T 716/07 – The Long And Winding Road To Inventive Step

The present decision is in no way spectacular but it presents in a very pedagogical manner how inventive step is nowadays assessed by the Boards in the chemical realm:

Novelty of the subject-matter having been acknowledged, the assessment of inventive step begins with the search for the closest prior art.

The closest prior art

[4.1] The closest state of the art is normally a prior art document disclosing subject-matter with the same objectives as the claimed invention and having the most relevant technical features in common.

The objective of the patent in suit was to recover thermally instable N-vinyl-2-pyrrolidone by continuous distillation from its reaction mixture […]. Document D6 discloses the distillation of a ternary mixture. It neither mentions N-vinyl-2-pyrrolidone nor the distillation of any other thermally instable compounds. Document D13 does not relate to continuous distillation. In contrast thereto, document D7 discloses the continuous distillation of N-vinyl-2-pyrrolidone and addresses the thermolability of this compound […]. Therefore, document D7 rather than document D6 or D13 represents the closest prior art.

The next step is to determine the problem solved by the difference(s) of the claimed subject-matter with respect to the closest prior art:

The problem to be solved

[4.2] The [patent proprietor] argued that a comparison between example 3 of document D7 with the examples of the patent in suit showed that a higher percentage of N-vinyl-2-pyrrolidone is recovered by means of the process claimed in the patent in suit […]. In particular, the [patent proprietor] pointed out that - in example 3 of document D7 300 g/h of N-vinyl- 2-pyrrolidone were fed into the distillation column whereas only 185 g/h of pure N-vinyl-2- pyrrolidone were withdrawn from the column under steady state condition, which meant that only 62% of the N-vinyl-2-pyrrolidone was recovered […]. In contrast to this - in examples 1 and 2 of the patent in suit, 96% and 95%, respectively, of the N-vinyl-2-pyrrolidone was recovered at a purity of 99.9% by weight […].

This finding can be used to reformulate the problem to be solved only if - said examples of document D7 and of the patent in suit are comparable to the extent that the alleged effect is convincingly shown to have its origin in the distinguishing feature of the invention (see T 197/86 [6.1.3]), and, in the affirmative, that - it is probable that this effect is achieved over the whole range of the claims of the patent in suit, and - that the effect is related to the problem to be solved as disclosed in the respective application as filed (see T 1188/00 [4.5]).

[4.2.1] Hence, it is first to be assessed whether or not the comparison of the example 3 of document D7 with examples 1 and 2 of the patent in suit shows that this increase in the portion of N-vinyl-2-pyrrolidone recovered in high purity is due to the distinguishing feature.

A feature which distinguishes the subject-matter claimed from the disclosure in document D7 as the closest prior art is that the claims of the patent in suit require that an additional column is present in which water is distilled off […].

However, the process of examples 1 and 2 of the patent in suit does not differ only from that of example 3 of document D7 in that an additional column was used but also in that - the mixtures to be separated in the patent in suit contained water whereas no presence of water is reported in document D7, and in that - the distillation temperatures in the examples of the patent in suit were higher.

Consequently, the increased portion of high purity N-vinyl-2-pyrrolidone recovered in examples 1 and 2 of the patent in suit can only be clearly attributed to the distinguishing feature if the presence of water and the higher distillation temperature do not contribute to this effect.

As both parties pointed out, document D12 discloses that N-vinyl-2-pyrrolidone may - hydrolyse in acidic aqueous solutions into 2-pyrrolidone and acetaldehyde, and may - polymerise at high temperatures so that vacuum distillation at “temperatures above 120°C should be avoided” […]. Hence, the presence of water in the mixture separated in the examples of the patent in suit is rather expected to decrease the portion recovered due to hydrolysis of part of the N-vinyl-2-pyrrolidone.

The increase in temperature from - 95°C in example 3 of D7 […], to - 160°C and 195°C in the distillation columns used in example 1, and 178°C and 205°C in example 2 […], i.e. to temperatures well above those recommended in document D12 in order to inhibit polymerisation of N-vinyl-2-pyrrolidone, is also expected to decrease the portion of N-vinyl-2-pyrrolidone recovered.

Hence, the observed increase in the recovered portion of N-vinyl-2-pyrrolidone can be attributed to the fact that an additional distillation column is used in examples 1 and 2 of the patent in suit, namely to the feature distinguishing the subject-matter of the present claims over the disclosure of document D7.

[4.2.2] Then it is to be determined whether it is probable that this effect is achieved over the whole range of the claims of the patent in suit. The only independent claim requires

- a pressure of 2.66x104 Pa or less and a temperature of 180°C or less in the first column, and

- a pressure of 1.33x104 Pa or less and a temperature of 230°C or less in the second column […].

Document D12 recommends vacuum distillation of Nvinyl 2 pyrrolidone. There is no indication in this document that the application of a reduced pressure might affect the stability of N-vinyl-2-pyrrolidone. High temperatures do, however, accelerate its polymerisation and thus lead to a decrease the recovery of N-vinyl-2-pyrrolidone […].

The increased recovery of N-vinyl-2-pyrrolidone can be considered to be demonstrated over the whole range of the claims if the respective examples work under the most unfavourable conditions, namely close to the maximum temperatures indicated in the claims. This is indeed the case in example 2 where the bottom liquid temperature of the first column is 178°C in the first and 205°C in the second column (which is close to the maximum values of 180°C and 230°C indicated in present claim 1). Hence, it has been shown that the effect is achieved over the whole range of the claims.

[4.2.3] Finally, it is to be assessed whether the effect is related to the problem to be solved as disclosed in the respective application as filed. According to the application as filed, the problem to be solved was to provide “... a process ... which makes it possible to recover chemically unstable N-vinyl-2-pyrrolidone efficiently and steadily and in high purity …” […]. The demonstrated increase in the portion of high purity N-vinyl-2-pyrrolidone recovered thus is related to the problem initially disclosed.

[4.2.4] Therefore, the problem posed and solved in view of document D7 as the closest prior art may be redefined as to provide a continuous distillation of a liquid composition containing N-vinyl-2-pyrrolidone, N-(2-hydroxyethyl)-2-pyrrolidone and water, resulting in an increased recovery of highly pure chemically unstable N-vinyl-2-pyrrolidone.

[4.2.5] The cause of this problem as disclosed in document D7 is the thermolability of N-vinyl-2-pyrrolidone, namely its tendency to decompose at high temperatures […].

It still remains to be shown that the solution to this problem involved an inventive step:

Was the solution obvious?

[4.3] The [opponent] argued that it was obvious for the person skilled in the art to combine the disclosure of document D7 with that of D6 or D13 and thus to end up with the subject-matter of the present claims […].

The fact that the features of a claim of a patent not disclosed in the closest prior art are preferred features of another document of the prior art does not suffice to consider the subject-matter of this claim to be obvious. Obviousness requires additionally that said other document gives an indication that said preferred features contribute to the solution of the problem solved in the patent. Such an indication can be an explicit one if the other document mentions that said preferred features solve the problem, it can be an implicit one if said other document informs how to avoid conditions which are known to be a cause of the problem.

