T 783/10 – Excellent

In this appeal the Board examined the inventive step of claim 1 of the main request, which read:

1. Use of an oil-soluble dimercaptothiadiazole compound or derivative thereof as a copper corrosion inhibitor in a tractor hydraulic fluid when in contact with a copper-containing metal wherein the oil-soluble dimercaptothiadiazole compound or derivative thereof is employed in an amount of from 0.01 to 0.2 weight percent, based on the weight of the tractor hydraulic fluid, to protect the copper-containing metal against loss of copper when the tractor hydraulic fluid contains at least 0.25 weight percent water, and wherein the oil-soluble dimercaptothiadiazole compound or derivative thereof has the formula

wherein R¹ and R² are hydrogen or hydrocarbyl, n is 0 or 1, x is 1 or 2, y is 1 or 2 and z is 1 or 2.

The Board found document D7 to be the closest prior art and then pursued:

[3.3] As the next step according to the problem-solution approach, it is necessary to determine the problem which the claimed invention addresses and successfully solves in the light of the closest prior art.

[3.3.1] The [patent proprietor] defined the problem to be solved in view of document D7 as lying in the provision of a tractor hydraulic fluid with excellent protection against the loss of copper in the presence of at least 0.25 weight percent of water.

[3.3.2] The board regards this definition of the problem to be unclear, since the term “excellent” could be interpreted in a relative or absolute sense. Indeed, during the course of the proceedings the [patent proprietor] employed this term in each of these senses.

Thus, on the one hand, in the patent in suit, the following is stated ([…], emphasis added):

“It has now been discovered that when an oil-soluble dimercaptothiadiazole compound or derivative thereof is employed in functional fluids that contain water, copper containing metals in contact with the functional fluid are protected from copper loss. This discovery was quite surprising since other compounds known to be copper passivators or copper corrosion inhibitors do not perform nearly as well as the dimercaptothiadiazole compounds or derivatives thereof of this invention.”

Moreover, the patent in suit designates the results pertaining to “Nalco VX 2326” as being a comparative example […], and the [patent proprietor] also argued in written appeal proceedings that this was to be seen as a fair comparison in the sense of decision T 197/86 […].

On the other hand, the [patent proprietor] argued with reference to […] document D29, that the results obtained for the present DMTD derivatives in the JDQ 84 test were below an “absolute” threshold value of 53 ppm disclosed therein, and should therefore be regarded as being “excellent”.

Before each of these uses of the term “excellent” are discussed in more detail below, in points [3.3.4] and [3.3.5], the experimental results relied on by the parties will be outlined under point [3.3.3].

[3.3.3] The following table summarises the data provided for additives according to present formula (I). In all these examples, n is 0, and x and y are 2.

In addition, data was provided for further copper corrosion inhibitors, which is summarised in the following table […].

The data reproduced above were obtained in the JDQ 84 test, according to which a hydraulic pump is operated with a functional fluid contaminated with 1% water, and flow rates and copper levels measured at specified intervals […].

For the sake of completeness, the board wishes to note that, in the patent in suit, the remaining components of the formulations used in the examples are identified in terms of function rather than precise structure […]. Consequently, although indicated as being “formulated according to the formulation of Example 1 of the patent”, the compositions used by the [opponent] in Annexes J, K and I are likely to differ from those employed in the patent in suit in more respects than only the copper corrosion inhibitor. This may explain the different results obtained by the [patent proprietor] and the [opponent] for the compound wherein R¹/R² are C₁₈. Similarly, under point 17 of its statement of grounds of appeal, the [patent proprietor] indicated that the formulations used in Annexes F and G differed with respect to several components from those used in the patent in suit. Consequently, it must be concluded that entries may only be reliably compared within the three sets of data (i.e. that provided in the patent in suit, and by the [patent proprietor] and [opponent], respectively).

[3.3.4] In so far as “excellent protection against the loss of copper” implies an improvement over the closest prior art […], the board is not convinced that the data outlined under point [3.3.3] provide adequate experimental support that this has successfully been achieved.

It is the established case law of the boards of appeal that, in order to be relevant, comparative tests have to meet certain criteria. These include the proper choice of the structurally closest comparative compound to be taken from the closest state of the art (T 181/82 [5]).

