T 506/07 – Embryologists Are Farsighted

When inventive step was discussed, the [patent proprietor] argued that the skilled person in the art was an embryologist and would never have consulted any of the documents E3 to E5 belonging to the field of crystallography. He would also not have used the loops that were known for spreading bacterial cultures, inter alia because these loops were not used to form thin films.

The Board does not agree:

[5.3] The Appellants’ argument that the person skilled in the art of embryology would not have been aware of documents E3 to E5 was based on point 6 of both affidavits E13 and E14. These affidavits do, however, not take into account that the problem to improve the handling is not a problem specific to embryology but a mechanical one. When solving this mechanical problem, the person skilled in the art would have consulted the art in neighbouring fields where the same problem could occur and might have been solved when vitrifying biological samples.

Consequently, he would have been aware of document E3. This document deals with cryocrystallography and discloses flash cooling of macromolecular crystals such as proteins in a loop […], optionally in the presence of a cryoprotective additive […]. Document E3 mentions that the introduction of “a loop-mounting technique was a major advance ...” as compared to glass capillary tubes, fine glass fibres or small glass spatulas […].

Therefore it was obvious to the expert to improve the handling of the samples on an electron microscopy grid by attaching the grid to a loop as disclosed in document E3.

Hence, the subject-matter of claim 1 of the Main Request and of the First Auxiliary Request does not involve an inventive step.

To read the whole decision, please click here.

T 452/08 – Description Leading Into The Trap

The present decision gives a textbook example of how an amendment of the description can lead into the inescapable trap.

** Translation from the German **

[2.1] Claim 1 concerns a package “comprising a plurality of coiled rolls of plastic film wrapped insulation material panels made of mineral wool, in particular glass wool, that are designed to be laid as wedging felt (Klemmfilz)”. […]

[2.2] When assessing whether the subject-matter of claim 1 has been amended in a way that extends beyond the content of the application as originally filed and, therefore, violates the requirements of A 123(2), the meaning of the expression “wedging felt” plays a decisive role.

[2.3] The expression “wedging felt” was only mentioned in the second and third paragraphs of the application as filed. It was not mentioned in the claims as originally filed.

[2.4] The second paragraph of the originally filed description consisted in the following four sentences:

“1 Insulation material panels made of mineral wool are used in various ways for insulating heat. 2 One major domain of application is the insulation of roofs, in particular the insulation of steep roofs. 3 To this aim, the insulation material panels are fixed between the rafters (Dachsparren); for the insulation of new constructions and for the insulation of old buildings that are to be renovated one mostly uses so-called “wedging felts”. 4 Wedging felts are insulation material panels bearing marks provided transversely to the longitudinal direction of the panels such that, depending on the distance between the rafters between which the insulation material is to be inserted, a corresponding portion of an insulation material panel is cut to length, using the transverse marks as guiding line for cutting, and then wedged (mit Klemmsitz … eingebracht) between the rafters” (bold text and sentence numbering introduced by the Board).

Hereby the application as originally filed defines which insulation material panels according to the invention are to be subsumed under the expression “wedging felt”. A binding agent content of 6 to 7 wt. % is not disclosed anywhere in the initially filed application for the [wedging felts ?] mentioned above, nor for the wedging felts according to the invention, neither explicitly nor implicitly.

[2.5] After having received the communication pursuant R 51(4) EPC 1973 the applicant filed an amended second paragraph of the description […], together with an amended claim 1 comprising the additional sentence “designed to be laid as wedging felt”. The amended second paragraph of the description then constituted paragraph [0002] of the patent as granted. Paragraph [0002] of the new main request is identical with paragraph [0002] of the patent as granted, with the exception of the corrected number of the German patent mentioned therein:

“1 Insulation material panels made of mineral wool are used in various ways for insulating heat. 2 One major domain of application is the insulation of roofs, in particular the insulation of steep roofs. 3 To this aim, the insulation material panels are fixed between the rafters; for the insulation of new constructions and for the insulation of old buildings that are to be renovated one mostly uses so-called “wedging felts”. 4 Wedging felts are insulation material panels bearing marks provided transversely to the longitudinal direction of the panels such that, depending on the distance between the rafters between which the insulation material is to be inserted, a corresponding portion of an insulation material panel is cut to length, using the transverse marks as guiding line for cutting, and then wedged between the rafters. 5 Such wedging felts are known from DE 36 12 857 C 3. 6 Here the insulation material panel is coiled in a roll. 7 Cuts are made along the marks provided on the insulation material panel, whereby a portion is separated of the insulation material panel, the length of which portion corresponds to the distance between the rafters. 8 The separated portion is then rotated by 90° and laid between the rafters, where it is wedged (mit Klemmsitz gehalten). 9 Such wedging felts have an increased binding agent content of about 6 to 7 wt. % and are characterised by a greater stiffness” (bold text and sentence numbering introduced by the Board).

[2.6] The expression “such wedging felts” used for the first time in sentence 5 indicates that wedging felts according to the invention, i.e. wedging felts mentioned in the preceding sentence 4, are known from DE 36 12 857 C 3. This has not been contested by the [patent proprietor]. The following sentences 6 to 8 are not relevant for the present case. However, sentence 9, which among other things attributes a binding agent content of about 6 to 7 wt. % to the wedging felts, using again the expression “such wedging felts”, is relevant.

[2.7] Whereas the [patent proprietor] submitted that the repeated use of the expression “such wedging felts” exclusively referred to the wedging felts known from DE 36 12 857 C 3, and therefore, to wedging felts that do not correspond to the invention, the [opponents] argued that this reference, which repeats the first expression, clearly referred to the preceding sentences and, therefore, to wedging felts according to the invention. Thus the reference defined the latter to have a binding agent content of about 6 to 7 wt. %, without there being a disclosure for such contents in the application as originally filed.

[2.8] For the sake of argumentation, the Board assumes, following the submissions of the [patent proprietor], that the expression “wedging felt” is a “terminus technicus” which in its broadest interpretation by the skilled person defines insulation material panels falling under the definition of wedging felts provided in sentence 4 of paragraph [0002].

In the present case the Board can also follow the argument of the [patent proprietor] that the patent comprises (or corresponds to) its own lexicon that determines how the different expressions used in the description and the claims are to be understood by the skilled person.

[2.9] However, in such a case the whole context of such definitions has to be considered when – as here – further sentences ascribe further or different qualifications to an expression that defines a specific object in the prior art. Then this expression receives a special meaning that overrides (überlagernd) the usual content of the expression (see also T 500/01 [6]).

[2.10] In the present case the Board finds that an interpretation of sentences 5 to 9 of paragraph [0002] which is correct both on a grammatical and a semantic level, unambiguously leads to the conclusion that the expression “such wedging belts” used for the second time therein, very much like the first use of the expression in sentence 5, refers to the wedging belts mentioned in sentences 1 to 4 and, therefore, also to the wedging belts according to the invention. Via this expression the wedging belts according to the invention are explicitly stated to have a binding agent content of about 6 to 7 wt. %.

[2.11] The Board moreover notices that there is no basis for the requirement of a binding agent content of about 6 to 7 wt. % for the wedging belts according to the invention in the application as originally filed. This fact was not contested by the [patent proprietor].

