The petition for review, filed by the proprietor, concerns decision T 532/20.
Brief outline of the case
EP 1 590 567 B1 relates to a “Wind Turbine Generator with a Low Voltage Ride-Through Controller and a Method for Controlling Wind Turbine Components”
The oppositions were rejected, AR 1-8 pending at the end of the opposition proceedings were not decided upon. Opponents 2 and 3 appealed the decision. Opponent 2 was the only party left when it came to the petition for review.
Eventually, the board revoked the patent.
At stake here is the fate of AR8 which was directed to a wind turbine generator comprising, inter alia, a power converter including a converter controller. This power converter was further specified by the following features originating from the originally filed description:
“wherein the power converter (315, 400) includes a protective circuit for maintaining currents within an allowable range, the converter controller being adapted for selectively activating and deactivating the protective circuit to maintain the current flow within the allowable range“.
Clarity of this claim was discussed during OP before the BA.
The objection raised by the opponents was that it was not clear what “for maintaining currents in an allowable range” meant.
The board held that AR8 did not meet the requirements of Art 84 and that the same conclusion applied correspondingly to the remaining AR 6, 7 and 9. The proprietor then filed a further request, AR A. This request consisted of a single claim, which combined granted claims 1, 4 and 8
AR A was not admitted under Art 13(2) RPBA.
In the context of the admissibility of said request, the proprietor then filed a question to be referred to the EBA, whereby this request for a referral was eventually rejected.
The petitioner then filed an objection under R 106 in writing. The objection concerned an alleged violation of Art 113 EPC in connection with the dismissal of the request for a referral and the presentation of arguments in favour of AR A. The objection under R 106 was dismissed.
The proprietor’s point of view
The proprietor argued that there were two distinct clarity objections against claim 1 of AR8.
The alleged lack of clarity what “maintaining currents in an allowable range” meant , i.e. the “allowable current range objection” and the alleged lack of information on which components were to be protected by the protective circuit, i.e. the “unspecified components objection“.
The proprietor acknowledged that it was heard in the context of the “allowable current range objection” but asserted that it was confronted with the “unspecified components objection” only when reading the written decision.
Accordingly, the proprietor requested that the appeal proceedings be re-opened on the latter topic.
The board’s objection
The board held that claim 1 of AR 8 lacked clarity since the claim wording did not contain any limitation as to which components the protective circuit functionally protects, and that it was thus not possible to determine what numerical values fell within the “allowable” range of claim 1.
The board explained further that the skilled person would be faced merely with a definition of a problem that some unspecified components are to be protected so as to keep the current in some corresponding allowable range. The chosen definition amounted to placing the burden of determining all potential components to be protected on the skilled person. The resulting non-compliance with Art 84 in claim 1 could not be remedied by further explanations in the description.
Admissibility of the petition
The petition for review is admissible as timely filed and the fee due timely paid. .
The objection under R 106 filed by the proprietor during OP concerned a different alleged violation of its right to be heard. This objection, which was rejected by the board, is of no relevance for the present review proceedings.
The proprietor argued that it could not file an objection under R 106 during the appeal proceedings since it became aware of the reasons on which it had no opportunity comment only after receiving the reasons of the decision. The EBA accepted that the exception from the obligation to raise objections under R 106 applied in the present case.
Allowability of the petition
In its communication pursuant to Art 13 and 14(2) RPEBA, the EBA raised the question whether the “unspecified components objection” was adequately covered by the broader clarity objection presented during the appeal proceedings or whether it constituted a materially new line of reasoning which had required express discussion.
During the OP before the EBA both parties agreed with the distinction between the “allowable current range objection” and the “unspecified components objection” and both used these terms during the OP. The parties however disagreed on whether the latter had been adequately discussed during the appeal proceedings.
The EBA did not see any clear indication that the “unspecified components objection” was raised implicitly, for example as an aspect of an overarching clarity objection.
During the written appeal proceedings, an objection was made that the critical feature defined a result to be achieved, i.e. “a protective circuit for maintaining currents within an allowable range”, but not the technical measure of how to achieve it.
