T 747/10 – Let’s Be Subjective

T 331/87 is a decision that any serious EQE candidate ought to know. It deals with the question of whether a feature can be deleted from a claim without there being a violation of A 123(2). Today’s decision applies this teaching to a concrete case.

Here the Examining Division had refused an application.

Claim 1 of the main request before the Board (as compared to claim 1 as filed) read (additions in blue, deleted parts in red colour):

The Board finds this amendment not to comply with A 123(2):

[2.1.1] Claim 1 of the main request differs from claim 1 as originally filed, inter alia, in that the feature according to which the computer interface permits to supply power to the light emitting assembly has been deleted. In the letter of 14 March 2011, the [applicant] submitted that the deletion of this feature fulfilled the three point test defined under section C-VI, 5.3.10 of the Guidelines for examination according to which the removal of a feature from a claim does not violate A 123(2) if the skilled person would directly and unambiguously recognise that:

(i) the feature was not explained as essential in the disclosure;

(ii) the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and

(iii) the replacement or removal requires no real modification of other features to compensate for the change.

The [applicant] elaborated further on this issue in his letter of 31 March 2011, providing arguments why, in his view, each of the three criteria defined in this passage of the Guidelines was fulfilled.

[2.1.2] It is acknowledged, as a preliminary remark, that the fact that the computer interface is consistently associated throughout the original disclosure to the function of supplying power to the light emitting assembly does not, as such, constitute an obstacle to its removal from the original claims. This view conforms to the approach developed in decision T 331/87, which constitutes the actual basis for the passage of the guidelines relied upon by the [applicant]. This passage in decision T 331/87 was indeed followed by the statement according to which

“The feature in question may be inessential even if it was incidentally but consistently presented in combination with other features of the inventions” (cf. T 331/87 [6]).

The Board had thus to decide whether, under the present circumstances, the conditions set out in said passage of the Guidelines and construed in the light of decision T 331/87, allowed the removal of the feature relating to the ability of the computer interface to supply power to the light emitting assembly.

[2.1.3] A first step of the analysis to be carried out consists in identifying the subjective problem solved by the invention (cf. T 331/87 [7.1-7.4]), i.e. the problem defined by the applicant in the original description by reference to the prior art, as it was known to him at that time.

While the passage of the description on page 2, lines 25-27, defines it as an object of the invention to make it possible for a user to perform deskwork when being exposed to light therapy, thus addressing the problem associated with light sources harsh to the eyes […], the passage on page 2, lines 17-20, suggests that another object of the invention is to solve the problem of limited portability encountered with prior art LED sources. This view is confirmed by the statement on page 2, lines 28, 29, introducing the definition of the invention, according to which “the above-mentioned and other objects are fulfilled by provision of a light therapy apparatus”, wherein the following definition of the apparatus does incorporate inter alia the feature of the computer interface for power supply of the light emitting assembly, which addresses the problem of limited portability.

Moreover, although particular emphasis has been put in the course of the examination proceedings and the ensuing appeal proceedings on the aspect related to the possibility for the user to perform deskwork during treatment, the Board observes that the original disclosure actually privileges the aspect of portability which appears to reflect the main concern of the [applicant] when filing the application. It is worth noting, in this respect, that original claim 1 reproduces the passage of the description on page 2, lines 29-35, but omits the indication concerning simultaneous deskwork. The passages on page 3, lines 1-7, confirm this view insofar as they underline the advantages conferred by the invention or some of its embodiments in terms of size and weight of the light emitting assembly.

Consequently, the main problem actually addressed by the invention as originally disclosed concerns the aspect of limited portability of conventional light therapy apparatuses.

[2.1.4] The feature as to the ability of the computer interface to supply power permits the use of light emitting assemblies which do not, therefore, require additional large cumbersome batteries. The deleted feature is thus directly involved in the solution of the technical problem identified above. The present case differs, hence, from the case underlying decision T 331/87, in which the deleted feature only represented an advantageous embodiment of the invention, not contributing to the solution of the problem. For these reasons, the board then concluded in T 331/87 that the deleted feature defined an inessential feature of the invention which could be deleted without introducing new subject-matter in the application.

An a contrario interpretation of this principle would imply that a feature contributing to the solution of the problem defines an essential feature of the invention and could accordingly not be deleted. Such an interpretation must, however, be rejected, since it would conflict with the established practise at the EPO according to which a structural limitation in a claim may well be replaced by an equivalent, insofar as a support for the alternative configuration may indeed be derived from the application as filed. In the Board’s judgement, the criterion of essentiality is therefore met, if the feature in question is not only involved in the claimed solution but defines the sole alternative actually derivable from the original application documents. In other terms, a feature is essential if the skilled person would not have considered any other configuration as the one actually disclosed in order to solve the problem underlying the invention.

Under the present circumstances, the description does not disclose any other substitute to the computer interface for supplying power to the light emitting assembly. The passage referred to by the [applicant] on page 2, lines 16-24, which evokes a built-in battery pack, refers to some drawbacks of the prior art. It does not constitute sufficient evidence that such battery packs have indeed been considered in the framework of the present invention. Moreover, battery packs would not provide full satisfaction in view of the subjective problem actually addressed by the invention since they would still contribute to the size and weight of the light assembly. The third paragraph on page 3 merely suggests that the computer interface may have taken the form of a USB interface, but does not establish that the actual capacity of the computer interface to supply power, as such, can be optional. Similarly, the passage on page 5, lines 3-6, which describes a “preferred embodiment” of the invention, is not sufficient to establish that other means for supplying power were considered. The use of the term “preferred” seems to refer, in this context, to the use of two light emitting assemblies, and does not imply, contrary to the [applicant’s] view, that the computer interface for power supply evoked in this paragraph is purely optional.

Consequently, since the deleted feature contributes to solve the subjective problem of limited portability associated to conventional light emitting diodes and since the skilled person would not be able to derive from the application as filed any other configuration as the one consistently disclosed throughout the description, the Board concludes that the feature of the computer interface being adapted to supply power constitutes an essential feature of the invention. Its deletion results in the skilled person being presented with information which is not directly and unambiguously derivable from that originally presented in the application contrary to the principle underlying A 123(2).

What I find interesting here is that the subjective problem is considered and not the objective problem (with respect to the closest prior art) that would be relevant for inventive step. A feature is essential in this particular context if the drafter of the application thought it to be essential for solving the subjective problem. This is indeed one of the rare cases where the subjective problem is relevant, even in a case where the objective technical problem is quite remote from it.

I think this approach is correct for condition (i) of T 331/87, which has indeed a subjective flavour. Things are less clear-cut for condition (ii), but I think the problem again has to be the subjective problem because the objective problem depends on something which, as a rule, is not contained in the application as filed. Making an A 123(2) assessment dependent on such an external element does not sound right, does it?

To download the whole decision, click here. The file wrapper can be found here.

J 24/10 – The Day Before

Can a divisional application be validly filed just a few hours before the mention of the grant of its parent application is published? That is the question with which the Legal Board of appeal had to deal here.

The Receiving Section had decided that the application would not be treated as a divisional application although the applicant had filed it at 11:49, that is to say before the publication of the mention of the grant of its parent application, at 14:00 of the same day.

[2] The main issue in the present case is whether or not the parent application was still pending within the meaning of R 36 on the date on which the divisional application was filed. More precisely, did the publication of the mention of the grant of the patent in the European Patent Bulletin on dd.mm.yy exclude the pendency of the parent application for this entire day or only as from 14:00, when the European Patent Bulletin ../.. became publicly available via the internet?

