Friday, June 28, 2019 T 1360/13 - Drawings much improved, but patent invalid

Drawing sheet 1 as replaced

Drawing sheet 1 as originally filed

The patent was granted with drawing sheets exchanged according to Rule 26 PCT during the international phase, the originally filed drawing sheets being of poor quality, essentially showing black or grey elements. The same exchanged drawing sheets which were part of the patent as granted are part of the main request documents.

The board concluded that many details present in the figures of the patent as granted are not disclosed directly and unambiguously by the application as originally filed.

To overcome this problem, the proprietor filed a series of requests 9-17 in which all drawing sheets have been deleted and all references to the figures in the description and claims have been deleted as well.  (Requests 1-8 were withdrawn.) For the BA this corresponded to an extension of protection, not allowable under Art 123(3) in view of Art 69. The board provided the following catchword. 

Catchword

In view of Article 69(1) EPC which states that the description and the drawings shall be used to interpret the claims when determining the extent of the protection conferred by a European patent, after grant, any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation cannot be removed from the patent without infringing Article 123(3) EPC.

Friday, July 06, 2018 T 0156/15 - Admissibility of expert evidence and tactically filed requests

Does it help to submit an expert opinion regarding added matter in a divisional application (Art. 76(1) EPC), when the expert is a well-known former chair of a technical Board of Appeal and member of the Enlarged Board of Appeal? And how far will the Board go in admitting requests submitted during oral proceedings in response to the Board’s deliberations on previous requests?

European patent No. 2 106 790, based on European patent application No. 09007867.6, was filed as a divisional application of European patent application No. 05728268.3. Opposition to the patent was filed by one opponent. By interlocutory decision of the Opposition Division, the patent in suit was maintained in amended form according to Auxiliary Request 1. This Auxiliary Request 1 only differed from the patent as granted in an amendment introduced in paragraph [0020] of the description. Claim 1 of auxiliary request 1 was identical to claim 1 of the patent as granted, which reads:

"1. A composition, which has been prepared in a solution, comprising a therapeutically effective dose of insulin or insulin derivative, ions of citric acid, and a zinc metal chelator effective to dissociate the insulin into monomers or dimers, in a form suitable for subcutaneous administration".

The amendment to paragraph [0020] of the description resulted in citric acid no longer being listed as a suitable chelator, but only as a solubilising acid, thus arguably rendering the claim novel over prior art document D2.

Both parties appealed the decision. The opponent argued, inter alia, that the patent was not in compliance with Art. 76(1) EPC, as the parent patent nowhere disclosed “ions of” of any acid as solubilising agent.

During oral proceedings, the Board came to the conclusion that by admitting submissions made by a former Board member, however eminent that person might be, it would attach undue weight to the individual making the argument rather than focus on the argument itself. Accordingly, the expert opinion was not admitted into the proceedings – rather, the Board allowed the proprietor to rely on the arguments presented therein merely as his own submissions.

Regardless, the Board found that the Main Request – identical to claim 1 as granted - does not comply with the requirements of Article 76(1) EPC, since it cannot be directly and unambiguously derived from the earlier application that the compositions of claim 1 inevitably contain the ionic form of the acids. Auxiliary requests filed sequentially in response the Board’s deliberation in this matter and on the admissibility of the requests itself were not admitted for lack of prima facie relevance or raising new issues. The Board further stressed that by adjusting its strategy to the results of the Board's deliberation, the proprietor puts the opponent in a position where it is difficult to react. For this reason, in principle, the Board could have refused these requests even without also considering the specific criteria for the exercise of its discretion to admit new auxiliary requests.

The only remaining request not violating Art. 76(1) EPC – i.e., relating to compositions containing an acid in its non-dissociated (no ions) form – then led to an inescapable trap (Art. 123(3) EPC) situation, and the patent was revoked.

