T 680/08 – Still The Same?

The present decision contains some rather surprising findings concerning the validity of a claim to priority.

Claim 1 according to the main request read as follows:

1. Method of compounding a multimodal polyethylene composition in a compounding device, wherein

a) the total residence time of the polyethylene composition in the compounding device is at least 3 minutes,

b) the total drive specific energy (SEC) applied on the polyethylene composition is from 0.330 to 0.415 kWh/kg,

c) optionally, a specific cooling energy (SCC) of at most 0.200 kWh/kg is applied on the polyethylene composition,

d) the total specific energy, which is the difference between the total drive specific energy SEC and any specific cooling energy SCC, applied on the polyethylene composition is from 0.220 to 0.330 kWh/kg. 

The value of lower limit for the total drive specific energy (SEC) applied on the polyethylene composition was 0.325 kWh/kg in the European patent application the priority of which was claimed and had been modified to 0.330 kWh/kg when the opposed patent was filed. This change appears not to have been triggered by prior art (the search report for the priority document was positive) and was not even due to rounding up; the patent proprietor later attributed it to “sloppiness” in drafting.

Issues relating to priority

[1] The subject-matter of claim 1 of the main request corresponds to the disclosure in the priority document D0 with the exception of the explicit mention of the value of total drive specific energy (SEC) of 0.330 kWh/kg.

In consequence, in claim 1 of the main request, the only contested issue is the validity of the claim to priority in view of the value 0.330 kWh/kg used as lower boundary of the total drive specific energy (SEC) range of feature b).

Same invention

[1.1] According to A 87(1)(b), a claim to priority can only be validly claimed in respect of the “same invention”.

Claim 1 according to the main request concerns a process whose value of total drive specific energy is constrained to lie within the particular range of values from 0.330 to 0.415 kWh/kg.

The priority document D0 discloses that “in the method according to the invention, the total drive specific energy (SEC) applied on the polyethylene composition is preferably at least 0.325 kWh/kg” and that “the total drive specific energy (SEC) applied on the polyethylene composition preferably does not exceed 0.415 kWh/kg” […].

When filing the patent in suit, the lower bound value of the range of total drive specific energies was therefore increased from 0.325 kWh/kg to 0.330 kWh/kg, i.e. to a value which lies inside the range disclosed in the priority document.

On the basis of this disclosure, the priority, if claimed accordingly, would be valid for methods wherein the total drive specific energy is chosen to be in the range of 0.325 to 0.415 kWh/kg and thus includes all methods whose actual value for the SEC is anywhere within the range of 0.325 to 0.415 kWh/kg, i.e. also for SEC values which were not mentioned explicitly in the priority document such as 0.330 kWh/kg.

However, before a conclusion concerning the validity of the priority can be arrived at, it is necessary to consider the arguments against it.

Technical effect

[1.2] One aspect to be considered is whether the technical effect associated with SEC values from 0.330 to 0.415 kWh/kg differs from the one associated with SEC values from 0.325 to 0.330 kWh/kg.

It was proposed on the part of the [opponents] that when comparing the examples set out in tables 1 and 2 of the patent in suit, differences in applied SEC comparable to the 0.005 kWh/kg increase produce significant differences in properties such as white spot dispersion, gel count and pigment distribution.

However, these examples are not directly comparable, because of additional changes in other parameters, such as residence time and/or the use of different polymers. […] The resulting differences in white spot dispersion, gel count and pigment distribution are therefore not necessarily primarily due to changes in applied SEC. Furthermore, taken as a whole, the examples set out in tables 1 and 2 of the patent in suit show that the claimed processes of compounding multimodal polyethylene are naturally subject to variations in properties such as the number of gels. The Board therefore considers that, on the basis of these examples alone, it is not possible to attribute a given property - such as, for example, the difference in the numbers of gels/kg - directly to a change in SEC alone.

It was also proposed on the part of the [opponents] that in view of figure 2.1 of document D23, an applied energy of 0.330 kWh/kg would bring the tested multimodal polyethylene composition critically close to its decomposition temperature, such that even a small change in applied energy might have a decisive technical effect concerning the thermal destruction, or not, of the multimodal polyethylene composition. The method claimed in the present invention concerns compounding a multimodal polyethylene composition, which process loses its purpose should the composition be thereby heated to destruction. The skilled person would therefore only use the claimed compounding method without operating near the thermal destruction of the multimodal polyethylene composition.

It was further alleged on the part of the [opponents] that no change would be made to the claimed range of SEC values without good reason. However, no such reason or proof of a change in technical effect was supplied.

Furthermore, it was alleged on the part of the [patent proprietor] - and not denied by the [opponents] - that the 0.005 kWh/kg increase in the lower bound value of SEC is allegedly comparable to other sources of natural variations in applied energy such as temperature fluctuations due to the seasons or efficiency variations in mechanical agitators, motors and gearboxes. The Board therefore concludes that there is no proof that the increased SEC lower bound value of 0.330 kWh/kg results in any identifiably other technical effect compared to the technical effect associated with the larger range disclosed in the priority document.

Enlarged Board of Appeal (EBA) Opinion G 2/98

[1.3] It was suggested on behalf of the [opponents] that, in view of the strict requirements set out in the EBA opinion G 2/98, the mere fact that the value 0.330 kWh/kg was not mentioned in document D0 was enough to lose the priority claim for the whole of the subject-matter of claim 1 of the main request.

As the Board has not found any indication in opinion G 2/98 that the EBA explicitly considered the particular case of a process in which a value is constrained to lie inside a range whose lower bound has been marginally moved inwards, the response to the above argument requires a closer look at the reasoning used in that EBA opinion.

In arriving at its conclusions in opinion G 2/98, the EBA took into account possible adverse effects of alternative assessments of the validity of a claimed priority.

In the present case, denying the claim to priority for the subject-matter of claim 1 across the whole range of SEC values would lead to the following adverse effect: A third party could file an application for a process claiming the SEC upper bound value of 0.415 kWh/kg in the interval between the filing of the priority document D0 and of the filing of the application for the patent in suit. Such a document, once published, would form prior art according to A 54(3) for the upper bound value in the patent in suit. The proprietor would therefore be effectively forced to restrict his claim to exclude this upper bound, although he was the first to disclose it in his own priority document D0. The Board considers that this goes against the principle of fairness, as the [patent proprietor] would effectively be punished for increasing the lower bound value - a measure not foreseen anywhere in the EPC.

It was further argued on behalf of the [opponents] that the [patent proprietor] had a choice when drafting the application with respect to the claimed priority. However, this does not make the above adverse effect any more acceptable.

Other decisions

[1.4] Reference was made on behalf of the [opponents] to decisions T 1443/05, T 118/99, T 136/01 and T 494/03.

Decision T 1443/05 [4.1] concerned the addition of a disclaimer in the subsequent European application for which the priority was considered to be invalid. Although some examples did not contain the substance “CMIT”, the application as filed did not contain any indication from which the skilled person could directly and unambiguously derive the disadvantages of CMIT and the consequent exclusion of CMIT from the invention. The situation is therefore different from the present case.

In decision T 118/99 [3.2], the Board considered that it was implicitly stressed that the difference of one unit is technically relevant for the claimed process so that the residence times are technically different.

In decision T 136/01 [3.3], evidence was provided to the effect that the change in the lower end point of the temperature range has direct consequences on the polymers obtainable by the claimed treatment.

In decision T 494/03, the increased lower bound value was already explicitly disclosed in the priority document and there was no evidence that the difference is of significance. Therefore, the cases underlying these decisions differ from the present situation.

Conclusion

[1.5] The Board therefore considers that with the exception of the explicit reference to the particular SEC lower bound value of 0.330 kWh/kg, the subject-matter of claim 1 of the main request concerns the “same invention” as that disclosed in the priority document D0.

