BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2018 AND 2019
II. PATENT APPLICATION AND AMENDMENTS
A. Claims
1. Interpretation of ambiguous terms or confirmation of the text of a claim
(CLB, II.A.6.3.3)
In T 1409/16 the board considered that both "exclusive disjunctions" and "inclusive disjunctions" could be expressed by the "either (...) or" wording. The fact that another expression ("and/or") was used (in the sense of an inclusive "or") in another claim of the contested patent was not, as such, a compelling reason for concluding that the "either (...) or" wording used in the claim in question must have a different meaning, i.e. that it expressed an exclusive "or". There was no absolute obligation to use a fully coherent terminology for expressing given features if the latter could be expressed in different ways. The board held that the "either (...) or" wording could only be considered as expressing an exclusive "or" in cases where the two situations referred to were, due to their very nature, mutually exclusive, i.e. incompatible with each other. See also chapter I.B.2.1. "Public prior use – internal structure or composition of a product".
B. Unity of invention
1. Assessment of lack of unity and of requests for refund of further search fees in examination proceedings
(CLB, II.B.3.3.)
According to T 756/14, in the order of its decision on a requested refund of (further) search fees, the examining division must clearly specify the request which has been decided on, the extent to which it grants that request and orders a refund, and the outcome for any remaining parts of the request. Allowing a separate appeal against its interlocutory decision under Art. 106(2) EPC is a constitutive decision of the examining division which establishes the possibility of challenging the interlocutory decision by way of an appeal, and therefore it too should be included in the order.
C. Sufficiency of disclosure
1. Clarity and completeness of disclosure
1.1 Parameters
(CLB, II.C.5.5.)
Case T 1845/14 concerned the question whether the undisputed ambiguities in respect of two parametric features (SCBD and CDBI) in claim 1 resulted in a lack of sufficiency, as alleged by the opponents (respondents). The board, from its detailed analysis of the two parameters, first concluded that the skilled person would have needed suitable measuring methods for determining the SCBD and CDBI to reproduce the invention. Such methods were available to the skilled person at the priority date of the patent in suit (the ambiguity concerning the definition of CDBI notwithstanding). A separate line of argument advanced by the respondents concerned the ability of the skilled person to solve the problem underlying the patent. The board analysed the contribution of decisions T 593/09, T 815/07 and T 172/99, with further reference to Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd [2004] UKHL 46 of the United Kingdom House of Lords (paragraph 126), to T 608/07 and, in connection with it, to Zipher Ltd v. Markem Systems Ltd [2008] EWHC 1379 of the High Court of England and Wales (in which three types of objections were described: "classical insufficiency"; "Biogen insufficiency" (cf. T 1727/12); "insufficiency which arises through ambiguity"). The board concluded that all these decisions relating to a parameter mentioned in a claim whose definition was ambiguous were based on a definition of the term "invention" which did not refer to the combination of features defined by the terms of the claim under consideration, but rather to the inventive idea or concept that the inventor had in mind and that led the patentee to seek protection for what was claimed. Decisions T 593/09, T 815/07 and T 172/99 in particular used the same criterion for assessing sufficiency: the ability of the skilled person, seeking to reproduce what was claimed, to solve the problem underlying the patent at issue which was mentioned in the specification but was not part of the definition of the subject-matter claimed. The board in T 1845/14, however, was convinced that the ability of the skilled person to solve the problem underlying the patent in suit, when seeking to carry out the invention, was not an appropriate criterion for assessing sufficiency where the problem was not part of the definition of the subject-matter claimed. Indeed, the board did not see any reason to consider a different meaning of the term "invention" in relation to sufficiency. There was no reason to define the invention on the basis of an effect alleged in the patent to be achieved by the claimed subject-matter or on the basis of specific conditions for measuring a parameter when the wording of the claim did not require this. This would amount to considering sufficiency on the basis of a restricted reading of the claim. This was not done when other patentability requirements, such as novelty and inventive step, were assessed and there was no apparent reason why sufficiency should be assessed on a different basis. There was, therefore, no reason to base the assessment of sufficiency on the ability to find out which definition of a parameter in a claim or which conditions for its measurement were necessary or the patentee had in mind when drafting the patent in cases when this definition or these conditions were held to be necessary to ensure that the problem underlying the patent was effectively solved, but the problem itself or an effect derivable from it was not defined in the claims. The invention was defined by the terms of the claims, which should be given their broadest technical sensible meaning in the context they appeared. This position is also supported by G 1/03 (OJ EPO 2004, 413) (non-working embodiments). Since the meaning of the term "invention" was supported by G 2/98 (OJ EPO 2001, 413) and G 1/03, there was no need for a referral. The board concluded that in the case of an unclear parameter defined in a claim whose values required in the claim were indicated in the specification to be essential to solving the problem underlying the patent at issue, the ability of the skilled person to solve that problem by reproducing what was claimed was not a suitable criterion for assessing sufficiency of disclosure when the problem or an effect derivable from it were not explicitly or implicitly part of the definition of the claimed subject-matter. This conclusion did not necessarily mean that the ambiguity of CDBI was merely an issue of clarity.