Friday, November 10, 2017 T 2002/13 - Extension of subject matter

In this opposition appeal, the proprietor intended to limit the claim 1 as granted as follows:

A method to detect the presence or absence of an MREJ type xi methicillin-resistant Staphylococcus aureus (MRSA) strain characterised as having within the right extremity of SCCmec the sequence of SEQ ID NOs 17, 18 or 19 the SEQ ID NO 17 comprising:

generation of SCCmec right extremity junction sequence data by

contacting a sample to be analyzed for the presence or absence of said MRSA strain, said MRSA strain including a Staphylococcal cassette chromosome mec (SSCCmec) element containing a mecA gene inserted into chromosomal DNA, thereby generating a polymorphic right extremity junction (MREJ) type xi sequence that comprises sequences from both the SCCmec element right extremity and chromosomal DNA adjoining said right extremity, with a first primer and a second primer, wherein said first and second primers are at least 10 nucleotides in length, and wherein said first primer hybridizes with said SCCmec element right extremity of an MREJ type xi sequence selected from the group consisting of SEQ ID NOs: 17, 18 and 19 and complements thereof, and wherein said second primer hybridizes with a chromosomal sequence of S. aureus  and wherein each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17 or complements thereof  to specifically generate an amplicon if such MRSA strain is present in said sample; and

detecting the presence or absence of said amplicon.

At first glance these amendments limit the claim. In particular, the board acknowledges that the definition of the second primer is narrower than its definition as granted. Nevertheless, the combination of features amount to extension of the conferred protection.

Wednesday, November 01, 2017 T 514/14 - Respondent could have reacted to the raised objections well in advance to the oral proceedings

In this opposition appeal, the parties were summoned to oral proceedings. In a communication issued in preparation therefor, the Board drew the parties' attention to some issues likely to be addressed at the oral proceedings. The Board inter alia expressed concerns regarding the clarity of claim 1 held allowable by the Opposition Division and pointed out that compliance with Article 84 EPC might also become an issue with regard to the auxiliary requests. Concerning the issue of compliance with Article 123(3) EPC, the Board drew the parties' attention to a specific paragraph of the Case Law Book. The Respondent/proprietor commented on the points addressed in the Board's communication, and defended inter alia its position submitting that the amended claims of all the already pending requests were clear (Article 84 EPC) and complied with Article 123(3) EPC. It nevertheless filed three additional sets of amended claims as auxiliary requests 4 to 7. Oral proceedings before the Board were held. The debate focused on the compliance of the pending claims with Articles 84 EPC and 123(3) EPC. During the oral proceedings, the Respondent filed a further amended set of claims as auxiliary request 1bis, to be intercalated between auxiliary requests 1 and 2. The Appellant/opponent asked not to admit auxiliary request 1bis due to its late-filing. 

Monday, July 31, 2017 T 287/14 - Disclaimers: do not try this at home!

Amendments introducing disclaimers have probably led to more pain than joy. Disclaiming subject-matter in the application-as-filed usually is acceptable, but often has a high risk of lacking inventive step. Disclaiming subject-matter not in the application-as-filed led to G 1/03 already quite some years ago and is well-documented in many later decisions as well as in the Guidelines - strict conditions, which can basically only work out well if there is only one Art.54(3) EPC prior right document with a  single, clear disclosure. Disclaiming embodiments in the application as filed led to G 2/10, which has a quite cryptically phrased headnote, but when read as a whole also gives very clear conditions -it usually is possible, as long as it is clear that something remains and that you do not sneakily change to a different inventive concept-  and it is also well documented in the Guidelines. G 1/03 and G 2/10 relate to different cases, so cannot prima facie be considered as somehow conflicting, but Board 3.3.09 made the currently pending referral G 1/16 while handling appeal T 0437/14 asking a.o. whether the G 2/10 decision effects how some aspects of G 1/03 shall be interpreted. The current decision shows again that even of a disclaimer is made in good faith, it can easily be done wrongly and, as here, of the disclaimer is introduced before grant, one may all too easily end up in an inescapable Art.123(2)-123(3) trap... And the trouble was in this case actually not even in how the disclaimers needs to be drafted, but how novelty has to be assessed... which the opponent did correctly, but the examining division and the applicant/proprietor had not/did not... As to the aux requests, Art. 13(1) and 13(3) RPBA prevented further chances to remedy the trouble.

Friday, February 24, 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.