[4.3.1] Document D7 as such gives no indication that the distillation might be performed using two distillation columns.

[4.3.2] Document D6 mentions that the continuous countercurrent distillation of multicomponent mixtures containing N components requires N-1 columns if all the components are to be obtained in pure form. Otherwise, when a single column is used, either the top or the bottom product consist of more than one component […]. Figure 10.71 on page 721

shows a system of two columns for separating a three component mixture ABC, where the bottom product of the first column containing B and C is fed to a second column separating these components by distilling off component B.

However, document D6 does not relate to the problem of increasing the recovery of thermolabile monomers, let alone of N-vinyl-2-pyrrolidone. Thus, it gives no explicit indication to the person skilled in the art in charge of solving this problem to modify the process disclosed in document D7 by splitting up the distillation into two distillation steps in two different columns. Moreover, it does not address the conditions which are known to have an effect on the recovery of N-vinyl-2- pyrrolidone, i.e. to the presence or absence of heat, light, air or water during distillation […]. Therefore, the person skilled in the art would not consult document D6 when solving the problem mentioned above.

[4.3.3] Document D13 claims a process for making N-vinyl compounds by decomposition of the respective alphaalkoxyalkyl compounds (see claim 1). In example 5 the catalytical elimination of methanol from N-2- methoxyethyl-2-pyrrolidone yields N-vinyl-2-pyrrolidone. Most of the methanol is distilled off during the reaction and the product is purified by fractional distillation.

The [opponent] argued that document D13 suggested to distil off the lowest boiling compound first (namely the alcohol) and thus to perform the distillation in two steps which required two columns if performed continuously […]. However, there is no hint in document D13 that a two step distillation process might increase the recovery of thermolabile N-vinyl-2-pyrrolidone. Therefore, also document D13 does not give an indication that a modification of the process disclosed in document D7 by splitting up the distillation into two steps might be helpful for solving the problem mentioned above.

[4.3.4] Consequently, the subject-matter of claim 1 involves an inventive step. The same holds for the subject-matter of dependent claims 2 and 3.

If you wish to download the whole decision, please click here.

NB: Great minds think alike. Laurent Teyssèdre has reported this decision not later than yesterday (here).

T 811/06 – A Matter Of Judgment

NB: All articles and rules refer to the EPC 1973.

[4.1] The examining division (ED) asserted in the refusal of claim 1 of the main request that the division of a memory in two interchangeable separate areas according to the characterising portion of claim 1 was known in many fields, for instance as a “ping-pong” memory architecture and was thus common general knowledge.

[4.2] The appellant argues that the ED, by not providing a prior art document in support of this assertion, failed to sufficiently reason its decision, and prevented him from formulating a cogent response. The question arises as to whether the behaviour of the ED in the proceedings up to refusal deprived the applicant of the right to be heard (A 113(1)), and whether the decision was sufficiently reasoned (R 68(2)).

[4.3] Decision T 939/92 referred to by the appellant in the statement of grounds of appeal (followed for instance in T 1242/04 [9.2]) sets out that A 54(2) does not limit the state of the art to written disclosure in specific documents. Rather it defines it as including all other ways (“in any other way”) by which technical subject-matter can be made available to the public. Therefore, the absence of a reference to a particular document does not mean that there is no state of the art, as this could reside solely in the relevant common general knowledge, which, again, may be in writing, i.e. in textbooks or the like, or be simply a part of the unwritten “mental furniture” of the notional “person skilled in the art”.

It is true, and the board agrees with the appellant in this respect, that in the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact under contention, has to be proved, for instance by documentary or oral evidence (see also T 329/04 [45]).

[4.4] According to the minutes of the oral proceedings (OPs) held before the ED, the applicant accepted that conventional structures known as “double-buffering” or “ping-pong” memory architecture might be used to increase the throughput of data streams. The board thus deduces that the applicant did not dispute that a ping-pong memory architecture and its benefit were common general knowledge. By contrast, the appellant stated that he was unaware of an example in the context of look-up tables […].

[4.5] Claim 1 of the refused main request sets out separate (active and pending) tables for selecting packets and does not expressly set out look-up tables. The last paragraph on page 4 of the decision under appeal refers to examples of ping-pong memory architectures with separate memory areas in general and also does not specifically refer to the use of such areas as look-up tables.

[4.6] The device of D2 uses a memory containing a single table (operating indeed in practice as a look-up table) to select data packets […]. This was not contested by the appellant. The question whether a person skilled in the art would have combined the teaching of D2 with the (uncontested) common general knowledge of a ping-pong architecture having two interchangeable memory areas is a matter of judgment. Documentary evidence for the feature of ping-pong architecture “in the context of look-up tables” was thus not necessary, and the ED was not required to provide documentary evidence for their argumentation.

[4.7] In view of the above, and since the reasoning in the decision only reflects issues which have been debated in the OPs (which the appellant did not contest), the appellant was not deprived of an opportunity to present comments on the issues relevant to the outcome of the case in the proceedings up to refusal (cf. A 113(1)).

[4.8] R 68(2), first sentence, aims to put the appellant in a position to ascertain the reasons for the decision in order to defend his rights, in particular by setting out grounds of appeal, and the board to exercise its power of review of the legality of the decision. As explained in the foregoing, the reasoning in the decision under appeal […] built on facts disclosed in D2 and uncontested common general knowledge to conclude that the subject-matter of claim 1 lacked an inventive step. The argument qualified by the appellant as a bold assertion of “common general knowledge” did not prevent him from understanding the reasoning in the decision and from formulating counter-arguments in the statement of grounds of appeal. Therefore, the decision is also considered to be sufficiently reasoned.

[4.9] As a result, the ED did not commit a substantial procedural violation and the appellant’s request for reimbursement of the appeal fee is not allowable.

If you wish to download the whole decision, please click here.

T 1918/07 – Bad Example(s)

[3.1] During the proceedings the application has been amended so that the claimed invention is directed to the formation of a layer of indium-doped zinc oxide on a polymeric substrate made of one of the specific polymeric materials specified in claim 1. As a result of the limitations imposed by these amendments, all the specific examples 1 to 23 disclosed on pages 21 to 32 of the description and relating all to the formation of a coating on a substrate made of glass do not represent examples of the claimed invention.

The fact that none of the specific examples 1 to 23 given in the description constitutes an example of the claimed subject-matter was objected by the examining division pursuant to A 84 EPC 1973. However, in the view of the Board the fact that all these examples - which have been maintained in the description as presently amended for illustrative purposes only - do not constitute examples of the claimed invention does not constitute an objectionable deficiency, let alone a deficiency giving rise in the circumstances of the present case to an objection under the EPC.

