Thursday, 30 August 2012

T 1070/10 – Technical Indeed


Headnote 2 of G 1/93 reads:
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.
As we have already seen in earlier posts (e.g. here), the Enlarged Board probably thought of disclaimers, but as it did not use this term, applicants and patent proprietors sometimes argue that their claims do not violate A 123(2) because the feature allegedly violating A 123(2) does not provide a technical contribution. I am not aware of any case where this approach was successful, and the present decision is not such a case either.

Claim 1 of the main request before the Board read:
“A sprayhead comprising: a support comprising a base (2) and a top (3), the base (2) being mountable on a fluid container and the top (3) being mounted on the base (2) and rotatable relative thereto; a passageway (14), mounted on and extending within the support [feature A] that is connectable to a switchable source of fluid and incorporating a fluid outlet (12), the passageway (14) being moveable between a first, non- operative position and a second position in which it switches the source to supply fluid to the outlet (12) via the passageway (14); and a member (17) secured relative to the support being moveable between a first non-operative position in which the member (17) is held in a raised position and supported by a cam means (11,22) on the support and a further position in which the member can be depressed whereby the passageway (14) may switch the source to supply fluid; characterized in that the base (2) and top (3) provide complementary cam means (11,12), the member (17) is selectively lockable by a lock and held in a raised position [feature B] in its first non-operative position thereby preventing the member from urging the passageway to its second position unless the lock is released, the lock comprising the complementary cam means (11,12), such that movement of the top (3) relative to the base (2) moves the corresponding cam means (11,22) relative to each other between a first position of the cam means in which the member (17) is in its said first non-operative position and a second position of the cam means in which the member (17) is in its said further position and the top (3) having a body portion that has an opening (24) for cooperation with the fluid outlet (12) and a section that can face the fluid outlet to completely close it by relative rotation of the top to the base [feature C]. (emphasis added by the Board)
The decision inter alia contains a discussion of whether the addition of feature A complies with the requirements of A 123(2):

[2.2] The appellants do not contest that feature A was not disclosed in the application as originally filed, i.e. in the originally filed grandparent application.

The appellant, though mentioning G 1/03, has clearly relied upon the decision G 1/93 and argued that feature A merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed. Thus, the opposition ground according to A 100(c) would not hold against the subject-matter of claim 1 disclosing said amendment.

The Board considers that feature A relates to the arrangement/positioning of the passageway and that accordingly it relates to a technical teaching specifying the sprayhead, namely its construction and the positioning of the passageway in the support. Thus, feature A has obviously a technical meaning restricting at the same time the scope of protection defined in claim 1.

The appellants’ argument that the “exact nature of the spray passageway is not in the least involved in the claimed invention” cannot be followed by the Board. In the originally filed claim 1 of the grandparent application (and of the present divisional application) the claimed passageway is mounted on the support, is connectable to a switchable source of fluid, incorporates a fluid outlet, and is moveable between a first, non- operative position and a second position in which it switches the source to supply fluid to the outlet via the passageway.

Feature A defines now in addition to the above- claimed technical characteristics of the passageway the further technical characteristic that the passageway extends, i.e. is positioned, within the support.

The appellants argued further that the feature in question certainly did not create an inventive selection in the sense of G 1/93.

However, according to decision G 1/93 [16] such a selection invention is only mentioned as a “typical example” of when such an added feature could give rise to an unwarranted advantage to the patent proprietor. This does not exclude other examples of an unwarranted advantage. For instance, during the life span of the patent it may occur that further prior art becomes known, for which this technical feature could prove to be of advantage to the patent proprietor, either in distinguishing the invention (further) from the prior art, or by better setting off the invention in the discussion of inventive step. For this feature that is not unimaginable. For this reason the Board is of the opinion that G 1/93 cannot find application. Consequently, it seems that feature A cannot be regarded as a mere limitation of the protection but it has to be considered as subject-matter which extends beyond the content of the application as originally filed.

To download the whole decision, click here.

The file wrapper can be found here.

3 comments:

JW said...

Check out T777/02 for the application of G1/93...

oliver said...

Thanks, JW, for this reference, which I had not come across yet.

Myshkin said...

It seems that the Board in T 777/02 took a quite different approach to G 1/93 than the Board in this decision.

In this decision, the Board seems to consider it decisive that feature A has a technical meaning that restricts the scope of claim 1.

On the other hand, in T 777/02 it is undisputed that the contested feature is a "limiting technical feature" (see point 3.2). The Board then reasons:
"The Enlarged Board held that if the limiting feature has to be considered as providing a technical contribution to the subject matter of the claimed invention, it would give an unwarranted advantage to the patentee and would, therefore, constitute added subject matter within the meaning of Article 123(2) EPC. (...)

Hence, it has to be examined whether the undisclosed limiting feature in claim 1 of the disputed patent involves an unwarranted advantage or even a new invention."

The Board then examines whether there is a concrete "unwarranted advantage" and finds none.

Imho, the problem with T 777/02 is that the Board sort of twists the words of the EBA. The EBA's reasoning, as I understand it, is that a feature providing a technical contribution by definition gives an unwarranted advantage to the patentee, and therefore infringes Art. 123(2). The idea behind the "unwarranted advantage" is nicely explained in the present decision: further prior art might become known. So "unwarranted advantage" should be understood as any theoretical advantage. In any event, this "unwarranted advantage" only explains the rationale behind Art. 123(2). It is not the test to be performed.

The criterion formulated in G 1/93 is whether the feature provides a "technical contribution". I agree with T 1070/10 that, for the purpose of Art. 123(2) and G 1/93, any limiting technical feature provides a "technical contribution" (and that in particular, it is irrelevant whether the feature actually contributes to novelty and inventive step when comparing the claimed invention to the available prior art).

Since the wording of G 1/93 leaves a lot of room for discussion and (I believe) is in the Guidelines, it can of course be used to convince an ED to grant an (uncurably invalid) patent.