EP 3 467 666 B1 relates to the progressive playback of multimedia files as they are downloaded over a network.
The corresponding patent application 18206048.3 is a divisional of European application 08705745.1, which was filed as an international application and published as WO 2008/086313.
Brief outline of the case
The patent was revoked as the claim 1 as granted as well as the AR filed in opposition were infringing Art 76(1) or Art 123(2), respectively Art 123(3).
An intervention under Art 105 was held admissible by the board.
The board confirmed the revocation as the requests validly filed and admitted in appeal were infringing Art 76(1), for their most part.
The original opponent requested, inter alia, a stay of the appeal proceedings until a decision by the EBA was issued in the referral announced in case T 439/22=G 1/24. The intervener joined the original opponent for this request.
In the communication under Art 15(1) RPBA the board stated that it did not intend to stay the proceedings awaiting decision G 1/24.
The opponent’s point of view
The opponents argued that the decision of the EBA in G 1/24 was also relevant to the case at hand because the outcome of the present proceedings depended on the interpretation of the claim with respect to both added subject-matter and patentability.
The proprietor’s point of view
The proprietor argued that a claim should always be interpreted in line with the description and was against staying appeal proceedings in view of the referral in G 1/24.
The board’s decision
The board reminded that in its communication under Art 15(1) RPBA, it had noted that the questions at stake in referral G 1/24 did not arise in the context of a decision regarding added subject-matter of an unclear claim.
All three questions referred to be decided in G 1/24 concerned the situation of assessment of patentability of an invention under Arts 52 to 57. The specific issue dealt with in the referring decision was that a term in the claim which had a clear and agreed meaning in the technical field was explicitly defined more broadly in the description.
Therefore, the board considered that the possibility that decision G 1/24 would be relevant to the present case was only hypothetical.
Furthermore, it would be unsuitable to suspend every appeal where claim interpretation is necessary. Any considerations on staying the proceedings in the present case had to be balanced with the need for procedural efficiency in the proceedings, which were accelerated due to parallel proceedings in national courts, and the request of the proprietor not to stay the proceedings.
The board noted that, unclear features of a patent claim have to be interpreted taking the description into account. In addition, the board agreed with the opponents that lack of clarity of a feature should not be a reason for using the description to change the meaning of a different claim feature which itself is not unclear and not related to the lack of clarity. Whenever possible, any mismatch between claims and a definition or the like in the description should be resolved by amending the claims.
The board did thus not stay the proceedings awaiting G 1/24. In their final requests, the opponents did not maintain their requests to stay the proceedings.
In view of the arguments brought forward by the parties and of its own interpretation of the claims in the light of the description, the board concluded that granted claim 1 amounted to an unallowable intermediate generalisation and did not fulfil the requirements of Art 76(1). This was also the case for most of the requests validly filed and admitted in appeal.
Comments
In view of the ongoing litigation at national level, not staying the procedure awaiting for G 1/24 was a pragmatic way of handling the case.
It is however difficult to follow the board when it claims that G 1/24 might only have a hypothetical effect on added-matter, be it under Art 76(1) or Art 123(2).
This position is rather formalistic and bar from any reality as to the way of assessing added matter. Assessing added matter is directly and unambiguously related to the concept of N under Art 54(2).
In the comments on my blog publication over G 1/24, some commenters have disputed the fact that the novelty test was not the test to assess added matter. I beg to disagree
In my opinion, novelty and added matter are the two faces of the same coin. What is lost on one side is gained on the other.
It will thus be interesting to see how boards will look at added matter when “consulting” the description in order to interpret the claims.
In view of its simplicity and applicability also when it comes to assess the substantial validity of the priority, cf. G 2/88, it is to be hoped that the notion established in G 2/10 of “directly and unambiguously derivable” will not be eroded.
“Directly and unambiguously derivable” does simply mean that, any features not falling under this definition, are novel over the original disclosure.
Comments
Leave a comment