The board in T 54/17 cited the settled case law that two requirements had to be met for the purposes of Art. 100(b) EPC: the skilled person had to be able, firstly, to derive from the patent specification at least one way of carrying out the claimed invention and, secondly, to carry out the invention over the whole range claimed. As to the first requirement, the board agreed with the respondent (opponent) that the description did not give any example of how to carry out the idea, described by the appellant as "central", of detecting operational parameters of individual components at the same time as environmental parameters and then inferring operational events from the values measured. Even if the skilled person could imagine an embodiment, that would not be enough to meet the second requirement that it be possible to carry out the invention over the whole range claimed. The description was worded very generally, referring to switching off a heavily overheated component without saying how it was to be decided not to switch off the other, neighbouring component too. The board held that this (second) requirement was particularly important, especially where a claim contained unusual parameters. Referring to the conditions listed in T 172/99, it observed that where a newly formulated and hence unfamiliar parameter was relied on to define the solution to a technical problem, the patentee was under a particular obligation to disclose all the information necessary. The board took the view that the "operational event" and the "reaction pattern" claimed in the case in hand had to be regarded as precisely such unfamiliar parameters. They had a certain meaning in German but were not readily understood as having a technical meaning for the purposes of controlling a processor system. In the board's view, the invention's contribution amounted merely to the very general idea of taking account of environmental parameters in a monitoring and controlling process. The description did not set out any embodiment explaining and illustrating this idea. Nor could it be envisaged how this idea would work in relation to the parameters "operational result" and "reaction pattern" on the basis of what was disclosed in the description. The board therefore concluded that the skilled person was unable to carry out the invention (see also, on the interruption of proceedings, Chapter III.D.2.).
2. Reproducibility without undue burden
2.1 Occasional failure
(CLB, II.C.6.6.1)
In T 383/14 (sorting table for grape harvest), the board held that a claim was an attempt to define a device in terms of ideal conditions, i.e. those required for its theoretically optimal or nominal operation. However, when considering a claim, the skilled person would readily understand that the conditions of actual operation would not be the ideal ones defined there. Thus, on reading the claim at issue, they would immediately grasp how the table would operate in practice after a harvest and so understand the contested term "only" not in an exclusive sense, but one compatible with the actual operation of all mechanical devices, whose reliability or success rate was always less than 100% and even lower in the specific case of sorting or grading. Thus the board was unconvinced by the opponents' argument that not "only" the grapes passed through the openings because it was unrealistic to expect as much when reproducing sorting; the fact that not only the grapes passed through resulted from an occasional failure entirely to be expected in the case of a sorting device and allowed for by the case law.
3. The requirement of sufficiency of disclosure in the biotechnology field
3.1 Deposit of living material
(CLB, II.C.7.6.)
