EP 3 587 104 relates to coated steel strips. The patent results from a divisional application of EP 17192410 = EP 3 290 199 and of EP 06842403 = EP 2 086 755.
Decision of the OD
A new MR corresponding to the patent as granted was admitted by the OD.
The OD decided that neither the grounds of opposition under Art 100(b) nor Art 100(c) did prejudice the maintenance of the patent as granted.
Claim 1 as granted lacked IS over D1=Society of Automotive Engineers, “Development of Pre-Coated Boron Steel for Applications on PSA Peugeot Citroën and RENAULT Bodies in White” 09.07.2002.
Claim 1 of AR1+3+7-8 suffered the same objection. Claim 1 of AR2+5+6+9-55 infringed Art 123(2).
The OD decided maintenance according to AR56.
Procedure before the BA
Both proprietor and opponent appealed.
OP before the board were held on 03.02.2026.
In the minutes of the OP before the board, the following can be read:
After deliberation by the Board the Chairman informed the parties that the case seems to hinge on the question whether the gist of G 1/24 is to be applied also with regard to Art 100(c), 76 and 123 (2) and if so to what extent.
To ensure uniform application of the law and since this seems to be a point of law of fundamental importance, the Board is minded to refer respective questions to the Enlarged Board of Appeal.
The case will thus be referred to the EBA with questions to be formulated in writing.
Comments
It is to be noticed that the minute writer in the present case is the same LQM who acted in T 439/22.
T 439/22 has been commented in the present blog.
In those comments, T 439/22 was criticised as it appears at odds with the previous decisions applying G 1/24 in claiming a holistic approach which actually allows the applicant/proprietor to change the interpretation of the claim on the basis of the description as he sees fit.
Applicability of G 1/24 when it comes to added matter
In T 0981/23, penultimate § in Reasons 2.2.3, commented in the present blog, in T 0873/23, Reasons 1.6.1, commented in the present blog, and in T 1164/23, Reasons 1.5.4, commented in the present blog, as well as in T 0405/24, Reasons 1.2.3, also commented in the present blog, different boards have already ascertained that G 1/24 applied also to Art 123(2).
In T 0981/23, the board considered expressly that G 1/24 is not only applicable for the question of “patentability of an invention under Art 52 to 57″ but also for the issue of Art 123(2). The board referred to T 873/23, Reasons 1.6.1 and T 2048/22, Reasons 1.2.
Admissibility of the potential referral
In the absence of a diverging decision on this matter, the admissibility of a referral on this topic looks rather doubtful.
As the criterion for assessing added mater is the novelty criterion under Art 54(2), cf. G 2/10, it cannot be held that G 1/24 does not apply to Art 100(c), 76 and 123 (2). I see here a further reason for the sought referral not to be admissible.
Why a referral?
Are we coming to a situation similar as that relating to the adaptation of the description which has lead to the referral pending under G 1/25, cf. T 56/21 and the like, one wonders whether a further LQM wants to impose his views on all the boards.
In T 1791/16, Reasons 11, it was held that, If a claim is ambiguous/unclear, all technically reasonable claim interpretations must be considered. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that added subject-matter is present.
It can thus not be that, when, on the basis of the description, different interpretations are possible, the applicant/proprietor is allowed to choose the interpretation which he considers not infringing Art 123(2). This would render any objection of added matter moot.
Comments
24 replies on “EP 3 587 104-T 0873/24- Applicability of G 1/24 when it comes to added matter-Referral envisaged”
You comment that “Are we coming to a situation similar as that relating to the adaptation of the description which has lead to the referral pending under G 1/25, cf. T 56/21 and the like, one wonders whether a further LQM wants to impose his views on all the boards.”
I think the further LQM sees the problems in the way the boards are applying G1/24 and is seeking further clarity. There is nothing wrong with that in my view. Whether they get the clarity they desire is a separate question.
@ Anonymous,
It is most probable that the further LQM is dissatisfied with the way boards are applying G 1/24, as all previous decisions applying G 1/24 have been ignored in T 439/22.
