Brief outline of the case
The invention relates to a coin token assembly for use in a vending machine dispensing coin tokens. The assembly consists of a number of mutually distinguishable tokens, wherein mutually adjacent tokens are connected to each other in a manner such that they are ordered in mutually separable manner relative to each other. The tokens are separated along a notch that is created in the assembly to define a coin.
The applicant appealed the ED’s decision to refuse the application for lack of IS.
Claim 1 of the MR is mainly based on claims 1, 2 and 3 as originally filed.
The case was remitted to the OD with the order to grant a patent on the basis of the documents, MR and amended description filed during the OP + original drawings.
The choice of the CPA and the effects resulting from the difference with respect to the CPA
The ED took D1=DE 39 41 286 as CPA.
The applicant and the board disagreed and considered D3=DE 933 956 as CPA.
The main difference between the claimed invention and D3 is that the coin tokens are made of plastic having a thickness of 0.5 to 4 mm, rather than paper.
The technical effect disclosed in the originally filed application in this regard is that the tokens can be counted by weighing, cf. page 3, lines 26 to 29 or § [0011] of the A1 publication.
None of the cited documents D1 to D4 discloses any other effect related to the use of plastic coin tokens.
For the board, the PSA defines the problem based on the effect of the differences from the CPA, and the effect is derived primarily from the disclosure of the invention.
The effect documented in the application documents alone is taken as the basis for the problem formulation.
The Board concluded that any further, undocumented effects would be speculative and should not be additionally included in the problem formulation.
The board referred to T 495/91 (reasons point 4.2), and “Case Law of the Boards of Appeal of the European Patent Office, 10th edition, 2022, section I.D.4.2.2: “an objective definition of the problem to be solved by the invention should normally start from the problem described in the application”.
Consequently, the problem was formulated as “modifying D3 such that a supply of used coin tokens can be counted in simple manner”.
The Board concluded further that, starting from D3 as the CPA, the skilled person would not arrive at the subject-matter of claim 1 without exercising an inventive step pursuant Art 56. Claims 2 to 13 depend upon claim 1.
Comments
This decision reminds that even when the CPA used when applying the PSA is different to that mentioned (or not) in the application as filed, the objective technical problem will be based on the effect of the differences with the CPA, but this effect is derived primarily from the original disclosure of the invention.
Any further, undocumented effects would be speculative and should not be additionally included in the problem formulation.
This satatement is important and any effect/advantage resulting from the objective technical problem when applying the PSA has to lie within the original problem and the advantages/effects the inventor though that his invention brought about.
Adding further effects/advantages in the original description going further than those originally disclosed would invariably lead to an objection of added matter.
In the absence of an effect, the objective technical problem is to find an alternative
In all the other cases, the objective technical problem is to produce the effect of the invention. This effect cannot be different from that originally disclosed.
Some of the amicus curiae in G 2/21 discussed in the present blog, considered that the formulation of the objective technical problem could lead to express a different effect(s) to that (those) mentioned in the original application.
The present decision reminds that this cannot be the case.
The board’s considerations also help in the choice of the CPA. The skilled person would not take as CPA a document in a domain which is foreign to that of the invention, even if said document had the most features in common with the claimed invention.
https://www.epo.org/law-practice/case-law-appeals/recent/t181001eu1.html
Comments
22 replies on “T 1001/18 – PSA and effects derivable from the difference over the CPA”
This decision issues a strong and highly relevant warning for those cases in which, although the invention has been developed for the field of use of specific interest to the applicant, the applicant files initial broad claims which do not specify that field of use nor include features tied to the field of use, or covers this field of use only in a dependent claim. This is far from infrequent. The objective of a broad scope of protection tends to be seen as the key objective by applicants and representatives. But the conventional wisdom « who grabs too much, loses all » should be kept in mind.
It is common in such cases that the search finds novelty-defeating prior art documents foreign to the field of use of interest to the applicant, since the claims specify no field of use. The applicant then needs to amend the independent claims to incorporate the field of use. However, as clear from decision T 1001/18, this fallback position is bound to fail if it has not been carefully prepared when drafting the application by the disclosure of embodiments specifically designed for the field of use – providing adequate support for claims including the field-of-use, and of technical effects/advantages linked to the field of use.
Dear Mr Hagel,
I cannot but agree with your stance “who grabs too much, loses all”.
