EP 3 493 464 B1 relates to a client device for hearing device communication and a corresponding method.
There aim is improve security for a hearing device communication, and as well reducing the risk of a hearing aid and hearing aid function being compromised by a third party.
It turns about the generation of a “certificate key” in accordance with a specific feature which is then used in the subsequent steps.
Brief outline of the case
The patent has been maintained according to AR1 and the opponent appealed.
For the board, claim 1 of the patent as maintained was lacking IS over D1 in combination with the skilled person’s CGK evidenced by D12. The patent was thus revoked.
The case is interesting as it deals with the choice of the CPA and the definition of the OTP when applying the PSA. The board further disagreed with the concept of the “patent being its own dictionary“.
The board also disagreed with T 495/
The proprietor’s point of view
As to the OTP solved by present claim 1, the proprietor contended that the combination of features (g) to (m) provided “a robust mechanism for improved security of an authentication message by a client device” and referred essentially to the conclusions drawn in T 495/91, Reasons 4.2, according to which an objective definition of the problem to be solved by the invention should normally start from the problem described in the application.
The proprietor also argued that the necessary cryptographic operations were already mentioned in the description.
The proprietor further argued during the OP before the BA, that the “patent is its own dictionary“.
The board’s decision
According to the PSA as defined in T 1/
As a consequence, the conclusions of T 495/91 do not appear to be reconcilable with the well-established PSA.
To avoid any misunderstandings, the board added that, of course, by coincidence, the problem described in the application itself, i.e. also called the “subjective problem“, may well correspond to the OTP formulated later on the basis of the selected closest prior art; for example, if the suitable starting point is already cited in the application itself.
But, the established PSA does not imply that, for the purposes of determining the OTP, one should normally start from the problem described in the application.
The board recalled that the description cannot be used to read unclaimed features into the claim.
As far as the “patent is its own dictionary” the board noted that neither the wording of Art 69(1) nor the established jurisprudence of the BA can provide a basis for such a strict application of the alleged concept of the “patent as its own dictionary“. The board referred to e.g. T 1830/
Comments
The decision is interesting as it goes against the way German courts and the UPC define the problem to be solved. For German courts and the UPC, the problem to be taken into account is the problem the applicant/proprietor wanted to solve, irrespective of any prior art found during the documentary search.
Not only T 495/91 is at odds with the PSA.
The notion of the patent being its own dictionary is actually a fallacy.
If the patent could be taken as its own dictionary, the applicant/proprietor could bring into the description an interpretation which could give a totally different meaning to a claimed feature. Art 69(1) and Art 1 of the Protocol would then actually be misused.
It is to be agreed with the board in T 1830/22 that the concept of the patent being its own dictionary could evade the objective comparability of a patent claim with the state of the art, which in turn would be difficult to reconcile with the requirement of legal certainty.
When, like in T 1271/
It is during the grant procedure that such discrepancies between claims and description should be removed.
Let’s hope that G 1/24 will bring a much needed clarification.
On the procedure
Neither D1 nor D12 were mentioned in the ESR, which only quoted 3 documents of category A.
When looking at published decisions of the boards, CGK is rarely cited in search reports established by the EPO, but never in search reports established by other search authorities.
Comments
10 replies on “T 454/23 – Definition of the OTP when applying the PSA – Patent = its own dictionary”
Daniel, can you help me with the problem of being fair to both parties in the identification of the prior art starting point (CPA). I understand that the choice is restricted to a single prior disclosure which is “concerned with a similar use” and which requires the minimum of structural “and functional” modifications. I mean though, relative to what?
I think I understand “structural” but am not sure that I can fix accurately what is or is not a “similar use” or a “functional modification”. Similar relative to what? How shall we fix the specific and particular “function” that is or is not “modified”. What if the function is the solution of the subjective technical problem? Is this not routinely the case? Are we in “Chicken or egg; which comes first?” territory here?
You see, I can’t yet see when it is, that the “subjective problem” (as set out in the description by the inventor) shall play a role in fixing the CPA, and when it is to be disregarded in the process of fixing the CPA. I ask because I have just received an Art 94(3) Commn in which the Examiner asserts that D1 is a legitimate CPA simply because it has the most features in common with the claim. It ain’t that simple, is it?
The answer to my question should of course all be in the GL since decades ago but I have not found it. Can you point me to it, please. Any illumination from you would be much appreciated.
Dear Max Drei,
Leaving aside any problems of interpretation which are subject to G 1/24, I would say the starting point for assessing IS is the claim as it stands.
The relevant part of the Guidelines when it comes to selecting the CPA is G-VII, 5.1.
https://www.epo.org/en/legal/guidelines-epc/2025/g_vii_5_1.html
If the documentary search has not revealed a more promising starting point than the one indicated by the applicant/proprietor, then the subjective problem indeed becomes the objective technical problem. An objective problem different from the subjective problem is only to be determined if the documentary search has found prior art which comes closer to that of the applicant/proprietor.