Entitlement to priority

[2.1] It is an undisputed fact that the value of 0.330 kWh/kg is not explicitly mentioned in the priority document D0. As the lower bound value of SEC of 0.330 kWh/kg cannot be directly and unambiguously derived from document D0, the subject-matter of claim 1 according to the main request - insofar as a method carried out at the lower bound value of 0.330 kWh/kg is concerned - is not entitled to the priority of document D0 (A 87(1)(b)).

As the priority document D0 was a European patent application that had been published as document D1, there is trouble in the air.

Novelty with respect to A 54(3) document D1

[2.2] Document D0 was filed 14 June 2001 and published as document D1 on 18 December 2002. The designated contracting states correspond to those of the patent in suit. In consequence, document D1 belongs to the state of the art under A 54(3) for all designated contracting states of the patent in suit.

In accordance with opinion G 3/93 of the EBA, a priority document which is published during the priority interval belongs to the state of the art for the later European application under A 54 insofar as the claim to priority is not valid. For the subject-matter of claim 1 of the main request, the claim to priority is not valid for a method carried out at the particular SEC lower bound value of 0.330 kWh/kg.

Claim 3 of document D1 refers back to claim 1 and thereby discloses a method of compounding a multimodal polyethylene composition in a compounding device, wherein

a) the total residence time of the polyethylene composition in the compounding device is at least 3 minutes,

b) the total drive specific energy (SEC) applied on the polyethylene composition is from 0.240 to 0.450 kWh/kg,

c) optionally, a specific cooling energy (SCC) of at most 0.200 kWh/kg is applied on the polyethylene composition,

d) the total specific energy, which is the difference between the total drive specific energy SEC and any specific cooling energy SCC, applied on the polyethylene composition is from 0.220 to 0.330 kWh/kg.

The subject-matter of claim 1 of the main request for a method carried out at a SEC value of 0.330 kWh/kg does not meet the requirements of a selection invention, because the value of 0.330 kWh/kg is close to the value of 0.325 kWh/kg disclosed in […] document D1.

Furthermore, as argued above in point [1.2], there is no proof that an SEC value of 0.330 kWh/kg gives rise to any identifiably other technical effect than that associated with the larger range disclosed in document D1. Therefore, at the SEC value of 0.330 kWh/kg, the subject-matter of claim 1 of the main request does not constitute a purposive selection giving rise to any new technical teaching.

In consequence, the subject-matter of claim 1 according to the main request is not novel with respect to document D1 under A 54(3).

In my opinion, as far as the “same invention” criterion is concerned, the present decision departs from the strict teaching of G 2/98, which is regrettable from the point of view of legal certainty. Nevertheless, the priority claim is invalidated because the “directly and unambiguously” criterion is found not to be satisfied. The Board thereby ignores that this criterion is at the very heart of the definition that G 2/98 has given of the “same invention”:

“The requirement for claiming priority of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.

To sum up, the Board appears to have seen two criteria where in reality there is only one, but fortunately it has held that it was sufficient for the priority claim to be invalid that of them was not fulfilled. So the final outcome (loss of the priority claim) appears to be correct, but the way to get there is astonishing, to say the least.

Next time we shall see the even more surprising way in which the revocation of the patent was avoided.

If you wish to read the whole decision, you can download it here.

T 528/07 – Com, Vick, And TRIPS It As Ye Go

From time to time Board of appeal decisions show a knowledgeable colleague trying to take advantage of one of the recent patent related conventions such as the TRIPS agreement. In most cases these attempts are unsuccessful, but you almost always learn something interesting or useful in the Board’s response.

[1] The invention in accordance with claim 1 is a computer system for providing a business-to-business relationship portal. Its purpose is to facilitate the exchange of information between parties for example in business launch centres (which is the preferred embodiment […]). It presents business opportunity information to permissioned users. In case of a business launch centre an “opportunity” is e.g. “any e- business that is being evaluated by one of the launch centers” […]. “Business opportunity information” is e.g. company background information or financial information, and “permissioning” refers to users' rights to view and/or modify information […]. The channels, which may appear as boxes on the user's screen, contain links to portal applications and may include summaries of aggregated data from the applications […]. “Applications” are in the Board's understanding application programs.

Inventive step

Article 27 TRIPS

[2.1] The invention as claimed consists of a mixture of technical and non-technical features, the non-technical features relating to a business-to-business relationship portal such as a launch centre, i.e. an entity arranged to provide new businesses with resources for rapidly and successfully building, launching and scaling their business […]. In order to examine this type of subject-matter the Board would normally apply the “Comvik approach” (cf. T 641/00). The appellant has however argued that since A 52(1) in its revised version had been brought into line with Article 27(1) TRIPS it had to be interpreted in the light of the object and purpose of this agreement. The wording of A 52(1):

European patents shall be granted for any inventions, in all fields of technology …

implied not only that there could be no “non-inventions” (i.e. exclusions of the kind enumerated in A 52(2)) in a field of technology, but also that the examination for inventive step had to be handled in a way to ensure that patents were indeed “available and patent rights enjoyable”, as required by Article 27(1) TRIPS. It was not permitted to treat features involving non-technical aspects as part of the object to be achieved by the invention. Business-driven aspects (such as the aim to develop profit-bringing products) were behind every invention, and were regularly ignored in the formulation of the problem. All features of a claim contributed to an inventive step, although it was permissible to attach more weight to the technical ones.

[2.2] The Board is aware that the Comvik approach often leads to the conclusion that an invention involving non-technical aspects merely solves a trivial technical problem. But this is not an inevitable outcome. As soon as an invention solves a technical problem in a non- obvious way patent protection is in principle available even if the claim in addition contains non-technical features (cf. T 769/92). A frequent case is however that technical features, such as the client-server system in the present case, are known as such but are used for a non-technical purpose. According to the Comvik approach, a claim feature is regarded either as being a mere expression of a non-technical “framework” or as constituting a technical feature that contributes to an inventive step. The appellant seems to argue that such a grouping of features should not be performed, or at least that the “framework” should to some degree also contribute to the inventive step.

[2.3] The Board does not share the appellant's opinion that TRIPS would require a modification of the Comvik approach. Article 27(1) TRIPS stipulates that, subject to the provisions of its paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. At the revision conference in the year 2000, A 52(1) was amended to include the expression “in all fields of technology” to bring it explicitly into line with the TRIPS agreement. TRIPS does not give a definition of the term “technology” but leaves it to the member states and their jurisdiction to define and apply this concept (cf. J. Straus, “Bedeutung des TRIPS für das Patentrecht”, GRUR Int. 1996, No. 3, 179, points 35 and 36). The Board accepts that in the present case the claimed subject-matter is technical, i.e. an invention within the meaning of A 52(1), and therefore open to patent protection. However, under Article 27(1) TRIPS a patent shall only be granted if it is new and involves an inventive step. Again, TRIPS does not stipulate how these requirements are to be applied. Article 27(1) TRIPS reflects on the one hand a minimum consensus and on the other hand the member states’ unreadiness uniformly to define the patentability requirements (cf. J. Straus, loc. cit. point 47). The TRIPS member states are free to adopt different standards for each patentability requirement, such as inventive step (cf. Nuno Pires de Carvalho, “The TRIPS Regime of Patent Rights”, 2nd edn., The Hague, 2005, 191). The Comvik approach is one facet of the standard applied by the EPO.

The jurisprudence of the Boards of Appeal

[3.1] The appellant has cited several decisions of the Boards of Appeal in order to demonstrate that the display of data can have technical character. One of these decisions is T 717/05. The appellant quotes its point [5.4]:

… any display of information of the internal state of an apparatus conveys a cognitive content to the user, as this is the fundamental reason for its existence. To exclude all such systems from patent protection cannot be seriously envisaged.

[3.2] Decision T 717/05 concerned a game apparatus. Its internal state reflected the state (outcome) of game events. The present Board is inclined to agree with the appellant that if the display of information about the outcome of games played on a computer has technical character, as held in the cited decision, then it may well follow by analogy that the information displayed in present claim 1, albeit not concerned with games, contributes to an inventive step. The Board will therefore review the jurisprudence of the Boards of Appeal on this point.

