Wednesday, 1 August 2012

T 869/10 – Too Big

This is an appeal of the opponent against the maintenance of the opposed patent in amended form.

Claims 1, 2 and 5 as granted read:

1. Non-dusting homogeneous pigment preparation, characterised in that it comprises
40-60 % by weight of one or more effect pigments,
0.1-5 % by weight of surface-active substances,
0.5-40 % by weight of organic polymers,
1-40 % by weight of an organic solvent or solvent mixture,
0-50 % by weight of water and optionally
0-10 % by weight of a pH regulator. 
2. Non-dusting homogeneous pigment preparation according to Claim 1, characterised in that the effect pigment is a pearlescent pigment and/or a metal pigment. […] 
5. Non-dusting homogeneous pigment preparation according to one of Claims 1 to 4, characterised in that the surface-active substance is an alkylsilane, a saturated or unsaturated fatty acid and/or a fluorosurfactant. (my emphasis)
Claim 1 as maintained by the Opposition Division read (the underlined features are additions with respect to claim 1 as granted):
Non-dusting homogeneous pigment preparation, characterised in that it comprises
40-60 % by weight of one or more effect pigments, wherein the effect pigment is a pearlescent pigment
0.1-5 % by weight of surface-active substances, wherein the surface-active substance is an alkylsilane, a saturated or unsaturated fatty acid and/or a fluorosurfactant
0.5-40 % by weight of organic polymers,
1-40 % by weight of an organic solvent or solvent mixture,
0-50 % by weight of water and optionally
0-10 % by weight of a pH regulator.
The opponent pointed out that claim 1 did not comply with the requirements of A 123(3).

Believe it or not, the Board agreed:

*** Translation of the German original ***

[1.1] The [opponent] argued that the limitation of the expression surface-active substances to specific groups of compounds in claim 1 of the main request entails that [this claim] now claims pigment preparations that were not encompassed by claim 1 as granted.

It cited the example of a preparation containing 2.5 % by weight of alkylsilane and 3 % by weight of another surfactant, i.e. having a total [amount of surface-active substances] exceeding the value of 5 % by weight as defined in claim 1 as granted, and wherein the contents of the remaining components are within the ranges defined in both claims.

The [patent proprietor] was of the opinion that in principle the incorporation of a feature of a dependent claim cannot violate (widersprechen) the requirements of A 123(3).

[1.2] The Board does not agree with the opinion of the [patent proprietor]. As a consequence of the open wording of the claim 1 of the main request there is the possibility of further surfactants being present in addition to the explicitly named specific surface-active substances for which the defined % by weight range applies.

The combination of the  named specific surface-active substances and additional surface-active substances can exceed 5 % by weight, which is the upper limit for all surface-active substances in the version [of the patent] as granted.

[1.3] Therefore, claim 1 of the main request encompasses pigment preparations that were excluded from the scope of protection of claim 1 as granted. The requirements of A 123(3) have not been complied with. […]

Decision T 2017/07

[1.7]  Basically (sinngemäß) this view was also held in decision T 2017/07. In this case a general definition of a class of compounds was replaced by a specific component in an “open” claim where the overall quantitative (mengenmäßig) composition was unchanged. The Board was of the opinion that the presence of further members of the class of compounds, beyond the upper limit for the content, was not excluded and that, as a consequence, the requirements of A 123(3) had been violated.

Decision T 1756/07

[1.8.1]  Decision T 1756/07 concerns a polymer that is completely defined as to its composition and which is post-crosslinked (nachvernetzt) by means of an organic product for post-crosslinking the surface (Oberflächennachvernetzungsmittel) and a cation after its polymerisation. It is clear from the wording of the claim that the polymer (Polymerisat) is treated with a post-crosslinking product that is used in a ratio of 0.01-5 % by weight with respect to the polymer. Therefore, this claim is not directed at a composition as is decision T 2017/07 and the situation created by the amendment of the claim is not comparable with the situation described in decision T 2017/07. In this case, the limitation to a specific post-crosslinking product necessarily entails the limitation of the polymer obtained. Therefore, there is no problem regarding a possible extension of the scope of protection.

[1.8.2] As a consequence, the present decision and T 2017/07 are based on a different factual situation than decision T 1756/07 and the Board is unable to see contradictory views expressed in the case law.

Consequently, the Board refused the patent proprietor’s request to refer a question to the Enlarged Board. The patent was revoked.

I think the Board has got it wrong because the scope of protection of the patent as granted is not defined by its claim 1 but by the claims as a whole. It may be true that the scope of dependent claims 2 and 5 as granted exceeded the scope of claim 1 as granted (which is unfortunate, but nevertheless possible), but in that case a limitation to one of those claims cannot – in my opinion – extend the scope of protection of the patent as granted. There would only be a violation of A 123(3) if the patent proprietor had taken the problematic features from the description rather than from dependent claims.

What do you think?

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.


Michael Thesen said...

I think that the reason for this surprising result is that the feature of the dependent claim is not simply added to the end of the claim but rather inserted "in line" in a way that creates a new context.

Dependent claim 4 as granted is unclear by using the singular (.. the surface-active substance is an alkylsilane,...), whereas claim 1 uses the plural form ("contains surface-active substances").

The singular could be read as implying
- that only one surface active substance is used, the concentration of which would then necessarily fall within the claimed range, or

- that surface-active substances comprise one of the specific substances mentioned in the dependent claim, but potentially other surface active substances are used.

Both interpretations are mutually exclusive.

Claim 1 as amended mixes the second interpretation with the necessary consequence of of the first interpretation, which leads to new subject-matter.