As outlined above […], document D7 relates to the field of tractor fluids and specifically discloses corresponding functional fluids in Table II comprising a DMTD additive, namely, “DMTD/formaldehyde/heptyl phenol”. Such an additive would clearly have greater structural resemblance to those claimed than the benzotriazole additives reproduced above in the second table of point [3.3.3]. The [patent proprietor] asserted that the exact structure of said DMTD derivative was unclear, but did not provide any evidence that the skilled person would not be able to obtain this product based on the information provided in […] document D7, in combination with common general knowledge, if required. Therefore, in the absence of any evidence to the contrary, the board regards the examples of document D7 to represent an appropriate starting point for assessing inventive step. However, no comparative tests were provided with respect to these examples.

It is additionally noted that document D7 specifically discloses further DMTD-based metal passivator components B-5, as outlined above in point [3.2] (cf. formula (XXIV), R’ = isopropyl, hexyl, decyl). The [patent proprietor] argued in this context that there was no example in document D7 of specific functional fluids containing these compounds. However, it is noted that present claim 1 is also completely open as to the nature of the further components in the tractor hydraulic fluid. There was therefore nothing to prevent the [patent proprietor] from designing comparative tests within the meaning of decision T 197/86, such as to demonstrate that any effect had its origin in the distinguishing feature of the invention.

In any case, Comparative Example A provided in the patent in suit is not considered to be pertinent since the compound identified above as “Nalco VX 2326” is neither specifically disclosed in document D7, nor does it accurately reflect the disclosure therein with respect to the structurally closest DMTD-based corrosion inhibitors, as explained in the previous two paragraphs. This comparative example cannot therefore be used to support any improvement with respect to the closest prior art.

Finally, the additional data submitted by the [opponent] demonstrate that compounds falling within present formula (I) are no more effective than the metal passivator according to document D7, tolytriazole […].

Consequently, the data provided, as summarised under point [3.3.3], cannot support the superiority of the additives according to present formula (I) with respect to the closest prior art.

[3.3.5] In a second line of argument, the [patent proprietor] submitted that “excellent protection against the loss of copper” should be seen as defining a result lying below a particular threshold value in the JDQ 84 test […]. However, in this case, the concept of “excellence” can have no other purpose than as a criterion for assessing the suitability of an additive for use as a corrosion inhibitor in a tractor hydraulic fluid contaminated with water.

The [patent proprietor] cited document D29 as disclosing that copper levels of 53 ppm are “not uncommon for a good fluid in this test”. However, this statement is made within the specific context of comparative tests between borated and non-borated calcium sulfonate additives. It cannot be concluded therefrom that values below the level of 53 ppm are by definition “unexpectedly good” regardless of context.

Therefore, the board considers that the inclusion of “excellence” as an absolute concept in the definition of the problem is redundant and, as such, can only lead to confusion as to its meaning.

[3.3.6] Consequently, the problem as defined above by the [patent proprietor] […] requires reformulation.

In the light of document D7 and in view of the fact that the present claims relate to a use rather than a composition, the problem to be solved can be defined as lying in the provision of an alternative method for protecting tractor hydraulic fluids against copper corrosion.

The solution as defined in claim 1 relates to the use of a DMTD derivative of formula (I) in an amount of from 0.01 to 0.2 weight percent in the presence of at least 0.25 weight percent water.

Having regard to the data reproduced above in the first table of point 3.3.3, the board is satisfied that this problem has been solved.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 766/11 – Covered By The Clause

In this appeal against the rejection of an opposition Board 3.2.03 dealt with an alleged prior public use.

Claim 1 of the opposed patent read:

Control and/or regulating device for a support roller stand (2) of a continuous casting device (1) for metals, particularly for steel materials (3), wherein the support roller stand consists of several successive roller segments (8), which are respectively adjustable in regulated manner relative to one another by means of paired piston-cylinder units (13) by way of a lower frame (11) carrying the support rollers (10) and an opposite upper frame (12), for conveying, straightening and/orforimproving the internal quality and for changing the thickness of the metals, wherein on the upper frame (12) of the roller segment (8) the signals of position transmitters of the hydraulic cylinder units (13) are respectively conducted to a terminal box (21) and wherein a cable packet (23) is led from the terminal box (21) via a detachable rnedia coupling (22) to a stationary works stand (17), characterised in that for each roller segment (8) a separate axis regulator (18) with a connected valve station (26) is arranged on the stationary works stand (17) and that signals from all axis regulators (18) are respectively conducted by way of a field bus module (20) to a common memory-programmable control  (19) in a control space (25) of the continuous casting 20 device (1).

