Friday, 27 February 2015

T 236/12 - Scope of protection extended by fax

Scope of protection extended by fax

This case concerns an opposition appeal. Both appellants appealed against the decision from the Opposition Division to maintain European Patent Nr. 1 728 658 in amended form.

During the examination proceedings, the original drawings (which were faxed, and thus of sub-optimal quality) were replaced by better quality drawings showing more constructional details. During the opposition proceedings, the European Patent was maintained in amended form, incorporating the drawings as originally filed (presumably to comply with Art. 123(2)).

The appellants now argue violation of Art. 123(3) EPC, with the reasoning being essentially the following: the claims are not clear (Art. 84), and the skilled person would thus have to consult the drawings (Art. 69(1)) which - by having a sub-optimal quality - omit constructional details present in the patent as granted. The skilled person may thus arrive at embodiments other than those following from the patent as granted. The protection conferred by the European Patent is therefore extended.

There appear thus to be all the ingredients of an Art. 123(2) - Art 123(3) trap.

The appellants further request a different apportionment of costs in accordance with Art. 104(1).

As reason given is the complexity of the preparation for the argumentation supporting the Art. 123(3) violation. Those costs could have been prevented if the proprietor did not at the beginning of oral proceeding request to maintain the patent based on the drawings as originally filed. 

Tuesday, 24 February 2015

T 1214/09 - Discretion to allow amendments



The Examining Division refused a European patent application after concluding lack of inventive step in view of document D2 of the subject-matter of claim 1 of a main request . A first and a second auxiliary request were not admitted into the proceedings under Rule 137(3) EPC. The Board reviews these decisions and concludes that, in so far as the Examining Division did apply the correct criteria in exercising its discretion under Rule 137(3) EPC, it did so in an unreasonable way and thereby exceeded the proper limits of its discretion.

Summary of Facts and Submissions
I. The applicant (appellant) lodged an appeal against the decision of the Examining Division refusing European patent application No. [...].
II. The contested decision cited the following documents: D2: [...] and D4: [...]
The Examining Division came to the conclusion that the subject-matter of claim 1 of a main request lacked an inventive step in view of document D2. A first and a second auxiliary request were not admitted into the proceedings under Rule 137(3) EPC.

Monday, 23 February 2015

T 0233/12 - Heared, but not listened to?


A European patent application was refused during  oral proceedings while no one was present for the appli­cant. In preparation for the oral proceedings, the applicant had filed amended claims along with corresponding arguments. The exa­mining division considered that the pro­posed amendments "prima facie [...] contradict[ed] the requirements of Articles 84 EPC and/or 123(2) EPC" and therefore did not give its "consent to the proposed amendments under Rule 137(3) EPC". 

Summary of Facts and Submissions
I. The appeal lies against the decision of the examining division to refuse European patent application No. 07103013.4.
II. The decision was delivered during oral proceedings. In preparation for them, the applicant had filed amended claims along with corresponding arguments. At the oral proceedings however no one was present for the appli­cant. The exa­mining division considered that the pro­posed amendments "prima facie [...] contradict[ed] the requirements of Articles 84 EPC and/or 123(2) EPC" and therefore did not give its "consent to the proposed amendments under Rule 137 (3) EPC". The application was then refused under Article 97 (2) EPC with reference to Article 78 (1) (c) EPC.

Monday, 16 February 2015

T 1495/09 - Patent granted for Great Britain despite missing designation



This opposition appeal played a role in a series of court cases explained in an article by Gordon Harris. The appeal before the EPO is interesting in its own right. We have also blogged about this case in the context of the unitary patent


The request for grant form for the patent contained the following: "GB is expressly NOT designated in this application." However, it appears that the EPO overlooked this statement and granted a patent for GB anyway.

The opponents challenge this grant for a member state that seems explicitly abandoned, both with the opposition division and with the Examining division; the latter under R.140 EPC.

However, the Board of appeal does not allow the opposition division to correct an error in a decision of the Examining division. The Examining division did not correct this 'error' either. This leads the way to court cases in which the proprietor tries to enforce the GB validation. In the end, the latter is unsuccessful but only because the patent is considered not infringed. Also the judge would not review the administrative procedure leading up to the grant.

I've put error in quotes since the board does not address the question whether this grant really was an error. The Examining division itself does not seem to think so; in a communication of 17/4/2009 it considers the abandonment of the UK designation to ambiguous.



Summary of Facts and Submissions
I. All parties, the patent proprietors (henceforth "Virgin"), opponents 01 (henceforth "Cathay"), opponents 02 (henceforth "Airbus") and opponents 03 (henceforth "Premium") appealed against the interlocutory decision of the Opposition Division dated 18 June 2009. In its decision the Opposition Division maintained the patent in amended form on the basis of the claims of the first auxiliary request then on file.

II. In the course of the oral proceedings held 9 September 2010 before the Board, Virgin withdrew all former requests and filed a new sole request and requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of this sole request.

Premium and Airbus requested that the decision under appeal be set aside and that the patent be revoked. This request had also been made in writing by Cathay, who informed the Board with letter dated 1 September 2010 that they would not be represented at the oral proceedings.

Premium further requested the correction of the decision to grant by deleting the designation of GB. This request had also been made by Cathay in writing.

(...)

Reasons for the Decision
(...)


7. Request for correction of the decision to grant under Rule 140 EPC


Premium and Cathay requested the Board to correct the decision to grant under Rule 140 EPC by deleting the designation of the Contracting State GB since in their view, said designation contained an obvious mistake.

Premium and Cathay assert that it lies within the competence of the Opposition Division to correct the Examining division's decision to grant a patent pursuant to Rule 140 EPC (identical with former Rule 89 EPC 1973). However, the present Board agrees with Virgin and believes that only the Examining Division is entitled to correct its own decision.

Rule 140 EPC reads as follows: "In decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected."

