Monday, 30 November 2009

T 565/07 – Converge !

The opposed patent concerns a domestic throughflow heater.

The patentee filed several sets of claims ten days before the oral proceedings.

Claim 1 of the main request reads:

1. Domestic technical electrical throughflow heater (1) fixedly installed in a wall, with technical subassemblies which are arranged in a housing, which is formed by a back wall (2) and a cover hood, and with a base support which is fastened to a wall and on which the cover hood is placed, characterised in that the base support is formed by the back wall (2) and the technical subassemblies of the domestic technical electrical throughflow heater fixedly installed in a wall are combined into a lain component (3) and this is connectible with and detachable from, in one piece, the base support fastened to the wall.

Claim 1 of the second auxiliary request adds the feature of dependent claim 8 as granted: “wherein a cable entry bush (5) is integrally formed with the base supply.”

Claim 1 of the third auxiliary further specifies the nature of this cable entry bush.

Claim 1 of the fourth auxiliary request supplements the main request by adding the feature of dependent claim 2 as granted: “wherein the main component (3) is connected with the base support in that it is placed in shape-locking manner on at least a projection (8) and detented with the base support by two snap hooks (9).

The Board admits the main request and the second auxiliary request but decides not to admit the third auxiliary request because it adds features taken from the description, which is considers surprising. The Board then deals with the fourth auxiliary request:

[…] Claim 1 of the fourth auxiliary request comprises, in addition to the features of claim 1 of the main request the feature of dependent claim 2 concerning the connection of the main component and the base support. As this connection has nothing to do with the cable entry bush, this auxiliary request heads into a completely different direction than the second and third auxiliary request. Even if in principle a patent proprietor has to be authorised within the framework of R 80 to limit the subject-matter of a patent by introducing features of a dependent claim in order to meet objections against the patentability of the independent claim that has been granted, the repeated application of this right in different directions, e.g. in the form of parallel our subsequently filed requests would lead to the result that the patent proprietor leaves it to the Board to decide in which of the different versions the patent should be maintained. This result is not reconcilable with A 113(2) according to which the Board has to stick to the “text submitted … by the proprietor”, which means that it is incumbent on the patent proprietor to decide on the version in which the patent is to be prosecuted, and to file one or several sets of claims that have to correspond to this decision and, as a consequence, to the chosen direction of limitation (see also T 382/96 [5.2] and T 446/00 [4.3]). This is all the more true if, as here, the new additional direction becomes known with the filing of the corresponding auxiliary request only ten days before the oral proceedings. [2.5]

This is a tough decision. I understand that the Board is reluctant to deal with sets of claims heading into different directions, but the justification based on A 113(2) is somewhat artificial.

The reference to T 382/96 and T 446/00 (which merely cites – and translates – T 382/96) is not very helpful.

I much prefer the reasoning of T 240/04 [16], which comes to a similar conclusion, but on different grounds: “The operation of the sensor arrangement claimed in the third auxiliary request is a separate theme which diverges from the technical object of the impugned decision both according to the problem and its solution. The fact that the operation was already claimed in dependent claim 9 does not alter the fact that such a divergence exists. The abstract common feature that all the requests are alternative solutions does not constitute a sufficient factual link (sachliche Klammer). Moreover, the third auxiliary request differs not only from the matter discussed before the first instance but also from the object of the second auxiliary request. As a consequence, the requests of the appellant do not aim at a (converging) specification (Präzisierung) of the solutions examined in first instance. One rather hops from invention to invention. As far as the appeal proceedings are concerned, the EBA has developed the principle according to which these proceedings above all serve the right of the parties to an examination of the decision of first instance in court-like (gerichtsförmig) proceedings. The likeness of inter partes appeal proceedings to proceedings before an administrative court has been underlined by G 9/91, G 8/91, G 7/91 and G 1/99. In particular, G 1/99 has found that the main aim of the inter partes appeal proceedings is to give the losing party the opportunity to contest a decision which is adversely affecting it and to provoke a court decision on the merits of the fist instance decision. Thus the factual and legal framework of the opposition proceedings, as defined in G 9/91, is in principle decisive for the ensuing appeal proceedings. It directly follows that the disputed matter (Streitstoff) on appeal can only be modified to a certain extent. This principle is expressed in Article 12(4) RPBA which mentions the discretion of the Board not to admit requests that could have been presented in first-instance proceedings. In this instance, the appellant could have presented the auxiliary request 3 before the first instance. This was even mandatory because the amended independent claim concerns a problem that is only remotely related to the original problem and adds a fact (Sachverhalt) that has not been discussed before. The appellant had to expect that the board would be unable to decide on the matter. To admit the new request in such a situation would be tantamount to giving the patentee the possibility to force the board to remit the case to the first instance. This would disadvantage the opponent and would be contrary to procedural economy. For these reasons, the board does not admit the auxiliary request.”

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

Saturday, 28 November 2009

T 339/05 – Thou Shalt Not Overburden The Skilled Man

The decision [to refuse the application] was based on the claims as originally filed. Claim 1 reads as follows: “An ink composition […] containing an amorphously solidifying monomer compound, characterised in that the said compound shows a crystallinity of less than 1% when a melt of the compound is cooled at a rate of 5°C/min to past its solidification path and is then heated at a rate of 20°C/min to above its melting temperature.” [III]

[…] In claim 1, the amorphous solidifying monomer compound is characterised in that it shows a crystallinity of less than 1% when a melt of the compound is cooled at a rate of 5°C/min to past its solidification path and is then heated at a rate of 20°C/min to above its melting temperature. [3.1]

The only amorphous solidifying monomer compounds satisfying this parameter which are disclosed in the application as filed are 2,2’-biphenol esters of carboxylic acids having an aromatic character. [3.2]

The Appellant argued that other binders than the exemplified esters of 2,2’-biphenol [could] be identified by simple routine experimentation, following the procedure as described on page 3. [3.3]

However, this procedure only describes how to determine whether or not a compound meets the parameter defined in claim 1. It gives no indication how to select the “amorphous solidifying monomer compounds” to be tested according to that procedure.

Moreover, the examples of the present application show that many aromatic or non aromatic esters other than that of 2,2’-biphenol do not satisfy the parameter indicated in claim 1.

So, the present examples actually give the impression that - apart from the monomers defined by their chemical structures in the description […] - few, if any, further suitable monomers could be found. [3.4]

The Appellant confirmed this impression by pointing out that “it may be a lot of work to find compounds other than the exemplified ones, possibly because there are not too many compounds that show this behaviour, ...” [3.5]

Hence it has to be determined whether or not this “lot of work” means that the subject-matter of claim 1 does not meet the requirements of A 83, i.e. whether or not it imposes an undue burden on the person skilled in the art trying to perform the claimed invention in the whole area claimed (see T 409/91 [3.5]).

The person skilled in the art trying to trace monomers meeting the required parameter does not have at his disposal, neither by his common general knowledge nor by means of the disclosure in the application as filed, any information leading with a reasonable probability towards other monomers having the defined parameter other than those specifically disclosed.

Consequently, the person skilled in the art has to find out merely by trial and error as to which, if any, compound meets the parameter set out in claim 1, i.e. by proceeding on a lottery basis or by making own investigations without the shadow of any useful guidance, namely by performing a research program. This constitutes an undue burden (see T 516/99 [3.1]). [3.6]

That means that the fact that this can be done by routine experimentation is not sufficient for the subject-matter claimed to meet the requirements of A 83. [3.7]

To read the whole decision, click here.