Friday, May 20, 2016 T 1641/13: three different objects agains the word "separate"

In this opposition appeal there were three different discussions that were all related to one single word in the first claim: "separate". The proprietor (Appellant) introduced that word in the claim of the discussed request, and, according to the opponent (Respondent), the word was not supported by the description, extended the protection of the patent, and was not clear. The support in the description was discussed on basis of two figures and the description of the figures. With respect to the extension of protection the Board discussed whether the product defined in the granted claims is different from the product that is defined by the claims of the main request of the Appeal. Further, the general meaning of the word "separate" was used to discuss the clarity objections of the opponent.
Because the outcome of the appeal proceedings, it seems that changing "..., separately molded side pieces..." into "..., separate, molded side pieces" makes at least an important difference.

Wednesday, May 11, 2016 T 1673/11 - Swiss type claim in opposition

Change categories?

Can a patent proprietor change a Swiss type claim to a purpose-limited product claim during opposition proceedings? The board finds that the Swiss type claim as granted has a narrower scope than the purpose-limited product claim; changing categories thus infringes A.123(3).

Claim 1 as granted reads:
"The use of human acid alpha glucosidase in the manufacture of a medicament for the treatment of infantile Pompe's disease, wherein the human acid alpha glucosidase is in the 100 to 110 kD form, wherein the medicament is to be administered intravenously, and wherein the treatment is to be continued for at least 4 weeks."

Claim 1 of the main request held allowable by the opposition division reads:
"Human acid alpha glucosidase in the 100 to 110 kD form, for use in the treatment of infantile Pompe's disease, wherein the human acid alpha glucosidase is to be administered intravenously, and wherein the treatment is to be continued for at least 4 weeks."

According to the board, a human acid alpha glucosidase provided with instructions for the use in a treatment other than that of infantile Pompe's disease, would fall under the scope of the purpose-limited product claim if it is used for infantile Pompe's disease.

Friday, January 15, 2016 T 108/12 A divisional application in the inescapable trap

The application of this appeal procedure is a divisional application. The Opponent argued during the Opposition procedure and during the Appeal Procedure that the divisional application extends beyond the disclosure of the mother application. This case shows once again that one has to be careful in changing something in the divisional application. The details of this case are a little bit mathermatical and the reasoning of the Board is strongly based on what would the skilled person in the field of security/encryption consider to be the teaching of the original application. One point of discussion is: Does the mother application provide enough support for  f(α)=f'(α) (as claimed in the divisional application), if the mother application teaches f(α)=f'(α)=α? Another point of discussion was: Does the mother application provide enough support for "a specific signature is kept private" (as claimed in the divisional application) while the mother application discloses that, in certain embodiments, the signature is not transmitted.
Ok, there were problems with support of the divisional application in the mother application, but the proprietor finally ends up in the inescapable trap. It is somehow sad to end up in the inescapable trap.

Friday, February 27, 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. 

Monday, January 05, 2015 T 1827/12 - Unavoidable impurities

This opposition appeal considered the question whether an amendment extended the scope of protection. Claim 1 of the sole request contained the following features. The amendments are shown with respect to the claim as granted:

A glass article with a metal member joined thereto,

(...)

(c) wherein the two joining planes of the metal member are fixed (...) with a lead-free solder alloy containing Sn as a main component, and

(...)

(e) characterized in that the lead-free solder alloy is an Sn-Ag based alloy that contains 2 to 4 mass% Ag, and a content of other minor components except for Sn and Ag in the Sn-Ag based alloy is 0.5 mass% or lessin which the rest is Sn, and

The opponent objected (amongst other objections) that this amendment broadened the claim after grant. The board did not agree.


Summary of Facts and Submissions
(...)
The patent had been amended in such a way as to extend the protection it conferred (Article 123(3) EPC). Substituting in feature (e) the term "a content of other minor components except for Sn and Ag in the Sn-Ag based alloy is 0.5 mass% or less" from claim 1 as granted for "in which the rest is Sn" extended the scope of the patent as granted. The former term limited the amount of other minor components, such as impurities, in the alloy to up to 0.5 mass%, whereas according to the new wording the amount of impurities could reach higher levels beyond 0.5 mass%. Deletion of the former term therefore broadened claim 1. The patent as granted did not specify what was to be understood by 'other minor components'. These additional minor components had to be interpreted in the patent as granted as any 'other element' within the alloy and included also impurities. It was further common practice for the skilled person that elements in the alloy composition which did not add up together to 0.5 mass% of the alloy were not specified in the composition but just generally referred to as other components. The skilled person knew that impurities had a significant effect on the properties of a metal alloy (see T 184/05), and their concentration level could not be regarded in isolation from the specific examples.
(...)
Reasons for the Decision
2. Extension of scope of protection - Article 123(3) EPC

2.1 The amended European patent according to the sole request does not extend the protection conferred within the meaning of Article 123(3) EPC.

