Oldies But Goldies – Failure To Forward

J 3/80 deals with a request for re-establishment of rights in a case where the applicant was not responsible for having missed a time limit.

The applicant had filed a European patent application at the United Kingdom Patent Office (UKPO), London, on August 28, 1979. The application claimed a priority of August 28, 1978. The UKPO issued a “secrecy direction” under section 22 of the Patents Act 1977, one effect of which was that the application could not be forwarded to the EPO unless and until the Ministry of Defence gave notice to the UKPO that the “secrecy direction” could be revoked.

The “secrecy direction” was subsequently revoked and the notice informing the appellant that this had been done was issued on October 29, 1979. By letter dated October 30, 1979, the UKPO informed the Receiving Section (RS) of the EPO that the application “would now be forwarded … in the normal way”. This letter was received by the EPO on November 2, 1979. The application itself arrived there on November 5, 1979.

As the period of fourteen months had already expired, the RS issued a notice in accordance with R 69(1) that, pursuant to A 77(5), the application was deemed to be withdrawn.

The applicant applied for restitution of rights pursuant to A 122.

The RS refused restitution of rights on the single ground that A 122 provides only for restoration of rights where there has been failure to observe a time limit which it is for the applicant to observe, whereas the time limit not observed in the present case was one which it was for the UKPO to observe.

The Board agrees with the RS:

[2] While it is clear that the appellant and its representative were in no way responsible for what has happened and did all they could to see that it did not happen, it is, however, not possible to interpret the provisions of either A 77 or A 122 in the manner contended for or in any other way that would entitle the appellant to succeed on this appeal.

[3] The appellant does not contest the proposition of the RS that A 122(1) refers to a time limit for the observation of which vis-à-vis the EPO the applicant for or proprietor of a European patent is responsible. That proposition is plainly correct.

[4] The appellant asserts that A 77(3), in contrast to A 77(1) and (2), does not attribute responsibility for forwarding applications to any specific party and that the applicant has overall responsibility for observance of the relevant time limits. This assertion cannot be accepted. The obligation to forward European patent applications filed nationally to the EPO rests, and rests alone, upon the relevant central industrial property office, in accordance with A 77(1), to which the provisions of A 77(3) are merely supplementary. The central industrial property office is in no sense the agent of the applicant, so far as concerns the forwarding of the application. It follows that the appellant cannot bring itself within the language of A 122(1) by any argument that it had responsibility for forwarding the application.

[5] It is clear from the provisions of A 77(5), taken together with A 135(1)(a) and A 136(2), that an applicant who suffers the misfortune suffered by the present appellant should not be entitled to claim restitution of rights under A 122. On the contrary, A 77(5) expressly provides for refund of the filing, search and designation fees and A 135(1)(a) and A 136(2) provide facilities for conversion to national patent applications on request filed within three months after notification has been made that the European patent application is deemed to be withdrawn. It follows that there is no scope for an argument that the spirit of A 122 should be invoked: specific alternatives to restoration of rights are provided.

[6] It is, of course, true, as Mathély has pointed out (“Le droit européen des brevets d’invention” Librairie du Journal des Notaires et des Avocats, Paris 1978, p. 244), that the sanction of A 77(5) EPC is grave, because it is imposed on the applicant for a default for which he is not responsible, but neither Mathély nor any other author whose writings are known to the Legal Board of Appeal, suggests that A 122 is applicable to relieve the applicant in such circumstances as those of the present case. Van Empel (“The Granting of European Patents” Sijthoff, Leyden 1975, para. 382) observes that once the time limit referred to in A 77(5) has expired without the European application reaching the EPO, the applicant’s “only hope” for obtaining a patent resides in the possibility of conversion of the European application into national ones.

[7] Van Empel also rightly points out that the loss of the European application represents a loss to the applicant. In the present case, the extra expenses incidental to conversion are likely to be considerable as no fewer than nine national applications would have to be made to secure the applicant’s lost position. However, any complaint or claim for compensation against a national authority is a matter for national law exclusively. Some of the appellant’s submissions in this appeal may be relevant to such a complaint or claim but are not relevant to the matters with which this Board has to deal.

[8] In the circumstances, the Decision of the RS was correct in all respects and must be affirmed.

Nowadays, the relevant provisions are A 77 and R 37, but as far as I can see, the logic and the time limits are still the same.

To read the whole decision, click here.

NB: I shall be absent for a fortnight and might not have any Internet access. I have pre-programmed posts for the case law addicts among you, but I will not be able to react to comments etc. Have a good time !

T 963/08 – Substantially Unclear

When drafting claims, one is sometimes tempted to insert expressions such as “substantially” in order to allow for some margin. However, there is a real risk of making the claims unclear by using such expressions, as the present case illustrates.

The Board had to deal with an appeal against the decision of the Examining Division (ED) to refuse an application. Having found the main request before it to lack inventive step, the Board examines the first auxiliary request, claim 1 of which read:

A method comprising:

• precoding a plurality of symbol vectors (I) using a linear complex field matrix that comprises a square complex field matrix having substantially a row-wise Vandermonde structure to produce precoded symbol vectors, each symbol vector comprising a plurality of symbols (203), the plurality of symbols (203) being modulation symbols (203);
• grouping the precoded symbol vectors into two or more groups (209) respectively comprising a plurality of layers (207) of precoded symbol (203) vectors;
• applying power coefficients to each modulation symbol within the groups (209) of layers (207), wherein the power coefficients are arranged to produce unequal power allocations among at least a subset of the layers (207);
• mapping the precoded modulation symbols (203) of the precoded symbol vectors to respective subcarriers of a plurality of subcarriers of a multicarrier communication channel and to respective spatial channels of a plurality of spatial channels based on a precoded modulation symbol’s group and a precoded modulation symbol’s layer.

The Board raised a clarity objection that had already been made by the ED:

[4] The subject-matter of claim 1 of this request is distinguished from that of the main request by further specifying that the plurality of symbols are modulation symbols and that for pre-coding a linear complex field matrix is used that comprises a square complex field matrix having substantially a row-wise Vandermonde structure.

[4.1] Regarding the use of a linear complex field matrix, by using the term “substantially” the problem under A 84 as argued in […] the decision under appeal persists. The appellant addresses this objection merely by alleging that such a relative term “would be clearly understood by the skilled person”, without giving reasons why.

[4.2] The only information found in the description is that a Vandermonde matrix is a type of matrix that arises in the polynomial least squares fitting, Lagrange interpolating polynomials and the reconstruction of a statistical distribution from the distribution’s moments […].

A Vandermonde matrix of order n in general is in the form:

The solution of an n x n Vandermonde matrix equation requires O(n²) operations. The determinants of Vandermonde matrices have a particularly simple form.

The board would like to note that a special Vandermonde matrix is the discrete Fourier transform matrix.

Regarding the use of a Vandermonde matrix in the context of the invention, the application only uses the expression “substantially row-wise Vandermonde structure” several times, without disclosing how such a matrix is used for the invention.

