The patent relates to an apparatus and method for providing metered amounts of ingredients to a nutritional composition for use in administration to an infant.
Brief outline of the case
The OD held that the MR before it lacked clarity and revoked the patent.
The proprietor appealed the decision.
The opponent requested that the appeal be dismissed.
The opponent further requested an award of costs in case the Board remits the case on the new MR.
The board admitted a new MR filed when entering appeal under Art 12(4+6) RPBA20.
The board held claim1 of the new MR as being clear and remitted the case to the OD for further prosecution.
An award of costs against the proprietor was rejected.
The clarity problem
The important part of claim 1 as granted:
…..wherein the apparatus further comprises or has access to a database storing data of reactions of infants previous fed with a composition produced by the apparatus according to any of the preceding claims or in general.
The important part of claim 1 in the request before the OD:
“… wherein the apparatus further comprises or has access to a database storing data of reactions of infants previous fed with a composition produced by the apparatus, and wherein the amounts ingested earlier are also stored, and used in the determination of an actual delivery of an ingredient.”
The comma between “stored” and “and used” makes unclear which data the claim requires for the last feature step of determining an actual delivery of an ingredient. Thus, the “used” of the final clause can be read as referring to the data stored in the database of the 1st clause of this feature, or to the amounts ingested earlier of the 2nd clause of this feature.
The important part of claim 1 in the new MR before the board:
“…wherein the apparatus further comprises or has access to a database storing data of reactions of infants previous fed with a composition produced by the apparatus, and wherein the amounts ingested earlier are also stored and used in the determination of an actual delivery of an ingredient.”
The new MR was only amended to delete the comma between “stored” and “and used”, thereby clarifying that it is the amounts ingested earlier that are used for determining an actual delivery of an ingredient in the claim.
The admissibility of the new MR by the board
For the board the amendment was clearly not complex. The question remains, why the proprietor did not avail themselves of the opportunity to file such a simple amendment during the opposition OP.
As is clear from the minutes, the proprietor requested and was given a break “to reflect on the strategy concerning a potential auxiliary request”. After a short break (11:48 to 12:05) they decided not to file any further request.
During the written proceedings, clarity of the amendment was only briefly addressed, namely in the OD’s summons and in the opponent’s letter in preparation to OP. The cited sections cursorily mention the need to discuss whether “the amounts ingested earlier” has a defined meaning and is clear and that the claim is silent as to how the new feature is actually implemented and which amounts and which ingredients are being determined.
The Board found in these arguments no mention or suggestion that the now deleted comma gives rise to any lack of clarity.
At the OP before the OD, clarity was then discussed in relation to a number of points raised by the opponent. Some of these correspond to the points mentioned in the summons, but they also include new points, in particular “whether or not the determination includes the earlier amounts”.
This latter point is understood to relate to the issue of the comma, though that it is the comma that would be problematic is not expressly stated in the minutes. As is apparent from their decision the OD found a number of issues of lack of clarity including the comma issue.
This amendment by removal of the comma is without a doubt not complex and is eminently suitable to address the ambiguity caused by its presence and which in part led to the decision under appeal.
Moreover, it cannot be considered deleterious to the need for procedural economy as all other issues remain the same. Finally, withdrawal of the previous MR and promotion of this request to MR does not, as argued by the opponent, constitute an amendment to the proprietor’s appeal case in the sense of Art 13(2) RPBA20 as it was filed with their statement of grounds.
The Board therefore decided to admit the new MR (previously auxiliary) into the proceedings under Art 12(4) and Art 12(6) RPBA20.
Clarity of claim 1 of the new MR
The deletion of the comma between “stored” and “and used” resolves the ambiguity identified by the OD. It is thus now clear from the claim wording without the comma that it is the amounts ingested earlier that are used in the determination of an actual delivery of an ingredient.
The kind of stored amount ingested by an infant is not specified in the claim. The opponent put forward that it can be an amount of an ingredient or of various ingredients, of nutrients or of a composition. The Board did not see a clarity issue in this lack of specification. All options are technically meaningful in the context of preparing a nutritional composition, so that the claim covers all these technically meaningful options.
The same holds for the absence of specification of the kind of ingested amount used for the actual determination argued by the OD, also argued by the opponent.
The feature of storing data of reactions of infants previously fed was not open to a clarity objection under G3/14, as that formulation already appeared in the granted claim and thus did not arise from any subsequent amendment per se.
How the stored amounts ingested earlier are specifically used for the determination of the actual delivery is not defined in the claim. The OD appears to argue that this gives rise to a lack of clarity. For the Board it does not.
As noted in T 630/93 it is not always necessary for a claim to identify technical features or steps in full detail. The function of the essential features, although normally expressed in technical terms, is often to define the borders of an invention rather than details of the invention within those borders.
Thus, essential features can often be of a very general character and in extreme cases indicate only principles or a new idea. This is applicable to the present case where the contested features define the general idea or concept that certain past use data can be used for the determination of an actual delivery.
Award of costs
The Board was unable to identify any act of the proprietor that goes beyond a normal defence of their patent and which might lead to the conclusion that reasons of equity would justify a different apportionment of costs under Art 104(1).
The fact that the OD chose to base its decision to revoke the patent on clarity only while not considering any of the grounds that were originally raised and maintained against the patent cannot be imputed to the proprietor.
Comments
Clarity
“Commas” can be a great source of problems, not just when it comes to added matter, but we have seen here also when it comes to clarity. In the present instance, the lack of clarity could be resolved easily.
It is good that the board applied its discretion in a positive way and admitted the new MR. It would have been a pity to definitely revoke the patent for such a reason.
It does not mean that the patent will not be affected by the opposition, but the discussion will now be concentrated on the further applicable criteria of patentability.
The reminder of the board that essential features can often be of a very general character and in extreme cases indicate only principles or a new idea. This applies also to functional features.
Award of costs
For the opponent to claim a different apportionment of costs should the case be remitted is bordering on bad faith. There are numerous cases in which a file is remitted to the OD after its decision has been set aside.
Once a claim is considered unclear, not enabled, comprising added matter or lacking N, it becomes moot to discuss other patentability criteria before the OD.
When the decision on lack of clarity, enablement added matter or N is set aside, it is usual to remit the case to the OD for further prosecution. This is nothing special in opposition and does not justify a different apportionment of costs.
https://www.epo.org/law-practice/case-law-appeals/recent/t210315eu1.html
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