2.2 In its granted version, claim 1 determines the composition of the lead-free solder alloy as including a content of other minor components except for Sn and Ag of 0.5 mass% or less. According to the documents of the present request, the above-mentioned feature of granted claim 1 is replaced by "in which the rest is Sn", and the last two sentences from paragraph [0020] of the description of the granted patent have been deleted, namely: "The Sn-Ag alloy may contain other minor components. In this case it is preferable that the content of the minor components is 0.5 mass% or less".

2.3 Any reference to other minor components has thus been deleted in the description. As agreed by both parties, when explicitly claiming "other minor components" the claimed solder alloy includes any kind of voluntarily added elements as well as unavoidable ones such as impurities, in particular because this term is not further specified in the patent as granted (see paragraph [0020] of the description). Moreover, in the Board's judgment, the sentence in paragraph [0020] that the "Sn-Ag alloy may contain other minor components", i.e. that minor components can be added on purpose or be excluded, would be contradictory if "other minor components" were equated with "impurities", which by nature are unavoidable. By deleting the references to other minor components in paragraph [0020] of the description, which clearly indicated that they were optional components, and by the amendment to claim 1 as granted according to the sole request, the composition of the claimed solder alloy has been restricted to silver, tin and an unavoidable amount of impurities, since it is well known to the skilled person that a solder alloy will never be pure and thus contains unavoidable impurities.

Therefore, with respect to the composition of the alloy solder as granted, the scope of protection of the amended patent according to the sole request has been limited to a lead-free Sn-Ag based solder alloy that contains 2 to 4 mass% of Ag, in which the rest is Sn, further, implicitly, containing an unavoidable amount of impurities.

2.4 In accordance with the respondent's opinion, the range of "0.5 mass% or less" claimed in the granted version for the other minor components included as a lower limit "0.0 mass%" of other minor components. The present request is limited, due to the deletion of other minor components in claim 1 and the definition that "the rest is Sn", to this lower limit, i.e. in this respect the scope of protection has only been restricted compared to the patent as granted.

2.5 It remains to be discussed whether, based on claim 1 and the description of the sole request, the content of unavoidable impurities might include an amount greater than 0.5 mass% of the solder alloy, as alleged by the appellant. Starting from the undisputed understanding of the term "other minor components" in granted claim 1, comprising voluntarily added elements as well as unavoidable impurities, their total content was explicitly restricted to "0.5 mass% or less" in the granted version. In fact, this restriction was deleted in claim 1 according to the sole request. However, as a further limitation claim 1 according to the sole request now specifies a composition "in which the rest is Sn". In the absence of any evidence that a content of impurities in the solder alloy could amount to more than 0.5 mass% without being explicitly mentioned, the Board finds that, on a reasonable interpretation of the subject-matter of claim 1 according to the present sole request, such content of unvoidable impurities higher than 0.5 mass% must be ruled out. A person skilled in the art describing the content of solder alloys would specify an element of which the content is greater than 0.5 mass% of the alloy because it will affect the properties of the alloy. In the Board's judgement, this also applies to a group of elements in the alloy, such as impurities, if their content exceeds 0.5 mass% because such impurity content would have a considerable influence on the properties of a metal alloy, as stated by the appellant himself.

In this context, the appellant cites decision T 184/05, which again refers to decision T 201/83 (OJ EPO 1984, 481) stating (point 12 of the Reasons, last sentence) that "an amendment of a concentration range in a claim for a mixture, such as an alloy, is allowable on the basis of a particular value described in a specific example, provided the skilled man could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree". However, the present application and the specific examples described therein are totally silent with regard to impurities and their concentration range, and only in the general part of the description, as originally filed, is it mentioned that other minor components may - optionally - be included up to a maximum content. Therefore, the the Board finds that the case law referred to by the appellant - which relates to the extraction of a particular value of a concentration range of an alloy from a given example comprising further features - is considered not to be applicable in the present case, which only excludes an optionally mentioned solder alloy component. In particular, the Board finds that deletion of such optional alloy composition with a limited content of other minor components cannot open the door to an interpretation of the claimed subject-matter which would include an unlimited or unreasonable amount of impurities.