[4] The ED presented a concrete argument by raising the question whether a “substantially” row-wise Vandermonde structure encompassed a true Vandermonde matrix or not. The appellant failed to address this argument.

The mere reference of the appellant to decision T 378/02 is not a convincing counter-argument. In the afore-mentioned decision it was ruled that relative terms in claims are allowable if they are clear in view of the complete specification. This, however, is not the case for the present application, because the application as filed fails to provide any explanation as to what is to be understood by a “substantially” row-wise Vandermonde structure.

The board therefore agrees with the reasoning of the ED regarding the term “substantially” and maintains the objection under A 84.

So when you use the “substantially” language in your claims, make sure that the description explains what is meant and, if possible, provide a definition that could be inserted into the claim, should the ED require you to do so.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 1769/10 – Non-technical Constraints

The applicant appealed against the refusal of its application by the Examining Division, for lack of inventive step over document D1.

Claim 1 before the Board read:

A gaming system comprising:

a plurality of game outcome servers (210), each game outcome server having stored thereon a plurality of selectable wagering games, each game outcome server (201) having a communication interface for allowing, in use, the game outcome server (201) to communicate with both a plurality of remote client devices (210, 216-228) and a physically separate and remotely located player management server (200, 202), each game outcome server (201) comprising:

a processor designed or configured to:

a) communicate with the client device (2 10-228) and with the player management server (200, 202) via the communication interface,

b) receive information (608) from the player management server (200, 202) allowing a communication session to be established with the client device,

c) in response to receiving information in process (b), send (603) to an identified client device (210) first commands, first instructions, first data or combinations thereof that allow an interface (601) for playing a wager-based game to be generated (605) on a client interface of the identified client device,

d) receive from the identified client device (210) information (607) indicating a request to play the wager-based game and a wager amount,

e) in response to receiving information in process (d), send (611) information to the player management server (200, 202) requesting authorization of the wager amount wherein the player management server (200, 202) maintains a player balance relating to game play on the identified client device,

f) receive an authorization message (617) from the player management server (200, 202) indicating the wager amount is authorized, whereafter a game outcome for the game is generated (631) and only an adjustment to the player balance calculated (631) by the game outcome server (201),

g) send to the identified client device second commands, second instructions, second data or combinations thereof (633) that allows a presentation of the game outcome to be generated on the client interface; and

h) send (641) the calculated adjustment to the player balance to the player management server (200, 202) to effect an update of the player balance maintained at the player management server,

wherein:

each game outcome server (201) functions as an application service provider that hosts games;

the player management server (200, 202) is remotely located from the game outcome servers by network infrastructure (206);the player management server (200, 202) functions to support account management of players stored in a player database

(259), the account management including player registration and banking data; each game outcome server not allowed direct access to the player database, with interactions with the player management server (200, 202) based on a transactional approach that allows the player balance maintained on the player management server to be updated by the game outcome server; and;

the player may navigate to each game outcome server (201) through a game access interface (282) offering game links to game outcome server-supported games at the game outcome servers (201), the game access interface (282) being supported by the player management server (200, 202) and displayable by the identified client device (210, 216-228), player navigation arising without the player having to register or log-on into the game outcome servers (201).

The Board found Claim 1 to be novel over D1 and then continued:

[4.1] Document D1 is considered to provide the closest prior art. The […] differences of the subject-matter of claim 1 over D1 allow maintaining player anonymity in the game transactions between the game outcome servers and the player management server. As stated in the application,

“One of the most important and valuable resources of an on-line casino may be its player database. The transactional approach described above may allow multiple on-line casinos to use functions provided by a game outcome server without having to worry that their customer database is revealed to the providers of the game outcome server or to another provider of another on-line casino” […].

Furthermore, the […] differences allow offering a player a wider variety of games running on different (game outcome) servers, possibly developed on different software platforms, without the need to provide a dedicated player management server in each case. Moreover, player’s convenience is served by not having to register or log-on into different game outcome servers.

[4.2] At least some of the above aims to be achieved are in the non-technical field of schemes, rules and methods of playing games and doing business, and may thus, in accordance with established jurisprudence, legitimately appear in the formulation of the technical problem to be solved, in particular as a constraint that has to be met (cf. Case Law of the Boards of Appeal, 6th edition 2010, I.D.8.1; T 641/00 [7]).

As far as the appellant’s allegation that the current case law of the boards of appeal was insufficiently developed and was in fact unclear and inconsistent as to when features in mixed inventions bestowed patentability is concerned, it is noted that the above established jurisprudence provides a methodology for applying the problem-solution-approach, generally adopted in the EPO for assessing inventive step, to inventions involving aspects in the non-technical field. In fact, the Enlarged Board of Appeal noted that, while numerous board of appeal decisions cited the earlier decisions defining this methodology, it was not aware of any divergence in this case law, suggesting that the boards were in general quite comfortable with it, and concluded that it would appear that the case law, as summarised in T 154/04, had created a practicable system for delimiting the innovations for which a patent may be granted (G 3/08 [10.13.2]).

Still, this does not prevent the application of this methodology to an individual case, on occasions, to be complex. This, however, is not different in the application of the problem-solution-approach in general.

It is furthermore noted that, contrary to what is argued by the appellant, also decision T 1051/07, issued by this board, follows the above methodology. In particular, the appellant’s contention that somehow the consideration in this decision of “how” the aim in the non-technical field is achieved in terms of a technical solution involving technical means would diverge from this methodology is unfounded.

In the problem-solution-approach, the objective technical problem to be solved is formulated based on the technical effect caused by the distinguishing features of the claim over the prior art, and thus depends on the individual case. This is also the case for inventions involving aspects in the non-technical field. Accordingly, depending on the available prior art and what is claimed, the objective technical problem to be solved may be formulated generally as to implement technically (the constraints as imposed by) the aim to be achieved in the non-technical field. In the case where some general form of implementation of the aim to be achieved in the non-technical field is already known from the prior art, the objective technical problem to be solved may be formulated more specifically as how to implement technically the aim in the non-technical field, or, reworded, to provide a technical solution involving technical means how to achieve the aim in the non-technical field.

[4.3] In the present case the requirements to be met deriving from the above aims in the non-technical field, are to improve the player’s access to games and to maintain confidentiality of the player’s data in the player database.

Accordingly, the objective technical problem to be solved may be formulated as modifying the system of D1 so as to improve the player’s access to games while maintaining confidentiality of the player’s data in the player database. Or, in other words, how to improve the player’s access to games while maintaining confidentiality of the player’s data in the player database in terms of a technical solution using technical means.

[4.4] The technical solution involving technical means as claimed to the above technical problem essentially is to let the server for maintaining the player database communicate with a plurality of game outcome servers, with respective, different games. The server for maintaining the player database is physically separate and located remote from the game outcome servers. The game outcome servers are not allowed direct access to the player database, such that confidentiality of the player database is maintained. Player access is improved by letting the player navigate to each game outcome server through a game access interface offering game links to game outcome server-supported games at the game outcome servers through a game access interface supported by the player management server and displayable by the identified client device and without the player having to register or log-on into the game outcome servers.