[3.3] T 717/05 relies for authority (see its point [5.5]) on decision T 115/85 […, which] states (at point [7]) that “giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem”.

This statement was explained in decision T 833/91 [3.1] in the following way: “Even though the decision [i.e. T 115/85] does not specify said ‘event’ or ‘condition’ by way of examples, it is therefore to be concluded that they were basically of a technical nature such as, for instance, an event calling for an error message”.

[3.4] Thus two different interpretations of decision T 115/85 exist in the jurisprudence: either the visual indications must concern technical conditions of the system in order to relate to a technical problem (T 833/91), or they may also concern non-technical conditions (T 717/05).

[3.5] The present Board will follow the more restrictive approach according to which only technical conditions of a system can be taken into account. This line has also been taken in other decisions of the Boards of Appeal (see e.g. T 790/92 [4.6]; T 953/94 [3.1]; T 1161/04 [4.5]; T 1567/05 [3.7]; T 756/06 [13]). Moreover, the clear character of exception of this approach appears to be more consistent with the exclusion of “presentations of information” pursuant to A 52(2)(d).

[3.6] The present Board will therefore regard features that indicate non-technical conditions of the claimed system, such as data relating to a business undertaking, as not contributing to an inventive step.

The Board then examines the features having technical character and comes to the conclusion that the claim does not contain any feature making a non-obvious technical contribution to the prior art. It then continues:

[5.7] The appellant has argued that the overall combination of the features has a synergistic effect because they cooperate to solve the technical problem of facilitating the exchange of information and supporting rapid information sharing […]. The Board is not convinced that there is an (unexpected) synergistic effect since features do not interact merely because they have a common goal. But even if there was such an effect it could only exist on a business level. On a technical level nothing in the claim is surprising: the use of a client-server system facilitates the exchange of information and support information sharing (that is what it is for); and the kind of information displayed or transmitted (opportunities, catalogues) has nothing to do with the rapidity with which signals travel from user to user. Furthermore, if the invention has the effect of reducing the traffic load on the net - as has been argued - this is due to user restrictions rather than, say, a protocol determining how the computers transmit data packets over the communication channel. In other words, the load is reduced by non-technical rather than technical means (also referred to in the jurisprudence of the Boards as a “circumvention” of the technical problem).

[5.8] It follows that the subject-matter of claim 1 does not involve an inventive step (A 56 EPC 1973).

If you wish to download the whole decision, you may find it here.

p.s.: If you find the title of this post somewhat obscure, it is an allusion to John Milton’s Allegro, line 33 et seqq.: ... Com, and trip it as ye go / On the light fantastick toe / And in thy right hand lead with thee / The Mountain Nymph, sweet Liberty ...

J 3/09 – A Modern Hans-in-luck

The present decision made me think of the Grimm brothers’ fairy tale “Hans in luck” where a young fellow earns a lump of gold. He then exchanges his gold against other things. After a series of foolish exchanges nothing is left. In the present case an applicant paid a considerable amount of claims fees but got indeed very little in exchange. But as the applicant got something (at least potentially), the Board does not accede to its request for reimbursement.

To be more specific, the applicant had filed a PCT application comprising 68 claims. The EPO was acting as ISA and found the claims to be non-unitary. Only claims 1 to 15 were searched. Upon entry into the European phase, the applicant paid claims fees for the claims  in excess (58 x 45 = 2610 €; times have changed: nowadays 16640 € would have to be paid). The Examining Division (ED) confirmed the lack of unity and invited the applicant to limit the application to the searched inventions. The applicant requested reimbursement of the claims fees but this request was refused. The applicant then filed an appeal against this decision, arguing inter alia that the fee payment did not have any legal basis.

I recommend that you read the whole decision, which is well argued. If you wish to do so, you can download it here. If you want to content yourself with extracts, please read on:

Before deciding on this matter, the Board explains the relevant proceedings under the EPC 1973 and under the EPC 2000.

Unity and search report on entry into European phase.

[3.5.1] Under R 112 EPC 1973, where, as here, only part of an international application had been searched by the ISA following an objection of lack of unity, and the applicant had not taken the opportunity to pay the relevant additional fees to the ISA, the EPO was required to consider whether the application in fact complied with the requirement of unity. If it considered that it did not comply, the applicant was to be told that a European search report (ESR) could be obtained in respect of the unsearched parts of the application if a search fee was paid. The Search Division was then to draw up a ESR for those parts of the international application in respect of which search fees had been paid.

[3.5.2] The Rules did not state what was to happen if the EPO considered, contrary to the view of the ISA, that the application did comply with the requirement of unity. However, the responsibility for establishing whether or not the application met the requirements of unity of invention under A 82 EPC 1973 ultimately rested with the Examining Division (ED), and the opinion of the EPO acting as the ISA on lack of unity was not final or binding on the ED, see T 631/97 [3.8]. If the ED disagreed with the conclusion in the search report on lack of unity an additional search would have had to be and would have been carried out without payment of any additional fee, since, subject to R 45 EPC 1973, an applicant was entitled to have a unitary invention completely searched. The examination would then have been conducted on the basis of all claims (see T 631/97 and the Guidelines for Examination, C-III, 7.10, and C-VI, 3.1-4).

[3.5.3] The equivalent rule under the EPC 2000 is R 164. Under R 164(2), where the ED considers that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention or protection is sought for an invention not covered by the international search report (ISR), it is to invite the applicant to limit the application to one invention covered by the ISR. This was the procedure followed by the Office in the present case. […]

[3.5.4] The procedure on entry into the European phase (i.e., R 112 EPC 1973; R 164) therefore changed with the coming into force of the EPC 2000, as explained in the remarks to the new rule published by the EPO (see OJ EPO 2007, Special Edition 5, 256),

“New R 164 simplifies the procedure, and the opportunity to have multiple inventions searched within the framework of one application will be limited to the international phase. On entry into the European phase, non-unitary subject matter should be deleted. The new procedure does not involve any loss of rights for the applicant. The result is just that the applicant will have to use the appropriate way of having any further inventions searched and examined by filing divisional applications. This will bring the Euro-PCT procedure in line with the Euro-direct procedure.”

[3.5.5] It is this change in procedure which has clearly given rise to the present appeal.

[3.5.6] As with the position under R 112 EPC 1973, R 164 does not state what is to happen if the ED considers, contrary to the view of the ISA, that the application does comply with the requirement of unity of invention. However, the Board does not consider that the position in this respect has altered with the coming into force of the EPC 2000. Although the procedure has changed as explained in point [3.5.4] above, the Board considers that responsibility for establishing whether or not the application meets the requirements of unity of invention still ultimately rests with the ED, and the opinion of the EPO acting as the ISA on lack of unity is not final or binding on the ED. Indeed the practice of the ED in this respect remains as before, see the Guidelines for Examination, C-III, 7.10 and 7.11.1 (especially 7.11.1(v)).

The explanatory remarks (see point [3.5.4] above) appear to the Board to have put the matter correctly by referring to the new limit on the possibility of having multiple inventions searched, while saying nothing about the more general possibility of having hitherto unsearched subject-matter searched. In this respect the legal situation remains unchanged, so that to the extent that an objection of non-unity raised by the ISA in the international phase turns out to be unjustified, the applicant is entitled as of right to have the whole subject matter of his unitary invention searched.

[3.5.7] This is also apparent from the wording of R 164(2) giving the EPO the power to invite the applicant to limit the application to one invention covered by the ISR. This implies that where there is in fact only “one” invention there is no sanction.

[3.5.8] As it happened, in the present application the ED in fact came to the conclusion that the previous opinion of the EPO acting as the ISA on the lack of unity was correct […].

Legal basis for claims fees

[4.1] When on 8 November 2007 the appellant filed the requisite documents for the entry of the application into the European phase and paid the claims fees now in dispute, it was on the basis of R 110(1) EPC 1973.