In T 1338/12 the board held, contrary to the examining division, that the application at issue was subject to the EPC 1973, specifically R. 28 EPC 1973 on depositing biological material. It was already the boards' firmly established case law that, where biological material was unreservedly and unrestrictedly available to the skilled person and the public – in other words, where it was sufficiently disclosed by other means – there was no need to deposit it to meet the requirements of Art. 83 EPC 1973 (see T 2068/11). What had to be established in the case in hand was therefore whether the requirement in R. 28(3) EPC 1973 (corresponding to R. 33(1) EPC) had in fact been met, i.e. whether the T. thermophilus strain in question had been unreservedly and unrestrictedly available to the skilled person or the public on the relevant date. The board considered that the mere fact that this strain had been disclosed in two scientific publications was not enough by itself to meet that requirement, rejecting the appellant's argument that the authors of a scientific publication about biological material had to make that material available to the scientific community to enable them to verify the data in their publication. There was no general consensus on that, applying to all scientific publications and shared by all editors of scientific journals. Nor had any evidence been produced as to what had been required by the editors of the specific journals concerned in this case. Even if editors could require that the authors of a scientific article make the biological material publicly available, they could not be sure that they had always done so. Any request for a sample of the biological material had to be addressed directly to the authors themselves, so it was always left ultimately to their discretion whether to issue it.
4. The relationship between Article 83 and Article 84 EPC
4.1 Article 83 EPC and clarity of claims
(CLB, II.C.8.2.)
In T 250/15 the board, ruling on sufficiency of the description, considered that the claimed parameter for characterising a polymer was widely used and clearly defined and that the skilled person knew of at least two methods of determining it. It held that the uncertainties possibly arising from any differences between the measurement results obtained by applying the different methods known would not impair the skilled person's ability to choose a suitable polyamide, using their own knowledge and the information disclosed in the patent, and observed that its finding was in line with the boards' current case law. The opponent requested that the board make a referral to the Enlarged Board of Appeal, essentially to establish whether the difficulty the skilled person might encounter in determining whether subject-matter fell within the scope of protection conferred by a claim was a matter of the claim's clarity or more one of sufficiency of disclosure. Citing T 1811/13, however, the board observed that there was now a clearly predominant opinion among the boards that the definition of the "forbidden area" of a claim should not be considered a matter relating to Art. 83 EPC. The board in T 1811/13 had added that this was not to say that a lack of clarity could not result in an insufficient disclosure of the invention. For the sake of completeness, the board in T 250/15 held that, in view of decision T 1811/13, T 626/14 did not call into question that an imprecise scope of protection did not amount to insufficient disclosure. Lastly, the board noted that T 626/14, like T 464/05, had concerned a specific constellation in a particular technical field. The case now before it, however, differed in that the parameter concerned a clearly defined property intrinsic to the material. Moreover, it had not been disputed that a limited number of appropriate and generally known measurement methods were available to the skilled person. The board refused to make a referral to the Enlarged Board of Appeal. It also explained precisely how the facts of the case in T 250/15 differed from those in T 593/09, T 466/05, T 225/93 and T 626/14.
The board, in T 1305/15, was aware that according to case law, uncertainties in the measurement of a parameter did not necessarily amount to an insufficiency objection but might merely represent a hidden clarity objection under Art. 84 EPC (T 608/07). This might be the case for example when no measurement method was specified in the patent and different known methods were available to the skilled person, possibly leading to different results (T 1768/15). However, when the claimed parameter (the ZP in T 1305/15) is crucial for solving the problem underlying the invention, the method used to measure it should produce consistent values, such that the skilled person will know when carrying out the invention whether what he produces will solve the problem or not (T 815/07). Due to the severe lack of information concerning the ZP measurement method, the ZP on the inner membrane surface was so ill defined that the skilled person, when trying to reproduce the hollow fibre membrane according to the contested patent, was at a loss whether or not the produced membrane was able to solve the problem underlying the invention. This posed an undue burden on the skilled person, depriving him of the promise of the invention, and thus amounted to insufficiency of disclosure (citing T 593/09).
5. Evidence
(CLB, II.C.9.)