The Board agrees with Premium and Cathay that Rule 140 EPC does not specify the competence to correct errors in a decision. The Board also notes that there is no other provision in the EPC specifying the competence for such a correction decision. Therefore, an interpretation of Rule 140 EPC is necessary on this issue. The case law of the Enlarged Board of Appeal and the Boards of Appeal has dealt with the question of which EPO department of first instance is competent to correct the decision for grant. In its decision G 8/95 (OJ EPO 1996, 481) the Enlarged Board of Appeal held: "The competence to correct errors in a decision under Rule 89 EPC [1973] lies with the body which has given the decision. Hence, in the examination procedure the Examining Division has to decide on a request to correct errors in the decision to grant." (Reasons 3.4). In the decision T 850/95 (OJ EPO 1996, 455) leading to the referral, the facts indeed differed from those of the present case since the request for correction was submitted prior to the mention of the grant of the patent and therefore prior to the date on which the decision to grant took effect according to Article 97(4) EPC 1973. Consequently, no opposition proceedings were pending at the time when the request for correction was filed. However, according to the case law of the Boards of Appeal, the Examining Division has the competence to correct its own decision to grant also in situations where the request for correction was submitted after the initiation of opposition proceedings (T 226/02 and T 268/02, both decisions not published in the OJ EPO). In both decisions the Board referred to G 8/95 (loc. cit.) and held that the competence to correct errors in a grant decision lied with the Examining Division which had taken that decision. In T 226/02, where the Opposition Division had corrected the grant decision pursuant to Rule 89 EPC 1973, the Board came to the conclusion that "the Opposition Division acted ultra vires in taking a decision under Rule 89 EPC [1973] to correct a decision of the Examining Division" (Reasons 5.1). In decision T 79/07 (not published in the OJ EPO) the Board acknowledged the Examining Division's competence for correcting the grant decision even after the Opposition Division had revoked the patent by a decision which was the subject of the appeal proceedings. In the Board's view the reason for acknowledging the Examining Division's exclusive competence to decide on a request for correction of the grant decision could be seen in the requirement developed by case law that the correction of a decision is admissible only if the text of the decision is manifestly other than intended by the department concerned. Hence there is an obvious mistake in a grant decision within the meaning of Rule 140 EPC, if the text given for grant is not and obviously cannot be what the Examining Division actually intended, and the text erroneously indicated can be replaced by that on which the Examining Division actually wanted to base its decision (see T 850/95, loc. cit., Reasons 3. and T 1093/05, Reasons 7.).

Premium argue that, in accordance with Article 114(1) EPC 1973, the Opposition Division had to correct the grant decision since, as stated in decision T 156/84 (OJ EPO 1988, 372), it had the duty vis-à-vis the public not to grant or maintain patents which were not legally valid, irrelevant of how and when the EPO became aware of the circumstances being relevant for the legal validity of a patent. The Board, however, does not agree with this argument. The principle of examination by the EPO of its own motion as set out in Article 114(1) EPC 1973 applies in all proceedings before the EPO. However, this principle cannot justify acting ultra vires and it therefore only applies to the extent to which the EPO department acts within its competence. This finding is also in line with decision T 156/84 (loc. cit.). The Board of Appeal concluded there that for establishing whether a granted patent can be maintained the Opposition Division was obliged to examine the relevance of cited state of the art even if it was introduced after expiry of the opposition period because the principle of examination by the EPO of its own motion (Article 114(1) EPC 1973) took precedence over the possibility to disregard late-filed facts or evidence (Article 114(2) EPC 1973). Decision T 156/84 (loc. cit.) concerned the question of how the Opposition Division had to deal with late-filed evidence which was filed in support of the ground for opposition under Article 100(a) EPC 1973.
 However, there is no indication in decision T 156/84 (loc. cit.) that Article 114(1) EPC 1973 could establish any competence. Consequently, neither Article 114(1) EPC 1973 nor decision T 156/84 (loc. cit.) provides a basis for a competence of the Opposition Division for correcting the grant decision.

Lastly, the Board turns to the argument that the principle of good faith and the principle of proportionality, which were applicable pursuant to Article 125 EPC 1973 in proceedings before the EPO, would establish a competence of the Opposition Division for correcting the grant decision. The purpose of Article 125 EPC 1973 is to fill any gaps that may occur in the application of the procedural provisions of the EPC. However, the Board considers that these principles also do not establish a competence of the Opposition Division to correct the grant decision for the following reasons.

According to Article 19(1) EPC 1973 the Opposition Divisions are responsible for the examination of oppositions against any European patent. The substantive examination of the opposition is prescribed in Article 101 EPC. If the opposition is admissible, the Opposition Division examines whether at least one ground for opposition laid down in Article 100 EPC 1973 prejudices the maintenance of the European patent (Article 101(1) EPC).

Article 100 EPC 1973 lays down the exclusive grounds for opposition being limited to and essentially the same as some grounds for revocation under national law (Article 138(1)(a)-(c) EPC 1973). The function of this provision is to provide, within the framework of the EPC, a limited number of legal bases, i.e. a limited number of objections on which an opposition can be based (G 1/95, OJ EPO 1996, 615, Reasons, point 4.1). An incorrect designation of a Contracting State is not one of the grounds for opposition under Article 100 EPC 1973. This has also not been disputed by Premium and Cathay. It is established Board of Appeal case law that further grounds which would lead to a refusal of a European patent application in the examination proceedings cannot be successfully presented in opposition proceedings (see for example G 1/91, OJ EPO 1992, 253; J 22/86, OJ EPO 1987, 280, Reasons, point 18; T 99/85, OJ EPO 1987, 413, Reasons, point 4; T 127/85, OJ EPO 1989, 271; T 301/87, OJ EPO 1990, 335, Reasons, point 3.3 and 3.4; T 550/88, OJ EPO 1992, 117, Reasons, point 4; T 428/95, not published in the OJ EPO, Reasons, point 4.2). In view of this established case law and the relevant EPC provision, the Board considers that the opposition procedure is not designed to remedy all possible deficiencies of the granting procedure or of a granted patent. For example, an objection on the basis that the granted patent claims are not concise and clear cannot be considered by the Opposition Division (see for example T 336/96, not published in the EPO). Also defects and errors of a purely formal character in the granting procedure cannot lead to a revocation of the patent in opposition proceedings since such defects are properly regarded as cured by the act of grant (J 22/86, loc. cit., Reasons 18.). Hence the scope of opposition proceedings is limited as regards the grounds for challenge to granted European patents.

