T 207/07 – No Opposition Against Overweight Patents

[...] Two of the amendments introduced in the independent claim 1 as granted result in the subject-matter of the claim extending beyond the content of the application as originally filed. [2]

[…] The board does not agree with the [patent proprietor’s] argument that these two amendments were allowable because they result in a restriction of the scope of the claims so that third parties would not be disadvantaged, for two reasons.

Firstly, A 100(c) is not concerned with a possible extension of the scope of protection of the claims, this being addressed only in A 123(3).

Secondly, a restriction to an undisclosed intermediate generalisation can affect third parties, since, as was argued by the [opponent], they might then not be able to derive from the application as originally filed which options are open to the applicant or proprietor for subsequent amendment of the claims. [2.3.3]

Therefore, in respect of each of the amendments […], the subject-matter of the patent as granted extends beyond the content of the application as originally filed, so that the ground for opposition under A 100(c) prejudices the maintenance of the patent. [2.4] 

This decision made me realize something I should have known but which I had never really seen (shame on me!) - that A 100(c) corresponds to A 123(2) only and does not cover A 123(3).

Now it is true that until recent times, there would not have been any possible reason to oppose a patent on the ground of A 123(3) because there was no way of extending the protection conferred during the opposition period. This has changed when limitation proceedings were introduced into the EPC. If the Examining Division does not do its job correctly, the protection conferred by a patent could be extended by a ‘limitation’. If this happens during the opposition period, it will not be possible to oppose the patent on this ground. The only way to have the patent revoked is to launch national revocation proceedings on the ground of A 138(d).

Having said this, if the limited/extended patent is opposed on other grounds and cannot be maintained unamended, and if the patentee does not get rid of the ‘limiting’ features, would the claims as amended be considered as infringing A 123(3)? I guess the same reasoning as for A 84 would be applied: the claims as amended would be considered as infringing A 123(3) only if the extension was caused by the amendment. But I may be wrong. It will be interesting to see decisions dealing with that situation.

To read the whole decision, click here.  

T 244/07 – What May Be Taken From Schematic Drawings

It is well known that one cannot extract dimensional parameters from schematic drawings. The present decision adds an interesting consideration.

Claim 1 of the main request read:

Stent (1) having an extensible stent body (2) wherein the stent body (2) has at least two different wall thicknesses (4,5) and wherein the stent body (2) has at least one end region (3,4) the wall thickness (WE) of which is smaller than a wall thickness (WH) of a main region (5), characterised in that the main region (5) has a constant wall thickness (WH) and in that the end region (3,4) has a constant wall thickness (WE).

[...] The preamble of claim 1 results from claims 1 to 3 as filed ; the additional feature of extensibility, which is known as such, has its origin in paragraphs [0001] and [0002] of the original description as published. The feature of constant wall thickness of the main region and the end region in the characterising part is implicitly disclosed, as the expression “wall thickness” in the description is always used with the definite article in the description. That the wall thicknesses are constant also follows from paragraph [0013] of the original description, and in particular from the ratio of wall thicknesses WE/WH cited in line 47. Such an indication is only meaningful if the wall thicknesses of the respective domains are constant.

Moreover the symbols WH and WE, which are provided with arrows in Figures 1 to 3, tell the skilled person unambiguously and without any doubt that each of the wall thicknesses represented in the drawings corresponds to one single and therefore constant wall thickness of the marked regions. The fact that figures are as a rule only schematic and are explicitly identified as such in the description does not alter this fact because what is taken from the figures is not a concrete dimension (such as in the cases underlying decisions T 857/91 and T 272/92) but only a property (Eigenschaft), i.e. the fact that the respective wall thicknesses are constant. The required manufacturing steps for obtaining constant wall thicknesses, which may be in the micrometer domain in the case of stents, are known to the person skilled in this field and do not have to be mentioned.

Therefore, the requirements of A 123(2) are satisfied. [2] 

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

To All The EQE Candidates ...

... the best of luck!

T 1182/05 – ‘On The State of the File’ Does Not Mean ‘Unreasoned’

[…] In the present case the Examining Division (ED), in response to the appellant’s request “to render a decision on the record”, refused the application using EPO form 2061 for a so-called “decision on the state of the file”.

The Guidelines for Examination in the EPO E-X 4.4, state: “Applicants may request a decision ‘on the file as it stands’ or ‘according to the state of the file’, e.g. when all arguments have been sufficiently put forward in the proceedings and the applicant is interested in a speedy appealable decision. In such a case, the decision will be of a standard form, simply referring to the previous communication(s) for its grounds and to the request of the applicant for such a decision.”

This standard form is entirely appropriate in the special case where the ED fully expressed and reasoned its objections to the current application text in the preceding communication(s) taking into account the applicant’s submissions, and the applicant has not presented further counter-arguments in the reply in which it requests a decision according to the state of the file.

A number of decisions of the EPO Boards of Appeal have pointed out however that a decision form which refers to several communications, leaving it to the board of appeal and the appellant to speculate as to which of the reasons given by the ED in its communications might be essential to the decision to refuse the application does not meet the ‘reasoned’ requirement of R 68(2) EPC 1973 (see T 861/02, T 897/03, T 276/04 and T 1309/05). [4]

In its letter of 14 October 2004, the appellant limited the claimed subject-matter by further adding the feature of the “capacity of the upper bag segment being 20 to 40 liters” and explained why the subject-matter was inventive. [5]

In the annex to the summons [to oral proceedings (OPs)] the ED raised for the first time an objection of lack of clarity in respect of the terms “capacity of lower bag segment” and “capacity of upper bag segment”. These terms were considered to be unusual parameters in the sense of Guidelines C-III, [4.11] since no comparison with the prior art could be made. These parameters thus would disguise a lack of novelty as per Guidelines C-IV [9.6]. However no further explanation was given as to why these specific terms would fall under the concept mentioned in the Guidelines. This was probably meant to be discussed at the OPs. [6]

With its reply of 31 January 2005 the appellant filed amended pages of the description [and] explained why in its opinion the subject-matter of claim 1 on file was novel and inventive and why the clarity objection raised in the annex to the summons was not justified. In particular the appellant explained that the capacities could be clearly and reliably determined by objective procedures which are usual in the art and that the skilled man would not unavoidably arrive at these values when carrying out the invention of D1. [7]

The decision of the ED however does not contain any specific reasons, but merely refers to the communications (including the annex to the summons) which had been issued before the appellant’s reply of 31 January 2005. By not commenting on the amended pages of the description and/or on any of the counterarguments brought forward by the appellant in its last reply it is left to the board and to the appellant to speculate as to which were the decisive reasons for the refusal.

As a matter of fact several options could be possible: it could well be that the ED no longer upheld the lack of clarity objection but considered the lack of inventive step detrimental or that clarity and novelty of the subject-matter of claim 1 was at stake, or even that only the amended description was not considered allowable. [8]

This is at odds with the established jurisprudence that for the requirements of R 68(2) EPC 1973 to be fulfilled the decision must include, in logical sequence, the arguments justifying the order. The grounds upon which the decision is based and all decisive considerations in respect of the factual and legal aspects of the case must be discussed in detail in the decision (see T 278/00). The applicant’s request “to render a decision on the record” is not to be construed as a waiver of the right to a fully reasoned first instance decision, even in the light of the suggested procedure in the Guidelines (see T 1309/05, T 583/04). The applicant even expressly requested that “the subject-matter of the present claims be re-examined taking into account the following explanations”. In view of this and of the fact that amended pages of the description were filed the board is of the opinion that a decision of a standard form, simply referring to the previous communications for its grounds and to the request of the applicant for such a decision was not appropriate in the present case. Instead, in its decision, the ED should have explained the very reason or reasons for its decision and why the counterarguments of the applicant were not considered convincing.

