A. Claims
1. Clarity of claims – indication of all essential features
In T 2574/16 claim 1 was directed to a method of accessing electronic information, the last step of which was modifying at least one graphical element on the selected portal document based upon the simulation graphical element that is selected and the operational electronic information to thereby simulate an operation of at least one of the operational elements of the at least one operational system. The examining division had found that this last step was unclear (Art. 84 EPC) and caused the claimed invention to be insufficiently disclosed (Art. 83 EPC). One of its objections was that an example disclosed in the description in combination with two figures made it clear that the invention was not limited to simulating an operation in response to the selection of a single simulation graphical element but encompassed simulating an operation in response to the selection of more than one simulation graphical element. In view of that example, claim 1 could not be interpreted as being restricted to displaying known modifications stored in the operational electronic information.
The board noted that the claim did encompass elaborate simulations going beyond any of the examples disclosed in the application as filed. But this in itself was not a problem of lack of clarity or insufficiency of disclosure. In fact, it was normal for a claim to define the scope of protection in terms that positively define the essential features of the invention. Any particular embodiment falling within the scope of the claim could have further characteristics not mentioned in the claim or disclosed in the application (and could even constitute a patentable further development). In the case in hand, any method falling within the scope of claim 1 included a step of modifying at least one graphical element to thereby simulate an operation of at least one operational element. This simulation could be very elaborate but also very simple. The contribution of this step to the claimed invention was essentially that some simulation took place, not that such simulation was made possible for the first time. Given at least one operational element of an operational system, the skilled person would have no difficulty in implementing some simulation in the form of at least one modification to at least one graphical element. The contribution made by the step was therefore sufficiently disclosed.
2. Clarity of a claim specifying a norm or standard
In T 3003/18 opponents 2 and 3 had submitted in respect of previous requests that the definition of the claimed subject-matter by reference to connectors designated by standards or norms was not clear, among other reasons because the corresponding standards or norms included different versions and changed over time and the structural and functional features of the claimed connectors were not clear (cf. T 1888/12, T 783/05). Against this the patent proprietor argued that references to standards in claims were not generally unclear per se; what should be considered in this case were the features of the standard as they related to the claimed invention (cf. T 2187/09, T 1196/15).
According to the board, the clarity of a claim specifying a norm or standard depended on the circumstances of the case, and in particular on the claimed subject-matter. The MTRJ connector specified in claim 1 designated a well-known standardised family of connectors having, on the one hand, specific features that could differ among the connectors of the family and could change over time according to different specific versions of the corresponding standard or norm and, on the other hand, a series of common (or, as noted by the opposition division, generic) features that ensured a predetermined degree of compatibility and interchangeability between the different connectors of the same family. Moreover, these connectors were commonly and generally designated "MTRJ connectors" in textbooks, reference books and the like, without reference to any particular version of the corresponding standard or norm. In addition, in the present case – and contrary to other cases, such as T 1888/12 and T 783/05 (see above) – the features of the MTRJ connector relevant in the technical context of claim 1 were not the specific, but the common features mentioned above, and for this reason the skilled person would understand what was meant in the claimed context by the optic connector being an "MTRJ connector". The same considerations applied to the SC and the LC connectors defined in claim 1.
3. Claims supported by the description
In T 695/16, while the examining division had found claim 1, directed to a sprayhead, to be clear and concise, it had considered neither the figures nor the description of the preferred embodiment to describe in detail at least one way of carrying out the invention claimed (R. 42(1)(e) EPC). The claims were broader than justified by the extent of the description and drawings and were thus not supported by the description (Art. 84 EPC). It had refused the application on this basis.
Setting the decision aside, the board noted that feature a ("projection" of the circular collar) and feature b ("non-rotating feature" of the inner surface of the over-cap) in the characterising part of claim 1 were indisputably clear to the skilled person, i.e. their structural form, function and interrelation were clear. It was further undisputed that in the description there was at least a verbatim repetition of the characterising features of claim 1. This meant that said features were also disclosed, obviously also in a clear manner, in the description, thereby supporting the wording of claim 1, and the scope of the claims was not broader than justified by the extent of the description. What the examining division considered to be the "missing link" between claim 1 and the description that rendered claim 1 not supported was the lack of denomination of features a and b in the figures and in the text of the description referring to the example presented therein. However, since features a and b were per se clear, a specific denomination of these in the part of the description directed to the specific embodiment depicted in the figures was not mandatory. Any reading of the description and viewing of the figures had to be done with the knowledge that features a and b were present and interacted to produce audible signals. The skilled person would recognise the relevant features in the figures, and thereby have a detailed description of them, including their location and their shape. The sprayhead depicted in the figures met the requirements of R. 42(1)(e) EPC in that one way of carrying out the invention claimed was illustrated. In conclusion, both this provision and Art. 84 EPC were met.
