EP 2 680 535 B1 relates to “Providing presence information in a personal communications system comprising an interface unit”.
Brief outline of the case
The OD held that the patent as granted suffered from a lack of sufficiency, and maintained it according AR1. Opponent’s objections pursuant to Art 123(2) were not admitted by the OD. The opponent appealed.
The board admitted in appeal the objection under Art 123(2) not admitted by the OD.
Claim 1 as maintained infringed Art 123(2). Two new AR admitted under Art 13(2) RPBA were infringing Art 123(3). The patent was thus revoked.
The board also criticised the OD.
The opponent’s point of view
In response to the OD’s communication under R 115(1), the opponent raised for the first time an objection under Art 123(2) against some features of the claim as granted.
It was pointed out that the limitation “with or without using the headset” included in those features had been added to claim 1 during the examination proceedings and did not find literal basis in the application as filed.
The opponent further argued that claim 1 encompassed, as one alternative, a claim construction (called “opponent’s claim construction”) according to which the “presence message” actually contained specific information whether or not a “headset” was used in the “phone call”.
This configuration, however, was not directly and unambiguously supported by the original application. Rather, the original documents only disclosed that the “presence message“, i.e. indicating that the respective telephone is busy, was generated irrespective of whether the headset was used or not. Consequently, the incorporation of those features did not comply with Art 123(2).
The OD’s decision on the admissibility of the objection under Art 123(2)
The OD dismissed the late ground of opposition under Art 100(c) with the following reasoning:
“The OD notes that the wording of the claims is clear and is readily construed as meaning ‘involved in a phone call regardless of the use of the headset’. The OD prima facie sees no reasons to read this feature otherwise and thus decides not to admit this late filed ground of opposition.”
In its decision about AR1, the OD declared:
“The OD is of the opinion that the subject-matter of claims 1 and 7 of the AR1 are both compliant with the requirement of Art 123(2) […] for the same reasons as already provided in the context of the claims 1 and 7 of the patent”.
The proprietor’s point of view
During the OP before the board, the proprietor invited the board to adopt a claim construction, (called “proprietor’s claim construction”), also adopted by the OD, that made the claim compliant with Art 123(2), insinuating that where several claim interpretations were possible, the board should adopt an interpretation that made the claims compliant with the EPC.
The board’s decision
Incorrect assessment of a late filed objection
For the board, the OD had only conducted a cursory, prima facie assessment of compliance with Art 123(2). Also the minutes of the OP before the OD provide evidence of this cursory non-admittance of the added-matter objection into the opposition proceedings.
The OD’s conclusion gives the impression that the latter conducted an assessment on added matter in full – without, however, providing a different, i.e. a full, reasoning on that issue.
Since compliance of AR1 could not have been established without admitting the respective objection with respect to the then “MR”, the decision under appeal is manifestly inconsistent.
Irrespective of this inconsistent and enigmatic approach taken by the OD, both the opponent and the proprietor addressed and discussed the added-matter issue in full in their statement of grounds of appeal and written reply thereto – rather than addressing the OD’s apparent non-admittance decision under formal grounds.
The board considered that the OD’s interpretation constrains the “presence message” to only indicating an ongoing “phone call”. Yet, doing so amounts virtually to ignoring two features of the claim altogether.
This, however, does not constitute a good-faith interpretation of the claim, since a technically meaningful feature would then be omitted: When construing a claim, the skilled reader typically makes use of a “mind willing to understand” (as invoked by the proprietor). Therefore, a technical meaning is typically given to each claim feature when construing the subject-matter of a claim in an objective manner, see e.g. T 423/23, Reasons 2.1.3 and T 10/22, Reasons 2.3.
Admissibility of the late filed objection in appeal
The board held that, regardless of whether the OD committed an “error”, the board decided that, at least the “circumstances of the appeal case” justify admitting the late-filed objection under Art 123(2) into the appeal proceedings.
Different interpretations possible of a claim under Art 123(2)
The board held that a patent, and specifically a claim has to be interpreted according to the technical information it provides, and all interpretations that are technically valid must be considered as technically meaningful interpretations, and neither of these interpretations may extend beyond the content of the application as filed within the meaning of Art 123(2).
There is however no indication in Art 69(1) or in G 1/24 that “using“, “consulting” or “referring to” the description and drawings would mandate a claim interpretation that necessarily complies with Art 123(2), irrespective of whether that interpretation is preferable or more likely, cf. T 405/24, Reasons 1.2.3, and the decisions cited therein.
Different interpretations possible of a claim under Art 123(3)
When dealing with the new AR, the board held that, if a granted claim allows for several technically meaningful interpretations, it has to be ensured that neither of these interpretations the protection conferred by it is extended within the meaning of Art 123(3).
Comments
The patent has been dealt with in examination and in opposition by the directorate “Telecom”.
It is not the first time that board 3.5.05 complains about the way applications and patents are dealt by said directorate.
During examination no objections under Art 83 has ever been raised against claim 7 as granted. It appears that after a few communications, the examiner in charge simply gave up, and suggested grant to the other members of the ED.
In the appealed decision, the OD held that “the subject-matter of claim 1 encompasses four alternatives owing to the reliance of the “or” connector, two of which lacking disclosure in the patent so that said subject-matter does not comply with Art 83. Those were already present and the objection under Art 83 should have been raised during examination.
The way the OD dealt with the late filed objection of added matter leads to the conclusion that the OD decided to accept the interpretation of the proprietor as this led to less work for it.
Last but not least, the board made clear that when a claim allows a plurality of technically sensible interpretations, if one of those offends Art 123(2) or Art 123(3), the corresponding objection applies.
As far as Art 123(2) is concerned, see T 1791/16, Reasons 11, T 1854/20, Reasons 1.2, 2d § and T 470/21, Reasons 2.1, 3d §
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