*** Translation of the German original ***

[3.1.1] The prior public use is a modernisation project of the VAI company for the continuous slab casting plant (Brammenstranggießanlage) (CSCP) of the Wuhan Iron & Steel Group Corporation (China). A copy of the agreement was filed as document O1. It is undisputed that VAI has installed a plant having the claimed features. What is disputed is whether this casting plant and in particular the positioning of the axis regulators had been made available to the public.

[3.1.2] The [opponent] pointed out that there had not been any obligation of secrecy or confidentiality concerning the continuous slab casting plant. The subject-matter of claim 1 had been made available as a consequence of the sale of the casting plant and/or a factory visit (Werksbesichtigung) during a seminar on continuous casting in China.

The agreement contains a secrecy clause (Article 15 on page 25) concerning the “know how and related technical documentation” for a period of 5 years following the conclusion of the agreement (December 21, 2000). This period overlaps the priority date of the impugned patent (November 9, 2004); thus the question of secrecy is relevant for determining whether the control systems of the CSCP belong to the prior art (A 54(2)).

The [opponent] argued that the know-how according to Article 2.3 of the agreement referred to the manufacture of the product concerned by the agreement (Vertragsprodukt), i.e. the slabs, and not to the CSCP itself.

However, the Board is of the opinion that the obligation of secrecy is not to be interpreted so narrowly, for the following reasons:

First of all, the subject-matter of the agreement is defined in Article 2 and encompasses not only the components of the CSCP but also the know-how and the technical documentation (see point 2.1 of the contract). Both are defined in point 1.22 of the contract (“Technical Documentation means the technical indices, specifications, drawings and documents (including the licensed patent and know-how) related to design, inspection, Erection, Cold Test, Commissioning, Performance Test, operation and maintenance of Contract Plant, …”) and thus concerns, as usual, information that the skilled person cannot derive from the apparent structure of the plant without further ado. Article 15 mentions that the know-how and the technical documentation are to be kept secret; this comprises at least the technical information and indications that are not apparent. The control of the individual roller segments typically are part of this.

[3.1.3] Moreover, the [opponent] referred to D23 and D24 and argued that this technology was not covered by the secrecy clause of the contract. D23 and D24 disclose “SMART” roller segments developed by VAI as well as the “ASTC” control system. According to these disclosures each roller segment has a distinct axis regulator that is connected to a master-control system located in a control room of the CSCP. D23 and D24 are scientific articles which the [opponent] has filed in order to prove that VAI had no interest in keeping the SMART segment technology and the ASTC control system secret.

It is, therefore, clear that the SMART segment and the ASTC technologies were available to the public during the five years of the secrecy obligation. However, the conclusion that the part of the subject-matter of the agreement that concerned control was not to be covered by the secrecy clause of the Article would be mere speculation. Rather, the agreement has to be interpreted according to the wording of the agreement, without referring to any further documents that are not cited in the agreement. Article 15 of the agreement, however, clearly states that the technical documentation and the know-how are to be treated as confidential, and, as explained above, this includes the control of the roller segments.

[3.1.4] The [opponent] finally referred to D22 where “know-how” was defined as follows:

“Information that enables a person to accomplish a particular task or to operate a particular device or process.”

It was of the opinion that this meant that “know-how” only concerned the operation of the CSCP, i.e. the manufacture of slabs. However, the Board is of the opinion that the “operation of the CSCP” inter alia comprised information regarding the control of the plant and was not limited to the final product. Moreover, Article 15 of the agreement expressly refers not only to know-how but also to the relevant technical documentation.

Factory visit

[3.2.1] There was a factory visit of the CSCP 3 of the Wuhan Iron & Steel Corporation during a seminar on continuous casting in Wuhan, China.

[3.2.2] The [patent proprietor] has argued that a CSCP is a very large and complex device having a many components. In view of the great number of components the Board is not persuaded that a visitor who did not know the subject-matter claimed in the impugned patent would have realized without any further explanation which structural elements, let alone the control modules disclosed in D23 and D24, were hidden behind the boxes.

