When amending claims during examining proceedings by adding features, thereby limiting the scope of protection, one has to be very careful because such amendments can lead into the most famous of the “inescapable traps”. If the added feature is not directly and unambiguously disclosed in the application as filed, deleting the feature in post-grant proceedings will lead to an extension of the scope of protection, which is contrary to A 123(3). Nevertheless, one cannot keep the feature because the patent will not comply with A 123(2) as long as the feature is present. G 1/93 has dealt in detail with this situation and found that “such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing [this feature] without violating A 123(3).”
But if there is no such basis in the application, is there anything that can be done? G 1/93 [headnote 2] indicates a last possible way out:
“A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature.”
In other words, one can try to persuade the Opposition Division (OD) or the Board of appeal that the feature does not provide any technical contribution. This is what the patent proprietor tried to do in the present case.
Claim 1 as filed read:
1. A working fluid composition comprising:(A) a heat transfer fluid comprising a mixture of at least two compounds selected from the group consisting of hydrofluoroalkanes and fluoroalkanes; and(B) sufficient to provide lubrication of a lubricant which is at least partially soluble in each component of the heat transfer fluid.
In response to objections by the Examining Division (ED), the applicant filed amended claims.
Claim 1 as amended read:
1. A working fluid composition comprising:
(A) a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2-tetrafluoroethane and pentafluoroethane; and
(B) a sufficient amount of a lubricant to provide for lubrication of a compressor wherein the lubricant is at least partially soluble in each component of the heat transfer fluid and comprises one or more compounds of general formula:
wherein R is the hydrocarbon radical remaining after removing the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol or the hydroxyl containing hydrocarbon radical remaining after removing a proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol;each R1 is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R1 group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; andn is an integer.
The amendment of part (B) was justified as follows:
The second paragraph on page 2 reads:
The patent was finally granted as amended.
The Opposition Division (OD) found the feature “a sufficient amount of a lubricant to provide for lubrication of a compressor” not to be disclosed in the application as filed and revoked the patent.
Here is what the Board had to say on the main request (patent as granted):
[3.1] In order to determine whether or not an amendment adds subject-matter extending beyond the content of the application as filed, it has to be examined whether technical information has been introduced which a skilled person would not have directly and unambiguously derived from the application as filed, either explicitly or implicitly.
[3.2] In the decision under appeal, the OD found that the feature “a sufficient amount of a lubricant to provide for lubrication of a compressor” had no support in the application as filed. Thus, this feature will hereinafter be examined for its basis in the application as filed.
[3.3] Claim 1 as granted is directed to a working fluid composition comprising a mixture of at least two hydrofluoroalkanes and a lubricant. During examination proceedings the amount of lubricant, which according to the original wording had to be “sufficient to provide lubrication” has been amended to “a sufficient amount of a lubricant to provide for lubrication of a compressor”.
[3.4] This feature is not explicitly disclosed in the application as filed, as conceded by the [patent proprietor]. He submitted, however, that this feature was implicitly disclosed, citing in particular page 2, line 16 and page 20, lines 29 to 30.
The passage on page 2 relates to conventional working fluids on basis of fluoroalkanes, which use mineral oil to ensure proper lubrication of the compressor and the passage on page 20 discloses that the working fluid compositions of the patent in suit are suitable for use in all types of compression cycle heat transfer devices.
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| page 20, lines 29 and 30 |
Even though the claimed working fluid compositions were replacing the conventional working fluids a skilled man when selecting an amount of lubricant sufficient to provide lubrication would not necessarily have selected the amount of lubricant to be sufficient to provide lubrication of a compressor, since, as stated on page 1, paragraph 2 of the application the heat transfer devices of the mechanical compression type comprise moving parts other than the compressor, such as pumps or valves, which also need lubrication.
Further, as conceded by the [patent proprietor], there existed compressors that do not even need any internal lubrication. Therefore, a skilled person, when reading the application would not have derived directly and unambiguously the information that an amount of lubricant “sufficient to provide lubrication”, as in the original wording of claim 1, was necessarily “a sufficient amount to provide for lubrication of a compressor”. Consequently, the feature relating to “a sufficient amount of a lubricant to provide for lubrication of a compressor” constituted technical information extending beyond the content of the application as filed.
