If you visit the EPO website from time to time, you will have noted that an interlocutory decision in appeal case T 1145/09 has referred two questions to the Enlarged Board (EBA). The questions are pretty much self-explaining:
1. Is a patent proprietor’s request for correction of the grant decision under R 140 which was filed after the initiation of opposition proceedings admissible? In particular, should the absence of a time limit in R 140 be interpreted such that a correction under R 140 of errors in decisions can be made at any time?
2. If such a request is considered to be admissible, does the Examining Division have to decide on this request in ex parte proceedings in a binding manner so that the Opposition Division is precluded from examining whether the correction decision amounts to an unallowable amendment of the granted patent?
The little case law there is (T 268/02, T 79/07) appears to be contradictory, so let us hope the EBA is willing to provide insight. The referral is pending as G 1/10.
A kind reader has sent me the minutes of the oral proceedings in another appeal case, T 1068/07, where another question was referred to the EBA. This question relates to disclaimers and might be of greater practical interest:
Does a disclaimer infringe A 123(2) if its subject-matter was disclosed as an embodiment of the invention in the application as filed?
This is a tricky question, all the more so as it will have to build on G 1/03, which provided a pragmatic but (in my opinion) intellectually/legally rather unsatisfactory solution to the disclaimer problem. “Bon courage” to the members of the EBA!
My educated guess is that this will become G 2/10.
5 comments:
The question referred in T 1068/07 (and which will probably lead to G 2/10) does not seem to relate to undisclosed disclaimers as considered in G 1/03, but to the question when a disclaimer is disclosed in the application as filed as discussed e.g. in T 1107/06. In fact, the referred question seems to ask the EBA to decide whether T 1107/06's catchword is correct.
Unfortunately the Board in T 1068/07 seems to have erroneously left out the word "not", leading to a somewhat curious question. Obviously the mere fact that the disclaimer is disclosed as an embodiment (in positive terms) does not itself mean that the disclaimer is not disclosed (as a disclaimer / in negative terms). The proper question is the other way around.
Hmm, how confusing. Perhaps we should wait for the interlocutory decision. At the end of the minutes there is a handwritten question which appears to be the question proposed by the attorney: "Is an amendment to a claim by the introduction of a disclaimer unallowable under A 123(2) for the sole reason that the subject-matter excluded by it from the scope of the claim is disclosed in positive terms in the application as filed?"
What would the correct question be, according to you? I am not sure I understand what you mean, because I cannot imagine how some subject-matter could be disclosed both in positive terms and in negative terms in an application.
I think the question is correct.
The question is about disclaimers whose subject-matter was disclosed (positively) in the application as filed.
For instance, the application discloses that "X" is a possible embodiment : can the applicant exclude "X" ?
In my opinion, G1/03 was not concerned with this question, since the referral was : "Is an amendment to a claim by the introduction of a disclaimer unallowable under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed? "
The question was discussed here last year : http://europeanpatentcaselaw.blogspot.com/2009/09/t110706-exclusion-dun-objet-decrit-dans.html
Yes, that is also what I understood.
You are both right in stating that G 1/03 does not directly apply, but I bet the approach chosen in G 1/03 will overshadow this decision.
(I'm the same anon as above.)
"I am not sure I understand what you mean, because I cannot imagine how some subject-matter could be disclosed both in positive terms and in negative terms in an application."
What I mean is that the description could e.g. disclose:
- Any metal, for example iron.
- Any metal except iron.
Now iron is disclosed both in positive terms and in negative terms. The answer to the question whether an amendment from "any metal" to "any metal except iron" is allowable in spite of the positive embodiment is clearly "yes" because of the disclosure in negative terms.
Of course this is not what the Board meant. The Board wants to know if the disclosure in positive terms is sufficient basis.
So either:
"Does a disclaimer infringe A 123(2) if its subject-matter was disclosed ONLY as an embodiment of the invention in the application as filed?"
Or:
"Does a disclaimer NOT infringe A 123(2) if its subject-matter was disclosed as an embodiment of the invention in the application as filed?"
The latter corresponds very nicely to T 1107/06's catchword:
"A disclaimer does not infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed."
(Yes, it's mostly nitpicking, but that seems a good thing when referring a question to the EBA.)
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