Also after grant observations of third parties under Article 115, first sentence EPC are only admissible if they oppose the patentability of the invention to which the patent relates. "Patentability" refers only to the substantive requirements set out in Articles 52 to 57 EPC as the identical heading of Chapter I, Part II of the EPC suggests.

The provisions of Articles 99 et seq. and Article 115 EPC were drafted with the public interest in mind (see also T 60/91 (OJ EPO 1993, 551, Reasons 9.5). Therefore, in inter partes opposition proceedings before the EPO account must not only be taken of the interests of the parties involved. The Board shares the view that the EPO also has a duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid and that the public has to be enabled to rely as far as possible on the legal validity of a patent granted by the EPO (see T 156/84, loc. cit., Reasons 3.5). However, this duty is subject to restrictions. As set out above, opponents in opposition proceedings and third parties filing observations can challenge the patent only in a limited scope. This means that neither the public nor opponents have legitimate expectations that any deficiency of the granted patent would be remedied by the EPO. Consequently, in the present case, the public could not legitimately expect that the designation of the Contracting State GB would be corrected in opposition proceedings. Therefore, the principle of good faith does not apply in the present case.

For similar reasons the principle of proportionality does not apply in the present case. It is obvious from the EPC provisions concerning post-grant proceedings that the legislator did not envisage empowering the Opposition Division to set aside all legal and factual consequences of any mistake which occurred in examination proceedings. It is therefore the Board's view that the authority conferred to the Opposition Division by the EPC provisions cannot be extended because of the principle of proportionality.

In view of the above the Board concludes that in the present case the Opposition Division in opposition proceedings had no competence to correct the decision taken by the Examining Division. Thus the Opposition Division would have acted ultra vires if it had corrected the grant decision. The same applies to the Board of Appeal in opposition appeal proceedings (Article 111(1), second sentence EPC 1973). Consequently, the request for correction of the decision to grant must be rejected.
ORDER
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance with the order to maintain the patent on the basis of the following documents:
- Claims 1 to 8 filed as sole request during the oral proceedings;
- Pages 2 to 8 of the description filed during the oral proceedings;
- Drawings as granted.
3. The request for correction of the decision to grant is rejected.
 

This decision has European Case Law Identifier: ECLI:EP:BA:2010:T149509.20100909. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "The Queen's Guards
" by
Swaminathan obtained via 500px under CC BY 3.0 license (no changes made).


Friday, 13 February 2015

T 2249/13 - Refund after declaration of no search?

No documents were cited

A Claim that is seen to lack technical features can have a hard time at the EPO. The applicant was refused a patent with the following claim:

1. A mobile communication device comprising:
     a transmitter configured to transmit data, messages, and commands;
     a receiver configured to receive data transmissions and information, including via one or more live data feeds;
     one or more input devices for receiving user inputs;
     a display screen; and
     a processor executing software that causes said communication device to generate and display a first interactive graphical user interface (GUI) on said display screen,
     said first interactive GUI simultaneously displaying live market data and information received via at least one of said live data feeds in the form of:
     a dynamic market window displaying user-selected multimedia content,
live market statistics, and
     at least one execution icon that when selected, invokes said communicating device to generate and transmit a transaction execution command."

The applicant had received a no search, and no invitation under R.63(1) to indicating the subject-matter to be searched. Neither the search division nor the examining division cited any prior art document.The applicant is asking the Board to refund the search fee, as no search has actually been performed.

The applicant was refused as not being inventive over a notorious smart phone. The applicant tries to argues that the Claim nevertheless requires technical considerations and cannot be refused in this manner. How can one show that a claim feature implies a technical consideration?


Reasons for the Decision
(...)
Main request Article 56 EPC - Inventive step

2. The Board sets out from close prior art represented by a mobile communication device in the form of a notorious smart phone comprising an interactive graphical user interface (touch screen), as acknowledged in the application (A1, column 1, lines 26 to 31).

3. In the light of Article 52(1)(2)(3) EPC, Article 56 EPC requires a non-obvious technical contribution (see e.g. T 641/00-Two identities/COMVIK, Headnote 1, OJ EPO 2003, 352; T 1784/06-Classification method/COMPTEL).

4. The cognitive meaning of information received, displayed and transmitted (multimedia content, market data, transaction execution command) does not have any non-obvious technical implication for the functioning of the communication device and its interactive graphical user interface (GUI). The appellant has argued that a "transaction execution command" implies an automatic (i.e. technical) compilation of a plurality of data items as a "transaction" presupposes information on at least two trading partners, the commodity to be traded, an accepted price and the like. However, the underlying technical operation is carried out by any conventional smartphone used for an online shopping transaction. (If that operation was non-obvious, the application would have to disclose it in enabling detail.)

5. The use of an icon as a means for inputting a command is another notorious GUI feature. Similarly, displaying various types of information simultaneously in one window ("dynamic market window") is anticipated by GUIs of conventional smart phones which display internal and external data and metadata.

6. The appellant's central argument with respect to inventive step was that the claimed communication device was arranged to receive live data feeds, i.e. real-time transmissions updated in "milliseconds" (A1, paragraph 0137), which were significantly more sophisticated than conventional, slower data transmissions. Prior mobile devices were unable to connect to multiple feeds (statement of grounds of appeal, bottom of page 4). Setting out from a conventional communication device, there was no hint for the skilled person to provide live data feeds for improving the mobile retrieval, display and/or interaction with critical market data.

7. The Board first notes that updating a transmission is primarily an operation of the transmitting device (e.g. a server) and may not require any modification of the receiving device (i.e. of the mobile communication device claimed). Once a conventional communication channel to a conventional communication device has been established, transmitted data may be updated by the sender as frequently as desired.

8. Moreover, while the application frequently mentions live data feeds, it does so essentially in the form of catchwords or desiderata without explaining any non-obvious technical background of such feeds. The appellant relied on a single feature in the description (A1, paragraph 0156: data compression) to show that the application provided some technical detail enabling live data feeds. However, that feature represents common general knowledge in data processing (zip files, for example), and it is up to the skilled person to weigh up its well-known advantage (reduced data volume) and disadvantages (compressing/decompressing steps). While a compressed data volume can be transmitted more quickly, the compression and decompression steps may eat up the time saving. This (conventional) compromise is confirmed by the application which states that data compression is used to "optimize" communications (A1, paragraph 0156) rather than to maximise the updating speed. In other words, no non-obvious approach is disclosed for providing the desired real-time market information.

