Thursday, 15 November 2012

T 1496/11 – Bending & Folding

This is the second appeal in the case under consideration. In a first decision (T 1265/07) the Board set aside the decision of the Opposition Division (OD) to revoke the opposed patent and remitted the case for further prosecution. The OD then maintained the patent in amended form. Opponent 1 filed an appeal against this interlocutory decision.

Claim 9 of the claims as maintained read:

9. A security document (20) including a security device (22) and verification means (21) for verifying or inspecting the security device (22), said security document (20) being formed from a substrate (2) bearing indicia (3), wherein the security document comprises a single flexible sheet (2), such as a bank note, the verification means comprises self-verification means (21) provided at a first transparent portion (5) of the single flexible sheet (2), wherein the first portion (5) is of transparent plastics material, and the security device (22) is provided at a second portion (4) of the single flexible sheet (2) spaced laterally from the first portion (5) so that the self-verification means (21) can be used to verify or inspect the security device (22) when the single flexible sheet (2) is bent, folded or twisted to bring the first and second portions (5,4) into register, characterised in that the security device comprises an area (22) of the sheet printed with metameric inks, and the self-verification means comprises an optical filter (21) for viewing the area (22) printed with metameric inks.(my emphasis)

One of the questions discussed by the Board was whether this claim was entitled to the claimed priority of an Australian provisional application (without claims).

[2.3] The addition in claims 1 and 9 (main request) that the single flexible sheet may be “bent” instead of “folded” does [I guess a “not” is missing here] give rise to an invention different from that disclosed in the priority document for the following reason: Folding the single flexible sheet to bring the first and second portions into register so that the self-verification means can be used to verify or inspect the security device necessarily involves bending the single flexible sheet. Conversely, bending the single flexible sheet to bring the first and second portions into register so that the self-verification means can be used to verify or inspect the security device is a process which can also be described as “folding”. The addition of the term “bent” to the wording of claims 1 and 9 does not add any new possibilities which were not immediately and unambiguously derivable from the disclosure of the prior art document.

The appellant’s argument that the covers of a bank pass book, which, for the sake of this argument, are to be assumed rigid and thus may be folded but not generally bent, cannot be accepted by the board, because the security document claimed in claims 1 and 9 (main request) comprises a single flexible sheet. The embodiments of the invention concern (flexible) banknotes and there is no support elsewhere in the patent in suit of a limitation to a security document with rigid covers joined to the single flexible sheet so as to only permit folding about a hinge-like region connecting these rigid covers but which is otherwise prevented from bending by the rigidity of the covers.

Thus, the addition of the term “bent” to the wording of claims 1 and 9 in itself does not make the subject-matter of claims 1 and 9 a different invention with respect to the one disclosed in the priority document.

[2.4] The addition in claims 1 and 9 (main request) that the single flexible sheet may be “twisted” instead of or in addition to being “folded” was no longer contested and has a basis in the first paragraph of page 15 of the priority document.

[2.5] The subject-matter of claim 9 (main request) thus constitutes the same invention as that set out in the priority document (A 87(1) EPC 1973).


As an anonymous reader has pointed out, the decision contains another interesting and controversial aspect. Having found claim 1 not to be entitled to the priority, the Board goes on to say:

[3] In view of the foregoing, the subject-matter of claim 1 (main request) is only entitled to the filing date of 08 October 1997.

The divisional application G25 of the patent in suit discloses an embodiment in which a flexible banknote may be folded upon itself and a self-verification means in form of an optical lens used to view an area of microprinting which constitutes the security device (column 8, lines 21 to 34 and figures 1 and 2). The description of this embodiment is identical to that provided in the priority document (page 9, lines 19 to 27 and figures 1 and 2). This embodiment of the divisional application G25 is therefore entitled to the claimed priority date of 10 October 1996 and thereby anticipates the subject-matter of claim 1 (main request) which is only entitled to the filing date of 08 October 1997. These new facts were not addressed in the earlier decision T 1265/07 so that, according to established case law (e.g. T 27/94 [2]; T 378/88 [4]) there is no case of res judicata.

For these reasons, the divisional application G25 is prima facie relevant and the board exercised its discretion to introduce it into the proceedings.

The board considered that, in the absence of an absolute right to have an issue decided upon by two instances, the question of novelty with respect to the divisional application G25 did not warrant a remittal at this advanced stage of the proceedings. The board thus exercised its discretion to refuse the respondent’s request for remittal to the first instance.

The lack of novelty of the subject-matter of claim 1 (main request) with respect to the divisional application G25 under A 54(3) was subsequently not contested by the respondent.

Hence, the subject-matter of claim 1 (main request) lacks novelty with respect to the divisional application G25 under A 54(3).