Friday, 27 November 2009

T 1606/07 – Don’t Waste Your Ink on Device Claims

[…] Claims 1 to 6 of the present application concern a method for determining the virtual address of a terminal. […]

Independent apparatus claim 7 [“Product comprising means for carrying out completely a method according to one of the method claims”] only mentions means that are not specified in detail but are defined by a reference to the method claims. [1]

The patentee refers to decision T 410/96 to justify the shortcut formulation of apparatus claim 7 as “means plus function” with referral to the characteristics of the method claims without mentioning them explicitly.

In principle, the Board considers such a claim formulation to be admissible, provided that means for carrying out each step of the method claim to which the apparatus claim refers are foreseen (cf. T 410/96 [5]). This is the case for claim 7 because it ensures that the whole process and, thus, “all steps” are carried out. [2.1]

The decision also contains a paragraph on the meaning of the term ‘product’ (Produkt). Apparently the patentee was not sure whether the Board would accept that a complex device could be referred to as ‘product’ and it offered auxiliary requests wherein the term ‘product’ was replaced by the term ‘system’. The Board does not really see a difficulty and states:

The Board is of the opinion that the meaning of the term ‘product’ does not necessarily exclude a set (Ansammlung) of components that interact in view of a system. [2.2]

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

Thursday, 26 November 2009

T 1382/04 - Effect of a Request for Oral Proceedings

The present decision deals with an appeal against the decision of the Examining Division to refuse the patent.

On 18 December 2008, the Board issued a communication pursuant to Rule 5(3) RPBA expressing doubts about the original basis of amended claim 1. Construing claim 1 broadly, the Board also came to a negative preliminary conclusion regarding the novelty of the claimed system with respect to D1. Pursuant R 100(2), the Board invited the appellant to file observations within a period of four months (expiring on 28 April 2009).

By a facsimile letter of 22 April 2009, the appellant requested an extension of time for filing the appellant’s comments on the Board’s communication. At the same time, the appellant requested oral proceedings (OPs) in the event that the prosecution of the application could not be resolved satisfactorily in writing. No comments were filed within the time limit. The request for an extension of the time limit was refused.

Therefore, the question arises whether the mechanism of R 100(3) operates, in which case the application is deemed withdrawn.

According to R 100(2), the appellant has been invited to file observations on the Board’s communication dated 18 December 2008.

Failure to reply to such an invitation in due time would result in the application being deemed withdrawn (R 100(3)). Hence, before deciding on the present case, the Board has to ascertain that a reply meeting the requirements of R 100(2) has been received in due time. If no response qualifying as a reply has been received, the case is not pending any more. The question arises because the appellant has not made any substantive observation on the Board’s communication. [1]

Historically, the legal instrument of a deemed withdrawal was introduced for administrative reasons as a means to save resources of patent offices and courts in cases where the applicant or appellant has clearly lost its interest in prosecuting an application. [1.1]

In the present case, the Board considers the request for OPs which was received within the time limit for filing observations as a reply avoiding a deemed withdrawal under R 100(3) since it cannot be assumed that the appellant has lost his interest in the application while requesting OPs at the same time, apparently with a view to present his comments on the Board’s arguments orally. Thus, the Board concurs with a corresponding finding in decision T 861/03 [6.2]. [1.2]

Hence, the present case is pending and, consequently, the Board has the power and obligation to issue a decision on the appeal. [1.3]

NB: This decision has already been commented here (in French).

To read the whole decision, just click here.

Wednesday, 25 November 2009

T 597/07 – Which Must Not Cannot Be

I owe the knowledge of this decision, which had escaped my scrutiny, to Laurent Teyssèdre, who has discussed the various admissibility issues addressed by the Board in a recent post on his blog.

There is still another interesting paragraph in this decision: the discussion of whether D1, a manufacturer’s information sheet for his clients, concerning a new generation of detergent compositions, was prior art under A 54(2).

Based on the date given on its cover sheet, the opponent submitted that the publication year of D1 was 1992. The opponent also pointed out that this was further supported by the postal code “W-4000 Düsseldorf” given in the foot line of the cover sheet. Such postal codes had been used only between the unification of Germany in 1989 and the introduction of the present 5 digits postal code system in 1993.

In its decision, the Opposition Division (OD) [did not consider] Document D1 […] as state of the art according to A 54 since the opponent’s argument that document D1 was of a type which was usually sent to clients was speculative and since in spite of the date and specific postal code printed on the document, it had not been shown where the document actually had turned up and that it had been made available to the public at a certain date. [III]

[…] The OD rejected the appellant’s arguments that papers of the type of document D1 are usually sent to clients and that it was against experience and economic sense to keep such a document unpublished until after the priority date of the patent in suit. In the present case however, even if the issue of the availability of document D1 is assessed on the balance of probabilities, the standard of proof chosen by the Appellant, the outcome is not in the Appellant’s favour.

The reason is that the subject-matter disclosed in document D1 which is relevant here has been filed on 20 September 1993 in document D7 as an International Application published under the PCT on 14 April 1994. This fact alone casts reasonable doubts on a publication of document D1 more than one year earlier, namely in August 1992, the date mentioned on the cover sheet of document D1, since document D1 would have been citable against novelty and inventive step of the subject-matter claimed in document D7.

Therefore the Board holds that even on the balance of probabilities the content of document D1 does not constitute prior art within the meaning of A 54(2). [3]

The balance of probabilities is often difficult to strike. I find it pointless to blame the Board for whatever conclusion it reaches. The argument given by the Board, however, is unpersuasive. It might hold true in an ideal patent world, but whoever has worked in the patent department of a big company knows that (a) the patent department does not always know what the marketers do, and (b) even if it knew that there had been a very limited disclosure, it might still be tempted to file a patent application, hoping that nobody would discover the prior disclosure. Sounds familiar ? Of course not.

To read the whole decision, click here.

Tuesday, 24 November 2009

T 1855/06 – Wanna Be Swiss ? You Better Be Medic !

This decision deals with Swiss-type claims outside the medical realm.

Claim 1 of the opposed patent is directed to the “Use of finely dispersed hydrotalcite […] for manufacturing elastane fibres having improved resistance against […] hydrocarbons.” D1 and D2 disclose the use of hydrotalcite in the manufacture of elastane fibres but do not mention that the resulting fibres have an improved resistance. The Board comes to the conclusion that the claim is not novel as the allegedly distinguishing feature does not allow to establish a novel use according to the principles laid out in G 2/88 or G 6/88. The Board then adds some interesting considerations concerning the claim wording.

[…] For the sake of completeness, in order not to give the impression that the claim wording is acceptable to the Board, the following is noted. [5]

The decisions G 2/88 and G 6/88 refer to the novelty of second non-medical applications and concern claims that are directed to the use of a known substance for a particular purpose. In the present case, this purpose is formulated as the production of elastane fibres having a particular property (improved resistance against hydrocarbons), so that the wording of claim 1 rather corresponds to the “Swiss claim” wording as proposed by decision G 1/83, which is considered appropriate for a novel second medical application. [5.1]

In G 1/83 such use claims worded according to the “Swiss claim” formulation have only been considered novel in the particular case that the intended purpose of the manufacturing of the product consists in its subsequent use for a surgical or therapeutic treatment of the human or animal body or in a diagnostic method. This exception was provided in order to compensate for the limitation of patent protection resulting from A 52(4) EPC 1973 (cf. A 53 c) EPC 2000). Such compensation is not needed in other domains. [5.2]

If, as in the present case, the alleged novel use concerns without doubt a non-medical use, the novelty of the use of a known composition for the known manufacturing of a known product cannot be derived from a novel property of the manufactured product. In such a case the use of a composition for manufacturing a product is to be interpreted as a method of manufacturing the product using the composition. It can be considered to be novel only if the method of manufacturing has not been made accessible to the public before, which is not true for granted claim 1, taking into consideration the disclosure of documents D1 and D2. In order to correspond to G 2/88 and G 6/88, the claimed use would then have to refer to a novel way of exploiting the novel property, and not merely to the manufacturing of a product which has this property. [5.3]