In particular, the description specifies several alternative coating techniques that can be used in the formation of a coating of indium-doped zinc oxide on a transparent polymeric substrate as claimed […] and also contains a detailed description of several apparatuses that can be used in the formation of the claimed indium-doped zinc oxide coating together with the operation of the same […]. In addition, the specific examples 1 to 23 on pages 21 to 32 of the description - although all involving only substrates of glass - illustrate indirectly how the coating techniques and apparatuses referred to above can be applied to substrates made of the claimed polymeric materials.

It follows that the claimed invention is fully supported by the description within the meaning of A 84, second sentence, and is also sufficiently disclosed within the meaning of A 83.

In addition, although none of the specific examples labelled 1 to 23 on pages 21 to 32 of the description constitutes an example of the claimed invention, the requirements of Rule 42(1) (e) EPC are complied with since this rule requires that the description “shall [...] describe in detail at least one way of carrying out the invention claimed using examples where appropriate” and, as already noted above, the description contains a detailed description of several ways of carrying out the invention. As regards the “examples” referred to in R 42(1)(e), the Board considers that in the circumstances of the present case in which the amended application documents satisfy the requirements of A 83 and A 84 and the description describes in detail at least one way of carrying out the invention within the meaning of R 42(1) (e), specific examples are not indispensable and therefore the fact that none of the specific examples given in the description constitutes an example of the claimed invention does not give rise to any objection under R 42(1)(e) EPC which only requires specific examples of the invention “where appropriate” (see in this respect decision T 990/07 [3], regarding R 27(1)(e) EPC 1973, the text of which is identical to R 42(1)(e)).

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

NB: This decision has also been reported on Le blog du droit européen des brevets.

Post related to similar decisions can be found here and here.

Interpretative spotlight: “maintain”

[1.1] The opponents have objected that the appeal was inadmissible under R 101 because it did not contain a statement defining the extent to which amendment or cancellation of the decision was requested, R 99(2). Furthermore since there was a contradiction between the request in the notice of appeal […] and the reasoning in the statement of grounds of appeal […] the appeal was not substantiated and the procedural situation was unclear. Therefore, according to the opponents, the appeal should be considered as inadmissible, because it did not meet the provisions of R 101(1).

[1.2] The board does not concur with this position of the opponents. Rather, as pointed out by the proprietor, in its notice of appeal […] the proprietor requested: “Reversal of the decision and maintaining the patent”.

Contrary to the perception of the opponents, the board does not interpret this request as “maintaining the patent as granted”. Instead the basis for the decision of the opposition division (OD) to revoke the patent was the set of claims filed with the letter of 18 October 2004 […] which was the only remaining request, because the proprietor had withdrawn the auxiliary requests during the oral proceedings […].

Accordingly reversal of the decision as requested would automatically lead to maintenance of the patent in the only version before the OD. Therefore the board finds that the notice of appeal complies with R 99(1).

[1.3] R 99(2) defines the requirements to be respected in the statement of grounds of appeal. These shall “indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”.

The board has no doubt that the patent proprietor in its letter containing the statement of grounds of appeal […] has complied with these provisions. The board in particular notes that the statement of the grounds of appeal comprises detailed reasons why the claims of the only request before the OD and the board should be considered allowable.

The opponents’ argument that it is not clear from the statement which claims, from those as granted and those before the OD, are meant by the appellant patentee is not convincing: these claims differ only in that dependent claim 8 as granted has been deleted and in that the expression “astigmatism correcting properties” in the granted independent claims 1 and 17 explicitly refer to “eye astigmatism correcting properties” in the remaining independent claims 1 and 16 before the OD. As pointed out by the patentee, the statement of the grounds of appeal clearly address the contribution provided by the amended reference to “eye astigmatism” […], and also refer to independent method claim 16, which is absent from the set of claims as granted […].

[1.4] The opponents have made reference to decision T 501/92 for supporting their view that a request made by the patent proprietor at the first instance opposition proceedings was not applicable at the appeal proceedings and therefore not procedurally effective if this request had not been filed anew. The board, however, finds that the situation in the present appeal case has little in common with the situation in the cited decision: in case T 501/92 the OD had rejected the opposition, not revoked the patent, the appeal had been filed by the opponent, not the patentee, and the patentee had not formulated any request whatsoever in his response to the opponent’s statement of grounds of appeal.

[1.5] It is concluded that the appeal is formally admissible.

If you wish to download the whole decision (T 2030/07), please click here.

T 926/06 – Stuck In-Between

The present decision deals with an amended set of claims: the patent proprietor had added a feature taken from the drawings. The Board examines whether the amendment complies with the requirements of A 123(2).

[19.1] Among the features which are intended to define the invention more clearly is the requirement that the spacer 22 is provided between the elastic plate and the nozzle plate. According to the [patent proprietor], this feature is based on the drawing of Figure 5.

[19.2] It is established case law of the boards of appeal that there is no objection in principle against further defining by reference to the drawings any features which were already claimed. This extends to features shown only in the drawings being introduced into the claim for greater precision. (T 169/83 [2.5]).

[19.3] The incorporation into the claim of features taken from the drawings is, nevertheless, subject to the same restrictions that apply to any amendment, which is to say that the feature concerned - unless found expressis verbis in the application as filed - must be clearly and unambiguously derivable by the skilled person from the content of the application as a whole. If it is not, the amendment does not comply with A 123(2).

[19.4] It is also established case law that while it is permissible to use the drawings as a basis for providing greater precision in respect of features already claimed, it is not permissible to introduce new features which are selected arbitrarily from among the features of the drawings in the sense that it is not directly derivable from the application as originally filed that the feature can be isolated from other features of the drawings (T 191/93 [2.1]).

[19.5] In the present case, the feature introduced into the claim from the drawings, in particular from Fig 5 of the drawings, is that a “spacer (22) is provided between the elastic plate (1) and said nozzle plate (35)” (emphasis added by the board).

The [patent proprietor] submitted that the term “between” is clear in that its meaning can be ascertained from the description (published application, column 7 line 41 onwards) which indicates the order in which the layers are stacked. Thus, the term “between” itself served to set up the defining geometry of plate, spacer nozzle plate.

[19.6] However, as convincingly argued by the [opponent], the alleged structure of the spacer being located “between” the plate and the nozzle plate is itself not uniquely defined by the drawings, since Figure 5, which the [patent proprietor] stated as basis for the claim amendment (as well as other Figures of the drawings (Fig. 6, Fig. 7)), show the presence of several other layers separating the plate 1 from the nozzle plate 35. The requirement of being in between the plate and the nozzle plate would be satisfied by any position of the spacer among the other layers, which clearly also satisfy the condition of being located between the plate and the nozzle plate.

A clear and precise meaning for the term “between” is thus not directly and unambiguously derivable from the application as originally filed in the sense that this particular feature can be isolated from other features of the drawings.

The board therefore concludes that the amendment introduced into claim 1 of the sixth auxiliary request does not comply with the requirements of A 123(2).

To read the whole document, please click here.

T 369/08 – Let’s Talk Money … Later

[7.1] D7 was cited at a very late stage of the procedure, i.e. after oral proceedings (OPs) had been convened. This fact is not in dispute.