As indicated above, in the document D1 the “player management server” neither communicates with a plurality of “game outcome servers”, nor does it support a game access interface accessible by the player offering game links to game outcome server-supported games at the game outcome servers, without the player having to register or log-on into the game outcome servers. In D1, the “player management server” merely maintains the player database and the casino server has direct access to the player database. Accordingly, the above technical solution involving technical means as claimed is not rendered obvious by D1.

As it is also not suggested in any of the remaining cited prior art or otherwise rendered obvious to the skilled person, the subject-matter of claim 1 is considered to involve an inventive step in the sense of A 56.

To read the whole decision, click here. The file wrapper can be found here.

T 411/10 – Octopus Defence Rejected

Invoking a lack of clarity of one’s own application is always a risky endeavour. In the present case the patent proprietor, whose patent had been revoked by the Opposition Division (OD), thought that the A 123(2) objection could be overcome by pointing out that a feature that had been omitted was devoid of meaning.

The claims under consideration, which are directed at a process for producing an aldehyde, are quite lengthy, so I will not reproduce them. What is decisive is that the OD found that the step of the process according to claim 1 as granted, where the aldehyde was separated from the reaction solution by distillation at a temperature of at most 150ºC under a pressure of 1 to 755 mmHg, was not disclosed in the application as filed, and that, therefore, A 123(2) was violated.

When justifying those features, the patent proprietor referred exclusively to paragraph 44 of the application as filed (which is found on page 44 of the application as filed, lines 17 to 23):

According to the patent proprietor, the expression “when the boiling point of an aldehyde product is high” had no precise meaning, since there was no distinction between high boiling point and low boiling point aldehydes. Following the established case law of the Boards of Appeal of the EPO ac cording to which unclear terms had to be construed broadly the relative term “high” could not be a distinguishing feature, without a basis for comparison. Hence, the passage in paragraph could not be construed in a way to exclude low boiling point aldehydes.

The Board could not endorse this reasoning.

[2.1] The patent in suit has been opposed inter alia on the ground that the subject-matter of the patent extended beyond the content of the application as filed (A 100(c)). Inter alia, the feature in granted claim 1 relating to the separation of the aldehyde from the reaction solution “by distillation at a temperature of at most 150ºC under a pressure of 1.33 x 10**(2) to 1.004 x 10**(5) Pa (1 to 755 mmHg)” was objected to for having no basis in the application as filed.

[2.2] In order to determine whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed it has to be examined whether that claim comprises technical information which a skilled person would not have directly and unambiguously derived from the application as filed.

[2.3] With respect to support in the application as filed of the step of the distillation of the aldehyde under the required pressure range of from 1 to 755 mmHg, the [patent proprietor] referred exclusively to page 44, lines 17 to 23.

This section of the application as filed, however, discloses that when the boiling point of an aldehyde product is high, it is preferable to employ vacuum distillation under a reduced pressure in the range of from 755 mmHg to 1 mmHg. It concerns therefore only the distillation of particular aldehydes, namely those with a high boiling point, and not the distillation of any aldehydes independently of their boiling point.

The disclosure in the application as filed of a feature concerning the distillation of particular aldehydes does not form a proper basis to the claimed feature relating to the distillation of any aldehydes regardless of their boiling point, since a generalisation must be made to arrive at the process of claim 1 covering a process for producing any aldehyde by reacting an olefinic compound with carbon monoxide. To generalise a feature relating to the distillation of specific aldehydes to the distillation of any aldehyde provides the skilled person with technical information which is not directly and unambiguously derivable from the application as filed. The amended claim 1, thus, is not based on the disclosure of the original application and extends beyond the content thereof.

Hence, the Board concludes that the subject matter of claim 1 as amended contravenes the provisions of A 123(2).

[2.4] The [patent proprietor] argued that the requirement “when the boiling point is high” defining the aldehyde to be distilled under reduced pressure in the application as filed was so unclear that it could merely be ignored.

However, although the expression “when the boiling point of an aldehyde is high” is vague, it makes clear that the feature relating to vacuum distillation under the reduced pressure in the range of 755 to 1 mmHg incorporated into claim 1 is not disclosed for any aldehydes encompassed by amended claim 1, but is restricted to high boiling point aldehydes. Hence, omitting this restriction in the definition of the aldehyde to be distilled under reduced pressure provides the skilled with new subject-matter. This argument of the [patent proprietor] must be rejected.

The [patent proprietor] further argued that the preceding lines of page 44 taught that the temperature must be kept as low as possible implying therefore that the vacuum distillation under reduced pressure should be used for any aldehyde, and that anyway the skilled man for practical and economical reasons would always carry out the distillation of the aldehydes under reduced pressure.

However, this argument is not supported by the fact since it is clear from the disclosure in passage of page 44, lines 20 to 23 of the application as filed that the distillation under reduced pressure of high boiling point aldehydes is preferred, i.e. optional, and thus not compulsory. Furthermore the finding of whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed is not a matter of how the skilled man would carry out a teaching, but rather the matter which technical information a skilled person would directly and unambiguously derive from the content of the application as filed. In the present case, the distillation under reduced pressure in the range of from 1 to 755 mmHg is disclosed exclusively for high boiling aldehydes, so that the pressure range now required by claim 1 for the distillation of any aldehyde provides the skilled person with technical information which is not directly and unambiguously derivable from the application as filed.

Thus, the application as filed does not provide a proper basis for amended claim 1.

[2.5] For these reasons, the Board concludes that granted claim 1 extends the subject-matter claimed beyond the content of the application as filed thus justifying the ground for opposition pursuant to A 100(c).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 1363/08 – Trouble With The Two-Part Form

The applicant filed an appeal after the Examining Division (ED) had refused its application for lack of inventive step.

Claim 1 of the main request read:

A vehicle antenna system for use in a keyless entry system with bidirectional communication between a driver’s proprietary card (19) and the vehicle antenna system, the vehicle antenna system comprising:

a vehicle antenna (35) comprising at least a core (21) made of a magnetic material and a coil (23) wound around the outer surface of the core (21);

a vehicle mirror composed of a fixing portion (16) and a movable fold-away portion (17); and

metal components for revolving the vehicle mirror,

characterised in that

the metal components are contained in the fold-away portion (17); and in that

the vehicle antenna (35) is housed within the fixing portion (16).

The decision contains an interesting reasoning based on the two-part form of the claim, and yet another use of “Wunderwaffe” Article 12(4) RPBA.

Main request and auxiliary request 2

[2.1] The vehicle antenna system of claim 1 of the main request and the auxiliary request 2 comprises “metal components for revolving the vehicle mirror”, which metal components “are contained in the fold-away portion (17)” of the vehicle mirror.

[2.2] A 84 EPC 1973 requires that the claims shall be clear.