Therefore the Board follows the opinion expressed in decision T 292/04 [1-8, in particular 3 and 7] that a use claim worded in the “Swiss claim” wording, which encompasses both uses in methods referred to in A 52(4) EPC 1973 and uses that are not concerned by this provision, cannot be novel in view of the principles of decision G 1/83, in so far as the claim refers to a use of a known composition for the known manufacturing of a known product for a non-medical purpose. This is all the more true in the present case where medical uses are not even mentioned. [5.4]

Moreover, it should be noted that the Board is of the opinion that the subject-matter of claim 1 could not be considered to be novel also because, differently from the cases under consideration in G 2/88 and G 6/88, the purpose as formulated (“for improving the resistance against hydrocarbons”) does not refer to a novel technical activity that can be distinguished from the known purpose. Rather this purpose only aims at the improvement of a property of the elastane fibres that can be obtained by adding hydrotalcite. The claim does not require that this improvement be used in any way whatsoever. This is nothing but the realization that a known product has a certain property. Such a realization represents a mere discovery (cf. T 279/93 [5.4]). In order to transform it into a patentable invention and to derive the features of a novel technical effect under G 2/88 and G 6/88, the claimed use would have to be a novel use of the product which makes use of the discovery that the resistance against hydrocarbons is improved. In the present case no such novel use is expressed in the claim. As a consequence, the mere discovery of the improvement of a product property cannot justify the novelty of the use claim. [6]

Last, but not least, the Board wishes to point out that in such a case, where the alleged new effect is at best the realization of an improvement of an already known property of a product, and not the first realization of a hitherto unknown property of this product, a use claim for any use of this improvement, formulated according to G 2/88 and G 6/88, is not appropriate at all to distinguish the claimed subject-matter from the prior art. In such a case it cannot be sufficient to vaguely direct the claim to an undetermined use of the improved property, but the use should be specified on the claim, so that it is clear what the use contains and that it is novel. [7]

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

Monday, 23 November 2009

T 1763/06 – Abuse, Abandon and Adverse Affection

This decision does not open new grounds but it is a useful reminder of things easily forgotten.

A 107 provides that only parties that are adversely affected by a decision may appeal the decision. In the present decision the opponent pointed out that the appeal of the patentee was inadmissible because he was not adversely affected: according to the opponent, during the first-instance proceedings the patent proprietor made no request for maintenance of the patent as granted or as amended according to the main or the auxiliary request No. 1 submitted with its statement of grounds of appeal; consequently, as far as the mentioned main and auxiliary request No. 1 were concerned, the patent proprietor was not adversely affected by the decision under appeal within the meaning of A 107.

[…] As regards the appeal of the patent proprietor, the opponent submitted that the subject-matter of the claims amended according to the main and auxiliary request No. 1 filed by the patent proprietor with its statement setting out the grounds of appeal was broader than that of the claims of the requests defended by the patent proprietor during the first-instance proceedings, and that consequently, as far as the mentioned main and auxiliary request No. 1 were concerned, the appeal was not admissible because the patent proprietor was not adversely affected by the decision under appeal within the meaning of A 107.

However, the opponent did not contest the admissibility of the appeal of the patent proprietor with respect to the claims amended according to the remaining auxiliary requests No. 2 to 13 also filed with the statement of grounds of appeal, and during the oral proceedings the opponent did not dispute this finding of the Board. In addition, no other issue appears to call into question the admissibility of the appeal of the patent proprietor. Accordingly, irrespective of the admissibility into the proceedings of the main and auxiliary request No. 1 filed with the grounds of appeal, the admissibility requirements concerning the appeal filed by the patent proprietor were met at the time of filing the statement of grounds of appeal at least as far as the auxiliary requests No. 2 to 13 were concerned. As a consequence, the appeal of the patent proprietor is admissible.

It is noted in this respect that an appeal can only be assessed as a whole (T 382/96 [1]) and that there is no support in the EPC for a notion of “partial admissibility” of an appeal (T 774/97 [1.1]); thus, if the admissibility requirements, and in particular those of A 107, are fulfilled at least in respect of one request, let alone of several request as is the case of auxiliary requests No. 2 to 13, the appeal as a whole is admissible. [1.2]

[…] During the first-instance proceedings the patent proprietor repeatedly amended the claims as granted in an attempt to overcome the different grounds for opposition and also the different objections raised by the opponent and the opposition division with regard to specific technical features of the claims, and the interlocutory decision under appeal was then based on a main and three auxiliary requests containing different amended versions of the independent claims as granted. In addition, as noted in decision T 168/99 [1] cited by the patent proprietor, withdrawal of subject-matter does not necessarily mean that it has formally been abandoned. The basis for determining the presence of an adverse effect within the meaning of A 107 are therefore the claims as granted.

In the circumstances of the present case, the Board does not see any reason for not allowing during the present appeal proceedings a claim request containing independent claims consisting of the independent claims as granted amended as to clarify the meaning of a claimed technical feature; in particular, the fact that the subject-matter of these amended independent claims is broader than that of the claims of the amended requests considered during the first-instance proceedings does not constitute, in the absence of any special circumstance such as a possible abuse of procedure, a sufficient reason for not admitting the present main and sole request into the appeal proceedings. The patent proprietor is adversely affected because it has not abandoned any subject-matter of the claims as granted. [2]

To read the whole decision, click here.

Saturday, 21 November 2009

T 1207/05 - Obvious Combination of Internet Drafts

The treatment of Internet sources as state of the art is certainly one of the big challenges for patent offices in the near future. Landmark decision T 1134/06 has provided some fundamental principles, but much remains to be done. 

The present decision is interesting in so far as it deals with a field in which the skilled person is said to be expected to review certain drafts available on the Internet. 

BTW, I think this is the first decision to introduce the notion of 'community of skilled people', which comes dangerously close to the false idea that the skilled person is a real person.
[...] Starting from D2, the problem underlying claim 1 is to provide an alternative multiplexing scheme in which quality-of-service (QoS) is addressed, data packets of different class-of-service types may be multiplexed and data packets exceeding a given length may be transmitted. The problem includes three independent objectives.

D2 mentions several IETF (Internet Engineering Task Force)drafts and IETF Requests for Comments, among which are documents D1 and D5 and Request for Comment 1890, of which D4 is a revision. D5 specifies an Internet standards track protocol for the internet community describing the real-time protocol RTP. D1, D2 and D4 are working documents of the IETF Audio-Video Transport Working Group. These documents are Internet-Drafts published on the Internet. The community of skilled people in the field is expected to review these documents and to comment on them. The documents are work in progress and are valid for a maximum of six months. They may be replaced by revisions. They are a basis for technical discussions necessary in the working groups for the creation process of standardized technical solutions. A skilled person would consider them and combine parts of them, if appropriate.

D2 explicitly quotes D1 and compares the proposals of D1 and D2. The skilled person looking for a solution of the partial problem that data packets of different class-of-service types may be multiplexed would consider D1 which discloses a user header including a payload type field, and would include the payload type field in the header portion.

Moreover, D1 discloses with reference to figure 4 that the user header comprises a marker bit, which has the same definition as in document D4. D4 discloses that, if a video image occupies more than one packet, the marker bit is set to one for the last frame and otherwise set to zero. This implies that the marker bit is used to indicate whether an additional formatted packet for transporting the incoming packets is used. The skilled person would understand, that the use of the marker bit solves the partial problem of transmitting data packets exceeding a given length. The marker bit thus has the same function as the claimed more packets field. Thus, the use of a more packets field in the header portion is disclosed in D1 when taking into account its reference to D4.

