Friday, 16 September 2011

T 1855/07 – Clear Words On Clarity

The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

The OD had found claim 1 of the patent as granted to lack inventive step. This claim read:
1. Method for activating a vehicle occupant protection application (7) in a motor vehicle (1), having the following steps:
   measurement of the rotational acceleration (ax) of the motor vehicle (1) about an axis (x) of rotation which is parallel to the longitudinal axis of the vehicle, by means of a rotational acceleration sensor device (4);
   evaluation of the measurement results by means of a computational unit (5) for evaluating the vehicle situation with respect to its environment; and
   activation of a suitable protection application (7) in the event of the evaluation indicating an imminent roll-over process of the motor vehicle (1), characterized in that the activation is determined as a function of a logical linking of the rotational acceleration (ax) of the rotational speed (wx) and of the translator accelerations in the vertical direction (az) of the vehicle and in the transverse direction (ay) of the vehicle.
Claim 1 of the patent as maintained had the additional feature:
“… a classification of the profile of the rotational acceleration being carried out on the basis of motor vehicle trials.”
This feature was apparently taken from claim 6 as granted, which read:
6. Method according to one of the preceding claims, characterized in that the profile of the rotational acceleration can be classified on the basis of motor vehicle trials.
The opponent pointed out that it was not clear which function this additional feature had within the claimed method and how the classification was taken into account in the activation of the protection application.

In its preliminary opinion, the Board had stated that it did not feel free to examine the clarity of claim 1 as amended because it had been obtained by combining claims 1 and 6 as granted.

The opponent pointed out that the wording of claim 6 as granted, which comprised a « can », indicated that this feature was optional, and should, therefore, not have been taken into account in the examination proceedings …

The opponent also pointed out that there were decisions (such as T 656/07 and T 1459/05) challenging the established case law and asked the Board to remit the following questions to the Enlarged Board of Appeal (EBA): (my translation)
1. Is the entitlement of an OD and of a Board of appeal under A 102(3) EPC 1973 and A 101(3)(a) EPC 2000, respectively, to examine whether claims that have been amended during opposition proceedings comply with the requirements of the EPC, to be understood such that only certain types of amendments, or any amendment, which could generate a deficiency under A 84, are to be taken into account?

2. If only certain types of amendments are to be taken into account, do they correspond to limitations of the patent as granted by incorporation of single features or groups of features, which are not contained in the claims as granted?

3. If so, are those single features or groups of features, which are not contained in the claims as granted to be understood to comprise also amended features taken from the claims as granted?
In what follows, the Board deals with the question of whether the A 84 objections are admissible:

*** Translation of the German original ***

[2.1] The expressions “independent” and “dependent” claims stem from R 29 EPC 1973, which dealt with the form and contents of the claims.
“Any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention.” (R 29(3) EPC 1973)
Such a claim is, as a rule, referred to as independent claim.
“Any claim which includes all the features of any other claim (dependent claim) shall contain, if possible at the beginning, a reference to the other claim and then state the additional features which it is desired to protect.” (R 29(4), first sentence, EPC)
Therefore, the particularity of a dependent claim within the meaning of R 29(3) EPC 1973 is that it protects a particular embodiment of the invention that is already defined in the independent claim. Such a claim necessarily belongs to the same category as the higher-ranking independent claim. For reasons of conciseness (A 84, second sentence, EPC 1973), such dependent claims indicate, via their reference pursuant to R 29(4) EPC 1973, that they contain all the features of the higher-ranking independent claim.

There is no doubt that a claim which, being a dependent claim (within the meaning of R 29(4) EPC 1973), refers to the independent claim containing the essential features of the invention, protects exactly the same embodiment of the invention as a claim which is drafted as an independent claim and in which the reference [to the independent claim] is replaced by the inclusion of the wording of the independent claim.

[2.2] Regarding the question of the [opponent] whether the Board was entitled to examine claim 1 as amended in respect of clarity, it first has to be noted that lack of clarity pursuant to A 84 is not a ground for opposition pursuant to A 100.

This means that, irrespective of the way in which the granted claims are drafted, an opposition cannot be based on the allegation that the claims as granted are unclear. It follows from this finding and from what has been said under [2.1] above that a syntactical incorporation of a dependent claim into an independent claim cannot trigger an objection under A 84 EPC 1973.

[2.3] This Board is well aware of the fact that the EBA, in its decision G 9/91 [19], has emphasized that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, A 102(3) EPC 1973 requires that such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. also with A 84 EPC 1973).

However, the case law of the Board of appeal (BoA) provides that [a Board] is not entitled to examine conformity with A 84 EPC 1973 when the amendment simply consists in a syntactical incorporation, where a reference to the independent claim as granted is replaced by the inclusion of its full wording in the claim on file (Case Law of the BoA of the EPO, 6th edition, 2010, VII.D.4.2 and in particular T 367/96 [6.2]).

Many decisions of the BoA have confirmed this view. As soon as in T 301/87 [3.8] it was stated:
In the Board’s judgement, when amendments are made to a patent during an opposition, A 102(3) requires consideration by either instance as to whether the amendments introduce any contravention of any requirement of the Convention, including A 84; however A 102(3) does not allow objections to be based upon A 84, if such objections do not arise out of the amendments made.
The Board goes on to say:
… it would seem to be somewhat absurd if the making of a minor amendment could enable objections outside A 100 to be raised which have no connection with the amendment itself.
The competent BoA in cases T 472/88 [2] as well as T 326/02 [6.1-5] and T 381/02 [2] come to the same conclusion as decision T 301/87.

These relevant decisions of the BoA distinguish between factual amendments, which are to be examined in view of compliance with the requirements of the EPC pursuant to A 102(3) EPC 1973, and between merely formal, syntactical claim amendments, which do not give rise to a new objection outside A 100.

