EP 2 021 124 B1 is concerned with olefin polymerisation in slurry phase loop reactors, in particular in multiple reactor systems.
Brief outline of the case
The OD decided that the claimed priority was not valid and claim 1 as granted lacked IS over a document published in the priority interval as CPA.
The patent was maintained according to AR2.
Both opponents appealed.
The board held that the MR=AR2 did not comply with Art 123(2).
Eventually the patent was revoked.
The opponents’ point of view on added matter
The opponents submitted, inter alia, that the combination of features defined in claim 1 of the MR=AR2 involves multiple selections and that the combination of features of claim 1 is therefore not discernible to the skilled reader from the original application, the application as filed providing no pointer towards that combination.
The proprietor’s point of view on added matter
The proprietor submitted that the combination of features in claim 1 of the MR was infringing Art 123(2) should have been raised in relation to claim 3, dependent on claim 1 as granted, since the subject-matter of claim 1 of AR2 corresponded to one of the options defined in granted claim 3.
The proprietor further submitted that no objection under Art 100 (c) was raised against claim 3 of the granted patent, which granted patent formed the MR in opposition and that the latter was found to not add matter.
This, in the proprietor’s opinion, inherently means that all claims in the granted claim set had a basis in the application as filed.
A subsequent objection to an amendment based on claim 3 from a claim set considered to have basis is a new objection that should have been decided by the OD. It is therefore requested that the argument concerning the absence of basis for the combination of features recited in operative claim 1 not be admitted on appeal.
The board’s decision on added matter
The board noted first that, AR2 was a new request whose patentability had to be assessed independently from that of the MR. Furthermore, the contested decision did not contain any consideration as to whether the subject-matter of claim 3 of the MR would not extend beyond the content of the application as filed.
In any event, claim 3 of the MR itself was not inserted into claim 1 of the MR, but only one of the two embodiments described in said claim.
Hence, the subject-matter defined in operative claim 1 of AR2 was not subject of the MR and could be fully examined as to its compliance with the requirements of Art123(2), cf. G 9/91, Reasons 19.
Moreover, the OD considered the argument that the combination of features defined in operative claim 1 would result from multiple selections within the teaching of the application as filed.
That argument was pursued during the OP, the opponents pointing out that claim 1 had been amended by taking several features of the description and that the combination of these features in claim 1 was not in keeping with the requirements of Art 123(2).
The OD, however, decided that the general teaching of the application as filed would provide support for the combination of the added features with the rest of the features of claim 1 of AR2.
The objection of added matter was therefore also part of the appeal proceedings and there is no legal basis for retroactively rejecting it on appeal.
The board held also that the opponents’ objection of added matter was sufficiently substantiated.
The board reminded that, it is established case law, CLBA, II.E.5, end of the first paragraph, that the burden of proof that amendments comply with Art 123(2) rests with the party making the amendment.
In the board’s opinion, it can be expected from a proprietor and drafter of the patent application as filed to explain how a reading of the text of the application as filed by the skilled person reveals the invention for which protection is sought by way of amendment, when this invention is meant to be directly and unambiguously disclosed therein.
It is not up to the other parties or the board to speculate as to why these features can be seen to be directly and unambiguously disclosed in combination when this is not apparent based on the sole passages of the application as filed mentioned in the proprietor’s submissions or the contested decision, as in the present case.
Comments
Two lessons can be drawn from the present decision
Non-infringement of Art 123(2) in respect of an independent and its dependent claims
If an independent claim as granted lacks N or IS, it does not say anything whether a dependent claim infringes or not Art 123(2).
The proprietor cannot derive from the fact that when the independent claim does not infringe Art 123(2) that this automatically means that a dependent claim on it, does not infringe Art 123(2).
Burden of proof of the proprietor in case of amendment of the claims
The burden of proof that amendments comply with Art 123(2) rests with the party making the amendment, i.e. the proprietor.
It is not up to the other parties or the board to speculate as to why features in a new claim can be seen to be directly and unambiguously disclosed in combination is the originally filed application.
The patent should actually not have been maintained according AR2, as the board found out that its subject-matter infringed Art 123(2).
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