At least those decisions were clear in their conclusions: if an applicant/proprietor wants the interpretation derivable from a definition found in the description to be taken into account, the claim has to be amended accordingly. This has at least the merit to clarify the scope of protection and hinder the applicant/proprietor to nurture Angora cats in procedures before national courts or the UPC.
This is what the EPO has been set up for: grant or maintains patents in which the scope of protection is clear from the claim wording alone and in which third parties do not have to dig deep in the description to find what the scope of protection actually is. Otherwise, claims are superfluous. This approach does by no means hinder national courts to decide upon direct/indirect infringement or infringement by equivalents.
It is by no means a reproach, but a matter of fact: civil court judges have, besides rare exceptions, no idea about the technique involved as they are merely legally qualified. This explains in national decisions or at the UPC the long discourses on the interpretation of the claims, and the necessity to define the skilled person.
At the EPO and at the boards, there is enough technical knowledge to avoid long discourses on the definition of the skilled person or on the interpretation of a claim. This also explains board’s decisions applying G 1/24. Technically is difficult to take board members for a ride.
As far as the application of G 1/24 is concerned, when it comes to added matter, there is a clear line of case law discernible in the application of G 1/24. Any claim interpretation based on definitions found in the description which implies added matter for a skilled person leads to such an objection.
The situation when it comes to added matter is clear, and I don’t think that G 1/24 has changed it. The same criterion as for Art 54 is used when it comes to added matter. This is why I have serious doubts about the admissibility of the future referral.
At least the notion of “directly and unambiguously derivable…” does not allow a wide range of interpretations. As soon as one goes into interpretation when it comes to added matter, the boundaries become fuzzy. The stance taken by the EBA when it comes to added matter, cf. G 2/10, might be considered as harsh, but at least parties and users of the system know where they stand.
Novelty and added matter are the two sides of the same coin, and this should not be forgotten, even by LQMs in their apparent attempt to please applicants/proprietors or to invite the EPO to apply German case law.
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Is divergence a criterion for a referral by a TBA?
@ Jenson Gray (Pseudo)
When looking at decisions of the EBA, one comes to the conclusion that in the cases referred to the latter, there are different interpretations of the EPC underlying all referrals. Divergence might no be a criterion but difference of interpretation of the EPC is certainly the criterion.
The EBA is there to decide what is the correct interpretation of the EPC. However, political decisions, like G 1/21, and/or dynamic interpretations of the EPC, cf. G 3/19, should be avoided by the EBA.
Two thoughts trouble me. First, if “scope of protection” is co-terminous with “what infringes” then it includes Art 69 equivalents. But does “the subject matter for which protection is sought” include equivalents? I assume not. This leaves me with doubts about how to decide whether the claim is clear enough to satisfy Art 84 EPC and how many different ways there are, for a reasonable person to decide whether the claim is “clear” and what it actuaaly means.
Second, I strongly doubt whether it is ever possible to write a claim that is so clear that everybody agrees on its exact meaning, that it has only one meaning. Ergo, every claim is invalid. Or not?
Max Drei,
Let me bring back the Epilady/Improver case. The claim was crystal clear: the means by which hair could be caught and ripped out comprised a spiral spring which revolved around a bent rotation axis.
The infringing device comprised a round rubber rod with slits, whereby the rubber rod revolved around a bent rotation axis. The slits have the same effect as the closing and opening spring windings. Besides the UKSC, the round rubber rod was considered infringing by equivalence, and there is little doubt about this fact.
If, after filing, the applicant would have tried to introduce in the specification an alternative with the round rubber rod, it would have been rightly faced with an objection of added matter. If both variants would have been originally disclosed, two independent claims, one for each variant would have been possible, or a more general claim with means + function, with two dependent claims for each variant. In both cases, I have little doubts that the claims would have been clear enough for a skilled person.
It should not be forgotten that Art 84 addresses the skilled person and not the layman on the street. Any technically unreasonable claim interpretation cannot be held against a claim, be it under Art 83 or Art 123(2). There is abundant case law on those topics. Any technical unreasonable interpretation of a piece of prior art can as well not be held against a claim.
Therefore, I cannot agree with both your queries about clarity.