[7.2] The patent proprietor objected to the manner in which D7 had been introduced to the procedure, i.e. the tardiness, which ultimately resulted in the decision to remit and requested that all future costs of the procedure be borne by the appellant/opponent […].

[7.3] In considering whether to order an apportionment of costs it has to be examined whether there is a cogent reason, e.g. strong mitigating circumstances for the late submission of this document (see for example T 611/90 [5], T 874/03 [5], and T 931/06 [6.3].)

[7.4] D7 was cited, according to the opponent […] in response to the communication issued by the Board accompanying the summons to attend OPs […]. In this communication the Board indicated that it - provisionally - concurred with the conclusions given in the decision under appeal […] and also with arguments put forward by the patent proprietor in the rejoinder to the statement of grounds of appeal […] with respect to the relevance of the teachings of D1.

[7.5] D7 had been cited in the pre-grant proceedings (designated “D3”) and played a prominent role in those proceedings:

[7.5.1] In the International Preliminary Examining Report (IPER) the International Preliminary Examining Authority (IPEA) indicated that an inventive step could probably be recognised with respect to this teaching if the thermal stability was to be defined more precisely, indicating in particular the features oriented film and the nature of the measurement, i.e. the mechanical properties specified in the operative claim.

[7.5.2] During the examining proceedings before the EPO, the examining division (ED) followed this approach, and further required definition of the temperature at which the aging was to be carried out be introduced into the claim.

[7.5.3] Thus the opponents at the time of formulating the notices of opposition would have been aware from the examination file - which was publicly available and consultable online - of the teachings of D7 and the role this document had played in the pre-grant proceedings.

[7.6] It may well have been the case that when formulating the oppositions the opponents had come to the conclusion, in the light of the correspondence from the examination proceedings, that the teachings of D7 were not likely to lead to revocation of the patent. However in its rejoinders to the notices of opposition the patent proprietor argued that D1 did not relate to the stability of the polyesters per se but to the phosphorus compounds during the manufacture of the polyesters. This view was also taken by the opposition division (OD) in its communication accompanying the summons to attend OPs. Also in the decision this assessment of the relevance of D1 remained, as explained herein above.

[7.7] Thus at the very latest after receipt of the decision of the OD the opponents would have been aware that D1 on its own was unlikely to result in revocation of the patent precisely because (in the view of the opposition division) the teaching of D1 was restricted to the stability of the phosphorus compounds during the preparation of the polyesters and not to the stability of the ultimate copolyesters.

[7.8] The arguments of the patent proprietor in its rejoinder to the appeal were […] consistent with this finding of the decision under appeal.

[7.9] Thus the opponent has failed to demonstrate that there was any development during the appeal proceedings themselves which would have - on its own - led to a reappraisal of the significance of the prior art cited in the notices of opposition, in particular D1. On the contrary the only reason advanced was an internal one, i.e. that it had reviewed the documents upon receipt of the communication of the Board and changed its assessment of the significance of D7 […].

In this context it is important to recall that the Board in its communication merely reflected the findings of the decision under appeal with respect to D1 but did not offer any new insights of its own.

[7.10] Consequently the Board has to conclude that no mitigating circumstances or cogent reason for the late submission of D7 can be identified […].

[7.11] The late citing of D7 in effect has, furthermore, resulted in an entirely new case being presented for the patent proprietor to answer and this only 6 weeks before the OPs before the Board. The consequence of this tardiness is that a further procedure before the OD and possibly the Board of appeal is required, which might not have been the case had this document been cited in a more timely fashion, i.e. at the latest at the outset of the appeal proceedings.

[7.12] However it is apparent that the costs arising will depend on the course of the future proceedings. The consequence of this is that the Board necessarily is not in possession of the necessary facts to decide upon an apportionment of costs. Consequently the Board considers it appropriate not to make an “open ended” order of apportionment of costs as was done in the aforementioned T 611/90 but instead to follow the approach adopted in T 758/99 [5] in which the Board responsible refrained from making an “open-ended” award of costs and concluded that the appropriate course of action was to order that a decision on the request for apportionment of costs be taken at a later stage.

[8] It is therefore incumbent upon the OD in its further prosecution of the case consequent upon the remittal to it by the Board, to consider and decide upon the issue of apportionment of costs in the light of the facts before it, in accordance with the power conferred upon it by A 104(1).

If you wish to download the whole decision, please click here.

NB: This decision was also reported on Le blog du droit européen des brevets.

T 233/06 – Unfounded Presumption

** Translation from the French **

[10.3] When carrying out comparative trials in order to demonstrate the problem solved by the claimed subject-matter, the comparison has to be such that it convincingly shows that the distinctive feature(s), here the use of an alkyl(C8-C20)betaine, indeed allows to solve said problem in respect of the closest prior art.

[10.4] When dealing with complex cosmetic systems comprising a blend of a plurality of components that may have interactions [with each other], it is not possible to affirm a priori that in such compositions replacing one component by another of different structure but having the same function will necessarily lead to the same sensorial properties. For the same reasons, it is not possible to consider that an improvement of the smoothing (lissage) that is obtained by replacing cocoamidopropyl betaine and disodium cocoamphodiacetate by cocoylbetaine within the particular context of compositions B and C tested in document D14 would also have to be observed when the same substitution is made within the different context of example 11 of document D4, which is the closest prior art. As a consequence, in the absence of evidence or technical arguments which would make it credible, it cannot be considered that the improvement of smoothing that was found with respect to compositions B and C used in document D14 proves that such an improvement is also obtained with respect to the compositions of example 11 of document D4.

[10.5] The patent proprietor has argued that the comparison offered in document D14 rested on the principle put forward in decision T 197/86, according to which it could be necessary to modify the elements of comparison such that they differed by the distinctive feature only. However, in order for it to be possible to draw conclusions from the comparison offered in view of the problem solved with respect to the closest prior art, this [approach] presumes that the influence of the modification carried out on the closest prior art, in order to bring out the role of the distinctive feature, can be estimated in a reliable manner, which has not been demonstrated for the present trials. Therefore, the experimental report contained in document D14 cannot persuade the Board.

The Board then considers the comparative trials according to document D15, which are not found to provide credible evidence for the whole domain of claimed compositions. The Board concludes:

[10.9] According to the case law of the Boards of appeal, each party to the proceedings separately bears the burden of proof for the facts it alleges. If a fact which is important for the decision is not proven, the decision is taken to the detriment of the party which carries the burden of proof for this fact (see Case Law of the Boards of appeal of the EPO, 5th edition, 2006, VI.K.5.5.1.1). In the present case, it follows from the above that the allegation of the patent proprietor according to which the use of an alkyl(C8-C20)betaine, as compared to the use of cocoamidopropyl betaine or disodium cocoamphodiacetate, all other tings being equal, would result in an improvement of the smoothing of both wet and dry hair, has not been made credible in view of the technical arguments and the elements of proof cited. As a consequence, the improvement of the smoothing over the whole claimed domain is pure speculation and the shifting of the burden of proof in favour of the patent proprietor cannot possibly take place.

