Friday, 24 February 2017

T 1896/11 - Clearly incorrectly claimed?

Incorrect password...

As suggested by a reader, this opposition appeal is of interest since it deals with the situation where a claim as granted is technically 'incorrect'  in that it does not correspond to the technical teaching of the description. The question at hand is whether independent method claim 5 of each of the appellant's respective requests (being the patent proprietor) infringes Art. 123(3) EPC since the claim has been amended in each of the requests to correct the technical mistake.

The appellant provides two lines of arguments to argue that the amendments do not infringe Art. 123(3). The first line of argument is that claim 5 of the granted patent contained an inaccurate technical statement, and that from the description it was clear what was obviously intended and, following decision T 108/91 (OJ 1994, 228), claim 5 could be corrected to reflect this intention.

The second line of argument is: in order to establish the protection conferred by claim 5 of the granted patent, and thus to identify the boundary of acceptable amendments, Article 69 EPC had to be taken into account. Since the current amendments to claim 5 reflected this understanding, they did not extend the protection conferred and therefore did not infringe Article 123(3) EPC.

Do either of T 108/91 and Art. 69 EPC apply and bring relieve? The current BoA does not think so.

Reasons for the Decision
1. The appeal is admissible.

2. Appellant's main request

(...)

2.2 Article 123(3) EPC

2.2.1 The final step of method claim 5 of the patent as granted reads "determining based upon the variation in the average deviation (Daverage) whether one of the at least two monitored data signals (11) received over the second period of time has been corrupted with an artifact" (emphasis added by the Board).

The final step of method claim 5 of the appellant's main request reads "determining, based upon variations of the deviations (Di) from the average deviation (Daverage) whether one of the at least two monitored data signals (11) received over the second periods of time has been corrupted with an artifact" (emphasis added by the Board).

2.2.2 The appellant submitted that claim 5 of the granted patent contained an inaccurate technical statement. From the description it was clear what was obviously intended and, following decision T 108/91 (OJ 1994, 228), claim 5 could be corrected to reflect this intention.

2.2.3 The Board notes that claim 5 of the granted patent sets out that an average deviation (Daverage) is determined from the deviation (D) "recorded over multiple past periods". This gives the reader the clear teaching that a plurality of deviations are recorded. In particular, first and second cross-correlation matrices are derived over a number of different first and second periods of time respectively and that the corresponding deviations between these first and second cross-correlation matrices are determined accordingly. From the resulting plurality of deviations recorded in this manner, an average deviation can then be determined. In view of the fact that claim 5 of the patent as granted also refers to the "variation in the average deviation", the reader would understand that a number of separate average deviations must be somehow determined in order to establish a variation therein. Exactly which mechanism is used to obtain a plurality of average deviations is not defined in claim 5. The claim provides no details of which of the recorded deviations are to be fed into the calculation of the average deviation. However, the absence of such details does not affect the understanding of the claim in this respect. Irrespective of how the average is determined - for example, the average of all recorded deviations could be calculated and updated each time a new second cross-correlation matrix is determined or a sliding average of the last ten deviations could be calculated each time a new second cross-correlation matrix is determined - the skilled person would understand from the claim that (i) a plurality of average deviations has to be determined and (ii) any change in these averages has to be monitored. The Board therefore cannot agree with the appellant that the skilled person would not understand at all from claim 5 of the patent as granted how a variation in the average deviation could be determined.

As the appellant submitted, performing an averaging operation would dilute any fluctuation from one individual deviation (Di) to the next (Di+1) and consequently make any such fluctuations harder to detect. Nevertheless, some variation of the averages (Daverage) will be apparent. Although this may seem an unusual way of identifying a variation, it is nonetheless plausible.

The Board therefore agrees with the respondent's view that the skilled person would understand claim 5 of the granted patent as it stands and would not have any reason to suspect that it contains an inaccurate technical statement.

The Board does not contest that the teaching of the description of the patent as granted does not coincide with what is defined in claim 5. Nevertheless, the wording of claim 5 is not devoid of meaning and, as shown above, may be interpreted in a plausible manner without recourse to the description. Thus, in contrast to the situation in T 108/91, although an inconsistency between granted claim 5 and the description exists, it is not immediately apparent that what is defined in claim 5 could not be that for which protection was sought.

Moreover, the Board notes that the decision T 108/91 is older than the decision G 1/93 (OJ 1994, 541) in which the Enlarged Board of Appeal dealt with a similar point of law. In G 1/93, the Enlarged Board had to decide upon the case in which a technical feature, which was not disclosed in the application as originally filed and which limited the scope of protection of the claims of the granted patent as compared to the application as filed, had been added during examination (see Reasons, point 12). The limiting feature could not be maintained in the patent in view of Article 100(c) EPC, nor could it be removed from the claims without violating Article 123(3) EPC. The Enlarged Board held that "Only if the added feature can be replaced by another feature disclosed in the application as filed without violating Article 123(3) EPC, the patent can be maintained (in amended form)" (see Reasons, point 13, emphasis added by the Board).