[3.2.3] The [opponent] submitted that during the visit questions regarding the control of the plant could have been asked and would have been answered.

According to the case law of the Boards of appeal it is sufficient for [information] to be publicly available that there was a theoretical possibility to take note of this information. It is irrelevant whether there was any reason to search for such information or for requesting it, as well as whether a member of the public indeed did take notice of it (Case Law of the Boards of appeal, point I.C.1.8).

In T 947/99 the alleged prior public use concerned the visit of an ice-cream factory. There was no proof that a feature of the manufacturing process was explicitly explained to the visitors. This notwithstanding the Board decided that information concerning the process had nevertheless been made available to the public because

(i) the visitors were not subject to a secrecy or confidentiality obligation;
(ii) the information concerned a generally known process step; and
(iii) if a visitor had requested information on details of the manufacturing process he would have obtained the relevant piece of information (see point [10.6] of the reasons).

However, the present case differs from case T 947/99. As a matter of fact, if someone asked questions on the control of the casting plant in the course of the visit, he would not have received such information because this information was confidential according to Article 15 of the agreement.  

[3.2.4] The [opponent] has offered the testimony of Mr. S. on this issue.

The only reason for this offer of proof, however, was that Mr. S. had been present at the factory visit as an employee of the [opponent’s] (VAI’s) distribution and that he could have asked questions and received answers on behalf of VAI during the visit.

Thus the [opponent] has not made any submission concerning the proper evidence that could establish the prior public use it invokes. Also, the alleged possibility of asking questions and receiving answers corresponds to a merely hypothetical consideration of the [opponent]. The [opponent] has not asserted that questions regarding the technical construction and the mode of operation of the casting plant had indeed been asked and answered in detail.

Thus the Board found itself in a situation where it lacked a substantiated submission on behalf of the [opponent] as to what the witness could declare and why this was relevant for the technical aspects that were relevant for taking a decision in the present appeal proceedings. Moreover, the [opponent] only based its argumentation on a theoretical possibility, which, in the absence of any substantiated submission, could not establish a basis for the taking of evidence by hearing the witness.

Thus the Board has decided not to invite the witness to the oral proceedings and not to hear him.

Summary

[3.3] The sales agreement concerning the modernisation of the CSCP of the Wuhan Iron & Steel company contains a secrecy clause regarding the know-how and the technical documentation of the casting plant. The case law of the Boards of appeal has developed a narrow concept of novelty, i.e. the features of the invention have to be derived clearly, directly and unambiguously from the prior art. In the present case, for the reasons mentioned above, the secrecy clause of the agreement was not limited to the sole manufacture of slabs but also comprised technical details that typically include the controls and their arrangement.

In the course of the factory visit [the skilled person] could not realise where the control was installed and in particular whether the axis regulators were installed in the boxes that were arranged laterally. Although the participants to the factory visit were not only shown the casting plant but also had the possibility of asking questions, the details of the casting plant according to the sales agreement were covered by a secrecy agreement, which means that it is not established that a control system as defined in claim 1 was available to the public.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 1388/09 – Consult The Lexicon

It is a well-known principle of U.S. patent practice that an “applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s).” (M.P.E.P. 2111.01, paragraph IV).

The EPO also accepts this principle to some extent, although Examiners nowadays often require such definitions to be inserted into the claims.

What I found interesting in the present decision is that it transfers the lexicography principle to prior art (patent) documents.

The appeal was filed by the patent proprietor after its patent had been revoked by the Opposition Division.

In what follows, the Board discusses the patentability of the main request claim 1 of which read (in English translation):

[1] Compressed air processing apparatus (CAPA), comprising:

[1.1] a pressure controller (5);

[1.2] an air dryer (6);

[1.3] a multi-circuit protection valve (7); and

[1.4] an electronic control unit (40) to control

[1.4.1] the pressure controller,

[1.4.2] the air dryer

[1.4.3] and the multi-circuit protection valve,

characterised in that

[1.5] the electronic control unit (40) of the CAPA is also designed to control valves (10) of an air suspension system, and in that

[1.6] a switching valve (52) that supplies compressed air to the air suspension system or de-aerates the air suspension system, respectively, is arranged in the CAPA. (marginal references proposed by the appellant and accepted by the Board)

*** Translation of the German original ***

[2.1] It is undisputed that D1 discloses a CAPA according to claim 1 of the main request, with the exception of the following features: pressure controller (feature [1.1]), multi-circuit protection valve (feature [1.3]) and the characterising feature (feature [1.6]).