[3] The Board finds that this question has already been answered by decision G 1/09 of the Enlarged Board of Appeal (EBA) dated 27 September 2010.

According to its obiter dictum under point [4.3.2] of the Reasons, the EBA held that in the procedural situation when a patent is granted

“the pending status of the European patent application normally ceases on the day before the mention of its grant is published since from that point in time substantive rights under the EPC are no longer derived from the patent application, but now derive from the granted patent”.

Although this statement was given as an obiter dictum the procedural situation underlying the present case was fully considered by the EBA and the Board has not the slightest doubt as to the correctness of this statement and the applicability of this line of reasoning to the present case. Consequently, it must be stated that the pendency of the parent application ended with the day before the mention of the grant of the European patent in the European Patent Bulletin.

[4] It must be added that the above statement of the EBA relates only to the wording of R 25(1) EPC 1973 but it is clear from the further deliberations in the reasons for this decision that the same interpretation also applies to the wording of R 36(1) applicable to the present case.

[5] As a further reason why the applicant cannot file a divisional application on the date on which the mention of the grant of a patent for the parent application is published in the European Patent Bulletin, it was already pointed out in the reasons of decision J 7/04 of the Legal Board that:

“With the mention of the grant of the earlier patent, the applicant and the EPO no longer exercise any influence over the patent, which becomes autonomous and has to be treated as though it had been conferred by a national authority in accordance with A 64(1). On the date of the publication of the mention of the grant of the earlier application the patent is deemed to be outside the EPO’s jurisdiction, and a divisional application could not be filed on the same date because the application is definitively removed from the EPO’s sphere.”

The other decisions cited by the [applicant] do not deal with the procedural situation after grant of the European patent and its publication and are, therefore, not appropriate to answer the question as to the pendency of an application in the present case.

[6] The cited decisions J 7/04 and G 1/09 are based on the wording of former A 97(4) EPC 1973 (now A 97(3)). According to this wording the smallest time unit is the date (German version: der Tag; French version: la date) as such and not an hour or the chronological order of events on a specific date.

Furthermore, A 64(1) stipulates that the date of the publication and not the event of publication as such is the precondition for conferring the protection provided for by that Article.

Apparently, the lawmaker’s intention was to implement an incontestable and foreseeable point in time at which jurisdiction passes to the national instances and at which the patent confers on its proprietor the rights defined in A 64(1) in relation to third parties. In order to provide legal certainty for the applicant, the decision to grant a patent regularly contains the scheduled date of the mention of the grant of the European patent so that the applicant is informed beforehand of this date.

[7] Summing up the foregoing considerations, the Board comes to the conclusion that in the present case the parent application was no longer pending before the EPO on dd.mm.yy, the date on which the publication of the mention of the grant of the patent took place. Therefore, the requirement of a pending (parent) application pursuant to R 36 was not fulfilled at the filing date of the present application.

[8] As regards the [applicant’s] suggestion for referral of a point of law of fundamental importance to the EBA, the Board has explained in the above paragraphs how the answer to this question can be deduced directly and unequivocally from the provisions of the EPC and from the obiter dictum in case G 1/09. Furthermore, as none of the decisions cited by the [applicant] runs contrary to the present Board’s conclusions, in which case a further ruling by the EBA with a view to ensuring uniform application of the law might have been be necessary (A 112(1)), referral to the EBA would actually be inadmissible. Therefore, the Board does not follow the [applicant’s] suggestion in this respect.

[9] In summary, the request that the divisional application be treated as a validly filed divisional application is not allowable, and the appeal is therefore dismissed.

To read the whole decision, click here.

For some strange reason, the application number has been hidden, so I cannot even provide a link to the file wrapper of the parent application.

T 1387/08 – On The Edge

The opponent filed an appeal after the Opposition Division (OD) had maintained the opposed patent in amended form.

The Board tackles the question of whether the invention is sufficiently disclosed.

[2.1] During the first instance opposition proceedings and after filing the notice of opposition, the [opponent] argued that the invention as defined in claim 1 was not sufficiently disclosed. The objections raised in this context were not admitted into the proceedings by the OD as they constituted a new ground of opposition under A 100(b) that was late-filed and not prima facie relevant. This aspect of the decision was challenged by the [opponent].

[2.2] The contested part of claim 1 of the main request refers to a powdered human milk fortifier comprising

- a protein component in a quantity of 24 wt/wt% to 55 wt/wt% of the powdered human milk fortifier,

- a fat component in a quantity of 1 wt/wt% to 30 wt/wt% of the powdered human milk fortifier,

- a carbohydrate component in a quantity of 15 wt/wt% to 75 wt/wt% of the powdered human milk fortifier,

- and “further comprising at least one additional nutrient consisting of calcium, wherein said calcium source is insoluble”.

[2.3] The [opponent’s] first argument with regard to insufficiency of disclosure was that a fortifier of claim 1 containing 75 wt% carbohydrates could not be reproduced, as such a fortifier would comprise more than 100 wt% of ingredients (75 wt% carbohydrates + the minimum level of 24 wt% protein + the minimum level of 1 wt% fat + insoluble calcium source).

[2.3.1] This alleged deficiency was already present in granted claim 2, which depends on claim 1 and relates to the presence of additional nutrients such as calcium. Hence, the [opponent’s] objection could have been raised in the notice of opposition. Therefore, as stated in the OD’s decision, this objection was indeed late-filed.

[2.3.2] This late-filed objection in fact relates to the question of where the boundaries of claim 1 lie with regard to the upper limit of the carbohydrate content. More particularly, to avoid the components of claim 1 adding up to more than 100 wt%, the skilled person has two possibilities to interpret the claim: (i) the upper limit for the carbohydrate amount is in fact below 75 wt%, based on all the components of the fortifier, or, (ii) the upper limit for the amount of carbohydrate is not based on all the components of the fortifier but only on the macronutrients (carbohydrates, proteins and fats) contained therein. The upper limit of the carbohydrate amount is thus ambiguous.

Although the board accepts that, depending on the circumstances, an ambiguity (or lack of clarity) may lead to an insufficiency objection, it should be borne in mind that, as pointed out in T 608/07 [2.5.2], for an insufficiency objection, it is not enough to show that an ambiguity exists. It would normally be necessary to prove that the ambiguity deprives the skilled person of the promise of the invention by not enabling him to obtain the desired effects.

In the present case, however, the ambiguity exists only at the very edge of the scope of claim 1 (the upper limit of the carbohydrate amount), and does not permeate the whole claim. Therefore, the [opponent’s] objection in effect merely relates to the determination of the exact scope of the claim, which is a matter of A 84 rather than A 83. Consequently, in line with the OD’s decision, the [opponent’s] first objection cannot form a prima facie relevant ground of opposition.

[2.4] The [opponent’s] second argument with regard to insufficiency of disclosure was that it is not clear what is meant by “insoluble calcium” in claim 1.

[2.4.1] Again, this deficiency was already present in granted claim 3. Hence, this objection could have been raised in the notice of opposition. Therefore, as set out in the OD’s decision, this objection was late-filed as well.

[2.4.2] Moreover, in the same way as with regard to the upper limit of the carbohydrate amount, this objection relates to the question of where the boundaries of claim 1 lie, this time with regard to the solubility of the calcium source. No evidence has been provided that this alleged ambiguity prevents the skilled person from obtaining the effects aimed at by the claimed invention. Thus, again, the [opponent’s] objection relates to clarity rather than sufficiency of disclosure and for this reason alone the [opponent’s] second objection cannot form a prima facie relevant ground under A 100(b).

