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G 0009/91 - Power to examine - #1

Citation rank: 1
No. of citations: 709

The most-cited decision of a Board of Appeal ever, G 9/91, is concerned with the question of whether Opposition Divisions and Appeal Boards have power to examine parts of the patent (i.e., claims), which were not attacked in the initial Notice of Opposition.

G 9/91 was decided by the Enlarged Board in consolidated proceedings with G 10/01. The latter decision looked at a related problem, namely at the question whether Opposition Divisions and Appeal Boards have power to examine Grounds of Opposition (Art. 100(a)-100(c) EPC), which where not raised by opponents within the 9 months opposition period (a brief summary of G 10/91 can be found here).

The claims underlying the referral in G 9/91 were directed to certain anhydride polymers, certain imide polymers, as well as to processes for preparing them. Only the claims relating to the anhydride polymers (not the ones to the imide polymers) were attacked by the opponent. Upon appeal, however, the opponent/appellant also raised objections against the originally non-attacked imide polymer claims. The patentee then offered to dispose of the appeal by deleting Claims 9-11 relating to anhydride polymers. He argued that the Board should not express any opinion on the unopposed Claims 1-8 relating to imide polymers, because this would entail an ex officio examination contrary to Art. 114(1) EPC as interpreted in case T 9/87.

Hence, the question whether an Opposition Division or an Appeal Board had the power to examine originally unopposed claims arose. This question was considered an important point of law within the meaning of Article 112(1)(a) EPC by the Technical Board. It thus referred the following questions to the Enlarged Board of Appeal (G 9/91):

1. Is the power of an Opposition Division or, by reason of Rule 66(1) EPC[1973], of a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC[1973] dependent upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC[1973]?

2. If the answer to the first question should be affirmative, are there any exceptions to such dependence?

When approaching these questions, the Enlarged Board found it important to note that the opposition procedure under the EPC is a post-grant procedure.They stated:

"It is inherent in any post-grant opposition procedure that the patent office cannot take any action in respect of a granted patent, however clear it may have become after grant that the patent is invalid, unless initiated by an admissible opposition. If no opposition is filed, the patent can only be attacked in revocation proceedings before a national court. In other words: the competence of the patent office to deal with the patent depends on the action taken by the opponent." (point 3 of the reasons)

The Enlarged Board also took into account that it was a requirement for filing admissible oppositions, that the Notice of Opposition contains, i.a., a statement of the extent to which the European patent is opposed (R. 55(c) EPC1973, now R. 76(2)(c)). The Enlarged Board considered that Rule 55(c) only made sense if it was

"... interpreted as having the double function of governing (together with other provisions) the admissibility of the opposition and of establishing at the same time the legal and factual framework, within which the substantive examination of the opposition in principle shall be conducted." (point 6 of the reasons)

The Enlarged Board also considered the previous case law on the issue. They generally agreed with what was said in T 9/87. The requirements of R. 55(c) EPC1973 to specify the extent to which the patent is opposed within the opposition time limit would be pointless if later on other parts of the patent than those so opposed could freely be drawn into the proceedings (point 10 of the reasons). This would also be contrary to the basic concept of post-grant opposition under the EPC (ibid.).

The Enlarged Board concluded that question 1, above, had to be answered in the affirmative: An Opposition Division or Appeal Board cannot examine unopposed claims which were not attacked during the opposition period. With one exception, though: With reference to T 293/88, the Enlarged Board held that the subject-matter of a dependent claim may be examined as to patentability, if the dependent claim depends from an independent claim which falls in opposition or appeal, provided that the dependent claim's validity is prima facie in doubt on the basis of already available information. The Enlarged Board considered that such dependent subject-matters had to be considered as being implicitly covered by the statement under Rule 55(c) EPC1973.

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Headnote:

The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC. However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information.

The full text of the decision can be accessed here.

Quotes from 10 decisions citing G 9/91 can be found here. 

G 0010/91 - Examination of opposition-appeals - #2

Citation rank: 2
No. of citations: 665

G 10/91 (in consolidated proceedings with G 9/01) is concerned with the character and nature of the opposition and opposition-appeal proceedings. Both G decisions defined powers of Opposition Divisions and Appeal Boards to examine the case. While G 9/91 was concerned with the question of which parts (i.e., which claims) of the contested patent may be examined, G 10/91 looked at the Grounds of Opposition, as provided in Art. 100(a)-(c) EPC, which may be considered by the Opposition Division or Board.

In the underlying case leading to the referral (T 580/89), only certain claims of the opposed patent were actually opposed (namely, under Art. 100(a) EPC). Other claims were not attacked. Also, no other Grounds of Opposition than Art. 100(a) was raised. Upon appeal, however, the opponent then also raised objections against the originally non-attacked claims. Furthermore, in the course of the appeal proceedings a third party filed observations under Art. 115 EPC, submitting that the subject-matter relating to all claims was not patentable due to lack of novelty and inventive step.

In this situation the the question arose whether the originally non-attacked claims may be examined by the Board, despite the fact that the original opposition did not concern these claims. The Board found that this the question was an important point of law within the meaning of Article 112(1)(a) EPC. It thus referred the following questions to the Enlarged Board of Appeal (reference number G 9/91):

1. Is the power of an Opposition Division or, by reason of Rule 66(1) EPC, of a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC dependent upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC?

2. If the answer to the first question should be affirmative, are there any exceptions to such dependence?

At that stage, the President of the EPO, making use of his power under Article 112(1)(b) EPC, referred the following question to the Enlarged Board of Appeal (reference number G 10/91):

Is the Opposition Division in the examination of the opposition obliged to consider all the grounds for opposition referred to in Article 100 EPC or is this examination restricted to the grounds referred to by the opponent in his statement of grounds of opposition?

The Enlarged Board of Appeal considered that the questions referred by the Technical Board and by the President concerned related issues, and should therefore be treated in consolidated proceedings. Hence, the Facts and Submissions, as well as the Reasons for the Decision in G 9/91 and G 10/91 are the same. The orders of the respective decisions, however, relate to the specific questions referred to the Enlarged Board in the respective case.

In deciding case G 10/91, the Enlarged Board first noted that the questions referred to in G 9/91 and G 10/91 were, although related, in fact rather different: The question of which parts of the patent can be examined (G 9/91) concerned the formal competence of the Opposition Division/Appeal Boards to examine, whereas the question referred in G 10/91 related to the procedural principles applicable in the respective procedures (point 12 of the reasons).

