T 521/10 – A Problematic Incorporation

A reminder on the conditions for incorporation by reference …

[3] Claim 1 was amended and is now directed to the embodiment disclosed on page 27, line 16 onwards of the published application, i.e. the A1 publication. This is the case for all requests. The enabling disclosure for this embodiment, in particular for the first part of feature b) and feature c) of claim 1, relies on the content of patent applications WO 00/46680 ([INC1]), US 09/378184 (INC2) and US 09/378220 (INC3) incorporated by reference. There is no explicit disclosure of how exactly a pixel array is mapped to a geometric surface and how an image is generated of the program and a video clip by binding the mapped pixel array to the geometric surface.

[3.1] The reference to [INC1] was not present in the priority document of the present application. The board notes that [INC1] was only filed on 2 February 2000, which is later than the claimed priority date of 16 January 2000 for the present application. As far as the subject-matter of claim 1 is based on the disclosure of [INC1], the priority is not validly claimed and the effective filing date of claim 1 is consequently 12 January 2001. Since [INC1] was published on 10 August 2000 it is pertinent prior art against the present application for subject-matter having the filing date as its effective date which is the case for claim 1.

[3.2] Incorporated applications [INC2] and [INC3] do not fulfil the requirements set out in T 737/90 [3] and Case Law, 7th ed. 2013, II. C. 3.2, pp. 307 and 308 (see also Singer/Stauder, The EPC, Commentary, 3rd edition, A 83, No. 34). In order to be validly incorporated according to this case law each document must fulfil the following:

(i) a copy of the document was available to the Office on or before the date of filing of the application; and

(ii) the document was made available to the public no later than on the date of publication of the application under A 93.

Neither of the two documents was available to the public on the date of filing of the present application.

The only publication available to the EPO originating from [INC2] and [INC3] is […] a continuation-in-part application published on 7 November 2002, i.e. later than the publication date 19 July 2001 of the present application. […]

[3.4] In the annex to the summons to oral proceedings the appellant was invited to provide evidence that the above mentioned requirements were fulfilled for [INC2] and [INC3] […](e.g. by having been publicly accessible in the application dossier before the date of publication of the present application and therefore having been made public by analogy with A 128(4))). However, the appellant did not react to this invitation. No arguments or facts contradicting the board’s reasoning were presented with regard to the aforementioned problems concerning the disclosure and effective filing date. The board takes this as meaning that the appellant accepts the board’s reasoning.

[3.5] For this reason the board concludes that only [INC1] has been validly incorporated by reference and the subject-matter of claim 1 of all requests, for the reasons given above, only has the filing date of the present application as its effective date, with [INC1] being prior art relevant to claim 1.

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