T 0228/14 (Distribution and use of digital works/CONTENTGUARD) 24-03-2017

Reasons for the Decision

The following reasons are substantially identical to those on which the board's earlier decision T 1866/13 are based.

1. The appeal is admissible.

The invention

2. The invention in general relates to a digital rights ma­nagement system based on digital works with associated usage rights and transactions between trusted de­vices called "repositories".

2.1 In what follows reference will be made to the application documents of the present application as filed. The drawings and description of the earlier appli­cation are identical to the drawings and pages 1-46 of the description of the present appli­cation. The claims originally filed with the earlier application are included as "aspect[s] of the present invention" in the present application on pages 47 to 50.

2.2 The basic operation of the invention is illustrated in figure 1 and the corresponding description (paragraph bridging pages 5 and 6). A creator deposits a digital work in repository 1 from which it may be requested by repository 2 for a particular purpose. If the usage rights associated with the digital work allow the requested purpose, repository 1 transmits the digital work to repository 2. The basic operation of the invention was the subject of method claim 23 of the present application as filed but also of claim 6 of the earlier application as filed (see also the present description, page 48, last 14 lines, to page 49, line 10).

2.3 The description specifies on page 3 (paragraph 3) that: "A repository has two primary operating modes, a server mode and a requester mode. When operating in a server mode, the repository is responding to requests to access digital works. When operating in requester mode, the repository is requesting access to a digital work." Furthermore, with reference to figure 2, a repository 201 is disclosed as "represent[ing] the general instance of a repository" which "has two modes of operation: a server mode and a requester mode" (see page 6, lines 10 to 12). Repository 201 is said to be "general in that its primary purpose is as an ex­change medium for digital works" (see page 6, lines 14-15).

2.4 It is further disclosed that "the repository 201 may communicate with a plurality of other repositories", especially a "rendering repository 203" (page 6, lines 15-17). Rendering repositories are described on page 7, line 3 et seq., and illustrated in figures 4a and 4b. Rendering repositories (see no. 402 or 411) receive digital works, store them as ephemeral copies and pass them on to rendering devices such as a printer, a dis­play, or an execution engine for what is called "ren­de­ring". In the section on rendering systems, reference is also made to "external" repositories 404 and 415 in which the requested digital works are stored.

Article 100(c) EPC 1973

3. The decision under appeal turns on the finding of the opposition division that the existence of repositories which have a server mode only is not unambiguously derivable from the ear­li­er application as filed (see the decision, esp. page 6, 4th paragraph from the bottom). The opposition division found specifically that the description on page 5, lines 23-28, did "not allow to derive that such first repository does not have a requester mode", that nei­ther the "document server" nor the "digital work ser­ver" described on page 11, lines 5-12, "appear[ed] to be a repository" and that it could also not be derived that the "document server" referred to on page 23, lines 28-30 (actually: lines 26-28), could "be equated to a repository and [did] not permit to derive any information about the actual possibilities of the document server (the presence or absence of a requester mode)" (see the decision, page 6, 2nd and 3rd paragraphs from the bottom).

4. The appellant challenges this decision, arguing that the description as a whole left no room for any other interpretation than that the "digital work server" is a repository itself (see grounds of appeal, page 3, paragraph 1; esp. lines 1-2 and 16-21). The appellant also refers to the disclosure on page 23, lines 26-30, in which "a repository and a document server" are joint­ly referred to as "both repositories" (see grounds of appeal, page 3, paragraph 2). The appellant thus concludes that the description unambiguously contemplated "a repository that only processes requests from other repositories" (see page 4, paragraph 1). The definition on page 6, lines 10-12, according to which the "general instance" of a repository has both a server and a re­quester mode did not allow the conclusion that all re­positories had to be able to both request access to digital works and to process such requests (see page 4, paragraph 3).

5. The board agrees with the decision under appeal in that the description does not disclose expressly that the servers mentioned in the description do not have a requester mode, thus leaving open the question of the presence or absence of the requester mode.

5.1 However, the claimed alternative to a repository having a server mode does not expressly require a repository which has only a server mode. What is claimed is a repository which must have a ser­ver mode, but which may or may not have a requester mode. For this feature to be originally disclosed, there­fore, it is not necessary that a repository be disclosed which does not have a requester mode. It is sufficient that a repository be disclosed which may or may not have a requester mode.