In litigation before a national court or the UPC, it is the game of the lawyers involved to find faults in the claims which allow to twist the case in one direction or the other. But this is a different story. They are not skilled persons. This is also the reason why in procedures before national courts or the UPC, the skilled person has to be defined first. This is unnecessary at the EPO.
Daniel, my concern is with Art 69 EPC and the EPO’s requirement, pre-grant, to delete parts of the description and drawings or else declare them to be “not the invention”.
Is “the invention” i) that which lies within the scope of protection, ii) that which lies within the subject matter for which protection is sought, or iii) something else?
I’m thinking about disclosure of an invention that has been in the application ever since the application was filed. During prosecution, the claim is amended. The ED requires deletion of some of that original disclosure, or labelling it “not the invention”, in order to render the claim clear under Art 84 EPC. My problem, as representative of the Applicant, is that the disclosure in dispute is of an equivalent to the subject matter recited in the claim. I see it as disclosure of my client’s “invention” and within the scope of protection to which my client is fully entitled under Art 69, EPC. I don’t want to delete it and I certainly don’t weant to label it as “not” the invention. My “ratcheting means” hypothetical was intended to illustrate the point.
What shall I do, to protect the legitimate interests of my client? The EPO’s answer is to delete or label “not the invention” and then, in future, first search the prior art better, then draft the patent application better. But that is no answer to Art 54(3) prior art. What’s your answer? How will the EBA answer?
Max Drei,
I cannot share your views. Here is my answer.
Rather than to dig out your ratchet example, which you mentioned on a different blog, lets stay with the Epilady/Improver case.
If in the original disclosure two embodiments were disclosed, the spiral spring (A) and the rubber rod (B), it does not matter whether they have been claimed in two independent claims or as two dependent claims from a claim under means + function.
Lets assume that one of the two variants is disclosed in the prior art, and hence not any longer patentable. For the sake of the argument, lets assume that the remaining variant is patentable.
As the claim will be limited to one of the two variants, you cannot maintain that the variant known from the prior art is still representing the invention covered by the claim which is allowable.
I would never delete the variant which is not any longer falling under the scope of the allowable claim. It is however necessary to mark it as not corresponding to the invention as defined in the patentable claim.
If a third party puts on the market a further variant, let’s say with disks opening and closing so as to rip out hairs, a subsequent court could well consider that the third party’s device is infringing the valid claim. But it cannot infringe the variant which is known from the prior art, be it by equivalence or not. What is not patentable cannot be infringed.
In the famous Agfa/Gucci case, the original independent claim covered two variants of the base colour, i.e. a chromatic and an achromatic base colour. Once the claim was, due to prior art, limited to achromatic, any chromatic base colour could not any longer be held to fall under the scope of protection of the claim limited to an achromatic base colour.
But this is exactly what Agfa tried to do. Based on the fact that “chromatic” was still in the description, it alleged that a chromatic base colour was infringing the granted claim. In such a situation, any reference to chromatic in the description should have been deleted. This is exactly what the CFI-LD Hamburg complained about, as this was not done. The CFI-LD Hamburg was however not fooled and considered that an achromatic base colour could not infringe the claim as granted.
I will not make any assumption as to what the EBA will decide. I simply hope that the EBA will decide that the scope of protection at grant or after maintenance is clear enough so that the applicant/proprietor cannot play around in subsequent procedures, and chose the interpretation which he thinks fit. In other words, in continuation of G 1/24, the description has to be amended so that the applicant/proprietor cannot nurture any kind of angora cat. This is also why I do not agree with T 439/22 as issued after G 1/24.
If an ED or and OD wants parts of the description deleted or marked as not being covered by the claim, as for instance known from the prior art, it has to justify the objection raised and not merely twist the arm of the applicant/proprietor in the R 71(3) communication. In opposition, the amended description has, in any case, to be shown to the opponent before maintenance can be decided.
The opponent cannot insist to bring in the minutes of an OP, even less in the description, a claim interpretation he could use in subsequent procedures. See T 319/19, T 3272/19, T 552/18.