4. Claim terms with a well-established meaning in the art – use of the description
In T 1642/17 the sole reason for the application having been refused was that it did not meet the requirements of Art. 84 EPC. In particular, the examining division had held that certain definitions in a document cross-referenced in the description were essential to determine the boundaries of the claims and must be introduced into the description, which should be self-contained. It had also referred to established case law that a patent document may be its own dictionary.
The board understood the examining division's objection to be that the claims lacked clarity when read and interpreted in the light of the description. However, it was established case law that where the claims and the terms used in them are clear when read on their own, for instance because they have a well-established meaning in the art, the unambiguous claim wording must be interpreted as it would be understood by the skilled person without the help of the description (see T 2221/10 and T 197/10; also Case Law of the Boards of Appeal, 9th ed. 2019, II.A.6.3.1). As set out in the latter decision, this applied in the event of a discrepancy between the claims and the description. In the case in hand, the board agreed with the examining division that the terms used in the claims had a "generally accepted meaning" to the skilled person. In view of this and the above case law, it concluded that the claims met the clarity requirements of Art. 84 EPC.
It followed that the presence of a cross-reference in the description containing a definition of these terms should not be treated differently to a case where the description itself contains such a definition. In neither case would the effect of the definition of terms which already have a well-established meaning in the art have a negative effect on the clarity of the claims. Indeed, neither the description nor a cross-reference could change a generally accepted meaning of terms in a claim. The board also noted that the parallel drawn by the examining division with the case where the description had to be adapted to ensure compliance with Art. 83 EPC was incorrect, because Art. 84 EPC referred to the claims, whereas Art. 83 EPC referred to the disclosure of the patent application. Instead, to ensure that the application complied with the support requirement of Art. 84 EPC, the examining division could request that the description be adapted to be in line with the claims (see "Case Law of the Boards of Appeal", 9th ed. 2019, II.A 5.3).
B. Unity of invention
1. Determining whether one or several "inventions" – complete search – refund of further search fee
In T 1414/18, the grounds in the examining division's refusal decision consisted of a mere reference to its final communication under Art. 94(3) EPC, in which it had continued to maintain its objection of non-unity, stated that the application would be refused and expressed the view that the applicant's request for a refund of the second search fee would also be refused. The applicant withdrew its request for oral proceedings and requested an appealable decision "according to the state of the file".
The board disagreed with the examining division's approach to the question of unity. It was only if the application related to more than one "invention" that the notion of "a single general inventive concept" (Art. 82 EPC) and the concept of the "same or corresponding special technical features" (R. 44(1) EPC) had to be assessed for this purpose – see also catchword (1). It first had to be determined whether the application covered only one or several "inventions". The underlying "invention(s)" was (were) to be established on the basis of the technical problem(s) to be solved according to the description (e.g. W 11/89, OJ 1993, 225; W 6/97; T 173/06; T 1888/09; also Guidelines for Examination of November 2017, e.g. F-V, 8, second paragraph, and 8.1, penultimate sentence). From the board's assessment, the original application had to be considered as relating to one invention only. The fact that the main aspect of the invention was predominantly covered by one (more limited) independent claim did not automatically mean that the complementary (broader) independent claim related to another invention. In particular, it did not mean that two different searches had to be carried out to cover both. A complete search should not be restricted to the claims, regardless of how broad or limited they were, but give due consideration to the underlying description and the drawings (Art. 92 EPC). The board concluded that both claims 1 and 2 as originally filed and claims 1 and 2 of the main request (with only added reference signs and minor re-wording) were unitary (Art. 82 EPC).
