The patent relates to an “Exhaust gas treatment device”.
Brief outline of the case
The OD decided that claim 1 as granted lack N over WO 2006/021666. AR1 was lacking IS over E4=DE 10 2009 014 435 + E1.
The patent was maintained according to AR2 and the opponent appealed.
The board held that the claim as maintained lacked clarity. Ar1b filed during OP was not admitted under Art 13(1) RPBA as it lacked clarity.
AR1b was admitted under Art 13(2) as the clarity objection was overcome.
The patent was maintained according AR1b.
The case is interesting in that the patent could not be maintained as decided by the OD due to a lack of clarity and the board decided that there was no reformation in peius.
The lack of clarity in the claim as maintained
The “counter pressure measuring point” in the claim as maintained refers to a location and not to a structural feature. A location, i.e. a measuring point, cannot measure pressure. This is impossible or nonsensical, which was undisputed between the parties. Therefore, a feature added to the claim was unclear.
The fact that the term “counter-pressure measuring point” refers to a location also follows without contradiction from the description cf. paragraph [0013]. Moreover, the description, see paragraphs [0012] and [0027], distinguishes between a pressure measuring device and the back pressure measuring point. The board saw no reason to interpret this feature differently.
Admissibility of the late objection
It was disputed whether the late clarity objection clarity should be taken into account in the appeal proceedings. The clarity objection was raised by the opponent for the first time during the OP before the board.
The clarity objection was therefore neither part of the opposition proceedings, nor was it dealt with in the decision of the OD or in the statement of grounds of appeal. The admission of the new argument is therefore governed by Art 13(2) RPBA and requires the existence of exceptional circumstances.
In the present case, the board considered that there were exceptional circumstances which justify taking up this late objection, since both parties have recognised that the wording of the claim is ambiguous and that this deficiency was caused by the amendments in the opposition proceedings.
For the board, the requirement of clarity under Art 84 means that the claim features must be comprehensible and unambiguous without a claim first having to be interpreted in a meaningful way The necessity of interpreting a claim feature contrary to its literal sense proves that there is manifestly an ambiguity.
In the present case, this ambiguity could only be eliminated by amending the claim. An amendment is necessary as there is no legitimate interest in maintaining a claim with an amendment that was only introduced during opposition proceedings and which manifestly and recognised by all parties lead to an unclear claim feature.
The board’s decision on the absence of reformatio in peius
The filing of AR 1b was in response to the objection under Art 84 raised for the first time at the OP and overcomes it, cf. Art 13(1) RPBA. There were also exceptional circumstances within the meaning of Art 13(2) RPBA.
The amendment made in claim 1 of AR 1b is consistent with the scope of protection of claim 1 as thus defined and merely restricts it.
According to G 1/99, OJ 2001, 381; G 4/93; G 9/92, OJ 1994, 875, and since only the opponent has filed an appeal, the amendment of the claim must not place the opponent in a worse position than the contested decision, the so-called prohibition of prohibition of reformation in peius.
At the OP, the question of the prohibition of reformatio in peius and the principles established in the decision G 1/99 for the newly filed AR 1a to e were discussed.
The opponent has not objected in AR 1b to any infringement of the principles developed in connection with the prohibition of reformatio in peius.
The board was of the opinion that the amendment made in claim 1 of AR 1b complies with these principles. It is irrelevant whether the replacement of the unclear wording of the feature in claim 1 of AR 1b had any adverse effect on the opponent, since the conditions laid down in decision G 1/99, according to which an adverse effect on the opponent would exceptionally be admissible, cf. the headnote in G 1/99, are in any case fulfilled in the present case.
Firstly, in the present case, it was not possible to eliminate the lack of clarity in claim 1, which was considered allowable by the OD, by including further features. The opponent did not explain which specific features could have been added in this respect.
Secondly, the scope of protection of the granted claim 1 was not extended. The same applies to the scope of protection of claim 1 deemed allowable by the OD. In order to determine the scope of protection, the unclear claim deemed allowable must be interpreted in the same way as a granted claim under Art 123(3) and 69(1). In this respect, the determination of the scope of protection under Art 123(3) EPC differs from the examination under Art 84 as to whether the new claim feature is unambiguous.
Comments
Firstly, we should keep in mind the comment of the board when it comes to clarity: the necessity of interpreting a claim feature contrary to its literal sense proves that there is manifestly an ambiguity.
Secondly, there is no legitimate interest in maintaining a claim with an amendment that was only introduced during opposition proceedings and which manifestly leads to an unclear claim feature. As there was an amendment, G 3/14 applies.
Although the appeal procedure is “front-loaded”, a late objection can happen and should not be swept under the carpet for the sake of efficiency.
The opponent did not raise any objection related to the prohibition of the reformatio in peius. One wonders what could have happened should he have done so?
To decide that there is no reformation in peius, the board carefully analysed te scope of protection of the granted claim, the claim maintained by the OD and the amended claim. Interpreting the claim under Art 69 when it comes to the scope of protection under Art 123(3) cannot lead to bring in the claims features which are not in the description.
This is different from the application of Art 69 when it comes to infringement before a national or regional court, were equivalents can play a role.
The future referral on the application of Art 69 in procedures before the EPO comes at the right time.
On the procedure
The patent bears, inter alia, the following classification units: F01N 3/035 and F01N 3/021. The search was carried out in F01N.
Neither E1 nor E2 were mentioned in the ESR.
E1=WO 2006/021666 bears, inter alia, the following classification unit: F01N 3/035
E4=DE 10 2009 014 435 bears, inter alia, the following classification unit: F01N3/021
The result of the search can thus be considered sub-optimal.
In view of the classification searched and the respective classification of the patent and of the prior art, the ESR should have revealed more than four A documents.
https://www.epo.org/de/boards-of-appeal/decisions/t193214du1
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