[4.2] While the Board can accept the general principle that fees paid without a legal basis are refundable, the Board cannot accept the appellant’s basic argument in this case that the payment of claims fees in respect of claims 16 - 68 in the application had no legal basis. There clearly was such a legal basis, namely R 110(1) EPC 1973. The wording of the Rule is clear and straightforward. Apart from Rules 110(2) and (3), there is nothing to be found in the rules or elsewhere which modifies the effect of the rule or deprives it of its effect, for example, where claims are later withdrawn or abandoned.

[4.3] The Board would add that under the EPC the general principle is that fees, once validly paid, are not refundable unless provision to the contrary is made. This means that fees paid on a legal basis are not normally refundable, even if for example the proceedings are terminated shortly after the fee is paid and the objects for which the fees were paid are not achieved. In other words, the reimbursement of a fee requires there to be special provision (see for example decision J 33/86). As regards the refund of claims fees, as already noted, the appellant does not rely on any specific provision of the EPC in support.

[4.4] The basic premise of the appellant’s appeal is therefore false.

[4.5] There is therefore no need for the Board to enter into a discussion about what the precise purpose of the provisions requiring payment of claims fees is. Even if it is to compensate for the extra work involved for the EPO with a large number of claims it follows from the above that the claims fee to fall due whether or not any extra work has actually been done in the case in question.

The appellant has asked rhetorically whether an examiner could validly make an objection under R 43(5) in respect of claims for which claims fees had already been accepted. The answer is clearly yes. Claims fees are payable within a prescribed time in accordance with the Rules Relating to Fees and have nothing to do with the ED’s assessment under R 43(5) of what is a reasonable number of claims.

[4.6] The Board would also point out that, following the Office’s communication of 16 January 2008 under R 161 and R 162 EPC 2000, the appellant had the opportunity to file amended claims and, if appropriate, obtain a refund of excess claims fees. The legal consequences of such action would have been no different than if it had directly entered the European phase with such reduced number of claims. For whatever reason, however, the appellant did not take such opportunity.

Inevitable abandonment of subject matter

[5.1] In any event, the Board also does not accept the further premise which the appellant asserts, namely that it was inevitable that the subject matter of the unsearched claims could not be prosecuted in the application, and must therefore be considered as having been (at some unspecified stage) “abandoned”.

[5.2] As explained in points [3.5.2] and [3.5.6] above, it was perfectly possible, either before or, more realistically, after the EPC 2000 came into force, that the ED would have concluded that the objection of lack of unity had been wrong, in which event an additional search would have been carried out and the examination conducted on the basis of all claims.

[5.3] The appellant has cited the decision of the Enlarged Board (EBA) in G 2/92, where in the concluding opinion it was said that:

“An applicant who fails to pay the further search fees for a non-unitary application when requested to do so by the Search Division under R 46(1) EPC [1973] cannot pursue that application for the subject-matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.”

[5.4] This statement was considered in decision T 631/97 [3.7.2], where the Board observed that the reference to “a non-unitary application” in this passage: “... means that the application is non-unitary when the ED upon review agrees with the opinion of the search division.”

[5.5] The Board in that decision also noted (see points [3.7.4-3.9.1] of the Reasons) that the practice of the EPO as set out in the then current version of the Guidelines for Examination, C-III, 7.10 and C-VI, 3.4, whereby the ED itself considers the issue of unity and a further search is if necessary carried out, was fully consistent with decision G 2/92.

[5.6] The Board also does not consider that decision G 2/92 is authority for the proposition put forward by the appellant that subject-matter which has not been searched is to be regarded as abandoned. The expression “abandoned” had been used in decision T 178/84 and the EBA in decision G 2/92 [II] observed that:

“It seems that the word “abandoned” as used in this decision [i.e. T 178/84] is not intended to refer to a public renunciation of the applicant’s desire to obtain patent protection for the relevant subject-matter but is used in a narrower sense simply to refer to the fact that protection for the relevant subject-matter per se within that particular patent application is no longer possible.”

As already explained, protection within the present application for unitary subject-matter, even if unsearched, remained possible.

[5.7] Although the appellant asserts that the Guidelines for Examination, C-III, 7.11, explaining R 164(2), support the approach that subject matter in respect of which a search fee has not been paid cannot obtain protection in that application and should be regarded as “abandoned”, subject only to pursuing it via a divisional application, in fact this paragraph of the Guidelines states, in conformity with the Guidelines at paragraphs C-III, 7.11.1(v) and B-II, 4.2(iii), referred to above:

“(ii) if, during the international search, an objection of lack of unity has been raised and the applicant has neither taken the opportunity to have the other invention(s) searched by paying additional search fees for them, nor amended the claims so that they are limited to the invention searched, and the examiner agrees with the objection of the ISA, he will then proceed to issue a communication under Rule 71(1) and (2), dealing exclusively with the subject-matter of the one and only invention which has been searched.” (Emphasis added by the Board)

As already noted in points [3.5.2] and [3.5.6] above, the Guidelines at C-III, 7.11.1(v) go on to state what happens where the examiner does not agree with the objection of the ISA.

[5.8] In this regard, the Board generally cannot accept the appellant’s argument that this state of affairs altered following the introduction of the BEST system of examination in 1990. While it is true that following the introduction of this system the same person who gave the opinion on unity on behalf of the EPO acting as ISA may carry out the examination for unity of invention as principal examiner on behalf of the ED, this will not necessarily be the case and is in any event irrelevant. It cannot be assumed, as the appellant apparently does, that the ED will fail to carry out its obligation to consider the question of unity. Not only are the Guidelines for Examination on this matter clear, as already explained, but any finding may be made the subject of formal decision and an appeal to the Boards of Appeal.

[5.9] Furthermore, in the frequent case of an a posteriori objection of non unity, even if justified, the claims may usefully serve as a basis for later limiting the claimed subject-matter to a more specifically defined but now unitary and searched invention. Admittedly, the extent to which this is possible depends on the circumstances of the individual case, but it remains the position that the payment of claims fees for claims exceeding the number of ten may have a useful purpose on its own independently from the question whether all the claims concern unitary subject-matter.

The Board then deals with arguments of the appellant concerning the entry into force of the EPC 2000 and an alleged “delay” of the office. The final request of the appellant is more surprising:

[8.1] The appellant alternatively requests to be permitted to prosecute all claims in the application subject to payment of additional search fees, with a refund of all fees paid on the related divisional application EP 08164537.6 (which would then be withdrawn).

[8.2] The appellant has not suggested any legal basis for the making of such an order, and the Board cannot itself see any basis for doing so in the context of the present appeal proceedings. The only subject of the present appeal proceedings is the appealed decision, i.e. its rejection of the appellant’s request for refund of claims fees paid. Nothing else having been decided by the ED, any decision on the appellant’s requests referred to above would exceed the decision making power of the Board in the present proceedings.

Personally, I have never seen the ED invalidate an objection of lack of unity made by the EPO acting as ISA, and I guess it hardly ever happens. So my personal approach would be never to pay claims fees for claims that have not been searched by the EPO/ISA but to file divisionals for the unsearched claims I need to have examined. If the lack of unity objection was made by an ISA other than the EPO, the situation is quite different because there will be a complementary search.

Publish Or Perish (ctd.)

Some time ago, we have seen that the Board of appeals have published a lot more decisions in 2009 than in 2008. What are the tendencies for 2010 ? Here is a first status report (click to enlarge):

During the first half of 2010, the number of publications was generally higher than in 2008 and 2009. However, things appear to have slowed down a bit by now. Will we go beyond 2000 published decisions in 2010 ? I guess not, but bets are still being accepted.

NB: The numbers are not precise to the last digit as the Boards sometimes publish decisions twice and also publish translations (for the decisions published in the Official Journal) separately.

Please note that what is counted here is the number of decisions made available on the DG3 site and not the number of decisions taken by the Boards.

T 520/08 – Quick Inspection

  

** Translation from the German **

[3.1] Document D4 is an Australian provisional application which was not available to the public. However, the priority of document D4 has been claimed in European application D1, which had been published two days before the priority date of the impugned patent.

Pursuant A 128(4), after the publication of a European patent application, the files relating to the application may be inspected on request. This ensures public availability.