The skilled person would further consider D5, which specifies an Internet standards track protocol describing the real-time protocol RTP. D5 is a basic reference document providing general information and details of RTP. It is mentioned as a reference document in D1 and D2. D5 states that RTP is intended to be tailored through modifications and/or additions to the headers as needed. Moreover, D5 discloses an extension mechanism to allow individual implementations to experiment with new payload-format-independent functions that require additional information to be carried in the RTP data header. The skilled person would understand that, if a QoS field was needed, it would be possible to add it to the header.

The skilled person would further understand from the discussion in D2, which concerns using a sequence number field in the MINI-header instead of in the RTP header, that fields of the RTP header may be transferred to the MINI-header and vice versa depending on the particular circumstances. Thus, it is considered to be obvious to place a QoS field in the header portion of the formatted packet.

Thus, the method of claim 1 does not involve an inventive step. [3.3]

To read the whole decision, click here.

Friday, 20 November 2009

T 783/08 – Tessellation Denied

The Opposition Division (OD) came to the conclusion that Claim 1 of the auxiliary request was novel over the A 54(3) document D8 because the skilled person had to make several selections in order to arrive at the claimed subject-matter. First the specified monomers had to be selected in a list; then the polymerisation had to be carried out in the presence of an emulsifier whereas the polymerisation in D8 is said to be preferably done without any surface-active compositions; thirdly one had to use the polymers as a dispersion mixture.

The Board of appeal does not follow this approach. It points out that D8 cites several relevant monomers and that it is stated that the process may be carried out in the presence of usual surface-active substances such as emulsifiers and/or protective colloids. The Board then continues:

As far as the use is concerned, D8 states: “Moreover, the polymers according to the invention are suitable for modifying the surface and interface properties. As a consequence of the surface-modifying effect the means according to the invention can be used for coatings, e.g. for polyolefins, for glass and glass fibres. Thanks to their surface-active effect they can also be used as protective colloids, e.g. for the stabilisation of metal colloids or in aqueous radical emulsion polimerisation.” [3.3.1]

In the present case the latter use as protective colloid in the aqueous radical emulsion polimerisation is relevant. It was undisputed in the oral proceedings before the Board that the word ‘they’ in this sentence refers to the “means according to the invention”. There was, however, no agreement as to what had to be understood by “means according to the invention”. The opponent held the view that this expression included polymer dispersions and the solid powders that can be obtained from them, whereas the patentee held the view that this expression was a synonym for the polymers mentioned at the beginning of the section and therefore referred to solid powders only. [3.3.2]

First of all it has to be noticed that the word ‘means’ is a relatively broad term in normal language usage and therefore should prima facie cover all the embodiments disclosed in D8. This impression is confirmed by the disclosure of D8 as a whole. The first paragraph of the description of D8 makes clear that D8 concerns a process for the production of aqueous copolymer dispersions by aqueous radical emulsion polimerisation. This process is particularly suitable for the production of aqueous polymer dispersions. Moreover the polymer dispersions that can be obtained with this process can be transformed into solid powders by a drying process according to the prior art. Thus it follows from the context (Zusammenhang) of D8 that the expression “means according to the invention” comprises both product forms, i.e. aqueous polymer dispersions and the solid powders obtainable from them. Therefore the use as protective colloid in aqueous radical emulsion polimerisation is disclosed both for the aqueous polymer dispersions and the solid powders. Of course this general disclosed use also concerns the specific embodiments of D8, and inter alia the polymer dispersions contained in examples 12 to 15. The Board considers that the total amount of information of D8 is novelty-destroying prior art. [3.3.3]

Here the novelty-destroying character does not result from a tessellated (mosaikartig) reading of the prior art. As soon as one comes to the conclusion that polymer dispersions fall under the expression “means according to the invention”, there is no need for a multiple selection in D8 in order to arrive at the subject-matter of claim 1. The use as protective colloid in aqueous radical emulsion polimerisation which is disclosed in D8 concerns all the polymer dispersions in D8. Therefore the argument of a novel “selection within D8” is unpersuasive.

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

Thursday, 19 November 2009

T 783/08 – Sign Once And You’re In

The patentee and the opponent both filed appeals against the decision to maintain the patent in amended form. The patentee omitted to file a statement of grounds. He later requested that the appeal fee be reimbursed, should his appeal be rejected as inadmissible, because the notice of appeal had not been signed.

[…] The notice of appeal filed by fax on April 24, 2008 consists of two documents, i.e. a letter to the EPO with the header of the representative of the second appellant, and a debit note (form 1010 of the EPO). The letter contains the name and the address of the appellant, the reference of the impugned decision and the request to set aside the impugned decision and to maintain the patent as granted. This letter is not signed but the debit note, which is also dated April 24, 2008, is signed by the representative mentioned in the header of the letter. [2.1.1]

A 108 EPC and R 99 EPC do not contain any provisions concerning signature of the notice of appeal. However, R 99(3) contains the following indication : “Part III of the Implementing Regulations shall apply mutatis mutandis to the notice of appeal, the statement of grounds and the documents filed in appeal proceedings”. R 41(2) h) EPC provides that the request for grant has to contain the signature of the applicant or his representative.

It follows from R 99(3) in combination with R 41(2) h) EPC that the notice of appeal has to be signed by the appellant or his representative. However, it cannot be derived from these provisions that each single document of a notice of appeal has to be signed or that the signature has to be in a particular place or on a particular page. As in the present case the debit note is part of the notice of appeal, the Board considers that the signature on the debit note is sufficient to satisfy the requirements of the EPC and to legally validate the notice of appeal. Therefore, the appeal of the second appellant has been validly filed. [2.1.2]

[…] As the appeal is validly filed but has to be rejected as inadmissible, because no statement of grounds has been filed, the reimbursement of the appeal fee is not justified. [2.3]

This decision is interesting for people who continue to file appeals by fax or letter. Even though they might become more and more rare, these ‘old school’ techniques allow some very nice tricks. For example, a patentee who is happy with a patent maintained in amended form but does not want to find himself in the situation where the opponent is the sole appellant (a non reformatio in peius situation) can file a notice of appeal without signature and provide the signature later on if (and only if) the opponent has filed an appeal. If the opponent does not file an appeal in due time, the patentee simply does not supply the missing signature, which entails the consequence that the appeal is deemed not to have been filed - and the appeal fee is reimbursed ! One thing we learn here is that if one wishes to use this trick, one must not file a debit note at the same time.

I guess that it is not possible to file an unsigned appeal via epoline, but I have to admit that I have not tried yet.

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

Wednesday, 18 November 2009

T 1276/07 – Rough Ride On A One-Way Street

[…] The patent is concerned with a […] particle filter for the purification of diesel exhaust gases. […] The ceramic members [of the filter are] assembled by interposing a sealing member consisting of inorganic fibers, an inorganic binder, an organic binder and inorganic particles. [2.1]

The document A2 is representative of the closest prior art. […] Claim 1 of the granted patent differs [from A2] in that the sealing member contains an organic binder. [2.2]

[…] Since during regeneration the filter assembly is subjected to high temperatures necessary to remove the particulate material trapped therein a relatively high and uniform thermal conductivity of the sealing member is mandatory in order to afford a high regeneration efficiency and mechanical durability.