If you wish to download the whole decision (in French), please click here.

T 1548/08 – Ex Machina Claim Of No Avail

This decision deals with an appeal following the revocation of the opposed patent by the Opposition Division (OD). During the appeal proceedings, the patent proprietor filed a certain number of auxiliary requests, some of which (auxiliary requests 4, 5 and 8 to 11) were filed one month before the oral proceedings (OPs) and others (auxiliary requests 12 and 13) were filed during the OPs. Obviously, the admissibility of these late filed requests is an issue before the Board.

The patent proprietor pointed out that auxiliary requests 12 and 13 both included the feature of dependent claim 4, which was not explicitly opposed and thus not a subject of the decision of the OD. In view of G 9/91, the decision of the OD was therefore to be considered null and void since the patent could not be revoked without dealing with dependent claim 4. Accordingly, these requests did not amend the appellant’s case and should not come as a surprise to the respondent.

The Board does not agree:

[2] According to Article 12(4) RPBA, the Board can hold inadmissible requests that could have been presented in the first instance proceedings. Pursuant to Article 13(1) RPBA the admissibility of amendments to a party’s case after it has filed its grounds of appeal is subject to the discretion of the Board. The discretion is to be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. Furthermore, according to Article 13(3) RPBA, amendments submitted after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the OPs.

The Board cannot see any justification for the late filing of auxiliary requests 4, 5 and 8 to 13. The explanation that these requests were filed in reaction to the Board’s communication is not acceptable in the present case since the objections of extended subject-matter and lack of novelty mentioned in this communication correspond to the respective objections already raised in the first instance proceedings which led to the revocation of the patent. Consequently, all these requests could have been filed in the first instance proceedings or with the grounds of appeal. Accordingly, they are inadmissible under Article 12(4) RPBA.

Furthermore, the features introduced into claim 1 of auxiliary requests 8 to 11 (specifying the geometrical shape of the apertures) were never claimed before. They are taken from the drawings and relate to unsearched subject-matter. Moreover, these requests gave rise to further objections by the respondent under A 84 and A 56. This would justify an adjournment of the OPs and possibly even require a remittal to the first instance. Accordingly, their admission would be contrary to the principle of procedural economy. These requests are therefore not admitted under Article 13(1) and (3) RPBA.

With respect to the late filing of auxiliary requests 12 and 13, the appellant’s arguments are not convincing.

A dependent claim is for logical reasons a subject of the decision of the OD to revoke the patent, even if it has not been explicitly mentioned in the decision or in the notice of opposition, because a dependent claim cannot be maintained if the impugned independent claim from which it depends is not allowable. In the present case, no request was submitted during the opposition proceedings which included an independent claim comprising the features of dependent claim 4. Therefore, the subject-matter of dependent claim 4 was a subject of the decision of the OD, which was entitled to revoke the patent in its entirety even if this dependent claim was not explicitly impugned or examined.

Auxiliary requests 12 and 13 are therefore amendments to the appellant’s case, and their admissibility is also subject to the discretion of the Board under Article 13(1) RPBA. They could have been filed earlier, either during the first instance proceedings or in the appeal proceedings. The appellant has not given any justification for the late filing of these requests during the OPs in appeal. They are not admissible for the reasons already given above.

Accordingly, late-filed auxiliary requests 4, 5, and 8 to 13 are not admitted into the present appeal proceedings under A 114(2) in conjunction with Articles 12(4), 13(1) and (3) RPBA.

If you wish to download the whole decision, please click here.

T 1218/06 – Best Before

Proving dates can be a difficult task. In the present case, the appellant appeared to have solid arguments: the document under consideration comprised a photograph of a product that was marked “best before” a date that was prior to the priority date of the opposed patent. However, this evidence did not resist the scrutiny of the Board:

[2.1] D24 is a sworn declaration in Spanish by an employee of Nutricia S.R.L. Madrid, Mr Irzo Asensio. As apparent from the English translation D25, Mr Irzo Asensio declares that he has submitted at least one copy of [brochure] D15 to an institution/person without any obligation to secrecy during the period prior to 23 June 1997 (the priority date of the opposed patent).

D24 and D25 were filed at a very late stage of the appeal proceedings […], i.e. eight and three days prior to the date of oral proceedings (OPs) before the board.

[2.2] According to Article 12(2) of the Rules of Procedure of the Boards of Appeal, the statement of the grounds of appeal shall contain the appellant’s complete case. Furthermore, it is established case law of the boards of appeal that late-filed evidence should only very exceptionally be admitted into the proceedings in the appropriate exercise of the board’s discretion under A 114(2), if such new material is prima facie highly relevant in the sense that it can reasonably be expected to change the eventual result and is thus highly likely to prejudice maintenance of the European patent (see T 1002/92 [3]) as an illustration of this case law).

[2.3] In the present case, already during OPs before the opposition division (OD) […], it had been decided that D15 did not form prior art. Consequently, the appellant knew at the latest from that date on that the public availability of D15 had not been sufficiently proven. Therefore, any evidence overcoming this deficiency should have been provided with the statement of grounds of appeal, in accordance with Article 12(2) of the Rules of Procedure of the Boards of Appeal.

[2.4] During OPs before the board, the appellant stated that filing D24/D25 only shortly before the date of OPs was due to difficulties in finding a person that could confirm the public availability of D15. However, this argument is not convincing, because the person who gave the declaration, Mr Irzo Asensio, still is an employee of Nutricia S.R.L., i.e. the company which issued D15. No reasons were given why an inquiry within said company could not have been made earlier.

[2.5] Furthermore, the filing of D24/D25 cannot be considered as a reaction to any of the respondent’s replies or the board’s communication. On the contrary, as has been set out above, the public availability of D15 has already been an issue in the decision under appeal.

[2.6] Thus, the filing of D24 and D25 was not in due time in the sense of A 114(2).

[2.7] With regard to prima facie relevance of D24/D25, the situation is as follows:

[2.7.1] The declaration does not contain any details about the question of who has received copies of D15, but only cites in general terms medical institutions and health professionals. The declaration does also not contain any concrete date at which said copies have been distributed, but only refers in general terms to the time period prior to 23 June 1997. Thus, in the board’s view, the declaration lacks corroboration about the exact circumstances at which the alleged events took place.

[2.7.2] The appellant held the view that the statements in D24/D25 were corroborated by the expiry date “BEST BEFORE 18-06-97” printed on the product depicted in D15, which was prior to the priority date of the opposed patent, and the market authorisation D6 for this product which was issued equally prior to the priority date of the opposed patent.

However, the appellant’s argumentation is not convincing for the following reasons:

The words “BEST BEFORE 18-06-97” are just legible on the photograph of a tube-feeding bag at the top right of the first page of Dl5 (at least on the enlarged view D20 [NB: I have added a red marker]).