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

The file wrapper can be found here.


Anonymous said...

In this case, a divisional was novelty destroying prior art for its own parent, if I read the decision correctly. I don't fully understand this. Is it the issue discussed at ?
Thanks for any explanation.

oliver said...

Yes, I think this is the very situation discussed by Tufty et al.

Although it is somewhat shocking to see an application killed by its divisional, I do not think that Prof. Vollrath has provided very convincing legal reasons for refusing this possibility. So I for one would agree with the Board.

oliver said...

I’ve added the relevant part of the decision to my initial post.

MaxDrei said...

Interesting on Art 123(2). Bending and folding are not the same. Take a 130cm long, 2mm wide stent delivery catheter which you will push up a tortuous artery, all the way to the stenosis.It MUST bend easily. However, it cannot be permitted to fold for then it is instantly useless.

What a word means depends absolutely on context. even so though, bend and fold are different aren't they?

Anonymous said...

“What a word means depends absolutely on context.” I couldn’t agree more.

That being said, in the present context, at least the drafter of the claim must have considered “bent” and “folded” not to be synonyms, otherwise he/she would not have added the term “bent”.

Manolis said...

The subject of divisionals killing parents has been repeatedly discussed:
in epi information 2/2011
and in the CIPA journal of February and March 2012.

oliver said...

Yes, the issue was quite fashionable a year ago or so. But has there been some sort of consensus?

I fear such cases are too rare for us to hope for an authoritative word from the EBA.

Anonymous said...

As I understand it, the division is prior art, because the claimed feature is general, while the divisional and priority document have a specific form of the feature; and there is no priority for the general form.

If that is correct, what prevent the parent being its own prior art? It also discloses the specific form, and that specific form does have priority. A54(3) does not say anything about the prior art having to be another application.

If we don't like that, why do we like the divisional situation? If we do, of course.

MaxDrei said...

Good question from that last anonymous. Why should the act of filing a divisional transform a harmless situation to a harmful situation? Many others argue exactly that.

But under the EPC, the earlier filings of an inventor are 54(3) docs against her later filings. Are we to stay with that, or are we to amend the EPC to accord with the rest of the world, in which inventor's own earlier filings are not 54(3) docs?

If we stay with the EPC as it is, do we want to encourage Applicants to file for one invention per application, or do we want to encourage Applicants to file (like in Alicante for design patents) one application for a hundred different inventions? If you say divisionals are to be excluded as 54(3) docs then I will be encouraged to put all my hundred inventions in one patent application, and then later file 99 divisionals. Doesn't seem right somehow.

Anonymous said...

Great decision! In the pharma industry half of the people are rejoiced and the other half are scratching their heads.
A divisional should not be filed anymore as a “safety” net anymore as the “safety” net may come back to haunt one down later. Though full and well drafted divisional application by expurgating of all compromising disclosure which at the end may as well compromise the filing of a divisional application.

MaxDrei said...

This Decision is only a problem for those who would declare more than one priority date and then divide, or divide in order to claim inventions which are not the "same" as the inventions disclosed on the priority date in the priority document.

Anybody see a problem if you stick to one prio and the same invention?

Anonymous said...

It is not only that a divisional could become novelty killing for the parent, but the core question is actually based on a more general situation: can a "general" claim be killed by an Art54(3) document disclosing as novelty disclosure a specific embodiment for which the parent has a valid earlier effective date than the Art 54(3) document/disclosure?

MaxDrei said...

Anonymous, are you perhaps (knowingly or unknowingly) alluding to the provisions of Section 52(1) of the UK Patents Act of 1949, which did NOT make it into the EPC of 1973? That's the provision about publication of the subject matter of the prio doc, after the prio date, being deemed NOT to anticipate claims which cannot get back to the prio date.

Yes, it is a general situation. Back in 1973, UK pragmatism was sacrificed on the altar of clarity and legal certainty. Today, more than ever, we need clarity and legal certainty, no?

Myshkin said...

I'm not sure why none of these decisions considers G 1/03.

If an application discloses specific A and claims general B, and the priority document only discloses A, then the disclosure of specific A in a divisional or parent application will in principle be novelty destroying for generic B.

However, we can now apply G 1/03. The claim to B can be amended to a claim to B minus A. This claim is new.

In addition, we can also just claim A. The disclosure of A in the parent or divisional application is not prior art for this claim. So this claim is also new.

Now it is also permissible to claim "B minus A" OR "A". Interestingly, this claim has the same scope as the original claim B.

Since it makes no sense to force an applicant to artificially split up B into "B minus A" OR "A", the applicant should be allowed to keep the claim to simply "B".

pantagruel said...

I may be wrong, but I would base as little as possible on G 1/03.