In ex parte case T 2340/12, the application related to a space energy implosion unit. The board observed that it did not understand how the torsion field or space energy was to be measured. The appellant (applicant) claimed that over 40,000 Internet citations could be found concerning "space energy". But no specific Internet citation was cited which could serve to explain the concepts of torsion field or space energy. The applicant only referred to "indirect" measurements carried out but did not elaborate on the nature of these experiments or on their relevance for the claimed invention despite having been invited to do so in the provisional opinion issued by the board. The examining division raised criticisms regarding the experiments. The appellant emphasised that the EPC does not contain any requirements for such experimental evidence to be provided. The appellant further questioned the competence of the examining division to require such evidence. The board stated that in the case of inventions in fields of technology without any accepted theoretical or practical basis, the case law of the boards of appeal has established that the application should contain all the details of the invention required for the effect to be achieved (cf. T 541/96, point 6.2 of the Reasons). This was the direct consequence of the fact that the skilled person will be unable to rely on common and accepted general knowledge when dealing with inventions in such fields. The board stated that there is no provision in the EPC according to which the grant of a patent depends on the filing by the applicant of evidence that the claimed invention performs satisfactorily in the form of results of experimentation. The filing of such results is not to be seen as an obligation imposed on the applicant but, in contrast, as a right, providing the applicant with the opportunity to convince the examining division (or the board) that it erred in its initial findings. The decision includes detailed findings on the burden of proof in ex parte cases in relation to an insufficiency of disclosure objection.
D. Priority
1. Right of priority of the applicant
(CLB, II.D.2.2.)
The patent in suit in T 725/14 (see also parallel case T 924/15) was granted on a divisional application. Both the parent application and the European patent application from which priority was claimed were filed in the name of Avantium. In dispute was whether the priority right had been transferred to Furanix (patent proprietor/respondent) by way of a declaration of assignment, dated 1 March 2007 (D17), before the parent application was filed on 12 March 2007, and, if so, whether this transfer invalidated the priority of the parent application and consequently of the opposed patent.
The board rejected the respondent's argument that the transfer was only effective on the date on which a request for registration of the transfer was sent to the EPO in accordance with R. 22 EPC. R. 22 EPC had no bearing on the establishment of the priority right. The transfer of the priority right had to be assessed by applying national law (cf. e.g. T 205/14, T 1201/14). The applicable law was in general determined by the conflict of laws rules of the court seised, here the board. Such rules were absent in the EPC and the law derived from the EPC and thus no guidance was given in establishing the applicable national law. The parties agreed that the law of the Netherlands was applicable and the board saw no reason to deviate from that position. The priority application was a European application, was not regulated by any national law and thus did not require the application of any particular national law. All other circumstances pointed to the law of the Netherlands: Avantium and Furanix were both companies established under the law of the Netherlands with registered offices in Amsterdam; D17 had been signed there.
Referring to a legal opinion filed to explain the requirements for assignment of the priority right under the Dutch Civil Code, the board concluded that the requirements of a formal delivery on a valid legal basis had been met, and that D17 was sufficient to execute the assignment under the law of the Netherlands of the priority right, which was one of the rights pertaining to the patent application. The wording of D17 clearly pointed to the assignment of the priority right to Furanix on 1 March 2007 or an earlier date. As D17 was intended to provide proof of the assignment of rights, its persuasive weight was considerable. Counter-evidence submitted by the respondent was not convincing. The appellant had discharged its burden of proving the assignment of the priority right. The priority claim was thus invalid.
The board stated that the word "or" in Art. 87 EPC and Art. 4 Paris Convention (i.e. in the phrase "or his successor in title") must unambiguously be read as an "exclusive or" (cf. also e.g. J 19/87) and could not accept a view favouring an "inclusive or", i.e. that priority can be claimed by the original applicant or its successor in title or by both the original applicant and the successor in title.
2. First application in respect of the invention
2.1 Identity of invention
(CLB, II.D.4.1.)
In T 1662/14 claim 1 of the main request was to an anasthetic agent delivery system for intravenously delivering a desired dose of propofol to a patient. The board had to determine whether and to what extent Euro-PCT application D2 was prior art according to Art. 54(3) EPC. While D2 had a filing and publication date after the date of filing of the patent in suit (which claimed no priority), it claimed priority from D3, a US application of the predecessor in title of the applicant of D2 which had the same technical content as D2 and was filed before the date of filing of the patent in suit. The board examined the validity of the priority claimed from D3.
