EP 2 242 634 B1 relates to a system and method for producing an extruded expandable barrier. Such barriers are commonly used in various parts of a motor vehicle to prevent noise, fumes, dirt, water, and the like from passing through from one area to another.
Brief outline of the case
The patent was revoked by the OD, inter alia due the fact that the patent as granted and that the claims AR 1, 1A to 1C and 2 to 10 infringed Art 123(2).
As the only claim of AR 1G did not contain added matter, the case was remitted to the OD for further prosecution.
The case is interesting as it deals with G 1/24 and added matter.
The proprietor’s point of view
Original paragraph [0041] discloses a plurality of independently controlled heating devices along the extrusion system. Reference was made to G 1/24, in particular to points 16 and 19 of the Reasons and to the Headnote 2 of the UPC decision mentioned in Reasons 19 of G 1/24.
These arguments apply in an analogue manner to granted claim 5. In this context, paragraphs [0066] and [0067] of the application as filed should be taken into account.
The proprietor argued that the subject-matter of the patent extends to what, after examination of the description and the drawings, appears to be the subject-matter for which the patent proprietor seeks protection, i.e. the will of the proprietor.
The opponent’s point of view
Original paragraphs [0040] and [0041] do not only disclose additional features, like a profiler and a heating profile, but additional subject-matters such as hopper, a feed-throat, etc.
Paragraphs [0066] and [0067] of the application as filed are part of the description of the method and comprises many more features that are not part of the independent method claims . Therefore, granted claims 1 and 5 contain subject-matter which extends beyond the content of the application as filed.
The board’s decision
For the board, the intermediate generalisation is not allowable, and it is therefore immaterial whether paragraphs [0040] and [0041] serve to clarify that the features of original claims 2 and 6, or 5 and 6 do not relate to exclusive alternatives, but may be combined. The possibility of combining the features of these dependent claims is a necessary, but not a sufficient condition for allowability of an amendment under the “gold standard“.
This conclusion is not altered by the proprietor’s reference to G 1/24. For the boards, the description and claims as filed already express “the will” for the very reason that they were drafted by the applicant, and thus, there would not be any need for further speculation on the applicant’s the proprietor’s intentions, i.e. on what else might be the subject-matter to be protected.
Assuming arguendo that “the will” really was to be considered for examining the allowability of an amendment – which the board strongly rebuts – this concept would identify multiple different wills in the present case.
Any combination of claims 1, 2, 3 and 6, i.e. claims 1, 2 and 3, or claims 1, 2 and 6, or claims 1, 3 and 6, or claims 1, 2, 3 and 6, of the application as filed would be an equally likely manifestation of “the will” for the sole reason that the features of each combination are jointly disclosed in the embodiment of original paragraphs [0040] and [0041]. This is contrary to the criterion of a direct and unambiguous disclosure, i.e. the “gold standard“.
For these reasons, the board concluded that claim as granted contains subject-matter which extends beyond the application as filed. The above reasons apply in an analogue manner to method claim 5.
Comments
It is important to note that in paragraphs [0040] and [0041] of the originally filed description some of the features are introduced by “may”. Introducing features with “may” does not allow to later combine those features in any possible combination in the absence of a pointer.
G 1/24 is not there to allow an applicant/proprietor to express his “will” in an arbitrary manner.
In T 350/20, Reasons 2.5, it was held that too many options in a forest of optional features can lead to the infringement of Art 123(2).
In T 2241/15, Reasons 4.8, it was held that a blanket statement to the effect that all aspects of the disclosure were combinable, is not a source of directly and unambiguously disclosed embodiments.
In T 1203/13, Reasons 2, it was held that the mere fact that each passage of the description is preceded by a “may” is not sufficient to disclose a combination or generalisation of features. If everything is optional, nothing is optional.
G 1/24 cannot serve as support for claiming combinations, at the whim of the applicant/proprietor, of features loosely disclosed in the original description.
In this respect, G 1/24 should not induce a different conclusion in the three decisions quoted above here. And it is right so.
Comments
6 replies on “T 1164/23 – G 1/24 and added matter”
If I remember right, Daniel, PCT Rules forbid inclusion of a dependent claim which is multiply-dependent upon an earlier dependent claim which is itself multiply-dependent on earlier claims. But this is standard good drafting practice under the EPC. So, with this flagged-up case in mind, how do I explain to US clients that if they don’t deliberately disobey PCT drafting rules they risk losing their European patent, this because in drafting their narrower claim 1 during prosecution at the EPO, they added matter to their PCT filing documents?
OK, there are at least two possible answers to my question, trite and flippant. The trite one goes: you should have drafted better. The flippant one goes: be sure to include in your PCT descrfiption EPO-style “claim-like clauses”. What’s your answer, please?
Dear Max Drei,
You are referring to R 6.4 PCT, and especially to this part of the rule:
“Multiple dependent claims shall not serve as a basis for any other multiple dependent claim. Where the national law of the national Office acting as International Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, failure to use that manner of claiming may result in an indication under Article 17(2)(b) in the international search report. Failure to use the said manner of claiming shall have no effect in a designated State if the manner of claiming actually used satisfies the national law of that State.”
I take from this rule that, in principle, during the international phase multiple dependent claims cannot be made dependent from a previous multiple dependent claim. But this depend on the national law of the national Office acting as ISA. If the applicant wants, for example, the USPTO to act as ISA, such multiple dependent claims are not accepted when searching.
If the EPO acts as ISA, the situation is not the same, and such claims are not objected to prima facie, unless a search is not possible, cf. Art 17(2,b) PCT. In any case before the search and according G 1/24, search divisions have to consult the description. Whether multiple dependencies are present or not, what matters is what is disclosed in the original description.