Concerning the requested fee refund, the board held that the decision to refuse a patent application may be understood to implicitly contain the decision to refuse the refund of a further search fee, if the examining division's intent is clear – see also catchword (2). Although a decision on the refund of further search fees should be indicated in the order of the written decision (e.g. T 756/14), the examining division's intention to refuse the request had been clear from their latest communication. A further search fee was to be refunded by the examining division or the competent board (R. 64(2) EPC, R. 100(1) EPC) if the search division's invitation to pay it was unjustified. The assessment was to be based on the facts and arguments presented therein and on the originally filed claims (inter alia T 188/00, T 1476/09, T 2526/17). As unity of invention on the basis of the originally filed claims had been incorrectly denied by the examining division, the fee was to be refunded.
C. Sufficiency of disclosure
1. Reproducibility – neural network
In T 161/18, the application used an artificial neural network to transform the blood pressure curve measured on the periphery into the equivalent aortic pressure. As regards how the neural network according to the invention was trained, the application disclosed only that the input data should cover a wide range of patients differing in age, sex, constitution type, state of health, etc. to prevent the network from becoming specialised. However, it did not disclose what input data were suitable for training the network or even a suitable set of data for solving the technical problem in question. As a result, the skilled person could not reproduce the network's training and so could not carry out the invention. The invention, which was based on automated learning, in particular in connection with an artificial neural network, was thus insufficiently disclosed, because the training it involved could not be reproduced owing to a lack of disclosure in this regard. See also chapter I.C.4. "Effect not made credible within the whole scope of claim – neural network".
2. Level of disclosure required for medical use – plausibility
In T 184/16 the invention concerned novel compounds having inhibitory activity against the sodium dependant transporter (pharmaceutical compound). The mechanism underlying the treatment of diseases linked to diabetes, and thus for obtaining the claimed therapeutic effect, was based on the inhibition of the sodium-dependent glucose transporter ("SGLT"), and in particular of SGLT2. The link between the therapeutic effect to be obtained according to claim 12 (medical use claim) and SGLT2 inhibition was not contested by the appellant (opponent). The appellant argued that it was not plausible in the application as filed that the claimed therapeutic effect could be obtained using the claimed compounds.
The board acknowledged that a precondition for taking into account post-published evidence to demonstrate a certain effect was that it was already plausible at the filing date that said effect was obtained. Plausibility was acknowledged, and post-published evidence was taken into account, for example in cases where there were no "prima facie serious doubts" about plausibility (T 108/09, T 1760/11, T 919/15). By contrast, in T 1329/04 there were prima facie serious doubts. In the case in hand, the application as filed did not contain any experimental evidence as regards the disputed plausibility, i.e. the plausibility of the claimed compounds being SGLT2 inhibitors. It was thus necessary to determine whether plausibility could nevertheless be acknowledged in view of the common general knowledge and the prior art. The board had no indication, that there was prima facie any serious doubt that the claimed therapeutic effect could be obtained; nor did the appellant argue that any such indication existed. Furthermore, there was no a priori reason or any indication in the common general knowledge that the claimed therapeutic effect could not be obtained. The board considered it plausible that the therapeutic effect was indeed obtained.
The board held that post-published evidence D4 (comparative examples filed by the respondent/patent proprietor) could be taken into account to support the disclosure in the patent application. The board acknowledged that D4 indeed provided data for SGLT2 inhibition only. However, the claimed therapeutic effect was obtained by SGLT2 inhibition alone. The fact that SGLT1 inhibition might contribute to this effect as well and was not tested in D4 was not relevant. Furthermore, the appellant bearing the burden of proof for its assertion, the board could not conclude, in the absence of any such evidence, that compounds with large substituents were not suitable to obtain the therapeutic effect defined in claim 12. Sufficiency of disclosure was considered to be satisfied.
Post-published D4 and plausibility were also addressed in respect of inventive step and D4 was also taken into account. See also chapter I.C.1. "Distinction between plausibility and obviousness".
D. Priority
1. Right of priority of the applicant or its successor in title
1.1 Identity of applicants – multiple applicants in the priority application
In T 844/18 one of several applicants for certain US provisional applications from which priority was claimed was missing from the application leading to the patent in suit. No question of succession in title arose. Applying the long-established "all applicants" (or "same applicants") approach in line with the boards' case law, the opposition division held that priority had not been validly claimed and revoked the patent for lack of novelty.