In T 996/18, it was held that statements made during OP in order to define whether the claimed subject matter meets the requirements of the EPC are legally relevant within the meaning of R124(1). Further explanations which could only be relevant to other proceedings, in particular infringement proceedings, are not to be included in the minutes, as they are not legally relevant to the board’s decision. Even in this situation a subsequent court is not bound by the EPO’s interpretation and is free to decide anew. But what is not patentable, will not become patentable and infringed.
I might have been long, but I think it was necessary.
Daniel, I am disappointed by your forthright and unequivocal answer that:
“It is however necessary to mark it as not corresponding to the invention as defined in the patentable claim.”
because you don’t say what you have in mind with “corresponding” and “invention”. I assume you mean “not within the literal wording of the claim”. And there lies the dilemma for me and all those patent attorneys who prosecute cases at the EPO. We all know that the scope of protection can extend beyond the litereal wording. Indeed, that’s the normal situation. Is the “invention” that which is protected by the claim, or is it something narrower than that? I’m hoping that the EBA will soon tell us all.
Max Drei,
My answer might be forthright and unequivocal, but it corresponds to what I have been trained and have said to the examiners I was in charge. I still think there is nothing wrong with this.
I am disappointed that you did not made the slightest effort in giving an answer to the two examples I have given. To me, they show clearly the limits of what can be accepted from applicants/proprietors.
What is protected is the translation in technical features of the “invention” which are then incorporated in the claim. The invention as it is translated in claimed features is a contribution to the state of the art. The scope of protection defined in the claims has to be different from that derivable directly and unambiguously from the prior art (novelty) and should not be the result of the normal evolution of technique (inventive step). The comparison with the prior art is not made in comparison with what is said in the description, but with the claimed features.
Items, found in the original disclosure, which are not any longer encompassed by the claims at grant, or after maintenance, cannot be held to belong to the claimed invention and its scope of protection.
By the way, the EPC speaks at a few places of inventions, but you will not find in it any definition of what an invention could well be. All rests on the claims. Any statement in the description which could give to an ambiguity in the interpretation of the scope of protection defined in the claims has to be avoided. If this would not be case, why then bother with claims?
Daniel, I’m not sure that arguing about a specific matrix of fact is going to be helpful. My “ratchet” example was intended to fit with your:
“Items, found in the original disclosure, which are not any longer encompassed by the claims at grant, or after maintenance, cannot be held to belong to the claimed invention and its scope of protection.”
but, here, I’m not inclined to write my hypothetical out all over again.
What my ratchet hypothetical illustrated was an “item” of disclosure in the application as filed which was, beyond reasonable dispute, an “equivalent”, and therefore “encompassed” by the granted claim. It is the constraints of Art 84 and 123(2) EPC on my freedom to amend after filing which leads to this situation. I’m not complaining about the Gold Standard or EPO strictness under Art 123(2) EPC just about unreasonable strictness in enforcing “conformity” between a claim narrowed in prosecution and the words of the original description.
You say that I have to delete the “item” of disclosure or label it as “not the invention”. I say that is to deprive the applicant of the scope of protection specified under the EPC. You say that an ED cannot unreasonably insist on deletion or labelling “not the invention”. I am sceptical about the prospects for my success, in arguing over the point with an ED.
There is a “middle way” of course. One can leave the item in place but refrain from both i) announcing it as an embodiment of the claim, and ii) NOT the claimed invention.
Max Drei,
I understand your example as follows: two equivalent embodiments were originally disclosed. After examination, one equivalent is subject matter of the claim, and one is anticipated by prior art and hence not patentable.
I am not sure if you realise that, if an embodiment “equivalent” to that claimed is not any longer patentable due to prior art, it might well be that the one claimed is on the verge of patentability as far as inventive step is concerned.
“Equivalent” or not, what is not any longer falling under the scope of protection resulting from the granted claim cannot be illustrative of the invention as originally disclosed. To use your wording, in such a situation, the applicant is by no means deprived of the scope of protection resulting from the claim, as one embodiment is not any longer patentable.