According to case law and of the Guidelines, the following criteria have been developed in order to select the closest prior art
– same purpose or effect
– similarity of the technical problem
– most promising springboard towards the invention
– most promising starting point
– easiest route to arrive at the claimed invention
– needs a minimum of changes
The first two are for me, the most relevant.
In case of a claim to an action (method, process, use), the CPA is the document relating to a comparable action with the same or a similar result
In case of a claim to an entity (apparatus, device, system), the CPA is the document relating to an entity having the same intended use or purpose, because it has effects close to or the same as the effects provided by the claimed invention
Asserting that D1 is a legitimate CPA simply because it has the most features in common with the claim is the most stupid reason for choosing the CPA. This is clearly not what is said in the Guidelines. One wonders what training this examiner underwent.
When preparing candidates for the EQE, a key message to them was: never justify the choice of the CPA as having the most features in common. Not only you will lose marks, but the corrector will become suspicious. A drainage pipe or cheese grater can both be represented by a tube with holes. When dealing with a drainage pipe, would you take as CPA a cheese grater and vice versa? No need to say more.
Thank you, Daniel. Your cited GL paragraph contains the text that I used in my earlier comment.
Your cheese-grater example however, helps me to pursue my enquiries further. I’m thinking that there might be a difference between Art 54 and Art 56 when looking at the effect D1 has on patentability of any given claim.
As you write, claim 1 is the starting point. Exactly! Good!
Now suppose that claim 1 begins with the words “Tube with holes….”, but it follows a description and drawings that describe only cheese-graters. Prior publications in BOTH the drainage tube (D1) prior art AND the cheese-grater (D2) prior art would be relevant to the Art 54 and Art 56 patentability of that claim, right?
But what if Applicant now makes two amendments to claim 1, the first changing the opening words of the claim to “Cheese-grater…..”? Suppose that D1 (in the drainage tube art) contains an enabling disclosure of the claimed combination of features, and indeed has some non-zero capability to grate cheese. It still destroys novelty under Art 54, right, despite the change to the opening words?
And now my question. What if the second amendment to claim 1 renders it novel over D1? On to Art 56 EPC. Is D1 (with its non-zero capability to grate cheese) still a candidate for CPA, when it comes to the obviousness enquiry? Or, if we follow the case law and the GL, does the first amendment, to the opening words of the claim, automatically eliminate D1 as a candidate for CPA?
Dear Max Drei,
If the original claim is about a tube, but actually only discloses a cheese grater, then the drainage tube is “not suitable” to be used for a novelty attack.
What is unclear to me is what you mean with “has some non-zero capability to grate cheese”. If you rub cheese over the holes of a drainage pipe you might by brute force be able to grate some of it. However, the drainage pipe is, in the generality we are in, not suitable for a novelty attack.
If the opening words define a cheese grater, then, there is no doubt that the drainage pipe cannot be the CPA for the cheese grater with or without “some non-zero capability to grate cheese”.
Thanks for answering, Daniel. As often happens, unfortunately, I think we see the issue similarly but communication with words is often frustratingly imperfect.
What I had in mind is that you can’t make something patentably novel just by giving it a different name. Shakespeare offered the thought that “A rose by any other name would smell as sweet”.
Here, it was you who offered the thought that “a tube with holes” can be an accurate description, not only of a drainage pipe but also of a cheese grater. My invention in the cheese grater field, concerns the periphery of the holes. My contribution to the art delivers a better cheese-grater.
But wait. Perhaps my invention is also useful for a manufacturer of drainage pipes. Perhaps my invention would make it a better-performing drainage pipe. Less easily clogged by biological material. Or whatever. Accordingly, with this thought, in writing the claim, with “cheese grater” as the opening words of my claim 1 might fail to achieve for my client the maximum commercial value. So, instead, my claim begins “Tube with holes”. How does that offend the EPC?
Then the EPO searches, and finds novelty-destroying art (D1) in the drinage tube field. So I narrow my opening words to “cheese grater”. But the examiner then writes that if they were to build the tube disclosed in D1, it would have some cheese-grating capability. And so it still destroys novelty, despite my amendment to the claim’s opening words.
However, as soon as I establish novelty over D1 beyond dispute (by some amendment further down in the text of the claim than just in its opening words). D1 falls away as a novelty attack and, as we agree, is not effective as CPA under Art 56.
So, we agree on Art 56. But might there still be room for discussion under Art 54?
I agree with Mr Thomas that a relevant starting point for the obviousness assessment has to have the same or similar use or purpose as the claimed subject matter.
Regarding the implementation of Art 56 at the EPO, much attention is paid to issues related to the PSA : the choice of the CPA ; whether it is admissible to use more than one starting point ; the definition of the OTP if any. What must be pointed out nonetheless is that these notions are not mentioned in Art 56. Art 56 only relies on the prior art and the person skilled in the art. Once the « art » of the skilled person has been defined, on the basis of the claim language and in light of the original application, it is possible to select prior art meeting the requirement of a same or similar use or purpose.
As to to the « most promising springboard toward the invention» also cited by Mr Thomas, I disagree. The selection of that prior art is » most promising » assumes the knowledge of the invention and is inherently based on hindsight.