[2.2] Regarding feature [1.6], the appellant has submitted that the CAPA according to D1 only disclosed valves for supplying [compressed air] to the air suspension system and that only such valves (as opposed to de-aerating valves) were provided in this apparatus.

[2.3] The Board cannot accept this argument because it contradicts the disclosure of document D1. The introduction of the description of document D1 […], where the state of the art is acknowledged,

mentions that it was common until then to arrange the valves used for compressed-air conditioning (Druckluftaufbereitung), and thus for supplying [compressed air] to the air suspension system, in the CAPA (“dispositif de traitement”) […] whereas the electrovalves (“électrovalves”) used for controlling the air suspension system were arranged in the vicinity of the pneumatically suspended axles […]. The inventive idea (erfinderische Gedanke) disclosed all over document D1, according to which the pneumatic suspension system is controlled in a centralised manner in the CAPA, via electrovalves, rather than in specific functional units comprising these electrovalves, which are, for instance, provided in the vicinity of the pneumatically suspended axles […], is quite comparable with the one underlying the impugned patent. According to this teaching the electrovalves that control the suspension air bellows are integrated centrally in the CAPA and not scattered over several places such as in the prior art acknowledged in D1 […]. According to D1, one common electronic control unit 10 for controlling the pneumatic suspension is provided in the CAPA […].

[2.3] Before D1 was published the person skilled in the field of air suspensions was aware (cf. D4) that electrovalves for controlling air bellows of a suspension have to both supply compressed air and de-aerate, e.g. when a certain load-independent difference of heights between the chassis and the pneumatically suspended axles has to be maintained (D1 […]). When compressed air is supplied to the pneumatic air bellows (referred to as “cousins d’air” in D1) then the vehicle body is lifted up against the weight of the vehicle. When the pneumatic air bellows are de-aerated, the vehicle lowers because of its proper weight.

[2.4] The parties agreed that the function of “controlling the air suspension system” includes both supplying air to the bellows of the air suspension system and de-aerating them. It is true indeed that document D1 does not explain in every detail how the idea of centralising is to be reduced to practice. In particular, it does not show how the mentioned electropneumatic components are connected and designed. However, the skilled person encounters no difficulties in practically realising this centralising idea. When the air supply and the de-aerating has to be done via electrovalves, this implicitly requires the electrovalves to be switching valves (Schaltventile). Document D4 shows in detail how such valves operate.

[2.5] The [patent proprietor] has based its proper interpretation of D1 on the absence of a detailed description of the electrovalves and their pneumatic mode of operation as well as on certain passages and figures of D1a [i.e. the German translation of D1]. According to this interpretation, the air bellows mentioned in D1 cannot be directly connected to the outlet of the CAPA but are connected via de-aerating switching valves which it believes to be mentioned as “actuating elements” (“Betätigungselemente”) in D1a and which had to be arranged downstream of the CAPA.

[2.5.1] The Board is of the opinion that this view of things contradicts the teaching of document D1. When interpreting the disclosed state of the art, the Board refers to the original document D1 because there are some inaccuracies due to translation in D1a. For example, the expression “actuating elements” of D1a […] does not exactly correspond to the original expression “actionneurs pneumatiques” […] for which “pneumatic actuators” would be a more correct translation. Apparently “actuators” refers to the actuators of the air suspension system, i.e. the air bellows (also referred to as “cousins d’air” in D1).