This date presumably means 18 June 1997 which is 5 days before the priority date of the patent in suit. However, the date shown on the bag depicted in D15 does not relate directly to the date of D15 as a document. As pointed out by the respondent, it is merely a date printed on the particular bag that was photographed as the date by which the product should be used but there is no evidence as to whether this photograph shows a real product, a prototype or even a dummy product.

Even if the photograph shows a real product from an actual production batch, the significance of the date is very limited in that the only assumption that can be made is that the photograph cannot have been taken before the date on which batches with that “best before” date would have been packaged, but no evidence has been presented as to what that date might have been.

The fact that the photograph could not have been taken before a particular date does not mean that it was taken on or near to that date and it could have been taken at any time thereafter, quite possibly well after the priority date. Similarly, and even more importantly, the brochure D15 including the photograph could have been produced at any time after the photograph was taken.

As regards D6, this document purports to be a marketing authorisation regarding “Pentaset Fibra” (i.e. the product referred to in D15) issued by the Ministry of Health and Consumer Affairs (Ministerio de Sanidad y Consumo) in Spain. However, a marketing authorisation does not prove that anything was ever marketed, and even if this were to be the case, it still cannot possibly provide evidence that brochures apparently relating to the product were part of the state of the art before the priority date of the patent in suit.

[2.7.3] In summary, D24 and D25 cannot be considered to be prima facie highly relevant according to the established case law (see T 1002/92).

[2.8] In view of the above, the board exercised its discretion not to admit D24 and D25 into the proceedings (A 114(2)).

To read the whole document, please click here.

T 529/09 – Counter-Evidence Needed

When an Opposition Division (OD) decides to maintain an opposed patent in amended form, it invites the proprietor to pay the corresponding fees and to file translations of the claims as amended within a period of three months (R 82(2)). If the proprietor does not react, there is another communication in which the EPO points out the failure to observe the time limit and the possibility to perform the required acts within two months, provided that a surcharge is paid (R 82(3)). This communication is sent by registered letter. If the patent proprietor asserts that it has not received the communication, the EPO has to provide evidence that the delivery has indeed taken place. If the EPO is capable of doing so, is there something the proprietor can still do if it really has not received the letter? This is the situation addressed in the present decision, which gives a nice summary of the appropriate case law.

[4] A communication pursuant to R 82(3) was sent out on 8 September 2008 by registered letter. The letter was addressed to the proprietor’s representative. According to R 126(2) a registered letter is deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee.

However, “delivered to the addressee” does not mean that the notification in question has to be actually brought to the attention of the professional representative in person. It suffices that the registered letter is received by a person authorized to take delivery, e.g. an employee of the representative’s office (see T 743/05 [1.6]).

[5] In the present case, the Deutsche Post has confirmed that, following an investigation by the foreign mail operator, the letter was delivered on 12 September 2008 to an authorized recipient.

After having been informed of this result of the EPO inquiry by a communication of the board, which included a copy of the confirmation letter, the appellant did not submit any further arguments or evidence in order to demonstrate that the Deutsche Post’s confirmation failed to establish that the registered letter reached its destination.

In these circumstances, the evidence on file has to be regarded as sufficiently reliable and complete for proving the proper delivery of the letter.

[6] The board is aware of the decisions of the Legal Board of Appeal J 9/05 and J 18/05 […] where a similarly worded confirmation letter by the Deutsche Post was held not to be sufficient to prove the receipt of an EPO notification.

However, in those cases the appellant had filed a considerable amount of counter-evidence and pointed out specific reasons why the letter might not have been received by the representative’s office. Thus, there is a significant difference to the present case.

[7] The board therefore considers it to be established that the communication pursuant to R 82(3) was actually delivered to the appellant’s representative on 12 September 2008. In view of the legal fiction contained in R 126(2), this communication is deemed to be delivered to the addressee on the tenth day following its posting (which occurred on 8 September 2008), i.e. on the 18 September 2008. Since the appellant did not perform the acts mentioned in the communication within two months of the notification, it missed the time limit provided for in R 82(3), first sentence.

It was thus procedurally correct for the OD to revoke the patent in accordance with R 82(3), second sentence.

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

NB: This decision has already been reported on Le blog du droit européen des brevets.

Interpretative spotlight : “highly soluble”

The main request before the Board was found not to comply with the requirements of A 123(2).

Claim 1 of auxiliary request I read:

A solid composition comprising

(a) a drug in a pharmaceutically acceptable solubility-improved form selected from a crystalline highly soluble salt form of the drug, a high-energy crystalline form of the drug, a hydrate or solvate crystalline form of the drug, an amorphous form of the drug, a mixture of the drug with a solubilizing agent; and

(b) a polymer selected from hydroxypropyl methyl cellulose acetate succinate, hydroxypropyl methyl cellulose phthalate, cellulose acetate phthalate and cellulose acetate trimellitate; wherein the drug-to-polymer weight ratio is 0.01 to 5.

[5] Having regard to the written submissions on file and the outcome of the oral proceedings, there is no evidence that the person skilled in the art per se would know which level of solubility-improvement a drug has to fulfil to be classified “solubility-improved”. This lack of evidence in particular applies to a hydrate or solvate crystalline form of the drug or to an amorphous form of the drug, and is also relevant with respect to the question as to when a crystalline soluble salt is to be called a crystalline highly soluble salt.

Consequently, the skilled reader of the application in suit is bound to particular definitions within this application in order to be able to clarify the subject- matter of solubility-improved drugs or “crystalline highly soluble salt” forms.

The application in suit contains an effort to give an exact definition on page 31, lines 20 to 25. “Preferred highly soluble salt forms” are defined as “those salt forms that have aqueous solubility at least 1.25-fold, preferably at least 2-fold, and more preferably at least 5-fold, the aqueous solubility of the more soluble of the crystalline free base and the crystalline hydrochloride salt forms”.

But as the facts on file stand, this attempt to define the term “solubility-improved” relates only to particular cases not referred to in the current requests and therefore is of no general use.

With respect to a hydrate or solvate crystalline form as contained in auxiliary request I, there is no definition to be found at all, while as far as “an amorphous form of the drug” is concerned, the skilled person finds that he has to compare in at least an in vitro test medium a maximum concentration of the drug to the equilibrium concentration of the drug provided by the drug in crystalline form. However, in this case it is not clear what crystalline form is meant; it could be exactly the purely crystalline form of the same salt as the amorphous form that is tested, or the crystalline form of the lowest solubility form of the drug itself, whether salt or not or anything else.

Consequently, with the definition either missing altogether or based on a comparison to an undefined reference with respect to a hydrate or solvate crystalline form of the drug or to an amorphous form of the drug, the feature of the solubility-improved drug form has to be regarded as unclear under A 84 in auxiliary request I.

The Board then turns to auxiliary request II. The single claim of this request read:

A composition comprising

(a) a drug in a pharmaceutically acceptable solubility-improved form being a crystalline highly soluble salt form of the drug; and

(b) a polymer selected from hydroxypropyl methyl cellulose acetate succinate, hydroxypropyl methyl cellulose phthalate, cellulose acetate phthalate and cellulose acetate trimellitate; wherein the drug-to-polymer weight ratio is 0.01 to 5.