Regarding the question which Grounds for Opposition may be examined (G 10/91), the case law was divergent. For example, in T 493/88 it was held that Art. 101 and 102 EPC1973 (now Art. 101 EPC) clearly referred to all Grounds for Opposition and does not limit the scope of examination by the Opposition Division. T 182/89, on the other hand, held that Art. 114 EPC (ex officio examination) should not be interpreted as requiring an Opposition Division or Appeal Board to examine Grounds of Opposition that were not raised by opponents within the 9 months opposition time limit.

The Enlarged Board found that the approach taken in T 182/89 was more in line with the concept of post-grant opposition proceedings, as present under the EPC. They also mentioned "procedural expediency" as a positive side effect (point 14 of the reasons). Ultimately, they decided that Opposition Divisions and Appeal Boards were not required to examine Grounds of Opposition not raised in the Notice of Oppostion.

A crucial point to be decided was, however, whether an Opposition Division/Board may examine such Grounds, i.e., whether Art. 114(1) EPC empowers an Opposition Division or Appeal Board to examine Grounds for Opposion not raised in the Notice of Opposition.

In this regard, the Enlarged Board noted that it was common practice before the EPC that the principle of ex officio examination also applied in opposition proceedings (point 16 of the reasons). This was also refleted in the traveaux preparatoires (BR 87/71, point 9). The Enlarged Board found that there was no reason to change the established practice. The current practice helped avoiding maintenance of patents in opposition which were invalid.

The Enlarged Board thus stated:

"[A]n Opposition Division may, in application of Article 114(1) EPC, of its own motion raise a ground for opposition not covered by the statement pursuant to Rule 55(c) EPC or consider such a ground raised by the opponent (or referred to by a third party under Article 115 EPC) after the expiry of the time limit laid down in Article 99 (1) EPC. At the same time, the Enlarged Board would like to emphasise that the consideration of grounds not properly covered by the statement pursuant to Rule 55(c) EPC, as an exception to the principle established by the Board in paragraph 6 above, should only take place before the Opposition Division in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent." (point 16 of the reasons)

In appeal proceedings, this did not apply. The Enlarged Board stated that appeal proceedings were a judicial review procedure and thus less investigative by nature. Therefore, Art. 114(1) EPC (ex officio examination) should be applied in a more restrictive manner. Grounds of Opposition not raised in the initial Notice of Oppostion may not be examined by Appeal Boards. The Enlarged Board allowed one exception, however: "volenti non fit injuria" (latin: "to a willing person, injury is not done"). Hence, fresh Grounds may be examined by a Board in appeal proceedings, if the proprietor agrees. Otherwise, if the patentee does not agree to the introduction of a fresh ground for opposition, such a ground may not be dealt with in substance in the decision of the Board of Appeal at all. Only the fact that the question has been raised may be mentioned (point 18 of the reasons).

Finally, the Enlarged Board confirmed that the above restrictions to the examination of Grounds for Opposition only apply to the claims as granted. Any amendment introduced during the opposition or appeal proceedings must be fully examined as to its compatibility with the requirements of the EPC, e.g., also with regard to the provisions of Article 123(2) and (3) EPC (point 19 of the reasons).

Remark: See G 3/14 for examination of clarity objections in opposition and opposition-appeal proceedings. A brief summary of G 3/14 can be found here.

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Headnote:

1. An Opposition Division or a Board of Appeal is not obliged to consider all the grounds for opposition referred to in Article 100 EPC, going beyond the grounds covered by the statement under Rule 55(c) EPC.

2. In principle, the Opposition Division shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with Article 99(1) in conjunction with Rule 55(c) EPC. Exceptionally, the Opposition Division may in application of Article 114(1) EPC consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent.

3. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.

The full text of G 10/91 can be found here.

Quotes from 10 decisions citing G 10/91 can be found here.

G 0002/88 - Second non-medical indication / "Friction-reducing additive"- #3

Citation rank: 3
No. of citations: 368

G 2/88 ("Friction reducing additive") and G 6/88 ("Plant growth regulating agent") both looked at changes in the claim category from product claim (specifically: compound or composition) to use claim, namely the use of the compound or composition for a particular purpose.

A Technical Board of Appeal in T 59/87 referred the question to the Enlarged Board of Appeal whether a patent with claims directed to a "compound" and to a "composition including such compound" can be amended during opposition proceedings so that the claims are directed to the "use of that compound in a composition" for a particular purpose, without extending the scope of protection (Art. 123(3) EPC).

The Enlarged Board found that, upon proper interpretation of Art. 123(3) EPC, and taking into account the "absolute" protection that a product claim confers, a change in category from product to use of the product does not normally extend the scope of protection. Art. 123(3) would thus not be infringed.

T 59/87 also referred another question to the Enlarged Board, namely whether novelty can be acknowldedged of a claim claiming the use of a known compound for a particular purpose over prior art disclosing the same use of the same compound, but for a different purpose. Specifically T 59/87 asked:

"Is a claim to the use of a compound for a particular non-medical purpose novel for the purpose of Article 54 EPC, having regard to a prior publication which discloses the use of that compound for a different non-medical purpose, so that the only novel feature in the claim is the purpose for which the compound is used?"

The answer to this question is by no means self-evident. For example, in case T 231/85 (referred to in G 2/88) the  claims in question related to the "Use of (certain compounds) ... for controlling fungi and for preventive fungus control" - and the application contained teaching as to how to carry this out so as to achieve this effect. A prior art document described the use of the same compounds for influencing plant growth. In both the application in suit and the prior art, the respective treatments were carried out in the same way (so the means of realisation was the same). The sole difference between the claim and the prior art was the purpose for which the claimed use was carried out. The purpose - as was argued by a party T 231/85 - is subjective and in principle merely a mental activity. It should not, according to the party, count as a technical feature of the claim. The Enlarged Board, however, decided differently. 

The Enlarged Board found that the different purpose of the claimed use establishes novelty over such prior art. In other words, a claim to the use of the compound for the particular purpose defined in the claim, which use is based on a technical effect described in the patent, is to be interpreted as including that technical effect as a functional technical feature. Hence prior art disclosing the same use of a compound, but for obtaining a different purpose, then such prior art is not novelty-destroying for the "second non-medical use" claim.

Remark: G 2/88 and G 6/88 are consistent with the earlier G 1/83, G 5/83 and G 6/83, which established similar principles for claims directed to second medical indications. The latter decisions held that the stated purpose of making a medicament recited in a "Swiss-type" claim establishes novelty over prior art disclosing the same medicament, but not disclosing the claimed medical indication (i.e., disease to be treated). See here for a brief summary of G 5/83.