[2.12] Therefore, the application does not comply with the requirements of A 123(2) […].

[2.13] The Board cannot endorse the argument of the [patent proprietor] according to which the sentences 5 to 9 of paragraph [0002] clearly and exclusively refer to the content of the German patent mentioned therein, for the following reasons:

The beginning of the sentence “Such wedging felts …”, both in sentence 5 and sentence 9, establishes a clear reference to the preceding sentences 1 to 4, i.e. to the wedging felts according to the invention. Secondly, the argument is in conflict with the contrary submissions of the [patent proprietor] during the opposition and appeal proceedings. […]

Article 123(3)

[3.1] In the description of the patent according to auxiliary request 1a the four last sentences (6 to 9) of paragraph [0002] were deleted, so that the existence of a binding agent content of about 6 to 7 wt. % in the wedging felts is not mentioned any more. In the description according to amended auxiliary request 1b and to auxiliary requests 1 to 3 the last sentence 9 of paragraph [0002] was amended such that this binding agent content is presented as an optional feature.

[3.2] According to points [2.9] and [2.10] above the Board considers that the existence of a binding agent content of about 6 to 7 wt. % in the wedging felts according to the invention, as mentioned in sentence 9 of paragraph [0002] of the patent as granted, is an additional (übergeordnet) requirement of the claimed invention. Pursuant A 123(3) the patent may not be amended in such a way as to extend the protection it confers. Pursuant A 69 and its Protocol the extent of protection is determined by the claims, but the description and the drawings are to be used to interpret the claims. Considering the explanations provided in points [2.9] to [2.13] above, this has the effect that the binding agent content of about 6 to 7 wt. % in wedging felts according to claim 1 has to be understood as a requirement limiting the extent of protection conferred by this claim.

[3.3] The deletion or amendment of the last sentence 9 of paragraph [0002] in auxiliary request 1a and in amended auxiliary request 1b as well as in the auxiliary requests 1 to 3, respectively, corresponds to abandoning this requirement or to presenting it as optional.

[3.4] Therefore, the deletion or the amendment of the last sentence of paragraph [0002] results in that the expression “wedging felt” in claim 1 of these requests comprises insulation material panels not having a binding agent content of about 6 to 7 wt. %. As this extends the protection conferred by claim 1, claim 1 of each of these requests does not comply with the requirements of A 123(3).

So when the Office obliges you to acknowledge prior art in the description, be very careful in how you present it.

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

T 279/07 – Deadly Prodrugs

Following a refusal of its application by the Examining Division, the applicant filed an appeal as well as a new set of claims. Claim 1 of this set read:

1. Use of androst—5—ene—3ß,17ß—diol or prodrug thereof, for the manufacture of a pharmaceutical composition for treating or reducing the likelihood of acquiring, in a female patient in need thereof or benefitting therefrom, an indication where an estrogenic effect is desired to a greater extent than is an androgenic effect and in which lower androgenic activity than provided by DHEA is desired, the indication selected from the group consisting of hypogonadism, skin atrophy, skin dryness, vaginal atrophy, and urinary incontinence.

The Board came to the conclusion that this claim was unclear:

[2.1] Under A 84 the claim(s) shall define the matter for which protection is sought.

Thus, the question to be answered with respect to clarity under A 84 EPC is whether it is possible to determine if an embodiment falls within the scope of the claims or not.

In the present case, the chemical structures in independent claim 1 are mainly defined by a functional feature, namely “androst-5-ene—3ß,17ß-diol or prodrug thereof” (emphasis added).

According to the description, “prodrugs” of 5-Diol are defined as compounds “converted thereto in vivo”, and two specific structures, i.e. the 3-acetylated derivative of 5-Diol and a 3,17-succinic ester of 5-Diol, and 5-Diol fatty acids are disclosed […].

The Board has no doubt that the skilled person is perfectly able in most cases to decide whether or not a steroid derivative will be converted to 5-diol in vivo, in particular when the chemical entity differs from the 5-diol skeleton merely by the presence of usual hydrolysable hydroxyl protecting groups such as esters, carbonate esters, phosphate esters, acyloxyalkyl ethers a.s.o..

However, the Board is also convinced that, in order to establish whether a structurally more remote steroid derivative constitutes a prodrug of 5—diol, in other words in order to clearly establish the scope of protection of the claims, the skilled person would sometimes have no other choice than to synthesize a labeled sample of the steroid to be tested and to follow its biochemical transformations in vivo to determine whether or not the chemical structure under consideration is a biological precursor of 5-diol. In addition, toxicological studies might also be necessary.

According to the Case Law of the Boards of Appeal (e.g. T 68/85), clarity demands not only that a skilled person be able to understand the teaching of the claim but also that he be able to implement it. In other words, the feature must provide instructions which are sufficiently clear for the expert to reduce them to practice without unreasonable burden, if necessary with routine experiments.

The clarity requirement is therefore not met in the present case since, as shown above, the skilled person would have to find out in some cases merely by trial and error whether a steroid derivative meets the functional requirement set out in the claim, i.e. by making his own investigations, similar to a research programme.

Under these circumstances, the Board concludes that claim 1 of the main request does not fulfill the requirement of A 84.

To read the whole decision, you may click here.

T 87/08 – Mere Repeating Won’t Do

[6.2] In the present case, the deciding body, here the Opposition Division (OD), decided, against [the patent proprietor] that the claimed subject-matter of the patent as granted did not involve an inventive step and, against [the opponent], that the subject-matter of the auxiliary request then pending involved an inventive step (A 56).

A 56 requires that the assessment of inventive step is made “having regard to the state of the art”. Accordingly, the logical chain of reasoning of the OD in the decision under appeal, to justify the above conclusions under A 56, has to contain a proper assessment of the question of obviousness in the light of the prior art.

[6.3] The only part of the section “Reasons for the Decision” of the written decision under appeal dealing with the issue of inventive step in relation with the main request is to be found in section C, point 3 comprising three paragraphs. Since paragraph 3.2 thereof only repeats the arguments of the proprietor of the patent in suit and does not reflect the OD’s own considerations, this paragraph in fact should rather belong to the section “Facts and Submissions” of the written decision under appeal. The mere summary of a party’s submission is not per se a reasoning proper to the deciding body. Consequently, paragraphs 3.1 and 3.3 are the sole portions of the written decision under appeal which may reveal the reasoning of the OD on the issue of inventive step and, thus, are the sole portions of the decision which could justify the OD’s conclusion of lack of inventive step in relation to the main request. However, there is no reference at all in these paragraphs to any prior art, paragraph 3.1 merely stating that the claimed subject-matter did not comply with the requirements of A 56 since the technical problem had not been solved, i.e. the purported effect not achieved, over its whole scope and paragraph 3.3 being limited to the mere statements that “the technical problem has not been solved over the whole scope claimed” and that the “subject-matter is considered to be too broadly defined”.

Therefore, the OD arrived in the appealed decision at the conclusion that the subject-matter of the main request lacked inventive step merely by stating that a purported effect has not been achieved, i.e. this technical problem had not been solved, without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art.