By failing to do so the ED did not issue a reasoned decision within the meaning of R 68(2) EPC 1973 and committed, therefore, a substantial procedural violation. [9] 

To read the whole decision, click here.

T 426/06 – Insufficient Proof For Opponent Status Transfer

The opposition against the contested patent had been filed by « BP Chemicals Ltd ». On March 2, 2006, a transfer of the opposition to the company named “Innovene Europe Ltd” was requested. The appeal was filed on March 10, 2006 in the name of Innovene Europe Ltd. The question arises as to whether this company was a party to the proceedings when it filed the appeal and was, therefore, entitled to file the appeal. [1]

The status as an opponent cannot be freely transferred (G 2/04). It is, however, transferred in case of a complete legal succession (universal succession) to the legal successor, e.g. in the case of an incorporation (Eingliederung) or a merger of legal persons (T 475/88 [1]). It can also be transferred together with the domain of the business or the part of a company to which the opposition belongs (G 4/88, T 659/92, T 563/89 [1.1], T 870/02 [2 and 3.1]). [2]

A new appellant can only obtain the status of an opponent and a party to the proceedings if it provides proof for a legal transfer justifying the transfer of the opponent status. The mere filing of an agreement between the company that is presented as legal successor and the original opponent is not sufficient for justifying the transfer of the opponent status and the status as party in the appeal proceedings without a substantiated presentation and proof of facts that could justify a legal succession in the above mentioned sense. [3]

In its written submission dated March 2, 2006, Innovene Europe Ltd has filed a general agreement between the opponent “BP Chemicals Ltd” and the appellant “Innovene Europe Ltd” as evidence for the transmission of the opposition.

According to the information submitted, the filed agreement states that “BP Chemicals Ltd” has transferred the Olefines and Derivatives operation of its petrochemical business and the associated business assets into a new group of companies referred to as Innovene Europe Ltd […] is a member.

However, it does not follow clearly and unambiguously from this agreement which domain of the business is encompassed by the term “Olefins and Derivatives operation”. Therefore, it cannot be determined to which extent the process for the preparation of alkanolamines with improved colour quality, which is claimed in the contested patent and which does not a priori concern olefins or their derivatives, is connected with the business domain “Olefins and Derivatives operation” cited in the agreement. As a consequence, there is no proof that the opposition concerns a domain of the business of the opponent “BP Chemicals Ltd” which was transferred to “Innovene Europe Ltd”. [4]

For the reasons referred to above, the filed agreement does not satisfy the requirements for a legally effective transfer of the opponent status, which means that the requested transfer of the opponent status cannot be allowed. Under these circumstances it is not necessary to decide the question at issue whether the filed agreement as such, without the submission of other documents, such as a contract of sale, is appropriate proof for the transfer of a domain of the business. [5]

Hence “Innovene Europe Ltd” did not have party status when it filed the appeal. However the appeal against the decision to maintain the patent in amended form was filed in the name of “Innovene Europe Ltd”. Pursuant to A 107, first sentence, only parties to the first instance proceedings adversely affected by the decision may appeal.

As “Innovene Europe Ltd”, in the absence of sufficient evidence, did not have party status when it filed the appeal it was not entitled to appeal. The appeal is inadmissible under R 101(1) (see also T 229/03 [4]). [6] 

I find the EPO’s decision tough on the appellant because the agreement also contained the following provisions: “The oppositions filed by BP at the EPO and listed in the attached schedule all relate directly to the business assets that were transferred. […] BP and Innoven warrant that the oppositions constitute an inseparable part of the assets. The oppositions are assigned from BP to Innoven.” Unfortunately, the decision remains completely silent on that fact.

In such situations, one should definitely follow the advice given in G 2/04: “If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.”

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

T 550/04 – Recording Refused

I have to admit that the illustration I have chosen is somewhat misleading. It is true that the EPO does not allow parties to make audio recordings during oral proceedings, but this is not what the present decision is about. It rather deals with recording of statements of a party in the minutes of oral proceedings.

During the oral proceedings (OPs) before the Board the [opponent] requested to record in the minutes of the proceedings that the expression “oxygen-free atmosphere” in present claim 1 had the meaning of “completely oxygen-free atmosphere”. [5.1]

However, according to the jurisprudence of the Boards of Appeal (see T 928/98 and T 263/05 [8 to 8.11]) it is not the function of the minutes to record statements which a party considers will be of use to it in any subsequent proceedings in national courts, for example in infringement proceedings as to the extent of protection conferred by the patent in suit. This is because such statements are not “relevant” to the decision which the Board has to take, within the meaning of R 124(1). Such matters are within the exclusive jurisdiction of the national courts. [5.2]

In the present case, the reasons for applying an oxygen-free atmosphere and a method to achieve it are indicated in the patent in suit. Moreover, the statement in question would not have an impact on the definition of the subject-matter of the patent for the questions the Board had to decide in these proceedings. [5.3]

It follows that the desired statement is not a proper subject-matter of the minutes. Consequently, the request is refused. [5.4] 

As far as I can see, the Boards almost systematically refuse to record such statements in the minutes. This is a nuisance for opponents, because statements of this kind may become crucial in national infringement proceedings. At least in France there is a clear tendency of the Courts to take into account statements made by the patentee during the grant and opposition proceedings. Therefore, I would say that opponents should continue to request recording of such statements as the Board will discuss the question, which means that the statement is at least recorded in the appeal decision, which might be better than nothing.

To read the whole decision, click here.

T 360/08 – Out Of The Frying Pan Into The Fire

Claim 1 of the main request read:

A biaxially oriented polyester film characterized in that a ratio R(=IMD/IND) of a peak intensity (IMD) in the longitudinal direction of the film to a peak intensity (IND) in the thickness direction of the film determined at 1615 cm-1 by laser Raman scattering method is not less than 7.

Main request and first to third auxiliary requests

The polyester film as defined in claim 1 of each of these requests is characterised by the value of a ratio R(=IMD/IND) of a peak intensity (IMD) in the longitudinal direction of the film to a peak intensity (IND) in the thickness direction of the film determined at 1615 cm-1 by laser Raman scattering method being [sic] less than 7.

Claim 1 does not, however, specify which polyester is used to form the film.

Claim 4 specifies that the polyester is “at least one selected from the group consisting of polyethylene terephthalate [PET], polypropylene terephthalate, polyethylene isophthalate, polyethylene naphthalate [PEN] and a copolymer thereof.” The polyester of claim 1 may thus be polyethylene naphthalate. Whilst polyethylene terephthalate has a peak intensity at 1615 cm-1, attributable to the presence of a benzene ring, polyethylene naphthalate does not produce a peak at this wavelength (see document E30). In the absence of such a peak, it is not possible to obtain a significant value of the ratio R at 1615 cm-1. It was suggested on behalf of the [patent proprietor] that the skilled reader of the patent in suit would, in the case of polyethylene naphthalate, understand the reference in claim 1 to a peak intensity determined at 1615 cm-1 as referring to a corresponding peak at 1636 cm-1. It is not, however, accepted that there is a “corresponding peak” for polyethylene naphthalate, the presence of a naphthalene ring giving rise to more than one peak:

The person skilled in the art is thus not provided with sufficient information to enable a value of the ratio R to be calculated for a film of polyethylene naphthalate. [1] 

I am always surprised when a single non-working embodiment is said to deprive a claim of its sufficiency of disclosure. Having said this, it might well be that the unfortunate claim wording has caused this outcome: there simply is no ‘peak’ at 1615 cm-1 for the polyethylene naphthalate. Had the claim drafter omitted the word ‘peak’ and defined the ratio R to be a ratio of intensities measured at 1615 cm-1, I think that the problem would have shifted towards inventive step.

