Monday, 26 September 2011

T 578/08 – Because It’s There


The opponent appealed against the decision of the Opposition Division to reject his opposition.

All the claims of the Italian priority application were directed to a method for determining the recirculation value of a suspension. For instance, claim 1 as filed read:
1. Metodo di determinazione del valore del ricircolo di una sospensione comprendente un solvente ed almeno un soluto, fluente in un circuito primario, e sottoposto a trattamenti di filtraggio ed ultrafiltrazione in un circuito secondario comprendente una linea di ingresso di prelevamento della sospensione dal circuito primario, un filtro includente una membrana semipermeabile, ed una linea di uscita di reimmissione della sospensione nel circuito primario, il ricircolo di detta sospensione avvenendo in detto circuito primario tra detta linea di uscita e detta linea di ingresso, caratterizzato dal fatto di comprendere le fasi di:
  • comandare una variazione di flusso di ultrafiltrazione in detto circuito secondario in modo tale da modificare la concentrazione di detto soluto in detta linea di uscita;
  • immettere la sospensione a concentrazione modificata in detto circuito primario; e
  • determinare il valore (AR) del ricircolo di detta sospensione in base ad una variazione di concentrazione del soluto indotta in detta linea di ingresso.
which can be translated as follows:
Method for determining the recirculation value of a suspension comprising a solvent and at least a solute, flowing in a primary circuit, and subjected to filtering and ultrafiltration treatments in a secondary circuit comprising an inlet line for withdrawing the suspension from the primary circuit, a filter including a semi-permeable membrane and an outlet line for re-injecting the suspension into the primary circuit, the recirculation of said suspension occurring in said primary circuit between said outlet line and said inlet line, characterized in that it comprises the steps of:
  • driving a variation of the ultrafiltration flow in said secondary circuit so as to modify the concentration of said solute in said outlet line;
  • injecting the suspension with modified concentration into said primary circuit; and
  • determining the value (AR) of the recirculation of said suspension based upon a variation of the solute concentration induced in said inlet line.
The patent as granted only claimed a blood treatment system. Claim 1 read:
1. Blood treatment system comprising:
  • a blood treatment apparatus (12) with semipermeable membrane;
  • an arterial line, intended to interconnect a vascular access (1 1) of a patient with an inlet of the treatment apparatus (12);
  • a venous line (14) intended to interconnect an outlet of the treatment apparatus (12) with the vascular access (11);
  • means for inducing plasma fluid filtration through the membrane of the treatment apparatus (12); 
  • means for determining a parameter signifying the blood concentration and are arranged on the arterial line (13); 
characterized in that it includes computation and control means for:
driving the means for inducing plasma fluid filtration in such a way as to generate a momentary variation of the blood concentration in the treatment apparatus (12) by momentarily reducing or increasing the proportion of blood plasma fluid circulating in the membrane apparatus,
storing values of the parameter signifying the blood concentration, and
calculating the blood recirculation on the basis of the values which the parameter takes in response to a determined drive programme of the means for inducing a blood concentration.
Among other things, the opponent claimed that the priority claim was not valid.

In what follows, the Board deals with this question.

*** Translation of the French original ***

[2] In what follows, the Board refers to the French translation (filed by the [patent proprietor] on June 10, 1998) and the English translation (filed by the [opponent] on September 9, 2005).

[2.1] It is not necessary to recall that in its opinion G 2/98, the Enlarged Board of appeal has explained that a claim may benefit from the priority of a former application if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.

It is undisputed by the parties that the description and the drawings of the previous application and of the patent as granted are almost identical. However, the patent as granted only comprises device claims whereas the previous application only comprises method claims.

However, it is already clear from the wording of the method claim 1 of the previous application that there have to be structural device components because the suspension referred to in this claim has to flow in a primary circuit and be subjected to filtering and ultrafiltration treatments in a secondary circuit comprising an inlet line for withdrawing the suspension from the primary circuit, a filter including a semi-permeable membrane and an outlet line for re-injecting the suspension into the primary circuit.

Moreover, the wording of claim 1 of the method claim of the previous application requires
  • driving a variation of the ultrafiltration flow in said secondary circuit so as to modify the concentration in said solute in said outlet line;
  • injecting the suspension with modified concentration into said primary circuit; and
  • determining the value of the recirculation of said suspension based upon a variation of the solute concentration induced in said inlet line.
It goes without saying for the skilled person that the method steps can only be carried out if there are appropriate technical – and, therefore, structural – means allowing to perform the claimed functions. Therefore, the claims, and in particular claim 1 of the previous application, implicitly disclose appropriate general means allowing to perform the claimed functions. For instance, driving a variation of the ultrafiltration flow in the secondary circuit so as to modify the concentration of the solute in the outlet line, requires appropriate technical means for driving the variation of the ultrafiltration flow. Therfore, for the skilled person, these general technical means are implicitly disclosed by the disclosure of the process step that requires them. The same holds true for the other technical means allowing to carry out the other claimed method steps.

Thus the Board is of the opinion that for the skilled person, the structural means of the device claimed in claim 1 of the patent as granted are already disclosed by the features of method claim 1 of the previous application, either explicitly, where the claim mentions structural features, or implicitly, where it mentions functional features. Moreover, the previous application mentions several times that the method that is claimed and disclosed is performed automatically, which implies the presence of corresponding technical means.

As the assessment of the validity of the priority is not limited to a comparison of the claims of the patent and the claims of the previous application, see A 88(4), the skilled person can indeed refer to the description for completing his understanding of the claim.

Thus the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. Thus the priority is validly claimed; the requirements of A 87 and A 88 have been complied with.

[2.2] The [opponent] considers that the subject-matter of claim 1 as granted is an undisclosed generalisation of the specific device disclosed in the previous application.