Any claim contains a certain amount of generalisation and there is nothing bad about it. I would say, a clever applicant/representative will not generalise abusively, as the danger is immediate: for such a lot you will get nothing and end up with a refusal. Any attempt at reinventing and claiming the wheel will end up with money spent to no avail.
An application is, in the vast majority of the cases, the technical solution of a technical problem which occurred in a specific technical field.
When for instance, an applicant found a clever way of transforming the circular movement of a motor in an alternating linear displacement in a shaver, it is true that this transformation might be used as well in a lawn mower. Is then a broad claim for just the transformation of movement in the interest of the applicant? I have some doubts. I am thinking here at a very old A paper of the EQE.
Forgetting the specific field is never good. A good representative should also think of neighbouring, even more general fields of application, but not be obsessed by those. Neighbouring or general fields might however be sources of prior art when it comes to IS.
On the other hand a pure picture claim of the preferred embodiment is also not the right thing.
The art is to find the best compromise between those two extremes. This art is difficult, and this is the reason why inventors need good representatives.
Even if the claim has to be limited, it is clear that adequate support for the limited claims is required. This is however another topic in which we seem to somehow disagree on the level of support required.
The two comments thus far prompt one from me. Europeans talk about the “onion skin” drafting model whereas Americans mutter about “ladders of abstraction”. I remember many years ago suggesting that a mark of good drafting is the quality of the dependent claims, and that if it cares to do so the EPO can raise patent drafting standards world-wide by explaining to the world how in the onion skin drafting model one links each successive intermediate generalization (or degree of specificity) in the claim set with a matching step-wise shift, in the description, of the particular corresponding technical problem solved. I don’t know any approach to patentability that toggles between features and effects as rigorously as EPO-PSA.
The higher the skills of the drafter, the less need there is for an expensive pre-drafting search and assessment of the state of the art. Applicants have a difficult task to budget their patent filing activity optimally, especially when they are filing in a field they don’t already know intimately. Americans think drafting is child’s play compared with litigation. I think they underestimate the value of top quality drafting in a “First to File” jurisdiction.
I see that this case was drafted in an EPC Member State though, and that Applicant was in the end successful.
Dear Max Drei,
I can agree with you that US applicants underestimate the value of top quality drafting in a “First to File” jurisdiction.
Some US priority applications are drafted in such a rather “sloppy” manner that it should not come as a surprise when US applicants coming to the EPO end up with massive problems of patentability or added matter.
The EPO now is in existence for a few decades.
The penny still does not have dropped on the other side of the Atlantic.
I wonder why?
Dear MaxDrei,
If US patent lawyers think drafting is child’s play compared to litigation, there are strong reasons, linked to the US system. Most patent lawyers are attorneys at law (patent agents who are not attorneys must be a small minority), generally specialised either in prosecution work or in litigation. Prosecution and litigation require different sorts of talents. But the key difference is that litigation is way more lucrative. This is linked to the sizable time litigation lawyers can charge in the pre-trial discovery proceedings, particularly for the cross-examination of witnesses. Attorney fees can be capped to some extent for prosecution work, not for litigation work.
Drawing on my experiences as a corporate practitionner in various sectors, I must also say that patenting has usually other objectives than litigation. I worked for a company where the prime objective was « keep the company out of trouble » i.e. freedom of exploitation, and in addition patenting must support the business company, for example help build collaborations and strengthen the company’s position in relationships with suppliers, clients and investors. This provides short-term and medium-term benefits, unlike the prospect of litigation, which is costly and risky.
Turning to the onion skin metaphor, it is suggestive but it has limits. The fallback positions must be thought about in advance and adequately documented in the description. This is especially true when the fallback position relates to a specific field of use in which the real-life problem occurs, and it is advisable, beyond the mere identification of the field of use, to describe its constraints and the technical effects/advantages relevant to the field of use. Both US and EPO case law make this quite clear.
Indeed, Francis. In litigation, the budget is presumably in the category of “whatever it takes, to ensure that the case is not lost” whereas the prep&pros budget can be screwed downwards to whatever low figure is set by the bean counters. As to the importance of drafting quality, I think that European strictness on adding matter during prosecution plays a role. In the USA, coming recently to a First to File system, it still hasn’t dawned on many patent practitioners that the bar for their WD requirement, hitherto very low, is getting progressively higher, ever increasing the need for more thoughtful drafting. Agreed?
Dear Max,
Sorry for answering your question by a question, but what is the meaning of “WD requirement” ?
