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.