Moreover, as argued by the appellant, it was common practice for the skilled person that elements in the alloy composition which do not add up together to 0.5 mass% of the alloy were not specified but just generally referred to as other components. In the absence of any citation of other minor components in claim 1, reading claim 1 with a mind willing to understand (which comprises the term "in which the rest is Sn"), the skilled reader would at the most assume an insignificant amount - far below 0.5 mass% - of unavoidable components such as unavoidable impurities.

2.6 The Board thus cannot see that the European patent has been amended in such a way as to extend the protection it conferred.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T182712.20140919. The whole decision can be found here. The file wrapper can be found here. Scan by Jamie obtained via Flickr; Original source The Toronto World, May 17, 1902.

Tuesday, October 07, 2014 T 1779/09 - Escape from the inescapable trap

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

Summary of Facts and Submissions [paraphrased]

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

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

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

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

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

Reasons for the Decision

1. The appeal is admissible.

(...)

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

(...)

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

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

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

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

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

(...)

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

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

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

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

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

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

(...)

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

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

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

Friday, August 29, 2014 T 0287/11 - A question of law?

This appeal decision relates, among other things, to extension of protection conferred and, in that context, a request to refer the some portions of the case to the Enlarged Board of Appeal. The appeal has been filed by the proprietor against a decision of the Opposition Division. According to the Opposition Division all claims of the requests contravened the requirements of Article 123(3) EPC. The granted claim 1 comprised the feature "a water-soluble polyalkylene glycol  in an amount of 5% to 90% by weight", while the claims of the requests in opposition were not limited to this feature. The main request of the appeal was equal to auxiliary request of the opposition proceedings. The Appellant cited some case law decisions which are, according to his opinion, in favor of his request to set the decision of the Opposition Division aside. During oral proceedings before the Board of Appeal the Appelant requested, should the main request be considered not allowable, to refer a question to the Enlarged Board of Appeal to ensure a uniform application of law since such a decision would be in contradiction to the cited case law.

Citations from the decision:


Summary of Facts and Submissions
[ ... ]
VI. The Appellant argued [before the Board of Appeal] that the amendments made to the independent claims of all requests did not lead to an extension of the protection conferred by the patent as granted. Taking claim 1 as being exemplary for all the independent claims of each of these requests, claim 1 always specified inter alia that the composition comprised from 5% to 90% by weight of a water-soluble polyalkylene glycol of the same definition as that given in granted claim 1, such that it did not encompass compositions having a content of more than 90% by weight of such water-soluble polyalkylene glycols. The Appellant cited decisions T 999/10 and T 009/10 in support of its arguments for the main request, and T 172/07 (none of these decisions being published in OJ EPO) in support of its arguments for auxiliary request 1, in this respect. During the oral proceedings before the Board, it also requested that should the main request be considered not allowable, the following question be referred to the Enlarged Board of Appeal in order to ensure uniform application of the law, since such a decision would be in contradiction to those of decisions T 999/10 and T 009/10: "Where a granted claim relating to a composition comprising certain components specifies an amount range for a class of specific components and that claim is later amended in opposition such that the composition is limited with an additional feature versus granted claim stating that the composition must comprise specific species from that class, does that result in a contravention of A.123(3) EPC in view of the amount range for the component class automatically applying to only those specific species now listed and not applying to those specific species now listed AND the component class?"
The Appellant argued that the subject-matter of the main request and auxiliary request 1 was clear, the skilled person understanding the definitions of R and A as mixtures of methyl and hydrogen in the context of polymer chemistry to mean that these two variables were merely independent of one another. It argued that document (6) (see point VII below) was late-filed and that in any case, the wording requiring that the polyalkylene glycol was water-soluble had been in the claims as granted. As such, any alleged lack of clarity did not arise out of the amendments made, with the consequence that the Board had no power to examine lack of clarity at this stage of the proceedings.