[2.4.3] Moreover, with regard to the insoluble calcium source, the opposed patent defines the term “insoluble calcium” in paragraph [0025] as follows:

“The term “insoluble calcium” refers to food grade calcium sources listed in the CRC Handbook of Chemistry and Physics as sparingly soluble in water.”

From this CRC Handbook (D13), it can be deduced that the solubility of those calcium salts that are described in paragraph [0056] of the opposed patent as insoluble (calcium carbonate, calcium citrate, calcium phosphate dibasic and calcium phosphate tribasic) differs from the solubility of typical soluble calcium salts by several orders of magnitude.

In particular, the solubility (expressed in grams per 100 cc) of calcium carbonate is between 0.0014 and 0.0019 (cold and hot water), that of calcium citrate between 0.085 and 0.096, that of calcium dibasic phosphate between 0.0316 and 0.075 and that of calcium tribasic phosphate is 0.002, while e.g. soluble calcium acetate has a solubility between 29.7 and 34.7. The opposed patent thus provides sufficient guidance to make it possible to differentiate between insoluble and soluble calcium sources. Also for this reason, the [opponent’s] objection with regard to the insoluble calcium source does not constitute a prima facie relevant ground of opposition under A 100(b).

[2.5] As regards the exact scope of claim 1 with respect to “75% wt/wt carbohydrate”, this feature would have to be interpreted broadly if it became decisive to be able to distinguish the claimed subject-matter from the relevant prior art. Since, however, this is not an issue in the present case, there is no need to elaborate further on the interpretation of this feature in claim 1.

[2.6] In summary, the board therefore does not see any reason to overturn the OD’s decision not to admit the new ground under A 100(b).

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

To have a look at the file wrapper, click here.

T 1497/08 – No Kitting

As we have seen in the preceding post, the main request filed by the patent proprietor was found to lack clarity. During the oral proceedings (OPs) before the Board, the proprietor also filed a seventh auxiliary request claim 1 of which read:

A process for producing a fried flour-based product, comprising the steps of:

(a) preparing a dough comprising flour, water and an added lipolytic enzyme which has phospholipase activity in the range of 0.5-45 kLEU per kg flour,

(b) holding the dough during or after mixing, and

(c) frying the dough to obtain the fried product,

wherein phospholipase activity (LEU) is measured as the release of free fatty acids from lecithin, wherein 50 myl 4% L-alpha-phosphatidylcholine, 4% Triton X-100, 5 mM CaCl2 in 50 mM HEPES, pH 7 to which is added 50 myl enzyme solution diluted to an appropriate concentration in 50 mM HEPES, pH 7, wherein the samples are incubated for 10 min at 30ºC and the reaction stopped at 95ºC for 5 min prior to centrifugation (5 min at 7000 rpm), wherein free fatty acids are determined using the NEFA C kit from Wako Chemicals GmbH, and wherein 1 LEU equals the amount of enzyme capable of releasing 1 mymol of free fatty acid/min at these conditions. 1 kLEU = 1000 LEU. (my emphasis)

The Board finds this request not to be admissible:

[7] During the OPs before the board, the [patent proprietor] submitted a seventh auxiliary request. Claim 1 of this request differs from claim 1 of the previous request inter alia by the requirement that “the free fatty acids are determined using the NEFA C kit from Wako Chemicals GmbH”.

[7.1] The [opponent] requested that this late-filed request should not be admitted into the proceedings. It argued that the NEFA C kit was equivalent to a trademark the meaning of which could change over time. In the present case, an employee of Wako Chemicals had confirmed on the phone that this kit was no longer available. It was thus not clear in the [opponent’s] opinion how the amount of free fatty acids was to be determined. In view of the fact that different methods led to different results, the introduction of this kit into claim 1 rendered the claim unclear. Finally, the [opponent] explained that in order to substantiate the non-availability of the kit, it would need more time to obtain e.g. a declaration from Wako Chemicals GmbH.

Concerning the [patent proprietor’s] argument that a datasheet for the NEFA C kit was available on the Internet and provided sufficient information to determine free fatty acid amounts, the [opponent] argued that this datasheet was not on file. Even if it was, more time would be needed to study the content of this sheet, in particular with regard to its date of publication.

[7.2] In the board’s judgement, if the NEFA C kit should indeed no longer be available and/or the datasheet should not provide sufficient information, the skilled person would not know which method to apply in order to determine the amount of free fatty acids. In this situation, claim 1 would be unclear with regard to the amount of free fatty acids and hence the phospholipase activity, unless all methods led to the same result.

In view of this, the clarity of claim 1 of the seventh auxiliary request hinges on the availability of the NEFA C kit or the information content of the datasheet related to this kit and the question of whether different methods for determining the amount of free fatty acids lead to different results.

[7.3] The [opponent] was confronted with a claim relating to the NEFA C kit at an extremely late stage, namely towards the end of the OPs. As set out above (point 7.2), the introduction of this feature into claim 1 raised new issues that could not be resolved in the OPs. As foreseen by Article 13(3) RPBA, in this situation, the amendment is not admissible. Said amendment and with it the seventh auxiliary request were therefore not admitted into the proceedings (Article 13(3) RPBA).

[7.4] The [patent proprietor] argued that D28 showed that the NEFA C kit had been available in 2008. However, this argument is irrelevant to the above-discussed question as to whether the kit is still available now.

The [patent proprietor] further argued that the seventh auxiliary request constituted a serious attempt to overcome the objections raised by the [opponent] during the OPs and that the request should therefore be admitted into the proceedings. However, this does not alter the fact that the request raised new issues that were not resolvable during the OPs.

The [patent proprietor] finally argued that the subject-matter of the seventh auxiliary request did not diverge from the subject-matter previously claimed and that therefore the seventh auxiliary request should be admitted. However, this is not correct as the NEFA C kit had not been contained in the claims of any of the previous requests before the board and hence, the subject-matter of the seventh auxiliary request in fact does diverge from the subject-matter previously claimed.

[7.5] The [patent proprietor’s] arguments were therefore not convincing and hence could not change the above finding that the seventh auxiliary request could not be admitted into the proceedings.

To read the whole decision, click here. The file wrapper can be found here.

T 1497/08 – Tell Me All

One of the opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.

Claim 1 of the main request before the Board read:

A process for producing a fried flour-based product, comprising the steps of:

(a) preparing a dough comprising flour, water and an added lipolytic enzyme which has phospholipase activity in the range of 0.5- 45 kLEU per kg flour,

(b) holding the dough during or after mixing, and

(c) frying the dough to obtain the fried product.

In the proceedings before the Board, the question of clarity proved decisive:

[2.1] During the opposition proceedings, the parameter “phospholipase activity in the range of 0.5-45 kLEU per kg flour” was inserted into claim 1 of the main request. The claim does not specify how this phospholipase activity has to be measured.

According to […] the description of the opposed patent, the phospholipase activity “may be determined by the plate assay in WO 02103805 (PCT/DK 01/00472) or by an assay WO 2000/32758, e.g. the PHLU, LEU, monolayer or plate assay 1 or 2”. A specific method for determining phospholipase activity is given in paragraphs [0042] and [0043] of the opposed patent.

It has to be examined whether, under these circumstances, the insertion of the phospholipase activity into claim 1 meets the requirements of A 84, in particular in view of the fact that no information is contained in the claim as to how to determine this activity.

[2.2] According to A 84, the claims define the matter for which protection is sought. This implies that the claims must be clear in themselves when being read by the competent technical expert exercising normal skills, without the need to resort to information derived from the description of the patent.