Since, the requirement of inventive step defined in A 56 is based on “the state of the art”, the decision of the OD, by arriving at a conclusion of lack of inventive step without reference to prior art, is insufficiently reasoned in the sense of R 68(2) EPC 1973 (R 111(2) EPC 2000).

Paragraph [6.4] consists in similar observations for the auxiliary request filed by the patent proprietor.

[6.5] Due to these deficiencies in the reasons for refusing the then pending main request and allowing the then pending auxiliary request, the Board and the appellants are left in the dark as to how the first instance came to its conclusions. Hence, the appellants and the Board were not able to examine whether the decision could be considered to be justified or not, the appellants being moreover hindered in deciding whether to file an appeal against the decision and in drafting the grounds for appeal.

This failure amounts to a substantial procedural violation requiring that the decision under appeal to be set aside and the case be remitted to the first instance (see T 278/00).

The appeals of both parties are thus deemed to be allowable and the Board considers it to be equitable by reason of that substantial procedural violation to reimburse the appeal fees of both parties in the present case pursuant to R 67 EPC 1973 (R 103(1)(a) EPC 2000).

To read the whole decision, click here.

NB: This decision is also commented on Laurent Teyssèdre’s blog.

Interpretative spotlight: “complete”

[4.1] In the appealed decision the application was found not to meet the requirements of A 83 and A 84 due to the presence in all independent claims of the features that the Group IB metals present in the catalytically active metal phase should be partially reduced and the Group VIII metals present in the same phase should be completely reduced.

In the new main request both the product and the method claim have been limited so as to include only completely reduced Group VIII metals in the catalytically active metal phase, no partially reduced Group IB metal being present in said phase. Therefore, the grounds of refusal related to the feature “partially reduced” have been removed.

[4.2] The expression “complete reduction” is defined in the original application on page 7, lines 14-17, where it is stated:

“By complete reduction it is meant the metal sites largely consist of a single species, more particularly the highest number of species exhibit the elemental state of charge, i.e., zero”.

Such a definition is in agreement with what the skilled person would understand from the wording of the claims alone. In particular, in the method claim it is indicated that a support material is impregnated with a salt of a catalytically active metal phase wherein the active metal phase is nickel and cobalt or nickel and iron and that the impregnated support material is calcined and activated so as to completely reduce said nickel and cobalt or nickel and iron. The skilled person would understand from those process steps that the metals present in the salt in an ionised state are later reduced so as to obtain the metal in their unionised elemental form. A more specific definition of the starting state is not necessary as long as it is clear that the metals are transformed from one of their possible ionised forms into their unionised elemental form. This is similarly clear in the product claim where the Group VIII metals (i.e. nickel and cobalt or nickel and iron) are defined to be present as completely reduced metals, i.e. as metals in their unionised elemental form.

[4.3] In addition, it is clear to a person skilled in the art that the feature “completely reduced” cannot be understood as implying that each and every atom of the metal is in its elemental form, since there is hardly a situation in chemical processing where each atom is present in a single defined state.

For this reason, the presence of the term “largely” in the expression “largely consist of a single species” in the definition of complete reduction cannot be considered as resulting in a lack of clarity of the feature “completely reduced” in the claims.

To read the whole decision (T 1465/05), you may click here.

T 1711/08 – Prettier Ain’t Always Healthier

** Translation from the German **

[3.1] Claim 1 of the main request concerns a cosmetic process for improving the growth of hair by treatment with an agent that comprises customary carrier substances, active ingredients and auxiliaries and a mixed salt of carnitine and tartaric acid.

[3.2] Although the wording of claim 1 is not explicitly directed to a method for the treatment of the human or animal body by therapy under A 53(c), according to the impugned patent, the used agent is to be considered as a pharmaceutical agent, too (see e.g. claim 1 as granted [“Pharmaceutical and cosmetic agents for the treatment of hair, comprising …”]). As a consequence, it has to be determined whether the cosmetic effect disclosed in the patent can be distinguished from the therapeutic effect or if both effects are inseparably linked (see Case Law of the Boards of appeal, 5th edition, 2006, I.A.2.3.2).

[3.3] It is to be noted that the intention to improve the growth of hair can exist even in the absence of a disease. The desire to have longer or more dense hair is often due to cosmetic and aesthetic reasons and not immediately linked to a disease of the person concerned. In particular it is possible to distinguish the two uses of the agent because they concern clearly different groups of persons. The first group consists in patients who have lost hair due to a disease, whereas the second group consists in persons who do not suffer from such a disease and who are interested in improving their appearance.

[3.4] In contrast to the situation in decision T 780/89, which has been cited by the [opponent], where the therapeutic effect of an immunostimulating agent was inseparably linked to the claimed effect for the non therapeutic stimulation of the body’s own defences of animals, because the improved meat production resulting from the stimulation was also due to the better state of health of the animals, in the present case the state of health is not directly concerned as there is no information that the improved hair growth resulting in an improved appearance of the hair is linked to the health of the person receiving the treatment.

[3.5] The present case also differs from the cases underlying T 290/86 and T 1077/93.

In T 290/86 the claimed method for removing plaque from teeth inevitably had a therapeutic effect, i.e. the effect of preventing caries and periodontal diseases, which effect was confirmed in the impugned patent.

In T 1077/93 it was shown that the protective effect protecting the skin against UV radiation obtained with the agent in use was due to an interaction with cellular mechanisms (Zellgeschehen) in the epidermis, which interaction prevented pathological consequences.

However, in the present case there is no proof that the cosmetic treatment necessarily has a prophylactic effect. In particular, the results filed in document D6 only show that the agent had an effect on the hair growth factors, but the [opponent] has not proven that this effect necessarily results in prophylaxis against possible diseases.

[3.6] The fact that the agent was always defined as pharmaceutical and cosmetic agent does not mean that its cosmetic and therapeutic uses are inseparable, but it only confirms that it was in the [patent proprietor’s] interest to protect both effects, as shown in claims 12 and 13 as granted, which are directed to a cosmetic method for improving hair growth and to the use of mixed salts of carnitine and tartaric acid for preparing a pharmaceutical agent, respectively.

[3.7] Consequently the process of claim 1 of the main request is not covered by the exception enshrined in A 53(c).

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

T 1079/08 – A Medical Error

What is the correct ground for rejection when the claimed subject-matter does not achieve the alleged technical effect? Lack of inventive step? It really depends on the claim wording.

In the present case the Examining Division (ED) rejected the application for lack of inventive step. Claim 1 under consideration was directed at the use of the metabolites of venlafaxine for the preparation of a medicament for the treatment of various diseases.

[2] The ED rejected the application for lack of inventive step merely by finding that the technical effect underlying the invention had not been credibly achieved.

The ED arrived at this conclusion by considering that document D5 comparing the monoamine uptake inhibition activity of venlafaxine with that of its metabolites represented the closest prior art and by defining the technical problem to be solved as the provision of alternative uses for the known metabolites of venlafaxine. The ED found that this problem was not credibly solved, since there was no evidence provided showing that the metabolites were effective for the treatment of the diseases listed in claims 1 and 5.

