Friday, 4 September 2015

T 1436/12 Change of a referenced document



In this appeal following a refusal by the examining division, the Board did not allow a change of reference to a document incorporated by reference as a correction or as an amendment. The applicant had in the application made a reference to a US application identified by the internal patent attorney docket number (the US application number was not yet known). The applicant requested in appeal proceedings to change the reference to a PCT application which claimed priority from the US application. The Board examined the matter thoroughly. One consideration for not allowing the change was that at the moment of filing the European application the US files was not public; so it could not be verified based on the attorney docket number, which was in the US file, which applications were involved.

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division to refuse the European patent application no. 03739486.3 for lack of inventive step over the document D1 = WO 01/50282. In a section entitled "Obiter dictum", the decision also contained the finding that the claims were unclear.

II. A notice of appeal was filed on 14 March 2012, the appeal fee being paid on the same day. A statement of grounds of appeal was received on 10 May 2012. The appellant requested that the decision under appeal be set aside because the decision was insufficiently reasoned, Rule 111 (2) EPC, and based on hindsight, and because the inventive step assessment of the decision was incorrect. The board understood the appellant to request the grant of a patent based on the documents on file, namely: […]

Alternatively, the appellant requested that the case be remitted to the examining division for further examination. The appellant also criticized the decision for not dealing with its so-called "change request", that is whether the amendment to the description on page 8 was allowable; this request was relevant for potential further clarification of the claims (see grounds of appeal, p. 7, 2nd para.).

III. Page 8 of the description as originally filed contained the following paragraph:

"Further specific features and details of the layered architecture, including the SwBP software structure that enables the internal communication between modules within the mobile platform assembly are described in commonly assigned, U.S. Patent Application Serial No. [Attorney Docket No. 53807-00023USPT] filed concurrently herewith, the disclosure of which is hereby incorporated by reference."

Page 8 as filed with letter dated 10 November 2011 was amended so that it now referred to a "[...] commonly assigned, PCT Patent Application [Attorney Docket No. 53807-00023USPT] filed concurrently herewith [...]".


IV. With a summons to oral proceedings, the board informed the appellant of its preliminary opinion, according to which no substantial procedural violation appeared to have occurred. The board also tended to consider that the "change request" could not be granted because amended description page 8 contained matter that went beyond the application as originally filed, Article 123(2) EPC. As a consequence, amended claim 1 (relying for some features exclusively on the amended page 8) also appeared not to comply with Article 123(2) EPC. In addition, the board raised a number of clarity objections, Article 84 EPC 1973, questioned whether the claimed invention had any discernible technical effect, and raised an inventive step objection, Article 56 EPC 1973. The board also introduced three documents from a related case, T 160/09, into the procedure.

V. In response to the summons to oral proceedings, the appellant argued that the board should remit the case for further prosecution or, at least, to continue the appeal proceedings in writing. It also indicated its willingness to further amend the pertinent passage on page 8 to refer either to

"[...] commonly assigned, PCT Patent Application WO 03/069463 filed concurrently herewith, [...]", to

"[...] commonly assigned, PCT Patent Application claiming priority from Serial No US 60/357291 filed concurrently herewith, [...]", or to

"[...] commonly assigned, U. S. Patent Application Serial No US 60/357291 filed concurrently herewith, [...]".

The appellant added that US 60/357291 was the application with docket number No. 53807-00023USPT as cited on page 8 as originally filed. The appellant did not provide any arguments regarding the board's objections under Articles 84 or 56 EPC 1973.

VI. During oral proceedings, the appellant maintained its request as summarized above. In particular, it confirmed its request that the patent should be granted based on a description containing amended page 8.

VII. At the end of the oral proceedings, the chairman announced the decision of the board.

Reasons for the Decision

[…]

The amendment on page 8, Article 123(2) EPC

7. The amendment on page 8 relates to a document in which "[f]urther specific features and details of the layered architecture are described" and "the disclosure of which is [to be] incorporated by reference" into the application as originally filed.

7.1 It is established jurisprudence of the boards of appeal that the content of a European patent application may, in principle, be supplemented by information incorporated by reference from a cross-referenced document, if only under very limited conditions (see in particular T 689/90, OJ EPO, 1939, 616, headnotes; and T 737/90, not published, reasons 3).