As is set out in numerous decisions (e.g. T 1156/01 [2.2-3], T 412/02 [5.6-9], T 908/04 [3.1-8] and T 555/05 [3.2.7-10]), this implies that the method for measuring the parameter (or at least a reference thereto) must appear completely in the claim itself, if the invention is characterised by a parameter.

[2.3] As set out above, in the present case, no such method (or reference thereto) is contained in claim 1 of the main request.

[2.4] In this situation, the requirements of A 84 would still be met if it could be shown that

(i) knowing which method to employ belongs to the skilled person’s common general knowledge, or

(ii) all the methodologies known in the relevant technical field for determining this parameter yield the same result within the appropriate limit of measurement accuracy (see e.g. decision T 1156/01 [2.3]).

[2.4.1] As regards point (i), no evidence has been provided by the [patent proprietor] that it is indeed part of the skilled person’s common general knowledge to know which method to employ to measure phospholipase activity. In fact, the opposed patent itself acknowledges […] that different methods may be used to determine phospholipase activity. This is confirmed by D13, D35, D36 as well as by […] the opposed patent, where various measurement methods are described that differ inter alia in terms of pH and temperature. More particularly, pH and temperature vary as follows:

• pH 5 and 37ºC (“PLU” method described [in] D13),
• pH 7 and 30ºC (“PHLU” method described [in] D13 and LEU method in […] the opposed patent),
• pH 7 and 37ºC (point 2.3 [in] D36) and
• pH 8 and 40ºC ([…] D35).

The skilled person reading claim 1 would not know which of these methods to apply, and in particular which pH and temperature to use when determining the phospholipase activity required by this claim.

The [patent proprietor] argued in this context that the [opponent] itself did not specify the method for determining phospholipase activity when referring to this activity in its own patent applications D37-D39. In the [patent proprietor’s] view this proved that the skilled person, on the basis of common general knowledge, would know which measurement method to apply.

However, three single patent applications cannot in general constitute proof of what the skilled person’s common general knowledge is. Moreover, D37-D39 focus on amylases rather than phospholipases, and no reference to phospholipase activity is made in any of the claims of these documents. It is thus not surprising that no measurement method for determining the phospholipase activity is given in these documents. In view of this, it remains unclear to the board how the omission of the method for determining phospholipase activity in D37-D39 can constitute proof that the skilled person, on the basis of common general knowledge, would know which method to apply and in particular which pH and temperature to use when determining phospholipase activity. The [patent proprietor’s] argument therefore must fail.

[2.4.2] As regards point (ii), namely the question whether all measurement methods yield the same value for the phospholipase activity, it follows from table 4 of D13 that the phospholipase activity strongly depends on the pH employed during the measurement. More particularly, by varying the pH from 5 to 8, which is the range of pH values used in D13, D35, D36 and the opposed patent […], phospholipase activity determined for one and the same enzyme changes by 375%. Equally, by varying temperature from 30ºC to 40ºC, which is the range of temperatures used in D13, D35, D36 and the opposed patent […], phospholipase activity determined for one and the same enzyme changes by 18% ([…] D13).

The same can be observed when pH and temperature are changed simultaneously. More particularly, for one and the same enzyme, phospholipase activity is

• 1454/mg-1458 LEU/mg (opposed patent […]) when measured at pH 7 and 30ºC,
• 1540 LEU/mg when measured at a pH of 8 and a temperature of 40ºC ([…] D35), or
• 225 LEU/mg when measured at pH 7 and 37ºC ([…] D13, “PHLU” is equivalent to LEU […]).

[2.5] In summary, the skilled person reading claim 1 would not know which method to apply for the determination of the phospholipase activity and when trying different measurement methods, he would obtain different activities for one and the same enzyme. The activity range required by claim 1 is therefore unclear, which implies that claim 1 of the main request does not meet the requirements of A 84.

[2.6] The [patent proprietor] argued that claim 1 met the requirements of A 84 as a measurement method was given in […] the opposed patent. The [patent proprietor] referred in this context to decision T 94/82.

However, this decision nowhere contains a general statement that it is sufficient for a measurement method to be contained in the description when a claim refers to a parameter. In fact, the decision refers to the specific case in which the parameter is “usual in the art” and “can conveniently and reliably be obtained in following the instructions given in the description and in accordance with the German standard DIN 53840 mentioned therein” (point [2.3] of the reasons). This clearly differs from the present case, in which the only specific method mentioned in the description does not constitute a generally recognised German or other national standard and it is even explicitly acknowledged in the description that various methods can be applied […].

Accordingly, the decision referred to by the [patent proprietor] and the reference in […] the opposed patent to a specific measurement method cannot invalidate the above finding that claim 1 lacks clarity.

I for one do not approve of this approach because, as I have already said somewhere, this will only lead to clumsy claims, without any real benefit for whomsoever. The reader of a patent can be expected to look for measuring methods etc. in the description. But this decision clearly indicates the direction into which we are moving.

To read the whole decision, click here. The file wrapper can be found here.

R 1/11 – Off Topic

The petition stems from decision T 128/10 (reported here). In this decision, the Board rejected an appeal against the revocation of the patent under consideration as inadmissible because it had been filed by the transferee before the requirements for recording the transfer had been met. The ‘appellant’ also requested the following questions to be referred to the Enlarged Board (EBA):

“Is it sufficient to provide documentary evidence in relation to the transfer of a patent under appeal which was in fact submitted before the expiry of the period for filing the notice of appeal, according to R 20(3) [EPC 1973] or R 22(3) [EPC], so that a transfer shall have effect vis-à-vis the EPO? If yes, is the appeal receivable? If No, should the Board of Appeal have drawn attention of the appellant on incorrect designation of the Appellant and have invited the representative to modify the incorrect designation of the Appellant?

Is there in EPC 1973 or 2000, a Rule stating that to be an entitled-Appellant you should be recorded on the Register of European Patent, and in such case what is the utility of R 22(3) [EPC]?”

The Board had refused to refer those questions with the following justification:

“[6.1] Pursuant to A 112(1)(a), “in order to ensure uniform application of the law”, or “if a point of law of fundamental importance arises”, the Board of Appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. If the Board of Appeal rejects the request, it shall give the reasons in its final decision.

[6.2] In the present case, the alleged appellant’s auxiliary request essentially concerns the interpretation of the requirements of R 22 EPC and the correction of the designation of the appellant in the notice of appeal. Since the jurisprudence of the boards of appeal with regard to both issues is consistent, there is no need to refer a question to the EBA to ensure uniform application of the law. In view of this, the Board does not see that a point of law of fundamental importance arises, that would need a clarification by the EBA.”

In their petition for review, the petitioners pointed out several shortcomings of T 128/10. Among other things, they criticized the refusal to refer a question to the EBA.

They finally referred the questions themselves, because the petition for review included the following questions:

Is the production of the documents providing evidence of the transfer of the patent under appeal, before the expiry of the period for filing the notice of appeal, sufficient under R 22(3) so that the transfer has effect vis-à-vis the EPO?

If yes, is the appeal admissible?

If no, what is the purpose of R 22 (3)? Should the board of appeal allow a request for correction of the notice of appeal? To which extent is the decision T 97/98 to be considered when assessing the admissibility of an appeal filed by an appellant whose identification is incorrect and whose representative is the same as in the first instance proceedings?

Here is what the Board had to say on these issues:

[3] Petitioner 1 contends that the lack of reasons for refusing to refer questions to the EBA amounts to a breach of A 112(1). The EBA is not clear about what is meant under this contention because there is no logical link between the lack of reasons alleged and the violation of A 112(1). A 112(1) would rather concern the refusa1 to refer per se, while the lack of reasons might be seen as a potential procedural defect under A 112a(2) or R 104.