The board formulated the core issue thus: "A and B are applicants for the priority application. A alone is the applicant for the subsequent application. Is a priority claim valid even without any assignment of priority right from B to A?" The appellants' (patent proprietors') three lines of attack on the EPO's "all applicants" approach failed to convince the board, and the appeal was dismissed.
The first question raised was whether entitlement to priority should be assessed by the EPO. The board concluded that the instances of the EPO were empowered and obliged to assess the validity of a priority right claim as required by Art. 87(1) EPC, and that this included examining the issue of "who" concerning priority entitlement. Art. 87(1) EPC did not require that the "any person" having filed the patent application was legally entitled to do so, merely that they had done so. The board also rejected arguments based on Art. 60(3) EPC by analogy. The EPO only carried out a formal assessment of the person who filed the application. This was, moreover, not inconsistent with its approach to succession in title, as the appellants had claimed. The EPO only assessed whether a successor in title was the successor in title of the original applicant, which indeed involved a substantial legal assessment but was not an assessment of legal entitlement to a priority right.
Secondly, concerning the interpretation of "any person" in Art. 87(1) EPC, the board found the ordinary meaning of the term in this context to be ambiguous in all language versions (cf. Art. 4A(1) Paris Convention, Art. 31(1) Vienna Convention). It agreed with T 15/01 that the object and purpose of the Paris Convention (cf. Art. 31(1), 33(4) Vienna Convention) was to "safeguard, for a limited period, the interests of a patent applicant in his endeavour to obtain international protection for his invention" and that "the international priority provisions contained in the Paris Convention ... assist the applicant in obtaining international protection for his invention". The appellants relied on those statements in T 15/01 to argue that the Paris Convention's object and purpose favoured their (non-restrictive) interpretation of "any person". This would allow A alone to file another application in another country claiming the same invention without involving B, whereas the "all applicants" approach could lead to the loss of the priority right, and hence possibly of the patent application, where one of the applicants refused to join in as an applicant for the subsequent application. The board reasoned otherwise: the object and purpose of the Paris Convention could not form the basis for favouring one or some persons to the detriment of all other persons who had originally formed part of the group filing a patent application. Furthermore, an applicant could progress an application before the EPO without the active participation of the other applicants named in it. The current practice protected applicants from being "left out" and being forced to resort to international litigation to protect their rights. The board further noted that the priority provisions of the Paris Convention had remained essentially unchanged since 1883 and that there had been no EPO or national case law clearly adopting the appellants' interpretation. The bar for overturning long-established case law and practice should be very high because of the disruptive effects a change could have. The continuation of such long-standing and rationally based practices could be considered an aspect of legal certainty.
Thirdly, with regard to the applicable law, the board held that it was not, as argued by the appellants, the national law of the place of filing of the priority application (here US law) that determined who qualified as "any person", but the Paris Convention, to which the US was a party and which was thus part of the "supreme Law of the Land" (Art. VI, clause 2, US Constitution). The board also drew on the travaux préparatoires of the Paris Convention from 1880 to conclude that this treaty determined who "any person" was, and that this determination was a purely formal one. The Paris Convention and the EPC provided self-contained definitions of the person claiming priority. This person was defined by the action that they performed, i.e. filing a first application. Whether they were the inventors or were actually entitled to be the applicants for this patent were not issues requiring investigation under the Paris Convention. As to the use of US provisional applications to claim priority for a European patent application, the board noted that applicants wishing to do so should be aware of the difficulties that they might face. This was a consequence of the US's adhesion to the Paris Convention.
E. Amendments
1. Article 123(2) EPC – added subject-matter
1.1 Disclosure derived from the whole of the application as filed
In T 1121/17 the application as filed concerned a composition comprising a peroxide source (in amounts defined by a range) and an adhesion system. Claim 1 of the main request differed from claim 1 of the application as filed inter alia in that it introduced a feature that limited the nature of the peroxide source (feature (ii)).
