Saturday, 13 February 2010

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.