D11 was also a US application of the predecessor in title of the applicant of D2 and had the same technical content as the original application from which the patent in suit was derived. D3 was a continuation-in-part of D11. Hence D11 had left some rights outstanding within the meaning of Art. 87(4) EPC. It followed that D11, and not D3, was the first application in respect of the invention which it disclosed. Thus, D2 could not validly claim priority from D3 for that invention. However, while for the general subject-matter already present in D11 priority from D3 could not be validly claimed by D2, the disclosure of D2 contained more specific elements in that respect. In other words, D2 disclosed a system comprising additional technical features not disclosed in D11. As a consequence, D11 was not the first application for the more specific system. Hence the priority claim of D2 was valid in respect of such a system, for which D3 was the first application. That specific system belonged to the state of the art according to Art. 54(3) EPC and anticipated the subject-matter of claim 1.
3. Multiple priorities or partial priority for one claim
3.1 Application of G 1/15 in the jurisprudence of the boards
(CLB, II.D.5.3.3)
In decision T 437/14 of 12 March 2019 the board took into account the answers of the Enlarged Board of Appeal to the questions on undisclosed disclaimers which the board had referred in case G 1/16 (OJ EPO 2018, A70). The board's findings on the admissibility of the undisclosed disclaimers are summarised under chapter II.E.1.2. of this publication.
With respect to the validity of the priority right and novelty, opponent 3 had argued that the subject-matter of claim 1 of the new main request lacked novelty over D57 and D58, two divisional applications stemming from the application on which the patent in suit was based: these disclosed specific compounds falling within the scope of claim 1 and validly claimed a priority right from earlier application US 09/452,346. However, in view of the disclaimers added to claim 1, this claim did not validly claim a priority right from US 09/452,346. Thus, for its subject-matter, D57 and D58 belonged to the state of the art under Art. 54(3) EPC.
According to the board, for this attack to succeed, two conditions would have to be fulfilled: that at least one embodiment of the divisional application/s was encompassed by claim 1, and that claim 1 did not enjoy a priority right or at least a partial priority right for the part/s relating to those embodiment/s from US 09/452,346. In its earlier interlocutory decision, the board had already decided that the claims of the new main request were based on the description of the application as filed. The description of the application was identical to the description of US 09/452,346, from which priority was claimed. Thus, leaving aside the issue of the disclaimers, the subject-matter claimed was also disclosed in that earlier application.
Citing point 4 of the reasoning of G 1/03 (OJ EPO 2004, 413) with regard to the insertion of the two disclaimers in claim 1, the board was satisfied that these did not provide a technical contribution and fulfilled the requirements of Art. 123(2) EPC. It therefore concluded the subject-matter of claim 1 enjoyed priority from the earlier application. As far as D57 and D58 disclosed specific compounds falling within claim 1 and validly claimed priority from the earlier application, claim 1 validly claimed a corresponding partial priority right from the earlier application for those same specific compounds. Claim 1 was, in fact, a generic "OR" claim encompassing alternative subject-matter directly and unambiguously disclosed in the priority document and was thus entitled to a partial priority for that alternative subject-matter within the meaning of G 1/15. As a consequence, the second condition mentioned above was not fulfilled and D57 and D58 did not form part of the state of the art under Art. 54(3) EPC for the purpose of assessing novelty.
E. Amendments
1. Extension beyond the content of the application as filed – "US-style" dependencies
(CLB, II.E.1.3.1)
In T 1362/15 the board issued a provisional opinion that the "US-style" dependency of the original claims (i.e. with the relevant dependent claims separately referring back to the independent claim) did not seem to provide a basis for the combination claimed in claim 10 of auxiliary requests 2 to 4. The appellant (proprietor) requested that questions be referred to the Enlarged Board to ask firstly whether it complied with Art. 123(2) EPC if the features of a plurality of dependent claims were incorporated into an independent claim in a situation in which the application as originally filed included a claims set with a "US-style" dependency and an embodiment in which the features of the independent claim and the dependent claims were shown in combination; and secondly whether the fact that the embodiment possibly showed additional features might result in a violation of Art. 123(2) EPC.