7.2 Since the content of the present application as originally defined depends, at least in part, on the disclosure of the document referred to on page 8 of the description, any amendment to that reference is governed by Article 123(2) EPC.

7.3 According to established jurisprudence of the Enlarged Board of Appeal (see e.g. G 3/89, OJ EPO 1993, 117 and G 2/10, OJ EPO 2012, 376), an amendment to a European patent application is only allowable under Article 123(2) EPC if it is made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents as filed.

7.4 The appellant requested that the amendment be accepted as the correction of an obvious error (see the letter dated 10 November 2011). The board notes that corrections are a special form of amendment so that the cited general requirement for allowable amendments still applies (see also G 3/89, OJ EPO 1993, 117; headnote 1). Moreover, Rule 139 EPC requires that a request for correction may only be allowed if the correction is obvious in the sense that it is immediately evident that nothing would have been intended other than what is offered as the correction.

8. On page 8 as originally filed, a document to be "incorporated by reference" was identified as a "U.S. Serial Patent Application No." and referred to by its "Attorney Docket Number". Even though, according to the USPTO, U.S. patent applications can be searched and retrieved by their docket number, this only applies under the general rule that U.S. patent applications are confidential before publication (35 U.S. Code §122).

9. The present application was originally filed as International Application No. PCT/EP2003/001429 on 13 February 2003.

9.1 Therefore, the reference on page 8 of that International Application to a U.S. patent application "filed concurrently herewith" refers to a U.S. patent application filed on 13 February 2003, too.

9.2 At that date, its filing date, the U.S. patent application cannot have been available to the public from the USPTO, via its docket number or otherwise.

10. The appellant argues that the cross-reference on page 8 constituted an obvious error.

10.1 The appellant explained that it was common practice before the USPTO to use docket numbers to refer to U.S. patent applications for which, at the day of filing, no filing number was yet available. It was therefore clear that the docket number cited on page 8 was specific for the prosecution before the USPTO and should have been replaced for prosecution before the EPO. The fact that this had not been done when the International application was filed at the EPO constituted an obvious error.

10.2 The board is not convinced by this argument. As the appellant explained, patent applications meant for prosecution in different jurisdictions will often, in the interest of efficiency, only be drafted once.

10.3 In the board's view this implies that a patent application to be filed may contain parts which are only relevant for the prosecution in one jurisdiction but not in another.

10.4 Given that the incorporation by reference of features from a cross-referenced document falls under a different regime before the EPO than before the USPTO, the board deems it to be conceivable that the incorporation of the reference on page 8 was meant only for the prosecution before the USPTO and was, therefore, deliberately not amended when the International application was filed at the EPO.

10.5 Thus the board is not convinced that the reference to a docket number in an application filed at the EPO must generally be considered to have been made in error. For that reason alone, the amendment cannot be allowed under Rule 139 EPC.

11. Even if it was assumed, for the sake of argument, that it was obvious that an error had occurred, the board considers that it would not be immediately evident what the correction should be.

11.1 In its letter of 10 November 2011 (p. 1, last para. - p. 2, 2nd para.), the applicant states that the passage on page 8 was "clearly meant to indicate that a Euro-PCT application was to be filed claiming priority from the US provisional indicated by the Attorney docket number given" and that "a co-pending Euro-PCT application (WO 03/069463) was in fact concurrently filed with the present application claiming priority from the US provisional application indicated".

11.2 The board disagrees. From the passage on page 8 as originally referring to a "U.S. Patent Application [...] filed concurrently herewith" it is not immediately evident that a corresponding (Euro-)PCT application was to be filed, let alone which one, or what priority it might claim. With regard to the third alternative formulation proposed by the appellant (see point V above), the board notes that it was also not immediately evident from original page 8 that US 60/357291 was meant.