[3] However, claims 1 and 5 then pending had the format of a second medical use Swiss-type claim. The Board observes that the use of the metabolites of venlafaxine for the preparation of a medicament for the treatment of the diseases listed in then pending independent claims 1 and 5 is the solution proposed by the application and the purpose of preparing a medicament for the treatment of the diseases indicated in then claims 1 and 5 is a technical feature defining the subject-matter claimed. Accordingly, being technical features of the use claims said preparation of a medicament for treating the listed diseases does not form part of the technical problem to be solved, but is the solution thereof.

[4] Actually, the ED rejected the application only because the prepared medicament was not shown to be suitable for the treatment of the diseases listed in then independent claims 1 and 5, i.e. because it was not shown that the technical effect underlying the claimed use was achieved.

In decision G 1/03 [2.5] the Enlarged Board of Appeal indicated that a lack of reproducibility of the claimed invention is relevant under the requirements of sufficiency of disclosure if the technical effect is a technical feature of the claim, since then it is a feature characterising the subject-matter claimed.

Hence the ED rejected the application under A 56 for reasons relevant to the matter of sufficiency of disclosure pursuant to A 83.

The same considerations and conclusions apply to the new format of present claims 1 and 5, i.e. purpose related product claims pursuant to A 54(5).

[5] The application was refused by the ED for lack of inventive step on the basis of reasons relevant to the matter of sufficiency of disclosure pursuant to A 83. However, the issue of sufficiency of disclosure had never been addressed during the examining proceedings before the first instance, although compliance with A 83 is normally a prerequisite to assess inventive step on a proper basis. In reply to the communication of the Board, the Appellant made some submissions with respect to the requirement of sufficiency of disclosure, but requested the case to be remitted back to the ED for consideration of that issue.

[6] In order to have the essential issue of sufficiency of disclosure under A 83 be considered by two instances, the Board considers it appropriate to exercise the power conferred to it by A 111(1) to remit the case to the ED for further prosecution.

[7] When resuming examination proceedings the first instance should take into account that in the decision under appeal, it arrived at the conclusion that the subject-matter of the main request lacked inventive step (A 56) merely by finding that the technical problem underlying the application had not been credibly solved without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art.

However, A 56 requires that “an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”. Thus, when it comes to the issue of inventive step pursuant to A 56 the ED should assess obviousness vis-à-vis the state of the art (see T 278/00 and T 87/08).

To read the whole decision, please click here.

A similar decision is discussed here.

T 997/06 – To Know The Mother, Know Her Kids

The following claims were part of the application as filed:

15. An insulin preparation according to any of the preceding claims, comprising: 0 to 5 mg/ml, preferably 0 to 4 mg/ml, of a phenolic compound.

16. An insulin preparation according to claim 15, comprising: 0.5 to 4.0 mg/ml, preferably 0.6 to 4.0 mg/ml, of m-cresol or 0.5 to 4.0 mg/ml, preferably 1.4 to 4.0 mg/ml, of phenol, or a mixture thereof.

Independent claim 1 of the main request read:

1. A parenteral pharmaceutical formulation comprising an aqueous insulin preparation comprising:

Asp^B28 human insulin,

glycerol and/or mannitol,

5 to 100 mM of a halogenide,

a mixture of 0.5 to 4.0 mg/ml, preferably 0.6 to 4.0 mg/ml, of m-cresol and 0.5 to 4.0 mg/ml, preferably 1.4 to 4.0 mg/ml of phenol as phenoloic compounds, wherein the content of phenolic compounds is not more than 5 mg/ml, 10 to 40 μg Zn/100 U insulin, preferably 10 to 26 μg Zn/l00 U insulin, and a phosphate buffer.

This claim, some features of which were said to be based on claims 15 and 16 as filed, was attacked both for non compliance with A 123(2) and lack of clarity. According to the opponent, claim 15 as filed referred to “a phenolic compound”. The upper limit could therefore not support the upper limit of a total content of a mixture of more than one phenolic compounds (i.e. m-cresol and phenol). 

The Board does not agree:

A 123(2)

[5] The board considers […] that the subject-matter of claims 15 and 16 of the application as published suffices for the amendment concerning the mixture of phenolic compounds to comply with the requirements of A 123(2). The dependency of claim 16 on claim 15 in the application as published and the explicit reference to a mixture of m-cresol and phenol unambiguously predetermine the notion “a phenolic compound” in claim 15 to be of generic nature and not to exclude the presence of different phenolic compounds in the insulin preparation.

[6] In view of the above considerations, the board is satisfied that claim 1 complies with the requirements of A 123(2).

A 84

[7] The respondent has argued that claim 15 as originally filed and the passage on page 5, line 22, refer merely to “0 to 5 mg/ml, ..., of a phenolic compound”. The upper range of 5 mg/ml in the amended claims 1 and 6 was therefore unclear as it referred to a total content of a mixture of more than one phenolic compounds (i.e. cresol and phenol).

[8] The board considers, however, as reiterated in point [5], that the dependency of claim 16 on claim 15 in the application as published and the explicit reference to a mixture of m-cresol and phenol in claim 16 predetermine the notion “a phenolic compound” in claim 15 unambiguously to be of generic nature and thus also to embrace different phenolic compounds present in the insulin preparation.

[9] As follows from the above considerations claims 1 and 6 are clear pursuant to A 84.

To read the whole decision, please click here.

T 7/08 – Late Change Of Category

[3.1] The [opponent] objected to the admissibility of the [patent proprietor’s] request. The final form of the claims of this request was filed in the oral proceedings (OPs) but was based on a request - the admissibility of which was also contested - filed by the [patent proprietor] in response to the board’s communication. The [opponent] submitted that the change of category from claims directed to a horn antenna according to the patent as granted to claims concerning a specific use of a horn antenna according to the present request came very late in the opposition appeal proceedings and constituted a significant change of the matters in dispute. The [patent proprietor] had had ample opportunity to present use claims in the course of the opposition proceedings. It was however a generally observed principle that the purpose of appeal proceedings was predominantly to review the validity of the decision rendered by the first instance and that the factual framework of appeal proceedings should not significantly differ from that of the proceedings in the first instance. Therefore, a party to appeal proceedings was not allowed to significantly change the matters in dispute. In accordance with decision G 9/91 of the Enlarged Board of Appeal and decision T 240/04 the appellant’s present request should thus not be admitted into the proceedings under Article 13(1) RPBA.

[3.2] The [patent proprietor] pointed out that a request directed to use claims had in fact already been filed during opposition proceedings. However, in order to get other amendments considered in OPs before the opposition division (OD) the [patent proprietor] had felt obliged to drop such claims. The return now to a request directed to use claims was motivated by the board’s critical assessment of the patent as given in the communication annexed to the summons to OPs. At any rate, it was disputed that the limitation of the scope of protection to a specific use could be considered a significant change in the factual framework. Moreover, given the fact that the claimed use formed part of the definition of the horn antenna according to the claims as granted, the new request did not include an element of surprise to the board and the other party.

[3.3] Article 13(1) RPBA stipulates that “Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.”

Article 13(3) RPBA complements this by stating that “Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.”