As concerns the latter aspect, it is clear from the decision under review that the Board of Appeal did decide on this issue and that it gave the reasons why it refused to refer the questions to the EBA (see paragraph [6] of the decision).

Insofar as petitioner 1 seems to contend that the refusa1 to refer itself might be considered to be a breach of A 112(1) because it hinders the uniform application of the law […], the EBA notes that neither A 112a nor R 104 include in their list of deficiencies the refusa1 to refer questions to the EBA.

[4] The question of uniformity of the application of the law also underlies the questions the EBA is asked by petitioner 1 to answer. It is immediately apparent that they overlap the questions submitted to the Board of Appeal as a request for referral to the EBA, which request was rejected by the Board of Appeal […].

The treatment of such questions pertains to a different procedure governed by a completely different legal framework and thus falls outside the ambit of the present proceedings (see Explanatory remarks to A 112a, point 5, where it is clearly stated that the function of the petition for review is to remedy intolerable deficiencies occurring in individual appeal proceedings, not to further the development of EPO procedural practice or to ensure the uniform application of the law, OJ Special edition 4, 2007).

You might remember R 7/08 (reported here) where the EBA (in its composition pursuant to R 109(2)(a)) refused to refer a question to itself (pursuant to A 112(1)(a)) and justified this refusal by pointing out that the EBA was “not a “Board of Appeal” within the meaning of” A 112(1)(a).

The whole decision can be downloaded here. The file wrapper can be found here.

T 258/09 – It’s Contagious

I find this decision interesting because it shows that there are disclaimer-transmitted diseases (DTD): a disclaimer may transmit a deficiency such as a lack of clarity from the disclaimed prior art to the claim comprising the disclaimer.

The appeal was directed against the decision of the Opposition Division to revoke the patent.

Claim 1 before the Board read (in English translation):

The use of an adhesive tape having a tape-like backing of non-woven material, which is coated on at least one side with an adhesive, the web being a staple fibre web which is mechanically consolidated or wet-laid, the staple fibre web being consolidated further by the addition of binders, for bandaging cable harnesses as used in particular in the automotive industry, wherein the binders are not melt-blown fibres (Schmelzfasern) if their fraction in the fibres of the staple fibre web is between 2 and 50%. (the underlining marks the additions with respect to claim 1 as filed)

In dealing with the main request on file, the Board raises a clarity issue:

*** Translated from the German ***

[2.1] Claim 1 of the main request differs from claim 1 as granted in that it contains a disclaimer of subject-matter disclosed in D4.

[2.2] According to decision G 1/03 [headnote II.1] a disclaimer that has not been disclosed in the application as filed can be allowable if it serves to restore novelty by delimiting the claim against state of the art under A 54(3) and (4) EPC 1973. The disclaimer must meet the requirements of clarity and conciseness of A 84 (see G 1/03 [headnote II.4]).

[2.3] In the present case the disclaimer requires that the “the binders are not melt-blown fibres if their fraction in the fibres of the staple fibre web is between 2 and 50%”. The content of the melt-blown fibres is given in “%”. The [opponent] rightly criticizes that this indication as such does not disclose whether weight percent or volume percent are meant. It is not disputed that D4 does not provide any information on this indication.

[2.4] The [patent proprietor] expressed the opinion that it was usual in the field to use weight percent and that, therefore, the skilled person would a priori suppose that the percentages in D4 and, consequently, in claim 1, were weight percent. It also pointed out that weight percents were used in the opposed patent […].

[2.5] However, this argument does not persuade the Board. There is no indication in D4 that the indication “%” referred to weight percents. Statements in the opposed patent cannot be used for interpreting the disclaimer that has its origin in D4. Moreover, the claims have to be clear to the skilled person using his common general knowledge, so that he does not have to consult the description of the patent under consideration when interpreting the claim. Therefore, the argument of the [patent proprietor] based on the description cannot succeed.

[2.6] Moreover, the disclaimer also lacks clarity because, according to paragraph [0025] of the patent, additives such UV stabilizers or flame retardants can be added to the backing of non-woven material. However, the disclaimer does not disclose whether the fraction of the melt-blown fibres in the fibres of the staple fibre web has to be calculated before or after a possible addition of additives.

[2.7] It follows from the above that the disclaimer of claim 1 is not clear. Therefore, claim 1 cannot be granted.

If my understanding is correct, you cannot disclaim an unclear teaching. Either you disclaim it, unclear as it is, and the disclaimer will contaminate the claim. Or you make the disclaimer clear, but then it does not fit the prior art any more, and the disclaimer will not comply with the requirements of G 1/03. Either way, trouble ahead.

One more reason to avoid disclaimers whenever you can.

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

The file wrapper can be found here.

T 152/09 – On Problems And Difficulties

The present appeal was directed against the decision of the Examining Division (ED) to reject the application under consideration on the ground of lack of inventive step.

Claim 1 of the main request before the Board read (in English translation):

Cosmetic composition for making up keratin fibers, characterised in that it comprises at least one wax, in that it has a solids content of greater than or equal to 45.5% by weight and a plateau Gp modulus of rigidity of greater than or equal to 5,500 Pa and less than 60,000 Pa, and in that it combines at least one non-ionic surfactant with an HLB of greater than or equal to 8 and at least one gelling polymer selected from the group consisting of homopolymers or copolymers of acrylic or methacrylic acid, and the salts and esters thereof, copolymers of acrylic acid and of acrylamide, polyacrylic acid/alkyl acrylate copolymers, AMPS (polyacrylamidomethylpropane-sulphonic acid), AMPS/acrylamide copolymers, AMPS/poly-oxyethylenated alkyl methacrylate copolymers, and mixtures thereof.

The Board found the reasoning of the ED to be deficient.

*** Translated from the French ***

[3] A decision to refuse an application under A 111(2) has to be reasoned. The purpose of this requirement is to enable the party who is adversely affected and, in case of an appeal, also the Board of Appeal to examine whether the decision can be considered to be justified or not. To this aim, the decision has to contain, in logical sequence, those arguments which justify the tenor. This implies that the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision and arranged to form the reasoning that leads to the decision, so that the reasoning allows to understand how the legal provisions are applied to the circumstances of the case (see T 278/00 [2]).

[4] When assessing inventive step, as here, the approach to be chosen results from A 56 itself: it has to be examined whether, having regard to the state of the art within the meaning of A 54(2), the invention is obvious or not to a person skilled in the art. It is to this aim that the Boards of appeal have developed the “problem-solution” approach. This approach also has to be applied in first-instance proceedings (see the “Guidelines for Examination in the EPO”, part C-IV).

It appears that the ED in the impugned decision did not intend to depart from this approach (see point 12 of the decision) but it has applied it in an atypical manner in order to “avoid its pitfalls”, which, as will be demonstrated, makes its reasoning deficient and results in non-compliance with R 111(2).

[5] For the ED (see page 7 of the decision, point 3), the basic notion is the notion of “difficulty” encountered in order to reach the “target aimed at” (but fixé). This is an autonomous notion that is completely disconnected from the prior art, the prior art being considered in the impugned decision only to check whether the solution to the difficulty was already taught therein.

[6] The ED has started the analysis of the case (page 7 and 8, point 5) by asserting that “the reality of the difficulty” of obtaining a solids content of greater than or equal to 45.5% by weight and a plateau Gp modulus of rigidity of less than 60,000 Pa had not been established. Then, having asserted that the “type of formulation sought by the applicant (aqueous mascara)” was known to the skilled person, and so were the non-ionic surfactants with an HLB of greater than or equal to 8 and the gelling agents defined in claim 1, the ED has pointed out that “the composition claimed by the applicant [did] not present any objective (within the meaning “on the basis of the facts brought to the attention of the division”) formulating difficulty for the skilled person” and that, therefore, the subject-matter of claim 1 lacked inventive step.

