Friday, 13 January 2017

T 2502/13 - Positive feature allowed as Art. 54(3) disclaimer?


In the opposition appeal to which this decision pertains (which has been suggested by a reader), the proprietor appealed against the decision of the Opposition Division to revoke the patent on the basis of all requests extending beyond the content of the application as filed (Article 123(2) EPC).

Of interest is the first auxiliary request of the appellant, by which the claim of the main request is further limited by: "further wherein the third ply of interlayer material comprises a plasticizer".

The appellant argues that the subject-matter of claim 1 of the first auxiliary request amounted to a disclaimer allowable in view of A8, which was prior art according to Article 54(3) EPC.

Reasons for the Decision
[Procedural aspects omitted]

MAIN REQUEST

2. Amendments (Articles 100(c) and 123(2) EPC)

(...)

2.5 For these reasons the amendments made to claim 1 are based on the application as filed.

3. Novelty (Article 54 EPC)

3.1 The board indicated in its communication in preparation for oral proceedings that it agreed with the opposition division and the respondents that the laminated glazing of Figures 5 and 6 in conjunction with the corresponding passages in the description of A8, a document being uncontestedly prior art according to Article 54(3) EPC, anticipated the subject-matter of claim 1 of the main request.

3.2 As this finding has not been contested by the appellant either in the written or the oral proceedings - in fact, it did not comment on the novelty of claim 1 of the main request - there is no need for the board to elaborate in detail on this issue.

3.3 The main request is therefore not allowable, because the subject-matter of claim 1 lacks novelty over the disclosure of A8.

FIRST AUXILIARY REQUEST

4. Amendments (Article 123(2) EPC)

4.1 Claim 1 differs from claim 1 of the main request in that it includes the additional feature "wherein the third ply of interlayer material comprises a plasticizer".

4.2 There is no explicit or implicit disclosure in the application as filed as regards the presence of a plasticizer in the third ply of interlayer material. In fact, the application as filed does not indicate that any ply of interlayer material being the first, second or third ply of interlayer material comprises a plasticizer.

4.3 The appellant did not dispute that, but argued that this feature should be read as a disclaimer over A8, and was therefore allowable in accordance with G 1/03.

4.4 The board notes, however, that the additional feature is a positive feature, which teaches which subject-matter has to be included in the scope of the claim. It is not drafted as a disclaimer to exclude any specific embodiment of A8. Decision G 1/03 therefore does not apply.

4.5 The first auxiliary request is thus not allowable, because the subject-matter of claim 1 extends beyond the content of the application as filed, contrary to Article 123(2) EPC.

(...)

7.2 The board thus concludes that the claims of the third auxiliary request are novel.

8. Remittal (Article 111 EPC)

8.1 The board finds that the claims of the third auxiliary request fulfil the requirements of Articles 123, 54 and 84 EPC (see points 6 and 7 above).

Taking into account the fact that the opposition division did not take a decision on inventive step and that all the parties to the proceedings requested remittal for further consideration, the board considers it appropriate to exercise its discretion under Article 111(1) EPC to remit the case to the opposition division for further prosecution on the basis of claims 1 to 10 of the third auxiliary request.

This decision T 2502/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T250213.20161108. The file wrapper can be found here. Photo "Because #positivity" by el rolio obtained via Flickr under CC BY-SA 2.0 license (no changes made).

8 comments :

  1. I share the view of the BoA that a disclaimer is a negative feature and not a positive feature. Thus, the reasoning of G1/03 does not apply in this case.

    Interestingly, the BoA have not assessed whether the incorporation of the positive feature might be considered allowable if it does not have a technical contribution to the claimed invention. It appears that this BoA interprets the headnote of G 1/93 as not applying to the present case. Maybe in their view, the reasoning of G1/93 only applies to exceptions like e.g. amendments filed during the examination stage and/or conflicts with A. 123(3) EPC?