The [patent proprietor] pointed out that for practical reasons file inspection could not possibly have been obtained only two days after the publication at that time, but they have not filed any evidence proving this assertion.

Therefore, the Board follows the argument of the [opponent] according to which document D4 was available to the public before the priority date of the impugned patent and constitutes prior art under A 54(2).

This is tough but quite logical. I sometimes check how long it takes before documents I have filed via Epoline appear on Register Plus. It is not uncommon that I have to wait for several days. At the priority date of the patent under consideration (October 1999) Register Plus had not yet gone live and it appears to be very unlikely that the priority document was de facto publicly available two days after the publication of application D1. Perhaps the patentee could have obtained an affidavit in this regard. However, as it did not submit any evidence, the Board logically followed the argument of the opponent.

To read the whole decision (in German), please click here.

T 2013/08 – Singling Out Prohibited

In the preceding post we saw that the main request was found to be a “wish claim” to be rejected for lack of clarity (and also for lack of inventive step). The first and second auxiliary requests shared this fate. The applicant also filed a third auxiliary request claim 1 in which it included details on the materials to be used, as suggested by the Board:

Tubular target with a cylindrical carrier tube and at least one target tube arranged on its outer surface, wherein a connecting layer is arranged between the target tube and the carrier tube, characterised in that the connecting layer is electrically conducting and has a wetting degree of >90%, in that the degree of wetting is present both on the exterior surface of the carrier tube and on the interior surface of the target tube, in that the carrier tube is made of steel or titanium, in that the connecting layer has a solder material formed of In, which is arranged directly on the carrier tube, in that the carrier tube is optionally coated with a nickel-based adhesive layer, and in that the material of the target tube is formed of Mo.

** Translation from the German **

[2] Claim 1 of the third auxiliary request is based on claims 1, 3, 6, 9, 11 and 12 and page 3, lines 7 to 8 (carrier tube “made of steel or titanium”).

[2.1] However, the deletion of all the materials except Mo from the list of possible target tube materials according to original claim 6 of the application (“Cu, Al, Zr, Mo, W, Ti, Cr, Ni, Ta, Nb, Ag, Zn, Bi, Sn, Si, or an alloy based on at least one of these elements or of a ceramic material”) is a first purposeful (gezielte) selection.

The limitation of claim 1 to a solder material according to original claim 9 is a second selection among the two disclosed possibilities (“conducting adhesive or a solder material”) and the purposeful selection of “In” among the list of solder materials of original claim 11 (“contains or is formed of In, Sn, InSn, SnBi, or other low melting solder alloys having a liquidus temperature below 300° C”) is a third selection.

Finally, the limitation of claim 1 according to which the optional nickel-based adhesive layer is provided on the carrier tube only is a fourth selection from the three possibilities named in claim 12, i.e. that “the carrier tube and/or the target tube are coated with a nickel-based adhesive layer.”

[2.2] Thus it is obvious that these four selections have resulted in a “singling out” from several lists, whereby an embodiment corresponding to a combination of features has been created in an artificial way, which embodiment as such has no basis in the application as filed (see T 894/05 [1.4], T 555/04 [6.2.2], T 801/02 [2.2.1-2.2.2], T 994/97 [3], T 942/98 [2.1,2.4]).

[2.3] On the other hand, when departing from the second exemplary embodiment of the application, according to which a steel carrier tube was provided with a Ni intermediate layer and then soldered to a Mo tube the interior surface of which has also been provided with a Ni layer, by means of In solder material, i.e. where a Ni adhesive layer is provided on the carrier tube and on the target tube, there has been an intermediate generalisation concerning the carrier tube material titanium while at the same time omitting the second Ni adhesive layer provided on the target tube and rendering optional the first Ni adhesive layer on the carrier tube, respectively. This has no basis in the application documents as filed either. […]

[2.4] The [applicant] has argued that although there is no explicit basis for omitting the second Ni adhesive layer during the manufacture of a tubular target according to the second exemplary embodiment, the skilled person would have seen an implicit disclosure of this omission of the Ni layer.

This argument cannot be accepted because according to the Board there is no implicit general disclosure in the original documents which would make the skilled person realize, unambiguously and doubtlessly, that when the target tube is made of molybdenum the second nickel-based adhesive layer on the target tube can be omitted and that the first nickel-based adhesive layer does not necessarily have to be provided on the carrier tube, respectively. In particular, when considering the second exemplary embodiment, wherein a molybdenum tube is used […], the skilled person is taught the contrary.

[2.5] It follows from what has been said that claim 1 of the third auxiliary request does not comply with the requirements of A 123(2). As a consequence, this request cannot be granted.

There is much to be said on the present application of A 123(2) by the Boards, and we will come back on this subject in several forthcoming posts. The present decision is not spectacular but it demonstrates the tendency of the Boards to consider that choices among alternatives in claims and the resulting “singling out” can result in violations of A 123(2). It is not because you provide alternatives in a claim that you have provided possible fallback positions. Obviously, this will have an impact on how patents are to be drafted, but we will deal with this question later.

If you wish to read the whole decision (in German), you may find it here.

T 2013/08 – Wishful Thinking?

One of the easiest ways to fail paper A of the EQE is to write a “wish claim”. (Been there, done that. ☺) Nevertheless, in real life such claims are not uncommon and often granted. However, when a claim comes under close scrutiny during appeal proceedings, the applicant/proprietor may wish not to have written a wish claim.

Claim 1 of the main request read:

Tubular target with a cylindrical carrier tube and at least one target tube arranged on its outer surface, wherein a connecting layer is arranged between the target tube and the carrier tube, characterised in that the connecting layer is electrically conducting and has a wetting degree of >90%, in that the degree of wetting is present both on the exterior surface of the carrier tube and on the interior surface of the target tube, and in that the material of the target tube is formed of Cu, Al, Zr, Mo, W, Ti, Cr, Ni, Ta, Nb, Ag, Zn, Bi, Sn, or an alloy based on at least one of these elements or of a ceramic material.

** Translation from the German **

[1.1] The explanations made by the applicant with regard to the percentage of the degree of wetting […] appear to be acceptable. […]

The Board agrees with the Examining Division that the degree of wetting first and foremost depends on the materials used (i.e. the material of the carrier tube, the target material, the adhesive layer and the solder material) as these materials determine the thermal expansion coefficient and the tendency of these materials to form alloys with each other or the tendency of a material to oxidise under the soldering conditions. The [applicant] has argued that the wetting degree as such is independent from the materials involved […] but it has not provided any evidence for this assertion, so that the assertion cannot be accepted.

Claim 1 of all requests defines a connecting layer that “has a wetting degree of >90%”. The appellant argues that such a wetting degree is not reached in the exemplary embodiment of [document] D1.

However, D1 apparently does not teach to carry out any other process steps than the description of the present application in its description of the manufacturing of the claimed tubular targets according to claim 1.

Either the feature “has a wetting degree of >90%” defines a desideratum without there being a disclosure of the necessary process steps in the description or without claim 1 […] containing these necessary features in the form of a product-by-process claim, respectively. Otherwise the process of the prior art, e.g. according to D1, would have to obtain the same desired results when using adhesive layers using nickel and copper – which are preferred layer materials according to the present application […] – and the same Indium solder material […].

Incidentally, the wetting degree has not been determined for any of the examples 1 to 4 of the present application – which have been realized with the metals Al, Mo, Cr and Al. The present application does not describe a method for non destructively determining the wetting degree on target materials […].

If claim 1 does not define a desideratum, then one has to assume that the wetting degree depends on the material. Then claim 1 should define all possible materials for the carrier tube and the solder material to be used, as well as the optional and preferred adhesive layers, in order to fulfil the requirements of A 84. […]

Thus the wetting degree does not appear to be suitable to clearly distinguish the subject-matter of claim 1 from the subject-matter of D1.

Incidentally, we have discovered a more learned way of saying “wish claim”: just say “claim defining a desideratum”. ☺ 

Next time we shall see what happened when the applicant followed the advice of the Board and introduced certain materials into the claim.