In first-instance proceedings, the examining division had raised an objection under Art. 123(2) EPC with respect to the then pending auxiliary request against a limitation corresponding to feature (ii). In its reasoning the examining division relied on Guidelines section H-IV, 3.5 (November 2016 version; same paragraph in H-IV, 3.4 of the November 2019 version) dealing with allowability of amendments under Art. 123(3) EPC. This section related to cases in which the initial claim was directed to a composition comprising a component in an amount which was defined by a numerical range of values and in which this claim was then amended by restricting the breadth of that component. In a claim directed to an openly defined composition such a restriction could have the effect of broadening the scope of protection of the claim. The examining division concluded from this that such amended claims contained added subject-matter, as restricting the breadth of the component meant that certain materials were no longer limited by the claim, and therefore could be present in amounts which were excluded from the claim as originally filed.
The board however emphasised that the criterion referred to in the Guidelines was inappropriate for the assessment of compliance with Art. 123(2) EPC. The relevant question for the purposes of Art. 123(2) EPC was whether the amendments remained within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, from the whole of the application as filed ("gold standard" of G 2/10, OJ 2012, 376). An amendment having the effect of broadening the scope of protection of a claim as originally filed did not infringe Art. 123(2) EPC if the amended subject-matter derived directly and unambiguously from the whole of the application as filed. In the case in hand the amendment at issue resulted from the literal incorporation of dependent claim 3 into claim 1 and therefore did not present the skilled person with new technical information.
1.2 Forming a range by combination of end-points of disclosed ranges
In T 113/19 the board explained that, although the sole example was not covered by the newly claimed range, this did not mean that range could not be directly and unambiguously derived from the application as filed. In its view, a person skilled in the art reading the application as filed in the case in hand would regard a composition as having the required property if it had (for the feature in question) a value that was at least equal to the lower threshold of the general range, but would deem those compositions with values above the upper threshold to be even better. The board concluded that the range as claimed – which was limited to what could be deemed satisfactory and excluded anything considered even better – was directly and unambiguously inferable from the teaching of the application as filed.
1.3 Selection from lists – converging alternatives
In T 1621/16 the board observed that it was established case law that, under certain circumstances, amendments based on multiple arbitrary selections from lists represented an extension of the content of the application as filed under Art. 123(2) EPC (see e.g. T 727/00). However the board noted that most decisions following this well-established approach related to amendments based on lists of non-converging alternatives (i.e. mutually exclusive or partially overlapping elements). By contrast, in cases where the amendments were based on selections from lists of converging alternatives (i.e. lists of options ranked from the least to the most preferred, wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list), the conclusions had been less consistent (see T 812/09, T 2237/10, T 27/16 and T 615/95).
Moreover, the boards had generally regarded amendments based on multiple deletions of elements from one or several lists of (non-converging) alternatives as an allowable restriction of the scope of protection under Art. 123(2) EPC, provided that such amendments did not result in singling out particular combinations of specific meaning (see T 615/95 and G 1/93, OJ 1994, 541). The board considered that selections from lists of converging alternatives should not be treated in the same way as selections from lists of non-converging alternatives for the following reasons:
In the case of non-converging alternatives, each alternative represented a distinct feature and therefore selecting specific elements from such lists led to a singling out of an invention from among several distinct alternatives, which might provide an unwarranted advantage if there was no way to anticipate which of the different inventions would eventually be protected. On the other hand, when fall-back positions for a feature were described in terms of a list of converging alternatives, each of the narrower elements was fully encompassed by all the preceding less preferred and broader options. Consequently, the elements of such a list represented more or less restricted versions of one and the same feature. Thus, amending a claim by selecting one element from a list of converging alternatives did not lead to a singling out of an invention from among a plurality of distinct options, but simply to a subject-matter based on a more or less restricted version of said feature. There was thus an analogy between selecting an element from a list of converging alternatives and deleting options from a list of non-converging alternatives (as in T 615/95).
The board emphasised that the above considerations did not allow the conclusion that amendments based on multiple selections from lists of converging alternatives necessarily met the requirements of Art. 123(2) EPC. It needed to be assessed whether the specific combination resulting from the multiple selections was supported by the content of the application as filed. For the board, at least the following two conditions needed to be met: i) the combination should not be associated with an undisclosed technical contribution, that is, no unwarranted advantage should be derived from linking the specific combination of more and less preferred alternatives to an inventive selection which was not supported by the application as filed; and ii) the combination should be supported by a pointer in the application as filed. Such pointers could be provided by the example(s) (as in T 27/16 and T 615/95) or by specific embodiment(s) of the application, as this/these generally represented the most detailed and preferred form(s) of the invention.
