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T 1688/21 – “Made of” does not mean “comprising” – Net result: added matter

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The patent relates to an insert for a wind turbine blade
Brief outline of the case
The patent was maintained in amended form according to AR33. The opponent and the patentee both appealed the decision of the OD.
For the OD cl 1 and 13 of the MR filed in opposition was infringing Art 123(2). The same applied to AR 1-31 and AR32 in opposition.
The MR in appeal corresponded to the MR in opposition, but with claim 13 deleted.

Claim 1 of the MR in opposition and appeal was identical with claim 1 as granted.
The board confirmed the decision of the OD and dismissed both appeals.
The case is interesting in that it makes clear what has to be understood by the terms “made of”.

The meaning of “made of”

The objection of added subject-matter concerns the replacement in the as filed claim 1 of the insert being “made of a head and a body” by the broader expression “comprising a head and a body”.

The proprietor’s position
The proprietor considered the originally used term “made ofnot to limit the scope of the insert to these two parts and thus the term “comprising” to have the same non limiting scope as the originally filed.

The board’s position
The Board considered that the skilled person interprets the term “made of” in its usual sense as consisting of or composed of and thus listing the constituent or component parts of a thing, here the blade insert.
This reading which is perfectly clear in itself and does not need to be interpreted in the light of the description. It is supported thereby, as in all embodiments detailed there the insert is shown to have only these two parts, head 2 and body 3. This is so in the embodiments of figures 1 and 2 and also applies to all other embodiments of figures 3, 7-9 which depict an insert made exclusively of these two parts: head and body.

This applies also to paragraph [0010] which may use the more open formulation “comprises” but then states only “two different parts”, namely the head and the body.

For the board, where “comprising” is seen by the proprietor to encompass an insert having other parts such as a neck, this seems to represent an undisclosed embodiment.

Claiming that “made of” is not a closed statement is quite daring. It can be equated with “consisting of” or the like.
It is manifest that the applicant must have realised during examination that the statement was too limiting.
In the present instance, the applicant was a Spanish company and the priorities of two Spanish applications was validly claimed. In both claimed priorities, the insert was qualified as being made of two parts (El inserto formado por dos partos definidos, cabeza 2 … y el cuerpo 3).
Even filed in Spanish, it would thus not have been possible to correct the translation from Spanish to English.

On the granting procedure
The patent should not have been granted in the form it was.

The term “comprising” was already introduced in the claim filed in reply to the Search Opinion (SO)and has never been queried by the ED during prosecution.
The amendment was underlined in the claim with annotations, but the applicant never gave any reasons why claim 1 as amended was not infringing Art 123(2). One can guess why! Never wake up sleeping dogs.
It also shows that had the original application been better proof-read, such a mishap could have been avoided.

Furthermore, the SO was issued on 30.10.2009 and the reply to the SO filed on 04.10.2010. The actual examination officially started on 13.12.2017. Waiting seven years to actually start examination is far from ideal. This might explain a lot, but cannot be seen as an excuse for letting “comprising” slip through, even taking into account the high production pressure in 2017 and the following years.

When a patent is granted with some features infringing Art 123(2), I am inclined to consider that the blame is shared by the applicant or its representative and the ED. The representative is happy to get a patent, but the ED should have spotted the problem.


Art 123(2)

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4 replies on “T 1688/21 – “Made of” does not mean “comprising” – Net result: added matter”

Max Dreisays:

Daniel, thank you for putting up for discussion the differences between “made of “, “comprising” and “consisting of”. For me, the case reminds us all of the perils of amendment during prosecution and that pithy observation about amendment which is always so helpful against future problems under Art 123(2) EPC, namely “If the amendment makes no difference, why do you need to make it? Conversely, if it does indeed make a difference, well then it offends Art 123(2) EPC and therefore you are forbidden to make it.” Every Examiner at the EPO should pose this question, every time, if they seriously want to let through to issue only those patents that will see off Art 100(c) attacks after grant.

But what does “made of” mean? Perhaps it depends on whether or not one has English as one’s first language. The way I see it, “made of” is not the same as “consisting of”. My glasses have lenses “made of” glass but those of my sunglasses are “made of” plastic. Yet it would be wrong to say that the lenses of my glasses “consist of glass” for they have surface layers not of glass which perform very significant functions, optically. So, here, when Applicant amended from “made of ” to “comprising” they were not amending from “consisting of” to “comprising”.