9. As far as multiple real-time feeds to a mobile communication device are concerned, the Board again notes that this is not necessarily a feature of the claimed receiving device as the desired data may be aggregated by a sending server (A1, paragraphs 00010, 0012 etc), the server not being part of claim 1.

Moreover, no non-obvious technical implementation of multiple real-time feeds to a mobile communication device is detailed in the application. The Board accepts that such an implementation was available to the skilled person but pre-existing knowledge cannot be an inventive contribution.

10. The Board finally notes its disagreement with the argument that the skilled person had no obvious reason to enhance a mobile device by live data feeds. Real-time transmissions were demanded by market participants (A1, paragraph 0004), i.e. this user demand is the obvious task addressed by the skilled technical person.

11. Therefore, the Board judges that the mobile communication device according to claim 1 of the main request does not involve an inventive step.

(...)

Request for a (partial) refund of the fee for a European search
24. The appellant considers that the EPO has enriched itself unfairly by receiving the search fee without performing a search. According to the appellant, the no-search declaration of the search division cannot be deemed to be a European search report under Rule 63(2) EPC as the search division ignored Rule 63(1) EPC by failing to invite the appellant to file a statement indicating the subject-matter to be searched.

Even in the absence of a specific reimbursement provision in the EPC, the search fee should be reimbursed (partly) according to a pertinent principle of law (condictio ob rem) generally recognised in the Contracting States (Article 125 EPC).

Article 9 of the Rules Relating to Fees is said to reflect the principle of fairness as it grants a refund of the search fee if the European patent application is withdrawn or refused or deemed to be withdrawn at a time when the Office has not yet begun to draw up a search report. By way of analogy, the same principle should apply to cases where the EPO has deliberately chosen not to conduct a search, in particular where the choice is based on an unjustified discrimination of subject-matter according to the Notice from the European Patent Office dated 1 October 2007 concerning business methods (OJ EPO 2007, 592) which announced a no-search policy for claims pertaining to business methods. In similar fields (such as gaming machines), searches are provided even on minor technical features. In any event, the Notice concerning business "methods" is not applicable to the claims of the present application which relate to "devices" comprising technical features. Hence, there has never been any justification for omitting a search.

25. The Board points out that it applies the EPC and associated provisions as they stand. The Rules Relating to Fees do not provide for a refund of the search fee in case of a no-search declaration under Rule 63 EPC. Rule 63(2) EPC states that such a no-search declaration shall be considered as the European search report.

26. The fact that the search division did not comply with Rule 63(1) EPC (failure to communicate with the appellant) does not alter the legal situation. The search division's actions are not open for review by the Board (Article 106(1) EPC) and, for the same reason, the search division's reliance on the Notice from the European Patent Office dated 1 October 2007 concerning business methods is neither.

27. The appellant referred also to Article 125 EPC to postulate a right to a (partial) reimbursement of the search fee when no prior art search has been carried out. Article 125 EPC reads:
"In the absence of procedural provisions in this Convention, the European Patent Office shall take into account the principles of procedural law generally recognised in the Contracting States."
What the appellant claims here is to apply an allegedly pertinent principle of law in the Contracting States, namely the law of unfair enrichment. However, the law of unfair enrichment is provided by substantial law, not procedural law. Thus, Article 125 EPC does not provide any basis for the appellant's claim to reimburse the search fee.

28. For the sake of completeness, the Board wishes to express its awareness of the appellant's fundamental right to judicial review but that does not mean that such a review has to be provided by the Boards of Appeal in all types of disputes between an appellant and the European Patent Office or Organisation.

In particular, the Board is not competent to decide on claims for compensation in respect of a loss or damage allegedly caused by the EPO in the course of patent grant proceedings, see e.g. J 14/87 (OJ EPO 1988, 295, point 13, referring to Article 9 EPC "Liability").

29. Therefore, the Board considers that the request for a (partial) refund of the search fee is inadmissible.

(...)

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T224913.20141017. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "reading in white" by 
Magdalena Roeseler obtained via 500px under CC BY 3.0 license (no changes were made).







Wednesday, 11 February 2015

T 2540/12 - extrapolation of disclosure closest prior art



This appeal lies from a decision of the Opposition Division filed by the opponent. The Opposition Division maintained the patent as granted and the opponent (Appelant) filed the appeal. In this appeal there was an interesting discussion about inventive step. The subject of the discussion was whether the skilled person would extrapolate results of a scientific study presented in the closest prior art such that he arrives at an embodiment falling within the scope of the main claim of the main request. The study addressed the effects of an early diet of infants on their later life. One has to realize that the effect of the main claim is not really different from the effect of the disclosure of the closest prior art. Another interesting point of this decision is the admissibility of an auxiliary request introduced at the end of the oral proceedings while the same request was withdrawn earlier during the same oral proceedings.

Summary of Facts and Submissions
 

(...) 


III. The opposition division's decision was based on the claims as granted, of which claim 1 reads as follows:"1. Use of nutrient in the manufacture of a feeding formula for feeding to human infants in the period up to 2 months of age to avoid long-term adverse health effects consequent upon excessive weight gain in that period, wherein said feeding formula comprises 0.5 to 1.00 grams of protein and 25-50 kilocalories per 100 ml."