The claimed metal components are only defined by their function of revolving the vehicle mirror and their arrangement in the fold-away portion of the vehicle mirror. The nature of these metal components can be inferred from […] the application as filed (see “such metal components as motor, cam, etc.”). Claim 1, however, is unduly general and vague. First, the claim does not otherwise specify the structure of the metal components. Second, it does not state whether all the metal components for revolving the vehicle mirror are contained in the fold-away portion. Last but not least, it does not exclude that other metal components, which may impair the claimed bidirectional communication, are housed within the fixing portion of the vehicle mirror together with the antenna.

Therefore, claim 1 of the main request and auxiliary request 2 does not meet the requirements of A 84 EPC 1973 as lacking clarity.

[2.3] A 83 EPC 1973 requires that the “application” shall disclose the invention in a manner sufficiently clear and “complete” for it to be carried out by a skilled person. The requirement of completeness of the application implies, according to Rule 27(1)(e) EPC 1973, that the “description” shall describe “in detail” at least one way of carrying out the invention claimed.

The application as filed does not describe at all how the vehicle mirror is revolved by means of metal components contained in the fold-away portion. In particular, the disclosure […] already mentioned above is completely insufficient in this respect.

The appellant, however, held that the present invention did not concern a special system for revolving a vehicle mirror. Rather, it dealt with the interference that metal components might have on the claimed bidirectional communication.

In the Board’s view, such an argument is not convincing. As it results from the two-part form of claim 1, the claimed invention consists in the arrangement of the vehicle antenna in the fixing portion of the vehicle mirror, whereas the metal components for revolving the vehicle mirror are placed in the fold-away portion. The vehicle antenna is thus separated from the source of interference represented by such metal components. With this understanding, Rule 27(1)(e) EPC 1973 requires that the description describes in detail at least one example how the vehicle mirror can be revolved by means, i.e. the claimed metal components, that are contained in the fold-away portion. This is not the case.

Therefore, the requirement of Rule 27(1)(e) EPC 1973 is not met.

[2.4] It follows that the main request and the auxiliary request 2 are not allowable.

Auxiliary requests 1 and 3 were found to lack inventive step.

The Board then dealt with auxiliary requests 4 and 5.

Claim 1 of auxiliary request 4 on file read:

A vehicle antenna system for use in a keyless entry system with bidirectional communication between a driver’s proprietary card (19) and the vehicle antenna system, the vehicle antenna system comprising:

a vehicle antenna (35) comprising at least a core (21) made of a magnetic material and a coil (23) wound around the outer surface of the core (21);

a vehicle mirror assembly composed of a mirror, a movable portion (17) holding the mirror, and a fixing portion (16) for mounting the vehicle mirror assembly to the outside of a vehicle body; and

metal components for revolving the mirror,

characterised in that

the movable portion (17) is adapted to be able to be folded away by the driver;

the metal components are contained in the movable portion (17); and

the vehicle antenna (35) is housed within the fixing portion (16),

wherein the vehicle antenna (35) further comprises a holding portion (22) composed of a dielectric film sheet wound on an outer surface of the core (21) and a linear conductor being wound around the holding portion (22).

[5.1] Claim 1 of the auxiliary requests 4 and 5 includes the feature that the vehicle antenna further comprises a holding portion composed of a dielectric film sheet wound on an outer surface of the core and a linear conductor being wound around the holding portion.

[5.2] With a communication of 17 February 2005 the ED confirmed an objection of lack of unity under A 82 EPC 1973 raised by the search division. The application was considered to relate to two different inventions. A first invention was claimed in claims 1-6 of the application as filed and concerned “an antenna device comprising a coil antenna with tapered magnetic core, said coil antenna being positioned and encapsulated within a housing and further comprising a thin holding portion carrying the coil windings”. A second invention was claimed in claims 7-9 of the application as filed and concerned “a vehicle antenna system comprising a coil antenna mounted on the fixing portion of a vehicle mirror”. The ED held that there was no single general inventive concept which linked the subject-matter of the two inventions.

With a reply of 13 June 2005 the appellant, then applicant, filed new claims 1-6 based on claims 7-9 of the application as filed and held that the objection of lack of unity had thus been overcome.

[5.3] According to the procedure relating to lack of unity during substantive examination, as laid down in the Guidelines for Examination in the EPO (C-III,7.10), if the applicant has taken the opportunity to have two or more inventions searched, then it may determine that the application is to proceed on the basis of one of these, the other(s) being deleted.

In the present case, both inventions mentioned above have been searched and the appellant determined that the application was to proceed on the basis of the second invention. For the first invention the appellant had the opportunity to file a divisional application, if it liked.

Claim 1 of the auxiliary requests 4 and 5 thus represents an attempt to deviate from the choice made with the letter of 13 June 2005. Clearly, such requests could have been presented in the first instance proceedings. This was, however, not the case as these requests were presented for the first time during the appeal proceedings.

[5.4] In view of the foregoing, the Board holds the auxiliary requests 4 and 5 inadmissible in the exercise of the power conferred by Article 12(4) RPBA. […]

The appeal is dismissed.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 1882/08 – A Smouldering Wick

The applicant filed an appeal against the decision of the Examining Division to refuse its application, but then omitted to pay the renewal fee for the seventh year so that the application was deemed to be withdrawn before the date on which oral proceedings (OPs) were to be held.

What will the Board do in this situation?

[3] According to the information available to the Board, the renewal fee for the 7th year and the corresponding additional fee had not been paid and the prescribed period of grace for payment according to R 51(2) had expired before the date of the OPs. Thus, at the time of the OPs the application was deemed to be withdrawn. In this situation the Board could have simply awaited the further course of action to be taken by the Office, i.e. the delivery of the obligatory noting of loss of rights according to R 112, and a potential reaction of the appellant.

Despite the fact that, in the present situation, the application was deemed to be withdrawn before the date of the OPs, the Board recognizes that the noting of loss of rights (which has not yet been issued) due to non-payment of the renewal fee and the additional fee could theoretically still be challenged under R 112(2) by the appellant, or that reestablishment of rights pursuant to A 122 could be requested. In view of these factors, which may potentially prolong the proceeding, and in view of the fact that appeal proceedings are independent from proceedings concerning the payment of renewal fees, the Board decided in the present case to continue the appeal with the arranged OPs.

In arriving at this decision the Board also took into account the fact that, since the appellant had refrained from providing any indication concerning its intended course of action, the members of the Board had to be - and in fact were - fully prepared in substance for the OPs. Moreover, the Board was aware that a substantive decision taken at the end of the OPs could bring all pending proceedings in the present application to a speedy conclusion, in the interest of the EPO as well as of the general public.

Of course, had the Board arrived in its deliberation at the end of the OPs at a view which in substance would have been positive for the claimed subject-matter, it would have had to let the procedure under R 112 and/or A 122 run its course.

As you might have deduced from the last statement, the Board finally snuffed out the smouldering wick, for lack of compliance of the requests on file with the requirements of A 123(2).

To download the whole decision, click here. The file wrapper can be found here.

Also reported on Le blog du droit européen des brevets. 

Oldies But Goldies – Bonus Effect

Today we consider T 21/81 of September 10, 1982.