This global and abstract analysis is the very exemplification of a subjective approach. At no time the ED cites the prior art corresponding to the aqueous mascara itself, which is said to be known, to the non-ionic surfactants with an HLB of greater than or equal to 8, and to the gelling agents, which are also said to be known, which would enable to know what led the ED to conclude that, having regard to the state of the art within the meaning of A 54(2), the invention was obvious to a person skilled in the art. The argument according to which the non-ionic surfactants with an HLB of greater than or equal to 8 and the gelling agents defined in claim 1 are known or available on the market does not as such constitute a description of the prior art based on which the obviousness of the invention and, therefore, the correctness of the impugned decision with regard to inventive step can be verified.

[7] Despite the conclusion mentioned in point 5 of the reasons for the decision (page 8), the ED has then checked, in points 6 and 7 of the reasons, whether, in view of the examples of the application and the comparative trials according to annex II filed by fax on May 28, 2008, the non-ionic surfactants with an HLB of greater than or equal to 8 could be considered to have a fluidifying effect in aqueous compositions containing waxes. However, the ED has not assessed the fluidifying effect of non-ionic surfactants with an HLB of greater than or equal to 8 within the context of the prior art. The analysis of the examples of the application and of the comparative trials according to annex II filed by fax on May 28, 2008 alone cannot establish whether the invention was obvious to a person skilled in the art, having regard to the state of the art within the meaning of A 54(2).

[8] The only example of the prior art that has been cited, D1, mentioned in the notification of September 15, 2005, has been discarded during the oral proceedings on the ground, given in the written decision, that the question of whether the solids content was increased with respect to D1 was tantamount to a tautology and that the document was not relevant.

[9] The ED then provided a lengthy theoretical justification for its having taken liberties with the problem-solution approach. However, in point 12 of pages 12 and 13, its decision notes that it was important to know the known mascaras and the research carried out by the applicant in order to objectively establish the particular technical effect invoked. Thereby the ED admits that the assessment of inventive step can only be carried out by starting from the prior art and it condemns its own approach.

[10] When reading the decision, the reader is confused to the point that when he reaches the passage entitled “Decision” (page 15) according to which the present application is refused for lack of inventive step, he wonders whether the reason is that the there is no fluidifying effect of non-ionic surfactants with an HLB of greater than or equal to 8 in aqueous compositions containing waxes, or the absence of a “difficulty”. In both cases, he is not enabled to know on which concrete elements these conclusions are based. By replacing the conventional objective approach by an approach based on the notion of “difficulty” and on the obviousness of the solution, without any relation to the prior art according to A 54(2), the ED has taken a decision that does not allow [the Board] to check whether the analysis of the facts and the conclusions drawn are correct. Therefore, this decision is not properly reasoned within the meaning of R 111, which is a major [procedural] violation that requires the case to be remitted to the first instance.

[11] The Board also notes that these same reasons which deprived the [applicant] of the possibility of preparing an appeal also left it destitute in the first instance proceedings. Although it expected to discuss inventive step in view of prior art D1 as well the question of whether adding a gelling polymer involved an inventive step or not, as was indicated in the annex to the summons for oral proceedings, it could not contest the unknown and vague notions of “difficulty” and “target aimed at” which it was confronted with in the decision, nor could it answer in a useful way the objections made [by the ED] which were not based on any prior art within the meaning of A 54(2). This qualifies as a violation of the right to be heard.

The Board then set aside the decision and remitted the case for further prosecution.

To download the whole decision (in French), click here.

The file wrapper can be found here.

J 12/10 – Too Many Cooks Spoil The Broth

Inventors who conduct the proceedings before the EPO themselves often omit to pay the renewal fee for the third year, but it can also happen when professional representatives are in charge as the present case shows. It is one of those cases where you have the troika “U.S. attorney + EP attorney + fee company”, without which there would be much less restitutio case law.

Here the renewal fee for the third year fell due on April 30 2008. On June 4, 2008, the Receiving Section (RS) sent the [applicant] a notice in the usual form drawing attention to the fact that the renewal fee had not been paid and that the payment of that fee, together with the additional fee, could still be validly effected within six months following the due date. However, the EPO had received no payment by the expiry of that period.

So the RS informed the applicant, in a communication pursuant to R 112(1) dated and received on December 10, 2008, that the application was deemed withdrawn under A 86(1).

By letter dated and received on February 19, 2009, the representative on behalf of the [applicant] filed a request for re-establishment of rights under A 122. He paid the renewal fee for the third year, the additional fee and the fee for re-establishment of rights on the same date. In this request, the [applicant] stated that responsibility for the payment of the renewal fee had been delegated to the US attorney handling the case. Furthermore, the renewal fees were paid annually by a U.S. service company, Computer Packages Inc. (CPI).

The applicant argued that it had exercised all due care by delegating this responsibility to persons that professionally dealt with the payment of annuities. It added that the removal of the cause of non compliance occurred on January 9, 2009, when the European representative was informed by the new US attorney that the case had been transferred to him rather than when the European representative received the notice of loss of rights from the EPO.

The RS rejected the request for re-establishment; the present appeal is directed against this decision.

Here is the verdict of the Legal Board of appeal:

[1] According to established jurisprudence (Case Law of the Boards of Appeal of the European Patent Office, 6th edition 2010, page 496), when a time limit has been missed, the removal of the cause of non-compliance occurs on the date on which the person responsible for the application is made aware of the fact that the time limit has not been observed. The decisive factor here is when the person concerned ought to have noticed the error if he had taken all due care.

The representative has conceded that he received the notification of the loss of rights pursuant to R 112(1) on 10 December 2008 […].

Receipt of notification under R 112(1) is relevant to the question of when the cause of non-compliance with a time limit is removed. The significant date is that on which notification was actually received by a person responsible for the application (see J 7/82 [3-4]).

According to the established jurisprudence, no further ten days under R 126 will be added to this two months period. (T 428/98 and T 1063/03 [2]). The European representative no longer appears to dispute that.

[2] The European representative has submitted that he did not consider himself responsible for the administration of renewal fees. According to the representative, the US attorney handling the case was responsible for this matter. Furthermore, the renewal fees were paid annually by a service company, Computer Packages Inc. (CPI). Therefore, when notified of the loss of rights, he as the European representative was not aware that the time limit for paying the third renewal fee plus surcharge had been unintentionally missed.

The representative adds that he was informed by the US attorney by letter dated 9 January 2009 that the proceedings were now being managed by a new US attorney (Annexes 5 and 6), and that by letter dated 12 January 2009, he advised both the old and the new US attorneys of the notice of loss of rights dated 10 December 2008.

The representative concludes that 12 January 2009 was the date when the new US attorney discovered the error and that the request for re-establishment of rights should therefore be admissible.

The Board does not agree with these arguments.

[3] It is established jurisprudence of the boards of appeal that a European representative, once appointed - and even if the renewal fees are paid by someone else - remains otherwise fully responsible for the application, and that this includes a continuing obligation to monitor time limits, send reminders to the applicant, etc.

In the decision J 4/07 [4.1], the board noted that even if renewal fees are paid by someone else (e.g. a US attorney, a service company or even by the applicant himself), the appointed professional representative remains responsible for the proceedings before the EPO and has to take the necessary steps to ensure payment, if intended. This includes a reliable monitoring system and reminders to the applicant (see also J 11/06 [8]).