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Headnote:

1. A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC, if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered.

2. An amendment of granted claims directed to "a compound" and to "a composition including such compound", so that the amended claims are directed to "the use of that compound in a composition" for a particular purpose, is not open to objection under Article 123(3) EPC.

3. A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public.

The full text of the decision can be found here.

G 0001/03 - "Undisclosed" disclaimers - #4

Citation rank: 4
No. of citations: 308

G 1/03 (together with G 2/03) defined under which conditions "undisclosed disclaimers" (i.e., disclaimers disclaiming subject matter where neither the disclaimer nor the subject-matter excluded by it have a basis in the application as filed) can be introduced into a claim without extending subject matter under Art. 123(2).

Prior to G 1/03 established case law allowed - under certain circumstances - disclaimers having no basis in the application as filed. This case law had been called into question in T 323/97, which held that the introduction of a negative feature into a claim resulting in the exclusion of certain embodiments was, regardless of the name "disclaimer", nonetheless an amendment governed by Article 123(2) and (3) EPC.

In particular the chemical industry had often relied on undisclosed disclaimers to establish novelty of their broad Markush-type claims over prior art that they had previously been unaware of; be it because the prior art was post-published under Art. 54(3), or be it because the prior art document was "accidental", e.g., from a far remote technical field.

The Enlarged Board looked into the situation concerning post-published Art. 54(3) documents. Considering the legislative history of Art. 54(3) they noted that the fathers of the EPC opted for the more restrictive "whole contents approach" rather than for the less stringent "prior claim approach", under which "hole contents approach" the whole content of a post-published 54(4) document is taken into account, rather than only its claims (point 2.1.1 of the reasons). They considered that the legislator tried to limit the detrimental effect of post-published 54(3) documents by making them only relevant with respect to novelty, not relevant with respect to inventive step (Art. 56, second sentence).

In line with this approach of limiting the negative effect of post-published prior art on subsequent patent applications (and patents), the Enlarged Board allowed the disclaiming of parts of the originally claimed scope, if the excluded subject matter was disclosed in a 54(3) document. This was justified as follows:

"Such a disclaimer, only excluding subject-matter for legal reasons, is required to give effect to Article 54(3) EPC and has no bearing on the technical information in the application. It is, therefore, not in contradiction to Article 123(2) EPC. Applied in this sense, the term disclaimer is justified also in its literal meaning. An invention comprising different specific embodiments or groups thereof has been disclosed in the application as filed, a part of which is excluded from the requested protection, ie no longer claimed. The remaining subject-matter is not modified by the disclaimer." (point 2.1.3 of the reasons)

For related reasons, the Enlarged Board also found it appropriate to allow undisclosed disclaimers in the case of "accidental anticipations" (an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention, see Headnote II.1). Since the applicant could not have been aware of the accidentally anticipating document, it would be appropriate to allow him to disclaim the accidentally disclosed subject matter, so as to make his claim new over the accidentally anticipating document (point 2.2 of the reasons).

Finally, the Enlarged Board found it appropriate to also allow undisclosed disclaimers in cases where a claim includes subject matter which is excluded from patentability under Art. 52-57 for non-technical reasons. The reasoning here was that a foreign applicant, who files a first application in his country (where certain subject matter, such as medical methods, is possibly not excluded from patentability) cannot be expected to know or to study the substantive patentability requirements of all countries in which he/she may later wish to claim the priority of his first application. The Enlarged Board stated:

"... the applicant cannot be expected to check the substantive patent law of all possible states before filing the application and to introduce appropriate limitations in order to cope with any exclusions which he might later face in the respective states. Extending the requirement of sufficient disclosure to limitations merely disclaiming subject-matter not eligible for patent protection would seriously impede the long-established systems of obtaining patent protection in an international framework." (point 2.4.3 of the reasons)

The Enlarged Board went on to defined the manner in which undisclosed disclaimers must be formulated. They stated that a disclaimer must not remove more than is necessary to restore novelty or to disclaim subject-matter excluded from patentability under Art. 52-57 for non-technical reasons (Headnote II.2). Furthermore, a undisclosed disclaimer must not become relevant for the assessment of inventive step or sufficiency of disclosure, because then it would infringe Art. 123(2) EPC (Headnote II.3). Finally, the amended claim containing the disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC (Headnote II.4).

 Remark: G 1/03 established a stable set of rules regarding the admissibility of undisclosed disclaimers. This stable system was called into question later, when G 2/10 (dealing with so-called "disclosed disclaimers") was published. Some Boards of Appeal have interpreted G 2/10 in such a manner as to impose additional requirements on the admissibility of undisclosed disclaimers (i.e., on top of the requirements expressed in G 1/03). In particular, some Boards found that the "remaining subject matter test" of G 2/10 should also be applied to undisclosed disclaimers. However, G 1/16 recently re-established the old order by clarifying that the requirements expressed in G 1/03 are the only ones to be applied to undisclosed disclaimers.

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Headnote:

I. An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.

II. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:

II.1 A disclaimer may be allowable in order to:
- restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;
- restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and
- disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

II.2 A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

II.3 A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.

II.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

The full text of the decision can be found here.

T 0641/00 - Mix of technical an non-technical features / "Comvik" - #5

Citation rank: 5
No. of citations: 258

The "Comvik" decision (T 641/00) is concerned with the question of how to deal with claims containing a mix of technical and non-technical features.

The underlying invention in this opposition-appeal case related to the control of subscriber identities in a GSM mobile phone system, wherein at least two subscriber identities are selectively usable under one subscriber identity module (SIM), and wherein the selective activation of the subscriber identity is used for distributing the costs for service and private calls or among different users.

The Technical Board had to decide whether the claimed invention was inventive.

The Board firstly noted that it is generally legitimate to have a mix of technical and non-technical features within one claim, even if the technical was not the dominating part of the invention (point 4 of the reasons).

The Board also recalled that the problem-solution-approach is based on the technical character of the invention, e.g., the problem solved by the invention must be a technical one (point 5 of the reasons). The Board cited earlier case law (T 158/97, T 72/95, T 157/97, T 176/97, T 27/97) and confirmed that the approach taken in these decisions to ignore non-technical features when assessing inventive step was entirely consistent with the general requirement under the EPC that an invention must have technical character. This led to the conclusion that an invention in the sense of Article 52 EPC can only be made up of those features which contribute to said technical character (point 6 of the reasons).