As it has explained above, the Board is of the opinion that the most general disclosure of the invention given in the priority document is defined by claim 1 and that, taking into account the teaching of the this document as a whole, [this disclosure] discloses the general technical means allowing to carry out the claimed method. Whether the device disclosed in the previous application is more specific than the one claimed in the patent as granted, or not, is not relevant.

Normally the case law requires the EPO to apply the same standard (“directly and unambiguously”) when examining whether A 123(2) and A 87 have been complied with. I may be wrong, but I have the impression that the present decision is not as strict as what we usually see in A 123(2) assessments.

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

The file wrapper can be found here.

10 comments:

Laurent said...

English, German (including some Austrian dialects), French, now Italian, is there one language that Oliver cannot speak and/or read ? :-)

Michael Thesen said...

Let's face it: Oliver is the Rosetta stone of European Patent Law.

oliver said...

lol

I do have some difficulties with what the Swiss have made of the German language.

As far as the Rosetta stone is concerned, the only thing I might have in common with it is its body-mass index. ;-)

Rimbaud said...

Incredibile! Oliver anche parla il latino moderno!
Tradurre con tale velocità ed in ogni possibile lingua non puo essere umano.
Credo invece che Oliver sia un tipo di macchina di traduzione automatica anche capace di computare il diritto dei brevetti europei.

oliver said...

Rimbaud, aurais-tu forcé sur l’absinthe ?

Ah, vous valez bien votre pesant de cacahuètes, les amis !

Rimbaud said...

Oui Oliver, j'ai été forcé de forcer sur l'absinthe pour parvenir à sortir trois phrases en latin moderne.
On fait ce qu'on peut pour suivre ton rythme babélien.
Tu fais vraiment un travail de Romain!
Chapeau.

Anonymous said...

I like alpinism as much as the other man: no doubt that is what the title of your important language discussion refers to: Because It's There. The same can be said of the Italian-to-English translation you provided: it was there, in the file, since 14 September 2005, along with the Italian original, as you yourself report. The good thing about the European system is that texts are translated into the language of proceedings, so there are many languages you do not really need to know. Unless:

if the case had turned on the quality of the translation of the priority document. Alas, the translation from Italian into English (or French), is unremarkable and precise, even though the original has terminological problems they are faithfully recreated.

Too many times I have come across imprecisions in the translation of the priority filing into the language of the proceedings, and in some cases these translations have been used to create structure and to delimit the invention, by suitable choice of words. The EPC is curiously silent on what should be done if the granted patent is not based on the first, non-proceedings-language version, but rather on the filed translation of this document. And I have not been able to find case law.

I find the handling of the language matter in modern patent law worrying. European examiners will rely on "English"-language abstracts of e.g. Japanese publications, and even when you prove by independent sworn translation that the content of the Japanese publication says the opposite of the abstract, the applicant has still not been subjected to substantial procedural violation and has to carry the burden of a correct translation himself.

Thank you for your ever-interesting reports!

Kind regards

George Brock-Nannestad

oliver said...

Hello George,

Good to hear from you.

Yes, you are right - a translation was actually there. The translation I gave is a slightly amended version of this translation. Perhaps I should have said so, but I did not feel the need.

I share your concerns regarding language matters, which can be a real nuisance, but at the same time I like the linguistic aspect of our profession very much. I for one certainly would not want to miss it.

Myshkin said...

@George:
"The EPC is curiously silent on what should be done if the granted patent is not based on the first, non-proceedings-language version, but rather on the filed translation of this document."

I'd say the answer follows easily from the EPC.

If the "first, non-proceedings-language version" is the priority document and the translation is the application as originally filed, then the granted patent complies with Art. 123(2), but might not benefit from a right to priority. The latter is only relevant if there are intermediate documents.

If the "first, non-proceedings-language version" is (identical to) the application as originally filed, then a granted patent based on an inaccurate translation does not comply with Article 123(2) EPC.

"European examiners will rely on "English"-language abstracts of e.g. Japanese publications, and even when you prove by independent sworn translation that the content of the Japanese publication says the opposite of the abstract, the applicant has still not been subjected to substantial procedural violation and has to carry the burden of a correct translation himself."

Well, of course there is no substantial procedural violation if the ED relies on an English-language abstract. And if the very reasonable assumption that the abstract correctly represents the content of the document in a specific case turns out to be wrong, that doesn't turn the reliance into a procedural violation, either.

Anonymous said...

thank you, Myshkin, for commenting on my comment and plea.

There were two issues: I have to admit that I was imprecise in stating that the EPC is curiously silent on the matter of defects in the translation of the first filing, the priority document. Obviously, the regulation is there. What is missing is information on who is responsible for checking the validity of the translation. It could be among the instructions for checking formalities that is invariably performed before examination starts, or it could be among the instructions for substantive examination. I suppose it could be introduced via Art. 115, but that is not the responsibility of the EPO. Is it really up to the potential opposer to check these things and invoke Art. 123(2) in oppositions?

As to the issue of trusting that an abstract is a correct representation of the content of the original text: ought not the abstract’s use of an imprecise, ungrammatical, and otherwise extremely primitive English warn the professional reader that the logical inferences that might be drawn from it are extremly questionnable? Sadly, probably very few of the European examiners have a knowledge of English (approaching English as a first language) that would reveal this. And why single out English – we have three official languages? Well, the reason for singling out English is that that is the purported language of the abstracts in question.

You probably have as much experience as I in translating claims for validation purposes, and you will no doubt have come across agonising original texts in the language of proceedings that are a hell to translate. The rescue comes by applying the play-it-safe principle: when in doubt go for the broader concept. But that cannot be done when being still in the proceedings.

Best wishes,


George