T 727/07 – Jurisprudential Potpourri

This decision contains several bits and pieces which as such perhaps would not justify a post but which, nevertheless, are not without interest.

First, there is an interesting statement on procedural economy.

The opponent wished to introduce documents R17 and R18 which it considered very relevant. The opponent also pointed out that they should be admitted for reasons of procedural economy. If the documents were not admitted into the appeal proceedings, it would be necessary to file national invalidation proceedings based on these documents, which would result in long and costly proceedings.

The Board does not agree:

The Board concedes that documents R17 and R18 do not present any particular difficulty and that the question of their admissibility depends essentially on the benefit in terms of procedural economy resulting from their admission. This is an aspect that has to be assessed in view of the relevance of these documents. Considering this, the Board is of the opinion that the notion of procedural economy is to be assessed in relation to the appeal proceedings pending before the Boards of appeal of the EPO. It cannot take into account the possibility of subsequent proceedings which the parties could instigate before other jurisdictions. If it were pushed to its limits, the argument of the [opponent] would have the consequence of depriving article 13(1) RPBA of many of its effects in respect of appellants-opponents. [2.2] 

Secondly, the opponent pointed out that the late filing of the documents was due to a change of the professional representative at a late stage of the appeal proceedings. Again, the Board is not willing to accept the argument:

The Board notes that a change of the professional representative could not possibly justify late filing of documents. It follows from article 12(2) RPBA that the statement of grounds of appeal has to set out all the legal means relied on by the appellant. Therefore, a change of the professional representative could not possibly allow to depart from the requirements that are to be applied at the time of filing the appeal. [2.5] 

Third, the decision has an interesting paragraph on claim interpretation.

Claim 1 of all requests concerned an “Integrated circuit device incorporated into a smart card (carte à puce)”. The opponent pointed out that the concept of a smart card was very general and that it covered the memory cards disclosed in R17 and R18.

Once again, the Board is not persuaded.

Paragraph [0012] as amended during the opposition phase explains that “Smart cards are standard portable memory objects operating by contact and which are defined in particular by standards ISO 78-10 and 78-16 the content of which is incorporated by reference into the present disclosure of the invention.” Even if the reference to the standards in paragraph [0012] is not recalled in the independent claim, the Board finds that: (i) the paragraph contains a definition of the concept of ‘smart card’, and (ii) this definition is intended to apply to the document as a whole. Therefore, the Board considers that the skilled person reading the application would have understood the term ‘smart card’ according to this meaning. As the present Board has already pointed out (T 1281/06 [2]; T 1271/05 [4.3]) the claim should be interpreted in the light of this definition. [2.3]

[…] As the memory cards disclosed in R17 and R18 do not comply with the standards mentioned above, they cannot be considered as smart cards within the meaning of the contested patent. Also, the circuits disclosed in these documents cannot be considered as integrated circuit devices in the sense of a structural unit integrated into a smart card.

As a consequence, neither R17 nor R18 are sufficiently relevant to be admitted into the proceedings. [2.4] 

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