The applicant appealed against the refusal of its application by the Examining Division. The reason given for the refusal was that the subject-matter of the claims did not involve an inventive step.

Claim 1 before Board 3.5.1 read:

1. An electromagnetic device comprising a housing;

a stationary core comprising laminations of ferromagnetic material disposed within the housing, the core having a base and a pair of legs extending substantially perpendicularly from the base, said core having a centre pole face and a pole face at the end of each leg;

a freely movable armature of ferromagnetic material having a centre pole face and two end pole faces, the armature being disposed in the housing so that each pole face on the core is opposite a corresponding pole face on the armature and the armature being loosely guided within the housing for rectilinear straight line motion;

a region of decreased magnetic permeability including an air gap being provided between the centre pole faces of the core and the armature to aid separation thereof;

an energising coil associated with the core, so that when the coil is energised a magnetic force is induced which moves the armature from an open position to a closed position in which a three-legged magnetic circuit is formed;

characterised in that means is provided for giving an audible signal of the need to replace the device, the said means comprising, on at least one of the centre pole faces, but not on any of the end pole faces a layer of a hard non-magnetic coating of a non magnetic material having much greater resistance to wear than the ferromagnetic material constituting the end pole faces of the armature and the core.

During oral proceedings before the Board, the applicant limited his claims to the use of tungsten carbide, after the Board of Appeal has expressed the opinion that in the expression “hard non-magnetic coating of a non-magnetic material having much greater resistance to wear than” the terms “hard” and “much” did not have a precise meaning, so that the claims were not allowable under A 84. 

[2] Devices as described in the introductory part of Claim 1, comprising the combination of either a substantially U-shaped core and T-shaped armature or of a substantially E-shaped core and armature, and in which an airgap is present to aid separation of core and armature, are generally known. It is also well established practice that in such devices, where the armature executes a linear movement, the armature is loosely guided to prevent it from sticking to its guiding channel and to diminish friction losses and wear (cf. US 3 185 902 and GB 1 272 916). Finally, it has been proposed to realise such an airgap by providing at least part of the pole faces with a layer consisting of a non-magnetic wear-resistant material, such as tungsten carbide (cf. US 3 573 690, DT 1 158 174).

[3] According to the application as filed the invention is intended to provide a remedy to the problem that coating all the pole faces is time-consuming and costly and that the added reluctance caused by the non-magnetic material adversely affects the operation of the device. This is a problem of which the person skilled in the art is of course well aware.

[4] From FR 1 408 864 an electromagnetic device having a pivoting armature is known in which only one of the central pole faces defining an airgap is covered with a non-magnetic wear-resistant material “to prevent the airgap from disappearing and the consequential sticking of the armature if the faces of the other two poles are worn away”. […].

It is well known that in order to prevent magnetic sticking of the armature due to residual magnetism an airgap must be provided somewhere in the magnetic circuit. Although not explicitly stated in the document, it is immediately clear to the person skilled in the art that the solution proposed in the FR specification to retain such an airgap under conditions of substantial wear is a simpler one than covering all the pole faces, as is apparently implicit in the other cited documents. Therefore, although this measure is described in connection with a relay having a pivoting armature it is obvious that it can be applied for the same purpose to an electromagnetic device having a linearly moving armature.

The facts that substantial clearances are not likely to be present in the device according to the FR specification, at least before the device has been in use for some time, and that possibly the amounts of wear occurring on the different pole faces may in the case of a pivoting armature be different from those in the case of a linearly moving armature, do not seem significant here and would certainly not deter the person skilled in the art from applying this known measure to a device with linear movement for the same purpose.

In the Board’s opinion it must be expected from a designer who is faced with a problem concerning a device with a linearly movable armature to consult also the prior art in the very related field of devices with pivoting armatures if the problem is common to these two types of device, which is clearly the case here. For the same reason it is immaterial whether the device according to the FR specification could be regarded as a heavy duty contactor or not. (Incidentally the application does not contain any limitation which would exclude such devices from the protection sought.)

[5] With respect to the non-magnetic material, the FR-specification states that this material should be “a non-magnetic material, preferably plastic, having a great resistance to wear by compression and friction such as for example Teflon”. No reason is given, however, for this preferred choice […].

As far as selection of materials is concerned, the Board generally considers it as forming part of the normal activities of the man skilled in the art to select from the materials which are known to him as suitable for a certain purpose the most appropriate one, and this also in the case where he is presented with no more than an unreasoned preference for a specific material in a document forming part of the prior art.

Now it is well known that tungsten carbide is one of the small group of materials which have been proposed in the prior art as having a greater resistance to wear than the material normally used for the core and armature of electromagnetic devices of the kind under consideration (cf. documents cited in the search report). Moreover it is known that its use is not limited to cases where pole faces are subject to continuous impacts but that this material can be used in a general sense in magnetic devices to create an anti-corrosion effect or a magnetic insulation. (See DT 1 158 174 […]). Finally, it is known that tungsten carbide has several advantages over other materials used for the same purpose and that it can be relatively easily applied (see DT 1 158 174 […] and the description of the application […]). The Board therefore considers that no inventive step is present in the selection of this particular material.

[6] The applicant has stressed that the choice of the material has the advantage that a clear chatter is obtained without any further measures at the end of the useful life of the device. The Board considers, however, that if having regard to the state of the art it would already have been obvious for a person skilled in the art to arrive at something falling within the terms of a claim, because an advantageous effect could be expected to result from the combination of the teachings of the prior art documents, such claim lacks inventive step, irrespective of the circumstance that an extra effect (possibly unforeseen) is obtained.

[7] The application referring in particular to the passage in the FR specification where it is stated that the non-magnetic material “... at the time of closing fills, completely or not, the small airgap which is generally present...” […], contends that it would follow that an embodiment having an airgap already completely filled at the beginning of the useful life of the device must be considered as the preferred embodiment according to the FR specification.

The applicant furthermore contends that it would follow then that a hard material, such as tungsten carbide, is excluded because in this preferred embodiment a compressible material is required since otherwise airgaps would develop in the two outer branches of the magnetic circuit which after a short time of use would make the device unsuitable for its purpose.

However, from the fact that the FR specification mentions only a preference for plastic it is clear that other known materials, i.e. metallic ones, were also contemplated and could be used for the purpose, which materials can hardly be regarded as comprehensible (sic).

Moreover the applicant’s reasoning on this point is only applicable in a situation where indeed the airgap is filled completely from the beginning, which is, in the opinion of the Board, not the most likely situation, in view of the stated purpose of the coating […] above.

It is more likely therefore that the person skilled in the art would read the passage on the completely filled or not completely filled airgap as referring to a situation where the airgap is not completely filled at the beginning, but becomes so after the outer poles have worn down.

[8] Consequently the subject-matter of Claims 1 and 5 does not involve an inventive step and the same applies to the alternative claims presented by the applicant. These claims therefore are not allowable. […]

The appeal […] is dismissed.

To read the whole decision, click here. The file wrapper can be found here.

