EP 2 360 484 B1 relates to a bidirectional wireless data transmission method.
Brief outline of the case
The patent as granted infringed Art 123(2) and the filed AR were not allowable under Art 123(2) or 84, or not admitted.
The patent was thus revoked by the OD and the proprietor appealed.
The board confirmed that claim 1 as granted contained added matter and AR1 and 2 were not admitted by the board.
The revocation was thus confirmed.
The problem of added matter
The original feature “the second frequency band is authorised for a higher transmission power than the first frequency band”=feature A, was amended in “the second frequency band is designed for a higher transmission power than the first frequency band”.
The wording of the originally filed claim 1 leaves open the cause or nature of the ‘authorisation’.
In particular, original claim 1 does not define that the ‘authorisation’ is regulated by a standard or otherwise by law.
The ‘authorisation’ could, for example, be regulated by a technical feature, but also by other ‘arbitrary’ wishes of a user of the method. Due to an objection of lack of clarity in this respect, cf. Art 84 in the extended European search report, the applicant replaced the word ‘authorised’ with the word ‘designed for’ suggested by the examiner.
On the one hand, this seemed to overcome the objection of lack of clarity, but on the other hand, the aspect of an ‘authorisation’ disappeared from the claimed method.
The board’s decision
According to the OD, an ‘authorisation’ is a non-technical fact. Referring to decision T 619/05, the OD took the view that ‘amendments relating to non-technical subject-matter must also be derivable from the patent application as filed’, apparently irrespective of the precise context of the non-technical subject-matter.
Contrary to the view apparently expressed in decision T 619/05 and by the OD that the requirements of Art 123(2) and 100(c) also apply without restriction to non-technical subject-matter, the present board was of the opinion that this is only the case if, because of the context in which the per se non-technical subject-matter is located, the amendments provide the skilled person with new, technically relevant information.
For the board, the requirement of the existence of new technical information and not just any information irrelevant to the invention follows, for example, from G 2/10, point 4.5.1. of the reasons for the decision, second paragraph, and from T 1269/06, orientation sentence. See also Case Law of the Boards of Appeal, 10th edition 2022, II.E.1.3.1, first paragraph.
In the present case, the ‘authorisation’ mentioned in claim 1 as originally filed constitutes, in the context of the claimed data transmission method, a contribution to solving the problem underlying the invention.
According to the application as originally filed, the object of the invention is ‘to propose a bidirectional radio data transmission method allowing a higher range without violating said standards’
As explained by the OD, the solution to this problem and thus also the so-called ‘authorisation’ of a higher transmission power represents ‘the core idea of the invention’. This was also argued analogously by the opponent.
Only on the basis of feature A is the part of the problem requiring non-infringement of standards solved. Without feature A in the claimed method, it is not ensured that the higher transmission power in the second frequency band does not infringe certain standards. Due to feature A, certain transmission powers in certain frequency bands are excluded from the claimed method.
Feature A thus contributes to solving a technical problem through the technical effect of excluding certain transmission powers.
Since the ‘authorisation’, which in itself and in general could be regarded as a non-technical feature, has a technical effect in the present context in claim 1 as originally filed, its deletion provides the skilled person with new information of technical relevance to the invention, namely that the level of transmitting power is not subject to any limitation.
Therefore, the board came to the same conclusion as the OD and the opponent, that the deletion of the term ‘authorised’ results in the subject-matter of claim 1 of the patent going beyond the content of the application as originally filed.
Replacing the term ‘authorised’ with the term ‘embodied’ results in the subject-matter of claim 1 of the patent going beyond the content of the application as originally filed.
The term ‘authorised’ was interpreted by the board to mean that access to something is granted. The term ‘embodied’, on the other hand, has the very general meaning that a thing or matter is given a shape or form. These two terms are therefore not synonymous, not even in the context of claim 1, but the term ‘authorised’ has a narrower meaning than the term ‘embodied’.
Since the term ‘designed’ does not have the meaning of ‘authorisation’ like the term ‘authorised’, it cannot replace the term ‘authorised’.
Comments
When amending a claim allegedly lacking clarity, it is very important not to fall into the trap of Art 123(2), and hence later in the inescapable trap Art 123(2)-123(3).
Whether the examiner has suggested the amendment or not is irrelevant. In approving the text before grant, the applicant endorsed the amendment.
The bord did not agree with T 619/05. However why should it be incorrect not to see any limitation to the implication of non-technical features when it come to added-matter as suggested in T 619/05, Headnote 1.
It is not disputed that according G 2/10, added matter is present when a skilled person receives new technical information over the originally filed application.
It is therefore difficult not to consider limiting the power transmitted in certain frequency bands as a non-technical feature.
T 433/22
https://www.epo.org/de/boards-of-appeal/decisions/t220433du1
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