The board did not consider this referral to be necessary for, inter alia, the following reasons: Concerning the issues at hand, the Enlarged Board has already clearly defined the general principles which govern the requirements of Art. 123(2) EPC in, inter alia, G 2/98 (OJ EPO 2001, 413) and G 2/10 (OJ EPO 2012, 376), i.e. that the skilled person must be able to derive the claimed subject-matter directly and unambiguously, using common general knowledge, and, seen objectively and relative to the date of filing, from the original application as a whole. Regarding the "US-style" claim dependency, the board noted that there was no actual limitation regarding the possible combinations of features in the claims of a US application. 35 U.S.C 112 stated only that a multiple dependent claim shall not serve as a basis for any other multiple dependent claim. This was however not an insurmountable limitation. The appellant had further argued that, in cases where the amended claim was a combination of features containing features from originally filed dependent claims that did not respect the original dependency, the existence of an embodiment in the disclosure containing all the combined features (albeit with even more features) should be enough to fulfil the requirement of Art. 123(2) EPC and this was a relevant point of law in which boards diverged considerably. The board analysed the allegedly diverging decisions T 2619/11 and T 1414/11 and came to the conclusion that both decisions relied on the same criteria and did not contradict each other.
2. Disclaimers
2.1 Accidental anticipation
(CLB, II.E.1.7.3 a))
In T 1218/14 the board clarified the meaning of the criterion mentioned in G 1/03 (OJ EPO 2004, 413) that an accidentally novelty-destroying disclosure had to be completely irrelevant for inventive step. The finding that the claimed subject-matter was inventive in view of D1 as a secondary document did not mean that D1 was irrelevant to inventive step within the meaning of this criterion. This criterion had to be understood not as an alternative, or additional criterion, but as a consequence of the criterion in G 1/03 and G 1/16 (OJ EPO 2018, A70) that, from a technical point of view, said disclosure was so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working the invention.
2.2 Undisclosed disclaimer must not be related to the teaching of the invention
(CLB, II.E.1.7.3 f))
In G 1/16 (OJ EPO 2018, A70) the Enlarged Board had endorsed the concept that the undisclosed disclaimer may not be related to the teaching of the invention and specified that the question to be asked in this context is not whether an undisclosed disclaimer quantitatively reduces the original technical teaching – this is inevitably the case – but rather whether it qualitatively changes it in the sense that the applicant's or patent proprietor's position with regard to other requirements for patentability is improved.
In T 660/14 claim 1 of auxiliary request 4 contained two additional features according to which the operating and control members of the claimed bicycle control device were pivotable about non-common offset axes and were not pivotable commonly about either of the offset axes. The board, applying the criterion of G 1/03 (OJ EPO 2004, 413) as interpreted by G 1/16 (OJ EPO 2018, A70), considered that the disclaimers provided a technical contribution to the subject-matter disclosed. Claims 7 and 8 as filed addressed the operating member and the control member being arranged to be pivotable about parallel and/or offset axes. As indicated in the description, this may be seen as providing ergonomic advantages. The board concluded from this that the disclaimers introduced a technical difference to the amended claim when compared to the content of the original application. The pivotable arrangement of the operating and control members about the axes was of a technical nature, not least through the disclosure of the ergonomic benefits; the board concluded the disclaiming of this arrangement would have to be as well. The board held that this finding was furthermore confirmed by considering whether merely a quantitative change to the original technical teaching had occurred or indeed whether a qualitative change had resulted from the introduction of the undisclosed disclaimers (G 1/16). By disclaiming both common offset axes and common pivoting about either of the offset axes, the ergonomic considerations identified in the application as filed had been modified, resulting in a qualitative change to the originally disclosed technical teaching in the sense that the proprietor's position with regard to inventive step would be changed.