T 1196/08 – Romanian Rhapsody

The present decision deals with an interesting case of third party intervention.

The patent proprietor had extended its European patent to Romania. The patent was opposed, but the Opposition Division rejected the opposition (in 2008). The opponent filed an appeal against this decision. In February 2009, a Romanian company (SC Gedeon Richter Romania SA, hereinafter referred to as “SC”) filed a notice of intervention. The patent proprietor had indeed instituted infringement proceedings in Romania on November 26, 2008. The question to be answered by the Board was whether this intervention was admissible or not.

NB: The would-be intervener also requested the Board to refer questions to the Enlarged Board of appeal (EBA) and raised a R 106 objection because the Board had not heard the European Patent Organisation and the State of Romania on the topic to be decided.

*** Translation of the French original ***

[3.1.1] Subject to certain conditions, A 105(1)(a) and R 89 allow a third party to intervene in opposition proceedings after the opposition period has expired, if the party proves that proceedings for infringement of the same patent have been instituted against it.

[3.1.2] In the present case, the declaration of intervention has been filed during the opposition appeal proceedings, which is admissible according to decision G 1/94 of the EBA.

[3.1.3] Moreover, in order for an intervention to be admissible, the infringement proceedings have to be based on the very patent which is the subject of the proceedings at which the intervention is directed (see T 338/89 [4.1.2] and T 446/95 [2.1]).

[3.1.4] Therefore, it is appropriate to first clarify what is the subject of the present European opposition proceedings in application of the European Patent Convention (hereinafter referred to as “Convention”).

A 99(1), first sentence, EPC, provides that within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to that patent. The Convention defines the notion of “European patent” in A 2(1) EPC 1973, which states that patents granted under the Convention shall be called European patents. According to A 3 EPC 1973, the grant of a European patent may be requested for one or more of the contracting states. Therefore, the opposition proceedings concern a European patent which has been granted for at least one contracting state. However, it is irrelevant for the opposition proceedings if the effects of this patent have been or will be extended. This clearly follows from R 84(1) according to which the opposition proceedings may be continued only at the request of the opponent if the European patent has been surrendered in all the designated contracting states or has lapsed in all those states.

This is why the Board concludes that “the same patent” [French version : ce brevet] within the meaning of A 105(1)(a) is a European patent within the meaning of A 2(1) EPC 1973, i.e. a patent granted under the Convention for one or more of the contracting states, which is, as underlined by the [patent proprietor] a system of law for the grant of patents for invention that is common to the contracting states, pursuant to A 1 EPC 1973. Consequently, the infringement proceedings before national jurisdictions have to be instituted based on a European patent which has been granted under the Convention for at least one contracting state if the conditions of A 105(1)(a) are to be fulfilled.

[3.1.5] In accordance with the evidence filed by the SC company, the infringement proceedings before the Romanian court are based on Romanian patent RO/EP 1108424 which has been obtained by extension of the European patent to Romania.

[3.1.6] The SC company is of the opinion that the Romanian patent resulting from an extension of a European patent has to be considered to be the same patent as a European patent granted under the Convention because the fact that Romania was not party to the EPC at the relevant date only constitutes a difference in view of the legal basis of the effects of the European patent, and not a difference in view of the fact that it is still (encore) a European patent. (NB: The whole sentence is unclear in the French original.)

The Board does not share this opinion, for the following reasons.

[3.1.7] The extension of the effects of European patents to Romania was possible as from October 15, 1996, i.e. the date on which the Agreement between the Government of Romania and the EPO on cooperation in the field of patents (“Cooperation Agreement”) entered into force (see OJ EPO 1994, 746 and 1996, 601).

The Cooperation Agreement is part of the international agreements which the President of the EPO is empowered to conclude subject to the approval of the Administrative Council (A 33(4) EPC 1973). As a bilateral ordinance, the Cooperation Agreement essentially deals – exhaustively and strictly separately from the EPC – with matters pertaining to the integration of extended European applications and protective rights into the national law of the state allowing (autorisant) the extension and their relationship to national applications and rights based on the national Law on industrial property (see, for example, J 14/00 [1.3.2]).

[3.1.8] The extension system provides European patent applicants with a simple and economical means of obtaining patent protection in the states for which a Cooperation Agreement with the EPO has entered into force (states allowing the extension) (see, for instance, “Extension of European patents to Romania”, OJ EPO 1994, 746, (EEPR1), second paragraph, “Extension of European patents to Slovenia”, OJ EPO 1993, 574, (EEPS1) third paragraph, and OJ EPO 1994, 75, (EEPS2), I. Basic principles, second paragraph). Upon request of the applicant and subject to the payment of the prescribed fee, the effects of European patent applications (direct and Euro-PCT applications) and European patents extend to the state allowing the extension, which, however, is not party to the EPC. These effects are the same as those of national applications and national patents (see, for instance, “Extension of European patents to Romania”, OJ EPO 1996, 601, (EEPR2), points 8 and 9, and articles 4 and 5(1) of the Romanian extension ordinance (EO); EEPS2, I. Basic principles, second paragraph, and article 1 of the EO of the Slovenian government, OJ EPO 1994, 80).

As underlined by the [patent proprietor], the extension system may be considered to be an intermediate step for a state before it becomes a party to the Convention. This also follows from the preamble of the Romanian Cooperation Agreement, which stipulates that Romania, whishing to become a party to the EPC, wishes, as an intermediate step, to have a system allowing to extend the effects of a European patent to its territory (extension system).

[3.1.9] Although the extension proceedings essentially correspond to the system provided by the EPC, which is applicable to the states that are party to the Convention, the validity of the extension system is not based on the direct application of the EPC but exclusively on national law inspired by the EPC (see, for instance, EEPR2, point 15; EEPS2, I. Basic principles, second paragraph; J 14/00 [1.2.2]; J 9/04 [1.2.2]; J 2/05 [1.2.2], Singer/Stauder, EPÜ, fifth edition in German, 2010, article 2, point 9). As a consequence, the national law of the state allowing the extension governs the extension proceedings and the legal effects of the extension. As a matter of fact, the legal provisions governing the extension system in Romania, including all the conditions and all the legal effects of the extension, appear in the Romanian EO “Monitorul Oficial al Rômanei, Anul VIII, n° 195, August 21, 1996, 2, 4”, i.e. in an ordinance of the government of the state allowing the extension (see EEPR2, second paragraph).

[3.1.10] As far as the applicability of the EPC is concerned, the provisions of the Convention, of its implementing regulations and of the rules relating to fees of the EPO apply only to the extent to which the national provisions refer to them (see, for instance, article 10 of the Romanian EO and article 10 of the Slovenian EO; EEPR2, point 15; Singer/Stauder, op.cit., article 79, point 40). The wording of the Romanian EO makes it very clear that its references to the provisions of the Convention are exhaustive (see also J 14/00 [1.3.1]) on the subject of the Slovenian EO). According to the Romanian provisions, the only references to the EPC concern the time limits and the means of payment of the extension fee (see article 3 of the Romanian EO and EEPR2, point 15).

