T 1082/08 – Be Prepared

This is an appeal of the patent proprietor against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 of the main request before the Board was identical to claim 1 as granted and read (in English translation):

A document of value (Wertdokument) having at least one authenticity feature in the form of a luminescent substance based on doped host lattices, characterized in that the host lattice is doped with at least one chromophore with the electron configuration (3d)².

The OD had found the subject-matter of this claim to be insufficiently disclosed for it to be carried out by a person skilled in the art (A 100(b)). The Board had something to say on this matter:

*** Translation of the German original ***

Substantiation of the ground of opposition

[2.1] The [patent proprietor] has submitted that the ground of opposition under A 100(b) EPC 1973 had been insufficiently substantiated and, consequently, was inadmissible.

The ground of opposition under A 100(b) EPC 1973 has  been introduced into the proceedings by the OD […]. Grounds of opposition or legal bases (Rechtsgrundlagen), respectively, which were subject of the impugned decision, as in the present case, are also subject of the appeal proceedings, cf. T 275/05 [1].

Therefore, it is not to be examined whether the OD was right to consider this ground of opposition to be sufficiently substantiated.

Allowability of the ground of opposition

[2.2] The  [opponent] has essentially cited one reason why it believed that the disclosure of the invention was insufficient: a good portion of the claimed luminescent substances were not stable or did not have the desired luminescence properties allowing to authenticate [documents].

According to A 100(b) EPC 1973 the European patent has to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. According to the established case law of the Boards of appeal this [requirement] is only fulfilled if the invention that is defined in the independent claim can be carried out by the skilled person, using his general knowledge as well as the indications provided in the patent specification, over the whole claimed domain, without undue burden.

Here the term “invention” means the claimed invention. Therefore, it has to be examined what precisely is encompassed by the “whole claimed domain”.

Independent claim 1 of the main request concerns a document of value having at least one authenticity feature in the form of a luminescent substance based on host lattices doped with at least one chromophore with the electron configuration (3d)².

Therefore, the Board is of the opinion that the claim cannot be interpreted in such a manner that it comprises all imaginable (denkbar) dopings with the electron configuration (3d)² in combination with all imaginable host lattices. Rather, the dopant must be capable of being incorporated into the host lattice and the host lattice that has been doped accordingly must have luminescent properties and must be capable of being introduced into documents of value.

The [patent proprietor] has submitted that the corresponding skilled person was a person the professional activity of whom was to ensure the authenticity of documents of value, in particular using luminescent substances. As a consequence, this person had to have technical knowledge in the technical field of production of documents of value as well as in the technical field of luminescent substances. The Board agrees. The Board expects this skilled person to be capable of deciding which transition metal ions with the electron configuration (3d)² he can incorporate into which host lattices, in which concentration or grain size, respectively, in order to obtain luminescent substances that can be introduced into documents of value (e.g. by means of printing ink).

Therefore, the Board reaches the conclusion that the invention claimed in claim 1 of the main request is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

The Board finally found claim 1 to lack inventive step.  

The opponent requested the Board to revoke the patent, which was obviously impossible in view of the prohibition of reformatio in peius. The corresponding paragraph of the decision is interesting because the opponent tried to overcome this prohibition by means of an original argument.

[6.1] The Enlarged Board of appeal has explained in its decisions G 9/92 and G 4/93 [14] that the opponent who has not filed an appeal cannot validly request the revocation of the patent after the expiration of the time limit for filing an appeal.

Therefore, the main request of the [opponent] has to be dismissed as inadmissible.

[6.2] Also, the submission of the [opponent] according to which the [patent proprietor] had filed its appeal on the last day before the expiration of the time limit for filing the appeal and that, as a consequence, it had not had the opportunity to respond by filing an appeal itself, does not alter this assessment. As a matter of fact “if one opposing party does not win a case outright, the other opposing parties must be prepared for it to file an appeal.” (see G 9/92 and G 4/93 [11]).

To read the whole decision (in German), click here.

The file wrapper can be found here.