On the issue of whether the patent may be « its own dictionary », I am surprised that a notion of limited scope, which is nothing but a sort of exception to the principle that claim interpretation is based on the ordinary meaning of the claim terms, may be extrapolated to become the rule and justify that the description should be used to interpret the claims. The same kind of reasoning was used in the referring decision of G 1/24. This notion had been accepted over time in several BOA decisions without raising noticeable debate. It is already part of the UPC case law (the patent may be « its own lexicon »). It is fully accepted in US practice (MPEP 2111 : « An applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the relevant time. »).
There is here a matter of principle. If the applicant has included in the description a definition of a claim term which departs from its ordinary meaning and which is assertive on its face, this definition should prevail over the ordinary meaning. This is comparable to an agreement in which a first section sets forth a list of definitions for the terms used in the agreement. Accepting that the applicant/patent owner may put aside the definition in the description and restrict the interpretation of the term to its ordinary meaning so as to avoid the prior art allows the applicant/patent owner to play the « angora cat », it is unfair to third parties.
Mr Hagel,
I cited the notion of most “promising springboard” only be cause it has been used in case law. I personally do not like it not only as such and but as well as only criterion for the choice of the CPA. To me it is not far from the notion “has the most features in common”. Used as a summary statement after a proper reasoning, it is acceptable. Under proper reasoning, I mean that it should be based on same or similar use or purpose. Only then a given piece of prior art can be considered as the CPA
I have rarely seen prior art cited, directly or indirectly, in the description by the applicant/proprietor, a piece of prior art which does not have the same or a similar purpose.
The number of decisions of the BA in which the notion of the patent being its own dictionary has been applied is not as large as you think. Whether it is already part of the UPC case law (the patent may be « its own lexicon ») or is fully accepted in US practice, is actually irrelevant as far the EPO and its BA are concerned.
If the applicant has included in the description a definition of a claim term which departs from its ordinary meaning and which is assertive on its face, why should this definition prevail over the ordinary meaning of the feature in the claim?
Whether the definition in the description is broader or more limited with respect to the ordinary meaning, there is a discrepancy between claim and description. Said discrepancy has to be corrected before a decision to grant can be issued. I would say that this discrepancy leads to the conclusion that the claim is not properly supported by the description.
Allowing such a discrepancy is completely ignoring the primacy of the claims. What good is it to have claims, if the applicant/proprietor is allowed to alter the meaning given by the skilled person to a claimed feature by giving it a different meaning in the description.
The way to solve the discrepancy is to bring claim and description is accordance with each other. Either the definition of the description is brought into the claim or the feature of the claim is brought in the description. If this is done correctly, the risk of being faced with an “angora” cat is removed.
It is exactly by allowing a different meaning in the description to a claimed feature that “angora cats” can be created. Not wanting to be faced with “angora cats”, but allowing the patent to be its own dictionary is a massive self-contradiction.
It also means that examiners have not only to decide whether the subject-matter of a claim is novel and inventive, but also if it is clear and supported by the description. And here examiners should be allowed enough time to do their job properly.
Dear Max Drei,
I fully agree with you that you can’t make something patentably novel just by giving it a different name.
At least we can also agree on Art 56.
As far as Art 54 is concerned, I would say it also doesn’t, a priori, matter whether you claim a tube with holes, a cheese grater or a drainage pipe. When it comes to novelty, what matters is whether the prior art is suitable to be used as cheese grater or as drainage pipe.
It is only if the reply to this question is positive, that the prior art can be considered novelty destroying. Even if the claim is directed towards a tube with holes, the search examiner will never start searching in drainage pipes when the actual description relates to a cheese grater and vice versa.
Even if by chance he would search in drainage pipes, it would be a rare coincidence if he would find in the field of drainage pipes a novelty-destroying art (D1). As I said before, you might be able to grate some cheese when rubbing a piece of cheese on a drainage pipe. But this is not an argument which can be brought forward to deny novelty. It is not excluded, but novelty or not will not depend on chance.
There might be room for discussion on Art 54, but only at a very theoretical level. I would then need to see the actual claim wording.
Thank you, Daniel. Theoretical? Yes, perhaps. But (setting aside medicaments) my underlying thought was that a new use of an old thing (tube with holes, for example) might be Art 56 inventive even while giving the old thing a different name (in the opening words of the claim; cheese-grater, for example) won’t render it Art 54 patentably novel.
And as for where an EPO Examiner might choose to search, I was thinking more about what prior art a deep-pocketed opponent might cite against a granted claim that is directed to a tube with holes.
Dear Max Drei,
That a new use of an old thing can be inventive is not at stake. But then, the claim category is not for an entity, but for an action and the scope of protection is not a broad as that for an entity.
As we have changed the claim category, it is only if the use of the old thing as such is known, that lack of novelty occurs.
Deep-pocketed opponents might indeed try to find PA in different fields and come up with it.
My experience, looking at lots of published decisions of BA, is that in the vast majority of cases the opponents come up with prior art present in the EPO search files, and in classification units which have apparently been searched. The worst is when an opponent comes with PA under Art 54(3). This, alas, happens more often than it should be.