Saturday, 27 February 2010

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.  


Anonymous said...

Very interesting point you make. I suspect that you are correct, but this question seems to be a perfect candidate for referral to the EBA.

In practice, oppositions after limitation will probably be quite rare (since oppositions have priority and limitations can in the normal case probably not be finished within the 9-month opposition period). So we might have to wait a long time before we see this point come up in a real case.

I am not convinced that the limitation procedure has been sufficiently thought through. For example, the Examining Division seems to have no way to object on novelty or inventive step in a case where the limiting features were disclosed in the application as filed but not in the priority document (and relevant intermediate documents are available). Limiting features may also render the claimed subject-matter insufficiently disclosed or bring it in conflict with Art. 53.

It would be fine if limitations had been confined to deletion of claims, for example deletion of independent claim 1 and reformulation of dependent claims 2, 3, 4, etc. to include the features of claim 1. But this does not seem to be the case.

Strangely, R. 95(2) seems to allow the Examining Division to object to a limitation for the reason that the claim as granted was unclear and the limitation does not resolve this unclarity. I suppose the drafters had the opposition approach to Art. 84 in mind, but I don't see this back in R. 95(2) (nor in the Guidelines).

What is also interesting is that the Guidelines indicate that amendments to the description and drawings filed in the limitation procedure must be examined, even though R. 95(2) does not allow for this. This suggests that the ED could do more than R. 95(2) requires, but that seems contrary to Art. 105b(2) EPC.

Anonymous said...

According to the 16th edition of Visser (p. 223), the problem of Art. 123(3) not being a ground of opposition will be addressed in the next Diplomatic Conference.

Anonymous said...

I don't see how a limitation may extend the scope of protection. Do you have any example at hand to illustrate this or are you thinking of pseudo-limitations?

Anonymous said...

According to Article 99 opposition is filed against "that patent", referring to the patent as granted, the date of which mentioned in the Bulletin. In the unlikely event the claims are limited shortly before the opposition is filed it seems unclear which claims will be subject of the opposition proceedings. The opponent probably opposed the claims as granted and not the claims as limited....

Anonymous said...

"I don't see how a limitation may extend the scope of protection. Do you have any example at hand to illustrate this or are you thinking of pseudo-limitations?"

The idea is that the Examining Division makes a mistake during the limitation procedure and allows a "limitation" that is in fact an extension of subject-matter. It should not happen, but of course it WILL happen at some point. (E.g. a replacement of a feature by another feature that prima facie appears to be more specific but turns out to allow for an interpretation not covered by the original feature.)

However, for a case in which the opponent argued that the addition of limiting features could lead to an extension of the scope of protection, see decision T 81/03, reasons 3.6 and 3.7.