The patent results from a divisional application of EP07706172/1 997 349.
The patent is concerned generally with heating of materials with electromagnetic energy.
Brief outline of the case
The patent could not be maintained as granted as the ground of opposition under Art 100(c) applied.
The patent was maintained in amended form according to AR1.
Both opponents appealed.
The board held that claim 1 as maintained was infringing Art 76(1).
There was also a lack of sufficiency of the patent as maintained.
The same applied to all AR 1-6.
The board decided the revocation of the patent
The objection of added-matter
Claim 1 defines that UHF or microwave energy is fed into the cavity as controlled heating input power via “at least one antenna” at “a plurality of frequencies”.
Each of the “at least one antenna” is used for heating.
It remained open if the antennas are used simultaneously or sequentially.
The board held that the amended features in claim 1 as maintained encompass three pieces of subject-matter that were not originally disclosed.
The proprietor’s position
For the proprietor, the claims of the earlier filed parent application P1b, i.e. EP 07 706 172 can serve as a basis in the considerations regarding added subject-matter.
According to the proprietor’s view, the explicit reference in the request for grant to the description and drawings of the parent application did not exclude the claims.
The board’s position
For the board, the reference to P1b according to R 40 (1,c) was only made with regard to the description and drawings, not with respect to the claims. The board referred to points 26.1 and 26.2 of the request for grant of a European Patent dated 25.04.2012.
Art 123(2) requires that amendments to a claim must derive directly and unambiguously from the original application documents.
This implies that the passages referred to as basis for the amendments must be unambiguously identified in the request for grant as being part of the application.
The description and drawings of the original application as filed are identical to the description and drawings of the parent application, but not the claims.
Hence, the three identified pieces of subject-matter queried in claim 1 (and claim 7) extends beyond the application as filed under Art 123(2), and also beyond the earlier application as filed under Art 76.
R 40(2) only specifies that when filing by reference it has to be indicated whether it replaces the description and any drawings.
R 40(2) takes primarily into account that in order to obtain a filing date there is not any longer the need to file a claim. The latter was a requirement under the EPC 1973.
It is thus understandable that a distinction is made between the description/drawings and the claims on the request for an EP.
In case of a “standard filing” by reference the applicant can chose to amend its claims when requesting an EP but keeps the original description. A minimum of work occurs when description/drawings and claims are filed by reference. If at the same time, only one priority is claimed, there cannot be any doubt about the validity of the priority.
The situation can become intricate when there is a filing by reference for a divisional application.
Filing the same claims as in the parent does not make sense as the SR would then be identical as the claims have not been modified.
When filing a divisional application, it is quasi a necessity to file new claims.
That in the present case the applicant did not refer to the claims in the requests for grant was thus understandable.
By doing so he did however lose the possibility to rely on the subject-matter of the originally filed claims in the divisional.
Filing by reference should be avoided when filing a divisional, or at least it should be verified before filing of the divisional that the subject-matter disclosed in the originally filed claims is to be found in the original description/drawings. Only then a filing by reference to the description and the drawings can be safely envisaged.
In the present case even in the absence of added matter, the patent could, in any case, not have been maintained for lack of sufficiency.
The parent application has led to a patent which has not been opposed.
7 replies on “T 1472/19 – Filing by reference in case of a divisional application – Some drawbacks”
It’s for exactly this situation that I proposed an amended Rule 36 EPC:
I have read your paper in epi-information with interest.
There are however some aspects which are rather delicate.
In “R 36(1)” the wording “potential claims and/or drawings” is not clear and could give raise to various interpretations.
Either you have the claims and drawings of the parent or not.
In “R 36(3)” you imply that the language of the divisional can be different from that of the parent if a divisional is filed early after the filing of a parent.
I would say that by analogy G 4/08 applies between a parent and a divisional.
You can file the divisional in the language of the original parent even if it is not an official language of the EPO.
Should it not be an official language of the EPO, you can file a translation in an official language of the EPO under the usual conditions.