[3.1.11] It follows from what has been said that the European patent under consideration extends to the Romanian territory exclusively on the basis of Romanian national law and that, according to article 5(1) of the EO, it has the same effects as a national patent (see also EEPR2, point 9).

However, as explained by the SC company, the European patent under consideration the effects of which extend to Romania is not a national patent granted by the Romanian national office. This legal evaluation is based on the wording of certain provisions of the EO, such as for example articles 5(1), 8, and 9, according to which a distinction is made between a European patent the effect of which extends to Romania and a national patent (see also EEPR2, points 9, 12, and 14). In the present case, the facts, therefore, differ from the facts on which decision T 446/95 was based, so that the latter is not relevant for the present case.

[3.1.12] As for the European patent within the meaning of article 2(1) EPC 1973, it is granted under the Convention by the EPO, for each of the contracting states that are designated pursuant to A 79 EPC 1973. Once it is granted, a European patent has, in each of the contracting states for which it is granted, the effect of a national patent granted by that state (A 2(2) and A 64(1) EPC 1973). It follows that the European patent system, including the effects of a European patent in the contracting states, is based exclusively on the direct application of the EPC.

[3.1.13] Although there are some parallels between the extension system and the European patent system, there are some fundamental differences between those two systems. The extension system, including all the conditions for and all the legal effects of the extension, is exclusively based on the application of national law, unless there are explicit references to the EPC. Moreover, the European patent system and the effects of a European patent in the contracting states are exclusively based on the direct application of the EPC, it being understood that some provisions of the EPC refer to national law. Therefore, it follows from the extension of the effects of a European patent under the national law of the state allowing the extension that the European patent has the effects of a national patent, whereas the designation made pursuant to A 79 EPC 1973 has the consequence that the European patent is granted by the EPO based on the Convention, with effect for the designated contracting states (see Singer/Stauder, op.cit., article 79, point 40). In view of this different legal situation, the Board concludes that a patent extended to the territory of a state allowing the extension is not a European patent within the meaning of A 2(1) EPC 1973. It may well be that the Romanian patent resulting from the extension has its origin in a European patent application and, subsequently, in the European patent granted on the basis of this application in accordance with the Convention, but, even if this were admitted, it follows from the legal situation explained above that the extension and the legal consequences resulting from it are exclusively based on national law. As a consequence, the patent resulting from the extension does not have the legal nature of a European patent within the meaning of A 2(1) EPC 1973.

[3.1.14] According to the Board, as far as the present case is concerned, it follows that Romanian patent RO/EP 1108424, which has been obtained by extension to Romania of the European patent under consideration and which is the subject of the infringement proceedings before the Romanian court, is not a national patent granted in Romania. The Board also concludes that the Romanian patent is exclusively based on national law, i.e. on Romanian law, and not on the Convention. In other words, the Romanian patent is not a patent that has been granted by the EPO for Romania, in application of the Convention. This is why the Board is of the opinion that the Romanian patent is not a European patent within the meaning of A 2(1) EPC 1973. As a consequence, Romanian patent RO/EP 1108424 does not correspond to European patent EP 1108424, which is the subject of the present opposition appeal proceedings. Consequently, the intervention does not satisfy one of the requirements of admissibility enshrined in A 105(1)(a). (see point [3.1.3] above).

[3.1.15] Moreover, the provisions of the Romanian EO do not refer to the provisions of A 105. The references of the Romanian EO to the provisions of the EPC being exhaustive (see point [3.1.10] above), the question of whether A 105 can be applied by analogy does not even arise.

[3.1.16] The SC company invokes the Treaty on European Union (TEU) and the TRIPS (Trade-Related aspects of Intellectual Property rights) Agreement and requests that articles 23 and 49 TEU and articles 41(2) and 49 of the TRIPS Agreement be taken into consideration when the applicability of A 105 is interpreted.

The Convention is a system of law, common to the contracting states, for the grant of patents for invention (A 1 EPC 1973). It constitutes a special agreement within the meaning of article 19 of the Paris Convention for the Protection of Industrial Property and a regional patent treaty within the meaning of article 45 PCT (see the third paragraph of the preamble of the Convention). The Convention does not come under Community law (see EPÜ, Münchner Gemeinschaftskommentar, 1998, article 1, III, 1.a))

The European Patent Organisation is not party to the TRIPS Agreement (see G 1/97 [5a]). However, the provisions of this agreement, very much like decisions of the European and international Court of justice and national decisions, are to be taken into account by the Boards of appeal, which nevertheless are not bound by them (G 2/02 and G 3/02 [8.6]; T 1173/97 [2.2]) However, the EBA has also declared:

“Whereas it is legitimate for the boards of appeal to use the TRIPS Agreement as a means to interpret provisions of the EPC which admit of different interpretations, specific provisions of TRIPS cannot justify ignoring express and unambiguous provisions of the EPC. To do so would usurp the role of the legislator.” (G 2/02 and G 3/02 [8.6])

The Board is of the opinion that these considerations also apply for the TEU.

The Board has explained (see points [3.11-15] above) that the provisions of the Convention as it stands and in particular A 105, as well as the national provisions of the Romanian EO clearly exclude the possibility of intervening in the proceedings based on infringement proceedings concerning a Romanian patent resulting from the extension of a European patent to Romania. Therefore, it is not possible to come to a different conclusion based on the provisions of the TEU or the TRIPS Agreement. On the contrary, it is up to the competent lawmaker to provide the possibility of intervening in such a situation.

[3.1.17] The SC company has also pointed out that it had interest to act against the Romanian patent resulting from the extension because of the proceedings pending before the Romanian court, and in particular in having the nullity proceedings stayed until the outcome of the present appeal proceedings was known. The Board accepts that such an interest to act may exist. However, taking into account the legal situation described above concerning the intervention pursuant to A 105(1)(a), the SC company has to act before the Romanian national legal institutions.

[3.1.18] As a consequence, the intervention of company SC, based on the infringement proceedings before the Romanian court based on Romanian patent RO/EP 1108424 resulting from the extension to Romania of the European patent under consideration, is inadmissible because it does not comply with the requirements of A 105(1)(a).

[3.2] A 115, first sentence, provides that in proceedings before the EPO, following the publication of the European patent application, any third party may present observations concerning the patentability of the invention to which the application or patent relates. The documents filed by the SC company concerning the patentability of the invention that is the subject of the patent under consideration are considered to be third party observations pursuant to A 115, first sentence. However, the Board underlines that, pursuant to A 115, second sentence, the SC company is not a party to the proceedings. As to the substance of the case, the letters dated February 24, 2009, December 15, 2009 and October 27, 2010, which are considered to be third party observations pursuant to A 115, do not contain elements that had not been mentioned by the appellant yet.

Referral to the EBA

[4.1] The SC company has asked the Board to refer a question to the EBA in case it would decide that the EO would lead to issuing national patents. According to the SC company, the question of the legal nature of a European patent that has been extended to Romania and the related question of whether an intervention pursuant to A 105 was admissible constitute points of law of fundamental importance.