WD = Written Description. One of the requirements of patentability in the USA under 35 USC 112 is for the patent application, already on its filing date, to include a “written description” of the invention defined by the claim. If during prosecution, you amend the claim, the USPTO should check that there is WD support in the application as filed, for the invention of the amended claim. Up to now, that checking has borne no comparison with EPO checking for added matter. Europeans don’t understand how the USA polices for new matter. Americans think European checking for added matter is unreasonably strict.
Dear Max Drei,
I know that attempts have been made to have one description valid for the whole world. In view of the different drafting philosophies between for instance the US and Europe, this appears to be an unachievable aim, although the content of the description is according the terms used on both sides quite similar. .
I would not even dream of claims presentable on both sides of the Atlantic. The contrast is even wilder.
I would not say Europeans don’t understand how the USA polices for new matter, but indeed it is much more lenient in the US than at the EPO.
I can agree with you that Americans think European checking for added matter is unreasonably strict. The big issue is that it is not what is obvious for the skilled person that can be added in a description or in claims. Equivalents do not fall under novelty.
If I am not wrong, a continuation in the US can be equated with a divisional application, but the big difference lies in the continuation-in-part which is something unknown in Europe. Any add-on in Europe is considered straight as added matter if it does not derive directly and unambiguously from the original disclosure.
However, the EBA has set up a system of case law which is uniform and applies in a logical and similar manner when it comes to different issues like novelty, priority and added matter. There also exists a series of tools like the novelty test, three-point-test or extended novelty test, but at the end of the day, the gold standard applies.
To come back to our topic in T 1001/18, any effect/advantage going beyond those originally disclosed is considered added matter.
Daniel, on the requirement for WD for a prosecution amendment at the USPTO, you might be surprised, but there is case law that establishes it as a “novelty” rather than an “obvious” test. It is just that the European novelty =disclosure=Gold Standard connection has yet to be made, over there. It all goes to show how much need there is for patent judges to hold international discussions with each other about such topics as “What do you mean by when you say that a document “discloses” something?”
Dear Max Drei,
Thanks for the information about the novelty like condition.
When I had to deal with added-matter with US applicants/proprietors I was regularly confronted with the statement that it is obvious to the skilled person to do it slightly differently and hence what is added in the claims does not represent added-matter in the meaning of Art 123(2). When looking at some CIP, I wonder whether the test is not rather IS than N.
I do fully agree with you that there is much need for patent judges to hold international discussions with each other.
This is to me a much better way to harmonise the views in various jurisdictions than a system like the UPC, which in terms of validity will only add a further layer of case law. I strongly doubt that such a layer of case law is at all useful.
Daniel, they do have a prohibition on adding matter in the USA but it is not in Section 112 of the Statute and (as I understand it) it doesn’t come into play in the same way as it does here, during ex parte pre-grant prosecution and amendment. I don’t understand it. The S. 112 “written description” requirement of the US patent statute is not the same as the later provision of the statute that forbids adding matter. The WD requirement is getting increased attention, now that the USA has moved from First to Invent to First Inventor to File. This comes as a surprise to US attorneys but it doesn’t to us, eh?
On harmonisation, we see it within Europe, as the national judges strive to write decisions that command the respect of their peers in other EPC Member State jurisdictions. I also routinely see in the decisions of the USA’s CAFC the influence of the established case law of the Boards of Appeal (but mediated through the jurisprudence in England, which I think is more influential in the USA than that of civil law mainland Europe).
Dear Mr Thomas,
I have to disagree with your opinion that a description valid for US and Europe is an unachievable aim. My personal experiences lead to the opposite conclusion. I have decade-long experience of handling patent applications first filed in the US and then filed in Europe, and vice-versa, in addition I spent a couple years in the US patent department of a multinational company and I was admitted to practice before the USPTO.
By and large, descriptions can be essentially the same on both sides of the pond. This is not true for the claims, because of different formal rules (no reference numerals in US claims) and different approaches as to unity and multidependent claims, and a key point is that the meaning of the « preamble » is different. In US claims the preamble is not limiting in the absence of specific drafting precautions, the only limiting features are those recited in the body of the claims, whereas in Europe the features of the preamble when positively recited are limiting.
Regarding the assessment of new matter, there is a well known divergence, the EPO is certainly very strict compared to the USPTO.
As to CIP applications, I have no recent experience but I believe that US law provides that the added part of the CIP application does not benefit from the filing date of the basic application, its effective date is the filing date of the CIP.
Dear Mr Hagel,
It is not worth of squabbling about differences between the US or EP type of description. The differences are not glaring but they do exist.