Although it was accepted that the formulation of the problem should normally not contain any pointer to its solution provided by the claim, the Board found that this principle only applies to the technical features of the claim. They stated:

"Merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met."

Such non-technical constraints which can be used in the formulation of the technical problem are referred to as a "requirement specification" in the current Guidelines (2018) G-VII, 5.4.2.1.

In the specific case, the Board found that the distinguishing features requiring that "at least two identities are selectively usable", and "the selective activation being used for distributing the costs for service and private calls or among different users" were no technical features, as they merely defined a financial or administrative concept. These features were thus to be ignored when assessing inventive step.

As a result, the claim was considered lacking inventive step and the proprietor's appeal was dismissed.

Remark: The manner in which the EPO examines claims containing a mix of technical and non-technical features is described in Chapter G-VII, 5.4 of the current Guidelines (2018), including four illustrative examples.

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Headnote:

none

The full text of the decision can be found here.

G 0001/93 - Limiting feature / The "inescapable trap" - #6

Citation rank: 6
No. of citations: 258

G 1/93 deals with the conflicting requirements of Art. 123(2) and (3), and with the harsh consequences that an undetected violation of Art. 123(2) during examination can have on the patentee.

Art. 123(2) holds that a patent application or patent may not be amended in such a way that it includes subject matter which goes beyond the content of the application as filed. Art. 123(3), on the other hand, holds that a patent may not be amended such that its scope of protection is extended.

In the underlying case, the applicant filed, upon prosecution, amended claims which included a limiting feature going beyond the content of the original application. The Examining Division failed to spot this. Hence a patent was granted despite a violation of Art. 123(2). The patent was opposed and the opponent raised, i.a., the ground of Art. 100(c) (extension of subject matter). The Opposition Division accepted that submission and revoked the patent. The proprietor appealed against that decision.

Upon appeal, the Technical Board considered the principal relationship between paragraphs 2 and 3 of Article 123 EPC. They noted that in such cases where an unallowed amendment is made in examination by introduction of an undisclosed limiting feature, but a patent was nevertheless granted on the amended claim, such limiting feature could in principle not be removed in opposition without violating Art. 123(3). The Technical Board found this situation somewhat unsatisfactory, because was a rather harsh consequence of an error, which was - after all - also not spotted by the Examining Division. The Board thus referred the following question to the Enlarged Board of Appeals:

 "If a European patent as granted contains subject-matter which extends beyond the content of the application as filed and also limits the scope of protection conferred by the claims, is it possible during the opposition proceedings to maintain the patent in view of paragraphs 2 and 3 of Article 123 EPC?"

The Enlarged Board looked a previous case law regarding this matter. They noted that insofar as in these cases the Boards of Appeal have found support in the original applications for replacing added undisclosed technical features by other features without violating Article 123(3) EPC, they seem to be uncontroversial. They also found that it was never disputed that an added undisclosed feature without any technical meaning may be deleted from a claim without violating Article 123(3) EPC. The situation addressed the referred question (where the added feature had technical meaning, i.e., a limiting character), however, was still not fully clarified by case law.

The Enlarged Board found that both Art. 123(2) and 123(3) have mandatory character and that paragraphs 2 and 3 of Article 123 EPC are mutually independent of each other. They stated:

"Thus, if a limiting feature is considered to fall under Article 123(2) EPC, it cannot be maintained in the patent in view of Article 100(c) EPC, nor can it be removed from the claims without violating Article 123(3) EPC. Only if the added feature can be replaced by another feature disclosed in the application as filed without violating Article 123(3) EPC, can the patent be maintained (in amended form). [...] In this sense, it must be admitted that Article 123(2) in combination with Article 123(3) EPC can operate rather harshly against an applicant, who runs the risk of being caught in an inescapable trap and losing everything by amending his application, even if the amendment is limiting the scope of protection." (point 14 of the reasons)

In some cases, however, where the undisclosed feature (while having a limiting effect on the scope of the claim) makes no technical contribution to the invention, the Enlarged Board found that the limiting feature may remain in the claim without infringing Art. 123(3). They stated:

"If such added feature, although limiting the scope of protection conferred by the patent, has to be considered as providing a technical contribution to the subject-matter of the claimed invention, it would, in the view of the Enlarged Board, give an unwarranted advantage to the patentee contrary to the above purpose of Article 123(2) EPC. Consequently, such feature would constitute added subject-matter within the meaning of that provision. A typical example of this seems to be the case, where the limiting feature is creating an inventive selection not disclosed in the application as filed or otherwise derivable therefrom. If, on the other hand, the feature in question merely excludes protection for part of the subject- matter of the claimed invention as covered by the application as filed, the adding of such feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties (cf. paragraph 12 above). In the view of the Enlarged Board, such feature is, on a proper interpretation of Article 123(2) EPC, therefore not to be considered as subject-matter extending beyond the content of the application as filed within the meaning of that provision. It follows that a patent containing such a feature in the claims can be maintained without violating Article 123(2) EPC or giving rise to a ground for opposition under Article 100(c) EPC. The feature being maintained in the claims, there can be no violation of Article 123(3) EPC either." (point 16 of the reasons)

In other words, the Enlarged Board confirmed that an "inescapable trap" generally exists between Art. 123(2) and (3), but that in cases where the violating feature makes no technical contribution to the invention, an inescapable trap situation is not present.

Remark: G 1/93 in principle distinguishes between technical features, which make a technical contribution and those which do not. This concept has later been used by the Enlarged Board in G 1/03, G 2/03 when considering admissibility of undisclosed disclaimers (see here for a brief summary of G 2/03).

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Headnote:

1. If a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, such patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC.

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

The full text of G 1/93 can be found here.

G 0009/92 - "Non-appealing party" - #7

Citation rank: 7
No. of citations: 254

G 9/92 (in consolidated proceedings with G 4/93, see same review here) looked at the consequences of the "principle of party disposition" on inter partes opposition-appeal proceedings.

Two Boards of Appeal referred questions to the Enlarged Board of Appeal under Art. 112(1)(a) EPC. The questions arose from three appeal cases, all of which were concerned with an appeal against the decision of an oppositon division to maintain the patent in amended form according to Art. 101(3)(a) EPC. In one case the proprietor was the sole appellant, in another case only the opponent appealed. In the third case both parties appealed.

The Technical Boards referred the question whether a Board of Appeal, in proceedings before it, could put the sole appellant in a worse position than if it had not appealed, or whether there should be prohibition of reformatio in peius (Latin: "change for the worse"). Specifically, they asked the Enlarged Board:

"Can the Board of Appeal amend a contested decision to the Appellant's disadvantage? -   If so, to what extent?"