[2.5.2] The Boards of appeal of the EPO have explained in several decisions that a patent document may be its own lexicon (see, for instance, T 1321/04 and T 500/01). In accordance with this principle the disputed terms mentioned above have to be assigned the meaning that is found in the description of document D1. In the present case, [the Board] notes, based on the numerous passages of D1 using these terms […] that the expression “sortie d’air destinée à l’alimentation” in D1 is to be understood as a general conduit for “supplying” energy needed for generating displacements (zu Verstellzwecken), wherein the displacement movements as such can be generated both with and without energy supply on behalf of the CAPA, as the case may be. I this context the skilled person understands that the air bellows (“coussins de suspension”) or the actuators (“actionneurs”) can indeed be de-aerated via this conduit (“conduit destine à l’alimentation”), the latter being passive, which means that there is no need for the CAPA to supply pneumatic energy during the de-aeration phase. The amount of air generated during the de-aeration may exhaust via the damped outlet of the CAPA (cf. Figs. 1 and 2 “silencieux d‘échappement 6”). Thus the [patent proprietor’s] interpretation is based on an incorrect interpretation of the terms “alimentation” or “alimenter”, respectively, and “actionneurs”.

[2.5.3] Document D1 uses a unified terminology for disclosing three levels within a control chain, i.e. the electronic unit (“unité de contrôle commande électronique”), the electric control valves (“composants électropneumatiques” or “électrovalves”, respectively), as well as the actuators (“actionneurs” or “coussins de suspension”, respectively), which form the last level of this chain of control. The second paragraph on page 5 of D1 unambiguously discloses that, contrary to the opinion of the [patent proprietor] the CAPA according to D1 has the feature [1.6].

[2.6] As to its assumption that the air-suspension bellows cannot be directly connected to the CAPA of D1, the [patent proprietor] also has referred to valve 27 of Fig. 3 of D1 and submitted that this valve did not comprise a switch position allowing to de-aerate.  

In this context it has to be noted that valve 27 of Fig. 3 of D1 is only disclosed as a valve that transmits the air pressure (“pression délivrée…par l'intermédiaire d'une électrovalve 27”) […]. This does not exclude that […] the actuator (“actionneur”) supplied by valve 27 may also be de-aerated via the CAPA. Moreover, it should be noted that the valve 27 is only represented by way of example and, according to […] D1, belongs to a module 16 for controlling the hand brake. Fig. 3 of D1 is a simplified functional chart […] and, therefore, cannot be used as evidence for the detailed design and the precise connectability of the pneumatic component.

[2.6.1] Moreover, paragraph [0023] of D1a cited by the [patent proprietor] does not mean that it is necessary for the pressure sources to be within each axle. Rather, this paragraph does not make any statement on where to provide the pressure sources. It only states that the different air bellows of an axle may be supplied by separate pressure sources or via a common pressure source […]. This allows to supply the air bellows of the right and left side of the vehicle separately or jointly. This view is confirmed in another passage […] of D1.

[2.7] It remains to be examined whether features [1.1] and [1.4] are known from D1. However, it is not necessary to dwell on this question because even if the assumption of the [patent proprietor] that these features are not known from D1 is accepted, these features cannot contribute to an inventive step:

[…] D1 explains that the core piece 37 of the disclosed CAPA comprises the electropneumatic organs which are needed for controlling the air pressure supplied by the compressor, for drying the compressed air and for its distribution to the different service brake circuits, and which are known as such. The skilled person knows the design and interaction of these organs, e.g. from document D2 (cf. Fig. 1 of D2: pressure controller 2, air dryer 4, multi-circuit protection valve 3, control electronics 52). This document is cited in the introduction of the description of D1 […]. So the skilled person is clearly instructed to provide the core piece of the CAPA of D1 with a pressure controller, (feature [1.1]) and a multi-circuit protection valve (feature [1.4]) according to D1. When doing so, it is obvious to control the valves of these organs in the known way by means of the existing electronic control unit.

[2.8] Thus the Board comes to the conclusion that the subject-matter of claim 1 is not inventive, for the reasons given above, and, therefore, does not comply with the requirements of A 56 EPC 1973. Thus the ground for opposition pursuant to A 100(a) EPC 1973 hinders [the Board] from maintaining the patent as granted.

I am not sure what to think of this. The lexicon principle makes sense when interpreting claims, which form a unit that is distinct from the description. Does it make sense to apply the principle to prior art documents, where the distinction between claims and description is not really relevant and where the general rules of interpretation apply?