If you wish to read the whole decision (in German), you may find it here.

T 8/06 – Sunscreen Fatality

Now that the hot days are back, let us study a sunscreen decision. This decision shows once again how dangerous an unfortunately worded disclaimer can become.

Claim 1 as filed read:

1. A method of inhibiting the harmful effect of UVR exposure to the human skin comprising topically applying a therapeutically effective amount of genistein to the skin at a time sufficiently close to the time of UVR exposure to inhibit UVR-induced damage to the skin.

Following a negative search report, the claim was amended to a Swiss-type claim:

1. Use of genistein in the preparation of a chemopreventive agent, said chemopreventive agent not being merely a sunscreen, for treating human skin in order to inhibit the harmful exposure to ultraviolet radiation.

Claim 1 was finally granted as follows:

1. Use of genistein for the preparation of a topical chemopreventive medicament, said chemopreventive medicament not being merely a sunscreen, for the treatment of human skin in order to inhibit the harmful effect of exposure to ultraviolet radiation.

The opposition division (OD) maintained the patent in amended form.

At the oral proceedings before the Board the patent proprietor defended the maintenance of the patent on the basis of a new main request reading as follows:

1. Use of a therapeutically effective amount of genistein for the preparation of a topical chemopreventative medicament for the treatment of human skin in order to inhibit UVR-induced aging or UVR induced photocarcinogenesis by chemoprevention, said medicament applied at a time sufficiently close to the time of UVR exposure to inhibit said aging or photocarcinogenesis.

[3.1] Claim 1 as granted is subject to a proviso, namely “said medicament not being merely a sunscreen”. According to the [patent proprietor], this meant that sunscreens acting exclusively by blocking UV radiations were excluded. Hence this proviso in granted claim 1 excludes from the protection conferred the preparation of medicaments being only sunscreens. This finding was not contested by any Party.

[3.2] Claim 1 as amended differs from claim 1 as granted mainly in that the proviso had been deleted. With the deletion of the proviso, claim 1 no longer explicitly requires that the medicament is not a mere sunscreen.

[3.2.1] According to the [patent proprietor] the feature “in order to inhibit UVR-induced aging [or UVR induced photocarcinogenesis] by chemoprevention” indicated the mode of action of the medicament which action therefore comprised necessarily a physiological action, thereby excluding pure UVR blocking action, as a mere sunscreen would do.

[3.2.2] Claim 1 is formulated according to the Swiss-type claim format which is designed to protect a further new and inventive therapeutic application, in the present case, the preparation of a medicament for the inhibition of UVR-induced aging. Claim 1 further stipulates that the therapeutic application is achieved by chemoprevention. However, the mode of action of a medicament is not a technical feature in a Swiss-type claim, but is merely a technical insight into how the medicament may work. The indication of the mechanism of action of a medicament does not add any new technical feature to the Swiss-type claim, because the mechanism of action necessarily underlies the therapeutic use of that medicament. In the present case, the technical effect which is achieved by the topical application of the medicament comprising genistein, irrespective of any mechanism of action, is simply the prevention of UVR-induced aging, which is a technical feature already indicated in the claim. Accordingly, the [patent proprietor’s] attempt to promote a technical insight, here the mechanism of action, into a “technical effect" cannot succeed, the actual technical effect underlying the use of genistein for preparing the medicament being the prevention of aging.

[3.2.3] The [patent proprietor’s] further argument that the discovery of the mechanism of action opened new ways of treating UVR-induced aging cannot change the above findings, because the technical features reflecting these new modes of treatment, which would exclude the medicament from being merely a sunscreen, are not reflected in the claims.

As regards the mode of treatment, claim 1 requires merely that the medicament be applied “at a time sufficiently close to the time of UVR exposure to inhibit said aging”, which requirement does not exclude the medicament from being a sunscreen.

[3.2.4] Therefore, the Board concurs with the [opponent] that claim 1 as amended covers the possibility of the medicament being a mere sunscreen, all the more so because paragraph [0018] of the patent-in-suit foresees that the composition comprises UV blockers.

[3.3] Thus, claim 1 as amended according to either request encompasses the preparation of mere sunscreens, which embodiment was excluded from claim 1 as granted. Hence, the deletion of the feature “said medicament not being merely a sunscreen” in claim 1 has the effect of broadening the scope of the amended claim vis-à-vis claim 1 as granted with the consequence that claim 1 […] has been amended in such a way as to extend the protection conferred by the granted patent contrary to the requirement of A 123(3). […]

The patent is revoked.

To read the whole decision, click here.

T 809/07 – Trouble Between Examples

 Claim 1 of the main request was identical with claim 1 as granted:

Paint and coating material system comprising

a) at least one solid component comprising at least one organic or inorganic white, black or chromatic pigment, organic or inorganic fillers, or mixtures thereof, and

b) at least one binder component;

characterised in that the components of the system in water, with an energy input of less than 150 J/cm3, based on the sum of the volumes of the components and water, result in an aqueous dispersion having a fineness-of-grind (Körnigkeit) of <60 μm (determined in accordance with ISO 1524: 1983).

In the following passage the Board deals with the ground for opposition under A 100(b) (insufficiency of disclosure).

** Translation from the German **

[3.1] Present claim 1 describes the invention via the definition of components a) and b) and via the condition “that the components of the system in water, with a specific energy input of less than 150 J/cm3, based on the sum of the volumes of the components and water, result in an aqueous dispersion having a fineness-of-grind (Körnigkeit) of <60 μm (determined in accordance with ISO 1524: 1983).”

This condition fixes values below which the parameters “energy input” and “fineness-of-grind” have to lie. In order to obtain a composition according to claim 1, the skilled person has to know, without any inventive input (Zutun), how to choose and process, as the case may be, the components so as to make the parameters lie below these values (see T 516/99 [3]). When carrying out the claimed invention, the skilled person may rely on the disclosure of the patent as well as his/her common general knowledge on the date of priority of the patent (see T 219/85 [2.3.2]).

[3.2] The [patent proprietors] expressed the opinion that in order to obtain the domains fixed in claim 1 for the parameters “energy input” and “fineness-of-grind”, it was sufficient to provide the solid components with desired fineness (Feinverteilung) of <60 μm. Paragraph [0098] of the patent contained the instructions allowing the skilled person to grind the solid components such as to obtain this fineness.

It may be assumed that the fineness of the solid components has an influence on the energy input that is required in order to obtain a dispersion having a fineness-of-grind of <60 μm when dispersing in water. However, claim 1 is not limited with respect to the particle size (Korngrößen) of the components. Moreover, even when the components are ground to particle sizes of <60 μm it cannot be guaranteed that such a composition fulfils the requirements defined in the characterising part of claim 1.

The [opponent] is right in referring to paragraph [0014] of the patent:

“Solid component a) is not limited in respect to its form. In particular, it is possible to use powders, granules, slugs (Schülpen) and pellets.”

However, the last three forms mentioned in this paragraph are obtained by granulating, compressing and pelletising, i.e. they are agglomerated. Thus, even when the component is ground to a particle size of <60 μm, these forms have a secondary particle size that is significantly greater than 60 μm.

Moreover, it is precisely paragraph [0098] cited by the [patent proprietors] that states that the solid components tend to form aggregates or agglomerates, for example when being dried after the preferred wet crushing treatment. […] Whether such secondary particles which have grown through agglomeration can be broken with an energy input of less than 150 J/cm3 when being dispersed in water, as required by claim 1, and if so, how it can be done, is something that the skilled person cannot find neither in the patent, nor in the common general knowledge.

Comparative examples 1 and 2 of the patent provide evidence that the skilled person encounters problems when he/she tries to obtain “energy input” and “fineness-of-grind” values as required in claim 1. In these examples much higher energy input was required in order to obtain the desired fineness-of-grind (497 J/cm3 in comparative example 1 and more than 4000 J/cm3 in comparative example 2 […]). The examples and comparative examples of the patent do not contain information on the particle size distributions of the starting materials used or the fineness-of-grind of the components before they are dispersed in water. Thus the argument of the [patent proprietors] according to which additional grinding work (Zerkleinerungsarbeit) was required in the comparative examples is not supported by the patent. Therefore, the skilled person cannot find in the examples and comparative examples of the patent how to proceed in order to generally avoid the high energy input which is required in the comparative examples.