Be that as it may, the patent proprietor reformulated the claim by inserting the working embodiments only into claim 1:

Claim 1 of the main request’ presented during the oral proceedings read:

A biaxially oriented polyester film wherein a polyester of said film is at least one selected from the group consisting of polyethylene terephthalate, polypropylene terephthalate, polyethylene isophthalate, and a copolymer thereof, characterized in that a ratio R(=IMD/IND) of a peak intensity (IMD) in the longitudinal direction of the film to a peak intensity (IND) in the thickness direction of the film determined at 1615 cm-1 by laser Raman scattering method is not less than 7.

However, the Board then found an even more general lack of sufficiency of disclosure. The decision contains an interesting statement on determining certain measurement parameters by reworking the examples.

Main request’ and auxiliary requests 1’ to 3’

In order to determine the value of the ratio R as specified in claim 1 of each of these requests, it is necessary to subject a film to a Raman scattering method. However, the values obtained for this ratio are dependant on the measuring conditions.

A number of the measuring conditions used by the patent proprietor are specified in paragraph [0079] of the patent in suit. In particular, it is specified that a Ramanor U-1000 apparatus was used. As indicated in document E33, a range of objectives of differing power are available to the user of the Ramanor U-1000 apparatus. It is not, however, specified in the patent in suit which objective should be used.

Document E29 […] demonstrates that significantly different values of the ratio R are obtained according to whether a 100x or a 50x objective is used. The [patent proprietor] submits that a high power 100x objective would be used, document E33 suggesting that this would give better resolution. On the other hand, document E36 sets out four reasons to prefer a 50x objective, including a suggestion that the use of a high power objective has a depolarising effect and may not provide the best signal to noise ratio. The Board thus comes to the conclusion that the skilled person would not know which objective to select.

The patent in suit contains 30 examples and 9 comparative examples, for each of which a value of the peak intensity ratio R is given. It is suggested that, by repetition of the examples, a film can be produced for which a value of the ratio R can be measured with different objectives. Only the choice of the correct objective will result in the value of R disclosed in the Tables of the patent in suit.

This is not accepted. It would require more knowledge than is available from the patent in suit in combination with the general knowledge of the skilled person to prepare a film for which it can be assumed that the value of R is the same as that given in the patent in suit. Thus, whilst the examples give information as to the temperature and the stretching ratio to be used when preparing the film, the examples do not give any information as to the form of the cross-section of the cast film or the speed of stretching of the film. Variation in these parameters would influence the properties of the resulting film. It is thus not possible to deduce the power of the objective from a reworking of the examples.

The present case is distinguished from that decided in T 143/02 firstly in that there is no most likely candidate as to the objective to be used. Secondly, the information given in the examples is not sufficient to enable a sufficiently predictable value of the ratio R to be achieved. [3]

The patent in suit thus does not provide sufficient teaching to enable the person skilled in the art to produce a biaxially oriented polyester film which satisfies the criteria specified in claim 1. [3.1]

The requirements of A 83 are not satisfied for each of the requests of the [patent proprietor]. [4] 

It cannot be stressed enough that if a claim involves results obtained with a measurement method that is not standard from A to Z, it is crucial that this method be described in all detail. Conversely, when you have to attack a patent, it is always a good idea to have a close look at the description of the measuring methods involved.

To read the whole decision, click here.

G 2/08 – The Way You Take It Matters

Good and bad things come in threes, and so do the most recent Enlarged Board decisions. Three questions had been referred to the Enlarged Board by interlocutory decision T 1319/04.

The claim that triggered the question read as follows:

1. The use of nicotinic acid or a compound metabolized to nicotinic acid by the body selected from a group consisting of d-glucitol hexanicotinate, aluminium nicotinate, niceritrol, d,1-alpha-tocopheryl nicotinate and nicotinyl alcohol tartrate, for the manufacture of a sustained release medicament for use in the treatment by oral administration once per day prior to sleep, of hyperlipidaemia characterised in that the medicament does not comprise in admixture, 5-30% hydroxypropyl methylcellulose, 2-15% of a water soluble pharmaceutical binder, 2-20% of a hydrophobic component and 30-90% nicotinic acid.

Question 1: Where it is already known to use a particular medicament to treat a particular illness, can this known medicament be patented under the provisions of A 53(c) and 54(5) EPC 2000 for use in a different, new and inventive treatment by therapy of the same illness?

The EBA considers that the issues of importance are the construction of the provisions of A 53(c) together with those of A 54(4) and (5) and the answer to the question whether there is any need to reconcile them. As always, the Vienna Convention on the Law of Treaties is used to interpret the EPC provisions.

As far as A 53(c) is concerned, the EBA considers that its provisions are clear and unambiguous and allow to draw a borderline between (unallowable) method claims directed to a therapeutic treatment and (allowable) claims to products for use in such methods. It refuses to interpret the second sentence of A 53(c) as a lex specialis that has to be interpreted narrowly.

A 54(4) deals with the first medical application for which broad generic use-related product claims may be granted.

A 54(5) now expressly allows protection of specific further medical applications. The EBA finds that this provision does not define the nature of the further therapeutic use of a substance already known as a medicine further than by saying that it must be specific. There are two ways of construing this requirement: (i) by contrast to the generic broad protection conferred by A 54(4) for the first therapeutic application – in this case the second or further use need not consist in the treatment of a different disease; (ii) understanding it as a lex specialis with respect to the general prohibition expressed in A 53(c), which implies a narrow interpretation – only a disease not yet treated by the known substance would constitute a specific use. The Board adopts the broad interpretation, in particular because the wording of the law does not make a distinction (following the principle of Roman law ubi lex non distinguit, nec nos distinguere debemus). The EBA comes to the conclusion that the respective provisions of A 53(c) in fine, A 54(4), and A 54(5) do not constitute exceptions to the absolute prohibition of patenting therapeutic methods but constitute provisions allowing patent protection for products for use in therapeutic methods and enjoy a ranking identical to that of the prohibition.

This approach is also found to correspond to the will of the legislator as expressed in the preparatory documents.

The EBA therefore comes to the following conclusion:

Answer: Where it is already known to use a medicament to treat an illness, A 54(5) does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness.

Question 2: If the answer to question 1 is yes, is such patenting also possible where the only novel feature of the treatment is a new and inventive dosage regime?

In line with its response to the first question, the Board considers that as A 54(5) may be used in cases of the treatment of the same illness, the “specific use” in the sense of this provision may reside in something else than the treatment of a different illness and may cover a specific dosage regime.

Therefore, the EBA answers the second question as follows:

Answer: Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.