[…] it is uncontested that the sealing member fulfils the requirements of adhesiveness and joining durability of the single ceramic members. Furthermore, the [patent proprietor] has demonstrated […] that the presence of an organic binder in the sealing member as defined in Claim 1 leads to a heat transfer between opposite sides of a filter element of a honeycomb filter assembly which is enhanced as compared with a sealing member according to A2 without organic binder. […]

Therefore, the objective technical problem to be solved vis-à-vis A2 is to be seen in the provision of a sealing member joining the ceramic members of a ceramic structural body which provides a high joining durability and adhesiveness as well as an enhanced thermal conductivity of the entire structural body. [2.3]

It could be argued:
(i) that it was obvious that the use of an organic binder together with an inorganic binder would provide enhanced adhesiveness, having regard to [documents] A6 and E9 […] relating to similar cement materials for similar purposes, and
(ii) that some cellulose polymers were known to prevent migration phenomena which lead to inhomogeneities in a ceramic mass, having regard to [document] A28 […]. However, none of the citations comprises any information whatsoever with regard to the influence of organic binders on the thermal conductivity of a composition as specified in present Claim 1. Nor do these citations contain any hint about the influence an organic binder would have on the three-dimensional structure of the organic fibres and the ensuing distribution of the inorganic particles favourable to thermal conductivity.

In the Board’s judgment therefore it is non-obvious to arrive at the claimed solution, irrespective of the fact that the prior art might suggest a partial solution of the underlying technical problem. This conclusion results from the fact that the prior art does not suggest the claimed solution in relation to one essential part of the underlying problem, namely the enhancement of the thermal conductivity. Since the skilled person cannot deduce from the information referred to above with regard to A6/E9 and A28, or any other citation, any link between the properties adhesiveness and/or migration prevention on the one hand, and thermal conductivity on the other hand, any speculation concerning the possible obviousness of the improvement of the last mentioned property by the addition of an organic binder to the cement composition of A2 is based on hindsight.

The reference to decision T 936/96, with the argument that a skilled person intending to improve adhesiveness by adding an organic binder in accordance with E9 would automatically improve the thermal conductivity of the assembled structure of A2, is besides the point. This argument is essentially based on the idea that the improved thermal conductivity is to be regarded as a bonus effect, not able to contribute an inventive step. However, such a conclusion is only justified in the case of a one-way situation, where the distinguishing feature (here: the addition of an organic binder) is the only way to attain the “main” objective (here: improved adhesiveness, migration prevention), a situation that does not apply here.

The subject-matter of Claim 1 as granted therefore involves an inventive step. [2.4]

The Board here construes a technical problem having two aspects (improving durability and enhancing conductivity) and admits that the prior art suggests to solve the first aspect by means of the claimed features.

This appears to be a classical “bonus effect” situation. As stated in T 21/81 already, an additional, possibly unforeseen effect (“bonus effect”; here : enhanced thermal conductivity) does not point towards an invention if the skilled person would already have arrived at the invention because another advantageous effect (here: improved joining durability and adhesiveness) could be achieved by combining prior art documents (here: A6/E9 and A28).

This is what the opponent pointed out, referring to T 936/96, the headnote of which reads: “Once a realistic technical problem is defined and once it is established that a particular solution to such a problem would have been envisaged by a person skilled in the art in the light of the relevant state of the art, then this solution lacks an inventive step, and this assessment cannot be altered by the fact that the claimed invention inherently also solves further technical problems.”

Quite unexpectedly, the present Board refuses to go along this path. It states that “such a conclusion is only justified in the case of a one-way situation, where the distinguishing feature is the only way to attain the “main” objective, a situation that does not apply here”.

I have the impression that this statement is based on a misunderstanding of what is meant by “one-way situation”. This expression does not mean that there is only one single way to attain the objective but that the skilled person, when faced with the objective technical problem, is naturally led to the solution by the prior art.

Leaving aside the “bonus effect”, the Board then establishes that the prior art is silent with respect to the second aspect of the technical problem and concludes that the solution therefore involves an inventive step. In other words, the solution was obvious, but as it solves another unexpected problem, it has to be inventive. Oh dear.

To read the whole decision, click here.

Tuesday, 17 November 2009

T 1671/06 – A Non-Technical Prejudice is Not Relevant

According to the case law of the Boards of appeal, inventiveness can sometimes be established by demonstrating that a  prejudice had to be overcome. But what if this prejudice is not technical ? The present decision, which concerns a first-instance decision to refuse an EP application, provides the (expected) answer.

[...] Starting from the prior art of the so-called “high-end” portable phone with reminders implemented using a calendar, such as that disclosed in D1, the invention differs simply by the idea of not using the calendar […]. According to the appellant’s interpretation of calendar, this difference must therefore imply the absence of the capability to store and display an overview of days, months and years. [5]

The appellant appears to be proposing that this feature solves the problem of “reducing the costs of a high-end mobile phone with minimal sacrifice of functionality and an improved ease of use”. However, the Board considers that this problem is too general because it does not take into account that the concept of reminders (and thus entering them) is already known. The Board thus prefers a more specific problem acknowledging this feature, namely an alternative way of providing the reminder function. The solution being to do away with going via the calendar function. [6]

However, D2, which deals with the general concept of “schedule setting”, solves the converse problem of providing an alternative to entering manually schedule information, which is described as conventional, but complicated, by using a calendar. In the Board’s view, the skilled person would realise on reading D2 that entering the data for a reminder manually, or with the aid of a calendar are two possibilities having a trade-off between ease of operation and device complexity, e.g. memory utilization.

In this respect, the Board disagrees with the appellant’s view that the skilled person would follow the “general trend”, or would not “move in the opposite direction” since in a trade-off situation he would appreciate the advantages and disadvantages of the various discrete possibilities (or in the continuous case, trade-off points). [7]

The appellant argues that the skilled person would only consider solutions at the modularity of complete applications. Thus the skilled person would not consider a reminder application without a calendar function. However, the Board does not agree with this because the decision at the application level is largely governed by non-technical considerations that may lead to the grouping of features into specific applications to suit user’s requirements or marketing strategies, for example. This argument therefore amounts to saying that there is a non-technical prejudice against removing parts of an application. However, in the Board’s view, the only prejudice that is relevant is a technical one that would prevent such a modification. The skilled person is aware of and operates at a technical level where “modules” have a finer granularity. Such modules would be individual software techniques such as the means for entering time information, or comparing the time with a clock in the claim. There is no evidence of any prejudice against combining such known features in the known way to implement the required manual entry system on the phone of D1. [8]

To read the whole decision, click here.

Monday, 16 November 2009

T 493/08 – Ignorance of the (Case) Law is No Excuse

I find this decision very pedagogical because it explains in detail the nature and scope of different legal remedies available under the EPC.

In this case the Examining Division (ED) granted (on 21 June 2007) the patent indicating FR, GB and NL as the designated Contracting States (CS). The patentee had given the instruction to designate DE as well, but the representative had not indicated DE on Form 1200. For some unknown reason, the EPO did not send a R 108(3) notification. The representative only detected the error when his German colleague told him (in a letter dated 18 July) that he was unable to validate the patent in Germany. His reaction (on 18 September) was to request the EPO: (i) to “now afford the applicant the opportunity to respond to the R 69 communication which should have flowed from R 108(3)” and to re-publish the mention of grant indicating DE, FR, GB and NL as designated CS; (ii) to correct an error under R 88 EPC 1973 in the Form 1200; (iii) in parallel with or if necessary after refusal of the second request, restitution of the designation of the German state under A 122 EPC 1973. Finally, a telephone conversation with a formalities officer (on October 15 2007) convinced him of the need to file an appeal against the decision to grant the patent (on October 22) together with a request for re-establishment into the time-limit for filing an appeal.

The Board first examines the facts and finds that there have been two errors : an error of fact (the representative being unaware that DE should have been among the designated CS in the decision to grant) and an error of law (believing that the decision could be rectified under R 88, R 89 or A 122, without filing an appeal).

The Board states that there is a consistent body of case law according to which ignorance or misinterpretation of EPC provisions cannot be excused. Taking into account J 28/92, there may however be exceptions under certain conditions.