As far as claim construction is concerned the differences are glaring.
Two-part form claims are not usual in the US (Jepson claims).
I would however allow myself to state that in European practice whether in two-part form or not, all features in the claims are limiting, not only those of the preamble.
US applicants do not like Jepson claims as it leads them to accept what is known and this could be detrimental in the US.
When seeing US applications and their famous “incorporation by reference” it is clear that they have problems with the way the EPO assesses added-matter. For the rest I can only repeat what I have said to Max Drei that I was regularly confronted with the statement that it is obvious to the skilled person to do it slightly differently and hence what is added in the claims does not represent added-matter in the meaning of Art 123(2).
Even if CIP only benefit of their own filing date, it remains that they are “add-ons” to the original disclosure.
When on top you look at the scant content of provisional applications, which often used for claiming priority, no wonder that US applicants have difficulties in coping with the way the concepts of novelty and added-matter are dealt with.
Gentlemen, think how long it took the courts in Germany to align with the concept of novelty found in the established case law of the Boards of Appeal. Decades. Imagine how much longer it will take the courts of the USA to get in tune with the legal consequences of the shift from First to Invent to First to File. My best guess: about 40 years to get anywhere near the Gold Standard or even the notion that “disclosure” means the same thing for all of i) novelty ii) added matter, and iii) whether a Paris priority earlier date can be accorded to the claim.
Dear Mr Thomas,
I am disappointed by your reaction to my comment, when you call « squabbling » the assertion of an opinion based on my personal long-time experiences as a way to side-step this opinion. It seems you are not hospitable to any comment expressing disagreement with your view. This will dissuade me to post other comments on your blog.
Dear Mr Hagel,
When I said it was not worth squabbling about the differences between the US or EP type of description, I meant that it is not worth going into detail and compare the various legal rules relating to the drafting of a description in the US and Europe. It might not have been clear to you, what I regret, but it has never been my intention to side-step your personal long-time experience.
As far as experience is concerned, I have been in the patent business since 01.11.1971.
I could thus also bring forward a personal long-time experience.
I will not squabble about it, as it is not worth the time spent on this kind of auxiliary discussion.
I am of the opinion that the differences between the US and Europe worth discussing lie more in the claims than in the description.
Nevertheless, just as an example of a big difference: in Europe the notion of incorporation by reference in the description is handled in a much more restrictive way than in the US, cf. Guidelines H-IV, 2.2.1.
Over the years, I have been leading many seminars, for instance on added matter, and the result of my experience is that the audience composed of representatives from different horizons regularly came to the conclusion that there is not one type of description valid on both sides of the Atlantic. A lot might be similar, but there are also marked differences, see above.
I never claimed to be in possession of the truth. My long-standing experience allows me to have an opinion on certain topics.
I will defend this opinion if the counter-arguments do not convince me, but I am certainly hospitable to any comment expressing disagreement with my view.
As said, I will defend my point of view, but this is does not mean that I do neither respect nor understand a different view.
Only discussions, especially when opposite points of view are expressed, can bring forward mutual comprehension. This does however not mean alignment.
Just look at my discussions with Max Drei. We might not agree on various topics, but I respect his views as much as yours.
Should you not want to post further comments on my blog I would sincerely regret it.
Gentlemen, I am very disappointed to read this most recent exchange. Really, there is no good reason at all for the two of you to fall out.
I post under a pseudonym but understand that one day I might get “outed” so I have to be a bit careful that I can stand to the defence of anything I write. I admire those brave enough to post under their own name, especially when they are opinionated. It is a pity to condemn them for that. It’s those opinions that breathe life into the blog.
English is my first language, and it’s the only language that I dare write in. If I were to attempt to write in any other language there would be more thn enough infelicities of expression to give offence to numerous readers. There are plenty of English speakers who get upset by what M. Thomas writes in English on a UK-based blog and I think they are not taking into account that English is not the first language of M. Thomas. He defends passionately the case law of the EPO and I’m a big fan of it too. We all of us benefit from arguing with others who have different career experience.
I have advised US clients from my office in Germany for more than 25 years. My viewpoint about conformity between US and EP patent law is different from each of yours. But is it a subject important enough to fall out over? Surely not.