[3.4] In the Board’s view, the change from a claim directed to a “Fluid-level-measuring horn antenna for downward facing operation in an atmosphere causing condensation on the horn antenna and for the transmission of microwaves” (claim 1 of the patent as granted) to a claim concerning the “Use of a fluid-level-measuring horn antenna in a tank for downward facing operation in an atmosphere causing condensation on the horn antenna and for the transmission of microwaves” (present claim 1) amounts to a substantial limitation of the scope of protection but does not constitute a substantial change of the factual framework of appeal proceedings. For this reason, decision G 9/91 and the ensuing case law of the boards of appeal (such as T 240/04 which was referred to by the respondent) which define the extent to which the factual framework may be changed in appeal proceedings are not applicable to the present case.

On the other hand, according to the criteria of Articles 13(1) and (3) RPBA, the appellant’s present request is indeed late-filed. However, the specific use of the antenna which is now claimed already formed part of the antenna’s definition in claim 1 of the patent as granted. Thus, although this use did not constitute a limiting feature for the antenna as such, the present limitation does not increase in any manner the complexity of the case nor does it raise issues which cannot reasonably be dealt with during the OPs. This is even more so the case as, throughout the opposition and appeal proceedings, the appellant’s argumentation consistently relied on the specific use of the antenna as an inventive aspect of the claimed subject-matter. Furthermore, the request including the change of category to a use claim was presented well before the date of the OPs. The further amendments made to present claim 1 during the OPs concern the definition of the geometry and mutual arrangement of antenna elements which, according to the context of the original disclosure, are functionally decisive for successfully overcoming the problem to be solved. These amendments respond to a number of objections under A 84 EPC 1973 and A 123(2) which came up during the OPs. For these reasons, after discussion with the parties to the proceedings, the Board decided to exercise its discretion in favour of the appellant and thus to admit the [patent proprietor’s] sole request into the appeal proceedings.

To read the whole decision, click here.

T 1659/07 – Back To The Roots

It is well known that clarity is not a ground for opposition under A 100 and that objections of lack of clarity against claims will not be accepted in opposition proceedings unless the lack of clarity is generated by post-grant amendments. The Boards have admitted only very few exceptions to this principle. T 656/07 has provided a rather surprising exception. As this decision is a recent one, I cite the most relevant passages for those who are not familiar with it:

[2.1] It is the position of the Board that the lack of clarity arose - at least in part - from the amendments carried out after grant. The invention as granted was defined in independent claim 1, directed to a pouch, and in independent claim 3, directed to a wafer. Claim 1 was objectively unclear since it sought to define the pouch coupling means by making reference to the wafer. The amendment to claim 1 of the main request submitted during the opposition proceedings introduces in claim 1 further features - in relation to the pouch coupling means - which were formerly contained in dependent claim 2. This makes it necessary to reconsider the coupling means claimed in claim 1 on the light of these new incorporated features - which are now considered essential due to the amendment - and also to reconsider in this new light the fact that the coupling is to be taken in connection with a body-side mounting wafer. It follows that one cannot ignore the fundamental lack of clarity generated by the cross-references.

More specifically, while the cross-reference to the wafer was already present in claim 1 as granted, the incorporation into claim 1 of further features concerning the coupling means makes it necessary to reconsider the interaction of the pouch with the wafer and as a result an objection of lack of clarity due to this new interaction emerges. Therefore, the amendments introduced into claim 1 substantially affect the clarity of claim 1 as a whole, since its subject-matter is not clearly defined. This general lack of clarity makes it impossible to compare the subject matter of claim 1 to the state of the art and to proceed further with the substantive examination of said claim.

[2.2] This lack of clarity can be objected to in opposition proceedings because it is generated by the amendments made during this procedure, even if the contested feature as such was already present in the claims as granted but in another combination. In fact, it is not enough formally to state that a feature was present in the granted version in order to limit the power of investigation of the Board as far as clarity objections arising from an amendment is concerned. It is also necessary to ascertain the effect produced by the amendments introduced into the claim as a whole since a feature of a claim is not to be seen in isolation, but through its interaction with the other features of the claimed combination. A new combination of features is also an amendment in itself.

As pointed out in T 472/88 [2], in the statement contained in decisions T 227/88 and T 301/87: “fresh objections based on A 84 are not allowed if such objections did not arise out of the amendments so made”, the word “arise” should be broadly construed. Among the meanings of this word registered in the cited decision and taken from the Concise Oxford Dictionary there is “bring into notice”. This means that a lack of clarity also arises out of an amendment when this amendment brings into notice an ambiguity that has existed all along. This is also the case here with the aggravating circumstance that the lack of clarity already present in claim 1 has been extended and reinforced by the amendment.

[2.3] The respondent cited decision T 367/96 in order to support its opinion that, in the present case, clarity should not be examined by the Board. However, T 367/96 [6.2], is principally concerned with a lack of support by the description, which is a separate aspect of A 84, and not with lack of clarity. Furthermore the decision cited does not state that an objection of lack of clarity cannot be raised against a combination of granted claims, but only that the lack of support was already there and has not been introduced after grant of the patent. T 367/96 [6.2] refers to a previous decision (T 301/87), but only to reiterate the generally recognized principle that the clarity objection should arise out of the amendments made.

T 853/02 [3.1.1] of the reasons, stresses also that the unclarity did not concern the amendments. These decisions do not contain any definition of an amendment. In fact, whether an amendment is given and in what it consists is a question of fact to be determined on a case by case basis.

In the opinion of this Board it cannot be stated that there is a general rule in the jurisprudence that a combination of granted claims should not be challenged for lack of clarity.

Now in the present decision the opponents tried to follow the path opened by T 656/07:

** Translation from the German **

[5] The opponents pointed out that the claims of the main request had become unclear as a consequence of the contraction of granted claims 1 and 6. The lack of clarity only appeared as a consequence of the contraction of the two claims because this amendment modified the focus (Schwerpunkt) of the claimed subject-matter. Thus the situation was the same as in case T 656/07.

The Board agrees with the opponents insofar as the claims as granted are seriously deficient with respect to clarity, which make it difficult to appropriately understand the claimed subject-matter […]. The Board is of the opinion that these deficiencies with respect to clarity should have been corrected during the substantive examination preceding the grant, and that the Examining Division should have insisted on the need for a precise determination of the subject-matter for which protection is sought.

However, the Board cannot see how the contraction of the features of claims 1 and 6 as granted, and the shift of focus (Fokus) of the claimed invention resulting from it, could entail a new lack of clarity. Moreover, the opponents have not specified the alleged new lack of clarity in a concrete manner.

As a rule, contracting claims without otherwise amending their wording in opposition proceedings cannot open up the possibility to attack deficiencies with respect to clarity under A 84 that already existed in the claims as granted.

The Board is of the opinion that decision T 656/07 cited by the opponents concerns a particular case that cannot be generalised. A lack of clarity of the granted claims is not as such a ground for revocation. Rather, an unclear claim has to be interpreted and the grounds for opposition have to be assessed on the basis of this interpretation.

T 656/07 opened the door a bit wider for pleading lack of clarity in opposition (and opposition appeal) proceedings. I remember that the decision was welcomed by some colleagues who dream of a revision of the EPC that would allow lack of clarity to be used as a ground for opposition. I am definitely not one of them because I think that clarity is a very subjective thing. Nothing is clear to him who does not want to understand (and opponents very often are not desirous to understand, are they?). Be that as it may, I am happy to see that T 656/07 is reduced to a “particular case that cannot be generalised”, and thus isolated. Nobody loses face and we may perhaps forget a somewhat weird decision ...