The “allowable current range objection” and the “unspecified components objection” are the aspects of the overall clarity or “result to be achieved” objection against the critical issue which were discussed in the decision under review.
The objections were addressed separately, with a different outcome. The board’s finding that the “unspecified components objection” was justified in view of Art 84 ultimately led to the revocation of the patent even though the “allowable current range objection” was not justified in the board’s view.
The EBA agreed in that it is not sufficient for a relevant specific aspect such as the “unspecified components” to be covered or encompassed by a broader clarity objection that was discussed if the parties were not aware of the specific aspect during the discussion.
Specific components of the power converter may have been referred to but the references brought forward by the parties do not indicate that there was any discussion on which specific components needed to be protected from currents exceeding the allowable range and on any clarity issues in this respect.
The EBA has considered that the unspecified components objection was discussed within the general argument that the critical feature merely defined a result to be achieved.
Since the EBA has no power or ability to investigate further whether other facts or indications might suggest that the proprietor could be aware that the board had doubts about the specific aspect of clarity, namely, the “unspecified component” issue, it has to rely on the parties’ submissions in this respect.
In the absence of any such indication it is not for the party alleging a breach of its right to be heard to prove that there were no such facts or indications, cf. see R 15/11, Reasons 5.
Any doubts remaining on whether a decision under review is based upon facts and considerations on which the parties had an opportunity to comment must be solved to the affected party’s benefit, cf. R 2/14, Reasons 10.3.4.
For these reasons, the EBA concluded that the “unspecified components objection” was not discussed during appeal proceedings and its use in the written decision under appeal therefore came as a surprise to the petitioner.
In its communication pursuant to Articles 13 and 14(2) RPEBA, the Enlarged Board referred to similarities between the present petition and the case underlying decision R 2/14, concerning appeal case T 1627/09.
Like in the appeal case underlying R 2/14, a broader objection was discussed during appeal proceedings in the present case, but not the specific aspect encompassed by the broader objection that turned out to be decisive for the case.
In such cases, the “grounds” as referred to in Art 113(1) may have a more specific meaning than a broader objection like “lack of clarity” or “insufficiency of disclosure”. In the present case it is irrelevant that the broader clarity objection was discussed and that one specific aspect, the “allowable current range objection”, was also discussed and turned out to be non-critical.
As the “unspecified components objection” which had not been discussed during the appeal proceedings eventually was the reason for the board’s finding that the patent was invalid. The EBA concluded that a fundamental violation of Art 113(1) occurred.
Procedural issues
In the present case, the board responsible for the proceedings after their re-opening is the board to which the appeal cases concerning patents with the main classification F03 are allocated under the business distribution scheme as applicable when the proceedings are re-opened. As the business distribution has changed, it will not be the board 3.5.02.
Comments
There are now 9 decisions of the EBA under Art 112a ordering re-opening the procedure before the board. With the present one 2 are pending, and only 2 have led to a different outcome, one in appeal after examination, one after appeal in opposition.
When looking at the present case, § [0018] or § [0036] make clear that the use of a converter controller that monitors the current in one or both of the inverters to selectively enable a current limiting circuit can protect against damage that can be caused by high currents during a low voltage event.
Either a crowbar is selectively enabled, cf. § [0018] resp. § [0029], or the pitch of the blades is changed to a feathered position, cf. § [0033].
What is to be protected are the semiconductor components of the power converter, cf. § [0041]. In § [0016] it is disclosed that inverters 235 and 240 are Integrated Gate Bipolar Transistor (IGBT) power inverters. Power inverters for use in wind turbine generators are known in the art and any appropriate power inverters can be used.
In view of G 1/24, some features might have to be added to the claim, but the description contains ample information about the components to be protected.
Difficult to see here a lack of clarity, which cannot be overcome by information contained in the description as alleged by the board in T 532/20. but I accept that I could be mistaken.
T 532/20, was commented in the present blog.
Comments
Leave a comment