EP 3 509 866 B1 relates to to security devices as well as methods for manufacturing such security devices.
In the patent, paragraf [008] was amended to read:
“applying a coating of a colour-shifting coating structure (referred to as a “colour-shifting coating structure”)………such that such that a thickness of the coating of the colour-shifting coating structure land areas and such that a thickness of the coating of the colour-shifting coating structure in the first recess or recesses is greater than or less than a thickness of the coating of the colour-shifting coating structure on the one or more first land areas.
A colour-shifting coating structure corresponds Fig.2C.
Brief outline of the case
The OD revoked the patent for non-compliance with Art 123(2) of the patent as granted. AR1 was not compliant with Art 123(3).
The board confirmed the revocation. The patent as granted as well as AR1infringed Art 123(2). AR2 was admitted by the board, but suffered the same defect.
The proprietor’s point of view
When considered in isolation, the expression “coating of a colour-shifting structure CSS” can have several meanings, namely
(a) a coating consisting of a CSS, or
(b) a colour-shifting coating structure, or
(c) a coating of a CSS
However, when read in the context of the independent claims, it can only have the meaning of a coating consisting of a CSS or a colour-modifying structure. Interpretations (a) and (b) are equivalent in the present context.
Interpretation (c), which corresponds to interpretation of the OD, is incorrect because it disregards the grammatical and semantic structure of the feature. If the coating were applied to the CSS, then the feature would read “applying a coating to a CSS” instead of “applying a coating of a CSS“.
The coating is applied to the relief structure and not to a CSS. The sub-feature “of a CSS” expresses the nature of the coating. Only interpretations (a) or (b) are correct.
A direct comparison of the original feature “(applying) a colour-shifting coating structure to the relief structure” and the feature “(applying) a coating of a CSS to the relief structure” demonstrates that, in both cases, the relief structure is provided with a coating of a CSS. If the features under consideration are not read in isolation but in the context of the other features to which they relate, both formulations have the same technical meaning. A “coating” always covers an existing object.
The OD’s assertion that the skilled person would not have considered paragraph [0008] of the patent when interpreting the claims is questionable. A patent can provide its own lexicon, and therefore the skilled person would always consider the description, also in the context of Art 123(2).
Violation of the notion of party disposition
The proprietor noted that the objection to paragraph [0008] of the patent was raised for the first time in the board’s communication and was not raised by either the OD or the opponents, and is therefore not the subject of the contested decision. It should be rejected.
The proprietor expressly does not give its consent for the new objection to be introduced. Art 125 mentions principles of procedural law generally recognised in the Contracting States.
Because the board is comparable to an administrative court, it should apply the principle of party disposition. The objection is not simply a new argument, but it invokes new facts, namely the wording of paragraph [0008].
The opponent’s point of view
It is clear from the construction and wording of the feature “coating of a/the CSS” that the proposed interpretations (a) and (b) are not correct. The words “of a/the” indicate that this is not a layer consisting of a CSS. There is no reason to believe that the coating refers to the CSS as a whole.
The expression “colour-shifting coating structure” has the meaning of a coating structure generating a colour-shifting effect. The expression “a coating of a/the CSS” has the meaning of a layer (coating) of the CSS itself or of an additional layer applied to it.
Paragraph [0008] of the patent must be read in light of the overall disclosure of the patent. It does not equate the expressions “coating of a CSS” and “colour-shifting coating structure”, if only because the content of the brackets refers to the expression that immediately precedes it (“a CSS”) rather than to “a coating of a CSS”.
The board’s decision
The feature at stake can be understood to mean that a coated CSS is applied to the relief structure, which has no basis in the application as filed.
Even if the proprietor’s interpretation of paragraph [0008] were to be followed, the board noted that this paragraph itself was amended, see above.
In claim 1 as originally filed the feature reads as follows: “applying a colour-shifting coating structure to the relief structure“. This language clearly expresses the facts that
(a) a coating is applied to the relief structure,
(b) this coating is structured, and
(c) the coating is of the colour-shifting kind.
This feature was amended to overcome a novelty objection based on some prior art disclosing an embossed holographic structure coated with a colour-shifting ink.
In the feature as it now stands, the coating of a CSS is applied to the relief structure. Taken literally, this conveys that
(a) there is a CSS
(b) the CSS is coated, and
(c) its coating is applied to the relief structure.
However, it is not easy to understand how something can be a coating of the CSS and applied to the relief structure at the same time.
Two of the proposed interpretations of the feature are possible and technically meaningful.
The feature can be understood to express the fact that the relief structure is coated with a CSS, or it can mean that a coated CSS is applied to the relief structure such that the latter is in contact with the coating of the CSS. The wording of claim 1 allows both understandings.
For the board, it is apparent that the original passage did not establish the equivalence between the expressions “coating of a colour-shifting structure” and “colour shifting coating structure” because it only uses the latter.
Although the description of the patent may be used in the interpretation of the claims as granted, the original description is decisive when examining the ground for opposition under Art 100(c).
Violation of the party’s disposition
The board denied any violation of the principle of party disposition.
When examining the ground for opposition under Article 100(c), the board needs to examine the original application and cannot disregard amendments to the description if they have a bearing on the subject-matter of the patent, regardless of whether these amendments were invoked by the opponent or the OD.
This is not objectionable as long as the parties are heard on this issue and can respond to the new situation if necessary. Incidentally, the board agreed with decision T 862/16, Reasons 8.3.1, that the RPBA cannot restrict a board’s power conferred by Art 111(1) and 114(1) to raise new objections of its own motion.
Since the board did not introduce any new grounds for opposition, the limitation laid down in G 10/91 is not relevant.
Comments
With G 1/24, and the way it is applied by the boards, it will have to be seen whether, in the long run, the notion of the patent being its own dictionary will survive or not, at least at the EPO.
When it comes to added-matter, the proprietor seems to have forgotten that what matters is the original disclosure and not the patent as granted.
Claiming that party disposition is a bar for a board to raise new objections is rather surprising. This would mean that if a board sees a problem which has been overlooked by an OD or a party, he could not raise it, even within the boundaries of G 10/91.
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