Thus, in accordance with G 1/93, it is not allowable to replace a technical feature of a patent claim with another technical feature which causes the claim to extend to subject-matter which was not encompassed by the granted claim. As pointed out in a more recent decision T 195/09 (unpublished), "In this respect decision T 108/91 has been clearly overruled by G 1/93" (see Reasons, point 2.1.5).

In claim 5 of the patent as granted, the artifact detection is based on the variation in the average deviation Daverage. In amended claim 5, the artifact detection is based on the variations of the deviations Di from the average deviation Daverage. According to claim 5 of the granted patent it is therefore necessary to monitor changes in the average deviation. According to claim 5 as amended, it is necessary to monitor changes in the difference between the individual deviations Di and the average deviation Daverage. Thus, the parameter to be monitored in claim 5 of the patent as granted has been replaced by a different parameter and the scope of protection conferred by amended claim 5 had therefore been altered. Consequently, the amendments are not allowable under Article 123(3) EPC.

2.2.4 The appellant also submitted that, taking Article 69 EPC into account, the description had to be used to interpret the claims. The protection conferred by claim 5 of the patent as granted necessarily extended to what was was stated in the description. Claim 5 could therefore be corrected to reflect the description without infringing Article 123(3) EPC.

2.2.5 The Board considers that although the Protocol on the Interpretation of Article 69 EPC makes clear that the extent of protection conferred by a European patent is not to be understood as that defined by the strict, literal meaning of the claims, it does not provide a basis for ignoring the wording of a claim of a granted patent. Indeed Article 1 of the Protocol states that the aim of Article 69 EPC is to combine "a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties". The Protocol attempts, on the one hand, to ensure that a claim is not interpreted too literally such that a patent proprietor may contend for a (justified) broader interpretation of the claim than its wording would warrant. On the other hand, the Protocol attempts to balance this against the interests of third parties who rely on the wording of the granted claims. In this respect, the second sentence of Article 1 of the Protocol also states that Article 69 EPC should not "be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled on the art, the patent proprietor has contemplated."

Thus, the Board holds that, in the present case, the description cannot be used to give a different meaning to a claimed method step which in itself imparts a clear, credible, technical teaching to the skilled reader. Otherwise third parties could not rely on what the claim actually states.

In order to determine whether the claimed method step in itself imparts a clear, credible technical teaching, it is necessary to examine "whether (a) the step as claimed is in itself meaningful and plausible from a technical point of view, and (b) there is, prima facie, any inherent incompatibility with the remaining features of the claim" (see decision T 1202/07, unpublished, Reasons, point 2.5).

As has been shown above, the Board considers the step of "determining based upon the variation in the average deviation (Daverage) whether one of the at least two monitored data signals (11) received over the second period of time has been corrupted with an artifact" to be meaningful and plausible from a technical point of view. Moreover, understanding the claim to mean that a variation in the average deviation is used to detect the artifacts is not incompatible with the remaining features of the claim which merely define the steps involved in determining the average deviation.

Consequently, even although claim 5 of the granted patent does not align with the teaching of the description, there is no reason to read a different technical meaning into the term "based upon the variation in the average deviation". To change the interpretation of claim 5 - the wording of which, in isolation, imparts a clear and credible technical teaching - to an entirely different interpretation which could only be derived from the description, would deprive the terms of the claim of any meaning and seriously compromise the legal certainty associated with the granted wording.

2.2.6 In view of the above considerations, the Board concludes that any attempt to redefine the invention to cover something which was not encompassed by the claims of the patent as granted cannot be allowed under Article 123(3) EPC. In the specific case at hand, claim 5 according to the appellant's main request has been amended to define that the presence of an artifact is based on variations in the deviations Di from the average deviation Daverage whereas claim 5 of the patent as granted defined that the presence of an artifact is based on the variation in the average deviation Daverage. Since the amended claim relates to a different concept which did not fall under the wording of claim 5 of the patent as granted, the amendment of claim 5 extends the protection conferred by the granted patent.

2.2.7 Claim 5 of the appellant's main request therefore does not meet the requirements of Article 123(3) EPC.

(...)

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision 1896/11 has European Case Law Identifier: ECLI:EP:BA:2016:T189611.20161125. The file wrapper can be found here. Photo "Incorrect Passwords" by Lulu Hoeller obtained via Flickr under CC BY 2.0 license (no changes made).

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