[6] In the case of “crystalline highly soluble salts” there is a definition in the description that tells the skilled person to compare in at least one in vitro test medium the maximum concentration of the drug to the equilibrium concentration provided by the lowest solubility form of the drug […] which may be measured as indicated in the examples given.

He can work this out in the framework of reproducibility or repeatability of measurements, even if he will find that this condition is met by nearly all forms of a drug except the only one that is the lowest solubility form. The term “lowest solubility form of the drug” is to be understood with respect to the state of the art at the priority date of the application […].

Thus, this feature is the basis for a very broad claim, but it is at least clear under A 84.

The case was then remitted to the first instance for further prosecution.

Should you wish to download the whole decision (T 1638/06), just click here. 

T 1327/07 – Doing Things In The Right Order

Claim 1 of the opposed patent read:

Method for the anonymisation of telecommunications operations and relations in telematics applications, wherein an anonymising device (3) logically located between telecommunications network (2) and telematics service centre (4) removes all characteristics identifying the end subscriber from the communications operation in relation to the operator/provider of telematics services, replaces them by a unique, varying, temporary identification unknown outside the device, and for a limited time ensures projection of the permanent identification onto the temporary identification, characterised in that, when using cryptographic methods to ensure confidentiality and security of communications operations against manipulation, if the latter use parameters individual to the subscriber, the anonymising device (3) logically located between telecommunications network and telematics service centre performs cryptographic transformations (3.2) for the separation of code circuits used in the cryptographic methods.

The patent under consideration had been opposed, inter alia, under A 100 c). The opponent pointed out that the amendment of feature “… for the separation of the code circuits …” (application as filed) to “… for the separation of code circuits used in the cryptographic methods …” (claim 1 as granted) was inadmissible.

The Opposition Division came to the conclusion that no interpretation other than that the code circuits are used in cryptographic methods was possible. The Board confirms this opinion:

** Translation from the German **

[2.3] […] It follows from the meaning of the features of the characterising part of claim 1 [as determined by the Board], which [meaning] encompasses the execution of cryptographic methods at the level of end subscribers, that code circuits are formed at this point and used by the cryptographic methods. In the original disclosure it was stated – without any prior reference to “code circuits” – that “cryptographic transformations are carried out in order to separate the code circuits” (original claim 6, emphasis added by the Board). Within the framework of the interpretation of claim 1 [adopted by the Board], the only technically meaningful understanding of this feature which results from the original disclosure is that those code circuits are separated which have been created, and therefore, used, beforehand by cryptographic methods.

[2.4] The [opponent’s] argumentation referred to decision T 792/94. According to this decision, a request that cannot be understood in an unambiguous way allows for an interpretation which goes beyond the teaching of the application as filed and which, therefore, violates A 123(2).

However, this is not the case here as the Board bases its decision on a possible inadmissible extension on an unambiguous interpretation of claim 1. Moreover the [opponent] was not able to exemplify (durch ein Beispiel aufzeigen) a potential ambiguity of the request.

[2.5] It follows that claim 1 has not been amended in a way that extends its object beyond the content of the application as filed. […] The patent complies with the requirements of A 123(2).

My understanding of this matter is that before examining the extent of protection (and its possible inadmissible extension) one has to come to a conclusion regarding the correct interpretation. The mere existence of an interpretation that would lead to the conclusion of inadmissible extension is not sufficient. The A 123(2) objection will succeed only if the skilled person would retain this particular interpretation. Should the skilled person hesitate between two possible interpretations, both might be considered under A 123(2). If one of them violated A 123(2), there might be trouble ahead.

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

T 704/08 – Potential Matters

In this case the Opposition Division (OD) had maintained the patent in amended form. The Board of appeal (decision T 1505/06) then remitted the case to the OD because it could not exclude that a substantial procedural violation had occurred. The OD finally revoked the patent on the basis of late filed documents D11 to D14. The patent proprietor filed an appeal and pointed out that another substantial procedural violation had occurred:

[1.2.1] The [patent proprietor] considered that the decision of the OD did not give any reasoning why D11 to D14 were more relevant than those already in the proceedings.

The [patent proprietor] is correct in so far as the OD in its decision merely stated with respect to their admittance that they were prima facie relevant to the question of novelty and/or inventive step […]. However, the OD came to the conclusion that the subject-matter of independent claims 1 and 7 of the main request lacked novelty over D14 […]; that the subject-matter of independent claim 1 of the second auxiliary request lacked an inventive step over the combination of D12 and D14 […]; and that the subject-matter of independent claim 7 of the second auxiliary request lacked novelty over D13 […]. The reasons why the OD admitted D12 to D14 into the proceedings are thus absolutely clear from this further reasoning in the decision.

The Board would furthermore note that a document does not have to be more relevant than documents already in the proceedings in order for it to be admitted into the proceedings. It is sufficient that it could influence the outcome of the proceedings, for example in combination with a document already in the proceedings.

With regard to D11 the decision neither explicitly nor implicitly explained its relevance. It may be noted, however, that a document may be admitted into proceedings if it could affect the decision at the time of its admittance. The fact that it turned out that the document did not affect the decision does not mean that the OD committed a procedural violation in not providing supporting reasons for its admittance since there could arise other reasons, as in the present case, for revoking the patent.

[1.2.2] The Board concludes that no procedural violation was committed in this respect, let alone a substantial one.

To read the whole decision, you may click here;

T 704/08 – Mind Your Own Business

Is it possible to request a remittal to the Opposition Division (OD) based on a substantial procedural violation committed against the adverse party, although this party does not wish to have the case remitted? This is a question that arose in the present appeal proceedings. However, the Board found a way not to decide on this issue.

[1.1.1] In response to the summons by the OD to the second oral proceedings (OPs) the representative of the opponent indicated that he had already booked a holiday on that date and requested that another date be set. The representative of the proprietor with letter of 4 January 2008 supported the request of the opponent, but expressed surprise that the representative of the opponent could not be replaced by another representative from the same practice. The opposition division did not change the date of the OPs. The representative of the opponent was replaced by another from the same practice and this representative stated at the OPs that he did not want a postponement of the OPs.

[1.1.2] The [patent proprietor] has argued that the OD committed a substantial procedural violation in not postponing the OPs at the request of the opponent when this request was supported by the proprietor.

The arguments of the [patent proprietor] concern the right to be heard of the [opponent]. The [opponent], however, does not consider that its right to be heard was infringed by the OD.

The question arises as to whether a request by a party based on an alleged infringement of the rights of another party is an admissible request.

In the present case the Board does not find it necessary to consider this question further since the request is manifestly without foundation.

[1.1.3] The opponent was represented in the second OPs before the OD by a representative who considered that he did not need a postponement of the OPs. It follows therefore that the right to be heard of the opponent was respected and that there was no procedural violation.