The situation is different if none of both original “equivalent” embodiments is anticipated by prior art. My question is then: why only one embodiment is actually claimed? Would it not be better to claim both embodiments, in a separate independent claims or in dependent claims of a generic means + function independent claim? This is a case in which deletion of one of the embodiments would not be appropriate and could not be required.
The EPC is such that, at least in my opinion, there is no “middle way” possible or acceptable. The prospect of success, in arguing the point with an ED is not a legally acceptable reason. If one embodiment is not any longer encompassed by the claim, your chances of success are indeed remote. If both embodiments are encompassed by the claim, you have every chance of success. We should however not compare apples and pears.
So, Daniel, in case we are not understanding each other, and talking past each other, here I come, again, with my “ratchet” hypo from the other blog. Again.
There are two illustrated embodiments of the invention, a hand unit at the proximal end of a 130 cm long catheter for deploying a self-expanding stent. The detailed description uses the technical term “ratchet” to describe the Fig 1 hand unit. The Fig 2 embodiment has in it means to deliver the inventive ratcheting effect (you can freely pull the sheath step-by-step proximally but the ratcheting means in the hand unit prevents any inter-step distal movement of the sheath) but the description of Fig 2 does not label that one-way brake means a “ratchet”.
A ratcheting means in the hand unit is new and inventive. OK?
I amend the claim to that which is new and inventive. To do that I need the word “ratchet” in the claim. Anything else attracts objection under Art 84, 123(2), 54 or 56. I find no alternative way forward. The ED accepts that the claim meets all provisions of the EPC. BUT:
The ED informs me that I must delete Fig 2 or declare it to be not the invention. I say to you, here, that it is not fair to the inventor, either to delete Fig 2 or label it as not the invention.
Over the years, I have had much success with my “middle way”. I think it would be a pity if the EPO denies it to applicants in the future.
You have always said that arguing from specific hypo’s is not a good look. But how else can I get across my point, that in the real world of clients, inventors and patent drafting, and under the EPO’s Gold Standard, demanding nothing less than ultra-strict “conformity” can result in unfairness and loss of legitimate scope of protection.
Max Drei,
I am getting tired.
I understand you very well, but you do not seem to have grasped what I have tried to explain.
In the example you give with your ratchet, any reasonable person, not even to say a skilled person, can only conclude that Fig 2. belongs to the same invention as defined in Fig 1 and in the claim.
How you describe it, the ratcheting effect appears plainly encompassed in Fig 2. It might have been better to have used the word ratchet when disclosing Fig. 2, but this can be left aside. The ratcheting effect cannot be denied.
In the example you have given, Fig.2 CANNOT be declared not belonging to the invention, or having to be deleted. Such a request from an ED must be resisted, and any reasonable ED would never require such a deletion or statement. This has nothing to do with any possible “middle way”. Your “middle way” is neither applicable nor acceptable in such a situation
To sum it up, you CANNOT take an inappropriate example to justify a general rule.
My conclusion applies for instance to cases in which the original disclosure comprises 4 embodiments, but only 2 appear patentable. The 2 remaining embodiments which are not patentable do not need to be deleted, but it cannot be left in the description that they are representing the claimed invention, after the claim has been limited.
This case and the other examples I have given, underline my position and are, in my view, self-explanatory. Here again, the “middle way” is neither applicable nor acceptable.
When the claim has been limited to one possibility among two originally disclosed, the remaining one CANNOT be held to represent the claimed invention. I think here to the case in which chromatic and achromatic were originally claimed. When the claim is limited to achromatic, chromatic CANNOT represent the claimed invention. And yet this is what the proprietor has tried to do. If the ED had done its job properly and deleted chromatic in the description, the proprietor could not have considered that the third party’s use of chromatic was infringing the claim limited to achromatic.
When an independent claim is limited by features from a dependent claim, or from features from the description, it CANNOT be left in the description that the feature limiting the claim is merely optional. This statement has indeed to be deleted.
I hope that my position is now clear and you could grasp it. This has NOTHING to do with any ultra-strict “conformity”. It is simply what needs to be done to avoid a proprietor having an undue advantage in post-grant or post-opposition procedures. This is one of the basic duties of the EPO.