The EBA insists on the fact that this approach should not be interpreted as a departure from the established principles for assessing novelty and inventive step. Beyond the legal fiction of A 54(5), for the assessment of novelty and inventive step of a claim in which the only novel feature would be the dosage regime, the whole body of jurisprudence relating to the assessment of novelty and inventive step is to be applied. In order to be patentable, the new dosage regime must provide a technical teaching. that is different from the teachings of the prior art. If the new regime corresponds to a selection within the teaching of the prior art, the criteria developed by the case law for selection inventions apply.

Question 3: Are any special considerations applicable when interpreting and applying A 53(c) and 54(5) EPC 2000?

The EBA concentrates on the question of whether Swiss-type claims are still allowable. It considers that the loophole existing in the provisions of the EPC 1973 was closed by new A 54(5). Following the principle of Roman law cessante ratione legis, cessat et ipsa lex, it comes to the conclusion that Swiss-type claims should no longer be used:

Answer: Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83.

This conclusion makes it necessary to introduce some transitional provisions:

The EBA is aware of the fact that patents have been granted and many applications are still pending seeking patent protection for claims of this type. In order to ensure legal certainty and to protect legitimate interests of applicants, the abolition of this possibility by the interpretation of the new law given by the EBA in this decision shall therefore have no retroactive effect, and an appropriate time limit of three months after publication of the present decision in the Official Journal of the EPO is set in order for future applications to comply with this new situation. In this respect the relevant date for future applications is their date of filing or, if priority has been claimed, their priority date. [7.1.4]

The present decision is clear-cut and confirms the liberal tendencies observed so far in the handling of further medical use claims. I just wonder whether claims the novelty of which is based on a dosage regime have any practical use. Given that the dosage regime applied by a physician is covered by medical confidentiality, the only practical use of such a claim appears to consist in the possibility of hindering the competitors from mentioning the new dosage regime in their package inserts. Much ado about very little ? If any of my readers can shed light on this question, please do so.

Added on 21/2 : As pointed out in one of the comments, my impression was wrong. The decision is very relevant with respect to generic drugs. Never trust a mechanic!

To download this decision, click here. 

NB: As usual, I am far behind my fellow bloggers. As far as I can see, the race was won by Laurent Teyssèdre (here), followed by IPKat David Pearce (here). The blue riband is theirs. Those interested in the point of view of a French lawyer should have a look here.

T 150/07 – Forget The Novelty Test

The present decision brings us back to the beginnings of European patent case law. Long ago, the EPO sometimes used the “novelty test” for assessing whether A 123(2) was infringed or not.

[…] The Board thus finds that the combination of features of claim 1 was directly and unambiguously derivable from the teaching of the description. Claim 1 thus complies with the requirements of A 123(2). [1.1.3]

As regards the so-called “novelty test”, i.e. a test for establishing if the amendments generate “novel” subject-matter, invoked by the Appellant, the Board finds that this test is not to be applied in a case like the present one wherein preferred embodiments of an invention are combined with the more general teaching thereof, since the amended subject-matter, though not being disclosed as such, can be a possible embodiment of the invention directly and unambiguously derivable by the skilled person from the explicit teaching of the original documents of the application. Therefore, in such a case, the patent (application) is not amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. In fact, the “novelty test” is fact no longer considered to be a reliable tool for evaluating the admissibility of amendments under A 123(2) (see Case Law of the Boards of Appeal of the EPO, 5th edition, 2006, III.A.2.3). [1.1.4] 

The “novelty test” could be expressed in the following terms: “Is the claim as amended novel over the disclosure of the application as filed ? If so, then the amendment violates A 123(2).”

Now this statement is certainly correct. It also takes into account that the case law applies the same principle (“… directly and unambiguously …”) to both A 54 and A 123 (and we might add A 76 and A 87 to that list). Why then is the novelty test rejected ? I would say that passing the “novelty test” is a necessary but not sufficient criterion for compliance with A 123(2). In other words, if the amendment does not pass the “novelty test”, A 123(2) is infringed, but the contrary does not hold true. An example might help.

Suppose that you have described and claimed a device comprising an active substance, wherein the active substance is taken from class {A} = {A1, A2, … An}. Only class members A1 to A5 are explicitly disclosed. You then amend the claim to cover a device wherein the active substance is A27. The amendment does not pass the novelty test, because the disclosure of the device having an active substance taken from class {A} does not anticipate the device having A27 as active substance; therefore, new subject-matter is created. A 123(2) is violated as there is no disclosure of the device having A27 as active substance in the application as filed. The novelty test works well in this case.

Suppose now that you have rather described and claimed a device comprising an active substance, wherein the active substance is A27. You then amend the claim to cover a more general device wherein the active substance is taken from class {A} to which A27 belongs. The amendment does pass the novelty test because the device having an active substance taken from class {A} is anticipated by the device having A27 as active substance; no novel subject-matter is generated. However, as the application as filed does not contain a disclosure of a device wherein the active substance is taken from class {A}, A 123(2) is violated. The novelty test does not detect this violation of A 123(2). 

To read the whole decision, click here.

G 4/08 – Translation Not Welcome

The show must go on. The day after publication of decision G 1/07, the Enlarged Board has issued another decision, which is perhaps a little bit closer to the everyday practice of many European patent attorneys. In its interlocutory decision J 8/07, the Legal Board of Appeal had referred some questions related to the possibility of switching from one official language of the EPO to another upon entry into the European phase of PCT applications. Here are the questions and the answers of the Enlarged Board:

Question 1: If an international patent application has been filed and published under the Patent Cooperation Treaty (PCT) in an official language of the EPO, can the applicant, on entry into the regional phase before the EPO, file a translation of the application into one of the other EPO official languages with the effect that the language of this translation must then be considered as language of the proceedings to be used in all proceedings before the EPO? 

The Enlarged Board appears not to have hesitated for a long time. It considers that the reading of A 158(2) EPC 1973 by the requester is distorting because it isolates this provision from its context (A 158) and its interaction with other provisions (in particular R 107(1)(a)) and is not compatible with the principle of equivalence between the international application and the European application in the case where the EPO is a Designated or Elected Office. According to the Enlarged Board, there is no conflict between the EPC and the PCT provisions; in particular, the possibility of choice provided in Rule 49.2 PCT is linked to the requirement of a translation. Legal Advice 10/92 is considered irrelevant. The Enlarged Board then discusses the situation under the revised EPC and comes to the conclusion that no major change has taken place with respect to the question under consideration. There is no reason to apply A 125. The argument of discrimination between applicants put forward by the epi amicus curiae brief is not considered relevant: if the existing provisions were discriminatory, it is the legislator (and not the instances entrusted with the application of the provisions) who would have to deal with this problem. Therefore, the Enlarged Board comes to the following conclusion:

Answer: When an international application has been filed and published in an official language of the EPO by virtue of the PCT, it is not possible to file a translation of the application into one of the two other official languages when entering into the European phase.

Question 2: If the answer to that question is no, can EPO departments use, in written proceedings on a European patent application (or an international application in the regional phase), an EPO official language other than the language of proceedings used for the application? 

The Enlarged Board considers that the question only arises because some decisions of the Boards have accepted to use another official language. The only reasoned decision, J 18/90, to which most of these decisions (such as T 1125/00 or T 1443/04) refer, has been issued before the entry into force of the abrogation of former R 3 EPC 1973. For the Enlarged Board, the abrogation of this rule is decisive; it deprives the former practice of its legal basis and hinders the EPO from re-introducing this practice via its case law. Therefore, the Enlarged Board comes to the following conclusion:

Answer: In written proceedings concerning a European patent application or an international application having entered the regional phase the departments of the EPO cannot use any of the official languages of the EPO other than the official language used pursuant to A 14(3).