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Reasons for the Decision

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Main request
2. Amendments (Article 123(3) EPC)

2.1 Article 123(3) EPC requires that the claims of a patent as granted may not be amended during opposition/appeal proceedings in such a way as to extend the protection conferred by the patent as a whole. In order to decide whether or not an amendment satisfies this requirement, it is necessary to compare the protection conferred by the claims as granted, with that of the claims after amendment.

2.2 Thus the question to be answered is whether the claims of the main request cover any compositions or methods which were not covered by the claims as granted. The following analysis is for claim 1 of the main request compared to claim 1 as granted, similar considerations applying to independent claims 4 to 6, 15 and 16 of the main request vis-à-vis the respective claims 4, 6, 7, 16 and 17 as granted.

2.3 Claim 1 of the patent as granted is directed to an aerosol hair styling composition comprising inter alia (a) from 5% to 90% by weight of a water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4.

2.3.1 The use of the term "comprising" in connection with a numerical range defining the amount of a component implicitly means that the protection conferred by the claim does not extend to compositions containing that component in amounts outside the defined range (see T 2017/07, Headnote, ibid.).

2.3.2 In the present case, this means that the protection conferred by claim 1 as granted, as far as component (a) is concerned, is restricted to aerosol hair styling compositions containing not less than 5% and not more than 90% by weight of any water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4, which finding has not been contested by the Appellant.

2.4 Claim 1 of the main request differs from claim 1 as granted by virtue of the insertion after the definition of the component (c) of the feature:
"wherein the water-soluble polyalkylene glycol conforms to the


 



wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35".

2.4.1 In view of the wording "wherein the water-soluble polyalkylene glycol conforms to the formula" (emphasis added), the component (a) is to be regarded as restricted to those specific water-soluble polyalkylene glycols of the formula recited, such that the amount of 5% to 90% by weight of water-soluble polyalkylene glycol applies to this more restricted definition only, and no longer to the broader definition.

2.5 Thus, claim 1 of the main request no longer requires, as does claim 1 as granted, that the composition contains at most 90% by weight of polyalkylene glycols of the broader definition given in granted claim 1, since the definition of the composition in claim 1 is "open" due to the characterization by the term "comprising", i.e. the composition can contain in addition to the compounds specified in the claim any other compounds. Therefore, the composition of claim 1 of the main request may comprise in addition to water-soluble polyalkylene glycols of the specific formula now defined, any other water-soluble polyalkylene glycol as defined in granted claim 1 in an undefined amount, whereas claim 1 as granted restricted the amount of these compounds to no more than 90% by weight.
 
2.6 The protection conferred by claim 1 according to the main request is thus extended in comparison with the protection conferred by claim 1 as granted. The Appellant did not argue that the protection conferred by claim 1 of the main request was covered by any of the other independent claims as granted, nor does the Board hold that this is the case.

2.7 For similar reasons, independent claims 4 to 6, 15 and 16 of the main request extend the protection conferred by the respective claims 4, 6, 7, 16 and 17 as granted.

2.8 The Appellant argued on the basis of the conclusions reached in decision T 999/10 that since claim 1 of the main request was drafted in "cascade form", i.e. the claim contained both a broader and a narrower definition of a particular group of compounds (see T 999/10, points 3.4 and 3.5 of the Reasons), the weight limitation of 5% to 90% applied to both definitions of the component (a) given therein, with the consequence that the total amount of water-soluble polyalkylene glycol could not fall outside the amount of 5% to 90% by weight. The Appellant also submitted that in the case underlying decision T 009/10 (see point 2.1 of the Reasons), a claim which had been amended similarly vis-à-vis the granted version was considered not to contravene Article 123(3) EPC.
 
2.8.1 However, in view of the wording "wherein the water-soluble polyalkylene glycol conforms to the formula", the Board considers that the water-soluble polyalkylene glycol of component (a) is defined as being of that specific formula, and not, as suggested by the Appellant as comprising a water-soluble polyalkylene glycol of this formula. Thus, the Board holds that the first, broader definition of component (a) in claim 1 is restricted by the second narrower definition of the specific formula, such that the amount of 5% to 90% weight applies to the narrower definition only. In view of this interpretation of the claim, the Board sees no need to turn to the description in order to interpret the claim, as was the case in decision T 009/10.
 
