T 916/09 – Sixty-Nein!

The Boards have repeatedly pointed out that A 69 is not an appropriate tool to establish the novelty of a claim. Apparently, this does not deter patent proprietors from trying it again and again, as the present decision shows.

The Board had found the main request to lack novelty over document D7. It then dealt with auxiliary request 1, where the claims were identical but the description had been amended:

[3] This request differs from the main request only in that in the last sentence in paragraph [0024] of the description of the patent in suit the words ‘may be’ have been replaced by ‘are’.

It was under dispute whether or not this amendment in the description could render the subject-matter of the claims novel. The respondent relied on A 69(1) which reads as follows:

“The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”

The Board refers to decision T 881/01 [2.1] where the following is stated:

“While it is true that A 69(1) second sentence states that the description and drawings shall be used to interpret the claims, this does not make it legitimate to read into the claim features appearing only in the description and then relying on such features to provide a distinction over prior art. This would not be to interpret claims but to rewrite them. The preparatory material available on the discussions leading up to the European Patent Convention, shows that the effect of A 69 and its Protocol on Interpretation was always only considered in relation to extending the extent of protection conferred beyond the strict literal meaning of the terms of the claims, and never for excluding what on the clear meaning was covered by the terms of the claims. Certainly in proceedings before the EPO, where the Patentee has the opportunity of cutting down his claims to accord with stricter limits given in the description, the scope of a claim should not be cut down by implying into it features which appear only in the description, as this would deprive claims of their intended function.”

For these reasons, the amendment of the description cannot render the subject-matter of the claims novel.

Consequently, the first auxiliary request is refused.

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

The file wrapper can be found here.

NB: This decision has already been presented on Le blog du droit européen des brevets (here).