Saturday, 6 August 2011

T 644/09 – Over The Top

It is true that amendments of the description can sometimes lead to inadmissible extensions of a patent, in particular when the amendments concern statements with respect to the prior art. Examples can be found here and here.

The present case shows a situation where the opponent, who had filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form, argued that an amendment of the description infringed A 123(2). Inter alia, the amendment of paragraph 38 was criticized.

The Board was not persuaded:

*** Translation of the German original ***

[1.3.1] The [opponent] criticized the insertion of the expression “according to the invention” (erfindungsgemäß) into paragraph 38 of the opposed patent as granted. According to the [opponent], the skilled person would learn from this paragraph that an embossed layer 8 can be arranged below or above the layers 10 to 13.

[1.3.2] Paragraph 38 explains the embodiment of figure 8.

Both in the figure and in the corresponding text on page 11 of the version as originally filed, the order of the layers is determined without ambiguity: a screened metal layer is provided on top of a transparent lacquer layer, and a thermochromic layer is provided below.

[1.1.3] This corresponds to the wording of claim 1 and, therefore, can be said to be “according to the invention”. There is no extension.

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

The file wrapper can be found here.