Monday, June 17, 2019 T 1391/15 - Deviations and displacements

An interesting decision concerning what the skilled person would directly and unambiguously derive from the application as filed, when disputes concerning translations of terms from a non-official language arise.

In the present case, part of the objections raised by the opponent-appellant stem from an (alleged) error in the original Italian language application and a supposedly incorrect translation into English of another term in the original application.

More specifically, whereas the original application (concerning a system and apparatus for dehumidifying walls) mentioned “spostamenti” which was subsequently translated into English as "movements", the patentee later amended this term to “differences” based on the corresponding Italian term “scostamenti”, arguing that this amendment was an obvious correction within the meaning of Rule 139 EPC. The opposition division agreed.

While the Board considered it plausible, perhaps even probable, that the term "spostamenti" was erroneous, it found that within the context of the patent spostamenti/movements could in fact meaningfully refer to movements of the apparatus of the invention over the wall; accordingly, it found that the strict conditions for allowing the correction under Rule 139 EPC were not met. Regardless, the Board considered that the overriding issue was in fact whether or not this amendment complied with Article 123(2) EPC. In this regard, the Board argued that it would be clear to the person skilled in the art reading the application as filed that operation of the claimed apparatus would implicitly result in a “difference” or “differences” in certain observed values. Accordingly, in the Board’s view, the term "(in function of the) differences" in claim 1 would not present the skilled person with any new information not directly and unambiguously derivable from the application as filed, thus allowing (under Art. 123(2) EPC) the amendment of (spostamenti) ”movements” to (scostamenti) ”differences”.

The Board further considered the term “monitor” - rather than "control" - in claim 1 based on the original “controllo/controllare” not to contravene Article 123(2) EPC in view of the disclosure of the patent as a whole, which discloses both monitoring and controlling of the dehumidifying process.

Friday, August 18, 2017 T 1921/12 - Who should sign a 'decision'

In this decision the Board of Appeal is annoyed about the fact that a Rule 140 Correction of a decision of the Examining Division (signed by the whole division) and a Rule 139 Correction of an obvious error (signed only by the primary examiner in the opposition period, i.e. after grant; G 1/10 stopping this process was not yet issued) are not in the public part of the file.

The Board sees the R.139 correction as not valid since no formally correct decision is taken; it would require the signature of the whole Examining Division.   

In the decision several aspects of the problem-solution approach are re-discussed. The Board is also not keen on hearing witnesses. 

Friday, April 29, 2016 T 2523/11: attempt to voluntarily reduce scope of protection without support in application as filed

In opposition the patent was revoked because there was no support for a range of "0.2mm to 0.8mm diameter for warp and weft yarns". The patent application as filed has support for: "warp yarns having a diameter in the range of 0.20 mm to 0.80 mm and weft yarns having a diameter in the range of 0.20 mm to 1.0 mm". Thus, the proprietor reduced the scope of protection by giving up the diameter range from 0.8mm to 1.0mm for the weft yarns. 

During the Opposition procedure the proprietor used G 1/93 to argue that the scope of protection of features without a technical contribution may be reduced without violating Art. 123(2). The Opponent and the Opposition Division did not share that opinion. 


An appeal was filed with several requests in which the proprietor tried several strategies to overcome the A.123(2) and (3) problem. In the main request a correction of an obvious error was requested (change 1.0 to 0.8mm). In the auxiliary requests several variations of (undisclosed) ranges / values were requested. The outcome of the appeal procedure is that the scope of protection is now reduced to "infinitely small".