The Enlarged Board pointed out that the proceedings before the EPO are generally goverened by the principle of party disposition, i.e., that the parties define the extent of the proceedings through their intial requests. This principle is also known as the principle of "ne ultra petita" (Latin: "not beyond the request").

The Enlarged Board mentioned that decisions G 9/91 and G 10/91 already clarified that the principle of party disposition applies to opposition and opposition-appeal proceedings before the EPO (see G 9/92, points 3 and 4 of the reasons). The principle of ex officio examination (Art. 114(1) EPC), on the other hand, found little application in appeal proceedings (points 4 and 5 of the reasons).

Under the principle of party disposition, in opposition-appeal cases in which the patent is maintained in amended form, the appeal of the proprietor, who is the sole appellant, can only be understood as a request of the proprietor-appellant to maintain its patent in unamended form, or at least with a scope somewhere between that of the patent upheld in opposition and the scope as granted. In any case, the proprietor's appeal cannot be interpreted as being a request to further limit the appellant's patent. Therefore, the Enlarged Board in G 9/92 found that it would be against the principle of party disposition to limit a patent to less than the scope maintained in opposition, if the proprietor is the sole appellant (see Headnote I).

Where the opponent is the sole appellant, the situation is the opposite. It would be against the principle of party disposition, if an Appeal Board broadened the scope of the patent (e.g., maintained the patent as granted). This would certainly be against the opponent/sole appellant's initial request. The proprietor is thus primarily restricted to defending the patent in the form in which it was maintained by the Opposition Division (see Headnote II).

If both, the proprietor and the opponent, appeal against the decision to uphold the patent in amended form, the principle of party disposition clearly can no longer be fully observed. This is impossible, because of the parties' initial requests are contradicting. In this situation, an Appeal Board is free to broaden or lessen the scope of the patent as mainteined by the opposition division all the way from maintenance as granted to revocation in full.

Remark: G 1/99 ("Reformatio in peius") later took a closer look at the situation in which the opponent is the sole appellant (Headnote II, below). G 1/99 exceptionally allowed broadening of the scope of the claims (beyond the scope of the claims maintained in opposition, but within the limits of Art. 123(3)) in the case where the proprietor would otherwise lose its patent because of a Art. 123(2) infringement which occurred during the opposition stage. The cautious wording "may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary" in Headnote II, below, was thus interpreted as as allowing certain exceptions. See here for a brief summary of G 1/99.

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Headnote:

I. If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the non-appealing opponent as a party to the proceedings as of right under Article 107, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.

II. If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the Opposition Division in its interlocutory decision. Amendments proposed by the patent proprietor as a party to the proceedings as of right under Article 107, second sentence, EPC, may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary.

The full text of the decision can be found here.

G 0002/98 - "The same invention" - #8

Citation rank: 8
No. of citations: 240

Decision G 2/98 answered the question which requirements have to be met in order for a priority claim (Art. 87 EPC) to be valid.

The relevance of G 2/98, however, goes beyond the question of priority. The key requirement for validly claiming priority, i.e., "direct and unambiguous disclosure" has then been applied to other important aspects of the EPC procedure, namely in the assessment of novelty (Art. 54), and admissibility of amendments (Art. 123(2)).

The main question that was referred to the Enlarged Board in G 2/98 was whether the requirement of the "same invention" in Article 87(1) EPC means that "the extent of the right to priority derivable from a priority application for a later application is determined by, and at the same time limited to, what is at least implicitly disclosed in the priority application". The case law of the Boards of Appeal had not been entirely consistent on this question.

The Enlarged Board looked, i.a., at Articles 4F and 4H of the Paris Convention, which is an independent, separate set of priority rules, which rules, however, should be interpreted in the same manner as the priority rules of the EPC (because the latter constitutes, according to its preamble, a special agreement within the meaning of Article 19 of the Paris Convention).

The Enlarged Board finally concluded:

"[A]ccording to that analysis, a narrow or strict interpretation of the concept of "the same invention", equating it to the concept of "the same subject-matter" referred to in Article 87(4) EPC (cf. point 2 supra), is necessary to ensure a proper exercise of priority rights in full conformity inter alia with the principles of equal treatment of the applicant and third parties (cf. point 8.1 supra) and legal certainty (cf. point 8.3 supra) and with the requirement of consistency with regard to the assessment of novelty and inventive step (cf. point 8.1 supra). [...] It means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole." (point 9 of the reasons, emphasis added)

As mentioned above, the same strict standard is nowadays applied in the assessment of novelty over a prior art document, and in the assessment of admissibility of amendments.

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Headnote:

The requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.

The full text of the decision can be found here.

G 0010/93 - Scope of examination in ex parte appeal - #9

Citation rank: 9
No. of citations: 234

G 10/93 is concerned with the question of whether, and to what extent, an Appeal Board in ex parte proceedings (i.e., in examination-appeal cases) can or must examine those requirements, which the Examining Division considered to have been met.

Previously (in G 10/91) the Enlarged Board had taken a strict view on the power of Appeal Boards to consider fresh grounds of opposition in inter partes appeal proceedings. The Enlarged Board held that fresh grounds can only be examined in inter partes appeal proceedings, if the proprietor agrees to the introduction of the fresh grounds into the proceedings. The decision took into account the contentious nature of opposition appeal proceedings and their status as a post-grant procedure.

The Enlarged Board in G 10/93 found that the situation ex parte appeal proceedings is different. They stated:

"In contrast to opposition appeal proceedings, the judicial examination in ex parte proceedings concerns the stage prior to grant and lacks a contentious nature. It relates to the examination of the requirements for the grant of a patent in proceedings in which only one party - the applicant - is involved. The instances responsible must ensure that the conditions for patentability exist. In ex parte proceedings, therefore, the boards of appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based, and can include new grounds in the proceedings." (point 3 of the proceedings)

The Enlarged Board - on the other hand - also did not consider the examination-appeal procedure a mere continuation of the examination proceedings. In this context they stated:

"The power to include new grounds in ex parte proceedings does not however mean that boards of appeal carry out a full examination of the application as to patentability requirements. This is the task of the examining division. Proceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision. If however there is reason to believe that a condition for patentability may not have been satisfied, the board either incorporates it into the appeal proceedings or ensures by way of referral to the examining division that it is included when examination is resumed." (point 4 of the reasons)

Regarding the question of whether the consideration by the Appeal Board of requirements, which the Examining Division considered to have been met, could be viewed as violation of the principle of interdiction of reformatio in pejus, the Enlarged Board saw no problems. They noted that a decision of an Examination Division to refuse an application meant a total loss of rights. Therefore, any decision of the Appeal Board on the refusal cannot put the applicant in a worse situation than if he had not appealed (point 6 of the reasons). Reformatio in pejus is thus impossible.