[2.4] The Board adopts this view in the present circumstances. The present combination of granted claims 1 and 6 to form new amended claim 1 cannot be considered to constitute a factual amendment that would necessarily entail an assessment pursuant to A 102(3). Rather, the wording of this claim is the result of a syntactical amendment of the set of claims.

The [opponent] has referred to the optional (“can”) wording of claim 6 as granted. The Board is of the opinion that the elimination of this option does not modify the substance of the subject-matter that has been claimed on the patent as granted. Present claim 1 as amended and claim 6 as granted both claim the same method. The Board has no doubt that the granted version of claim 6 complied with the wording of R 29(4), first sentence, EPC 1973, as it referred to claim 1 as granted.

It follows that the Board cannot endorse the submission of the [opponent] concerning the question of whether the objections under A 84 EPC 1973 can be admitted into the present proceedings. Therefore, the objection under A 84 EPC 1973 is not taken into account, in conformity with the established case law.

Request for a referral to the EBA

[2.5] In view of the fact that the request for admission of objections under A 84 EPC 1973 into the proceedings has been dismissed, the Board has to examine the request of the [opponent] for a referral of its question pursuant to A 112(1)(a) EPC 1973.

This article provides that in order to ensure uniform application of the law, or if an important point of law arises, the BoA 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 for the above purposes.

As explained under [2.1] to [2.4] above, the Board’s dismissal of the request to consider objections under A 84 EPC 1973 in the present proceedings is in line with the established case law of the BoA of the EPO.

The [opponent] has referred to decisions T 1459/05 and T 656/07 which it considered not to be in line with this case law and which make it questionable whether the application of the law is indeed uniform.

The first decision cited, T 1459/05 [4.3.4], exceptionally derives the entitlement to examine the clarity of a claim resulting from a mere combination of the features of the granted claim with the feature of a dependent claim from the fact that “in the present case the technical meaning of the single added feature o) is decisive for the assessment of the subject-matter of the claim, because a difference with respect to the prior art disclosed in E1 might only be defined on the basis of this feature. However, this technical meaning is so unclear, even for the skilled person, that such a difference cannot be discerned or defined with an indefiniteness that the skilled person can be expected to deal with.”

Thus the entitlement to examine clarity is justified by the result of the clarity assessment. From a logical point of view, this approach appears to be somewhat problematic and difficult to understand. Point [4.3.5] of the reasons provides some general remarks on the validity of the assumption that the claims as granted have been examined as to their clarity by the Examining Division. However, the problem that the clarity of a claim cannot be a ground for opposition is not dealt with in this decision.

The Board is of the opinion that the second decision cited by the [opponent], T 656/07, constitutes a very particular case that cannot be generalised because it deals with an unusual claim construction. (Claim 1 as granted contains a reference to two claims of lower rank that are directed to subject-matter that differs from the subject-matter of claim 1 as granted.) T 1659/07 [5] shares this view of decision T 656/07.

However, a referral in order to ensure uniform application of the law can only be made if the Board considers that a decision of the EBA is required (see the wording of A 112(1)(a) : “… if it considers that … is required …”). Therefore, the Board has to exercise its discretion when deciding whether it wishes to refer [the question] to the EBA. This is not the case here. For the reasons exposed in points [2.1] to [2.4] above, there is no reason to depart from the established case law. The two decisions cited by the [opponent] do indeed depart from the established case law as explained above, but they are isolated in the case law of the BoA. For this reason alone, the Board cannot see any good reason for a Board wishing to apply this established case law to refer such legal questions to the EBA. This is all the more true when – as here – the dissenting decision does not deal with the main concern (tragender Gedanke) of the case law, i.e. that lack of clarity is not a ground for opposition.

Given these facts and taking into account all the relevant circumstances of the case the request for a referral to the EBA is dismissed.

[2.6] The Board is of the opinion that if in a case corresponding to the above citation from T 1459/05 a feature introduced from a dependent claim as granted is so unclear that it cannot be ascribed any technical meaning, then this fact should be taken into account in the assessment of novelty or inventive step, respectively. However […] this is not the case here.

Although I fully agree with this decision, I am not so sure that the case law is as established as is suggested here. Besides T 1459/05 (Board 3.2.03) and T 656/07 (Board 3.2.02) one might also cite decisions T 1484/07 (Board 3.3.10) and T 1440/08 (Board 3.2.08). It would be great if the EBA could clarify this issue once and for all, but I fear that the very particular nature of the dissenting decisions will make an (admissible) referral difficult and unlikely.

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

The file wrapper can be found here.


Anonymous said...

I agree with both the decision and your wise comments. The board got off lightly as it only dealt with the diverging decisions specifically mentioned by the opponent. Once the board had gone (politely) for thr jugular on T 1459/05 then it clearly thought its work was done. A shame, as this is an important issue where there is genuine divergence among the boards.

pat-agoni-a said...

The reason for avoiding A 84 as ground for opposition was in my understanding that it was seen as undesirable that oppositions be filed for this reason alone. Hence I fail to see the reason for upholding a patent with a manifestly unclear independent claim when keeping this in mind.

A lack of clarity in a dependent claim can remain unrecognized even after "examination". It has a different weight when this claim is incorporated into the independent claim, as then the whole of the patent becomes unclear. Is it not the duty of the EPO (and that of the BoA) to ensure that mainly valid patents are granted and upheld? Is this duty fulfilled by closing the eyes on an unclear independent claim for the sole reason that this defect was already present, but possibly unrecognized, in a dependent claim?

It would indeed be interesting to hear what the EBA has to say on this issue nowadays.