11.3 Assuming, still for the sake of argument, that the reference to a concurrently filed application in an International application had to be construed as the reference to a concurrently filed International application, the board notes that there were at least three of these: WO 03/069463 entitled "Layered architecture for mobile terminals", WO 03/069469 entitled "Mobile multimedia engine", and WO 03/069472 entitled "Middleware services layer for platform system for mobile terminals". The appellant argued that it would have been obvious for the skilled person that the first of these applications was the intended one since its title referred to a "layered architecture" and because its publication number was next to the publication number in the present case (WO 03/069464).

11.4 The board however disagrees, noting that all three applications relate to the layered software architecture at issue in the present application and that the statement on original page 8 gives no preference to one application over another, depending on the application number.

11.5 The board therefore comes to the conclusion that the requested amendment to page 8 identifying the cross-referenced application as a "PCT Patent Application" cannot be allowed as a correction under Rule 139 EPC. The same applies for the alternative formulations proposed by the appellant.

12. It remains to be determined whether amended page 8 might be allowable, if not as a correction under Rule 139 EPC, then as a general amendment under Article 123(2) EPC.

12.1 The appellant argued that the skilled person, trying to establish which document original page 8 referred to, would have had to identify concurrently filed applications by the same applicant, retrieve them at the USPTO, obtain their associated docket numbers, identify the one disclosed on page 8, and then identify the associated International application. The appellant further argued that for an amendment to be allowable it did not have to be simple for the skilled person to establish whether it was original disclosed, provided that it was unambiguously possible.

12.2 The board notes that the procedure proposed by the appellant required that the U.S. patent application identified by the docket number was published. However, since it was not published until 18 months after the filing date, the U.S. application was not available, to the public or only the EPO, on the filing day of the pre ­sent application. Hence, the amendment would not have been derivable by the skilled person, directly and unambiguously, from the application on its day of filing.


12.3 The board agrees that it need not be simple to establish whether an amendment is allowable under Article 123(2) EPC. However, any allowable amendment must not only be unambiguously derivable from the application as originally filed, but also be directly so. Likewise, for a correction under Rule 139 EPC to be allowable, it must not only be clear what the correction should be but it must be immediately evident. Even if, therefore, the procedure proposed by the appellant were to work, it would not satisfy the strict standards for amendments under Article 123(2) EPC, let alone those for corrections under Rule 139 EPC.

12.4 The board therefore comes to the conclusion that neither the amendment on page 8 as presently on file nor any of the proposed alternatives (see point V above) comply with Article 123(2) EPC.


Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 1426/12 has European Case Law Identifier: ECLI:EP:BA:2015:T143612.20150721 The file wrapper can be found here. Photo Library "Loughborough University Library - Photography Competition 2011 entry by Rich Grundy, obtained via Flickr under CC BY-ND 2.0 license (no changes made).

2 comments :

  1. The decision is entirely justified, considering either the application of R 139 or Art 123 (2).
    The Board recalls wisely not that not only a mistake but also its correction must be manifest, which was certainly not the case here.
    This decision is to be seen in the wider context of incorporation by reference. In general, the guidelines clearly show the limitations of this approach, cf. Guidelines H-IV, 2.3.1. It is not enough to refer globally to a given document, you need at least to quote specific passages.
    In European procedure, such a general incorporation by reference is not very useful, see e.g. T 474/05, T 204/12 and T 1306/08. It is not possible to incorporate features from the referenced document, if they do not have at least been clearly defined in said incorporation. Any amendment to incorporate features from of a document that is not correctly incorporated by reference, is doomed to fail and be refused under Art 123 (2).
    In addition, incorporation by reference also applies to documents of the prior art, cf. T 1393/09. The claim was considered new because the combination of documents by reference did not meet the criteria defined in the Guidelines H-IV, 2.3.1.
    The reference to a document can also be insufficient when it comes to demonstrating the sufficiency of description, cf. T 217/12.
    The interest of the applicant in wanting to change the reference was therefore very limited in view of the Guidelines and the case law. Why then go up to refusal of the application? It could mean that indeed features from the referenced document were necessary for one of the reasons given above. But then, the drafting of the application was suboptimal…..

    ReplyDelete
  2. The interest in changing high; the possibilities for changing low. Suboptimal is a subjective qualification, though maybe a correct one in hindsight.

    ReplyDelete

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