To say it in patent language: as soon as you amend, your claims come under full A 84 scrutiny, even if you are only combining granted claims. There have been decisions of that kind in the past, but the present decision appears to be more reckless than what we have seen so far.
The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the patent.
Before discussing the allowability of some requests admitted under Article 13 RPBA, the Board had to examine whether it was competent to examine the clarity of claims that only combined claims as granted.
[4.1.1] The appellant disputed that clarity issues could be dealt with in opposition appeal proceedings in cases such as the present one, in which the changes made to the claims of the main request and the first auxiliary request only consisted in the combination of claims 1 and 14 of the patent as granted.
In particular, the appellant argued that since the requirement of clarity was not a ground of opposition, none of the claims of a patent as granted could be attacked under A 84 with the notice of opposition. For this reason, non-compliance with A 84 could not be objected to either in later stages of the proceedings with respect to a combination of claims of the patent as granted.
[4.1.2] It is generally accepted that the list of grounds for opposition according to A 100 is exhaustive. This means that objections under A 84 cannot be raised against a granted patent even though they are manifest.
[4.1.3] The situation is different in case of the maintenance of a patent in amended form.
A 101(3) requires that if an OD (or a Board of appeal (A 111(1), second sentence, first alternative)) is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during opposition proceedings, “the patent and the invention to which it relates meet the requirements of the EPC”, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled. If the patent and the invention to which it relates do not meet the requirements of the EPC, it shall revoke the patent.
This Article apparently establishes a deviation from the framework of A 100 in that the power to examine a patent in amended form is not restricted to the grounds for opposition.
In decision G 9/91 [19], the Enlarged Board of Appeal confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, «such amendments are to be fully examined as to their compatibility with the requirements of the EPC».
[4.1.4] However, according to the jurisprudence of the boards of appeal, there are limits to the competence accorded by A 101(3) as regards the examination of an amended patent.
For example, A 101(3) would not justify objections to be based upon A 84, if such objections did not arise out of the amendments made (see T 301/87 [headnote 1; 3.7]). Along this line, an objection of lack of clarity should not be raised for instance with respect to an unclear feature comprised in an independent claim of a patent as granted, if this claim is amended by way of addition of a new, clear feature, provided that both features are unrelated.
Boards of appeal have also perceived a limit in the particular case in which an independent claim of a granted patent is amended simply by combining it with an associated dependent claim.
In particular, in T 1855/07 [2], referring to existing jurisprudence (see T 367/96; T 301/87; T 472/88; T 362/02 (NB: this should read T 326/02); T 381/02), the board held that the power to examine clarity under A 84 failed when the amendment merely consisted in the literal inclusion of dependent claims into the associated independent claim of a patent as granted (“satzbauliche Eingliederung”). The board noted that the jurisprudence to which it referred made a distinction between substantial amendments, which under A 101(3) (A 102(3) EPC 1973) were to be fully examined as to their compatibility with the requirements of the EPC, and merely formal amendments arising from simple linguistic combinations of granted claims, for which the framework of A 100 applied.
[4.1.5] However, the jurisprudence of the boards of appeal comprises also examples in which combinations of claims of a granted patent were considered to constitute substantial amendments, which justified an examination under A 84.
In T 1459/05 [4.3] the board decided not to adopt the existing jurisprudence, according to which there was no power to examine matters of clarity under A 84 when the amendment consisted of a combination of claims as granted. The board found that an exception had to be made in the case before it because the assessment of the resulting claimed subject-matter decisively depended on the technical significance of the sole added feature in that any difference from the prior art could only be defined on the basis of that feature. However, its technical significance was so unclear for the skilled person that any such difference was not apparent or at least could not be identified with a reasonable degree of certainty. The board held that it had to be able to exercise its discretion and to deviate, exceptionally and on a case-by-case basis, from the practice of ruling out any power of examination under A 84 in the case of amendments consisting of a combination of claims as granted. In particular, such discretion had to be exercised where a strict application of the approach which excluded the raising of an objection on the grounds of lack of clarity would lead to a situation in which a further examination of the amended patent, e.g. in relation to novelty and inventive step, would be impeded or might not even lead to a meaningful result.
In T 1440/08 [4] the board also held that it had the power to examine an amendment under A 84 in line with other decisions of the existing jurisprudence (see T 472/88; T 420/00; T 681/00), in particular when the combination of granted claims led to an inconsistency between two features of the amended claim 1. Irrespective of the fact that the clarity problem had already affected the claims of the patent as granted, it was the change of perspective on the invention due to the amendment by which the clarity problem became apparent.
