Thursday, 29 April 2010

T 1042/06 – Common Denominator of 54, 87, and 123


The present decision is also interesting because it shows the analogies and dissimilarities between the concepts of novelty, priority and inadmissible extension. The EPO case law uses the same criterion (“clearly and unambiguously”) for these concepts, but there are subtle differences.

[3.2.3] The board agrees with the respondent that the criterion which has to be applied for the assessment of novelty is in principle the same which has to be applied when deciding on the allowability of amendments within the meaning of A 123(2), namely as to whether or not the claimed subject-matter is clearly and unambiguously derivable from the prior art and the application as filed, respectively.

In the present case, however, the application of this criterion leads to different results regarding the assessment of the amendments of the claims and novelty.

As regards the amendments in Claim 1 of the main request, the board has come to the conclusion that the combination of features in amended Claim 1 of the main request is clearly and unambiguously derivable from the application as filed, because that combination is hinted at by the general presentation of the individual features in the application as filed and by Example 6 in the application as filed.

By contrast, neither G2 nor G19 provide such pointers to the claimed subject-matter. Thus, the respondent’s allegation that in the present case a positive finding on the allowability of the amendments to Claim 1 of the main request would entail a finding of lack of novelty over G2 and G19 cannot be accepted.

[3.2.4] The respondent alleged that the subject-matter of Claim 1 of the main request also lacked novelty over G22 (filed on 10 June 1993 and claiming priority from two Japanese applications of 10 June 1992 and 12 October 1992), since the subject-matter of Claim 1 of the main request was not entitled to the claimed priority date of 5 March 1992. The priority of the initial Japanese application was incorrectly claimed for the reason that the combination of features as set out in Claim 1 of the main request could not be directly and unambiguously found in the priority document. However, the features of Claim 1 of the main request are presented in the priority document in a similar way as in the application as filed and can be found in Claim 1 of the first priority document (basically identical to Claim 1 as filed), paragraph [0020] (upper limit for the molecular weight of the cross-linking agent), Claim 4 (0.03 to 0.2 mol% of cross-linking agent), Claim 9 (heat treatment in the presence of a second cross-linking agent), paragraph [0013] (definition of the water-soluble monoethylenically unsaturated monomer), paragraph [0029] (polymerization in aqueous solution), and paragraph [0039] (mixing of the second cross-linking agent with the polymer and reaction).

As regards the basis for the combination of these features, the same argumentation given in connection with A 123(2) in point [3.1.2], above, equally applies to priority except that in the priority document Example 5 ((which corresponds to Example 6 of the application as filed) supports the claimed combination of features.

It follows from the above that the subject-matter of Claim 1 of the main request can be clearly and unambiguously derived from the priority document, i.e. there is a full disclosure of “the same invention” in the priority document. Therefore, the priority claim is correct.

Since the claim to priority is valid, there can be no lack of novelty in view of the later document G22 whose earliest priority date (10 June 1992) is later than the priority date of the patent in suit (5 March 1992).

To sum up, one may say that A 87 and A 123 (and A 76, for that matter) function in the very same way. A priority is valid if the subject-matter of the claim claiming priority can be derived directly and unambiguously from the priority document. If we consider, for the sake of the argument, that the first application (the priority of which is claimed) is an EP application, for the priority claim to be valid for a claim of the second application (claiming the priority), it must in principle be possible to obtain this claim by amending the claims of the first application without infringing A 123(2). Things are a little bit different for novelty. A claim lacks novelty if its subject-matter can be derived directly and unambiguously from a document of the prior art.

To read the whole decision, click here.

5 comments:

Anonymous said...

Maybe one could say that a claim lacks novelty if its scope includes subject-matter that can be derived directly and unambiguously from a document of the prior art? (This reflects that broadening a claim that lacks novelty will never restore novelty.)

For A.123(2)/87/76, the test is then if its subject-matter can be derived directly and unambiguously from the application as filed / the priority document / the parent application, i.e. the exact same combination of features. Both narrowing and broadening a claim can cause the test to fail.

Btw, for priority the claim of the second application does not have to be derivable from the claims of the first application; it is sufficient if it can be derived from any part of the first application including the description and drawings (but not the abstract).

Oliver G. Randl said...

Fair enough.

I did not say (or at least intend to say) that the claim of the second application has to be deriveable from the claims of the first application only, but that it must in principle be possible to amend the claims of the first application (the amendments being based on claims, description and/or drawings) so as to obtain the claim of the second application WITHOUT INFRINGING A 123(2).

Anonymous said...

Ok, I see what you meant and I should probably have read what you wrote using the common general knowledge of the (legally) skilled person ;)

Oliver G. Randl said...

I just read an interesting article on the concept of "unambiguous and direct disclosure" in the March 2010 epi information journal. The authors point out that recent case law decisions have introduced an asymmetry between A 123 and A 87.

I think this is due to the fact that G 1/03, by allowing disclaimers, to some extent 'stretched' A 123(2). This was a pragmatic choice, but from a purely academic point of view, disclaimers are problematic under A 123(2).

For the time being, the situation is less clear for priority matters, but I trust that the Boards will finally converge towards accepting that disclaimers are not prejudicial to the validity of priority claims, be it only for the sake of coherence. Therefore, I expect the asymmetry between the A 123(2) and A 87 to be short-lived. We need some more decisions to see clear on that matter.

Anonymous said...

I read the article some weeks ago. Is the problem not that different Boards have different views on what is a disclosed disclaimer (for which G 1/03 does not apply)?

For example. The application as filed states "any metal, for example iron". Can you now claim "any metal, except iron" (without having to satisfy the conditions of G 1/03)?

Some Boards say yes, because iron is disclosed, so "except iron" is a disclosed disclaimer. Other Boards say no, because the application as filed does not disclose that iron is excluded (and A.123(2) requires the connection between the various features to be disclosed in the application as well). T 1107/06 states that the latter approach is in principle correct, but that the skilled reader will always recognise that disclosed subject-matter can be excluded, so that "any metal, for example iron" implicitly discloses "any metal except iron".

It seems that T 1443/05 was such a situation as well (but with respect to the priority document), but the Board does not clearly identify it as such and simply states "no". Personally I would agree that the answer is "no" (since the skilled person is a technical expert and not a patent attorney looking how to save a patent application ;)). But the authors of the article have a point that there is case law pointing to "yes".

So I think this is more about different Boards applying the same test in a different way, than about (slightly) different tests for A.123(2) and A.87(1).