Question 3: If the answer to question 2 is yes, what are the criteria to be applied in determining the official language to be used? In particular, must EPO departments accede to such a request from a party or parties?

Answer: This question is irrelevant (sans objet).

This outcome was to be expected. It is regrettable from the point of view of French- or German-speaking applicants who could have filed PCT applications in English (which allows them to become prior art in the U.S.A. as from their date of filing - or even as from the date of filing of a U.S. provisional application the priority of which is claimed) without losing the advantage of having written proceedings in their native language before the EPO. Now the only way to have all these advantages is to file a PCT application in French or German and a parallel U.S. application claiming the priority of the U.S. provisional application, if there is one. Needless to say, such parallel filing is expensive and ruins some of the advantages of PCT filing.

You can download this decision (in French) here. A translation will be published in the Official Journal of the EPO.

NB: Once again my fellow bloggers Laurent Teyssèdre and Mark Schweizer have been faster than lightning in reporting this decision. Their posts are found here and here.

G 1/07 - Dangerous Invasive Imaging Methods Are Excluded

Enlarged Board decisions are usually reported and commented on IP blogs even before the ink is dry on the signatures. The present decision is no exception; although brand new, it has already been reported here and here. I for one have not yet found the time to delve into this 80-pages decision, but here are the questions referred to the Board in interlocutory decision T 992/03 and the corresponding answers of the Enlarged Board:

Question 1: Is a claimed imaging method for a diagnostic purpose (examination phase within the meaning given in G 1/04), which comprises or encompasses a step consisting in a physical intervention practised on the human or animal body (in the present case, an injection of a contrast agent into the heart), to be excluded from patent protection as a “method for treatment of the human or animal body by surgery pursuant to A 52(4) if such step does not per se aim at maintaining life and health?

Answer : A claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to A 53 (c).

Question 2: If the answer to question 1 is in the affirmative, could the exclusion from patent protection be avoided by amending the wording of the claim so as to omit the step at issue, or disclaim it, or let the claim encompass it without being limited to it?

Answer: 2a. A claim which comprises a step encompassing an embodiment which is a “method for treatment of the human or animal body by surgery” within the meaning of A 53(c) cannot be left to encompass that embodiment.

2b. The exclusion from patentability under A 53(c) can be avoided by disclaiming the embodiment, it being understood that in order to be patentable the claim including the disclaimer must fulfil al1 the requirements of the EPC and, where applicable, the requirements for a disclaimer to be allowable as defined in decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal.

2c. Whether or not the wording of the claim can be amended so as to omit the surgical step without offending against the EPC must be assessed on the basis of the overall circumstances of the individual case under consideration.

Question 3: Is a claimed imaging method for a diagnostic purpose (examination phase within the meaning given in G 1/04) to be considered as being a constitutive step of a “treatment of the human or animal body by surgery” pursuant to A 52(4) if the data obtained by the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention?

Answer: A claimed imaging method is not to be considered as being a “treatment of the human or animal body by surgery” within the meaning of A 53(c) merely because during a surgical intervention the data obtained by the use of the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention.

Should I find something of particular interest in the decision, I will report on it later.

NB: To download the decision, click here.

T 843/06 – A 69 Cannot Repair an A 123(2) Deficiency

The invention concerns electronic modules such as the circuits found on smart cards.

[…] Claim 1 of the main request defines in its preamble that the electronic module comprises a lead frame consisting in a metallic layer, wherein the contact layout of the metallic layer is divided into two areas: a central area and an outer area. The central area contains an integrated circuit and conducting connections to the contact surfaces of the lead frame, surrounded by a casting compound. The outer area is largely free from casting compound. The first characterising feature now requires that the metallic layer has relieving areas “in the transition between the central area and the outer area.” [4.1]

This feature is not comprised in the claims as initially filed.

Such an indication is not found expressis verbis in the description as initially filed either. As far as the description as initially filed, according to the published A-document, refers to the location of the relieving areas, it indicates that relieving areas having the shape of punched holes (Stanzungen), perforations or windows in the outer area of the module, preferentially “as close as possible to the central area” or “in the immediate vicinity of the central area”.

As regards the division of the contact layout into a central area and an outer area, the description as initially filed contains the indications that the central area comprises the sensitive parts of the electronic module, which are cast within a casting compound, and that the central area is relatively rigid thanks to the casting compound, whereas the outer area consists in the contact layout and the thin metal layer only and has the function of connecting the module with the data carrier. [4.2]

According to the [patentee] the indications of the present claim have to be interpreted in the light of the whole disclosure provided by the description and the drawing. Such an interpretation using A 69 is necessary if only because of the ambiguity of the relative term “transition”. This term might indeed refer to a border (Grenze), but it could also be a reference to an area of transition on both sides of the border.

[The patentee] pointed out that neither the claim nor the description as initially filed contained a precise definition of the extent of the central area and the outer area. Therefore it would be inadmissible to consider that the outer border (Rand) of the casting compound forms a sharp limitation of the central area. The central area was primarily the area in which the integrated circuit and its conducting connections to the contact surfaces of the lead frame are found. Where the border of the casting compound was located precisely did not matter, as could be seen from the indications of the published application. […]

Therefore, it would be clear for the skilled person from the description as initially filed that there was a transition area between the central area and the outer area, which transition area extended in principle to both sides of the border of the casting compound. This being said, according to the invention, the relieving areas were only provided in the portion that was located outside the casting compound. [4.3]

The Board cannot endorse this opinion.

First, the argument according to which technical information that was incorporated into a claim by an amendment of the application documents could be interpreted onto the initial content of the disclosure of the application so as to avoid a conflict with the requirements of A 123(2), has to fail (cf. also T 1018/02 and T 277/01). A 69(1), which was adduced by the [patentee] in order to justify its opinion, concerns the extent of protection conferred by a patent. When the Boards of appeal refer to this article in their decisions, as a rule they deal with problems related to a modification of the extent of the protection, or, from time to time, with problems related to the clarity of a claim, in cases where the description provides a “lexicon” for the terminology of a claim feature that is to be assessed. This is not the case here, because the expression “transition between the central area and the outer area” is not found in the description and, therefore, is not explained at all.

Moreover, the present claim 1 and, in particular, the criticized feature, have a clear technical meaning and do not have to be interpreted via the description (cf. T 1018/02 [3.8]). Present claim 1 unambiguously defines a metal layer that is divided into two areas by the layout. No further area is mentioned. Therefore, the location “in the transition between” these areas can only mean that the relieving areas are disposed on their common border. That this border is identical with the border of the casting compound can be derived from the indication of claim 1 according to which the outer area is “largely free from casting compound”. Incidentally, this fact is the basis and justification for replacing the term “central area” by “casting compound” in the auxiliary requests filed by the [patentee].

However, a structure wherein the relieving areas are provided on the border between the central area and the outer area are not disclosed in the application documents as initially filed. Rather, as mentioned [above], the relieving areas of the description as initially filed, are provided in the outer area of the metallic layer, “as close as possible to the central area” or “in the immediate vicinity” of the central area.

Finally, the application documents as originally filed do not disclose any “transition area” whatsoever. The indications relied on by the [patentee] are not clear and unambiguous. [4.4]

It follows that the feature of claim 1 of the main request according to which the relieving areas are provided “in the transition” between the central area and the outer area of the metal layer is not disclosed in the initially filed application documents.