The Board then discusses the question of due care on the part of the representative. It first establishes that the correct remedy would have been to file an appeal.

It is established case law that an ED is bound by its final decision on an application, which can be set aside only following an admissible, allowable appeal; see T 1093/05 [6] and the cases cited there, in particular G 12/91 [2]: “Once ... [the decision] has been pronounced and, in the case of written proceedings, notified, the decision enters into force and cannot be amended, even by the department that issued it. A decision may only be revoked by the department that issued it by way of an interlocutory revision under A 109 EPC if one of the parties has filed an admissible and well-founded appeal.” […]

The present decision to grant is final and became binding on the ED that issued it on the date it was handed over to the EPO postal service by the division’s formalities section. From that date onwards it could be “rectified” by an appeal. “Rectified” by an appeal would mean that the board would set the impugned decision to grant aside and remit the case to the first instance with the order to grant a patent with the designated CS including DE. [6.2.1]

Then the Board considers the remedies initially envisaged by the representative, beginning with R 89 :

Correction pursuant to Rule 89 EPC 1973 would be an alternative means to rectify the decision if a request had been filed meeting the conditions of that Rule. The Rule reads: “In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.” […] A decision to grant contains an obvious mistake if the text given for grant is not and obviously cannot be what the ED actually intended, and the erroneously indicated text can be replaced by that on which the examining division actually wanted to base its decision. For reasons of legal certainty and to prevent adverse effects for third parties, only obvious errors can be corrected. That means it must be clear not only that the ED did not intend to grant the patent in the form actually granted, but also in what form it did intend to grant it. […] [These] conditions are clearly not met. There is no indication of a divergence between the text given for grant and the actual intention of the ED. The representative approved the communication under R 51(4) by paying the fees and filing the translation in compliance with that provision. As the communication indicated FR, GB and NL as designated CS, it must be assumed that the ED wanted to grant a patent for those three states. […] The addition of DE in the decision to grant would amount to an amendment in the sense of a substantive correction, which is not covered by R 89 and not possible under G 12/91. [6.2.2]

And as far as a correction under R 88 EPC 1973 is concerned:

Pursuant to R 88, first sentence, EPC 1973 […], “linguistic errors, errors of transcription and mistakes in any document filed with the EPO may be corrected on request.” […] There is no legitimate interest for the present request under R 88, because the requested correction would have no legal effect. The desired correction would only lead to a correction of Form 1200, by adding DE to the designated CS. It would not have the effect that the designation fee paid on 18 September 2007 would be deemed to have been made within the time limit of 10 November 2003. Independent thereof, the correction of Form 1200 would not also bring about a correction of the decision to grant, which is not a document filed with the EPO. This decision would then simply diverge from Form 1200 insofar as DE is not included. In this regard, reference is made to the extensive explanations given in J 23/03 [2.2] that apply mutatis mutandis to the present case. [6.2.3]

Finally the Board deals with the request for re-establishment:

The appellant lost its right to a European patent for Germany through its failure to pay the designation fee in due time. Re-instatement of periods for payment of designation fees, however, is not allowable pursuant to A 122(5) EPC 1973, which applies in Euro-PCT proceedings to the time limits under R 107(1)(d) in conjunction with A 158(2) EPC 1973. This follows from G 3/91. [6.2.4]

The Board then comes to the conclusion that the lack of awareness of the appropriate legal remedy cannot be excused.

Professional representatives are supposed to know the EPC and the case law, in particular the decisions of the Enlarged Board. This is true even though remedies against decisions to grant may be sought infrequently. It was not reasonable for the representative to believe that an appeal would not be necessary because at least one of the three substantive requests filed with the letter of 18 September 2007 would be granted. […]

It is clear that this is not a case in which the law was doubtful and the procedure that the representative chose to follow cannot be considered to have been a “not unreasonable” one, such as in case J 28/92. [6.2.6]

Consequently, the request for re-establishment is refused, the appeal is deemed not to have been filed and the appeal fee is reimbursed.

NB : This decision has also been discussed here (in French).

To read the whole decision, click here.

Saturday, 14 November 2009

W 28/07 – Eugene, Unity And All That Jazz

I understand that under the EPC 2000, protests against invitations (made by the EPO acting as ISA) to pay additional search fees for PCT applications are not dealt with by the Boards of appeal anymore. Therefore, I would expect 'W' decisions to disappear. It may well be that the present decision is one of the last of a dying species.

The present decision deals with an objection of lack of unity against a Markush claim (named after the inventor of such claims, Eugene A. Markush, a manufacturing chemist and dyestuff industry pioneer).

[…] The EPO, acting as ISA, invited the applicant pursuant to Article 17(3)(a) and Rule 40.1 PCT to pay 13 additional search fees. [II]

The applicant paid two additional search fees under protest pursuant to Rule 40.2(c) PCT and requested that an additional search be carried out for the group of inventions 3 and 4. [V]

The review panel of the ISA came to the conclusion that the invitation to pay additional fees was justified. [VI]

[…] The ISA’s invitation to pay additional fees is based on the finding that there is lack of unity a posteriori. It was held that there was no single general inventive concept in the light of the disclosure of several documents, including D4 and D6. [6]

[…] By arguing that there is no new technical effect linking the different groups of inventions and that the compounds neither share a significant structural element nor belong to a same recognised class of chemical compounds, the ISA referred to the “Markush Practice” as described in paragraph (f) of Annex B of the Administrative Instructions under the PCT, which are binding as regards the assessment of unity for the ISA as well as for the board.

Annex B, paragraph (f) specifies certain criteria for assessing unity of Markush claims, and in particular that for alternatives contained in such claims the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2 of the regulations under the PCT is considered to be met when the alternatives are of a similar nature.

Alternatives are to be regarded as “of a similar nature” where the following criteria are fulfilled:

(A) all alternatives have a common property or activity, and

(B)(1) a common structure is present, i.e. a significant structural element is shared by all of the alternatives, or

(B)(2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognised class of chemical compounds in the art to which the invention pertains.

A “recognised class of chemical compounds” under (B)(2) above means that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved (Annex B, paragraph (f)(iii)). [7]

As regards the groups of inventions 3 and 4, there exists a common property or activity in the form of the antimicrobial and antitumor activities of the compounds comprised therein, so that the requirements of point (A) above are met. Moreover, there are common structural elements as required in point (B)(1) above, which can be defined as follows: n = 0, R5 = C8-C30-alkyl and p = 1-6. In addition, the compounds comprise a quaternary nitrogen. [7.1]

However, the fact that all claimed alternatives of the groups of inventions 3 and 4 belong to a group or a class of compounds which has a common structure and a common property or activity, can be regarded as a contribution over the prior art (see Rule 13.2 PCT) only if members of the group have not previously been used in the manner disclosed in the application under appeal.

This is not the case in view of for instance documents D4 and D6. As a consequence, these common structural and functional elements do not make a contribution over the prior art and can therefore not be considered as “special technical features”.

Therefore, there is lack of unity between the groups of inventions 3 and 4. [7.2]

To read the whole decision, click here.

Friday, 13 November 2009

T 1590/06 – Ghost Bustering Prohibited at the EPO

In this decision the Examining Division (ED) is criticized for having exterminated claim ectoplasms in its written decision.