Also the appellant's argument in the referring appeal case, a communication from the Examining Division stating that a particular version of an application was patentable would be equivalent to a (partial) grant of a patent, was not accepted by the Enlarged Board. They stated that the Appeal Board had the power to confirm the Examining Division's decision to refuse, even if the contested decision was based on different requirements of the EPC.

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Headnote:

In an appeal from a decision of an examining division in which a European patent application was refused the board of appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC. The same is true for requirements which the examining division did not take into consideration in the examination proceedings or which it regarded as having been met. If there is reason to believe that such a requirement has not been met, the board shall include this ground in the proceedings.

The full text of G 10/93 can be accessed here.

T 1002/92 - Admissibility of late-filed evidence (in opposition and appeal) - #10

Citation rank: 10
No. of citations: 218

T 1002/92 deals with the issue of late-filing of evidence, in particular late-filed documents.

In this case, the opponent appealed against the decision of the Opposition Division rejecting his opposition (which was based on Art. 100(a), Art. 52(2)(c), schemes, rules or methods for doing business, and Art. 56).

Claim 1 related to a "System for determining the queue sequence for serving customers" in a telephone system. During the proceedings before the Opposition Division, the opponent attempted unsuccessfully to introduce evidence concerning prior use of Ericson's "Triton" telephone system, more than two years after the grant of the opposed European patent.

In the annex to the summons to oral proceedings, the Board expressed its preliminary view, that the subject-matter of claim 1 was a technical system with co-operating technical components, in which the operation of the computing means solves a technical problem. It was thus regarded patentable under Art. 52(1). They also stated that that the documents files after expiry of the opposition period appeared to have no influence on the decision to be taken, and might therefore be regarded as inadmissible under Article 114(2) EPC. In response the appellant filed  further evidence.

During the oral proceedings the opponent argued again that the late-filed evidence should be admitted. The Board used the opportunity to clarify the principles that apply when assessing whether late-filed evidence is to be admitted or not. They noted that Art. 99(1), R. 55(c) EPC1973  (now R. 76(c) EPC) not only required that the Notice of Opposition includes

(i) the extent to which the European patent is opposed; and
(ii) the grounds on which the opposition is based; but also:
(iii) an indication of the facts, evidence and arguments in support of these grounds.

The Board quoted the Enlarged Board of Appeal in G 9/91 and G 10/91 where it is said that:

"Rule 55 (c) EPC only makes sense interpreted as having the double function of governing (together with the other provisions) the admissibility of the opposition and of establishing at the same time the legal and factual framework, within which the substantive examination of the opposition in principle shall be conducted" (G 9/91, point 6 of the reasons)

While G 9/91 and G 10/91 were mainly concerned with the admissibility of late-filed grounds for opposition (and held that late-filed grounds should only be admitted is prima facie relevant), the case under appeal in T 1002/92 was concerned with late-filed evidence. In this context, the Board stated:

"It would be illogical to have one criterion for the admissibility of late-filed new facts, evidence and arguments in combination with a fresh ground, and a different criterion for judging the admissibility of late-filed new facts, evidence and arguments in support of a ground of opposition already covered by the opposition statement." (T 1002/93, point 3.2 of the reasons).

The Board finally concluded:

"Thus following the principles set out in opinion G 10/91, as regards proceedings before the opposition divisions, late- filed facts, evidence and related arguments, which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings by the opposition division if, prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent in suit." (T 1002/92, point 3.3 of the reasons)

Regarding the proceedings before the Appeal Boards, T 1002/92 took an even stricter standpoint. They stated that - following the same principles, above -, the 

"'indication of the facts, evidence and arguments' presented in the notice of opposition in support of the grounds of opposition on which the opposition is based, should only very exceptionally be admitted into the [Appeal] proceedings, if such new material is prima facie highly relevant in the sense that it is highly likely to prejudice maintenance of the European patent in suit." (point 3.4 of the reasons; underling added)

Regarding the late-filed evidence in the case at hands, the Board found that it was not sufficiently relevant to be admitted at the late stage in the proceedings.

The evidence was hence not admitted.

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Headnote:

1. In proceedings before the opposition divisions, late-filed facts, evidence and related arguments, which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings if prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent.
2. In proceedings before the boards of appeal, new facts, evidence and related arguments, which go beyond the "indication of facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only very exceptionally be admitted into the proceedings in the appropriate exercise of the board's discretion, if such new material is prima facie highly relevant in the sense that it can reasonably be expected to change the eventual result and is thus highly likely to prejudice maintenance of the European patent; and having regard also to other relevant factors in the case, in particular whether the patentee objects to the admissibility of the new material and the reasons for any such objection, and the degree of procedural complication that its admission is likely to cause.

The full text of the decision can be found here.

T 0002/83 - Problem-inventions / The "could-would" approach - #11

Citation rank: 11
No. of citations: 216

T 2/83 is known for two things: firstly, it confirmed that "problem inventions" exist, i.e., inventions that are based on the finding of a previously unrecognised technical problem, and which inventions involve an inventive step even though the solution to the problem appears obvious once the technical problem is formulated (Headnote I). Secondly, T 2/83 created the so-called "could-would" approach, which approach is used in the final step of the problem-solution approach, namely in the assessment of whether the solution to a technical problem proposed by a patent claim is obvious in view of the prior art.

Claim 1 under dispute related to a tablet containing simethicone and an antacid, the tablet comprising a first volume portion containing the simethicone on a solid carrier and a second volume portion containing said antacid. The claim further defined that the tablet had "barrier means" between the first and second volume portions for maintaining the simethicone in the first volume portion and out of contact with the antacid in the second volume portion, and for preventing migration of ingredients from one volume portion to another.

The applicant argued that, although it was known that simethicone may be readily released when adsorbed on a lactose filler material, its release turned out to be retarded or prevented when the material is contiguous to the antacid component. It appeared that simethicone migrates, against all expectations, from the adsorbed state into the solid antacid layer and becomes absorbed therein. Once this unknown problem has been discovered, the claimed solution (i.e., providing "barrier means" to prevent migration of components from one volume portion to another) was trivial.

