Friday, 13 July 2012

T 523/10 – Be Consistent

When you try to establish, inter alia, insufficiency of disclosure of a patent you oppose, you have to be careful with the rest of your arguments. That is what the opponent had to learn in the present case. Anything you say can be used against you by a Board of appeal …

Claim 1 on file read:
1. A solid detergent composition in the form of granules, the composition comprising from 10 to 60 wt % of a surfactant system and having a maximum Residues Index (RI) of 25 and a maximum Secondary Residues Index (SRI) of 15, wherein the composition is free of phosphate-containing builder material, wherein the composition comprises from 1% to 80% by weight of a water-soluble and/or partially water-soluble builder compound, wherein the composition comprises below 9 wt % aluminosilicate builder, wherein the composition comprises a highly water-soluble carboxylate- or carboxylic acid-containing compound in an intimate mixture with one or more surfactants, wherein the surfactant comprises an anionic surfactant of which 50 to 100 wt % is an anionic sulphonate surfactant.
The Board decided to admit documents D18 and D19 as well as RI and SRI values presented by the opponent into the proceedings and then discussed compliance with the requirements of A 83:

[2.1] The [opponent] in essence argued, that the structural features concerning the composition, like the amounts and kinds of ingredients, are not linked to the functional features RI and SRI. Meeting only the structural features does therefore not automatically mean that the functional features are also met. Since the patent-in-suit does not contain sufficient information on how to select a suitable composition possessing the required RI and SRI values, the requirement of sufficiency of disclosure is not met.

[2.2] A 83 EPC 1973 requires that the invention has to be disclosed sufficiently clear and complete for it to be carried out by a person skilled in the art. The patent-in-suit exemplifies a method for preparing products according to the invention and gives inter alia details on their chemical composition and the necessary amounts. Furthermore, the patent-in-suit gives detailed information how the RI and SRI values may be calculated.

[2.3] Based on this information the [opponent] determined the RI and SRI values of prior art composition. Thus, as has been confirmed by the [opponent], the skilled person is per se in a position to prepare compositions as claimed with the required structural and functional characteristics.

[2.4] According to the [opponent] the obstacle is the high number of tests that has to be carried out by the skilled person to arrive at compositions according to the invention due to lack of guidance in the patent-in-suit.

[2.5] In the Board's view the requirement of A 83 EPC 1973 is met. The examples and the description, which point towards preferred embodiments of the patent-in-suit, give guidance on how to obtain the claimed compositions. No proof of the contrary has been submitted by the [opponent].

[2.6] In particular by identifying allegedly novelty-destroying prior art documents and calculating the RI and SRI values, the [opponent] himself showed, that the skilled person is capable of reworking compositions potentially claimed in the main request and consequently, to carry out the invention without undue burden.

[2.7] Since the [opponent] did not present arguments with regard to the features additionally being present in the auxiliary requests, the considerations above apply to all requests on file.

One might perhaps criticize that the decision reasons as if the opponent was representative of the skilled person, which is doubtful. The skilled person is a legal construction that is quite remote from real life. Therefore, I would be reluctant to deduce what the skilled person would have done from what a real person has done.

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

The file wrapper can be found here.


Anonymous said...

The opponent has understood the invention because he opposed : reading the patent, raising attacks, drafting the notice and the grounds gives a full understanding of the invention and needs to compensate for A83 defficiency.

I find this work beyond the normal burden, and should be seen as undue burden for the one skilled in the art.

If we go further in the board's view, one could say that raising A83 deficiency is incompatible with raising novelty or inventive step attack... I do not agree.

MaxDrei said...

Anon's "If we go further...." comment interests me.

My perception is that UK representatives are trained to avoid any contradictions in their written submissions (such contradictions being liable to be used against them by the other side and being anyway apt to weaken or destroy BOTH the contrary positions equally effectively in the eyes of the tribunal).

Advocates from Germany, however, see nothing wrong in first asserting (under Art 83) that the skilled person would have no idea how to put the claimed subject matter into effect but then, later in the same written submission, exhorting the tribunal to find the same subject matter manifestly obvious. They seem to think that if one argument fails, the other must necessarily succeed.

Do I see it as other readers do?