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

NB: There was a post on T 656/07 on Le blog du droit européen.

T 1312/08 – The Extension Trap Again

In a recent post, we have seen a case where surprisingly, adding features to a claim led to an extension of the extent of protection conferred by the claim. The present decision provides another example of such a situation.

Yesterday we have seen that the patent under consideration lost its priority claim, which resulted in additional prior art and the rejection of the main request for lack of inventive step. The patent proprietor then presented a first auxiliary request, simply adding an (apparently limiting) feature (click to enlarge):

Here is what the Board had to say:

[2.1] Claim 1 according to the first auxiliary request differs from claim 1 according to the main request, which is claim 1 as granted, substantially insofar as protease (c) having an α-keratin-hydrolyzing activity at 10°C of not less than 0.09x10^-3 μg/mPU·min is produced from a microorganism that is
(I) Bacillus sp. KSM-KP 43,

(II) Bacillus sp. KSM-KP 1790

(III) Bacillus sp. KSM-KP 9860

(IV) a mutant of Bacillus sp. KSM-KP 43, Bacillus sp. KSM-KP 1790 or Bacillus sp. KSM-KP 9860, or

(V) a transformant containing a gene from Bacillus sp. KSM-KP 43, Bacillus sp. 1790 or Bacillus sp. KSM-KP 9860 coding said protease.

The Board remarks that claim 1 as granted did not contain any limitation as to the specific type of protease (c) apart from the required α-keratin-hydrolyzing activity at 10°C that had to be not less than 0.09x10^-3 μg/mPU·min.

Moreover, claim 1 as granted required inter alia an amount of proteases (c)+(d) equal to 0.01 to 0.5% by weight (as powdered enzyme product).

The amended claim 1 allows because of its wording “A detergent composition comprising ...” the presence of arbitrary amounts of additional components apart from those specifically listed as components (a) to (d).

Moreover, the wording of this claim, by requiring that the composition comprises as component (c) a protease whose α-keratin-hydrolyzing activity at 10°C is not less than 0.09x10-3 μg/mPU·min and that the protease (c) is selected from the classes (I) to (V), does not exclude the possible presence of additional proteases having an α-keratin-hydrolyzing activity at 10°C that is not less than 0.09x10^-3 μg/mPU·min apart from those specifically listed in the claim as component (c), which additional proteases were part of the original protease (c) in the claim as granted but are no longer part of this specific component in the amended claim.

As a consequence, claim 1 according to the first auxiliary request allows an amount of, for example, 0.5% by weight, of proteases (c) plus (d) and an additional amount of 0.1% by weight of additional proteases having an α-keratin-hydrolyzing activity at 10°C that is not less than 0.09x10-3 μg/mPU·min not belonging to the five classes specifically listed in the claim.

In such a case, the amended claim 1 would encompass compositions containing a total amount of proteases (c) and (d) as defined in the granted claim of 0.6% by weight, i.e. an amount of proteases greater than the upper limit of granted claim 1.

Consequently, the extent of protection of amended claim 1 according to the first auxiliary request has been extended with respect to that of the granted claim 1 (see, for example, T 2017/07 [headnote]).

Consequently, this request contravenes the requirements of A 123(3).

Now that the Boards are aware of the possibility of extending the protection by adding features, be very careful when amending composition claims.

To read the whole decision, you may click here.

Interpretative spotlight : “volatile”

Claim 1 of the main request read:

Cosmetic composition, characterized in that it comprises, in a cosmetically acceptable medium, at least one fixing polymer, wherein the fixing polymer or polymers are present in concentrations of between 0.1 and 10% by weight, relative to the total weight of the composition, at least 5% by weight of a non-volatile aryl silicone and at least one volatile silicone, wherein the volatile silicone or silicones are present in concentrations of between 5% and 40% by weight relative to the total weight of the composition, and wherein the non-volatile aryl silicone or silicones are present in concentrations of between 5% and 40% by weight relative to the total weight of the composition.

The Board deals with the novelty of the claim with respect to document D9 (U.S. patent 5 106 609). In this assessment, the meaning of the expression “volatile” is crucial.

** Translation from the French **

[5.2] The objection of lack of novelty with respect to document D9 is based on the disclosure of example XIII concerning a hair styling conditioner composition comprising, relative to the total weight of the composition, 3% of a fixing polymer, 0.5% of a silicone gum, 3% of octamethyl cyclatetrosiloxane and 9% of phenyl pentamethyl disiloxane. It is undisputed that octamethyl cyclatetrosiloxane is a volatile silicone, but the parties did not agree on whether the phenyl pentamethyl disiloxane was volatile or not.

It is important to keep in mind that a claim must not be read without considering its function, i.e. delimitating the extent of protection that is sought by using language that is recognized (reconnu) in the field under consideration.

In the present case, the relevant question is not whether there is an absolute, clearly-defined border line between silicones that are said to be volatile and silicones that are said not to be volatile. The relevant question is whether, within the context of the present claim, that is to say in the context of cosmetics, the skilled person would be able to assign one of these categories to the silicones used in example XIII of document D9, without there being any ambiguity.

The absence of an absolute definition of the terms “volatile” and “non-volatile” in the field under consideration cannot be used as a pretext to arbitrarily (i.e. without any documents that provide corresponding evidence) place this border line between the two silicones used in example XIII of document D9. The aryl silicone used in the composition according to example XIII is mentioned as a solvent and referred to as a volatile silicone in the same way as octamethyl cyclotetrasiloxane and decamethyl cyclopentasiloxane (col. 24, lines 45 to 47), the term “volatile” being assigned to materials having a measurable vapour pressure (col. 16, lines 54 to 55), in the very same way as in the impugned patent (paragraph [0031]).

In the absence of any proof that phenyl pentamethyl disiloxane is also referred to as non-volatile silicon in the field of cosmetics, the Board has to conclude that the composition of example XIII of document D9 does not contain a non-volatile aryl silicone but a volatile aryl silicone. Moreover, the quantity of the volatile silicone required by claim 1 as amended excludes the quantity disclosed in example XIII of document D9. As a consequence, the disclosure of the composition of example XIII of document D9 cannot destroy the novelty of the claimed subject-matter.

To read the whole decision (T 488/05), please click here.

T 1312/08 – The Devil’s In The Detail

Claim 1 of the main request read:

1. A detergent composition comprising

(a) 15 to 40% by weight of an anionic surfactant,

(b) 0.5 to 5% by weight of a chlorine scavenger,

(c) a protease whose α-keratin-hydrolyzing activity at 10°C is not less than 0.09x10^–3 μg/mPU·min and

(d) a protease whose α-keratin-hydrolyzing activity at 10°C is less than 0.09x10^–3 μg/mPU·min,

wherein (c)+(d)=0.01 to 0.5% by weight (as powdered enzyme product), (c)/(d)=1/5 to 5/1 and [(c)÷(d)]/(b)=1/100 to 1/2 (weight ratio as powdered enzyme product), and a polyoxyalkylene alkyl or alkenyl ether whose HLB (Griffin’s method) is 11.5 to 17.