[3.5] In referring to decision G 1/93 the [patent proprietor] argued that the amount of lubricant, which according to the original wording was “sufficient to provide lubrication” directly corresponded to the amended wording “a sufficient amount to provide for lubrication of a compressor”, since the skilled man would have considered the compressor as being the only moving part that needed lubrication. Therefore, the amendment did not have any technical contribution.
However, as admitted by the technical expert the amount of lubricant which is sufficient to lubricate a compressor is dependent on the design and type of the heat transfer device used, on the type of compressor used and on the chemical components used in the working fluid. Therefore, the technical feature relating to “a sufficient amount to provide for lubrication of a compressor” is restricting the scope of granted claim 1 and is technically significant.
Therefore, the situation in the present case is different from that referred to in decision G 1/93, with the consequence that the amendment does offend against A 123(2).
In the end, the patent proprietor did not manage to get out of the inescapable trap; the appeal was dismissed.
4 comments:
The 2nd headnote of G 1/93 specifically addresses the issue of undisclosed disclaimers (point 16). Such disclaimers do not provide a technical contribution to the invention (as they are to be ignored when assessing inventiveness), but merely reduce the protection conferred. Such disclaimers can be regarded as a shadow falling on the ambit covered by the claim. They are a kind of metalanguage, since they define the claim, but not the invention. For the reasons given in G 1/93 they do not contravene A 123(2).
True indeed. The EBA to some extent beats around the bush by avoiding the word disclaimer (it appears only once, in point [7] of the reasons), so it appears legitimate to try to establish that a feature other than a disclaimer might have no technical contribution - although there is little if any hope of success.
From a read of paragraph 16, particularly:
"Consequently, such feature would constitute added subject-matter in the sense of that provision. A typical example of this seems to be the case, where the limiting feature is creating an inventive selection not disclosed in the application as filed or otherwise derivable therefrom. If, on the other hand, the feature in question merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed, the adding of such feature cannot reasonably be considered to give any unwarranted advantage to the applicant."
Surely the Enlarged Board meant that a feature that provides a "technical contribution" is a feature that provides for novelty and inventive step? Thus, if the claim is novel and inventive both with and without the inadmissible amendment, the feature can be removed.
"Thus, if the claim is novel and inventive both with and without the inadmissible amendment, the feature can be removed."
I'm afraid you're not reading G 1/93 correctly.
First, limiting features can certainly never be removed post-grant, since Art. 123(3) simply does not allow that. What the Board states in par. 16 is that in (exceptional) cases an undisclosed feature that limits the scope of protection might not infringe Art. 123(2), namely in the case that it does not provide a technical contribution. If Art. 123(2) is not infringed, the feature is not objectionable and we're outside the trap.
Second, I am very sure that it is not the case that a feature added to a claim that is already novel and inventive does not provide a "technical contribution" in the sense of G 1/93 (and would therefore not infringe Art. 123(2) and escape the trap). In my view, the addition of a technically limiting feature always provides a technical contribution. Otherwise, compliance with Art. 123(2) would be very much dependent on the available prior art, which would go against G 2/98, par. 8.3 (the tests underlying Art. 87(1) and 123(2) being identical).
G 1/03 makes an exception to the principle that newly found prior art cannot influence compliance with Art. 123(2), but by introducing a very specific exception to Art. 123(2) in order to allow an applicant to overcome an Art. 54(3)-objection. The idea of G 1/03 is that an applicant's position is not improved when the criteria of G 1/03 apply, since the applicant only gets what he was already entitled to (see e.g. G 1/03, par. 2.1.3). Disclaimers that only serve to overcome Art. 54(3)-prior art and do nothing else are not considered to add "technical information" (by way of a legal fiction). Take away the Art. 54(3) disclosure, and the disclaimer suddenly infringes Art. 123(2). See G 1/03, headnote 2 and 2.1. So G 1/03 confirms that an undisclosed feature (e.g. an undisclosed disclaimer) added to a claim which is new and inventive as a rule infringes Art. 123(2).
So in my view, "providing a technical contribution" in par. 16 of G 1/93 must be interpreted as "adding technical information".
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