The subject-matter of claim 1 differed from the closest prior art document D1 in that a feeding formula was used comprising 0.5 to 1.00 grams of protein and 25 to 50 kilocalories per 100 ml. The objective technical problem was seen as how to find a feeding routine for early postnatal nutrition that reduced the risk of long-term adverse health effects consequent upon excessive weight gain caused by using infant formulae. It was credible that the technical effect of reducing long-term adverse health effects upon excessive weight gain was achieved by the feeding formula as required in granted claim 1. D1 acknowledged a relationship between nutrient-enriched diets given to neonates and obesity in later life. There was however no teaching in D1 to modify existing feeding formulae according to claim 1. D1 merely suggested that breastfeeding was preferable for obtaining the long-term benefit on adiposity. The opponent's argument that the experimental data in D1 would lead the skilled person in an obvious way to the claimed solution in the same way as the experimental data of the opposed patent was not considered to be convincing as this reasoning would be based on hindsight knowledge of the invention. The subject-matter of claim 1, formulated as a plausible prediction on the basis of the experimental data in the contested patent, indeed appeared logical a posteriori. However in the absence of a pointer in D1 to reconsider the energy and protein requirements of commercial feeding formulae in order to solve the above-mentioned objective technical problem, the skilled person would not have arrived at the claimed solution in an obvious way.

(...) 

XII. So far as relevant to the present decision, the appellant's arguments can be summarised as follows:
- Main request
The claims of the main request were not based on the application as filed and the invention defined in these claims was not sufficiently disclosed.
Furthermore, the subject-matter of claim 1 was not inventive in view of D1 as the closest prior art. The formula of claim 1 differed from those disclosed in D1 in that the protein and energy content was slightly lower. No data were contained in the opposed patent as to the claimed formula and no effect had been attributed to the slight reduction in protein and energy content. Hence it had to be assumed that the formula of D1 provided the same effect as that of claim 1. Therefore the objective technical problem solved in the light of D1 was the provision of an alternative composition to achieve the same therapeutic effect. D1 already pointed at lowering the protein and energy content since lower protein and energy contents let to lower leptin concentrations and hence less risk of obesity in later life. In this respect, trial 2 of D1 was relevant, in which the use of a non-enriched standard term formula instead of the preterm formula led to a reduction in the leptin concentration of 29%. In view of the respondent's arguments made during the discussion of sufficiency of disclosure (see point 2.5 below), it had to be assumed that the skilled person would extrapolate the trend observed in this trial towards even lower protein and energy contents, such that he would arrive at the subject-matter of claim 1.

(...)

XIII. So far as relevant to the present decision, the respondent's arguments can be summarised as follows:- Main request
D1 was the closest prior art, from which the claimed formula differed in terms of the protein and energy content. The objective technical problem was how to avoid in formula-fed infants the risk of creating long-term adverse health effects. There was no significant difference in D1 between formula-fed infants and infants that had received breast milk, and between infants having received the preterm formula and those having been fed banked breast milk. The skilled person would thus not have been motivated to change the composition of the preterm and term formulae in D1. Furthermore, it was commonly known that breast milk was the "gold standard". Therefore, the fact that the preterm formula in D1 was less beneficial than mother's own expressed breast milk would not induce the skilled person to modify the preterm formula. Also the authors of D22 had realised that formula-fed infants had a higher fasting insulin concentration than breastfed infants but had not suggested modifying the formulae. Finally, there was nothing about insulin resistance in D1 and the skilled person would thus not have been motivated to choose the claimed formula to avoid insulin resistance.

(...)

Reasons for the Decision
 

(...) 

2. Inventive step

2.1 The invention underlying the opposed patent relates to the use of infant formulae to avoid long-term adverse health effects consequent upon excessive weight gain (paragraphs [0006], [0007] and [0010] and claim 1 of the patent).

(...)

2.2 D1 is a scientific paper published by a group of authors including the two inventors of the opposed patent. In the same way as in the patent, this paper is dealing with the effects of early diet on later life. The study described in D1 is exactly that disclosed in the patent, i.e. the infant group, study design and formulae (a) to (d) applied in the study of the patent are used in D1 as well (as regards infants and study design of feeding the infants, see paragraph bridging left- and right-hand column on page 994; as regards formulae, see the first full paragraph on the right-hand column of page 994; as regards the study design of the follow up, see the first paragraph on the left-hand column on page 995). The only difference between the study in D1 and that in the opposed patent is that in D1 the relative leptin concentrations indicative for obesity in later life are measured in the follow up (abstract on page 993 and conclusions on page 998), rather than the 32-33 split proinsulin concentration and the flow-mediated endothelial dependent dilation (FMD) in the patent.
D1 is thus in the same technical field and aims at the same objective as the opposed patent. As acknowledged by both parties, D1 therefore can be considered to represent the closest prior art.
In the same way as the diets used for the examples in the opposed patent, the diets used in D1 are different from the formula defined in claim 1 of the opposed patent in that the protein and energy contents in D1 are slightly higher than those of the formula according to claim 1.

2.3 According to the respondent, the problem solved by the patent was how to avoid, in the case of formula-fed infants, the risk of creating long-term adverse health effects.

2.4 As a solution to this problem, the patent proposes the use according to claim 1, characterised in that an infant formula is applied with a slightly lower protein and energy content than that present in the term formula of D1, namely 0.5-1.00 g/100ml of protein and 25-50 kcal/100ml.

2.5 It needs to be examined whether this problem has been credibly solved by the claimed subject-matter, i.e. by the lower protein and energy contents required by claim 1.
During the discussion of sufficiency of disclosure during the oral proceedings before the board, the respondent explained that the skilled person looking at the experiments in the study described in the opposed patent would have reasonably expected that the trend observed in this study, namely that lower protein and energy contents led to lower insulin resistance and endothelial dysfunction, could be extrapolated to the even lower protein and energy contents required by claim 1. In other words, the skilled person would have expected that at these even lower protein and energy contents, insulin resistance and endothelial dysfunction would be avoided.
The board accepts this argument and therefore considers it to be credible that the above problem (point 2.3) is solved by the subject-matter of claim 1. This problem thus represents the objective technical problem.

2.6 It needs finally to be examined whether in view of this problem, the claimed solution is obvious.

2.6.1 In trial 2 of D1, children fed the term formula were compared to children fed the preterm formula (figure 1 on page 994). It was found that children who had received the term formula (with a lower protein and energy content, see point 2.1.1 above) had a leptin concentration at the age of 13 to 16 years that was 29.0% lower than children who had received the preterm formula (trial 2 in table 3 on page 997 and lines 10 to 16 of the left-hand column on page 998 of D1), and this correlated to a lower risk of obesity in later life (lines 4 to 6 of the right-hand column on page 997 of D1).
Hence, exactly the same trend is described in D1 as in the patent, namely that a lower protein and energy content of the term formula reduces adverse health effects in later life (obesity in D1 and insulin resistance and endothelial dysfunction in the opposed patent).