2.8.2 Concerning decision T 999/10 cited by the Appellant, claim 1 of the main request thereof relates to an adhesive comprising inter alia 45 to 85% by weight of one or more styrene block copolymers, wherein the styrene block copolymer is a copolymer of the type styrene/isoprene/styrene (SIS), claim 1 as granted relating to an adhesive comprising inter alia 45 to 85% by weight of one or more styrene block copolymers, said copolymer not being further defined (see T 999/10, points I and IX of the Facts and Submissions). Said decision states (see point 3.4 of the Reasons) that in view of the sequential ("cascade") formulation of the claim, there was no doubt as to the "intention" of the patent proprietor that no other block copolymers other than the specific SIS-type may be present in the adhesive. The decision goes on to state (see point 3.5 of the Reasons) that even if the claim were to be interpreted as not excluding the presence of other block copolymers, the sequential formulation chosen by the patent proprietor meant that the condition limiting the amount of block copolymer defined in the broader manner as in granted claim 1, should also be fulfilled in the amended claim.
However, the scope of protection should not be interpreted in the light of the intention of the drafter of a claim, since this is a subjective criterion, but rather on the basis of the meaning generally accepted by the person skilled in the art to the technical features defined in said claim, such that this Board is not convinced by argumentation based on any alleged intention of a drafter of a claim.
 
2.9 Thus, the Board concludes that the scope of protection conferred by claim 1, and by the same token that of independent claims 4 to 6, 15 and 16, has been broadened vis-à-vis that of the claims as granted, such that the main request does not satisfy the requirements of Article 123(3) EPC.
 
3. Request for referral of a question to the Enlarged Board of Appeal
 
3.1 Under Article 112(1)(a) EPC, a board of appeal may, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer a question to the Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law, or if an important point of law arises.
 
3.2 In the present case, the Appellant requested that if the Board did not allow its main request for reasons of contravening Article 123(3) EPC, such a decision would be contradictory to decisions T 999/10 and T 009/10, such that a question (see point VI above for exact formulation) regarding whether particular amendments to granted claims relating to compositions comprising a class of components and specifying an amount range thereof contravened Article 123(3) EPC should be referred to the Enlarged Board of Appeal in order to ensure uniform application of the law.
 
3.3 The Board holds, however, that the question formulated by the Appellant concerns the interpretation of technical features of a claim of the specific patent in suit, this not being a question of law but primarily a technical issue (cf. T 181/82, point 14 of the Reasons, OJ EPO 1984, 401), because it requires the skilled person to interpret technical information, namely whether amendments to a chemical definition have an impact on the broadness of the claim.
 
3.4 Hence, the Appellant's request to refer a question to the Enlarged Board of Appeal is rejected.

Auxiliary request 1

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5. Amendments (Article 123(3) EPC)

5.1 Compared with claim 1 as granted, the definition of component (a) in claim 1 according to auxiliary request 1 is supplemented by the following feature:
"wherein the water-soluble polyalkylene glycol conforms to the formula





wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35",
and after the definition of component (c), the following feature has been added:
"wherein the total amount of water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4 is in the range of 5% to 90% by weight".

5.2 The amended claim thus requires that a water-soluble polyalkylene glycol of the specific formula is present within the amounts given, but also that the total amount of water-soluble polyalkylene glycols of the broader definition indicated in the claim is in the range of 5% to 90% by weight. Said wording renders it unambiguous that no more and no less than the amount of a water-soluble polyalkylene glycol as defined in granted claim 1 may be present in the aerosol hair styling composition, and thus overcomes the problem of extension of protection inherent in the main request.

5.3 Thus, the Board concludes that the scope of protection conferred by claim 1, and by the same token that of independent claims 4 to 6, 15 and 16, has not been broadened vis-à-vis that of the claims as granted.

5.4 Thus, the requirement of Article 123(3) EPC is satisfied, the Respondent also having no objections under Article 123(3) EPC to the claims of this request

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This decision has European Case Law Identifier: ECLI:EP:BA:2014:T028711.20140401. The whole decision can be found here. The file wrapper can be found here.
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