    PS: A big thank you to the team of DeltaPatents for providing this Case Law Blog. I think this is an excellent source of information and platform to exchange viewpoints and opinions about current interpretations of the law. Compliments also go to the felicitous choice of pictures for each presented decision!

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  2. It was an interesting move by the applicant trying to sell a positive statement as a disclaimer under G 1/03 in order to restore novelty against a document under Art 54(3).

    The applicant himself did not dispute that there is no explicit or implicit disclosure in the application as filed as regards the presence of a plasticizer in the third ply of interlayer material. Adding a limitation which is not originally disclosed is manifestly contrary to Art 123(2).

    We now know what the BA thinks of this approach: not OK. A positive limitation cannot be considered as a disclaimer!

    As the positive feature has a clear technical contribution, why should then G 1/93 be quoted at all? The BA did not refer to it, directly or indirectly, and this for a good reason, so it does not mean that the BA interprets G 1/93 in the way suggested.

    On the other hand not every negative feature is necessarily a disclaimer, cf. T 154/06.

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  3. Alright. However, if the introduced positive technical feature has a technical contribution (i.e. is e.g. relevant for the assessment of inventive step and/or sufficiency of disclosure), it would not have been admissible anyway because the principles of G1/03 forbid the amendment in this case (see headnote 2.3 of G1/03). If the introduced feature indeed has a technical contribution, the move of the proprietor does not seem to be logical.

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    Replies
    1. I don't think you can equate the "no technical contribution" requirement of G 1/93 with the "not relevant for inventive step or sufficiency of disclosure" of G 1/03. According to G 1/03 an undisclosed disclaimer may become relevant for inventive step in view of a newly found document, so it depends on what documents have been cited. In G 1/93, the requirement seems to be rather that the feature, though limiting, does not bring anything technical in an absolute sense. (One could ask whether that can ever be the case.)

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    2. You might be right. Can you indicate the passage of G1/03 which made you arrive at the conclusion that an undisclosed disclaimer may (still) be admissible when relevant for assessing inventive step?

      I do not agree with the view that G1/93 only allows features which are not technical in an absolute sense (i.e. non-technical features). Rather, G1/93 says (see points 16. of the reasons):

      "Whether or not the adding of an undisclosed feature limiting the scope of protection conferred by the patent as granted would be contrary to the purpose of Article 123(2) EPC to prevent an applicant from getting an unwarranted advantage by obtaining patent protection for something he had not properly disclosed and maybe not even invented on the date of filing of the application, depends on the circumstances."

      Thus, the criterion rather seems to be whether the feature provides an unwarranted advantage to the applicant/proprietor compared to his situation at the effective date of the application/patent. In my opinion, both non-technical features or technical features seem to come into question in this regard.

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  4. Can you please indicate the part of G1/03 on which you base your opinion that the introduction of an undisclosed disclaimer is (still) allowable if its introduction is or becomes relevant for assessing inventive step?

    I can give you the part of G1/93 which allows the conclusion that it is not the question whether a feature is technical or not, but rather if the introduction of the feature gives an unwarranted advantage (i.e. only Limits the scope of protection) to the applicant/proprietor (see Point 16. of the reasons):

    "If, on the other hand, the feature in question merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed, the adding of such feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely effect the interests of third parties (cf. paragraph 12 above). In the view of the Enlarged Board, such feature is, on a proper interpretation of Article 123(2) EPC, therefore not to be considered as subject-matter extending beyond the content of the application as filed in the sense of that provision."

    This seems to mean that the introduction of the feature may not improve the position of the applicant/proprietor compared to his position at the effective date. In my view, it does NOT mean that the introduced feature inevitably has to be a non-technical one. Generally, technical features are also thinkable in this regard.

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  5. but would the situation have been different if the applicant had worded the 'disclaimer' as 'wherein the [claimed object] is not one in which the third ply of interlayer material does not comprise a plasticizer'?

    Then it would really have been a disclaimer.

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