In T 437/14, taking into account the answers to the questions on undisclosed disclaimers which it referred to the Enlarged Board in case G 1/16 (OJ EPO 2018, A70), the board recalled that, for undisclosed disclaimers, the proper test is whether the criteria of G 1/03 (OJ EPO 2004, 413) are fulfilled. The gold standard test referred to in G 2/10 (OJ EPO 2012, 376) is not the relevant test. The board had already decided in its interlocutory decision of 17 October 2016 that the disclaimers inserted into claim 1 were undisclosed disclaimers, that they established novelty over accidental anticipations under Art. 54(2) EPC and that they did not remove more than what was necessary to restore novelty over those documents. In the present decision the board further considered that there was no evidence that the disclaimers provided a technical contribution adding subject-matter extending beyond the content of the application as filed. In particular, the board noted that no evidence had been put forward by the opponents, and the board did not see any either, that the limitation of the genus of compounds covered by the formula in claim 1, which resulted from the excision of the seven specific compounds defined in the disclaimer, became relevant for establishing inventive step or sufficiency of disclosure. Accordingly, the disclaimers also met the conditions laid down in points 2.6 and 2.6.1 of the Reasons for the decision in G 1/03, and in the second paragraph of the Order of G 1/16. Concerning the aspect of validity of the priority right and novelty, see also chapter II.D.3.1.
3. Extension of the protection conferred
3.1 Article 123(3) EPC and Article 69 EPC
(CLB, II.E.2.3.1)
In T 131/15 the narrow definition of the feature at issue in claim 1 of the granted patent, as advocated by the opponent (namely "opposite direction" interpreted in a precise geometrical sense), would have had the effect that none of the disclosed embodiments would have fallen within the scope of protection of the claim. However, the board highlighted that, in determining whether the requirements of Art. 123(3) EPC 1973 were met, it was not sufficient to look only at the claims in isolation. The approach to be followed was set out in G 2/88 (OJ EPO 1990, 93) with reference to Art. 69(1) EPC 1973 and its Protocol. In the light of these principles, the board came to the following conclusion: Where an expression in a granted claim, taken literally and in isolation, would have the effect of excluding all of the disclosed embodiments from the scope of protection, but where a definition of the expression may be derived from the patent itself which would locate (at least some of) the disclosed embodiments within the ambit of the claim, and provided this definition was not manifestly unreasonable, having regard to the normal meaning of the words used in the expression, then in judging compliance with the requirements of Art. 123(3) EPC, the scope of protection should normally be considered to include at least that which would fall within the terms of the claim understood according to this definition (namely "transmitted and received beams follow substantially the same path, with a small deviation to take account of the physical sizes of the transmitter and receiver").
3.2 Replacement of drawings
(CLB, II.E.2.4.5)
In T 1360/13 the board rejected the appellant's (proprietor's) main request as contrary to Art. 123(2) EPC. The main request contained the drawing sheets which were part of the patent as granted. These had been exchanged according to R. 26 PCT during the international phase (receiving Office: EPO).The question in the present case was whether the deletion of the drawings and references thereto in the descriptions in several auxiliary requests had a broadening effect on the extent of protection conferred (Art. 123(3) EPC). Referring to G 2/88 (OJ EPO 1990, 93) and Art. 69 EPC, the board held that even if, after the claims have been read taken alone, no clarification seemed necessary, it could not be excluded that the description and drawings were necessary to interpret the claims, i.e. to determine the extent of the protection conferred. As a rule, the vocabulary used in a patent was unitary and dependent on the technical field of the invention and on the writer's own preferences. The description and drawings generally included explicit or implicit definitions of terms used in the claims, e.g. explanations as to the functions of the claimed features, the aims to be achieved by the invention, etc. Concentrating exclusively on the wording of the claim would mean that from the point of view of the extent of protection, the whole description and the drawings of the patent could be deleted, in which case, the intentions of the inventor would be completely ignored. The board concluded that, in view of Art. 69(1) EPC, 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 Art. 123(3) EPC. In the present case, the deletion of the drawings and any references to them in the description led not only to a generalisation of the teaching of the patent but also to a more general interpretation of the claim. The board distinguished its case from T 2259/09 and T 236/12.