Had the patentee simply added the features of claim 4 to the end of claim 1 (which he did not for good reasons I guess), this problem would not have occured.

Johannes Gierlich said...

According to the board any limitation of a general term to specific substances in this way would lead to a violation of A123(3), since other compounds falling under the general term are not excluded.

I wonder if a claim like "0.1 -5 % weight of surface-active substances, wherein all surface-active substances are chosen from the group consisting of ..." would be acceptable by the board.

Myshkin said...

Independent of how claim 1 as granted and claim 1 as maintained should be interpreted, I find Oliver's argument completely convincing. The subject-matter of claim 1 as maintained equals the subject-matter of claim 5 as granted (when dependent on claim 4 and claim 1), so Art. 123(3) cannot have been infringed.

I guess neither the Board not the opponent thought of this... Ouch?

Regarding the wording of the claims, I would say the use of "the effect pigment" and "the surface-active substance" is unclear, since claim 1 as granted mentions "one or more surface-active substancse" and "surface-active substances". However this is not a ground for opposition, and the skilled person would in my view certainly read this as "wherein at least one of the effect pigments is a ..." and "wherein at least one of the surface-active substances is a ...". So I don't see any extension of scope with respect to claim 1 as granted. (It would be different if the description would show that something else was intended.)

I now see that Johannes has a different reading, and that Michael identified both, indeed mutually exclusive, readings. So there seems to be a real clarity problem here. Still, Art. 123(3) seems to be the wrong tool.

Anonymous said...

I agree with the board. The problem is in the unclear singular/plural wording, as Michael already mentioned.

The aswer to the question of whether the claim 1 (as maintained in Opposition) has a broader scope of protection than the claim 1 as granted or not, is cleary "yes", as shown by the example. Thus 123(3) also is the proper legal basis.

Myshkin said...

The point is that amended claim 1 is identical to granted claim 5 (when dependent on claims 4 and 1). So the scope of claim 1 cannot be broader than the scope of what was granted. The subject-matter of amended claim 1 was already granted...

Sander van Rijnswou said...

Article 69(1): The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Article 123(3): The European patent may not be amended in such a way as to extend the protection it confers.

So how do the claims determine the extent of protection? Or more precisely, what is the difference between independent and dependent claims in determining the scope of protection?

This board reasons that because new Claim 1 includes compositions that were excluded from granted claim 1, the requirements of 123(3) are not fulfilled (section 1.3), period. In other words: if the protection conferred by claim 1 has been extended, then the protection conferred by the patent has been extended.

From the point of view of a potential infringer this makes sense. Suppose that after grant of the patent, a hypothetical infringer reads the independent claims and determines he did not infringe them. He thinks he is free. Later it turns out that, in fact he does infringe, because the main claim was extended by combining with a dependent claim. That does not seem right. Only if he did infringe claim 1 but also considers that claim to be invalid, does he need to study the patent further.

So the interpretation of this board makes sense from the perspective of protection of the public. Nevertheless, it would have been nice if this Board had some more explanation about T1756/07.

In T1756/07 the opponent also stated that the combination of Claim 1 and a dependent claim was an extension of protection. However that board states that even if one follows that reasoning then still 'Weiterverfolgung des Patents auf der Grundlage des erteilten Anspruchs 7 als neuem unabhängigem Stoffanspruch keine Erweiterung des Schutzbereichs des Patents darstellen kann'. (T 1756/07, section 4)

This board (T 869/10) avoids discussing this statement by a legal u-turn. It states that, actually, if you interpret new claim 1 right, there was no extension of protection, and so T1756/07 is distinguished from T 869/10. Indeed, the wording in T1756/07 is such that you could view the remarks as an ‘obiter dictum’. In any case no comments are made regarding it.

I guess this decision is rather harsh on the proprietor, who prosecuted and amended in good faith and now sees his patent revoked because of legal finickiness. But I do see the point: Claims should be clear, a dependent claim cannot extend a claim on which it depends. If you have done so anyway, even if by accident, the consequence is that the dependent claim cannot be used as a fall back.

Myshkin said...

Good points. The outcome is indeed reasonable from the point of view of a potential infringer, who may reasonably assume that he is safe if he does not infringe the claims that are formulated as independent claims.

However, I have a hard time accepting that the scope of protection of a European patent is determined only by the claims formulated as independent claims, and not by the independent claims incorrectly formulated as dependent claims (which is the case here). This seems something that should be left to the EBA to decide.

T 1756/07 in point 4.2 indeed makes the argument that if dependent claim 7 extends the scope of independent claim 1, claim 7 is in fact not dependent but independent, so that combining claim 7 with claim 1 does not result in an extension of the protection.

Point VI of T 869/10 shows that the proprietor was very well aware of this legal argument (I originally assumed this somewhat tricky but convincing argument must have been overlooked, but this is incorrect).

T 869/10 effectively never rejects this legal argument. Instead, it dismisses T 1756/07 on the basis that the facts are not the same. However, the facts are irrelevant for the validity of a legal argument (which can be seen already from point 4.2 of T 1756/07 which never refers to those facts). The facts are relevant for the applicability of a legal argument, but the argument is plainly applicable to the facts in T 869/10: we have a "dependent" claim extending the scope of the independent claim.

I don't think point 4.2 of T 1756/07 is an obiter dictum (because the Board never makes a choice between point 4.2 and point 4.3, so that both are necessary to refute the arguments mentioned in point 4.1). But more importantly, it is a sensible legal argument, applicable to the present case, that can only be refuted by explaining why this legal argument is invalid. T 869/10 fails to do that.