The Board first deals with the validity of the priority claim:

[1.1.1] It is established jurisprudence of the Boards of Appeal of the EPO that the priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98 [headnote]).

It is undisputed that claim 1 as granted reads as the combination of claims 1 and 3 of document D20, which is the certified English translation of the Japanese priority document of the patent in suit.

However, it is also undisputed that PU, one of the units contributing to the value of the α-keratinhydrolyzing activity expressed as μg/mPU·min, which characterizes in claim 1 both proteases (c) and (d), is defined differently in the patent in suit and in document D20. Precisely, the patent in suit defines 100PU as the amount of protease that produces acids-soluble peptides equivalent to one micromole of Ltyrosine per minute in the measurement of caseinhydrolyzing activity of the description whilst document D20 defines for the same measurement 1 PU as the amount of enzyme that produces acid-soluble peptides equivalent to one millimole of L-tyrosine per minute.

Therefore, because of this different definition of PU, the α-keratin-hydrolyzing values of a protease measured by using the respective definition of PU differ of the factor 10^5, i.e. the limits of the α-keratin-hydrolyzing activity which characterize proteases (c) and (d) in each claim 1 of the patent in suit and of the priority document, even though numerically apparently identical, differ in reality of a factor 10^5 because of the different definition of PU.

Since the [patent proprietor] submitted that the definition of PU in the patent in suit is correct and that the definition in the priority document is erroneous and should have been the same, it should be evaluated if the skilled person would have derived the definition of PU used in the patent in suit directly and unambiguously, using common general knowledge, from the whole content of document D20 as a whole.

[1.1.2] It has not been contested by the [patent proprietor] during oral proceedings that the skilled person would not have been able to notice that the definition of PU in document D20 is erroneous by simply reading the content of this document. In fact, the Board remarks that both the measurements of the α-keratin-hydrolyzing activity and of the casein-hydrolyzing activity of the description in which the definition of PU is used are not recognized standard methods but are methods set up by the [patent proprietor] for the specific needs of the present invention. Moreover, there did not exist at that priority date any widely recognised standard values for the α-keratin-hydrolyzing activity or the casein-hydrolyzing activity or a recognised standard definition for the PU belonging to the common general knowledge of the skilled person. Therefore, the skilled person, even considering his common general knowledge, would not have been able to recognise any error in the definition of PU or in the values of α-keratin-hydrolyzing activity simply by reading document D20.

[1.1.3] The [patent proprietor] submitted that the skilled person, in applying his common general knowledge to the teaching of document D20, for example by repeating the examples of the priority document and controlling the α-keratin-hydrolyzing activity of the proteases used in these examples, would have noticed that the values of α- keratin-hydrolyzing activity measured by means of the method indicated in the description of document D20 making use of the definition of PU given hereinabove do not correspond with the values indicated in the examples and would not satisfy at once the requirements of the claim for both proteases (c) and (d). Moreover, by comparing the measured results with those of the example, he would have found that the value had to be corrected by a factor of 10^5 in order to comply with the requirements of the claim for both proteases (c) and (d) and that the error could arise from the erroneous definition of PU.

However, the Board remarks that according to the established jurisprudence of the Boards of Appeal of the EPO the common general knowledge of a skilled person is normally represented by encyclopaedias, textbooks, dictionaries and handbooks on the subject in question or even patent specifications and scientific publications in the case that the field of research is so new that technical knowledge was not available from textbooks (see case law of the Boards of Appeal of the EPO, 5th edition 2006, I.C.1.5). Therefore, it cannot encompass the application of tests like the measurement of the α-keratin-hydrolyzing activity of document D20 which is an integrative part of the invention itself and relates to parameters which are not standard in the prior art as explained hereinabove.

Therefore, the reworking of an example and especially of a method which is not a standardized one and is not reported in encyclopaedias, textbooks, dictionaries and handbooks cannot be considered to be the application of common general knowledge.

As a consequence, the mere fact that it is necessary to carry out a test, which is not part of common general knowledge, in order to find out whether the definition of PU in document D20 is erroneous makes clear that the different definition of PU used in the patent in suit is not derivable directly and unambiguously, using common general knowledge, from the whole content of document D20.

Therefore, the Board concludes that claim 1 of the patent in suit relates to an invention which is different from that disclosed in document D20 and cannot benefit from the claimed priority date of 17 March 1999.

I shall come back on this decision tomorrow.

To read the whole decision, you may click here.

T 659/07 – There’s Nothing We Can Do

In this case the patent was opposed on the grounds based on A 100(a), (b) and (c). During the proceedings, the opponent withdrew its objection based on A 123(2) against the feature “at regular intervals”. The Opposition Division (OD) finally maintained the patent in amended form. New claim 1 still contained the feature “at regular intervals”. Only the patent proprietor filed an appeal. Before the Board, the opponent requested a remittal to the OD and justified this request by invoking a fundamental deficiency: according to the opponent, the OD coerced it to withdraw the objection based on A 123(2).

Procedural issues

[2.1] Before descending on the substantive merits of the claim requests on file, the Board needs to examine whether the case may require a remittal to the department of first instance as a result of the alleged substantial procedural violations, as requested by the [opponent].

[2.2] In this respect, the Board concurs with the [opponent] that the principle of the prohibition of reformatio in peius is not an absolute one, as demonstrated by G 1/99 [headnote]. A remittal of the case should normally be ordered if the first instance proceedings are tainted with a fundamental deficiency (Article 11 RPBA). A substantial procedural violation may certainly be regarded as a fundamental deficiency justifying a remittal. However, the fact that only the proprietor filed an appeal, changes the picture. This means that the decision under appeal is scrutinized only to the extent that it did NOT allow the maintentance of the patent as requested by the proprietor. Thus it is an open question if a substantial procedural violation by itself is sufficient reason for ordering a remittal against a proprietor who is a sole appellant especially in light of the fact that the opponent invoking the substantial procedural violation was not prevented from recognising this violation and filing an appeal himself. But even that question needs not be answered by the Board in the present case, as the Board sees no prima facie case of a substantial procedural violation.

The Board then examines the minutes and the statements of the parties and comes to the conclusion:

[2.3.4] [… T]here is no conclusive evidence before the Board that the OPs before the opposition were tainted with a substantial procedural violation. The Board also sees no reason to examine the issue any further on its own, because such a further examination of this question would go beyond the scope of these appeal proceedings.

[2.3.5] The [opponent’s] second main argument for a remittal is a contradiction between the order of the decision under appeal and the reasons of the decision, following the principles laid down in decision T 1178/04. In that case the deciding Board held that under certain circumstances the principle of ex officio examination takes precedence over the principle of the prohibition of reformatio in peius. For example, certain absolute or indispensable procedural pre-conditions (“Absolute, unverzichtbare Verfahrensvoraussetzungen”) are always to be examined ex officio.

The deciding Board of case T 1178/04 takes this statement of principle from the commentary “Patentgesetz mit Europäischem Patentübereinkommen”, 7th edition (2005), by Dr Rainer Schulte and others, paragraph 7.6.1, note 72, at page 986 which concerns the appeal procedure under German law. This very same citation also lists specific examples which fall under those absolute or indispensable procedural preconditions which need to be examined ex officio, among them the existence of a contradiction between the order and the reasons of the decision under appeal (loc. cit. paragraph 8.2.(g), note 77, at page 987. (“Widerspruch zwischen Tenor und Gründen der angefochtene Entscheidung”).