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

G 1/07 – Vienna Is Not Narrow-Minded

In my previous post dedicated to G 1/07 I only reported the answers given by the Enlarged Board (EBA) to the questions referred to it by interlocutory decision T 992/03. I promised to come back on the decision of the EBA should I find it to contain interesting statements. In fact, I found the decision as a whole much more interesting than its answers to the (rather narrow) questions. I will dedicate two further posts to noteworthy points raised by the EBA. The first one deals with an interpretative principle that has often been followed as if it was self-evident : the principle stating that exclusions to a general rule are to be interpreted narrowly. The EBA has something very interesting to say on this subject:

[...] The appellant, referring to case law of the boards of appeal and most of the amici curiae submit that on the basis of the Vienna Convention a principle of narrow interpretation of exclusions from patentability should apply, since according to A 4(3) it is the task of the Organisation to grant European patents.

It is established in the jurisprudence of the EBA ever since decision G 5/83 [3ss] that the principles of interpretation of Articles 31 and 32 of the Vienna Convention are to be applied to the interpretation of the EPC even though its provisions do not apply to the EPC ex lege.

According to Article 31(1) of the Vienna Convention a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose. Further means of interpretation including in Article 32 the preparatory work of the treaty are then defined but there is no mention in the said provisions of any principle of narrow or broad interpretation, be it only of exclusions, and decision G 5/83 also does not say so.

Hence, no general principle of narrow interpretation of exclusions from patentability which would be applicable a priori to the interpretation of any such exclusions can be derived from the Vienna Convention. Rather, the general rule in Article 31, point 1 of the Vienna Convention that a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose must apply to the exclusion clauses contained in the EPC in the same manner as to any other provision, the latter including those positively defining the requirements for patentability.

If the interpretation of the provision concerned according to these principles of interpretation leads to the result that a narrow interpretation is the right approach then and only then such restrictive meaning is to be given to it.

Admittedly, when it comes to considering the impact of the context of a provision, the fact that a provision is an exclusion to a general rule is not without any bearing on its interpretation but this aspect is only one of the factors determining what the right interpretation of the provision concerned is. At least equally, if not more important, is, besides the ordinary meaning to be given to the wording of the provision, that the provision is interpreted in such a manner that it takes its effect fully and achieves the purpose for which it was designed. As has been said before, this must apply to an exclusion clause in the same manner as to any other requirement for patentability.

In its opinion G 1/04 [6] the Enlarged Board stated – thereby referring to decisions of the boards of appeal having acknowledged the existence of such an a priori principle – that the “frequently cited principle”, according to which exclusion clauses from patentability laid down in the EPC are to be construed in a restrictive manner, does not apply without exception. Interestingly, in that opinion concerning the definition of the term diagnostic methods practised on the human or animal body, the Enlarged Board carne to its conclusion that the said exclusion was indeed to be interpreted narrowly only after a thorough investigation of the wording and the purpose of the exclusion clause concerned.

The same approach is also transparent from the Enlarged Board’s more recent decision G 2/06. In that decision the Enlarged Board was concerned with the interpretation of the exclusion from patentability of biotechnological inventions relating to uses of human embryos for industrial or commercial purposes under R 28(c) EPC (and the corresponding Article 6(2) of the EC Directive on the legal protection of biotechnological inventions). In that decision the Enlarged Board does not mention the existence of a principle of narrow construction of exceptions from patentability at all. Instead, as method for interpreting the extent of the prohibition the Enlarged Board goes directly to the rules of interpretation laid down in the Vienna Convention, i.e. it looks at the terms of the provision and its object and purpose (point 16 of the Reasons). No mention is ever made in the further course of the reasons of that decision of any narrow or restrictive view which would have to be taken because the said prohibition was an exception to patentability and in the present case the Enlarged Board will proceed in the same way. [3.1]

I am not unhappy to see the Enlarged Board put aside this principle, although by doing so the EBA deprives me of a beloved trait d’esprit. When people pointed out that exceptions to patentability were to be interpreted narrowly, I often answered that European patents created an exception to the principle of free movement of goods in Europe (all Contracting States to the EPC are in one way or another linked to the European free trade area) and, therefore, European patent law was to be interpreted narrowly. As a consequence, so went my argument, exceptions to patentability were exceptions to an exception and, as such, to be interpreted broadly. Needless to say, I have not made many converts. Now the EBA, by setting aside the exceptions-are-to-be-interpreted-narrowly principle, also sets aside my only original contribution to the patent doctrine. Sad, isn’t it?

To download the decision, click here.