[…] According to the minutes of the oral proceedings (OPs) the ED announced orally on March 21, 2006 that the patent application was rejected because the subject-matter of claim 1 did not satisfy the requirements of A 52(1) EPC and A 56 EPC with respect to D3, in combination with common general knowledge. [4]

The corresponding written decision dated May 8, 2006 is also based on an objection under A 56 against independent claim 1 with respect to D3, in combination with common general knowledge. Moreover the reasons for the decision also mention original dependent claims 2 to 6 and the original independent claim 7, for lack of inventive step and lack of novelty with respect to D4, respectively. [5]

However, according to the minutes of the OPs of March 21 the claims 2 to 7 were not part of the request on which the ED had to decide, any more. As a consequence, in the OPs the rejection was justified by lack of inventive step of claim 1 only. [6]

Only claim 1 is enclosed in the minutes of the OPs. The written decision, however, contains this claim as well as claims 2 to 7. [7]

In view of the evidence it is clear that the ED has taken a final decision on the basis of a text which cannot be considered to have been filed or accepted by the applicant. This is a violation of A 113(2) and therefore a substantial procedural violation. [8]

The Board remits the case to the ED.

If I understand the case correctly, the decision pronounced at the end of the OPs was correct. The problem appears to have arisen because the dependent claims somehow crept back into the written decision. The situation being ambiguous, the Board decides to remit the case.

This remittal may be correct from a formal point of view but is perfectly counter-productive because it only delays the final decision. Upon remittal, the ED will proceed to reject claim 1 only, and the applicant will file an appeal. So why not deal with the substantive issues right away ?

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

Thursday, 12 November 2009

T 898/07 – Intervention Made Possible By Summons to Take a Licence

[...] According to A 105(1)(b) EPC, any third party may intervene in opposition proceedings if the third party proves that following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent. The documents filed by the [intervening party] establish that the patentee has repeatedly expressed the opinion that the activities [of the intervening party] did violate a plurality of patents, including the opposed patent, and has summoned it to enter into licence negotiations, invoking pending infringements proceedings against third parties. [2.1]

Therefore the intervening party has been summoned by the patentee to refrain from the alleged patent infringement by contractual licensing and thereby to commute unlawful action (patent infringement) into lawful action (licensed use). This fulfils the first condition of A 105(1)(b), which provision, according to its wording, not only covers the summons to cease using the invention but also in general the summons to stop the alleged patent infringement. He who takes a licence also henceforth stops infringing the patent. [2.2]

The [intervening party] has also provided evidence that it has taken action, before the Tribunale di Roma, for a declaratory judgment that it is not infringing the patent and that the notification (Zustellung) of this action, which is not contested by the patentee, cannot have taken place before May 21, 2008. Thus the three months time limit under R 89 has been complied with. In this context it is irrelevant that the evidence for the fact that the action also concerns the opposed patent has only been provided after expiry of the three month time limit. [2.3]

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

Wednesday, 11 November 2009

T 1514/05 - Explore All Roads that Lead to Rome

[…] The Board considers D12 to be the closest prior art. [3.1.1]

[…] Contrary to the argument of the patentee, the Board does not consider that D12 must not be considered to be the closest prior art on the grounds that this document persuaded the skilled person not to use veneering (placage) for covering the alloy sheet. [3.1.3]

[…] Be that as it may, the Board has to examine of inventive step with respect to the disclosure of D12 because, according to the case law of the Boards of appeal, when the skilled person is faced with several possible (praticable) problem-solution approaches that could render the invention obvious, the nature of the problem-solution approach in itself requires that all the avenues (pistes) be examined before inventive step can be asserted (T 967/97 [I]). [3.1.6]

I find this statement very sound. If this principle was applied more often, the problem-solution approach would be less criticized. I understand that the German jurisdictions reject the problem-solution approach because it limits the evaluation of inventive step to one single starting point, i.e. the document considered to be the “closest prior art”. In reality, claimed subject-matter can be non obvious when starting from the “closest prior art” and obvious when starting from another prior art. This is neglected in the actual EPO practice, where often the decisive battle is concerned with which document is considered to be the closest prior art. Once this choice has been made, the case is lost or won.

I should add that the translation of the headline of T 967/97 provided in T 1514/05 is poor. I would rather translate : “If several paths to the solution (Lösungswege) along which the invention could be obvious offer themselves to the skilled person, then the reasoning (Ratio) underlying the problem-solution approach requires to examine the invention with respect to all of these paths to the solution before a decision confirming the presence of an inventive step can be taken.”

The decision then proceeds with the assessment of inventive step and comes to the conclusion:

If follows from these considerations that the skilled person would arrive at the subject-matter of claim 1 without exercising any inventive skill, by proceeding along three successive steps, each of which is obvious, both in itself and in sequence: (i) selecting of a type of veneering for the protection of the core sheet against corrosion; (ii) choosing a veneering alloy that is compatible with the core sheet and which offers sufficient protection in terms of potential difference; and finally (iii) optimising the anodic protection by reducing the said potential difference by means of a reduction of the Zn content in the veneering alloy.

This conclusion is in conformity with the case law of the Boards of appeal according to which a solution is obvious, even though it may necessitate two or more stages, if the technical problem faced by the skilled person leads him to the solution by stages and if he finds each stage obvious, as far as the result obtained and the residual problem to be resolved are concerned (T 623/97 [4.4]).

This conclusion is coherent with the logic underlying the established case law (cf. T 400/98 [4.4.6]) according to which, when the skilled person has at his disposal several equivalent existing solutions for solving the technical problem, the choice of one of the possible solutions does not require any particular skills and for this reason does not involve an inventive step. Thus the choice of reducing the Zn content so that it varies within the domain of the claimed values is an obvious alternative for the skilled person. [3.3.7]

As far as the stages of a process are concerned, I would have preferred a reasoning based on the concept of “partial problems”. The reasoning of T 623/97 does not explicitly take into account a possible synergy between successive stages, in which case the stages could not be treated separately.

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

Tuesday, 10 November 2009

T 1618/06 - Description of Prior Art vs. Disclosure of the Invention

In this decision the Board goes to great lengths to reconstruct the invention from bits and pieces contained in the priority document (D12), both in its description of the prior art and in the summary of the invention.

In order to better understand the subtleties of the reasoning, one has to know that the summary of the invention starts on page 2, paragraph 4 of D12. The preceding parts of the description deal with prior art and its disadvantages.

The [opponents] argued that claim 1 did not enjoy the priority of document D12 because the impurities mentioned in this claim were only disclosed in document D12 with respect to the prior art cited therein. [IX]

[…] It was under dispute whether or not the following feature of present claim 1 enjoyed the priority of D12: The removal of the impurity of formula II.

Hence it has to be assessed whether or not D12 teaches the person skilled in the art (i) to remove impurities from a crude mixture or a crude salt of citalopram, and, in the affirmative, (ii) whether or not these impurities comprise those of formula II as defined in present claim 1. [3.1]

The part of D12 disclosing the invention claimed therein starts with the fourth paragraph on page 2 (“It has now been found that …”). The second sentence of this paragraph states that the invention provides “ … a very good and efficient purification of citalopram …”. The starting material used in this purification process is crude salt or crude mixture of citalopram. Hence, D12 discloses a process removing impurities from a crude mixture or a crude salt of citalopram. [3.1.1]

It remains to be determined whether or not D12 discloses directly and unambiguously that the impurities to be removed comprise those of formula II as defined in present claim 1.

The process disclosed in D12 is to purify citalopram or its salt. This means that the impurities are present in the crude starting material. This starting material “ … may be obtained directly from the synthesis of the compound according to any of the above mentioned processes …”. The “above mentioned processes” are those summarised in the first and second paragraphs on page 2, including the “Exchange of 5-halogen with cyano …” (p. 2, l. 1-2). The impurities present in the reaction mixtures obtained in these processes comprise “… the intermediates mentioned above …” (third paragraph of page 2), namely the 5-halogen compound as far as the process comprising the exchange of 5-halogen by a cyano group is concerned. Consequently, the chemical formula of this impurity differs from the formula of citalopram as depicted on page 1 of D12 only in that the cyano group in the 5-position is replaced by a halogen atom; that means that it is identical with formula II depicted in present claim 1.