[2.3.6] However, in the light of the finding that a procedural violation during the first instance proceedings is not conclusively proven, the Board holds that the second argument of the [opponent] concerning the insufficient reasoning of the decision under appeal has no merit either. Having established that the opposition grounds under A 100(c) were withdrawn (except for the feature “wall”), there was no need for the OD to elaborate this question in more detail in its decision. The feature “wall” was duly examined in the decision […]. In this manner there is no recognisable contradiction between the order and the reasons of the decision under appeal.

[2.3.7] The reasoning why the OD did not pursue the issue of the “at regular intervals” feature on its own motion need not be particularly lengthy and detailed, given that it is within the discretionary power of the OD to maintain an opposition ground ex officio or not. It is noted that in the present case the opposition as a whole was not withdrawn, only an aspect of an opposition ground was withdrawn. Under such circumstances the OD could presume that the opponent wants to concentrate on those grounds and aspects which are more promising for the purpose of having the patent revoked. Certainly it can not be expected from an OD to oppose a patent even more vigilantly than the opponent himself would do, at least as long as the opponent himself does not withdraw the opposition and remains an active party in the proceedings. Under such circumstances any overly active involvement of the OD on the side of the opponent could easily be perceived as a bias in favour of the opponent. Accordingly, the Board holds that the decision under appeal is sufficiently reasoned and in itself free from contradictions. It is another matter whether the Board would have arrived at the same conclusions given the same facts.

[2.3.8] Thus in the absence of a proven procedural violation the Board sees no reason to remit the case to the department of first instance, and is not precluded from deciding on the matter before it.

The Board then examines the main request and the first auxiliary request and comes to the conclusion that both do not comply with A 123(2) because of the feature “at regular intervals” (!). It then deals with the second auxiliary request:

[5.1] The set of claims of this request is identical with the set of claims held allowable by the OD in its interlocutory decision.

[5.2] From a procedural point of view, such a request per se may be considered formally inadmissible, given that in respect of this request, the appellant is not adversely affected by the decision under appeal as required by A 107. However, this request is interpreted by the Board as in substance being a request for the dismissal of the appeal, in the sense that the Board should not issue a decision even more adverse to the appellant, such as a revocation of the patent as requested by the opponent in the present case.

Exception to the prohibition of “reformatio in peius”

[5.3] As stated above […], the Board holds that the [opponent] failed to prove that any substantial procedural violation occurred, and therefore the Board needs not to decide if such a violation would have justified an exception to the principle.

It remains to be decided if the “manifestly invalid” patent could be revoked, thus creating an exception to the principle, based on the fact that the Board has found that the “regular interval” feature contravenes A 123(2).

[5.4] It is noted that neither the decisions G 4/93 and G 9/92, nor the cited decision T 1178/04 appear to support such an interpretation. Whether or not this principle should be applied does not depend on the extent to which the claimed subject-matter is patentable or not.

It is clear from the reasons of G 4/93 and G 9/92 that when arriving at its answer, the Enlarged Board (EBA) considered the purely procedural aspects of the appeal proceedings, without considering the - undoubtedly undesirable - consequences of the maintenance of “invalid” patents. The Board sees no reason to deviate from the view expressed in G 4/93 and G 9/92 that it is the appeal of the sole appellant which determines the extent of the appeal proceedings.

In G 4/93 [1] the EBA pointed out that the “initial request” of the appellant determines the extent of the proceedings. This is known as the principle of party disposition (“ne ultra petita”).

In G 4/93 [14] which relates specifically to appeals where the patent proprietor is the sole appellant, the EBA considered that if the non-appealing opponent files a request for revocation of the patent, the scope of the appeal is exceeded, so that such a request cannot be examined.

Further as noted by the EBA in decision G 1/99 [4.1]:

“It is undisputed that decision G 4/93 decided that the principle of the prohibition of reformatio in peius should be applied in cases where the patent proprietor is the sole appellant against an interlocutory decision maintaining the patent in amended form. This is clearly the wording of paragraph 1 of the order. A patent proprietor can therefore not be placed in a worse position than if it had not appealed. This means that the patent as maintained by the OD in its interlocutory decision cannot be objected to by the Board of Appeal, either at the request of the respondent/opponent or ex officio. This is balanced by the option open to the opponent to file a request for the revocation of the maintained patent at the national level.”

This makes clear that the maintained patent cannot be objected to ex officio by the Board of Appeal.

Moreover, in G 4/93 [6], the EBA said that:

“The extent of the power of the Boards of Appeal to decide upon the proper scope of the patent should be considered in conjunction with the effect of withdrawal of the appeal”

and added that:

“Once the or each appeal has been withdrawn, there is no power to continue the proceedings”.

The present Board only adds that it is normally expected from parties to administrative and court proceedings that they cooperate with the other party and the deciding body in all stages of the proceedings, in order to arrive at a decision. Such cooperation is made difficult if a sole appellant must constantly be prepared to withdraw its appeal, in order to prevent a decision which would put him in a more unfavourable situation than his starting position.

[5.5] From this it follows that the applicability of the legal principle of the prohibition of reformatio in peius depends on the procedural status of a case, and the examination of this procedural status must precede any examination of the substantive merits of a request. This is also in line with the cited decision T 1178/04 [24-26], which restricts the necessity of ex officio examination to procedural preconditions.

However, there can be no doubt that the issue raised here, i.e. the invalidity concerns the very substance of a patent and has nothing to do with the procedural preconditions. In this manner there is simply no room to establish to what extent a request or a patent may or may not fulfil the usual substantive criteria, so from a legal point of view there is also no room to establish whether there is any invalidity. In other words, even if this fact should be manifestly apparent for all parties and the Board, the Board can not order any legal consequences thereof.

This can best be illustrated by the fact that a patent proprietor is not even required to present a request on appeal which would correspond to the version of the patent as upheld by the first instance. In that case it is perfectly clear that a Board is simply procedurally barred from examining, and even less deciding on that form of the patent. On the other hand, this does not hold for procedural preconditions and such facts, which are apparent from the decision under appeal, and which can be examined even without having to examine the actual substantive requests (i.e. the claim requests) in the appeal.

[5.6] As explained above, since there is no reason why the above mentioned decisions G 9/92, G 4/93 and G 1/99 should not apply to the present case, the patent as maintained by the OD in its interlocutory decision cannot be objected to by the Board of Appeal either at the request of the non-appealing opponent as a party to the proceedings as of right under A 107, second sentence, EPC 1973, or ex officio even if the patent as maintained would otherwise have to be revoked on the ground that a feature present in both claim 1 as granted and amended claim 1 as maintained introduces added subject-matter contrary to A 123(2).

Moral of the story: It is a dangerous thing to withdraw grounds of opposition without good reason. It may relieve the OD of some work, but you might regret your kindness later on. And: If ever a decision of the OD adversely affects you, you may want to seriously consider filing an appeal. Otherwise, the prohibition of reformatio in peius may make you regret not having spent the 1180 Euro appeal fee.

To read the whole decision, you may click here.