Nothing else can be derived from decision J 27/90 and especially from point [2.3], paragraphs 6 and 7 of the reasons, where it is stated that using an external agency to pay renewal fees does not constitute “circumstances to the contrary” which would affect the date of removal of the cause of non-compliance, and that the European representative remains responsible for the application.

Hence, in the present case, the date of the removal of the cause of the non-compliance is the date on which the European representative, taking all due care, would have noticed that the time limit had inadvertently been missed.

There is no evidence on file to indicate timely actions taken by the European representative in order to ensure that the renewal fee for the third year, plus surcharge were actually paid, or that an error was subsequently discovered.

Shortcomings on the part of third parties do not affect the date on which the European representative could have become aware of the non-payment of the fee.

The representative has acknowledged that he did not monitor the time limit for paying the renewal fee, and accordingly sent no reminder to the [applicant’s] US representative before expiry of the time limit for payment of the renewal fee plus surcharge. Had he done so, he could have established even before the expiry of that time limit that the [applicant] intended to pay the renewal fee. Upon receipt of the noting of loss of rights on 10 December 2008, the representative should have known that something had gone wrong and that payment had been unintentionally missed.

Furthermore, even if the representative did not positively know that the [applicant] intended to pay the renewal fee, upon receipt of the noting of loss of rights it would have been his duty to immediately inform the US patent attorney so as to ascertain whether non-payment had occurred inadvertently, or whether the [applicant] actually intended to let the application lapse. The European representative has not filed any evidence for his initial submission that he informed the US representative “immediately” after receipt of the noting of loss of rights. Instead, he has filed evidence - at a later stage - showing that he waited for more than one month before forwarding the loss of rights communication to the [applicant’s] US representative on 12 January 2009.

[4] For these reasons, the Board takes the view that the cause of non-compliance was removed on the date the European representative actually received the communication under R 112(1) pointing out that the renewal fee for the third year plus surcharge had not been paid in time and that a loss of rights had thus ensued.

This was also the European representative’s opinion in the request filed on 19 February 2009.

It is apparent from the wording of […] the request for re-establishment of 19 February 2009 that the representative’s reasons for regarding the request as having been filed in time on that day was his - mistaken - belief that the ten-day arrangement under R 126(2) applied when calculating the date of removal of the cause of non-compliance.

[5] Hence, the Board is of the opinion that the Receiving Section was correct in rejecting the request for re-establishment of rights as inadmissible. The appeal must therefore be dismissed.

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

The file wrapper can be found here.

T 1244/07 – One Click Clipped

This decision deals with the refusal of a divisional application from Amazon’s (in)famous “1-click” application for lack of inventive step. The crucial document is D1, “Implementing a Web Shopping Cart” an article by Baron C. et al in Dr. Dobb’s Journal of September 1996.

Claim 1 of the main request before the Board read:

A method for ordering an item using a client system, the method comprising:

• receiving from a server system a client identifier of the client system when the client system first interacts with a server system;
• persistently storing the client identifier at the client system, wherein the client identifier is from then on included in messages sent from the client system to the server system and retrieved by the server system each time a message with an identifier is received from the client system by the server system;
• storing at the server system for that client and other clients a customer table containing a mapping from each client identifier identifying a client system to a purchaser last associated to said client system;
• storing at the server system customer information for various purchasers or potential purchasers, said customer information containing purchaser-specific order information, including sensitive information related to the purchaser;
• connecting at a later point in time, when a purchase is intended, the client system to the server system, comprising the steps of:
• sending from the client system a request for information describing an item to be ordered along with the client identifier;
• determining at the server system whether single-action ordering is enabled for that purchaser at the client system;
• if enabled sending from the server system the requested information to the client system along with an indication to perform a single action to place the order for the item;
• displaying at the client system information identifying the item and displaying an indication of a single action that is to be performed to order the identified item,
• performing at the client system that single action and in response to that indicated single action being performed, sending to a server a single action order to order the identified item and automatically sending the client identifier whereby a purchaser does not input identification information when ordering the item, and
• completing at the server system the order by adding the purchaser-specific order information including said sensitive information that is mapped to the client identifier received from the client system.

The Board essentially confirmed the finding of the Examining Division (ED).

[14] The Board therefore considers that the subject-matter of claim 1 differs from D1 in that the purchaser’s identification information is not inputted when ordering the item, but looked up in the customer table using the client identifier received from the client and that the “single action” indication is only sent if it is “enabled”.

[15] These features can be seen to solve the two above-mentioned problems in the application and stressed by the [applicant], namely to reduce the number of user interactions involved in selecting items, which makes e-commerce easier, faster and more comfortable, and also to reduce the amount of sensitive information sent over the Internet, which may be intercepted.

In the Board’s view the skilled person would have tried to solve these problems because they are both explicitly mentioned in the comment referred to by the ED in “Listing One” […] of D1:

This essentially refutes the [applicant]’s argument that the idea of the invention went against the thinking at that time about internet security because it dispensed with the need for the purchaser to identify or authenticate himself. Although the idea behind the invention might not have been commonly known, the programmer in D1 had in fact already realised that it actually increased security.

[16] In order to read the sensitive data from the database, one would need a key that identifies the purchaser in question. In the Board’s view it would be self-evident to use the user identifier or cookie already available in D1 to do this. The Board thus considers that the skilled person would have been led to modify the third embodiment of D1 to dispense with the need to input this data for every order and arrive at the situation described by the ED […]. Thus, a user using a client would be presented after some interactions with a check-out page like the one in Figure 4, where the details that can be found in the database (name, shipping address, card type, number and expiration date) would be omitted, and would be given an indication in the form of a “Submit Order” button, which is an indication of a single action to order the contents of the shopping cart, i.e. the claimed single action to order an item.

[17] Moreover, it was known, e.g. from D3, at the priority date to use cookies to keep track of purchaser-specific data. The [applicant] argued that in D3 the purpose of using a persistent cookie to store registration information so that a user did not have to enter a login and password each time they visited a site was different from the invention. The website, e.g. the New York Times cited on page 2 of D3, gave the user a cookie in return for information about himself. The cookie did not identify the user for the purposes of purchasing, but rather as an “entrance ticket” to the site. This was analogous to an entrance ticket for a football match where one had to be identified, but no one was actually interested in using the ticket to look up data relating to the ticket holder.

This might be true of the examples on page 2, such as the New York Times, but in the Board’s view, D3 discloses more than this. Specifically, at page 5, third paragraph, D3 states

In most all cases Web sites store minimal information in the persistent cookie on the user’s system but use the cookie as an index into the database where more details are stored.

In other words, it appears that in most cases there is in fact an interest in looking up data about the ticket holder.

In view of the indexing function of cookies, the skilled person would have realised that any sensitive data traditionally requiring a login could be accessed by cookies. The obvious trade-off between the two processes, namely security vs. simplicity, cannot establish an inventive technical contribution.

[18] Concerning enabling the single action, the Board first notes that this feature is so broad that it covers the situation, described in the application at paragraph 17, that if there is not enough information about the purchaser available to perform a single-action order, it is simply not possible to offer single-action ordering and it is therefore by definition not enabled. The claim thus covers a statement of the self-evident.

In appeal, the [applicant] argued that the feature was a broader part of the whole invention and was connected to the security of the system. In particular, the single-action order possibility meant that items could be purchased inadvertently so that it was apparently a necessary feature to mitigate some purchasers’ apprehension about the lack of security inherent in such a single-action possibility. However, this merely shifts the responsibility for the security to the purchaser who judges whether the single-action ordering should be enabled or not. The decision not to enable it might depend on whether the purchaser’s computer is used by other people who should not be allowed to order items on the computer owner’s account.