Therefore, A 123(2) is opposed to the request to maintain the patent on the basis of the main request. [4.5] 

Besides the useful reminder on the role of A 69, this decision illustrates the imperative need to provide clear and delimiting definitions for features (here: “central area” and “outer area” of the metallic layer) that might become crucial for establishing novelty and inventive step.

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

T 509/07 – No Partial Admissibility, But …

The present decision shows that despite the fact that there is no “partial admissibility” of appeals under the EPC, this does not rule out the possibility that one or more (but not all) of the requests of the appeal be inadmissible.

[…] Under established case law, the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. If the appellant submits that the decision under appeal is incorrect, the statement setting out the grounds of appeal must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of their own (cf. T 220/83 [4], affirmed by numerous decisions and more recently by T 809/06 [2]). In principle, a statement of grounds which merely refers generally to previous submissions is not considered sufficient. An exception to this principle has been acknowledged where the arguments presented at first instance already adequately addressed the grounds underlying the contested decision. Similarly, a brief statement may be considered sufficient where a substantial violation of the first-instance proceedings occurred, or where a reading of the impugned decision itself reveals that it cannot be upheld (see T 809/06 [4], and the cases cited there). [1.3]

The board considers that the requirements of established case law set out above are clearly complied with in relation to the first auxiliary request submitted with the statement of grounds. Whether or not sufficient grounds relating to the main request have been submitted is immaterial for the purposes of admissibility of the appeal because an appeal can only be assessed as a whole; see T 382/96 [1]. There is no support in the EPC for a notion of “partial admissibility” of an appeal (see T 774/97 [1.1]). In other words: if the admissibility requirements, in particular those of A 108, third sentence, are fulfilled at least in respect of one request, the appeal as a whole will be admissible. As a consequence, the present appeal is admissible. [1.4]

However it is a different question whether a request in relation to which the admissibility requirements are not met, in particular where sufficient grounds within the meaning of A 108, third sentence, have not been furnished in relation to that request, is admitted into appeal proceedings.

In decision T 382/96 [5.5] it was held that several requests could not be admitted into the appeal proceedings because no grounds of appeal within the meaning of A 108 had been filed in relation to those requests. In the board’s view this conclusion can be arrived at by assuming that such requests cannot be considered in appeal proceedings. In this context the Rules of Procedure of the Boards of Appeal are also of interest. Pursuant to Article 12(1)(a) RPBA, appeal proceedings shall be based on the notice of appeal and statement of grounds of appeal filed pursuant to A 108. Under Article 12(2) RPBA the statement of grounds of appeal shall contain a party’s complete case, setting out clearly the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. Article 12(4), in pertinent part, provides that everything presented under Article 12(1) shall be taken into account by the board if and to the extent it meets the requirements of Article 12(2). It could be concluded, a contrario, that one need not take into account matter which does not meet the requirements of Article 12(2) if the appellant has not specified the facts, arguments and evidence on which the appeal proceedings shall be based, but which might be supplemented later on. For, under Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal may be admitted and considered at the board’s discretion. [2.1]

In the present case the board stated in an annex to the summons to oral proceedings (OPs) that the statement of grounds of appeal comprised only one sentence concerning the claims according to the main request, namely “However, the applicant believes that the current application satisfies A 84, A 54 and A 56 and maintains his respective arguments presented up to now in the examination procedure.” The board added that this sentence appeared to neither set out clearly the reasons why it was requested that the decision under appeal be reversed, nor to specify which of the facts, arguments and evidence presented in the examination proceedings were relied on in appeal proceedings. In the OPs the chairman reiterated that the statement of grounds did not contain sufficient information for the board to discern why the appellant believed the decision under appeal to be wrong, in particular in regard of the assessment of the feature “imperceptibly different”. The appellant’s submissions in reply, for instance that the invention was a cutting edge technology and thus the claims should not be unduly limited, did not address the relevant reasons in the decision under appeal and thus were not apt to change the board’s view that the statement of grounds was deficient. Nor did the arguments presented at first instance, for instance that the description defined the term “imperceptibly different”, make it possible for the board to immediately understand why the contested decision was alleged to be incorrect in its assessment that parameters specifying this term only in the description were not suitable for limiting the scope of the claims. For in the present case, the appellant’s arguments were already dealt with in the decision under appeal. Thus the board cannot understand immediately why the decision is alleged to be incorrect. Likewise the board is unable to recognise that a substantial procedural violation had occurred or detect from a mere reading of the decision that it could not be upheld. [2.2]

It follows that, in relation to the main request, sufficient grounds within the meaning of A 108, third sentence, or Article 12(2) RPBA have not been furnished within the respective four-month time limit nor at a later stage of the proceedings. As a consequence, the board arrived at a conclusion analogous to the one reached by the board in T 382/96 [5.5], that the main request cannot be admitted into the appeal proceedings. This conclusion can also be based on the provisions of the RPBA set out under point 2.1. [2.3] 

To read the whole decision, click here. 

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

T 348/06 – When Insufficiency Changes Sides

The present decision deals with the revocation of a patent on the ground of insufficiency of disclosure. The Board comes to the conclusion that it rather is the allegation of insufficiency that is insufficient.

[…] It is established case law that the burden of proof in relation to lack of sufficiency lies with the party making that allegation, in the present case, the [opponent]. The alleged insufficiency is that no clear indication is given how stability of different textures of liquid crystal material is achieved in the absence of a stabilizing polymer component. [2.1]

The opposition division (OD) was convinced by the [opponent] that the burden of proof was discharged by virtue of disclosure of reflective devices in documents R8 and R30 with a contra indication that texture is metastable, which devices it considered very similar to examples disclosed in the patent, any differences being such that stability cannot be attributed to them. [2.2]

Taking a look at what the patent in dispute discloses, one can refer to section 17 in the description of the patent in dispute to see that no delicate surface conditions are required […]. The description of the patent in dispute also recites that the cell walls can be treated […] and such additional treatments alter the characteristics of the cell response. Additional treatments mentioned in this context are treatments by detergents, chemicals or rubbing. This is thus what the skilled person is taught. [2.3]

Buffing polyimide coating for homogenous alignment of the liquid crystal is said to take place according to the teaching of document R8 […] and R30 […]. 