It should also not be forgotten that in one situation you might represent a proprietor, not willing to clarify the description for whatever reason, but in another situation your client might be considered as a potential infringer faced with another proprietor playing with statements in the description which should have been deleted or clarified. What then?
@MaxDrei
I must take issue with your hypothetical « The ED informs me that I must delete Fig 2 or declare it to be not the invention ».
It relies on the assumption that the ED is entitled to such a requirement. But this not so under the EPC. Under art 113(2), the applicant has to agree on any amendment proposed by the ED. Note that the need for the ED to consult the applicant before any substantive amendment entered at the Rule 71(3) stage, be it in the description or in the claims, is now firmly asserted by the EPO management, see the 2024 quality report. The entry of an amendment by the ED without prior consultation of the applicant is a quality issue per se.
This is regardless of the existence of a legal basis in the EPC for the requirement, which is the topic of G 1/25. The requirement assumes that the support prong of Art 84 is not just a positive condition (existence of support in the description for every claimed feature) but also includes a negative condition (exclusion from the description of features not covered by the claim).
The addition of this kind of exclusion is a distorted interpretation of Art 84 which would radically change its meaning. To give a comparison taken from claim drafting : this is like requiring the applicant to replace in a claim the open-ended term « comprising » with the close-ended term « consisting », since you shift from “comprising” to “consisting” by the addition of an exclusionary condition.
Interesting enough, in T 439/22 (referring decision of G 1/24), the Board has held inadmissible under Art 123(3) the patentee’s request to delete from the description paragraph [0035] providing a definition for « gathered sheet ». I think it would also be arguably a violation of Art 123(2). The deletion of paragraph [0035] can be equated to the addition of a negative condition and since this condition is not disclosed in the original application, it is a violation of Art 123(2).
Mr Hagel,
You are mixing two different topics. The first relates to the amendment of the description at the R 71(3) stage. The second is whether Art 84 is to be used only in one direction (claims to description) or is bidirectional (claims to description and description to claims) when it comes to support.
The Guidelines C-V, 1.1 are very clear. The possibility of ex-officio amendments at the R 71(3) stage is very limited. Any amendment introduced in the description or in the claims changing the scope of the claims ought to be agreed beforehand with the applicant, as those amendments are not minor. In this respect, changing from “comprising” to consisting” is by no means a minor amendment, and is clearly off-limits at the R 71(3) stage.
In view of the production pressure imposed by the higher management, EDs are tempted to twist the applicant’s arm. This is neither tolerable nor acceptable. Even if the applicant agrees on the phone, he can rescind his agreement after receipt of the communication under R 71(3). No need to dwell on this point.
Your position is that Art 84 is unidirectional. What is claimed should be found somewhere in the description. This is certainly correct. I am however inclined to say that Art 84 works both ways. When you look at the examples I have given in the reply to Max Drei this morning, you will see a host of reasons why the description has to be adapted to the claims. I will not repeat the examples here. All those examples show that if the description is not adapted to the claims, it leaves an inconsistency between claims and description which is prejudicial to legal certainty.
When you look at the proposal of amendments of the Guidelines F-IV, 4.1 and 4.2 to enter into force on April 1st, this is clearly a conclusion to be drawn. The Guidelines are not the EPC, but what has been decided in G 1/24 leads to the conclusion that legal certainty is of prime importance.
In this respect I do not agree with T 439/22 in that considers sufficient to read in the claim a definition found in the description for its interpretation, be it broadening or limiting. This is actually the position of the German Federal Court (BGH). Contrary to what is said in T 439/22, there exists an inconsistency between the claim and the description as it allows the proprietor to change its interpretation in post-grant and post-opposition procedures. This is contrary to necessity of legal certainty, as furthermore not all courts will adopt the position of the BGH.
The EPO’s position should clearly be to contribute to legal certainty, and not to leave doubts. All decisions following G 1/24 stating that if the applicant/proprietor wants the definition in the description to be taken into account, he has to amend the claim accordingly. This is one possibility of acting towards legal certainty. The second possibility is to adapt the description to the claims once the claims have been limited.