I have some sympathy with the Applicant, but less for the patent attorney drafter and prosecutor. To my mind, the amendment was unnecessary, but nevertheless doomed the patent owner to the loss of the patent.

Sometimes, patent law is so unforgiving, especially in Europe. Less so in the USA, perhaps because there they don’t have a patent attorney profession that is given the same respect as the attorney-at-law profession. As European patent attorneys, we soon learn that it only takes one wrong word to turn a winning patent position into a losing one. As the old saying goes, and as EPO prosecutors are probably thinking: “There but for the grace of God, go I”

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

Thanks for your comments.

If I understand well your example with the glasses and the sun glasses, “made of” can mean “consisting essentially of”. Your glasses made of glass may have surface layers, not of glass, but other elements that can play an important optical role. Even with this understanding, there is still a large margin to “comprising”.

In the present case, it was indeed the original formulation “made of”, found in the original Spanish language which was not an optimal choice, to say the least. The drafter should indeed have known better. Using the translation is as follows: “The insert made up of two defined parts, head 2 … and body 3”. The drafter must have realised that keeping two “defined” parts was way too limiting, but in order not to lose the priority he used “made of” when the application was filed at the EPO.

I agree you that, “If the amendment makes no difference, why do you need to make it? Conversely, if it does indeed make a difference, well then it offends Art 123(2) EPC and therefore you are forbidden to make it”. In other words, an amendment is never innocent and the reason behind it is determining.

I am therefore of the opinion that, in the present case, the representative realised early in the prosecution the limiting character of “made of” and introduced the term “comprising” which is clearly the broadest in the gradation going from “consisting” to “comprising”, going through “consisting essentially of”. The amendment was consider necessary, at least by the prosecutor.

I also agree with you that in the US, the amendment would most probably not have been in the way and no dear consequence would have ensued.

The way added matter is apprehended at the EPO can be considered as harsh, but it has the advantage of being consistent with novelty and priority, and after 40+ years of case law, the consequences of an amendment infringing Art 123(2) are amply known.

Max Dreisays:

Just a short comment, prompted by your kind answer, Daniel. I still haven’t read through the full Decision, preferring to spend my time chatting with you and letting you tell me all about it.

If I understand it right, in this case the patent owner at least got to hold on to a patent, albeit in amended form. With a comma in the wrong place though, or some other seemingly harmless amendment to claim 1, an EPO patent can easily get flushed away, down the 123(2)/(3) drain. At least that awful fate was not visited on the patent attorneys involved in this case.

One might think that the opposition has simply put the patent owner back to where they would have been, but for the unfortunate prosecution amendment. But is there not a danger of attempting and failing to get the claim amended? I am thinking that the EPO file content on the attempted amendment will provide a competitor with a road map how to avoid infringement. Better not to attempt an amendment at all, than to try, and fail. Better to rely on the original claim and the Protocol on the Interpretation of Art 69 EPC. Here, I am still not convinced that “made of” was inadequate. We all know what “comprising” means and what “consisting of” means. But “made of”? Not much case law on that one, is there?

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

I can agree that there is not much case law using “made of”. This is the reason why I thought it could be interesting to publish the present decision.

To me, “made of” looks more like “consisting essentially of”, but by no means it can be replaced by “comprising”. In AR 32 the term “comprising” in claim 1 as granted was replaced by the term “made of” that is the patent has been maintained with “made of” instead of “comprising”. This result could have been achieved at grant.

It is clear that the applicant/proprietor found the formulation “made of” too limiting as he himself suggested that a neck could be “comprised” in the claimed structure. This be seen as hint to a possible circumvention of the claimed structure. With “made of” in the claim, it might however be more difficult, but certainly not impossible, to explain why there is infringement.

It took an opposition to come to the claim form as it should have been granted. If the examiner would have been more diligent and the proprietor more forthcoming with explaining the amendment after filing, a lot of costs could have been saved.

It is also worth noting that AR 1-31 were not admitted by the board for lack of substantiation. Quoting the board; “the appellant proprietor fails to explain how these requests address the other objections admissibly raised and maintained by the appellant opponent against the main request. Thus for these requests no complete case appears to have been stated as required by Art 12(3) RPBA. Further, the Board sees the conditions for admission under Art. 12(4), 4th sentence, RPBA not fulfilled.”

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