1.4 Disclosed disclaimers
In T 1525/15 the appellant's objection related to a negative feature (or disclaimer) of both independent claims ("free of a micro-embossing design"). The board observed that there was no verbatim disclosure of this feature in the original application. The feature was added during the grant proceedings to establish novelty over document D1, which was state of the art according to Art. 54(3) EPC. The board emphasised that such an amendment was allowable: if the negative feature was implicitly disclosed as such in the original application or if the disclaimer was undisclosed in the original application but complied with the requirements formulated in decision G 1/03 (OJ 2004, 413) of the Enlarged Board of Appeal. In the case in hand the board came to the conclusion that the negative feature was implicitly but nevertheless directly and unambiguously disclosed in the original application. Incidentally, the board also noted that the relevant test for the assessment of amendments was the so-called "gold standard" test (see G 2/10, OJ 2012, 376); the test known as the "novelty test", which was sometimes used in the early days of the boards of appeal, was no longer used (see Case Law of the Boards of Appeal, 9th ed. 2019, II.E.1.3.7). As the negative feature was disclosed as such in the original application, it was not necessary to examine whether the conditions set out in decision G 1/03 (and confirmed in G 1/16, OJ 2018, A70) were fulfilled.
2. Extension of the protection conferred
2.1 Change of claim category
In T 653/16 the appellant (opponent) took the view that changing the category of claim 1 as granted from one directed to a device (floatable harbour power supply) to a method claim for carrying out a work method (method for supplying external power to a ship in the harbour) using the device extended the scope of protection since the change encompassed an additional physical entity in the form of a ship. The board disagreed, noting that, when a claim category was changed, the scope of protection provided by the claim categories in the previous version of the patent had to be compared with that conferred by the new claim category introduced by the amendment. In the case in hand, the patent as granted had solely contained claims directed to a physical entity per se. The Enlarged Board of Appeal had acknowledged that it was a fundamental principle of the EPC that any patent which claimed a physical entity per se conferred absolute protection upon that entity, i.e. for all uses of the entity, whether known or unknown (G 2/88, OJ 1990, 93). Contrary to the appellant's opinion, the scope of protection conferred by the patent as amended in line with auxiliary request 2 did not extend to cover the ship since that request was no longer directed to physical entities – for want of any device claims – and thus could not confer protection on any entity.
F. Divisional applications
1. Designation of contracting states in a divisional application
In J 12/18, interpreting Art. 76(2) EPC in accordance with the recognised rules of interpretation, the Legal Board confirmed that under this provision only those states that had been designated in the earlier application at the time of filing the divisional could be designated in the divisional. A designated state forfeited in the parent application at the time of filing the divisional could not be revived in the divisional one. The fact that the application was referred to as a "divisional" application under Art. 76(2) EPC implied by definition that it was divided from the earlier application and thus at the time of filing it could not be broader than the earlier application it derived from. Only after the filing of the divisional application was its fate separated from changes concerning the earlier application. Likewise, in the context of the required systematic interpretation of Art. 76(2) EPC the Legal Board noted that the nature of a divisional application, which was derived from a parent application, thereby benefiting from the parent's date of filing and priority rights, implied that the divisional could not be broader than the parent application, neither as to as to its subject-matter (Art. 76(1) EPC) nor its geographical cover. Thus Art. 79 EPC had to be considered. According to Art. 79(3) EPC the applicant could withdraw the designation of a Contracting State at any time up to the grant of the European patent. However, further possibilities, in particular the addition of a Contracting State, which had previously been excluded by withdrawal, were not foreseen in Art. 79 EPC. A revival of the withdrawn designation could only be achieved under particular circumstances if the requirements for a correction under R. 139 EPC were fulfilled. This, for reasons of consistency, had to apply also to a divisional derived from the earlier application. (See also the parallel decisions J 13/18, J 14/18 and J 3/20, which contain identical reasoning on this point.) See also chapter V.A.6.6 "Submissions made in the statement of grounds or the reply – first stage of the appeal proceedings – Article 12(3) to (6) RPBA 2020" below.
Source: http://www.epo.org/law-practice/legal-texts/official-journal/2021/etc/se2/p19.html
Date retrieved: 19 May 2021