Tuesday, 7 October 2014

T 1779/09 - Escape from the inescapable trap


Although initially appearing as an 'inescapable trap', the appellant has found himself exactly in the situation envisaged in decision G 1/93 in that a feature newly introduced during examination was found by the Board to be limiting but to provide no technical contribution to the claimed invention and therefore to comply with Art. 123(2) and (3) EPC.

Summary of Facts and Submissions [paraphrased]

This case concerns an opposition appeal lodged by the proprietor against the Opposition Division's decision revoking European patent No. 1 171 836 in accordance with Article 101(2) and (3)(b) EPC.

In the contested decision the Opposition Division held that the ground for opposition mentioned in Article 100(c) together with Article 123(2) EPC prejudiced the maintenance of the patent. The Opposition Division concluded that claim 1 of the patent as granted extended beyond the content of the application as filed in view of two amended features, namely the feature "in a document handling program" and the feature "to identify only parts of the document, said parts comprising ... and being used as search terms".

The then appellant requested with the statement of grounds of appeal that the patent be maintained in amended form on the basis of a new main request or one of five new auxiliary requests, all filed with the statement. It further requested that the matter be remitted to the Opposition Division if the requirements of Article 123(2) EPC were met.

The Board summoned the appellant to oral proceedings. In a communication accompanying the summons, the Board summarised the issues likely to be discussed at the oral proceedings. None of the requests appeared to fulfil the requirements of Article 123(2) EPC. Furthermore, the Board stated that it was not fully convinced that any of the requests was compliant with Article 123(3) EPC. It informed the appellant that it was inclined, in case all objections were overcome, to remit the case to the Opposition Division for assessment of novelty and inventive step, in line with the appellant's request.

At the oral proceedings, following a discussion of issues related to Article 123(3) EPC, the appellant replaced all pending requests with a sole request comprising a new claim 1.

Reasons for the Decision
1. The appeal is admissible.

(...)

8.2.3 A further feature of the analysing step of claim 1 is the identification of only a name and/or address, being used as search terms. The term "only" was already contained in claim 1 as granted, albeit in relation to "parts of the document, said parts comprising name, address ...", and therefore, as a feature of the granted claim, cannot be objected to for lack of clarity under Article 84 EPC. However, in both contexts, i.e. in claim 1 as granted and in claim 1 as now amended, the term leaves room for interpretation.

(...)

8.2.4 (...) The appellant nevertheless maintained that, notwithstanding the possible lack of basis of an unambiguous disclosure, claim 1 should be found to comply with Article 123(2) EPC, since the feature at issue was added during examination, did not provide a technical contribution to the subject-matter of the claimed invention and merely limited the protection conferred by the patent. In this respect, the appellant relied on Enlarged Board of Appeal decision G 1/93 (OJ EPO 1994, 541 - Limiting feature/ADVANCED SEMICONDUCTOR PRODUCTS).

8.2.5 In decision G 1/93 the Enlarged Board answered the referred question of law by stating (as Headnote 1, point 1 of the Order) the following principles: "If a European patent as granted contains subject-matter which extends beyond the content of the application as filed in the sense of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, such patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC."

8.2.6 The Enlarged Board recognised and accepted that these principles could operate rather harshly against an applicant, who ran the risk of being caught in an inescapable trap and losing everything by amending his application, even if the amendment is limiting the scope of protection (see Reasons 13).

The Enlarged Board, however, went on to consider whether a limiting feature (without basis) necessarily had always to be regarded as subject-matter extending beyond the content of the application as filed. This question had to be answered in the light of the overall purpose of Article 123(2) and (3) EPC to create a fair balance of interests (see Reasons 15).

As emphasised in point 2 of the Enlarged Board's answer (Order) to the referred question (Headnote II), "a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent which includes such a feature."

(...)

8.2.9 It follows from the above that a limiting feature which generally would not be allowable under Article 123(2) EPC can, under certain conditions, nevertheless be maintained in the claim of an opposed patent in the particular situation addressed in decision G 1/93. It then complies with Article 123(2) EPC by way of a legal fiction.

8.2.10 In the present case, the appellant has found itself exactly in the situation envisaged in decision G 1/93. The term "only" was introduced during the examination proceedings and successfully objected to under Article 100(c) EPC in proceedings before the Opposition Division by the former respondent. Since the Board considers the term to be truly limiting (see above point 8.2.3), its deletion would extend the protection conferred and thereby infringe Article 123(3) EPC.

8.2.11 Consequently it has to be examined whether the limiting feature "only" provides a technical contribution to the subject-matter of the claimed invention. The application describes that the text typed by the user is analysed to find strings corresponding to names and/or addresses, for example, "street, avenue, drive, lane, boulevard,[...] Mr., Mrs., Sir, Frau, Herr, Madam, Madame" or common names. The fact that these identified items (which are then used as search terms) are now limited to only a name and/or address, excluding the possibility of additionally identifying other items to be used as search terms, does not change the solution of identifying common strings corresponding to search terms. In particular the other features of the claimed invention do not have to be changed or adapted due to the now mandatory exclusion of other search terms. The principle of the invention aiming at identifying search terms based on the name and/or address, by finding common strings, does not have to be modified. No program code is needed to exclude other items from the search. Therefore, the exclusive limitation of the search terms to a name and/or address does not influence the solution of the technical problem as understood from the application as originally filed, and hence provides no technical contribution to the claimed invention (see also decision T 384/91, OJ EPO 1995, 745, Headnote II). It merely excludes protection of part of the invention described in the application, thus not giving any unwarranted advantage to the applicant.

8.2.12 The definition of the analysing step in claim 1 of the appellant's sole request is therefore deemed to comply with Article 123(2) EPC.

8.3 Insofar as the definition of the analysing step contains amendments compared with claim 1 as granted (see point 8 above), the Board has no objection under Article 84 or Rule 80 EPC. In particular, it is noted that the limiting feature "performed by a computer program" appears to have been introduced by the appellant in view of prior art cited by the former respondent and is therefore occasioned by a ground for opposition.

9. It follows from the above that independent claim 1 of the appellant's sole request is allowable under Articles 84, 123(2) and (3) and Rule 80 EPC.

(...)

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T177909.20140521. The whole decision can be found here. The file wrapper can be found here. Photo from www.freedigitalphotos.net

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