2.6.2 Accepting the respondent's argument that in the patent this trend can be extrapolated to lower protein and energy contents as required by claim 1, which the board does (point 2.5 above), the same must be assumed for D1. More specifically, in the same way as for the study described in the patent, it must be assumed that the skilled person reading D1 would expect that by reducing the protein and energy content of the term formula in D1 even further, the risk of obesity in later life would be avoided. The skilled person seeking to achieve this avoidance would thus reduce the protein and energy content of the term formula of D1 and would thereby arrive at the subject-matter of claim 1. This subject-matter is therefore obvious in view of D1.

2.7 The respondent's arguments made as regards inventive step are in this respect not convincing:

2.7.1 The respondent argued that there was no significant difference in D1 between formula-fed infants and infants that had received breast milk and between infants having received the preterm formula and those having been fed banked breast milk. The skilled person would thus not have been motivated to change the composition of the preterm or term formulae in D1.
However, this argument is not relevant since D1 contains a comparison of infants fed with a term formula and those fed with a preterm formula and since, as has been set out above, in view of this comparison the claimed subject-matter is obvious.

2.7.2 The respondent also argued that it was commonly known that breast milk was the "gold standard". Therefore, the fact that the preterm formula in D1 was less beneficial than mother's own expressed breast milk would not induce the skilled person to modify the preterm formula. Also the authors of D22 had realised that formula-fed infants had a higher fasting insulin concentration than breastfed infants but did not suggest modifying the formula.
However, in the same way as for the respondent's first argument, this argument disregards the fact that D1 contains a comparison between a preterm and a term formula and that, on the basis of this comparison, the claimed subject-matter is obvious.

2.7.3 The respondent further argued that there was nothing about insulin resistance in D1.
This argument is not relevant either since claim 1 is not restricted to the avoidance of insulin resistance but covers the avoidance of adverse health effects in general.

2.8 The subject-matter of claim 1 therefore lacks inventive step in view of D1.

(...)

Auxiliary request

4. Admissibility

4.1 The auxiliary request (hereinafter "new auxiliary request") was filed at approximately 2.50 pm during the oral proceedings before the board. Pursuant to Article 13(1) RPBA, it is at the board's discretion to admit or not to admit the new auxiliary request. This discretion shall be exercised in view of inter alia the need for procedural economy. When exercising this discretion, the board has to take into account the respondent's behaviour during the oral proceedings (T 1790/06, point 16). To decide on the admissibility of the new auxiliary request, it is therefore necessary to reiterate the course of the present oral proceedings, including the respondent's latest written submissions.

4.2 With letter dated 17 December 2014, the respondent had filed two auxiliary requests, namely an AUXILIARY REQUEST and an AUXILIARY REQUEST 2 (see point IX above). Oral proceedings were held on 13 January 2015 and started with the discussion of the respondent's main request. After the board had announced its opinion that the main request was not inventive, the respondent withdrew its AUXILIARY REQUEST filed with letter of 17 December 2014. Subsequently, the admissibility of AUXILIARY REQUEST 2 was discussed, focusing on problems arising due to the amendment of the time period defined in claim 1. This AUXILIARY REQUEST 2 was again withdrawn and new auxiliary requests 2 and 3 were filed. The admissibility of these two requests was then discussed, again focusing on problems concerning the now differently amended time period in claim 1. Also these auxiliary requests were subsequently withdrawn and at approximately 2.50 pm the new auxiliary request was filed.
The new auxiliary request is in essence identical to the AUXILIARY REQUEST filed with letter of 17 December 2014 but then withdrawn in the oral proceedings. The filing of the new auxiliary request thus essentially represents a re-introduction of the withdrawn AUXILIARY REQUEST, after several hours of discussion on several other also later withdrawn auxiliary requests. Because of the way in which the requests were filed and later withdrawn, the discussion during the oral proceedings went in circles, such that the conduct of the oral proceedings became very inefficient. The respondent thereby did not comply with its duty as regards the efficient conduct of the oral proceedings (T 1790/06, point 16).

4.3 The respondent argued that proceedings before the boards of appeal were about giving justice to all parties and the oral proceedings should therefore be conducted so as to find out whether the new auxiliary request was allowable.
(...) 
The board accepts that the way the respondent acted during the oral proceedings did not entail any devious intent. Nevertheless, as set out above, the respondent's behaviour impaired the efficient conduct of the oral proceedings and this in itself was sufficient reason not to admit the new auxiliary request.

4.4 The board therefore decided not to admit the new auxiliary request into the proceedings.

(...)

Order

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



This decision has European Case Law Identifier: ECLI:EP:BA:2015:T254012.20150113. The whole decision can be found here. The file wrapper can be found here. Comic obtained from xkcd.

Friday, 6 February 2015

T 2001/12 - Insufficiency, clarity or inventive step


Can an objection of insufficient disclosure under Article 83 be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect? What are the consequences of a doubt that the invention as claimed is capable of solving the problem defined in the application? Does it make a difference if the question arises because the claim fails to specify those features which are disclosed in the application as being essential for providing the solution to the problem, or because, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem? The Board of Appeal provided a thorough analysis and guidance in this decision. 

