T 873/24 have therefore referred several questions to the Enlarged Board seeking clarification on how claims should be interpreted in Europe and how this relates to added matter. More details can be found here.
Thank you to European Practice Committee members ADAM LACY (Hoffmann · Eitle) and KELLY MERKEL (Eaton Corp.) for contributing this item.
INCLUSION CORNER: A ROUNDUP OF RECENT ARTICLES RELATED TO DIVERSITY, EQUITY, AND INCLUSION
Diversity Lab, a 12-year-old legal-industry DEI consultancy, is shutting down amid an investigation by the FTC. In a statement by founder CAREN ULRICH STACY, the organization emphasizes that its legacy endures: over 600 law firms and legal departments used its data-driven pilot programs, most notably Mansfield Rule certification, to embed transparent, bias-resistant employment practices in their operations. (Stacy has spoken at a past DEI committee monthly meeting.) The reason for the shutdown was financial strain from repeated investigations and an unwillingness to disclose confidential client data in threatened litigation. Diversity Lab stresses that the systemic reforms it championed remain in place across the legal profession. Above the Law covered the closure in the context of the FTC’s antitrust enforcement actions.
In oral arguments on May 14, a panel of the DC Circuit questioned an executive order that revoked security clearances and limited government access for four large law firms, citing among other factors the firms’ workplace diversity policies, which the order described as discriminatory. A lower court had previously vacated the order. The firms received support from across the legal industry.
In commentary, Kenji Yoshino and David Glasgow from the Meltzer Center for Diversity, Inclusion, and Belonging at NYU School of Law argue for “The Upside of Opening Up DEI Programs to Everyone.”
Inclusion Corner is a new quarterly feature contributed by IPO’s Diversity, Equity, & Inclusion Committee. Thank you to Vice Chair BRYAN HART (Brooks Kushman P.C.) for contributing this item.
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“THE DATA SHOWS” OR “THE DATA SHOW”?
A Hard Question ─ READERS have asked whether “data,” a word common in IP, is singular or plural. Some people get emotional about this.
Changing Usage ─ Until the late twentieth century, “data” was a plural word taking a plural verb. The singular was “datum.” In most fields today, “data” is singular (the data shows) and “datum” is seldom heard. According to the Microsoft Style Guide, “data” almost always should be a singular noun. That’s in their industry. Scientific researchers and strict scholarly journals still tend to write “data” as a plural word.
A Tip on Winning Friends ─ The pronunciation in the U.K. and most often in the U.S. is day-tuh. An acceptable alternative in the U.S. is dah-tuh. If someone you are speaking with pronounces it the way that’s not your way, quickly shift to their way. Do it with “amicus” too (but maybe not “tomato”).
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