3.3 Change of claim category
(CLB, II.E.2.6.4)
T 1830/14 concerned the conversion of a granted method claim to a device claim. The board recalled that a claim directed to an apparatus provided absolute protection of the defined apparatus and, hence, its scope of protection was broader than the scope defined by a claim directed to a method of production or use of the same apparatus. In the case at issue, compared to the cooling apparatus defined in claim 1 as granted, in the apparatus claim 1 of the main request a feature had been deleted. The appellant argued that granted independent method claim 9 defined a cooling apparatus without the deleted feature and that, therefore, deleting this feature from the apparatus claim did not broaden the scope of protection. However, referring to the principles stated in T 82/93 (OJ EPO 1996, 274), the board observed that in the case in hand two features defining the operation of the cooling apparatus in claim 9 as granted were missing from claim 1 of the main request. The protection conferred by granted claim 9 to the defined cooling apparatus was limited to the apparatus when it was transferring heat according to the missing features, i.e. only when it was in operation. Claim 1 at issue defined the same cooling apparatus as granted claim 9, but conferred absolute protection to it, irrespectively of whether it was in operation or not. Hence, its scope of protection was broader than that of granted claim 9 and the main request did not fulfil the requirements of Art. 123(3) EPC. The board accepted auxiliary request IV, as the apparatus claim also contained the features defining the operation of the apparatus.
F. Divisional applications
1. Request to postpone decision concerning the earlier European patent application
(CLB, II.F.3.1.4)
In T 592/15 the board refused the applicant's request that the "application be maintained pending until [a] divisional application has been filed". The board understood the appellant's submissions to be a request that the board postpone the taking of the decision on the allowability of the appeal at hand until at least the appellant had filed a divisional application. The board observed that, according to the jurisprudence of the boards of appeal, requests and actions obliging a board to examine questions outside of the framework of the appeal concerned were not admissible and could not be dealt with in substance within such appeal proceedings (T 502/02). In the case at hand the request to postpone the taking of the decision on the allowability of the appeal until a divisional application had been filed would have required the board to investigate whether the appellant had indeed filed a divisional application and, as the case may be, to even postpone the oral proceedings. The board emphasised that the question of whether a divisional application has been filed was a question outside of the framework of the appeal proceedings at hand, in particular because the procedure concerning a divisional application and the procedure concerning the parent application are in principle independent (G 4/98, OJ EPO 2001, 131). As a further argument against granting the request, the board observed that the appellant would also gain complete control over the duration of the appeal proceedings, including the possibility of having them pending ad infinitum, if no divisional application was filed at all.
2. Double patenting
2.1 Referral decision
(CLB, II.F.5.)
In T 318/14 the board referred the following points of law to the Enlarged Board of Appeal in accordance with Art. 112(1)(a) EPC:
1. Can a European patent application be refused under Art. 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Art. 54(2) and (3) EPC?
2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed
a) on the same date as, or
b) as a European divisional application (Art. 76(1) EPC) in respect of, or
c) claiming the priority (Art. 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?
2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Art. 63(1) EPC?
2.2 Same subject-matter claimed
(CLB, II.F.5.2.)
In T 2563/11, the appellants had contended that the prohibition on double patenting did not apply because, despite their identically worded independent claims, the parent patent and the divisional application had different descriptions and so each conferred a different extent of protection under Art. 69 EPC. The board observed, however, that the important point for the purposes of the prohibition on double patenting was whether the "same subject-matter" was claimed. A claim's subject-matter was defined by its category and technical features (Art. 84 EPC and R. 43(1) EPC), so the description was irrelevant in establishing whether the same subject-matter was claimed, especially if the claims in question were anyway clear and understandable in themselves (see T 197/10). By contrast, while the claims were likewise the basis for determining the extent of protection conferred by a European patent, Art. 69(1) EPC provided that the description and drawings were to be used to interpret them for this purpose. This meant that the extent of protection conferred by the patent might be broader than the subject-matter claimed. In the case in hand, the board rejected the appellants' contention that, owing to the considerable differences between the descriptions, the subject-matter of claim 1 of the divisional application was broader than its equivalent in the parent application.