[1.1.4] The [patent proprietor] further argued that the availability of another representative from the same practice should not play a role since it concerns the internal relationship between the representative and his client. The Board notes that it was the proprietor who initially indicated […] that it was surprised that the representative of the opponent could not be replaced by another representative from the same practice.

The Board considers that in any case this somewhat inconsistent argumentation does not apply in the present case since the opponent chose to change its representative and does not consider that its right to be heard was infringed as a result of this change.

[1.1.5] The [patent proprietor] indicated during the OPs before the Board that it desired a general statement from the Board concerning the circumstances under which an OPs should be postponed.

The Board does not consider that it is a purpose of appeal proceedings to issue such general statements in circumstances where they are irrelevant for the case to be decided, irrespective of whether a Board should issue general statements at all.

The Board therefore declined to consider this point further.

[1.1.6] The Board concludes that no procedural violation was committed in this respect, let alone a substantial one.

To read the whole decision, you may click here.

T 1877/08 – Continua Are Special

[2.1] The patent in suit claims two priority dates, the first priority date being that of US 558 346 of 26 July 1990, the second priority being that of US 681 565 of 5 April 1991.

The [opponent] cited document D2 in the proceedings as representing the closest state of the art in the assessment of inventive step. This document is an intermediate document having a publication date between the first priority date of the patent in suit, which is 26 July 1990, and the filing date thereof.

Since the question arises whether document D2 is to be considered as state of the art according to A 54(2), the matter of whether or not claim 1 of the patent in suit is entitled to the claimed right of the first priority date of 26 July 1990, has to be decided by the Board.

[2.2] Pursuant to A 87(1), a right of priority may only be enjoyed in respect of the same invention. Therefore, in deciding whether claim 1 of the patent in suit is entitled to the claimed priority, it needs to be decided whether in the priority document the same invention is disclosed as in present claim 1. 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 (see G 2/98).

In the present case the priority document US 558 346 relating to the priority date of 26 July 1990 discloses refrigerant mixtures being a blend of from 30 to 55 percent by weight of chlorodifluoromethane, from 35 to 65 percent by weight of pentafluoroethane and from 2 to 10 percent by weight of propane […]. However, there is no disclosure in the priority document of a composition consisting of from 30 to 65 percent by weight of chlorodifluoromethane, from 33 to 69 percent by weight of pentafluoroethane and from 1 to 10 percent by weight of propane, as defined in present claim 1.

[2.3] Thus, claim 1 discloses ranges of numerical values different from those disclosed in the priority document. As the person skilled in the art cannot derive the subject-matter of claim 1 directly and unambiguously, using common general knowledge, from the previous application as a whole, it follows that the priority based on that previous application cannot be acknowledged.

[2.4] The [patent proprietor] argued that although the limiting values of the ranges specified in claim 1 differed from those disclosed in the priority document, the latter ranges were comprised within those claimed in the patent in suit. Consequently, at least for the overlapping portion of the ranges the subject-matter of claim 1 was entitled to the earlier priority date of 26 July 1990.

A 88(3) stipulates that if one or more priorities are claimed, the right of priority shall cover only those elements of the European patent application which are included in the application whose priority is claimed. The expression “elements” has to be understood as relating to separable alternative embodiments (G 2/98 [4. and 6.7]). In the present case, however, the claimed amounts represent a continuum of a numerical range of values which does not correspond to distinctive alternative embodiments. Consequently, no separable alternative embodiments, i.e. elements in the sense of A 88(3), can be identified within that continuum, which could enjoy the claim to the first priority date of 26 July 1990.

[2.5] For these reasons, the Board concludes that the subject-matter of independent claim 1 as a whole is not entitled to the claimed priority right regarding the first priority date of 26 July 1990.

Thus, the effective date for claim 1 of all requests is later than the publication date of document D2. Consequently, document D2 is a prior art document pursuant to A 54(2) for the subject-matter of claim 1.

It may, therefore, be a bad idea to “push the limits” in the second application (the one claiming priority) when a search report for the first application shows that the ranges could have been defined more broadly. When doing so, it is advisable to keep a claim (or at least parts of the description) with the original limits because a claim based on these limits may validly claim the priority, whereas the extended claim may not.

To read the whole decision, please click here.

T 1252/07 – Closer Than Closest

The Board and the parties agreed that D2 was to be considered as the closest prior art. When assessing the question of whether the objective technical problem was indeed solved, it was questioned whether the comparative trials were relevant, as the comparison was done with prior art different from the examples of D2. Here is what the Board had to say:

[5.4] It is true that none of the documents analysed above specifically deals with an article according to an example of D2. It is, however, considered that the evidence on file represents variants lying closer to the invention than any disclosure of D2, in particular example 3 or 13, so that the advantageous effect attributable to the distinguishing feature(s) of the invention is in fact more clearly demonstrated (T 35/85 [4]; T 197/86 [4, 6.1 and 6.1.2]). Example 13 of D2 for instance differs in two features from the subject matter claimed, namely the class of HALS and the HALS:triazine ratio). The examples of D10, D12, D16, D25, D26, D28 and D29, although they do not illustrate D2, are closer to the claimed subject matter and only differ therefrom in a single feature, namely the HALS:UV absorber ratio. These examples further show that at a given amount of HALS, varying the quantity of UV absorbers within the range claimed leads to a synergy in the UV stabilisation. Finally, the board considers that since the effect has been demonstrated under even more stringent conditions, the same effect is deemed to be also present in comparison to the closest prior art. These facts, thus, support the presence of a technical effect at least over part of the scope of the claims.

If you wish to download the whole decision, you can do so here.

T 759/09 – Looking Under The Carpet

This decision deals with the refusal of an application by the Examining Division (ED). In its decision the ED held that the application did not meet the requirements of A 84 for lack of clarity. It also commented on added subject-matter and lack of inventive step, though these comments were said not to form part of the decision.

The Board answers the question whether it can deal with the inventive step assessment:

Though the decision under appeal mentions clarity, the Board has chosen to exercise the power afforded it under A 111(1) to examine the application for other requirements as foreseen in G 10/93 [headnote]. For assessing compliance of amendments with A 123(2) this goes without saying.

As concerns inventive step the appealed decision in point 2 of the section “additional comments” said not to form part of the decision, refers to an objection raised in paragraphs 2.4 to 2.7 of the communication of 19 October 2007 issued in examination and which the division still held to be valid. The relevant paragraphs set out in a reasoned manner the case against inventive step, starting from a document D1, that is EP-A-0 882 424.

Even if this reasoning has not been included as formal ground in the decision under appeal - though it could and should have been (the underlying need for procedural economy would not require the reasoned statement of a communication under R 71(2) to cover “all the grounds against the grant” unless the reasoning of a first instance decision under R 111 were equally comprehensive) - it is evident that a first instance consideration of the issue of inventive step has already taken place. The Board has therefore also extended examination to this requirement.

If you wish to download the whole decision, please click here.