[4.1.6] In view of the foregoing, the present Board holds that clarity of an amended independent claim should, in principle, be examined, even if the amendment only consists in a mere literal combination of claims of the patent as granted. Any other approach would indeed entail the risk of unduly restricting the mandate for examination of an amended patent which A 101(3) imposes on an OD having to deal with an amended patent.
In fact, the wording of A 101(3) qualifies neither the nature nor the scope of the amendments. After amendment of any kind, the OD may no longer decide to reject the opposition, as would have been possible, had, for example, a clarity objection been raised as the sole ground for opposition. Instead, the OD may only decide either to maintain the patent in amended form or to revoke the patent. Their decision is taken on the basis of whether the patent and the invention to which it relates meet the requirements of the EPC. A 101(3) indeed defines in absolute terms that the requirements of the EPC shall be considered when amendments are made by the proprietor of the patent during opposition proceedings. Therefore, the term “amendments” in A 101(3) should not be construed narrowly and, irrespective of the manner in which the patent is modified, the amended patent should be subjected to an examination to ensure compliance with all requirements of the EPC. This approach is in agreement with G 9/91 […].
[4.1.7] In this context, the Board notes that an amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of A 100 against the patent as granted, the amendment having to be occasioned by a ground for opposition (R 80). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step.
In the Board’s opinion, any amendment that can be qualified as being of a substantial nature in the above sense would in principle justify an unrestricted exercise of the examination power derivable from A 101(3), irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.
The amended patent would thus normally be examined pursuant to A 101(3) so as to establish whether it meets all the requirements of the EPC. A deviation from this rule may, however, not be excluded in particular cases. This has to be judged on a case-by-case basis.
[4.1.8] In the present case, with regard to the appellant’s main request, first auxiliary request and third auxiliary request, the introduction of the additional feature of dependent claim 14 into claim 1 of the patent as granted highlights the significance of a specific technical concept, i.e. the capability of the interlaced antenna array for operation in three specific bands. This amendment is of a substantial nature.
In view of the foregoing, the Boards holds that it has the power to examine whether the amended patent meets the requirements of A 84 EPC 1973.
The Board has also provided headnotes:
I. An amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of A 100 against the patent as granted, the amendment having to be occasioned by a ground for opposition (R 80). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step.
II. Any amendment that can be qualified as being of a substantial nature in the above sense would in principle justify an unrestricted exercise of the examination power derivable from A 101(3), irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.
III. The amended patent would thus normally be examined pursuant to A 101(3) so as to establish whether it meets all the requirements of the EPC. A deviation from this rule may, however, not be excluded in particular cases. This has to be judged on a case-by-case basis (see [4.1.7]).
In my understanding, until now an A 84 assessment of mere combinations of granted claims was only accepted in exceptional cases, whereas the present decision turns the tables and tells us that only in exceptional cases such an assessment should not be carried out.
Now that we have so clear a statement that appears to contradict earlier case law (possibly relegated to point III of the headnotes), perhaps would it be a good idea to ask the Enlarged Board to clarify the situation once and for all, for the sake of legal security.
Now that we have so clear a statement that appears to contradict earlier case law (possibly relegated to point III of the headnotes), perhaps would it be a good idea to ask the Enlarged Board to clarify the situation once and for all, for the sake of legal security.
Should you wish to download the whole decision, just click here.
The file wrapper can be found here.
9 comments:
I feel that this decision has become necessary in view of the lack of examination of A84 during grant. Only too often are opponents confronted with a combination of a clear main claim with an unclear dependent claim the clarity of which had not been examined, but the contents of which should now "define" the invention. How can one know if one infringes such a claim?
Common sense tells me that real life Examining Divisions do not explore every clarity issue that might arise whenever any dependent claim is imported into the independent claim on which it depends.
So it is also common sense to check compliance with Art 84 when such claim-swallowing happens during opposition.
And if this becomes the norm, what will be the consequence for DG1? Henceforth (going forwards) why should an ED bother to look at all at the dependent claims? Get the independent claim in compliance with the EPC and you're done.