[4.2] According to A 112(1) EPC 1973, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required.

A question involves a “point of law of fundamental importance” within the meaning of A 112(1)(a) if it is relevant in a substantial number of similar cases and is therefore of great interest not only to the parties in the present appeal but to the public at large. (see, for instance, T 271/85). However, a question that involves a point of law of fundamental importance does not necessarily have to be referred to the EBA if the Board itself can answer it without doubt (see, for instance, J 5/81; T 198/88; J 22/95; Case Law, 6th edition 2010, VII.E.14.2). The Board has explained in detail (see points [3.1.7-14] above) why Romanian patent RO/EP 1108424, which has been obtained by extension to Romania of the European patent under consideration, is not a national parent granted in Romania, but a patent that is exclusively based on national law, i.e. on Romanian law, and not on the Convention. The Board has also explained why Romanian patent RO/EP 1108424 is not a European patent within the meaning of A 2(1) EPC 1973 and why the intervention pursuant A 105(1)(a) is, therefore, inadmissible.

[4.3] As mentioned above (see points [3.1.1-18] above), the present Board has no doubts that in the present case the intervention is inadmissible because Romanian patent RO/EP 1108424 does not correspond to European patent EP 11108424, which is the subject of the present opposition appeal proceedings. Consequently, one of the conditions of A 105(1)(a) is not fulfilled. Therefore, there is no point of law of fundamental importance which would have to be clarified by the EBA.

[4.4] These reasons have led the Board to decide that there is no need for referring the questions of the SC company to the EBA.

R 106 objection

[5] The objection raised under R 106 has to be rejected for the following reasons:

A 113(1) EPC 1973 provides that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. The right to be heard within the meaning of A 113(1) EPC 1973 applies to all proceedings before the EPO and to all parties to the proceedings (Singer/Stauder, op.cit., article 113, 2). Third parties which, according to A 115, second sentence, are not parties to the proceedings, cannot invoke the right to be heard (G 4/88 [2]). Neither the European Patent Organisation nor the State of Romania are parties to the present proceedings under A 107 EPC 1973. Consequently, in the present case, the fact that the Board has not given the European Patent Organisation and the State of Romania the opportunity to file observations does not violate the right to be heard.

A hardly surprising outcome.

On a teleological level, one might add that the possibility of intervening in opposition proceedings is justified by the fact that the fate of the patent can be decisive for the outcome of the infringement proceedings: a revocation of the opposed patent will deprive the infringement proceedings of their very cause. There is no equivalent justification here because even if the European patent is revoked, the Romanian spin-off is not (at least not automatically). It may be found to be valid by a Romanian court. In other words, there is no direct effect of the revocation (or limitation) on the infringement proceedings before the Romanian court.

To read the whole decision (in French) or have a look at the file wrapper, click here.

NB: The decision is also commented on Le blog du droit européen des brevets. 

You can listen to the Romanian rhapsody here.

T 1130/09 – Two Will Do

The applicant appealed against the decision of the Examining Division (ED) to refuse its application based on the finding that the subject-matter lacked novelty.

Claim 1 of the main request before the Board read (in English translation):

Substrate having a micro-structured surface at least part of which comprises a biocompatible polymer of the following general formula (I)

wherein n goes from 2 to infinity, R1 to R6 are the same or different and represent an alkoxy, an alkylsulfonyl, a dialkylamino, or an aryloxy residue, or a heterocycloalkyl or heteroaryl residue where the hetero atom is nitrogen, and wherein the surface structures have a dimension of between 10 nm and 100 μm.

In what follows the Board answers the question of whether this claim is novel.

*** Translation from the German ***

[3.1] The subject-matter of claim 1 concerns a substrate having a micro-structured surface at least part of which comprises a biocompatible polymer of general formula (I)and wherein the surface structures have a dimension of between 10 nm and 100 μm.

[3.2] In the impugned decision only document D2 was cited in respect of novelty.

Document D2 also discloses a substrate the surface of which is coated with a polyphosphazene according to formula (I) of the application under consideration. The substrate can also be micro-structured […]. The only disclosure concerning structural dimensions […] reads:

“One is not limited by the structural size of the substrate. Therefore, structures of the order of nanometres, microns or even larger or smaller can be manufactured.”

It is true that document D2 does not disclose a specific range defined by specific upper and lower limits, but by referring to structures of the order of nanometres or microns and by referring to the substrates as being micro-structured substrates it defines a range of dimensions that is limited to such microstructures.

The impugned decision invoked the principle of selection inventions by applying the three criteria of decision T 198/84 [7]. This principle is to be applied when a narrow sub-domain is selected from a greater domain.

The description […] of document D2 discloses that the structural dimensions are of the order of microns or nanometres. Thus the specific claimed domain of between 10 nm and 100 μm is a narrow selection, as already mentioned in the impugned decision. Moreover, as there are no exemplary values in D2, this selection has to be considered to be remote from the central embodiments of document D2. Thus the two first criteria of T 198/84 are satisfied.

However, the third criterion, according to which a technical effect is to be established, cannot be considered in the assessment of novelty, because novelty and inventive step are two distinct requirements of patentability. A technical effect that occurs in the more narrow claimed domain cannot justify the novelty of a domain of values that is novel as such, but can only confirm the novelty of this more narrow claimed domain. However, the question of whether there is a technical effect or not is related to inventive step (see T 1233/05 [4.4], T 230/07 [4.1.6]).

Therefore, the Board is of the opinion that document D2 does not disclose the claimed domain of 10nm to 100 μm and that the subject-matter of original claim 1 is novel over document D2 within the meaning of A 54.

The Board then referred the case back to the ED.

I think this approach is to be approved. It has been criticized in the legal doctrine, for example by Prof. Vigand in the French periodical Propriété Intellectuelle, Décembre 2010, p. 17, in an article dedicated to T 1233/05 (my translation of the French original):

… When the prior art is prior art that is relevant for novelty only (A 54(3) EPC), it is absolutely indispensable to have demanding and precise standards for applying the criterion of novelty.

Therefore, the third condition is necessary because if it is not included, the second applicant, who has not invented anything, can annex considerable portions of the domain claimed by the first applicant.

Thus, if the first [applicant] had covered a domain from 1 to 100, with one example at 80, the subsequent applicants could obtain sub-domains by slices of 10 (from 1 to 10, from 10 to 20, and so on) as long as the first patent has not yet been made accessible to the public. …

With due respect, I do not find this plea very convincing. By abandoning the third criterion, the Board puts an end to mixing novelty and inventive step. In my opinion, the fact that this may lead to regrettable results when the prior art is of the A 54(3) type is more related to the logic behind A 54(3) – which has its flaws – than to selection inventions. In other words, I find it untoward to introduce a dose of inventive step into criteria for novelty assessment in order to mask undesirable side effects of the A 54(3) novelty-only regime.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

NB: There was a post on T 230/07 on this blog, plus some interesting comments left by readers.