EP 3 325 559 B1 relates to a dispersant effect on aluminium pigments, specifically VMP (Vacuum Metalized Pigments) pigments.
Brief outline of the case
The opponent appealed the decision to maintain the patent according to AR1.
The board held that the MR=claim as maintained lacked IS lacked. The same applied to AR1-8. AR9-11 were unclear and AR 12-14 contained added matter. The patent was thus revoked.
Claim 1 according to AR9-11 defines the use of a VMP pigment in a flexographic ink formulation for providing the following technical effects: “fewer print defects, higher hiding and stronger colour and allowing a lower volume anilox”.
We will concentrate on the lack of clarity.
The proprietor’s point of view
The proprietor argued, initially within the context of the inventive step argumentation, that according to G 2/88, when a use claim defined technical purposes or effects, these were to be interpreted as functional features restricting the scope of protection. The above mentioned effects thus rendered claim 1 novel and inventive over prior art.
The proprietor was of the opinion that it was a well-established practice of the boards to allow the definition of effects or purposes in non-medical use claims using broad and/or relative terms.
This was in particular the case in G 2/88, where the claim defined the use of a certain additive “as a friction reducing agent“, without further specification as to how such effect, i.e. the relative friction reduction, was to be identified or measured. Despite the broad and relative nature of the claimed effect, no objection was raised under Art 84 in that case.
The opponent’s point of view
The opponent argued that since these functional features were defined using relative terms as well as diffusely defined concepts, they were unclear.
More specifically, there was no way to objectively determine whether a given use met the requirement of “providing fewer printing defects”, as it was not even clear how the printing defects should be identified or measured and/or what the reference was for concluding whether the relative condition “fewer” was met. The same objections applied to the additional requirements of “higher hiding”, “stronger colour” and “allowing lower volume anilox”.
The board’s decision
The board first observed that there is no basis, be it in the case law or in the EPC, for concluding that the limiting functional features of a use claim are exempt from the clarity requirement under Art 84 or somehow exposed to lower standards.
Use claims serve to establish patentability where the technical contribution resides in the identification of a new technical purpose or effect, irrespective of whether the entity as such is already known. In such cases, the definition of a use for that specific purpose or effect, applying the principles established in decisions G 2/88 and G 6/88, constitutes a functional limiting feature which may, in itself, confer both N and IS.
In decisions G 2/88 and G 6/88, as well as in most use claims upheld by the boards, the claimed use typically relates to a technical effect or purpose that is objectively distinct from those known in the prior art. In such cases, the effect underpinning patentability may legitimately be defined in broad terms, especially where no similar technical purpose has previously been disclosed.
However, as with any claim feature, broad terminology can raise clarity concerns under Art 84, particularly if it is unclear whether the skilled person can apply objective criteria to determine the exact scope of the claim.
The relative or comparative terms in the claim, “fewer print defects”, “higher hiding”, “stronger colour”, “lower volume”, constitute the key features supposed to distinguish the scope of the invention from the prior art, and establish its patentability.
The board therefore held that, where a claimed invention is defined by the use of a known entity to achieve a known technical effect or purpose, and the alleged technical contribution of the invention resides in a relative improvement or enhancement of that effect or purpose, the requirement of clarity under Art 84 generally demands that the feature defining such relative improvement or enhancement be expressed in objectively verifiable terms, thereby ensuring legal certainty regarding the scope of protection.
In the present case, the board concluded that no objective criteria were available for determining when the number of print defects, the degree of hiding, the colour intensity or the anilox volume may be regarded as sufficiently low or high for other uses to fall within or outside the scope of the claim. As a result, the subject-matter of claim 1 lacked clarity under Art 84.
In this respect, the notion of what constitutes a “known technical effect” should not in principle be confined to effects explicitly mentioned in the prior art, but should also encompass effects that are implicitly and recognisably associated with the entity in question in the relevant technical context.
Such implicit technical purposes may form part of the common general knowledge of the skilled person, even if not explicitly stated in a given document.
The requirement of clarity may not be disregarded when the features in question are not decisive for establishing patentability over the cited prior art. The board referred here to T 869/20 and noted that the underlying rationale of Art 84 is to ensure legal certainty, which may be important for an objective assessment of patentability in view of the prior art, but may also become relevant in the context of infringement proceedings potentially unrelated to that prior art.
The board considered that its position is consistent with previous decisions of the boards, such as T 728/98, see Headnote, Point 1 and Reasons 3.1, T 56/04, Reasons 2.7-2.8, as well as with the observations made in G 1/24, Reasons 20.
Comments
The present decision is important as it introduces a restriction when applying G 2/88 or G 6/88: the clarity of the resulting use claim has to be assessed. The boundaries of the scope of protection have to be objectively determined.
In examination it is not a problem at all, and in opposition, G 3/14 is not applicable if the claim has been amended.
In the absence of any measurement method in the original specification, such a claim could be considered as lacking sufficiency under Art 83, cf. T 2161/17, T 1188/15 or T 1927/11.
In examination, when such a claim is filed by the applicant, it is an absolute necessity for the ED to insure that the claim does not give raise to any doubts as to its scope of protection.
The decision is interesting in that it emphasises that Art 84 may not only play a role in the assessment of patentability, but also becomes relevant in the context of infringement proceedings.
How can a decision of infringement be taken if the boundaries of the scope of protection cannot be determined with the necessary accuracy?
This decision clearly refutes the view of those who believe that the boards are not concerned with what happens after a patent has been granted or maintained in amended form.
It reinforces the necessity for EDs and ODs to consult the description as required in G 1/24.
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