CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2685/19 – Sufficiency at the EPO and at a national court - Different interpretation - Not binding

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The patent relates to a “Spark plug of an internal combustion engine”

Brief outline of the case

The OD admitted a late-filed ground of opposition under Art 100(b) and considered that the patent as granted could not be maintained as granted due to this objection.

The proprietor appealed the decision of the OD to maintain the patent according to AR2.

The proprietor considered that the late-filed ground of opposition should not have been admitted by the OD and requested as MR the maintenance as granted. He also filed AR I-IIIbis.

The board held that the OD had correctly exercised its discretion in admitting the late-filed ground under Art 100(b).

The board held the objection raised by the OD justified.

AR I and AR Ibis suffered the same defect.

AR II infringed Art 123(3).

AR IIbis was not admitted under Art 13(1) RPBA20 as it did not overcome the objections raised against AR II.

AR IIIbis was not clear and thus not allowable.

The patent was thus revoked.

The objection under Art 100(b) = Art 83

According to claim 1 as granted, “an end part (60) of the spark plug is “seated”/ “mounted”/”attached” or “fitted” (in the language of grant “aufgesetzt”) on the combustion chamber-side end region of the spark plug housing (2)”. “Seated” corresponds to the own translation of the proprietor.

According to claim 4 as granted, “the end part (60) is formed in one piece with the wall (8), wherein the ground electrode carrier (6)”.

According to claim 12 as granted, “the mass electrode carrier (6) is formed integrally with the end part (60)”.

In § [0048] of the description, the following text is found: “The term “unitary” is understood to mean in particular that that the respective component(s) do not have a welded or soldered joint and are formed from the same material or are present as a single non-composite part or are formed from the same component”.

The proprietor’s position

The proprietors’ argued that § [0048] of the patent deals only with a “possible embodiment” of “unitary nature” and is not in contradiction with what is actually claimed.

The proprietor cited T 197/10 in support of the thesis that those parts of the description which would contradict a clear definition of the patent claims are irrelevant.

The proprietor further argued that the scope of protection of claim 4 is limited to special cases such as 3D printing or casting-on and can therefore be carried out by the skilled person.

The proprietor further argued with respect of the delimitation between Art 83 and 84. The proprietor argued that in T 1440/08 the inclusion of features of a granted dependent claim in a granted independent claim is to be considered as an amendment.

The position of the OD and of the board

For the OD and the board the term “seated”/”fitted”/”mounted”/”attached” refers to “two initially separate components which are brought into contact with each other by a mounting movement”.

This corresponds to the wording of claim 1, even according to a generalised interpretation and not, as claimed by the proprietor, “extremely narrow” definition. That there must be contact after touch-down is considered by the board to be just as inherent in the wording of the claim as the fact that some kind of movement is required during “touch-down”.

In the board’s understanding, the proprietors’ view that unitary character can be achieved by adding an extension to a previously existing element is explicitly excluded by the wording of paragraph [0048], because composite parts are not to be understood as unitary according to this paragraph.

In the board’s view, therefore, not only the general understanding of the language, but also explicitly the patent in suit itself clearly distinguishes between “unitary” and “attached”. This results in the unresolvable contradiction between feature 1.4 (“seated”/”fitted”/”mounted”/”attached“) of claim 1 and claim 4 or claim 12 (“formed in one piece”), which was criticised in the contested decision. A component cannot be “mounted” on another, as required by claim 1, and at the same time be “integrally formed” with it, as required by claim 4 or claim 12.

The two expressions “mounted/fitted” and “unitary/”one-piece” are mutually exclusive, as already stated by the previous opponent in its reply to the proprietor’s appeal. In this respect, the board also agreed with the view of the previous opponent that, contrary to the proprietor’s submission, the terms “unitary/”one-piece” and “mounted/fitted” are not to be regarded as synonyms.

The board did not follow the interpretation of T 197/10 given by the proprietor. For the board, T 197/10 is based on a completely different set of facts, namely the assessment of novelty and inventive step and not, as in the present case, the assessment of sufficiency of disclosure within the meaning of Art 100(b).