G 1/03 was a very pragmatic decision. Disclaimers were needed, so the EBA had to find a way to declare them allowable. But from a purely legal point of view, I would think that G 1/03 is rather unfortunate, and, in my opinion, the legal reasoning is not very persuasive. We will have to live with this – it is the price for allowing disclaimers in spite of A 123 – but I think it will remain a thorn in the flesh.

Myshkin said...

If G 1/03 saves the patent, why not base your reasoning on it? It gives a solution for dealing with unjustified consequences of the construction of fictitious disclosures, and I would say the self-collision problem we have here is even less justified (and surely was never intended).

pantagruel said...

No offense meant, Myshkin. Please feel free to attack what I call patent parricide with all available means. C’est de bonne guerre. What I have seen so far appears to be of little persuasive power: paradoxes based on flawed decisions, questionable approaches (« the parent application and the divisional are one », « why should the dividing applicant be in a worse position than the inert one » etc. etc.), arguments drawn from the silence of the travaux préparatoires … Most of it is handwaving, although I do indeed understand that people are uncomfortable with patent parricide. In my opinion, as the law stands, parricide is possible. If this is unacceptable, the law should be changed. In the meantime,be careful when dividing.

Myshkin said...

Well, at least for now G 1/03 is law. Could you point at a hole in my argument?

pantagruel said...

I have not given this much thought (nor will I, because I have many other things on my mind right now), but I think that your paradox is based on the basic flaw of G 1/03. G 1/03 has introduced an inconsistency into the A 123 construction, and, very much like a fold in the carpet, you can drag it wherever it suits you. This is why I said that G 1/03 is not a good basis for legal reasoning. In my opinion, it is the premises that are flawed, and not your reasoning as such. No holes spotted. Cheers.

Anonymous said...

May I throw in G2/10 ... according to this decision the G1/03-disclaimer would probably not be allowed ...

pantagruel said...

Had I known that you would open this Pandora box, Anonymous, I would have remained silent ! ;-)

Myshkin said...

You are asserting that G 1/03 contains a "basic flaw" that has introduced an "inconsistency", but I understand you will not explain why.

I don't know how I would personally have decided G 1/03 had I been in the position to decide it, but as far as I can tell there is no basic flaw in it. Sure, the decision introduces an exception to the general rule of Art. 123(2), and one might not be happy with exceptions (or with this specific exception), but an exception to a legal rule is not an inconsistency.

"May I throw in G2/10 ... according to this decision the G1/03-disclaimer would probably not be allowed ..."

You have a very good point, since G 2/10 indeed very explicitly states that G 1/03 is not concerned with the situation in which the subject-matter excluded by a disclaimer is disclosed in the application. So in the situation we are discussing here, the allowability of the amendment "B minus A" cannot be based on G 1/03.

What is more is that G 2/10 also states that "B minus A" is not directly and unambiguously derivable by the "rule of logic" that if an application discloses generic B and specific A, it also discloses B minus A. (I completely agree with that.)

However, G 2/10 does not seem to say that a "G 1/03-type" disclaimer is not allowable in the case that the excluded subject-matter is disclosed in the application as filed. It only states that G 1/03 did not decide that question.

In G 2/10, the president of the EPO had suggested, in the context of a disclaimer excluding disclosed subject-matter, that "where the subject-matter remaining in the claim is not directly and unambiguously derivable from the application as filed, the criteria established in decision G 1/03 should be applied regarding the allowability of the disclaimer" (G 2/10, point 4.7). The reason for this suggestion was that "because otherwise, in the case of a state of the art according to Article 54(3) EPC, an applicant disclaiming disclosed subject-matter could be in a worse position than an applicant disclaiming subject-matter for which there was no disclosure in his application. This was so since according to decision G 1/03 in the latter case the applicant did not have to show that the subject-matter remaining in the claim after the introduction of the disclaimer was also disclosed as such in the application as filed." The EBA however saw no justification for adopting the suggestion, and did not hold this discrepancy to exist.

I am not sure exactly what to make of the EBA's reasoning in point 4.7 of G 2/10, but all in all I would say that G 2/10 leaves open whether an (undisclosed) disclaimer excluding disclosed subject-matter is allowable in the case of Art. 54(3) prior art.

Maybe the next Board having to decide on a case of self-collision could be so kind to refer the question to the EBA.

MaxDrei said...

good stuf from Myshkin.

There's a paper on the EPO website about Art 54(3) under the rubric of the Tegernsee Group of patent law experts. It shows us that self-collision is peculiar to the EPC. In other parts of the world it is not allowed - too inconvenient for the attorneys who draft patent applications.

There is a piece on this T decision on the Kluwer patent law blog. But no comments there yet.