I do however not agree with you that this way of claim drafting is good drafting practice under the EPC. It is used primarily to save claim fees at filing.
When dependent claim 2 comprises a series of alternatives and claim 3 dependent of claim 1 or 2, contains itself a series of alternatives, clarity of the claims as a whole can be queried.
What then matters is what has been originally disclosed in the actual description. Any combination of claims has to be originally disclosed. Added matter to a PCT filing document will only occur if a combination claimed before the EPO is not disclosed in the originally filed PCT application.
In this respect, standard sentences implying that any embodiment can be combined at will with any other embodiment, or that any thinkable combination of features is also covered by the claims, does not fulfil the criterion of “directly and unambiguously disclosed. There is abundant case law on this topic. The present decision is a good example of this case law.
The first answer to your question: “you should have drafted better” is therefore not appropriate.
The second answer to your question: introducing in the PCT application claim-like clauses is superfluous, as those claim-like clauses are in principle redundant. What matters is what is originally disclosed in the description.
Narrowing a claim is always to be taken with caution. It could face an objection under Art 84, for lack of essential features, and/or end up with an objection of added-matter in view of an intermediate generalisation.
As said above, it all depends, not on the drafting of the claims, but on the content of the original description, which cannot be ignored any longer since G 1/24 has been issued.
This does not mean that limiting or broadening interpretations contained in the description relating to claimed features, clear as such for the skilled person, will eventually be read into the claims. They will however be taken into account in the objections to be raised. Before grant, such inconsistencies will have to be removed.
I allow myself to note that G 1/24 has not said that any limiting or broadening interpretation of features in the description should overrule the interpretation of the skilled person of claimed features.
Well, yes, I do not disagree with you, Daniel, but my experience is with medical devices (such as catheter-based stent delivery devices) which have innovative features from their proximal end all the way to their distal end. There are large numbers of intermediate levels of generalisation (or specialisation) between the conceptual claim 1 and the picture claim of the illustrated optimal specific embodiment, that which includes the best version of the proximal end structure, and the best shaft structure and the best distal end structure. Devices that fall within claim 1 but have sub-optimal features somewhere along the length are still embodiments of the claim 1 inventive concept. I don’t know how else to lay the ground for securing for the client such scope of protection that might be achievable (to catch competitors who “design around” client’s preferred construction) except by writing a nicely drafted set of multiply-dependent claims, dependent on earlier multiple-dependent claims. As you say, simply adding to the description a boilerplate statement that every feature can be combined with every other feature isn’t enough to “cut the Art 123(2) mustard”. But claims are themselves disclosures of feature combinations though, are they not?
Individualising, in a huge number of drawing Figures, every conceivable permutation of device features is disproportionate and in any reasonable patent system ought not to be needed. The EPO’s Gold Standard certainly imposes on Applicants an onerous level of drafting competence. Good thing too, you might retort. From my side, however, I would like the EPO to keep its drafting requirements to what is reasonable in real life patent practice outside the Patent Office.
Dear Max Drei,
While I understand your problem, I am not convinced that such a catheter will be disclosed and claimed in a single application. I can rather see two or three applications to cover the whole catheter stent delivery device. One for the distal end, one for the proximal end and one for the catheter itself.
Whilst a crankshaft has to cooperate precisely with intake and exhaust valves, do you think that one application will cover at the same time the crankshaft, the valves and the coordination between crankshaft and valves? Reasonable doubts are permitted.
To take a further analogy with a bicycle, the transmission could be one application (the catheter as such). The rear part with a cassette with a multiplicity of cog wheels (distal end of the device) and the front drive wheel (proximal end of the device), possibly associated with some specific pedals.
The problem with a set of multiply-dependent claims, dependent on earlier multiple-dependent claims, is that it becomes somehow totally unclear what is actually claimed. Even if such a set of claims is originally filed, any selection among the multiplicity of dependencies will easily be confronted with an Art 123(2) objection.
Your example of a catheter stent delivery device fails thus to convince of the necessity of a set of multiply-dependent claims, dependent on earlier multiple-dependent claims.
The drafting requirements at the EPO in matters of Art 123(2) are what they are, but have the advantage to be abundantly clear and easy to apply. We should also not forget that Art 123(2) and Art 54 are the two sides of the same coin. What is gained on one side, will be lost on the other one.
I understand your wish that the EPO should adopt in real life patent practices outside the EPO, but this is not a question for me to answer, as first instance divisions and boards of appeal are bound by the gold standard as defined by the EBA.
When it comes to added matter, the German Federal Court has certainly a more lenient position, but the BA cannot be forced to adopt the view of the BGH, and the BA cannot force the BGH to adopt its position. That the EPO should not take into account what is standard practice when it comes to added matter in the US, goes without saying.
Again, Daniel, I don’t disagree but your answer prompts further thoughts about the role of dependent claims: they should set out narrower feature combinations which solve the OTP of claim 1 even better than the claim 1 feature combination. Call it “convergent” if you like. For my catheter system, I envisage modifications of the co-axial shaft system having “knock-on” effects at both ends of the catheter. You can use conventional ends, or you can harmonise one or both of the ends to be more perectly in mechanical harmony with the improved shaft of claim 1. To do justice to the invention I need multiple dependents depending from multiple dependents.
No more time now. Cheers!
Dear Max Drei,
I am not fundamentally against a set of multiply-dependent claims, dependent on earlier multiple-dependent claims, but they should remain an exception and not multiply at length the dependencies. Otherwise, I allow myself to say that even the applicant proprietor does not know what he is actually claiming.
Without a proper claim 1 and its dependents claims, it is moot to discuss where would be the problem.
I suggest thus to leave it this.