The board did not consider that the scope of protection of claim 4 is limited to special cases such as 3D printing or casting-on.  The patent in suit does not contain any basis for this. On the contrary, § [0048] of the patent speaks against such an interpretation.

Although the board agreed with the proprietor in that the breadth of a claim may affect the clarity requirement under Art 84 and that the requirement of sufficient disclosure within the meaning of Art 83 must be distinguished from the clarity requirement of Art 84.

However, it in no way follows that an unclear claim cannot also have a lack of disclosure within the meaning of Art 100(b) or Art 83. The fact that two objections to a claim are distinguishable from each other does not mean that they must necessarily be mutually exclusive.

As far as T 1440/08 is concerned, the board noted that in the present proceedings the contradiction between claims 1 and 4 or 12 of the MR does not arise from the inclusion of features from a granted dependent claim during the opposition proceedings, as in case T 1440/08, but due to features in claim 1 of the granted version on the one hand and in claims 4 and 12 of the granted version on the other hand. An examination for lack of clarity is excluded according to the G 3/14, cf. grounds n° 79 to 81.

The board therefore concluded that claims 4 and 12 according to the MR do not fulfil the requirement of Article 100(b) = Art 83.

A different view from a national court

The board noted that interpretation made by the Düsseldorf Regional Court or the Düsseldorf Higher Regional Court was not binding for the opposition/appeal proceedings. As the proprietor did not comment further on the board’s preliminary opinion in this respect, there is no reason apparent for the board to deviate from its preliminary opinion.

The Düsseldorf District Court based the chosen interpretation in the parallel patent infringement proceedings solely on the context of the granted claims 1 and 4, as shown by the passage from the judgement cited by the proprietor on pages 3 and 4 of its statement of grounds of appeal.

The board found this interpretation unconvincing on the one hand and also inappropriate in opposition appeal proceedings to discuss lacking sufficiency of disclosure on the other.

For the board, it already follows from the wording of Art 100(b) that, when examining lacking sufficiency of disclosure of a claimed invention, the patent as a whole must be taken into account.

The board therefore did not follow the interpretation of the Düsseldorf District Court that “subclaim 4substantiates the technical instructions of the “main claim“, so that “the term “fitted on“, as used in patent claim 1, cannot mean the same as the term “fitted on” in the context of “subclaim 4“.


The decision is interesting in that the ground of opposition under Art 100(b) was determining in deciding on the fate of the patent as granted.

A discrepancy between an independent claim can be queried under Art 100(b) provided it is not a mere hidden clarity objection.

When deciding on sufficiency of disclosure, i.e. Art 83, the whole specification as originally filed is taken into account.

When deciding on clarity of the claims, i.e Art 84, first part of the second sentence, only the claims have to be considered without,in principle, recourse to the description.

The board considered that the OD or itself is not bound by the interpretation given by the Düsseldorf Court. This is not a surprise and one can expect the same divergences once the UPC has opened its doors. Courts are in general jealous of their independence and not really prone to follow other judicial bodies.

As the patent was revoked, the parallel infringement proceedings were brought to an end.

Brief reminder of the examination procedure

It is interesting to note that following a positive IPER, the ED raised later, inter alia, an objection under Art 84 for claim 1 as filed in that it considered the feature “getragen”= “supported” was as such lacking clarity The applicant/proprietor was not pleased by this turn of events and complained to the ED.

The feature “getragen”= “supported”was then replaced by “aufgesetzt” = “seated”/ “mounted”/”attached” or “fitted”. This change was supported by the original disclosure but Fig. 10 and 11 were deleted as they did not any longer corresponded to what was claimed. Claim 1 was further amended by introducing another feature in order for the subject-matter of claim 1 to be patentable over the available prior art.

During examination the discrepancy between claim 1 on the on the one side and claims 4 and 12 on the other side has never been queried, be it under Art 83 or Art 84.

It is the opponent which objected a lack of sufficiency of the claims as granted.

When claim 1 is considered novel and inventive,then the dependent claims are novel and inventive.

This does however not dispense the ED to check the dependent claims under Art 83, 84 or 123(2).

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