tag:blogger.com,1999:blog-2352189175211648260.post3310498845748920520..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 535/08 – No Contributionorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-2352189175211648260.post-36326908459598824942012-03-06T01:24:03.474+01:002012-03-06T01:24:03.474+01:00It might not have helped that the opponent also se...It might not have helped that the opponent also seems to have been of the view that "providing a technical contribution" has to do with the feature being important for novelty or inventive step.<br /><br />From G 1/93:<br />"5. In case T 231/89, the Board of Appeal held that a scope- limiting feature in a claim, added before grant in contravention of Article 123(2) EPC, may remain in the claim notwithstanding its character of added matter, provided such feature is immaterial in respect of the novelty and inventive step of the claimed subject-matter. This consideration has been criticised by the opponent as based on irrelevant speculation about a relationship between paragraphs 2 and 3 of Article 123 EPC, which was unnecessary to the decision in that case and which took place where no arguments on the question had been advanced. (...)<br /><br />13. The Enlarged Board agrees with the opponent that there is no support under the EPC for the idea expressed by the Board of Appeal in case T 231/89, that there is a mutual relationship between paragraphs 2 and 3 of Article 123 EPC, the one to be applied as primary and the other as subsidiary depending on the facts of the individual case. This interpretation is not in line with the mandatory character of Article 123(2) EPC, as explained by the Enlarged Board in its opinion in case G 3/89 (OJ EPO 1993, 117). Paragraphs 2 and 3 of Article 123 EPC are mutually independent of each other. Thus, if a limiting feature is considered to fall under Article 123(2) EPC, it cannot be maintained in the patent in view of Article 100(c) EPC, nor can it be removed from the claims without violating Article 123(3) EPC."<br /><br />I think it is quite clear already from the above passages of G 1/93 that "not providing a technical contribution" is not the same as "being immaterial in respect of the novelty and inventive step of the claimed subject-matter". Yet that is how the Board in T 535/08 appears to interpret G 1/93.<br /><br />In my view the above passages of G 1/93 also make clear that a feature that "does not provide a technical contribution" simply does not infringe Art. 123(2), even if there is no question of an Art. 123(2)/(3) trap. Art. 123(2) must be applied independently of Art. 123(3). In other words, it is not the case that the presence of an Art. 123(2)/(3) trap somehow relaxes the requirements of Art. 123(2). It follows that what is stated about the disclosure test of Art. 123(2) in decisions G 2/98, G 1/03 and G 2/10 also applies in the presence of such a trap. (Even though in those later decisions the EBA does seem to view G 1/93 as being tied to its specific legal situation...)Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-71999634832750974072012-03-02T22:39:41.554+01:002012-03-02T22:39:41.554+01:00I for one would say that this decision is not quit...I for one would say that this decision is not quite in line with how I understand A 123 and G 1/93. Still, I think that it is well worth knowing because it may prove to be useful in an otherwise desperate situation.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-62446126355372397752012-03-02T16:22:00.181+01:002012-03-02T16:22:00.181+01:00Does this tally with everyone's understanding ...Does this tally with everyone's understanding of G 1/93? <br /><br />I seem to remember Myshkin arguing "that it is not the case that a feature added to a claim that is already novel and inventive does not provide a "technical contribution" in the sense of G 1/93 (and would therefore not infringe Art. 123(2) and escape the trap). In my view, the addition of a technically limiting feature always provides a technical contribution. Otherwise, compliance with Art. 123(2) would be very much dependent on the available prior art, which would go against G 2/98, par. 8.3 (the tests underlying Art. 87(1) and 123(2) being identical)."<br /><br />See http://k-slaw.blogspot.com/2011/06/t-187808-significant.htmlAnonymousnoreply@blogger.com