Summary of Facts and Submissions
I. The appeal is against the decision of the Examining Division refusing European patent application No. 08 764 638 "because the main request does not meet the requirements of Article 83 EPC, Article 84 EPC, and Article 54 EPC, and because the auxiliary request does not meet the requirements of Article 83 EPC and Article 84 EPC."
II. The following documents [...]
III. In the letter stating the grounds of appeal the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request or one of auxiliary requests I-VI, all filed with the said letter.
IV. Claim 1 according to the main request reads as follow:
"A memory device (1), comprising at least:
a first semiconductor region (100) having a length (Lg), a first surface (100A), and a cross-section surrounded by the first surface (100A);
a memory means (300) provided on the first surface (100A), wherein the memory means (300) is a multilayered insulation film; and
a gate (400) provided on the memory means (300);
wherein an equivalent sectional radius (r) of the cross-section of the first semiconductor region (100) is defined as a radius of curvature of a circle having the same cross-sectional area as the cross-section; and
an equivalent silicon oxide film thickness (tm) of the memory means (300) is defined as a sum of values of thickness of each layer of the multilayered insulation film, wherein each value of thickness is the film thickness of said layer multiplied by dielectric constant of silicon oxide and divided by dielectric constant of said layer;
and wherein the equivalent sectional radius (r) of the cross-section of the first semiconductor region (100) is equal to or smaller than the equivalent silicon oxide film thickness (tm) of the memory means (300);
characterized in that
the equivalent silicon oxide film thickness (tm) of the memory means (300) is 20 nm-to 6nm."
V. The Examining Division argued essentially as follows:
[...]
VII. The appellant argued essentially as follows:
[...]
Reasons for the Decision
1. The appeal is admissible.
[...]
3. Main Request: Article 83 EPC 1973
3.1 Paragraph [0011] of the description begins as follows:
- "According to to the above-mentioned configuration, the equivalent sectional radius r is set to be equal to or smaller than the equivalent oxide film thickness tm of the memory means".
This relationship between the equivalent sectional radius and the equivalent oxide film thickness is included in claim 1 of the main request.
Paragraph [0011] then continues:
- "and therefore it becomes possible to realize a memory device which can reduce the voltage for writing and erasing to approximately 70% or less of the program voltage of a conventional planar type device."
This feature, which is not comprised in claim 1 of the main request, is central to the objection under Article 83 EPC made in the contested decision.
In particular, by comparing Examples 1 and 2 of the present application with the disclosures of documents D2 and D8, the Examining Division came to the conclusion that it was not credible that the invention defined by claim 1 of the main request would achieve the technical effect of reducing the voltage for writing and erasing to approximately 70% or less of that of a conventional planar type device. For this reason the Examining Division judged that the requirements of Article 83 EPC were not met.
3.2 Hence, a first question which arises is whether the allegation that the claimed invention is incapable of achieving the above-mentioned effect would - even if true - justify refusing the application for failure to meet the requirements of Article 83 EPC.
3.3 In Decision G 1/03 (OJ, 2004, 413) the Enlarged Board of Appeal stated the following:
- "a lack of reproducibility of the claimed invention ... may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92, OJ EPO 1996, 309)." (See Reasons, point 2.5.2.)
This passage has since been cited in other decisions; for example in T 1079/08 the point is made as follows:
- "In Decision G 1/03 (OJ, 2004, 413) the Enlarged Board of Appeal indicated that a lack of reproducibility of the claimed invention is relevant under the requirements of sufficiency of disclosure if the technical effect is a technical feature of the claim, since then it is a feature characterising the subject-matter claimed (see point 2.5 of the reasons)." (T 1079/08, Reasons, point 4).
The same point had been made in earlier decisions, for example in T 939/92 (cited by the Enlarged Board in the above excerpt from G 1/03), and in T 260/98 (also citing T 939/92) in which the following conclusion was drawn:
- "However, since the claims only specify a reduced abrasiveness and do not require any synergistic activity of the components, the question as to whether or not such a synergic effect is achieved by the claimed printing inks is not relevant to the issue of sufficiency, although it may properly arise under Article 56 EPC, if this technical result turns out to be the sole reason for the alleged inventiveness of the printing inks (T 939/92 of 12 September 1995, Headnote point 2 and Reasons Nos. 2.4 to 2.6, OJ EPO 1996, 309)." (T 260/98, Reasons, point 3.6.6.)
3.4 It is therefore the consistent position of the boards that an objection of insufficient disclosure under Article 83 EPC 1973 cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect.
In the present case, the technical effect in question is the reduction of the writing and erasing voltage to approximately 70% or less of the program voltage of a conventional planar type device. Achieving this effect is not part of the invention defined by claim 1 of the main request, and hence the Examining Division's objection that the application as a whole does not disclose features which would enable this effect to be obtained does not constitute a valid objection under Article 83 EPC 1973.
3.5 The Board therefore judges that claim 1 of the main request complies with the requirements of Article 83 EPC 1973.
4. Article 84 EPC 1973
4.1 The Examining Division also found that since claim 1 of the main request did not define features which would enable the above-mentioned effect to be obtained, the requirements of Article 84 EPC 1973 were not met, since the claims did not recite all the features essential for the definition of the invention.
4.2 Article 84 EPC requires that the claims are clear, concise and supported by the description. According to established case law of the boards, Article 84 EPC is to be interpreted as requiring that the claims indicate all essential features of the invention (see Case Law of the Boards of Appeal, 7th edition 2013, II.A.3.2).
In the decision T 32/82, the matter was put as follows:
- "Article 84 EPC requires amongst other things that the claims, which define the matter for which protection is sought (i.e. the object of the invention as implied by Article 52(1) EPC) be clear. The Board of Appeal considers that this has to be interpreted as meaning not only that a claim from a technical point of view must be comprehensible, but also that it must define clearly the object of the invention, that is to say indicate all the essential features thereof.
- "As essential features have to be regarded all features which are necessary to obtain the desired effect or, differently expressed which are necessary to solve the technical problem with which the application is concerned." (see T 32/82 OJ 1984, 354, Reasons, point 15.)
In the decision T 133/85 the point was made as follows:
- "A claim which does not include a feature which is described in the application (on the proper interpretation of the description) as an essential feature of the invention, and which is therefore inconsistent with the description, is not supported by the description for the purpose of Article 84 EPC." (T 133/85, headnote I).
This requirement to eliminate inconsistency between the claims and the description also implies that where an invention has been presented in the description in terms of a modification of prior art which is cited or otherwise acknowledged in the application, the modifying features must be seen as essential (see e.g. T 813/03, point 5.1).
Hence, if the claims do not comprise a feature which is described in the application as essential, or which is disclosed in the description as being indispensable for solving the problem defined in the application, then an objection under Article 84 EPC 1973 may properly arise.