But does that really matter? Americans don't care about dependent claims. Should we? Why?For the most efficient division of work at the EPO, to manage the workload and clear out the backlog, does it not make sense to leave for another day any detailed scrutiny of dependent claims, and openly allocate the first scrutiny of Art 84 issues on claim combinations to the OD rather than the ED?
MaxDrei, don' you really know why dependent claims exist? Let me tell you: in nullity cases you are, by most national law systems, not allowed to change your claims. At best, you may delete the offending claim(s) and end up with was originally a dependent claim. So there is another reason why one should bother about clarity of dependent claims. Although it is in fact the same issue: dependent claims may become independent claims in the course of the proceedings.
Thank you for the post.
Interestingly, the patentee requested a referral to the EBA, which was refused.
A rogue board?
Did not read the entire decision, but I have the two following comments:
1/ why did this board not comment G1/91 which excluded A82 from the EPC requirements to fulfill? This is relevant, because the general comment in the head note leads to think that ALL the EPC requirements are now to be fulfilled...
2/ this board implicitely states that only the independent claims are examined... Should be clarified.
How many of the commernters have read the Decision, I wonder. I suggest to read it and then ponder what you would have done, given the facts.
As to the logic of the decision, I can't fault it. Can you?
As to the function of dependent claims, yes I do know what they are for. And so? Parties that go through to issue with gobbledygook in their dependent claims (or without the dependent claims they are going to need if ever validity comes under attack) have always done so at their own risk. Was it ever otherwise?
Anon, perhaps because Art. 82 is about applications, not granted patents?
The question for the EBA was about 100b, not 84, so refused for lack of relevance for the issue of the decision.
It looks as if the board was aching to inquire into sufficiency of disclosure:
A problem arises, however, for this scheme when it is combined with the claimed requirement for triple-band operation at 900 MHz, 1800 MHz and 2100 MHz.
Due to the fact that the specified operating frequencies are not related by an integer divisor of the highest frequency [...] it is not clear how a realistic juxtaposition of the three monoband arrays could be conceived so as to arrive at coinciding positions for the provision of single triple-band antennas.
[...] Nor does the remainder of the patent specification illustrate an embodiment of an antenna array according to claim 1 of any of the requests under consideration.
But Art. 83 was out of bounds, as the decision under appeal did not go into that issue at all:
By decision dispatched on 13 October 2008 the opposition division revoked the patent for the reasons of lack of novelty (A. 52(1) and 54(3) EPC), added subject-matter (A. 123(2) EPC), extension of protection conferred (A. 123(3) EPC), and lack of clarity (A. 84 EPC 1973) of the main request and four auxiliary requests then on file.
The opponent also never invoked Art. 100(b)/83. The notice of opposition only affirmed "Der Gegenstand des Streitpatentes ist gemäß Artikel 52 bis 57 EPÜ nicht patentfähig [...]". (Where is the substantiation for Art. 53? 55? 57? even 56!?!) The expression "mangelnde Offenbarung" was employed twice throughout the proceedings, but improperly, as it was really added subject-matter that was meant.
The prior art cited by the opponent wasn't very good. D1 was a 54(3) document (strictly usable for novelty, and therefore much easier to circumvent, and circumvented it was), and the other evidence submitted was prior use, of limited value. The OD introduced a new document (out of frustration?), but it was also 54(3) document.
It was the proprietor/appellant who wanted a question regarding Art. 83 referred to the EBA. Why? Because there was a feeling that it was really Art. 83 that was being discussed?
Usually, one tries to address clarity in opposition issues by masquerading them under the guise of sufficiency of disclosure. Here, it very much appears to have been the other way around - Art. 84 for Art. 83, which explains the casuistry. But it was in truth the OD who had initially become creative.
Did the board make a choice between a bad and a worse outcome?
Things would have been so much simpler if good 54(2) prior art had been submitted in due time, and the applicant challenged in clarifying the "invention", which indeed is very poorly defined.
I am convinced that the idea of interspersing antennas arrays to cover several more or less harmonically related bands would have been arrived at in the days of shortwave radio, where wavelengths are measured in decameters rather than decimeters, and antennas needed hectares of dear real estate. I would wager a couple of yen on finding a document describing a curtain array with interspersed elements for, say, the 31m, 25m, 11m, falling within the wording of claim 1 as granted. Or an overseas telephone station with arrays of rhombics. A first thought of mine was the infamous soviet woodpecker transhorizon radar, but the array shown does not quite have what I want. I found in Espacenet US5160936, which is quite cute.
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