Conversely, conformity between description and claims at the EPO is a subject that is viscerally important more or less every day, for a European patent attorney prosecuting before the EPO. No wonder it generates such heat. I have some understanding for the position taken by M. Thomas and I have understanding for the attitude of my UK patent attorney colleagues. I have sympathy with both attitudes and still have not got it clear in my own mind what the answer is, so am happy that I am not the one who will have to write an EBA opinion on the matter. Only if we all continue to argue can we find the optimal way forward.
Remember the days before the EPO addressed the Art 123(2)/(3) inescapable trap? My US clients told me confidently that the EBA would never set in stone such an absurd “CATCH 22” legal provision. The German courts still think it absurd but not the English courts. We should all be thankful that we live in Europe, where different opinions are still respected. That M.Thomas is currently attracting a veritable “shitstorm” on the IPKat blog, with his views on conforming the description, is no reason, here, to pile in here too. The word “squabble” is unfortunate. It is what children do. Here, we are adults, and should not be upset by nothing more than an unfortunately chosen word. Mr Hagel, please don’t leave. I greatly value your contributions.
Dear Max Drei,
Thanks for your comment about the meaning of one mother’s tongue.
When I was a young director, I found it appropriate to write marking reports for the staff I was in charge in their preferred official language, i.e.one the official languages of the EPO.
I went off this idea when I realised that it could be interpreted in a different ways than the one I thought off.
The nuances I thought would be apparent were not at all taken for what they were intended.
This was even more the case when none of the EPO official languages was the mother tongue of the staff member.
I then decided to write those marking reports in my mother tongue as it was the only language I was sure to be able to express correctly what I meant about the performance and with all the necessary nuances.
We should also remember that translators always work from a foreign language towards their mother tongue.
That the have a very good command of the foreign language is a necessity, but the translation is always in the same direction.
I am aware of what is happening in a UK-based blog, and the only way to stop the “shitstorm” going on, is to stop writing after I have made my point of view clear.
But turning in circles does not bring matters forward.
It is part of life’s rich tapestry to have different opinions. It is through exchange of ideas and opinions that things can advance, but at the same time it needs mutual respect.
This was, in my humble opinion sometimes lacking in said UK-based blog.
This will however not withhold me of commenting in said UK-based blog, even under my own name if I feel it necessary.
On the other hand, I hope, like you, that Mr Hagel will continue to post comments in the present blog.
Disagreeing is nothing bad as such and my intention has never been to disappoint Mr Hagel.
If this was the case I regret it deeply.
Dear Max Drei,
I can well follow you when you say that courts might take a long time after the shift from First to Invent to First to File.
I was more thinking of US representatives which deal much more with the EPO, be it in the international phase or in the European phase.
After 4 decades, they should be more aware of the situation on this side of the Atlantic.
Dear Mr Thomas, dear MaxDrei,
Thank you for your answers. Thank you MaxDrei for your appreciation of my contributions.
Getting back to the word « squabble », I would like to point out that each contributor has a certain point of view based on his/her background, experiences and interests, linked to his/her position or past position. Every point of view is legitimate, but differences as to point of view imply that certain issues greatly matter to some and less or not at all to others. For example, there are marked differences between corporate attorneys and attorneys in private practice, and even within corporate attorneys, the point of view may greatly differ depending on the technical field, the market position and objectives of their company and the resulting IP strategy.
I had written a piece some time ago on this topic, available on IP strategist Jackie Hutter’s website at https://thehuttergroup.com/strategic-patenting-guest-post/, in which I suggested a strategic drafting of an application i.e. taking into account the specific objectives of the company – which may be quite diverse and multiple.
Regarding US/Europe comparison as to claim drafting, a difference I did not mention in my previous comment but which is significant is the meaning of the term « means for + function » . Under US law, the scope of « means for » is limited to the embodiments disclosed in the description i.e. the opposite of its meaning for European attorneys. I am not sure every European attorney is aware of this feature of US law.
Gentlemen, I see that my comment has prompted a reply from each of you and I hope we can all resume normal comment activity in a good spirit.
As to the gulf of misunderstanding across the Atlantic Ocean, my opinion is that it is harder for us Europeans to understand US law than the other way around. The USA is a very litigious society where going to law is a routine business tool.
East Asian companies are assiduous and skilful in their use of patent law in Europe. Heaven help European industry, if ever the broad mass of patent attorneys deep inside the USA get into the habit of drafting their patent applications with the EPO’s problem-solution approach in mind. Because then (other than what frequently happens up to now) they will begin routinely (and, to use their favourite word “aggressively”) to acquire all over Europe a scope of protection that covers the full contribution to the art made by their inventors.