EP 2 086 755 B1 relates to coated steels, methods of making such coated steels, including hot dipping, methods of using such coated steels, stamping blanks prepared from coated steels, stamped products prepared from coated steels, and to various uses of the invention products such as in spot welding, etc.
Brief outline in a case
After a first decision, T 938/20, the case was remitted to the OD with the order to maintain the patent on the basis of the MR (former AR 105), and a description to be adapted.
After adaptation of the description, opponent 2 out of the 5 original ones, considered that the adaptation of the description infringed Art 123(2).
In view of the ongoing discussion on the adaptation of the description, the present decision is interesting.
The opponent’s point of view
The opponent argued that the introduction of the sentence “The pre-coating of the invention comprises from 8% to 11% silicon by weight, from 2% to 4% iron by weight, the remainder being aluminium and impurities inherent in processing.” in paragraph [0040] of the patent as granted offended Art 123(2). This feature will be called 1.3b.
The opponent also argued that there was a mistake/typing error in paragraph [0040] of the patent, and likewise in the application as filed, as well as the description as amended, because all contained the identical wording “Typical composition of Al-Si coating is: Al-9,3%Si-2,8%Fe”. Instead of “coating“, it should read “bath“.
The board’s decision
In Reasons 4 of T 938/20, the same board in a different composition, decided that claim 1 of the MR met the requirements of Art 123(2).
It was found that the feature 1.3b was directly and unambiguously derivable from the application as filed.
Said feature 1.3b is now present in the description.
Since it was decided that feature 1.3b was allowable under Art 123(2) in the claim, its introduction in paragraph [0040] of the patent in suit, which does not alter its meaning compared to its presence in the claim, cannot be considered as offending Art 123(2).
The “gold standard” requirement of G 2/10, is fulfilled in the current case, since the wording “Typical composition of Al-Si coating is: Al-9,3%Si-2,8%Fe” is identical in the application as filed and in the patent.
The question whether there is a mistake is irrelevant for Art 123(2) EPC in the present case. For corrections, R 139 applies. No request for correction was made.
Comments
In the present case it is one of the original opponents which has queried the adaptation of the description.
The board was right to consider that the feature 1.3b, added in the claim as maintained and not offending Art 123(2), could not infringe Art 123(2) when added in the description.
The description was thus correctly adapted.
If the description would not have been adapted, there would have been a clear inconsistency between the amended claim and the non-amended description.
A broader interpretation of the claim according to the description would have been possible, and this would thus not have been correct.
This present case shows how much the adaptation of the description is necessary.
It also justifies the referral under G 1/25 in T 697/22, commented in the present blog.
It is to be hoped that the EBA will not confirm T 56/21 and the like, which clearly goes against the long lasting line of case law about the adaptation of the description.
Correction of error
To say the least, it appears odd that an opponent indirectly files a request for correction.
One possible conclusion is that the patent must be a thorn in its flesh of opponent 2 for the latter to act as it did. Any means to kill the patent were adopted, but to no avail.
Comments
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