The Board generally agreed. They confirmed that

"[t]he discovery of a yet unrecognised problem may, in certain circumstances, give rise to patentable subject- matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious ("problem inventions")." (point 6 of the reasons)

They also agreed that the problem of migration of semeticone from one volume portion of the tablet to another was previously unrecognised. Regarding the question of whether the proposed solution to the technical problem proposed by the invention was obvious, the Board stated:

"The question regarding the inventive step, in relation to the modification of the layered tablet of the state of the art as suggested by the present applicants, is not whether the skilled man could have inserted a barrier between the layers but whether he would have done so in expectation of some improvement or advantage." (point 7 of the reasons; emphasis added)

In view of the fact that, in the underlying case, the problem of migration between volume portions of the tablet was previously not recognised as a problem, the skilled person could have introduced a barrier layer, but he did not have an incitement to do so. Hence, while the skilled person could have introduced the barrier layer, he would not necessarily have done so.

The Board concluded that claim 1 was based on inventive step.

The "could-would" approach is nowadays routinely applied in the assessment of inventive step by all instances of the EPO (see, e.g., Guidelines 2018, VII, 5.3).

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Headnote:

I. The discovery of an unrecognised problem may in certain circumstances give rise to patentable subject-matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious ("problem-inventions").
II. In a case where the applicant had supplemented a known layered tablet by the provision of a barrier between the layers, the Board held that the proper question to be asked was not whether the skilled man could have provided the barrier but whether he would have done so in expectation of some improvement or advantage.

The full text of the decision can be found here.

T 0153/85 - Admissibility of late-filed requests / Criterion of "clear allowability" - #12

Citation rank: 12
No. of citations: 212

T 153/85 is concerned with the criteria to be applied by Boards of Appeal when they assess admissibility of late-filed requests in appeal proceedings. T 153/85 developed the criterion of "clear allowability" for the admissibility of such late-filed requests.

The appellant in this case had filed an appeal against the decision of the Examination Division refusing his patent application for lack of inventive step.

Claim 1 of the Main Request (claims as granted) related to an amorphous thermoplastic polymer defined by its structure. A first auxiliary request was filed in good time together with the Grounds of Appeal, in which the structure for the thermoplastic polymer was more narrowly defined. A second auxiliary claimed the use of the defined thermoplastic polymer "for the production of moulded articles". Three weeks before oral proceedings the appellant filed a third auxiliary request which included further limitations compared to the second auxiliary request.

During the oral proceedings the appellant filed a new Main Request, which included further amendments and was reduced to three claims, in response to the findings of the Board during the oral proceedings.

The Board had to decide whether the very late filed new Main Request was admissible. They stated:

"The admissibility of the main request raises a point of principle. In relation to appeal proceedings, the normal rule is as follows: If an appellant wishes that the allowability of the alternative set of claims, which differ in subject-matter rom those considered at first instance, should be considered (both in relation to Article 123 EPC and otherwise) by the Board of Appeal when deciding on the appeal, such alternative sets of claims should be filed with the grounds of appeal, or as soon as possible thereafter." (reasons 2.1)

The Board considered Articles 108, 110 and 111 EPC setting out the Appeal procedure, and the pertinent case law relating to it. In particular, from Art. 108 EPC ("a written statement setting out the grounds of appeal") they concluded that the appellant is required to set out in his grounds of appeal the reasons why the appeal should be allowed (reasons 2.1). They also took into account that the appeal procedure is designed to ensure that as far as possible the oral proceedings are brief and concentrated, and that the appeal is ready for decision at the conclusion of the oral proceedings (ibid.).

From these considerations they concluded that

"... a Board may justifiably refuse to consider alternative claims which have been filed at a very late stage, for example during the oral proceedings, if such alternative claims are not clearly allowable."

In line with this statement the Board refused to admit the Main Request, because it was filed late during oral proceedings without any proper justification, and also because the Board was of the opinion that the claims did not satisfy Article 52(1) EPC.

Nowadays the criterion of "clear allowability" for the admission of late-filed requests is routinely applied in the proceedings before the Examining Divisions, Opposition Divisions and Appeal Boards of the EPO (see, e.g., Guidelines 2018, H-II, 2.7.1 for examination, and E-VI, 2.1, 2.2 for opposition procedure).

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Headnote:

1. If an appellant desires that the allowability of alternative sets of claims should be considered in an appeal, such alternative claims should normally be filed with the statement of grounds of appeal or as soon as possible thereafter.
2. When deciding an appeal during oral proceedings, a Board of Appeal may refuse to consider alternative claims which have been filed at a late stage, e.g. during the oral proceedings, if such claims are not clearly allowable.
3. When assessing novelty, the disclosure of a prior document must be considered in isolation. It is only the actual content of a document (as understood by a skilled man) which destroys novelty.
4. A prior document may on its proper construction (i.e. when its meaning to the skilled man is determined) incorporate part or all of a second prior document into its disclosure, by specific reference to the second document.

The full text of the decision can be found here.

Quotes from decisions citing T 153/85 can be found here.

T 0409/91 - Sufficiency of disclosure vs. support by the desciption - #13

Citation rank: 13
No. of citations: 205

T 409/91 looked at the relationship between sufficiency of disclosure (Art. 83) and support by the description (Art. 84). It found that both are interrelated, because they both express the same principle, namely that the scope of protection should be commensurate with the contribution that the invention makes to the prior art (point 3.5 of the reasons).

Claim 1 of the application in dispute read:

"Distillate fuel oil boiling in the range 120 C to 500 C which has a wax content of at least 0.3 weight% at a temperature of 10 C below the Wax Appearance Temperature, the wax crystals at that temperature having an average particle size less than 4000 nanometres."

Claims 2 to 5 defined smaller upper limits of the particle size down to 1000 nanometres. It was claimed by the applicant that the small size of the wax crystals reduced the undesired "cold clogging" otherwise observed with wax crystals in fuel oils.

Only one way of obtaining "wax crystals at that temperature having an average particle size less than 4000 nanometers" was disclosed in the application as-filed, namely a process which produced wax particles having an average particle size of 1200 nm. No way of obtaining wax crystals of 1000 nm (as claimed in claim 5) was disclosed.