Such a decision relates to forms of human behaviour and thinking that fall under mental acts, which are excluded from patentability. According to the jurisprudence of the EPO (see e.g. G 3/08 [10.13.2]) these cannot contribute to inventive step. Its implementation by means of a determination and a conditional sending step are clearly routine matters of design and also cannot contribute.

[19] The [applicant] argued that it was important to avoid using hindsight when judging the inventive step. By the time of this appeal, the present invention was so well known and used that it was easy to think that it was “trivial”. This was also pointed out [in] the Campbell article (“Not All Bad: An Historical Perspective on Software Patents”, Campbell-Kelly M., 11 Mich. Telecomm. Tech. L. Rev. 191, 2005, pages 191 to 248) submitted by the applicant during the examination proceedings.

The Board agrees that there is generally room for argument when asserting what the skilled person would do as a matter of routine design in certain cases. However, the scope for discussion is substantially reduced in this case in the light of the above-mentioned comment in “Listing One” in D1 that gives such a decisive indication of the programmer’s thinking, especially considering the remaining supporting disclosure relating to cookie technology.

[20] Finally, the Board notes that a long felt want is often an indicator of inventiveness, usually overshadowing aspects of commercial success. However, in the present case, according to D1 at the top of page 68 cookies were first proposed in 1996 shortly before the invention was made. Thus the invention was not a situation of a long felt want, but more an immediate application of this new programming feature as soon as it had become available in that field. In the Board’s view, this outweighs the fact that the invention was subsequently very successful.

[21] Even if claim 1 can be distinguished or seen to be distinguished over D1 by the lack of an intermediate page in the purchasing process, this difference would concern omitting confirmation steps in an ordering process. Quite apart from the question of whether omitting steps would be obvious in the light of the general desire to simplify computer interactions, the Board considers that such steps relate to a method of doing business and, moreover, optional ones depending on the user’s preferences. Again, such steps cannot contribute to inventive step.

[22] Thus, in the Board’s view, the subject-matter of claim 1 would have been obvious to a skilled person (A 56 EPC 1973).

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

The file wrapper can be found here.

This decision has also been commented on Visae Patentes long ago, and (today) on Le blog du droit européen des brevets.

Publish or perish (ctd.)

I just had a look at the number of decisions published on the DG3 site this year. It confirmed my impression: we are way behind the figures for the preceding years. Now it is true that the DG3 site has undergone some face-lifting and this may well have perturbed the publication process, but the facts are there. Typically, something like 800 decisions are published during the first two quarters, but this year there were only about 550.

For the case law blogger that I am, this has direct consequences. Less decisions means less noteworthy decisions. As I try to have one decision per day – because I find it is a good and feasible daily exercise to consider one decision – I face supply difficulties. This week I almost had to stop posting as not a single decision had been published in almost three weeks. A year ago, I had a reservoir of more than forty decisions, which allows you to face such low activity periods – this year I have a stock of one or two. So if during the weeks to come you find that K’s law remains silent, it is just this: I will have run out of decisions.

Well, enough with the whining. There are more important things in life than EPC case law, n’est-ce pas?

I wish you all happy summer holidays.

T 1289/10 – Quarantine Horrors

After its application had been refused by the Examining Division, in a decision posted on December 8, 2009, the representative of the (American) applicant filed a notice of appeal, together with a request for re-establishment, on March 22, 2010.

The applicant argued that the time limit for filing an appeal was missed in spite of all due care having been taken: The applicant’s US attorney and its European representative were well aware of the time limit ending on 18 February 2010. Several emails were exchanged and finally the European representative was instructed to file an appeal. A corresponding email was sent on 17 February 2010 at 20:01 hours Central European Time (CET). It was classified as a potential threat and stored in the quarantine area of the representative’s email server and found there on February 19, 2010 after the US attorney had sent a reminder concerning the appeal on February 18, 2010 at 17:43 hours CET. Unfortunately, at that time the European representative and his team had already had left the office.

During oral proceedings before the Board, the applicant’s European representative explained how mail was normally processed in his office. There was a central post room where all incoming mail was checked. On 18 February 2010, two people were in charge as usual. Email was printed on blue paper, date-stamped and put into the paper file. Additionally it was forwarded to the responsible person in an electronic format. The staff in question were well aware of the quarantine area of the email system and the issues arising therefrom. They had access to this quarantine area. The staff concerned were not in a position to recall why they did not check that area on that day. Documents dating from February or before indicating any specific office policy concerning regular checks of the quarantine area of the email system could not be provided.

The Board found the request for re-establishment not to be allowable:

[3] The request is not allowable. At least the European representative could not establish that all due care had been exercised in handling the case.

All due care - general remarks

[3.1] Both the applicant and its representatives have to take all due care required by the circumstances (see J 5/80 [headnote I]). All due care required by the circumstances means appropriate conduct by the appellant and its representatives. In this respect it has to be assessed how a competent party or representative would reasonably have acted. As a general rule, a representative acting reasonably would at least take account of known problems and apply known solutions to avoid them.

Due care on the part of the European representative

[3.2] It is clearly a well-known problem that email filters do not always work reliably. That was not disputed by the appellant. More specifically it is common ground that legitimate mail from time to time is wrongly marked as a possible threat and processed accordingly. In the statement of grounds concerning the request for re-establishment of rights the European representative did not address this issue. As a result it seemed initially that he was not aware of this generally known problem. However in his oral submissions he stated that the staff concerned were well aware of these problems. To remedy them the staff were provided with access to the quarantine area and the instruction to check these filters. It can be left open whether these statements might constitute an inadmissible new case that goes beyond the reasons provided during the time limit for filing grounds in support of the request for re-establishment of rights (see J 5/94 [headnote III]). In any case they are not sufficient to convince the Board that all due care was exercised by the European representative when providing an email account for the receipt of urgent and important mail. Staff in the mail department should have been instructed about the fact that an urgent email might arrive at any time and could wrongly be classified as a potential threat by the email system. It appears in this case that an instruction to perform a daily check might have been sufficient. By applying this simple measure the wrongly marked email would probably have been detected in time. The Board wishes to clarify that if a European representative provides a contact email address for all kinds of mail, including mail that may require immediate action by the representative, it is essential to perform a mail check at least at the end of each business day. Given the known problem that legitimate mail from time to time is wrongly marked as a possible threat it is evident that this check must include the quarantine area of the email system.

Due care on the part of the American representative and the appellant

[3.3] The reasons for missing the time-limit for filing an appeal are at least threefold: There was a lack of appropriate organisation of the handling of mail stored in the quarantine area in the office of the European representative […]. The email instruction by the American representative was sent very late, whether because he was instructed by the appellant at such a late stage or for other reasons. Also the email reminder by the American representative - apparently the only attempt to confirm whether the first mail was actually received by the European representative - was sent very late, in fact after European office hours.

As the appellant cannot even establish that all due care was taken on the part of the European representative it can be left open whether the American attorney, at such a late stage, was well-advised to use email at all to instruct the European representative to file an appeal. However if it is to be used, the potential dangers must clearly be borne in mind. Email was never meant to be an instant messaging medium and indeed email may, under normal circumstances, be delayed for several hours or even days or occasionally even get lost. Given these (well-known) facts, it would appear necessary for the sender of an urgent and important email to check whether it has actually been received in time, possibly by using a different means of communication, such as the telephone. […]

The request for re-establishment of rights concerning the right to file an appeal is rejected.

The appeal is dismissed as inadmissible.

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