5.2 The disclosed servers satisfy this requirement. In combination with the fact that the cited section on page 23 directly and unambiguously refers to a document server as a repository, the board is satisfied that the existence of a repository which has a server mode, but which may or may not have a requester mode is disclosed in the present and the earlier application as origi­nally filed.

5.3 A similar argument applies to the description of the "basic operation of the present invention" on page 5, last paragraph, et seq., with reference to figure 1. Repository 1 in this context is required to operate as a server. Whether it can, in a different situation, also act as a requester is left open. In the board's view, this too discloses a repository which has a server mode, but which may or may not have a requester mode.

5.4 Repositories 404 and 415 depicted in figures 4a and 4b and described on page 7, last two paragraphs, are also only required to have a server mode, but may or may not have a requester mode.

5.5 As regards the cited section on page 6 (lines 10-14) defining "repository 201 [to have] a server mode and a requester mode", the board agrees with the appellant that what is defined here is only the "general instance of a repository". It is also defined that "[r]epository 201 is general in the sense that its primary purpose is as an exchange medium for digital works". In the board's view this does not contradict the existence of special purpose repositories, such as rendering repositories or servers, which may not operate as an exchange medium and thus may not need both modes.

5.6 Only the cited section on page 3, lines 17-18, appears to make the existence of both "a server mode and a re­quester mode" obligatory for all repositories. If taken literally, this would apply to rendering repo­sitories and to server repositories as well. However, in the board's judgment, the skilled person would, in view of the application as a whole and the cited passages in particular, understand that passage to be analogous to the passage on page 6 in defining only the general case, too.

6. The board therefore comes to the conclusion that the ground of opposition under Article 100(c) EPC 1973 does not prejudice the maintenance of the patent as granted for the reason that claim 1 refers to a repository which has a server mode, but which may or may not have a requester mode.

7. For this reason, the decision under appeal has to be set aside.

Continuation of the opposition procedure after the decision has been set aside

8. According to Rule 60(2) EPC 1973, the opposition proceedings may be continued by the European Patent Office of its own motion when, as in the present case, the opposition is withdrawn.

8.1 If the opposition proceedings were terminated after the decision had been set aside, the patent would stand as granted. In the present case, the proprietor requests maintenance of the patent only in amended form and thus no longer approves the text of the patent as gran­ted. A deci­sion to terminate the proceedings would therefore be contrary to the principle of party dis­po­sition as codified in Article 113(2) EPC 1973.

8.2 Moreover, the board notes that the opposition division gave in the annex to the summons to oral proceedings its preliminary opinion that the subject-matter of the granted claims lacked inventive step and that, consequently, also this ground for oppo­sition prejudiced the main­tenance of the European pa­tent, Article 101(2) EPC (see also T 0197/88, headnote 1, reasons 3.2 and 3.3). The same objection, if maintained, would also prejudice the maintenance of the patent in amended form according to the main request, Article 101(3)(b) EPC.

8.3 For both reasons, the opposition proceedings are to be continued.

Remittal to the first instance for further prosecution

9. The opposition was based on all grounds for oppo­sition under Article 100(a)-(c) EPC 1973. The de­ci­sion how­ever was limited to the ground for opposition under Article 100(c) EPC 1973. The board thus exercises its discretion under Article 111(1) EPC 1973 and remits the case to the opposition divi­sion for further prosecution.

Auxiliary requests

10. The opposition division did not admit the auxiliary requests into the proceedings because it considered that they suffered from the same extension problem as the main request and were thus "prima facie" not allowable. Since the board does not share the finding of the oppo­sition division as regards the original disclosure of the main request, this reason also does not justify the decision not to admit the auxiliary requests.

11. The board also notes the following:

11.1 The opposition division referred to Rule 80 EPC to justify its decision not to admit the auxiliary requests because they did "not prima facie overcome the grounds of opposition under Article 100(c)".

11.2 The finding that a request does not overcome a ground for opposition is however distinct from the finding that an amendment is occasioned by a ground for opposition. For instance, if a proprietor filed a number of requests trying to overcome an inventive step objection, these requests would typically be accepted as occasioned by the ground for opposition under Article 100(a) EPC 1973, even if eventually the opposition division found that none of them over­came the objection and revoked the patent.

11.3 Therefore in this case Rule 80 EPC - or Rule 57a EPC 1973 which applies to the present case - does not give the opposition division the discretion to decide not to admit an auxiliary request.