A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature.
A closer inspection of G 1/93 shows that the Board had disclaimers in mind when drafting this headnote, but for some reasons unknown to me, the word “disclaimer” is mentioned only once in the decision (point [7], citing an argument of the patent proprietor). As it stands, the headnote could also refer to “features that do not provide a technical contribution” other than a disclaimer, and it has indeed often been understood in this way.
The present decision is interesting in this respect.
Claim 1 of the patent as granted read:
A friction lining mixture for brake and clutch linings co-operating with a friction partner, composed of metals that may be present in fibrous and powdery form, fillers, lubricants, binders and organic components, characterized in that the friction lining mixture contains, as a solid lubricant additive, at least one metal sulphide of the formula
wherein M1, M2 and M3 are different from each other and each represent one metal of the series Ti, V, Mn, Fe, Cu, Zn, MO, W, Sb, Sn and Bi, S denotes sulphur, and the subscripts comprise the ranges of I = 1-5, m = 1-5, n = 0-5 and X = 2-8.
The appeal under consideration was filed by the opponent after the Opposition Division had maintained the patent in amended form.
Claim 1 of the main request filed during oral proceedings (OPs) before the Board read
Use of a solid lubricant additive containing at least one metal sulphide of the formula
as solid lubricant, wherein M1, M2 and M3 are different from each other and each represent one metal of the series Ti, V, Mn, Fe, Cu, Zn, MO, W, Sb, Sn and Bi, S denotes sulphur, and the subscripts comprise the ranges of I = 1-5, m = 1-5, n = 0-5 and X = 2-8, in a friction lining mixture for brake and clutch linings co-operating with a friction partner, composed of metals that may be present in fibrous and powdery form, fillers, lubricants, binders and organic components.
The Board first dismissed several objections under A 100(c) and then went on to say:
*** Translation of the German original ***
[3.1.3] As rightly pointed out by the [opponent], the feature “composed of metals … fillers, lubricants, binders and organic components” was not disclosed in the original version of the application. However, it was disputed whether the corresponding amendment made the maintenance of the patent impossible or whether it was allowable in application of decision G 1/93.
In this decision the Enlarged Board came to the following conclusion:
“A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of A 123(2). The ground for opposition under A 100(c) therefore does not prejudice the maintenance of a European patent which includes such a feature.
In the present case the feature was introduced into the claims during the examining proceedings. It is also undisputed that it limits the scope of protection conferred by the patent as granted. The feature could be found allowable only if it does not provide any technical contribution to the subject-matter of the claimed invention.
The [opponent] was of the opinion that the feature was essential for the invention (erfindungswesentlich), that it did delimit the subject-matter of the claims with respect to the state of the art and that, as a consequence, it did provide a technical contribution […].
This is to be approved insofar as this feature, when it was introduced within the framework of the examining proceedings, was indeed intended to delimit the subject-matter of the claim with respect to the state of the art. However, as will be explained in point [7] below [wherein the Board demonstrates the novelty of claim 1], this does not hold true for the use claims any more […]. As correctly stated in the impugned decision, the technical focus is on the use of the sulphides as solid lubricant additive in friction lining mixtures. This additive is intended to reduce wear and the dependence of friction on temperature and pressure […]. This intended contribution to the effect of the friction linings is to a large extent independent of the other components of the friction lining mixture. Therefore, the definition of the other components of the mixture does not provide any technical contribution to the claimed invention but merely delimits the subject-matter of the claims.
As a consequence, in agreement with decision G 1/93, there is no reason why the insertion of this definition into present claim 1 would make the maintenance of the patent impossible. […]
The decision also deals with an objection against the validity of the priority claim, which was decisive for deciding whether document D14 could be cited against the patent:
[6.1] The European patent application D14 was filed on October 14, 1996, claiming a priority of October 16, 1995. Therefore, its priority date lies between the priority date (May 17, 1995) and the day of filing (April 12, 1996) of the impugned patent. Therefore, the application D14 can only be prior art under A 54(3) if
- the priority of D14 is valid, and
- the priority of the impugned patent is not.
3 comments:
Does this tally with everyone's understanding of G 1/93?
I seem to remember Myshkin arguing "that it is not the case that a feature added to a claim that is already novel and inventive does not provide a "technical contribution" in the sense of G 1/93 (and would therefore not infringe Art. 123(2) and escape the trap). In my view, the addition of a technically limiting feature always provides a technical contribution. Otherwise, compliance with Art. 123(2) would be very much dependent on the available prior art, which would go against G 2/98, par. 8.3 (the tests underlying Art. 87(1) and 123(2) being identical)."
See http://k-slaw.blogspot.com/2011/06/t-187808-significant.html
I for one would say that this decision is not quite in line with how I understand A 123 and G 1/93. Still, I think that it is well worth knowing because it may prove to be useful in an otherwise desperate situation.
It might not have helped that the opponent also seems to have been of the view that "providing a technical contribution" has to do with the feature being important for novelty or inventive step.
From G 1/93:
"5. In case T 231/89, the Board of Appeal held that a scope- limiting feature in a claim, added before grant in contravention of Article 123(2) EPC, may remain in the claim notwithstanding its character of added matter, provided such feature is immaterial in respect of the novelty and inventive step of the claimed subject-matter. This consideration has been criticised by the opponent as based on irrelevant speculation about a relationship between paragraphs 2 and 3 of Article 123 EPC, which was unnecessary to the decision in that case and which took place where no arguments on the question had been advanced. (...)
13. The Enlarged Board agrees with the opponent that there is no support under the EPC for the idea expressed by the Board of Appeal in case T 231/89, that there is a mutual relationship between paragraphs 2 and 3 of Article 123 EPC, the one to be applied as primary and the other as subsidiary depending on the facts of the individual case. This interpretation is not in line with the mandatory character of Article 123(2) EPC, as explained by the Enlarged Board in its opinion in case G 3/89 (OJ EPO 1993, 117). Paragraphs 2 and 3 of Article 123 EPC are mutually independent of each other. Thus, if a limiting feature is considered to fall under Article 123(2) EPC, it cannot be maintained in the patent in view of Article 100(c) EPC, nor can it be removed from the claims without violating Article 123(3) EPC."
I think it is quite clear already from the above passages of G 1/93 that "not providing a technical contribution" is not the same as "being immaterial in respect of the novelty and inventive step of the claimed subject-matter". Yet that is how the Board in T 535/08 appears to interpret G 1/93.
In my view the above passages of G 1/93 also make clear that a feature that "does not provide a technical contribution" simply does not infringe Art. 123(2), even if there is no question of an Art. 123(2)/(3) trap. Art. 123(2) must be applied independently of Art. 123(3). In other words, it is not the case that the presence of an Art. 123(2)/(3) trap somehow relaxes the requirements of Art. 123(2). It follows that what is stated about the disclosure test of Art. 123(2) in decisions G 2/98, G 1/03 and G 2/10 also applies in the presence of such a trap. (Even though in those later decisions the EBA does seem to view G 1/93 as being tied to its specific legal situation...)
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