I would always do this as there is the possibility to correct translations errors.
If you file the divisional in an official language of the EPO you cannot refer to the original non-EPO official language of the parent, see T 1312/19, Point 4.3.1.
“R 36(4)” would certainly facilitate the filing of a divisional and would not need to file claim-like clauses corresponding to the originally filed claims of the parent.
“R 36(5)” would require an amendment to R 137(1) as it is in contradiction with this provision.
Filing of claims after the actual filing date bears the risk that those claims can infringe Art 123(2). They are not part of the original disclosure.
The amendment in “R 36(6)” will never be accepted by the EPO.
Why should the divisional be freed of any page fee?
The only Rule I could somehow see finding some acceptance by the EPO is “R 36(4)”, but the applicant of the divisional should still have the possibility to either file the claims of the divisional or one month later, like for any application. At least there would not be a problem with Art 76(1).
Just some preliminary remarks for the time being, Daniel:
Re: R 36(1): I don’t see your problem with claritiy. The root application does not need to have claims/drawings. Thus, the word “potential” (and not “potentially”). In my view, the wording clearly states that if there are original claims/drawings they are included if not than not.
Re R. 36(5): As it would be lex specialis vis respect to R. 137(1), there is no need to amend R. 137(1).
Re 36(6): Arguments have been provided in the article.
Thanks for your comments.
I can follow them, but not to the point of endorsing them.
On the other hand in view of the flop with the time limited possibility of filing divisional applications, I doubt very much that the EPO would be inclined to open a new Pandora Box on divisional applications.
All concerned, applicants and first instance divisions as well, were happy to come back to the previous version of R 36.
There are still cascades of divisional applications, but it seems to me that they are far less frequent as feared by the then President of the EPO.
It is certainly a nuisance to still have a divisional simmering more than 10 years after the filing of the parent.
The surcharge for each generation of divisional could certainly be higher in order to better dissuade cascades of divisional applications.
In this respect not requiring page fees for the divisional application would actually be contra-productive.
The same would have occurred if the applicant files the divisional by copying the original description and drawings from the parent and filing the new claim set.
The decision is a nice advertorial to always include all claims also as clauses in the description of any application in the application as filed. Then filing by reference also includes those and they can be relied on when drafting new claims for the divisional! Likewise if the description is copied from the parent to the divisional:
It also promotes to, when filing a divisional with new claims, copy the claims of the divisional as clauses in the divisional as filed – in case the parent did not have them included as clauses.
So: clauses in the description may well become the standard!
NB: the objection raised by the Board is combination of Art.123(2) -largely due no claims not being present in the divisional as filed, so that the claims are considered amendments to the divisional as filed – and 76(1) -the claims extending beyond the parent as filed as a whole, description, claims and drawings (assuming that the parent did have the claims on its filing, I did not check that).
If you need claim-like clauses in a normal/standard application, it is for me the demonstration that the description has not been properly drafted.
A good drafter should insure that all features found in the claims are also found in the description in the same combination.
It is well known that lots of applicants want to save money when drafting the original specification.
To me it is saving at the wrong place, but a slapdash drafting should not be honoured by freely accepting claim like clauses.
If the claims are filed with the application, not one month later, the features found in the claims can later be transferred into the description in the same combination, without infringing Art 123(2),. In other words the wording in the claims has to be transferred expressis verbis into the description. This was rather frequent in the early days of the EPO and has never been a problem. The criterion of R 56(3) “completely contained” applies by analogy.
At the latest when the communication under R 71(3) is issued, those claim-like clauses should disappear as they have lost any raison d’être, especially if in the meantime the originally filed claims have been limited.
Claim-like clauses aligned with the claims of the parent, can represent a safety net, and have some use when filing a divisional, but only in this situation. The transfer into the description of the divisional has to occur as for a normal/standard application. The same applies to their deletion when the communication under R 71(3) is issued.
I do not think that clauses in the description will become the standard.
I would forget this idea, even if in T 1444/20 the board has found that they do not have to be deleted.