As a consequence, the skilled person cannot anticipate how a particular combination of the components a) and b) will behave with respect to the parameters mentioned in the characterising part of claim 1. If he/she wishes to implement the subject-matter of claim 1 over its whole breadth, he/she has to find out via extensive trials how to choose components a) and b) and how to process them so that the compositions fulfil the requirements set out in this claim. This, however, cannot be expected from (zuzumuten) the skilled person (see T 516/99 [3.1, last two paragraphs]).

[3.3] The [patent proprietors] have pointed out during the written proceedings that the comparative trials filed on February 1, 2007 show that the opponent was capable without further ado to “establish that certain examples taken from the prior art have an energy input lying in the claimed domain.” […]

However, this does not change the fact that in each particular case the skilled person has to determine the suitability of the components for compositions according to the invention by trial and error, by determining the energy input needed for and the fineness-of-grind after dispersing in water. Therefore, this argument is not in conflict with the conclusions drawn under point [3.2].

[3.4] Consequently grounds under A 100(b) make it impossible to maintain the patent according to the main request, which corresponds to the patent as granted.

NB: In the headnote, the Board accepts to generalize a bit: “If the claims require that a certain target is reached (in the present case, that a parameter lies below a certain value) then feasibility (Ausführbarkeit) pursuant A 100(b) EPC is not given if the patent does not provide any hint to the skilled person how he/she can reach this target without unacceptable research efforts outside the exemplary embodiments.”

To download the whole decision (in German), you may click here.

NB: This decision is simultaneously reported on Le blog du droit européen.

T 426/07 – Interpreting Silence

In the present case the Opposition Division (OD) had maintained the opposed patent in amended form. Both parties filed an appeal. The Board rejected the main request (claims as granted) for lack of inventive step and did not admit late filed auxiliary request 1. The following discussion concerns the second auxiliary request, which corresponds to the claims as maintained by the OD.

** Translation from the French **

[4.1] The patent proprietor, who in its written submissions had been silent on its position with respect to the decision of the OD to maintain the patent in amended form – which is contested by the appeal filed by the opponent – has declared during the oral proceedings (OPs) that it did not abandon this version of the patent, which has become its auxiliary request 2. Moreover, the Board has seen in its statement of grounds of appeal (page 11) that [the patent proprietor] fully agreed with the opinion of the OD […].

The patent proprietor acknowledged that it had not responded to the objection under A 123(2)(3) but pointed out that this was because the objection was manifestly unfounded, as he would show during the OPs. [The proprietor] requested that the appeal filed by the opponent be dismissed.

[4.2] The opponent has objected to [the request] which during the proceedings has become the second auxiliary request, because of its belated filing.

The explanations provided by the opponent during the OPs show that the opponent is of the opinion that the dismissal of the patent proprietor’s appeal entails the setting aside of the first instance decision and that the patent proprietor’s silence [with respect to this decision] in its written submissions until the OPs is to be understood as the expression of its disagreement with the text of the patent as maintained by the OD. According to the opponent, the request to dismiss the appeal filed by the opponent and, therefore, to maintain the patent in its version accepted by the OD, which request was first made during the OPs, is a new request.

[4.3] This being said, it has to be noted that both the patent proprietor and the opponent have filed requests and each has attacked the part of the decision by which it was adversely affected, in conformity with A 107.

The Board’s dismissal of the main request on which the patent proprietor’s appeal is based and the refusal to admit its subsidiary request 1 result from the examination of the decision of the OD dismissing the patent proprietor’s main request. This dismissal has not required the assessment of the decision to maintain the patent in its amended form (auxiliary request 2).

Consequently, the dismissal of the patent proprietor’s appeal does not ipso facto entail the setting aside of the decision of the OD. Quite to the contrary, this decision is confirmed: the part of the decision that is attacked by the patent proprietor is confirmed by the dismissal of its appeal. The part of the decision granting the patent proprietor’s request cannot be questioned by the latter, as [the patent proprietor] is not entitled to act [against this part of the decision] under A 107.

[4.4] It is true that the patent proprietor, as a respondent to the appeal filed by the opponent, has not explicitly requested in its written submissions that this appeal be dismissed. It contented itself with requesting that the decision refusing its main request (corresponding to its present main request […]) be set aside.

However, on one hand, this silence has no impact on the decision of the first instance, which survives the dismissal of the patent proprietor’s appeal and remains valid as long as it has not been set aside.

On the other hand, the interpretation of this silence as being the expression of the patent proprietor’s disagreement with the text of the request that had been maintained (A 113(2)) is tantamount to the presumption that the patent proprietor has abandoned its right to a patent.

Such an interpretation goes against the established case law according to which the abandonment of a right cannot be presumed. If it is implicit, it has to be clearly confirmed by the proprietor’s behaviour (for an illustration of this principle applying to various kinds of rights, see J 11/87 [3.6], J 7/87 [6], J 11/94, T 942/01 [1.3] and T 344/02 [2]).

In the present case, the patent proprietor has never given the impression that it abandoned this request. Neither has it given the impression that its main request which it defended within the framework of its appeal was to replace the auxiliary request 2 which the OD had allowed, which very decision has been appealed by the opponent.

[The patent proprietor’s] appeal has [tried to] uphold a broader version of the patent. The intuitive (spontanée) interpretation of this behaviour is that to its mind, the request to dismiss the other side’s appeal necessarily followed from its own appeal aiming at a broader patent.

Conversely, deducing from its silence that it abandoned the benefits of the decision of the first instance with respect to the maintenance of the patent in amended form is a mere speculation that is not coherent with the circumstances of the case.

It follows from what has been said that the patent proprietor as respondent has to be granted the right to defend the appealed decision.

The lack of arguments in its written submissions can only have an impact on the extent of the means he may assert in application of Article 12 RPBA.

Alas, the auxiliary request was found not to comply with A 123(2) and the patent was revoked.

To read the whole decision (in French), you may click here.

Interpretative Spotlight: “consists”

It is generally held that the term “comprising” opens a claim whereas “consisting” closes it. The present decision shows that this cannot be taken for granted if the application suggests otherwise.

Claim 1 as granted read:

1. Exhaust gas recirculation system for an internal combustion engine, in particular a diesel or spark ignition engine, with an exhaust gas recirculation valve for recirculating exhaust gases into the air supply system of the internal combustion engine, the exhaust gases flowing through a cooling device, also with a bypass pipe (17) which bypasses the cooling device (10) and with a separating filter (18; 19), the inlet of which is connected to an exhaust gas recirculation line and has two passages, one of which is connected to the cooling device (10) and the other of which is connected to the bypass pipe (17) in such a way that the exhaust gases can flow controllably alternatively through the cooling device (10) or the bypass pipe (17), wherein the separating filter (18; 19) is spring-controlled (21) for one operating position and pressure-controlled for the other operating position and is held in the normal operating position by a spring (21), characterised in that the separating filter (18; 19) is arranged in front of the cooling device (10) and is an integral component of the cooling device (10) and consists [language of proceedings: besteht] of precisely one bypass valve (18) or precisely one bypass shutter (19), which is arranged in the junction in front of the cooling device (10) and the bypass pipe (17) and in a first operating position closes the cooling device (10) and in a second operating position the bypass pipe (17). 

** Translation from the German **

[2.2.1] The parties do not agree on whether the term “consists” (besteht) in claim 1 is to be understood as being a closed term or not […].

[2.2.2]

(a) In principle the terms used in patent documents are given the usual meaning they have in the prior art, unless the description unambiguously requires a special meaning (see, for example, T 1321/04). If a patent document explicitly uses terms in a meaning that is different from the usual meaning, then this meaning is decisive (geht vor).