In view of the disclosure of the patent [in dispute], the board is thus not convinced, that the devices disclosed in documents R8 and R30 are “very similar” to the examples disclosed in the patent, nor is the board persuaded by the submission of the [opponent] that involvement of the [patent proprietor] in documents R8 and R30 renders additional experimental evidence that this is so unnecessary. Moreover, the board has not been given any reason to doubt that any other example taught in the patent meets the claims nor has any evidence been presented in relation to any other examples or materials. [2.4]

The OD introduced a dubious link in its chain of reasoning using a vague reference to “rubbed (or “buffed”)”. This reference implies that the OD considered an additional treatment by rubbing in the patent in dispute to amount to buffering polyimide coating for homogenous alignment. The OD also observed that buffing polyimide coating for homogenous alignment of the liquid crystal was not excluded. A remark later in the decision went even further by referring to two examples with rubbed polyimide listed in table II of the patent, which, according to the OD, must be assumed to result in homogenous alignment. However, neither how the implication nor how the basis of the “must” is justified, is explained by the OD. Accordingly, the chain of reasoning of the OD did not convince the board. Therefore, the board does not agree with the OD that the burden of proof has been discharged. [2.5]

 

The [opponent] agreed with the position of the OD in presenting an argument that only ex post facto information excludes “buffing polyimide coating for homogenous alignment” from the patent in dispute, but the board considers it rather more the case that this argument is simply trying to graft a teaching into the patent. Many features are not excluded by any patent description, but for the purpose of assessing sufficiency, it is, with or without expert evidence, what is included in that description which is important. Thus, against this approach can be weighed the position of the [patent proprietor] directed directly to the teaching of the patent and underlining that all the examples in the patent in dispute, including those involving rubbed polyimide, do indeed provide stability of different textures of liquid crystal material. The board thus finds the position of the [patent proprietor] more persuasive as it sees no convincing reason not to follow the teaching present in the patent in assessing sufficiency. [2.6]

The [opponent] also referred to decision T 252/02 [2.2.1] in support of its position, which can be cited as follows, “In order to carry out the invention, the skilled person must be in a position to establish whether a product falls within the area covered by the claim and to reliably prepare the claimed product. […] In the present case the non-woven fabric laminate must have […] This presupposes that the skilled person utilises a method […] which is either the same or one which gives essentially the same results as the method which has been used as a basis for arriving at […] the patent in suit.” In the board’s view, [this statement] is not therefore in disagreement with the conclusion reached in the preceding paragraph. [2.7]

The Board then remits the case to the OD; the decision terminates with a polite but pressing invitation to the OD to accelerate the treatment of this case:

Generally speaking the board considers that cases should be resolved as soon as possible. In the present case, the board is thus sympathetic to the position of the [opponent] that the long lifetime of the proceedings is a reason for not remitting the case to the OD. On the other hand, the board cannot ignore the fact that the OD did not offer enough information in its decision for the board to be to be sure of its position on substantive patentability. If the board were to take a first decision on substantive patentability, it would thus deprive the [patent proprietor] of an instance. In the absence of a more pressing reason, such as, for example, pending infringement proceedings, the board therefore saw the balance between the parties to be best served, in the present case, by remittal. Nevertheless, from the viewpoints of procedural efficiency and service to the parties, the board regrets the delay in resolving the case and remarks that it would not be unhelpful if the OD were able to expedite its examination of the remitted case, dealing with all the issues still up for decision. [3.1] 

To read the whole decision, click here.

T 956/04 – Dangerous Product ... -By-Process

[…] Product-by-process features (“obtainable by a process comprising heating a mixture of transition alumina and an aqueous solution of cobalt ammine carbonate to a temperature of 60°C to 110°C in order to allow cobalt hydroxycarbonate to precipitate, drying and calcining the resulting product”) have been introduced in claim 1. [2]

[…] Since the "obtainable-by" features were introduced by an amendment to claim 1 in opposition procedure, the requirement of clarity must be met [3.1]

According to the established case law, claims for products defined in terms of processes for their preparation (known as product-by-process claims) are admissible only if the products themselves fulfil the requirements for patentability and that there is no other information available in the application which could have enabled the applicant to define the product satisfactorily by reference to its composition, structure or other testable parameters (cf. T 150/82 [10]).

As regards the above second requirement, in the present case, information is available in the application as filed, on how to define the catalyst by composition parameters for example by preferred amounts of cobalt, preferred cobalt metal surface area and the type of alumina. None of these possibilities, however, have been introduced in claim 1 of the main request, since the [patentee] wishes to rely on features such as crystallite size and distribution which are not defined in the application as filed. Since there is no other information available in the application as filed for the desired limitation by reference to crystallite size and distribution, the question arises whether the products themselves as defined by the “obtainable-by” features in claim 1 would fulfil the requirements for patentability. [3.2]

The [patentee] argued that the claimed “obtainable-by” features resulted in distinguishable structural properties over the prior art catalysts according to D4 to D6 such as higher cobalt metal surface area for a given cobalt content, as well as a crystallite size of 3 to 5 nm having a narrow distribution. [3.3]

[…] The prior art catalysts according to D4 to D6 having a cobalt content in the range of 3 to 40% by weight already provide a cobalt metal surface area of above 40 m² per g of cobalt as defined in claim 1. [3.3.4]

The [patentee] argued, however, that the evidence on file showed that the “obtainable-by” features provided a higher cobalt metal surface area at a given cobalt content than any prior art catalyst. [3.4]

[…] From the test results [provided by the patentee], it can be gathered that the measured cobalt metal surface areas at a given cobalt content are not consistent and that for different alumina supports the cobalt metal surface area is dependent on the amount of cobalt deposited and the type of alumina used. Thus, the type of alumina and the specific loading of cobalt thereon is not irrelevant. Consequently, a specific relation between the metal content and the cobalt metal surface area cannot be the inevitable result of the claimed “obtainable-by” features. [3.5.3]

[…] In summary, the [patentee’s] test reports show that catalysts according to D5 and D6 having a cobalt content in the range of 3 to 40% by weight provide a cobalt metal surface area of above 40 m²/g of cobalt when reduced as defined in claim 1. Thus, all these prior art catalysts fulfil the product parameters of claim 1 of the main request, and are thus not distinguishable from catalysts which are arguedly the inevitable result of the “obtainable-by” features. Furthermore, even if the invoked different relation between cobalt content and cobalt metal surface had been shown, it is not a requirement of claim 1. [3.5.5]

The [patentee] furthermore argued that the “obtainable-by” features provided a crystallite size of 3 to 5 nm and a more uniform distribution than that obtainable by the prior art catalysts. [3.6]

No crystallite particle size or its distribution is ever mentioned in the application as filed, let alone as a possibly distinguishable feature of the claimed catalyst. Thus, from the patent in suit, no causal relation between the “obtainable-by” features and the crystallite size and its distribution can be gathered. In addition, it is not clear how “uniform” that crystallite size distribution would be. Hence, the board considers that the “obtainable-by” features cannot provide a clearly distinguishable product feature with respect to the crystallite size and its distribution. [3.6.1]

[…] According to the case law (T 552/91 [5.2]) it is necessary to include in the claim the process parameters required for defining unambiguously the claimed substances as inevitable process products. It is generally necessary to indicate not only the starting compounds and the reaction conditions, but also the methods by which the reaction mixture is processed to obtain the claimed compounds. Without clearly indicating the specific starting materials (including the alumina carrier having specific pore volume and surface area) and the specific reaction conditions (drying, calcination and reducing conditions), the “obtainable-by” features as claimed fail to unequivocally define any clear catalyst features. [3.6.7]

In summary, the claimed “obtainable-by” feature does not unambiguously define the claimed catalysts as inevitable process products. Furthermore, the exact distinction (a specific relation between cobalt content and cobalt metal surface area or a more uniform Co crystallite size distribution of 3 to 5 nm), which should define the scope of protection, cannot be learnt from the “obtainable-by” features, since the experimental evidence on file does not show that the “obtainable-by” features necessarily provide any clearly distinguishable product feature in that respect. Consequently, the product-by-process features of claim 1 of the main request is not clear and does not permit the conclusion that the inevitable process product thereof is novel over the prior art catalysts. [3.7]

Therefore, the product-by-process features in claim 1 of the main request do not clearly define patentable subject-matter and the claim does not meet the requirements of A 84. [3.8] 

To read the whole decision, click here.

