Wednesday, 14 October 2009

T 1157/06 - Southern German Skills

Several Board of appeal decisions have retained very precise definitions of the skilled person. For instance, T 412/93 [4] has found that in a particular case “the skilled person should be treated as a team of three composed of one PhD researcher with several years experience in the aspect of gene technology or biochemistry under consideration, assisted by two laboratory technicians fully acquainted with the known techniques relevant to that aspect.” In the present decision, the opponent pushed things even farther. Enjoy.

The Opposition Division had rejected the opposition and concluded that the subject-matter of claim 1 of the patent as granted was inventive.

[…] The appellant argued that […] the skilled person, a mechanical engineer from the south-west of Germany, having graduated from a technical college and having several years of professional experience working for a major manufacturer of gears, and whose command of English corresponded to the average knowledge of English of a person having passed final secondary-school examinations (Abitur) twenty years ago, would – due to his limited knowledge of English – have understood the cited passages [of D1] to disclose that the couple of bearings of the planetary gear compensate the forces directed towards the inside. […]

The following questions should be referred to the Enlarged Board of Appeals (EBA) : (1) Does the skilled person have a mother tongue ? If so, what is his mother tongue ? (2) What is the level of knowledge of foreign languages of the skilled person ? […] [VI]

[…] According to A 112(1) EPC a referral to the EBA is admissible only if a referral is required in order to ensure uniform application of the law, or if an important point of law arises. In both cases the Board before which the procedure is pending and for the decision of which the answer to the question to be referred is relevant, has to consider that a decision is required. [4.1]

In the present case, the Board does not consider that a decision of the EBA on the questions submitted by the appellant is required, because the answer to these questions follows unambiguously and directly from the EPC and because the case law uniformly applies the law.

According to A 54(2) EPC 1973, the state of the art comprises everything made available to the public by any means whatsoever before the date of filing. The language of the publication does not matter.

The questions raised by the appellant concern the interpretation of a prior art document and the determination of its content, respectively. The point is what a skilled person can extract from a disclosure.

There is comprehensive and constant case law concerning this point. The criteria of interpretation have been defined unambiguously. The language skills of the skilled person do not form part of the decisive criteria playing a part in the interpretation of documents.

This is because, according to the uniform case law, the skilled person is not a real existing person but a fiction representing the entire technical knowledge (Fachkenntnisse) that has to be considered in the assessment of inventive step and, as a consequence, in the interpretation of the prior art.

Therefore, the subjective language knowledge of the person reading a document cannot play any role. [4.2]

To read the whole decision (in German), click here.