(b) Claim 1 as originally filed discloses a separating filter the “inlet of which is connected to an exhaust gas recirculation line and which has two passages”. […] Moreover, it is disclosed that the valve 18 and the shutter 19 are bypass elements and form a separating filter. It follows that the separating filter has both an inlet and two passages as well as the valve 18 and the shutter 19.

The characterising part of claim 1 claims a separating filter having precisely one bypass valve or precisely one bypass shutter. The term “precisely” only determines the number of bypass valves or bypass shutter but does not exclude that the separating filter has more features, such as a housing, valve seats etc.

(c) Thus one may conclude from the application as filed that claim 1 does not use the term “consists” as a closed term (im abschliessenden Sinne).

To read the whole decision (T 523/08, in German), you may click here.

T 1749/06 – Brain Inspection Refused

The present decision deals with the refusal of an application by the Examining Division (ED).

Claim 1 of the main request read:

1. A computer-readable medium (54) encoded with a data structure for use in providing a graphical icon (12) for display on a display (14) of a portable communications device (10), characterized in that said data structure is encoded as digital data indicative of said graphical icon defined by alternating light and dark stripes (30, 32), that selected stripes of said light and dark stripes change from light to dark and back to light to indicate a shadow adjacent an edge of said icon and from dark to light and back to dark to indicate a highlight adjacent another edge of said icon, and that altogether said light and dark stripes with shadows and highlights provide said icon with a three-dimensional appearance.

The only difference with respect to the claim rejected by the ED was the addition of the reference numbers.

[4.1] The ED objected in the decision under appeal that some features of the claims were directed to the presentation of information, as they described the cognitive information of the icon, and could therefore not be considered when assessing inventive step.

[4.1.1] The Guidelines for Examination (C-IV 2.3.7, June 2005, the version in force at the time of the decision under appeal. The text has remained unchanged through to the April 2009 version currently in force) state that “a presentation of information defined solely by the content of the information is not patentable” and that “the arrangement or manner of representation, as distinct from the information content, may well constitute a patentable technical feature”. The present application relates to the manner of representation of the icon and not to its contents, i.e. whether the icon depicts a house or a butterfly.

[4.1.2] In decision T 1194/97 [headnote I], invoked by the ED to support their conclusion, the then deciding board held that “A record carrier characterised by having functional data recorded thereon is not a presentation of information as such and hence not excluded form patentability by A 52(2)(d) and (3)”. The converse, however, i.e. that from the lack of functional data the presentation of information as such can be inferred, is not true. Hence decision T 1194/97 does not support the conclusion of the ED.

4.1.3 The present board agrees with the finding of T 1194/97 and the statements of the Guidelines cited above. Presentation of information arises when “what is displayed” is claimed without specifying “how it is displayed”. Claim 1 comprises the feature of an icon formed of dark and white stripes having thus a three-dimensional effect, but does not comprise the icon’s cognitive content, i.e. its specific shape. The latter feature, i.e. the icon representing e.g. a butterfly, is a presentation of information, but not the former.

[4.1.4] The board finds for these reasons that the features of the characterizing portion of claim 1 do not fall under the category of presentation of information within the meaning of A 52(2)(d).

[4.2] The ED further invoked decision T 1121/02 for ignoring the features of the claim leading to an icon’s three-dimensional appearance when assessing inventive step, as these features depended only on the perception of the viewer (“happens in the brain of the viewer”) and were therefore not technical.

[4.2.1] Claim 1 of the application leading to decision T 1121/02 was directed to an elongate fencing element having along its surface contrasting markings resembling the warning pattern of an animal (e.g. a bee) which acted as a deterrent to another animal (e.g. a horse or cow). The then deciding board found that the contrasting markings were not technical features, as the explanation provided in the application for the deterring effect was only a theory (the animals had a built-in instinct which warned them that other creatures bearing dark and light colouring were harmful and should be avoided), although it provisionally accepted that the markings had an effect on the animal seeing them. The contrasting markings therefore did not contribute to the solution of any technical problem by providing a technical effect and hence had no significance when assessing inventive step (Summary of facts and submissions, points V and VII).

[4.2.2] The present board is aware of the difficulty of assessing whether or not a feature contributes to the technical character of a claim. It agrees, however, with the approach followed in decision T 258/03 [4.6] that even a so familiar activity such as the act of writing using pen and paper has technical character. Applying the same approach to the medium of claim 1, the board finds that the feature of modifying the edge of an icon with alternate dark and light stripes has technical character and should be considered when assessing inventive step.

[4.2.3] The board is further of the view that the test “happens in the brain of the viewer”, invoked by the ED, is not useful for deciding whether a feature contributes to the technical character of a claim or not. Inventions such as the cinematograph are based on an effect which only “happens in the brain of the viewer”, namely that the projection of a rapid succession of still images on a screen creates the illusion of fluent motion. Although the illusion of perceiving a real action is only created in the viewer’s brain, nobody would seriously contest that the cinematograph is an invention based on technical features. It may be argued that the apparatus of the cinematograph comprises technical elements with the ultimate purpose to create the illusion of motion in the viewer’s brain. However, in the present case the dark and light stripes are also technical elements which contribute to creating the three-dimensional illusion.

[4.3] For these reasons, the board considers that the features of the characterizing portion of claim 1 have technical character and should be considered when assessing inventive step.

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T 1349/07 – Not Just Good-Lookin’

Claim 1 of the main request before the Board read:

1. A transparent or translucent heavy duty liquid composition in a clear bottle comprising:
(a) 10 to 85% by wt. of a surfactant selected from the group consisting of anionic, nonionic, cationic, amphoteric, zwitterionic surfactants and mixtures thereof;
(b) 0.001 to 5% by wt. of an enzyme selected from the group consisting of proteases, lipases, cellulases, oxidases, amylases and mixtures thereof; and
(c) 0.001 to 3% by wt. of an antioxidant selected from ascorbic acid, BHA, BHT and mixtures thereof;
wherein the composition has 50% light transmittance or greater using a 1 cm cuvette at wavelength of 410-800 nanometers; and wherein the bottle has a light transmittance of greater than 25% at wavelength of 410-800 nm.

Its  novelty not being disputed, the Board deals with the assessement of inventive step:

[1.2.1] The Board concurs with the proprietors that the technical problem mentioned in the patent-in-suit (see paragraphs [0001], [0009] and [0010]) is understood by the skilled reader as that of rendering available enzyme-containing TTHDL compositions bottled in clear bottles that possess improved enzyme protection against UV-damage (e.g. during storage in the sunlight). This has not been disputed.

[1.2.2] The opponents have argued however that the aspects of the invention referring to transparency, translucency and clearness were merely aesthetic properties, not contributing to the solution of any technical problem and, thus, the purely esthetical features of present claim 1 were not to be considered as part of the technical problem solved for the purpose of assessing inventive step, as established in T 641/00.

[1.2.3] The Board notes preliminarily that, as also indicated by the Opposition Division in the decision under appeal, the cited T 641/00 explicitly acknowledges (e.g. at point [7] of the Reasons, also reflected in the Headnote) that even a non-technical aim may legitimately appear “as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met”.

However, in the present case, it is apparent to the Board that the visible-light transparencies of the composition and of the bottle defined in claim 1 under consideration (also in the quantitative terms of their visible-light transmittances) are not just esthetical desiderata contributing to the framework of the technical problem to be solved, but also technically relevant constraints of such technical problem. Indeed, the visible-light transmittance requirements contribute to the definition of the nature of the possible ingredients of the composition and of the materials and production methods to be possibly used for making the bottle, thereby also necessarily contributing in determining the level of harmful UV radiation actually reaching the enzyme(s) e.g. during storage in the sunlight of the bottled composition and against which the enzyme(s) must be protected. Hence, they also contribute in specifying technical aspects of the technical aim to be achieved.

[1.2.4] Therefore, the Board has no reason for disregarding any part of the technical problem mentioned in the patent- in-suit as identified above at point [1.2.1], for the purpose of assessing inventive step.

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