Hence, D12 discloses a process by which impurities of formula II as defined in present claim 1 are removed from a crude mixture or a crude salt of citalopram.

It is not relevant that part of this disclosure is based on the description of the prior art, as D12 directly refers to said prior art in the paragraphs setting out the invention claimed therein. [3.1.2]

Admittedly, this decision is not very exciting in itself but it shows that the Boards sometimes accept the argument that some features of the invention are disclosed in the part of description dedicated to prior art. As the established case law applies the same criterion (… directly and unambiguously …) to A 87 and A 123, this could sometimes be helpful to rescue an application, in particular if the drafter had foreseen references to the prior art section in the summary of the invention.

To read the whole decision, click here.

To download document D12, click here.

Monday, 9 November 2009

T 1416/06 - Mathematicians Do Not Invent (Nor Are They Skilled Persons)

Claim 1 of all requests is directed to a method of representing a document collection.

In a communication accompanying the summons to oral proceedings requested by the appellant as an auxiliary measure, the Board stated that it had doubts whether the characterising features solved a technical problem. Providing “verbal semantics”, i.e. “words or terms” for describing the meaning of a dimension seemed basically to be a presentation of information. The verbal semantics was directed to the mind of a user. It was therefore not clear that there was a technical effect indicating the presence of technical means for solving a technical problem. As to the auxiliary requests the Board stated that it was not apparent that any part of the invention according to the independent claims of these requests contributed to the solution of a technical problem. The steps were of a mathematical nature, serving to process information with the purpose of improving its presentation or visualisation to the user. Whether or not this was new and original could not play any role as long as no technical effect was achieved. As to the skilled person it was clear that mathematical skills were crucial. A mathematician was however not a technically skilled person but could at most be part of a technical team. [V]

[…] The method is to a large extent defined in terms of equations. The purpose of the method is to present the information in a way that can be more easily understood or evaluated by a user. A fundamental question in this context is whether the invention - apart from its being implemented on a computer - is within a field of technology. At the bottom of the method is a mathematical technique known as orthogonal decomposition. This technique is generally applied to large matrices and, like many mathematical functions, can be represented graphically. It is typical for mathematical representations that they involve pure numbers, i.e. abstract data, having no physical connotation. In the present invention the representations are of documents and the terms used in the documents. Thus, although the data have a certain “meaning”, they remain abstract. They can hardly be regarded as forming a physical entity, nor does the method result in a change in the data but merely in their representation (cf. T 208/84 [5]). It could therefore be argued that the invention - again apart from its implementation - is essentially a mathematical method pursuant to A 52(2)(a) EPC, resulting in a presentation of information pursuant to Article 52(2)(d) EPC. [3.1]

For some reason, the Board was reluctant to reject the appeal on this basis. It continues :

In the following these general concerns will however not be pursued since there are more specific reasons for not allowing the appeal. [3.2]

To read the whole decision, click here.

Saturday, 7 November 2009

G 3/08 – Novel Use of ... Amicus Curiae Briefs

Some courts allow the filing of so-called amicus curiae (“friend of the court”) briefs, i.e. written submissions by persons that are not parties to the case but who offer information on a point of law or some other aspect of the case to assist the court in deciding a matter before it. The Enlarged Board of Appeals (EBA) of the EPO also accepts such briefs.

There have been quite some amicus curiae briefs in case G 3/08 concerning several tough questions raised by the President of the EPO on computer implemented inventions. One of them contested the impartiality of Board members. The EBA has recently taken an interlocutory decision in order to deal with this objection.

[…] As provided by A 24(3) EPC, members of a Board of Appeal (BA) or of the EBA may be objected to by any party for one of the reasons mentioned in A 24(1) EPC, or if suspected of partiality. Whereas objections based on A 24(1) (iudex inhabilis) may be raised by anyone, whether he is a party or not, the right to object to a member of the Board because of alleged partiality (iudex suspectus) is reserved to parties in the proceedings (see interlocutory decision in case G 2/08 [1.4]).

In referral cases under A 112 EPC, however, members of the public who file amicus curiae briefs do not have the status of a party. They are not entitled to file requests but only to submit their personal view of the case or that of their organisations, in order to support the Board with arguments that should be considered in its findings. Since an amicus curiae is not a party to the referral proceedings his request for exclusion of a member of the EBA or of the EBA as a whole is inadmissible under Article 24(3). [1.2]

However, pursuant to Rule 4(1) of the Rules of Procedure of the EBA (RPEBA), the procedure of A 24(4) is also to be applied, if the EBA has knowledge of a possible reason for exclusion or objection which does not originate from a member himself or from any party to the proceedings. Under this provision the submissions of a third party with respect to a member of the EBA to be objected to according to A 24(1) or suspected of partiality under A 24(3) are taken as information on the basis of which the Board can ex officio look at the alleged grounds of objection or suspicion of partiality. [1.2]

[…] Turning to the present case, the EBA notes that the submissions in the amicus curiae brief are vague and largely unsubstantiated. The brief does not say who made which concrete remarks in which function under which circumstances and in which connection with respect to the referred questions such as to justify his exclusion as a member of the EBA for reasons of suspicion of partiality. Nevertheless the EBA is in the position to identify Mr D. Rees on the basis of these submissions as the member suspected in the amicus curiae brief and is also aware of his earlier duties as a director in DG 2 of the EPO between 2000 and 2003 and as an expert for the EU-Commission in the field of CII at that time.

But these facts submitted to establish the suspicion of partiality are not suitable to do so. The mere general and unsubstantiated assertion that the member in question explained as an expert in earlier times, when he was still a director in DG 2, that the jurisprudence of the BA in the field of computer implemented inventions would not be against the EPC and the law of the member states of the EPO cannot support an argument that this member or even the whole EBA in this case should be excluded from dealing with the referral. Nor can such a conclusion be supported by the – actually incorrect - submission that the members of the present EBA are all members of the BA. This is not an argument justifying the assumption that - deciding on the present referral - they are not solely bound by the provisions of the EPC. [2.3]

According to established case law of the BA, of the EBA and also of national courts of member states, the mere fact that a board member has expressed a view on the legal issue to be decided on a previous occasion, be it in a prior decision or in literature, be it in a prior position in the EPO or as an expert for external political institutions, cannot lead to the conclusion of doubts as to impartiality. Nor does a purely subjective impression that the opinions of a board member might be disadvantageous to a particular interest justify an exclusion [2.4]

Once lawfully appointed, a judge is deemed to act in good faith and is therefore presumed impartial until proven otherwise. […] Moreover the parties to judicial proceedings have a right to have their case considered and decided by lawfully appointed judges. Such judges not only have the right to be member of a Board but also have the duty to decide in the cases allocated to them. They can neither withdraw at will from the proceedings, nor be objected to, at will, by a party to the proceedings, or by any other person. On the other hand they have to withdraw from a case in which their impartiality could be reasonably doubted […]. E.g. there might indeed exist an issue of partiality if a judge let it be known that he would never change his mind on certain questions on which he has given his opinion before. However, in the present case there is no indication whatsoever that this might be so. [2.5]

Therefore, this Board sees no reason to exclude Mr Rees or to replace further members. [3]

I always wonder why people still try to obtain exclusion of Board members – has such an objection ever been successful ? If the objection does not succeed – which, statistically speaking, is highly probable – it could have a boomerang effect: I for one would expect paritality objections to make at least one Board member ill-disposed to the cause of the person requesting his or her exclusion.

Be that as it may, what we learn from this case is that amicus curiae briefs may be used to have the EBA examine the partiality of one of its members.

NB: Although brand new, this interlocutory decision has already been abundantly commented on patent blogs, e.g. here (in English) and here (in French).

To read the whole decision, click here.