The Examination Division refused the application for two reasons: Firstly they found that claim 1 was insufficiently disclosed, because the invention could not be carried out within the whole area claimed, i.e., no method was disclosed yielding a particle size of less than 1200 nm. Secondly, the Examination considered that the claim did not meet the requirement of Art. 84, first sentence, in combination with Rule 29(1) EPC1973 (now Rule 43(1)), so that the claim as a whole did not define (state all the essential elements of) the matter for which protection was sought (i.e. the fuel oil) in terms of technical features.

The Appeal Board analysed the application and concluded that for obtaining the inventive small wax crystals, the presence of certain "additives", which were disclosed in the description and present in all of the "examples", were indeed necessary to obtain the inventive small wax crystals. The Board hence considered the presence of such additives was an "essential feature" of the invention, which was missing in the claims. With reference to T 133/85 they stated that a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention (point 3.3 of the reasons). The claims thus infringed Art. 84 EPC.

The Board also found that the claims lacked sufficiency of disclosure (Art. 83) for very similar reasons. The Board stated:

"Although the requirements of Article 83 and Article 84 are directed to different parts of the patent application, since Article 83 relates to the disclosure of the invention, whilst Article 84 deals with the definition of the invention by the claims, the underlying purpose of the requirement of support by the description, insofar as its substantive aspect is concerned, and of the requirement of sufficient disclosure is the same, namely to ensure that the patent monopoly should be justified by the actual technical contribution to the art." (point 3.5 of the reasons)

The Board judged that the reasons why the claims were insufficiently disclosed in this case were in effect the same as those that lead to their infringing Art. 84 EPC, namely that the invention extends to technical subject-matter not made available to the person skilled in the art by the application as filed,. In particular, as was not contested by the appellant, no information was given to perform the claimed invention successfully without using the structurally defined "additives".

The Applicant argued that the claims were sufficiently disclosed, for the reason alone that the application disclosed one way of carrying out the invention. However, the Board did not accept this. They stated:

"... the Board does not accept the appellant's submission that sufficiency should be acknowledged simply because one way of performing the invention was disclosed. In the Board's judgement, the disclosure of one way of performing the invention is only sufficient within the meaning of Article 83 EPC if it allows the person skilled in the art to perform the invention in the whole range that is claimed ...".

As a consequence, the appeal was dismissed.

Remark: It remarkable that the Board in this case considered the invention to be insufficiently disclosed, although the required features for obtaining the small wax crystals (i.e., the required "additives") were disclosed in the description. The argument frequently made by applicants and proprietors, that it is sufficient for complying with Art. 83 that the description taught how to carry out the invention, is hence not always correct. If essential features are missing in a claim, the claim effectively extends to embodiments that are not accessible with the information given in the patent/application (namely those embodiments that do not employ the essential features), and therefore the invention as defined by the claims - as a whole - is insufficiently disclosed.

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Headnote:

The questions of sufficiency and of support by the description are questions of fact which have to be answered on the basis of the available evidence having regard to the balance of probabilities in each individual case. Although the requirements of sufficient disclosure of the invention (Art. 83 EPC) and support by the description (Art. 84 EPC) are related to different parts of the patent application, they give effect to the same legal principle that the patent monopoly should be justified by the technical contribution to the art. Therefore, the extent to which an invention is sufficiently disclosed is also highly relevant for the answer to the question of support (points 3.3 to 3.5 of the Reasons).

The full text of the decision can be found here.


Quotes from decisions citing T 409/91 can be found here.

T 0939/92 - Technical effect "over the whole area claimed" - Triazoles/AGREVO - #14

Citation rank: 14
No. of citations: 198

T 939/92 ("AGREVO") looked at the relationship between the contribution to the art and scope of claims and its bearing on the assessment of inventive step.

Claim 1 in the underlying examination case related to broadly defined triazole compounds. It was asserted by the applicant that the claimed triazole compounds had herbicidal activity. The Examining Division had refused the application for lack of support (Art. 84). In particular, they were of the opinion that the scope of the claims did not represent a reasonable generalisation of the examples provided in the description.

Also the Appeal Board found that the claims were unreasonably broad. They also questioned that the application documents contained sufficient internal evidence to render it credible that all claimed compounds would have the stated herbicidal activity. They also agreed with the Examining Division that the claim feature defining a residue "R3" as "optionally substituted phenyl" meant that the phenyl of R3 could be "substituted by absolutely anything" (point 6 of the decision under appeal).

While the Examining Division concluded that the claim lacked support (Art. 84), the Board stated that it does not follow from Article 84 EPC that a claim is objectionable simply because it is "unreasonably broad" (cf. Headnote I). The Board found that the claim was supported by the description, but saw problems regarding inventive step. In this context, they stated:

"2.4.2 The reason for this is that it has for long been a generally accepted legal principle that the extent of the patent monopoly should correspond to and be justified by the technical contribution to the art (see T 409/91, OJ EPO 1994, 653 , reasons Nos. 3.3. and 3.4, and T 435/91, OJ EPO 1995, 188, reasons Nos. 2.2.1 and 2.2.2). Now, whereas in both the above decisions this general legal principle was applied in relation to the extent of the patent protection that was justified by reference to the requirements of Articles 83 and 84 EPC, the same legal principle also governs the decision that is required to be made under Article 56 EPC, for everything falling within a valid claim has to be inventive. If this is not the case, the claim must be amended so as to exclude obvious subject-matter in order to justify the monopoly."

In the case of the triazole compounds of claim 1, the applicant could only demonstrate herbicidal activity of some of the compounds falling under claim 1. In all of those compounds for which herbicidal activity was shown, R3 was a phenyl substituted by halogen atoms or methyl groups. On the basis of this evidence, the Board was not satisfied that substantially all compounds now being claimed are likely to be herbicidally active (point 2.7 of the reasons).

The Board concluded that, because it was not demonstrated that the technical effect, on which the invention relied, existed over the whole area claimed, claim 1 lacked inventive step. (This reasoning is now often used by opponents in chemical opposition cases, and commonly referred to as the "Agrevo" argument.)

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Headnote:

1. If a claim concerns a group of chemical compounds per se, an objection of lack of support by the description pursuant to Article 84 EPC cannot properly be raised for the sole reason that the description does not contain sufficient information in order to make it credible that an alleged technical effect (which is not, however, a part of the definition of the claimed compounds) is obtained by all the compounds claimed (see Reasons No. 2.2.2).
2. The question as to whether or not such a technical effect is achieved by all the chemical compounds covered by such a claim may properly arise under Article 56 EPC, if this technical effect turns out to be the sole reason for the alleged inventiveness of these compounds (Reasons Nos. 2.4 to 2.6).

The full text of the decision can be accessed here.