T 567/08 – Ambiguity Kills The Cat

Readers interested in major and “surprising” decisions only should not read on. The present decision is not revolutionary at all, but it contains a very thorough discussion of an ambiguous amendment that led the patentee into the “inescapable trap” between A 123(2) and A 123(3). In particular the question of whether the existence of particular interpretations that would make the amendment allowable can change the fate of the claim is discussed in detail.

[...] The subject-matter of claim 1 as granted is defined in part using the term “base footprint”, which is not disclosed in the original disclosure but was introduced during examination and held to add subject-matter in the decision under appeal. [3.1]

The decisive issue now is whether the addition of this term represents an amendment of the type addressed in G 1/93 [12] namely an “undisclosed technical feature limiting the scope of protection of the granted patent in comparison with the application as filed”. Such a “limiting extension” adds subject-matter contrary to A 123(2) but at the same limits the scope of protection vis-à-vis what could have been claimed, so that its removal infringes A 123(3). Only if there is a basis in the application as filed for replacing such subject-matter without violating A 123(3) can it be remedied. On the other hand, if the limitation merely excludes part of the potential protection of the application as filed, without providing a technical contribution to the subject-matter of the claimed invention, it does not add subject-matter and the opposition ground under A 100(c) does not prejudice maintenance of the patent.

G 1/93 makes its findings in the light of the overall purpose of A 123(2)(3), namely to create a fair balance of interests between patentee (or applicant) and competitors and third parties. [3.2]

Original disclosure

It is uncontested that the term “base footprint” is not expressly disclosed in the application as filed. In granted claim 1 a rear sidewall extends beyond the “base footprint” to effectively form the shoulder (though not defined as such in the claim). The relevant parts of the original disclosure dealing with the location of the shoulder are to be found on page 12, in the first paragraph, (“the shoulder ... extends to at or near a theoretically plane extending vertically upwards rear the first end (the base) of the container” and in as filed claim 8 (“the shoulder ... extends to at or near a theoretical plane which extends vertically above the circumference of the first end”). [4.1]

“The first end” and “base” are used, it would appear, as synonyms on page 12. In a further passage […] the two terms are again used interchangeably: “the container has a first, closed end which … has a planar surface, enabling it to stand upright. The planar surface may be completely flat or comprise a flat rim and an inwardly domed area. The base often has a diameter ...”. This passage also offers a definition, if somewhat grammatically flawed, of what is meant by the first end/base. It focuses on the flat surface on the bottom end of the container including any domed area contained within it and corresponds to what the [patent proprietor] reads as “base” and “base footprint”:

It is noted that this definition excludes the rounded edge of the container bottom lying outward of and connecting to the flat surface. On the side of the shoulder this edge is shown as relatively prominent and not negligible. [4.2]

With this definition in mind, page 12, first paragraph, and claim 8, can then be read as teaching to locate the shoulder beyond a plane extending vertically from the circumference of this flat surface. [4.2]

Added subject-matter

Claim 1 was amended upon grant to require the support (forming the shoulder) to lie “beyond the base footprint”. The term “footprint” can have various meanings, and its use in conjunction with “base” is open to interpretation, as the debate to date has shown. [5.1]

If “footprint” is understood, as does the [patent proprietor], in the sense of a “tyre footprint”, meaning “the area of contact between a tyre and the ground” (Oxford English Dictionary or OED), it corresponds to the contact surface of the container bottom end on the underlying surface. The circumference thereof corresponds to that of the base or first end as defined above, and the requirement in granted claim 1 could then be read as equivalent to that understood from the text (where “the support/shoulder extending beyond the circumference” will be understood as meaning that it extends beyond the plane extending vertically from the circumference). [5.2]

On the other hand, the term can be read analogously to “footprint of a personal computer”, denoting the “area of a surface taken up by a microcomputer on a desktop” (OED) and formed by the downward projection onto the surface of the PC. This reading would allow for more complex, non planar base shapes - such as with an outer rounded edge - the downward projection of which then forms the “footprint”. In this interpretation “base footprint” includes for example the rounded edge onto the underlying surface:

The area is larger than that of the contact surface above, and its circumference further outward. Thus interpreted, granted claim 1 requires the support/shoulder to lie further outward than if it is interpreted as in the previous paragraph. [5.3]

Both interpretations represent common usage, as illustrated by the citations from the OED. Moreover, they fit within the context of the entire contents, i.e. there is no contradiction between this claim wording and description and figures of the patent specification, the relevant parts of which … are unchanged with respect to the originally filed description. These passages encompass also shoulders that extend further outward , e.g. those beyond the boundary of the base projection rather than of the contact surface. [5.4]

The second interpretation however is more specific than the teaching derivable from the original disclosure. It adds new, more precise information on the location of the shoulder, which is not derivable from the original application. Moreover, in the context of the problem of stability this information is technically significant; by defining a more limited range of possible shoulder positions it provides a technical contribution to the invention. In its second interpretation the feature of the “base footprint”, and bearing in mind G 1/93 [headnote II], thus adds subject-matter extending beyond the content of the application as filed, contrary to the requirements of A 123(2). [5.6]

This possible interpretation gives the proprietor an unwarranted advantage and is damaging to the legal security of third parties. It does not matter that the claim can also be read in such a way that it does not add subject-matter. The fact that in one reasonable interpretation of the claim it does do so is decisive. The legal certainty of a claim that, by introduction of an undisclosed ambiguous term, is amended to have multiple reasonable interpretations, is thus compromised when one of those interpretations relates to added subject-matter.

The Board thus concurs with the finding of the decision under appeal, that the corresponding opposition ground of A 100(c) is prejudicial to the patent as granted. [5.7]

Limitation of scope of protection

The first interpretation of “base footprint” as synonymous to contact surface clearly does not per se result in a limitation of the scope of the original disclosure. However, reading the term in its second sense, claim 1 as granted only protects containers with supports/shoulders that extend further outward, beyond the wider area. A shoulder, which lies between the contact surface boundary and that of the whole base projection,

does not fall within granted claim 1’s scope, though by virtue of the original application’s disclosure of the contact surface boundary as lower limit it could have been. According to the second interpretation of “base footprint” this amendment to claim 1 at grant thus limits the scope of the claim in comparison to the application as filed and published. It is again stressed that this second interpretation is consistent with description and figures, and it is thus a valid construction of claim scope when the claim is read in light of the description and figures in accordance with A 69(1). [6.1]

As demonstrated above, but for the prohibition of A 123(3), subsequent amendment of claim 1 by removing the term “base footprint” would result in embodiments, which before amendment did not infringe the patent, after amendment infringing it.

Here again the fact that there is at least one reasonable, contextually consistent reading of the term that results in a limitation of scope, among a number of possible readings that do not, is decisive. The ambiguity of the undisclosed amendment adds to, rather than mitigates the legal uncertainty surrounding the rights deriving from the patent. In this regard, the Board notes that if it were to construe an ambiguous undisclosed term in a manner favourable to the Proprietor (i.e. in a way that does not add subject-matter and limit scope) it would act against the principle of a fair balance of interests underlying A 123(2)(3). In its view the Proprietor should not be able to reap any benefit from the fact that an added undisclosed feature is ambiguous, with regard to an added undisclosed feature that is not. [6.2]

Conclusion

As follows from the above, the amendment of claim 1 pertaining to “base footprint” adds subject-matter, but limits the scope of protection in comparison to the application as filed and published. The Board concludes that it is a “limiting extension” in the sense of G 1/93. [7] 

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