Examination for compliance with this requirement does not entail, and is independent of, a comparison of the claimed invention with the prior art, other than to determine whether there is consistency between the claims and the description in relation to any prior art cited in the application with respect to which the invention has been disclosed.
4.3 By contrast, the determination of the objective contribution of the claimed invention, i.e. having regard to the totality of the prior art, and in particular the objectively identified closest prior art, forms part of the examination for inventive step.
If, as a result of the comparison with the prior art, objective doubts arise that the claimed invention would actually be capable of solving the problem defined in the application (whatever may be asserted in the description), then an objection under Article 56 EPC 1973 may be raised, possibly requiring a reformulation of the problem (see e.g. T 400/98, points 4.3 - 4.3.6, and Case Law, op. cit. I.D.4.3.2).
This is also consistent with the passage cited from G 1/03 under point 3.3, above, in which a lack of reproducibility the claimed invention (i.e. a failure of the claimed features to deliver the effect aimed for) is seen to represent, in the case of an effect which is not expressed in a claim but is part of the problem to be solved, "a problem of inventive step".
4.4 In summary, a doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:
- If the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention.
- If this is not the case, but, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Article 56 EPC 1973 may be raised.
4.5 In the light of the above analysis, the Board is called upon to decide whether the Examining Division was correct in concluding that the claim 1 of the auxiliary request (essentially corresponding to claim 1 of the present main request) failed to meet the requirements of Article 84 EPC in that it did "not recite all the features essential for the definition of the invention". The Board's answer to this question is no, for two reasons.
4.6 Firstly, in the section entitled "Problem to be Solved by the Invention" (paragraphs [0007]-[0009]), several problems are mentioned, including providing a "memory device which can reduce the voltage for writing and erasing".
However, although providing a writing/erasing voltage of approximately 70% or less of that of a conventional planar type device is mentioned in the description, achieving this effect is not stated to be the problem to be solved by the invention, either in paragraphs [0007]-[0009] or elsewhere. There is therefore no basis for arguing that features necessary to achieve this degree of reduction are essential to the definition of the invention.
4.7 Secondly, even if it were accepted that the technical problem underlying the invention is to provide a writing/erasing voltage of approximately 70% or less compared to a conventional planar type device, according to the application this degree of reduction is achieved by ensuring that "the equivalent sectional radius r is set to be equal to or smaller than the equivalent oxide film thickness tm of the memory means" (see e.g. paragraph [0011]).
Since this feature is indisputably comprised in claim 1 of the main request, no legitimate objection could be raised under Article 84 EPC 1973 that claim 1 lacks a feature presented in the description as essential to solving the problem.
4.8 The actual objection of the Examining Division was that, in the light of document D2 (cited in the International Search Report) and document D8 (cited by the Examining Division), and despite the assertions in the description of the present application, it was not considered technically credible that the devices of the present application did in fact reduce the writing/erasing voltage to 70% or less than that of a conventional planar type device.
In the light of the analysis presented above, the Board takes that view that while such an argument might conceivably be of relevance in an examination of inventive step under Article 56 EPC 1973, it is not relevant to the question of compliance with the requirements of Article 84 EPC 1973.
4.9 The remaining objection against claim 1 under Article 84 EPC 1973 (mentioned under point 24.1 of the section "Additional Comments") is that in the case of a hollow semiconductor region, claim 1 does not provide a clear definition of which "first surface" (internal or external) is meant.
In the opinion of the Board, however, it is clear that the external surface is intended. Claim 1 of the main request defines:
- "a first semiconductor region (100) having a length (Lg), a first surface (100A), and a cross-section surrounded by the first surface (100A)".
Hence the "cross-section surrounded by the first surface" is a cross-section of the first semiconductor region. Taking the first surface to mean the internal surface of a hollow semiconductor region would imply that the cross-section of the semiconductor region would enclose none of the actual semiconductor material, but only the hollow interior region. It would be clear to the skilled person from the wording of the claim that this is not what is intended.
4.10 Claim 1 of the main request is therefore judged to meet the requirements of Article 84 EPC 1973.
5. Further Procedure
5.1 No objection of lack of novelty was raised against the subject-matter of claim 1 of the first auxiliary request then on file, nor does the Board see any reason to raise such an objection against the (broadly similar) subject-matter of claim 1 of the present main request in the light of the prior art currently on file.
5.2 In view of the statement in the contested decision that "no supplementary European search report has been established for the present application and no further search for relevant prior art has been conducted during the written procedure", the Board considers that the Examining Division's proposal that "it would be appropriate to return the file to the division for a detailed search and examination to be conducted" is sensible. Hence it is appropriate for the Board to exercise its discretionary power under Article 111(1) EPC 1973 to remit the case to the department of first instance for further prosecution.
5.3 In the section headed "Additional Comments" (said not to form part of the reasons for which the application was refused) the Examining Division briefly indicated its view (under point 25.1) that the subject-matter of claim 1 of the first auxiliary request did not involve an inventive step with respect to document D5/D5a. The Board finds it appropriate to refrain from commenting on this matter for the following reasons.
If, following the search mentioned above, the document D5/D5a is confirmed as the closest prior art in the remitted procedure and the Examining Division maintains its view on inventive step, then the applicant would be entitled to a full explanation of this objection in terms of the problem-solution approach, and taking into account any counter-arguments of the applicant (for example, those presented in the notice of appeal). For the Board to decide this matter in the present decision would deprive the appellant of two instances on the issue. Moreover, the search may reveal new relevant prior art which may either become the starting point for examination, or have a bearing on the argument starting from D5/D5a.
5.4 Hence, for the avoidance of any doubt, the Board has decided only that claim 1 of the main request filed with the notice of appeal satisfies the requirements of Article 84 EPC 1973 and Article 123(2) EPC, and that in respect of the invention defined in claim 1 of the main request filed with the notice of appeal the application meets the requirements of Article 83 EPC 1973.
All other matters remain to be decided by the Examining Division in the remitted procedure.
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.

Headnote
An objection of insufficient disclosure under Article 83 EPC 1973 cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect (point 3.4).

A doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:

a) If the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention.

b) If this is not the case, but, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Article 56 EPC 1973 may be raised (point 4.4).


This decision has European Case Law Identifier: ECLI:EP:BA:2015:T200112.20150129. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "Impossible object" by Till Krech obtained via Flickr under CC BY 2.0 license (no changes made).


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