Thank you, both, for your replies.
Long ago, when I first ran my “ratchet” example up the flagpole, DXT told me that my second embodiment was not comparable with the first “toothed wheel and pawl” classical step-wise ratchet. Now I am told that it is beyond dispute that the second embodiment is a ratchet. We need drawings!
The drawing I have in mind is one of the “Girlfriend’s Finger” toy. It needs a cylindrical braid to function, one-way. You can advance your finger into the cylindrical channel, steplessly as far in as you like. But when you try to pull your finger out, you can’t, neither steplessly nor in discrete steps. My hypothetical Fig 2 works on the same principle. Does anybody call the Girlfriend’s finger a “ratchet”. I doubt it. Does it exhibit a ratcheting action? I am not convinced that it is beyond dispute. Can one have a stepless “ratchet” for example?
Will an ED accept my Fig 2 as an embodiment of the claimed “ratchet” subject matter. I hope so but I’m not sure.
My “middle way” by the way, is to introduce Fig 2 with wording that neither says it is an embodiment of the invention nor that it is NOT the invention. My description contains no verbal contradiction. Nowhere is there an inconsistency between the description and the claim. Therefore, I say that my middle way is a reasonable solution, that avoids offence under any provision of the EPC. When it comes to levels of clarity, in communicating in words with each other, perfection is an unattainable goal and the EPO should therefore refrain from insisting on a level of clarity which is unattainable in the real world of the crooked timber of our shared humanity.
With further research, I find that the cylindrical braid one-way brake thing shown in my Fig 2 is called colloquially a “Chinese Finger Trap”. Microsoft CoPilot tells me its action is NOT that of a ratchet because ratchets work in steps and the Finger Trap is stepless. So there! How about that! No equivocation if you ask an AI. Much better to ask a person skilled in the art, eh?
So, to my stent deployment hand unit including a Chinese Finger stepless one-way brake, to completely stop any spring-back distal movement of the stent release pull wire. Is it an embodiment of the ratchet claim. If not, is it”equivalent” to the stepwise restraint provided by a pawl and toothed wheel classic ratchet as shown in Fig 1? Either way, it is for me an embodiment of the invention which is the subject of the patent application, novel, inventive and enabled. What is the view inside my Examining Division? Must I say that Fig 2 is NOT an embodiment of my client’s invention? Either that or delete Fig 2 entirely?
This is just one hypothetical. But in general, there are going to be many cases where Fig 2 is outside the literal wording of the allowable claim but nevertheless within the scope of protection bestowed after grant by Art 69, EPC. What to do about such cases? EBA, answer please.
Max Drei,
Your last comment simply confirms what I have tried to explain to. The AI is right, a “Chinese Finger Trap” might be moved step by step, but it cannot be considered as a ratchet. For reasons given before you came with the “Girlfriends finger” or the “Chinese Finger Trap”, your Fig2, is by no way equivalent to the ratchet mechanism of Fig 1. The Chinese Finger Trap can simply not cooperate with a stepwise movement inside a conduit.
Before responding hastily and without thinking, please read the comments carefully and calmly and try to understand the examples given. This will prevent you from giving meaningless examples and responding inappropriately.
Furthermore, stick to the topic discussed in the blog. The latest version of your example is so off the mark that it is pointless to discuss the application of Article 69 and wonder what the EBA might say. I repeat that the topic of the blog entry is referral G 1/24 and added matter.
OK, yes, Daniel, added matter. Fair enough. Sorry.
Max Drei,
Voluntarily or not, you are twisting what I have said earlier in a different thread. I merely said that you cannot compare a ratchet in rotation alone, like the one in a bike, with the ratchet in which a rotation is transformed in a linear translation as the one at the proximal end of your device.
Now you completely change the story and come with what is called a “Girlfriend’s Finger” This is not acceptable. Having at the proximal end a mechanism allowing a stepwise translation combined with a “Girlfriend’s Finger” at the distal end, for instance to grab a gall bladder stone in order to pull it out, is something different in Fig. 2 compared to the ratchet in Fig.1. In principle, both are meant to cooperate.
