EP 2 931 143 B1 relates to an implant and guide for maxillofacial surgery.
Brief outline of the case
The OD decided revocation as some requests were not compliant with Art 123(2) or (3) lacked N. The proprietor appealed.
The proprietor filed new requests in appeal, which were admitted but did not allow maintenance. The patent was thus revoked for good.
The case is interesting in the way the claims filed in appeal were interpreted and that an extension of protection was also hindering maintenance.
Claim 1 of AR1 merely related to a method for configuring and producing a surgical guide (9, 28, 34, 44) and an associated implant (5, 27, 33, 43) for maxillofacial osteosynthesis.
In the present blog entry we will deal with AR1.
The proprietor’s point of view on AR1
The addition of a production step in the method of claim 1 of AR1 did not extend the protection conferred by claim 1 as granted.
This was because this additional step merely limited the method of claim 1 as granted. Such a limited method was already encompassed by claim 1 as granted by virtue of the term “comprising” in the preamble, which did not restrict the steps to those listed in the claim. This interpretation aligned with earlier decisions of the boards.
Furthermore, the product protection conferred by Art 64(2) already extended to a physical implant produced through claim 1 as granted. This was also supported by the patent specification, which had to be used to interpret the claims and thus to determine the extent of protection conferred by the patent, pursuant to Art 69(1), and which confirmed that the claimed method could involve a further production step.
This interpretation was consistent with the purpose of Art 123(3). Excluding from the protection conferred by claim 1 as granted the physical implant produced as configured in accordance with the method defined in that claim would undermine the commercial utility of claim 1 as granted, contrary to the fundamental objectives of the patent system.
The opponent’s point of view on AR1
Claim 1 of AR1 included a production step and thereby gave rise, under Art 64(2), to protection for the physical implant directly obtained by the method. Art 64(2) concerned products directly obtained by the process as claimed, not products that could be obtained only after carrying out further unclaimed steps.
However, the granted patent did not confer such product protection for a physical implant manufactured in accordance with the 3D structure configured by the method of claim 1 as granted
The method of claim 1 as granted ended with the determination of a 3D structure for the implant but did not directly produce a physical implant. Even if a method including an additional production step could fall within the scope of claim 1 as granted, the product resulting from that additional step was not thereby directly obtained by the granted method itself.
The board’s decision on AR1
The board acknowledged that claim 1 of AR1, by explicitly including a step of producing the implant, confers protection not only to the claimed method but also, to the implant directly obtained by that method, i.e. to a physical implant produced in accordance with the method defined in claim 1 of AR1.
The board acknowledged that a method comprising all the steps of claim 1 as granted and, in addition, a step of producing the implant also falls within the scope of claim 1 as granted, even though claim 1 as granted does not comprise any production step. This is because the added production step merely limits the method defined in claim 1 as granted.
However, taking account of Art 64(2), this does, contrary to the proprietor’s view, not automatically mean that the scope of protection was not extended. The physical implant which is, within the meaning of Art 64(2), directly obtained by the more limited method according to AR1 was not protected by claim 1 as granted.
Pursuant to Article 64(2) EPC, if the subject-matter of the patent is a process, the protection conferred by the patent extends to products directly obtained by such a process. This provision therefore requires that the product in question be “directly” obtained by the claimed method. The board understood this to mean that the protection conferred by a process claim does not, as a rule, extend to products obtained only by carrying out further steps which are neither defined in that claim nor implied by it.
In the case at hand, what is directly obtained when carrying out the claimed method is merely data. Having regard to the purpose of Art 64(2), a physical medium storing that data, for instance, could still be considered to fall within its scope
However, using the data obtained by carrying out the method defined in claim 1 as granted when manufacturing a physical implant is an entirely different matter. A physical implant is, in terms of its characteristics, far removed from mere data configuring that implant, which is what is obtained when carrying out the claimed method. Therefore, a physical implant was not “directly” obtained, within the meaning of Art 64(2), by the method defined in claim 1 as granted.
Hence, if a part of the patent’s scope of protection is, in view of Art 64(2), extended because of the amendment, Art 123(3) is infringed. In such a situation, it does not matter whether the patent’s scope of protection is partly also, with regard to the process claim as such, more limited than before the amendment.
Hence, if a granted claim defines a computer-implemented method for configuring a physical object which, when carried out, merely results in data representing that physical object, and not in the object itself, amending the claim such that it additionally includes the step of manufacturing the physical object so configured is, in view of Art 64(2), not allowable under Art 123(3).
Comments
The proprietor’s view that, since claim 1 as granted “comprised” a series of steps it also comprised the manufacture of an actual device was not shared by the board.
In the present case, the method claim as granted merely produced data representing an object, but not the object itself.
It was thus correct to consider that claim 1 of AR1 extended the protection conferred by claim 1 as granted.
Claim 1 of AR1 was not computer implemented, but the steps of the method were those of claim 1 of the MRn.
Art 53(c) is looming in the background
The proprietor was actually caught in a dilemma. Claim 1 as granted related to a method for manufacturing a bone implant based on the data representing a real patient as well as some osteotomy practised on the patient. Thre was no question of implementing the method as CII in claim 1 of AR1. Such a claim , should normally be considered as a non-patentable method under Art 53(c).
The present case reminds of T 1005/98. Claim 1 was directed to a method for manufacturing a knee prosthesis, which is prima facie not falling under the prohibition of Art 53(c), at the time Art 54(2) EPC 1973. The method involved a surgical step which was not claimed, but necessary. In order to customise the knee prothesis, the method comprised taking two X-ray pictures, one before and one after the resection of the knee. In the present case, the simulation allows an osteotomy to be practiced on the patient.
There was thus a further reason for which claim 1 of AR1 was potentially not allowable. This reason could however not be brought in the procdure by the board pursuant to G 9/91 and G 10/91.
Comments
Leave a comment