EP 3 113 515 B1 relates to hearing devices, and in particular to hearing devices security.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board revoked the patent for lack of IS.
The case is interesting as the board held that, when there is no technical effect that is credibly derivable from the wording of a claim on the basis of its distinguishing features, there is no IS.
The proprietor further requested remittal and a referral to the EBA of questions relating to the problem-solution approach and the general applicability of G 1/19 and G 2/21. Both requests were rejected.
The proprietor’s point of view
The proprietor submitted that the technical effect of the differentiating features over the CPA was to provide a hearing device that was capable of performing various levels of authentication of a communicating party and received messages as well as deriving keying material for securing communication, e.g. against eavesdropping and modification attacks.
During the OP before the board, this was refined to providing protection against “modification attacks“.
The proprietor further argued that these differentiating features were all causally interrelated and the objections raised were not substantiated beyond a mere reference to the use of definite articles, e.g. “the session” and “the verification”.
The proprietor questioned in general the legal basis for the board’s approach, arguing that the principles of G 1/19 were limited to computer-implemented simulations and that the board should instead have applied the “ab initio implausibility” standard addressed in the referral case underlying G 2/21.
The opponent’s point of view
The opponent argued during the OP before the board, the features of claim 1 as granted constitute a mere aggregation of functionally disconnected security-related jargon, i.e. a collection of “islands of cryptography” without a clear and reliable interrelationship.
The board’s decision
The board was not satisfied that the technical effects mentioned by the proprietor were credibly achieved by the claimed features, especially by the combination of differentiating features, over the whole scope of claim 1 as granted. In particular, the claim was silent on any “levels of authentication” and its features do not necessarily imply protection against attacks such as “eavesdropping” or “modification”.
The board found that, while the use of definite articles may arguably create a linguistic link between the features, it fails to establish a technically meaningful, functional interrelationship that would in fact be required to produce the alleged security effect.
For the purposes of claim construction regarding claim 1 as granted, the board, in accordance with G 1/24, has “consulted” and “referred to” the present patent description and drawings to define how the skilled reader would interpret the claim.
In view of, paragraphs [0001] to [0007] of the description, the technical field of the skilled reader is apparently “hearing device security“.
The skilled reader of claim 1 would however be faced with fundamental ambiguities that militate against the presence of a credible technical effect over the whole scope claimed. In the relevant technical field, terms relating to communication protocols have typically a stable and well-understood meaning.
Therefore, contrary to the approach taken by the proprietor during the OP, these terms are not to be re-interpreted or understood in a more limited way in the light of the specific embodiments of the description, which, in addition, contain subject-matter that is more limited than that claimed.
Due to the deficiencies noted by the board relating to the differentiating features, the asserted technical effects of providing multiple “levels of authentication” or protecting against “modification attacks” were not credibly achieved over the whole scope of claim 1.
The board held that, if there is no technical effect that is credibly derivable from the wording of a claim on the basis of its distinguishing features, it is usually unnecessary to – artificially – formulate an, unsolved, objective technical problem, such as finding an “alternative way to achieve a, non-existent, technical effect”.
In such cases, the distinguishing features simply constitute arbitrary or non-functional modifications of the available prior art which cannot involve any IS.
The proprietor’s attempt to limit the applicability of G 1/19 to the technical field associated with the underlying referral case was incorrect. The board acknowledged that Reasons 82 of G 1/19, by speaking about CI simulations, appeared to support the proprietor’s argument. However, the heading of a section does not limit the legal scope of the principles established therein, particularly when the text itself signals a broader, general applicability. The EBA itself designated its findings in Reasons 82 as a “general principle“.
This “general principle” broached in G 1/19, Reasons 82, confirms that a technical effect must be achieved over the whole scope of a claim to be considered as the basis for the objective technical problem.
While the term “credible” does indeed not appear in G 1/19, the concept is inherent in the requirement that an effect be “at least implied in the claims“, cf. Reasons 124. The term is used explicitly in the same context in the landmark decision T 939/92 (in chmistry), to which G 1/19, Reasons 82, refers.
The assessment of whether an effect is credible is, of course, performed by the deciding body based on the application as filed and the skilled reader’s common general knowledge, a standard which G 2/21, cf. Headnote II, has since affirmed for all technical fields.
Therefore, the board’s approach to assessing whether the alleged technical effect is credibly achieved over the whole scope claimed as adopted by the board is firmly rooted in the established case law of the Boards of Appeal, as summarised and clarified by the Enlarged Board in G 1/19.
The board also quoted various T decisions in support of its point of view as well as the decision of the UPC-CD Munich (UPC 14/2023-Regeneron/Sanofi vs. Amgen) concerning EP 3 666 797 B1.
Comments
In applying G 1/24, the board made clear that the description does not allow to give claims a narrower meaning and cannot be re-interpreted or understood in a more limited way in the light of the specific embodiments in the description.
The board also reminded that considerations of the EBA in G decisions are generally applicable, cf. G 1/19.
One conclusion which comes to mind, is that there was an inconsistency between claims and description. This inconsistency was however not interpreted in favour of the proprietor.
It seems to have become fashionable for boards to quote UPC decisions since the EBA did this in G 1/24.
It is interesting to note that the oppositions filed at the EPO by Sanofi and Regeneron have been rejected by the OD and are presently under appeal (T0716/25), In-person OP have been scheduled from 13.04.2026 till 14.04.2026. The patent has been revoked in first instance by the UPC.
Will we have diverging decisions between the EPO and the UPC? That’s the question!
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