I do however have strong doubts that a “Girlfriend’s Finger”, flexible by essence, can at all be pushed over something at the distal end in a conduit within the human body. I would rather think that the “Girlfriend’s Finger” would simply crumble and it would not work In order to work as intended one needs more. In any case, an ED will most probably not accept your Fig 2 as an embodiment of the claimed “ratchet” subject matter. This is independent of what you call your “midway”. But it would not warrant deletion or a statement that it does not represent the invention.
The day you come up with a coherent story, I might further indulge in answering. Actually, we are here far away from the original topic of the referral, G 1/24 and added matter. .
I will stop here, but in the future I will stop answering and delete any non-sensical example or any comment not relating to the actual topic of the blog entry. Enough is enough.
This comment has been deleted as it brings in another twist in the story which did not clarify the situation. I said before enough is enough. It has also nothing to do with the original topic of the blog entry.
Moreover, rugby has nothing to do with patents.
The warning was loud and clear.
DXThomas
Mr Thomas,
I allow myself to get back to your earlier comment regarding a “further LQM”.
I do not see how this LQM would be able to impose his view to all the Boards. Even within the panel of T 439/22, there are two others members who must approve something he has written.
But looking at this particular LQM, I have noted with great interest that his background is unusual. He was a rising star within the Munich Regional Court, where he managed to substantially improve the efficiency of proceedings and reduce the backlog, before joining the EPO. And then, he has played a prominent role in the drafting of the revised RPBA also aimed at reducing the backlog of the BOAs. I can thus suppose he is very influential within the BOAs.
Mr Hagel,
The comment on the “further LQM” is merely stating a matter of facts and is absolutely comparable with the comment I made about the LQM involved in T 56/21 and the like. Those comments are part of freedom of opinion.
It is clear that a board decision is a collegial decision. But this does not mean that it is a unanimous decision. Like in first instance, it is primarily a majority decision, but we will never, and rightly so, know how the different members of the deciding body have voted.
I have personally signed decisions by taking a minority position, or defended in OP as chairperson positions I could not agree with, but this is the rule of the game at the EPO. I would thus not allow myself to declare that the two other members of the board must have approved something “he” has written. We simply do not know.
As you say yourself in his career he was “a rising star within the Munich Regional Court”, but at the EPO he is a legal member of the boards as plenty of others. What is origin could have been becomes irrelevant once he was appointed to the boards.
It happens that I know the “further LQM” personally. This does not mean that I necessarily agree with his views and opinions. He came over to me as trying to be very persuasive, but as far as he feels strong in his views, the same applies to myself. I need compelling arguments to change a position taken after careful considerations.
I am not convinced whatsoever that the position he took in applying G 1/24 in T 439/22 has been welcomed by boards having previously decided on how to apply G 1/24. And in those boards, there were also LQMs.
By attempting again to bring in a holistic approach for added matter, after having attempted to bring in a holistic approach in claim interpretation, his position might not be shared by all the other members of the boards. I have good reasons to believe that this is not the case.
The holistic approach is that of the German Federal Court (BGH) and, even if it seems to be that adopted by the UPC, it is not that of many other judicial bodies in EPC member states. The EPO would do good to have its own position, especially since the EPO is not part of an integrated granting and judicial system like that in all EPC member states.
The role of the EPO is to grant or maintain patents in which the proprietor cannot change the interpretation of the claim as he thinks fit. T 439/22 is correct when the broad interpretation found in the description has been taken into account, but I do not agree that the same should apply when a limiting interpretation is to be found in the description.
Accepting that a proprietor hides in the description possible interpretations diverging from that resulting from the plain wording of the claim is not tolerable. The gold standard in added matter should not be jeopardised to the benefit of a holistic approach. It took years for the boards and the EBA to come to a solid system in which all parties know where they stand. Added matter is nothing for fuzziness.
I hesitated to delete your comment, but I decided against it. However, I do not wish to see a continuation of this discussion in the present thread. I have already taken position in the reply to the first anonymous comment on the possible motivation of the further LQM. What needed to be said has been said, and there is no reason to dwell on it.