The case is the same as discussed for the admissibility of a request consisting of a deletion/combination of claims.
The present patent results from divisional applications EP17178692/3260698 and EP17178696/3260699.
The patent relates to a wind turbine generator with a low voltage ride-through controller and a method for controlling wind turbine components.
The aim is to avoid the destruction of the generator and the inverter in case of low voltages which imply large currents. To this effect, even in case of low voltages, the wind turbine should remain synchronised with the grid.
Synchronisation with the grid is always a delicate operation and it should be avoided to have to carry it out this operation too often.
Brief outline of the procedure
Opponents 2 and 3 appealed the rejection of their oppositions.
Opponent 1 had withdrawn their opposition before the decision under appeal was handed down.
A notice of intervention was filed during the appeal procedure. The intervention was deemed admissible by the board.
The board decided that the ground of opposition under Art 100(c) prejudiced the maintenance as granted.
AR1-3 as well as AR 4-5 were not allowable as infringing Art 123(2).
AR 8 was lacking clarity as well as AR 6, 7 and 9.
AR A was not admitted under Art 13(2) RPBA21.
The patent was thus revoked.
A request for a referral to the EBA was rejected: “Does the cancellation of one or more granted claims, e.g. the maintenance of a single granted claim, constitute an ‘amendment’ in the sense of Art. 13 RPBA?”
An objection under R 106 was dismissed; the proprietor considered that its right to be heard had not been respected by the rejection of the request for referral to the EBA.
In this post, we will concentrate on the issue of added subject-matter.
The objection of added subject-matter
The proprietor’s position
The patent did not contain added subject-matter going beyond the content of the original application documents.
There was no inextricable link between the continued connection and synchronisation and a protective circuit. The reasoning in the decision under appeal had been correct, according to which synchronisation and connection did not necessarily imply over-currents.
The synchronisation of a generator with the power grid and the avoidance of damage of some of its components were two independent problems.
Paragraph [0003] and [0008] disclosed a turbine which remained connected and synchronised to the grid without mentioning any protective circuits. In the latter paragraph four independent problems which the invention solved were proposed. One was the provision of continued connection and synchronisation and another one was the protection of the converter.
Where a protective or crowbar circuit was disclosed it was within the framework of specific preferred embodiments. This applied in particular to paragraphs [0024] and [0026]. There was also no contradiction with paragraph [0007], which again described prior art systems using a Uninterrupted Power Supply (UPS) to power sensitive components, rather than the blade pitch control system.
The basis for the amendment was original claims 1, 3 and 8, which did not contain a protective circuit. The OD was correct in arguing that these originally filed claims already contained the effect of continued connection and synchronisation without requiring a protective circuit.
It was not important for the assessment of Arts 123(2) or 100(c) what was literally covered by the claim, but how a skilled reader understood the claim.
The board’s analysis in the preliminary opinion implied that even originally filed claims 1 and 8 were not originally disclosed, which was logically impossible.
The board’s and the opponent’s/intervener’s analysis was one concerning essential features, not added subject-matter. The original independent claims already implicitly contained the continued connection and synchronisation without requiring a protective circuit.
If and when a protective circuit had to be activated depends on the specific components used in a given turbine. For some low voltage situations it might be sufficient to control the blade pitch without activating a protective circuit.
If the application disclosed features as only belonging to an embodiment, the skilled person could not ignore this. Rather, this was still an original disclosure.
Increased capacity of some components was not a mandatory feature, but optional for continued synchronisation and connection.
The proprietor argued that, in the context of the question of a protective circuit being presented as optional, that presenting many other examples in an application was helpful to the public and should not be held against them.
The board’s position
When discussing allowability of claim 1 as granted the board found it very difficult to accept the OD’s stance that continued synchronisation and avoiding inverter damage by excess current were two different technical problems.
For the board, the argument of presenting many other examples in an application was largely irrelevant for the question as to what was originally disclosed. However, the board also disagreed with the proprietor’s characterisation of their own patent.
The board held that a skilled person does not read an application as a linguist would, but rather on the basis of their technical understanding.
If more severe voltage drops are to be accommodated, i.e. if the generator is not allowed to trip offline or disconnect, but rather is required to remain connected to the grid and synchronised with it, a bundle of measures is necessary.
The application clearly teaches the skilled person that a severe voltage drop at the generator terminals causes high currents in the generator windings, which can damage the semiconductor switches in the inverter.
If this happens, the generator cannot remain connected and synchronised. The original application does not contain a single technically useful piece of information as to how a severe voltage drop could be accommodated otherwise than with a protective circuit.
It also does not contain a single piece of credible disclosure of conditions under which a low-voltage event did not cause excess currents in the generator.
In view of this, a skilled person sees beyond the proprietor’s strategic choice to represent most parts of the disclosure as optional.
In this context, it is simply irrelevant how often the words “in one embodiment” are used correctly or not, contrary to what the proprietor argued.
This view applies in particular since the description has remained unamended despite the amendments made to claim 1 as granted.
Claim 1 as originally filed was so broad as to encompass prior art turbines with battery powered blade pitch control that merely tripped offline during a low-voltage event according to original paragraph [0005].
In this original context, a skilled person easily understands that a protective circuit is not essential.
However, this is not in contradiction to the fact that a protective circuit becomes essential once the generator is required to remain connected and synchronised with the grid during a low voltage event of a certain severity as is required by claim 1 as granted.
In the board’s view it contains exactly one example of how to deal with excess currents, and that is presented as optional, despite being obviously essential. Such a way of disclosing the invention is not helpful in understanding it.
A skilled person assessing the contents of the original application documents uses his technical skills.
If they recognise that certain elements of the original application documents are essential for achieving a technical effect then adding that technical effect to a claim without also adding the essential elements can create added subject-matter even if the essential elements are originally portrayed as being optional.
No elements of the originally disclosed solutions, in particular no protective circuit for the inverters was added to claim 1 as granted. A skilled person is therefore clearly faced with new information that a continuing connection and synchronisation of the generator with the power grid even at voltage drops to less than 50% of the rated voltage, could be achieved by a UPS powered blade pitch control system and turbine controller alone, as argued by the opponents and the intervener.
Comments
For lots of readers the whole thing might look horribly complicated. On the other hand, the power delivered or deliverable to the grid is the product of current by voltage. If the voltage drops, the current necessarily increases when the wind turbine has to remain synchronised with the grid.
By claiming that the synchronisation of the generator with the power grid and the avoidance of damage to some of its components were two independent problems, the proprietor attempted to declare that synchronisation and avoidance of damages were not inextricably linked. The board rightly did not agree. On the contrary, they are inextricably linked and any intermediate generalisation is infringing Art 123(2).
What is interesting here is the attempt of the proprietor to present some features as being optional, when in reality they are not independent from each other.
The proprietor tried to play with this, but it has to be agreed with the board that in this circumstance there was no option left over and the features were by no means any longer optional but essential.
It might indeed be tempting to present certain aspects of an invention as being optional. When there is only one example it is however difficult to consider that it is really optional.
I do not want by any means to re-start a discussion on the adaptation of the description, but here it is manifest that the adaptation had not been carried out as required. What was optional in the description as filed, remained optional in the description of the patent as granted.
If certain elements of the original application documents are essential for achieving a technical effect then adding that technical effect to a claim without also adding the essential elements can be considered as added subject-matter even if the essential elements are originally portrayed as being optional.
Some interesting case law on optional features an added subject-matter
In T 1203/13, it was held that the mere fact that each passage of the description is preceded by a “may” is not sufficient to disclose a combination or generalisation of features. If everything is optional, nothing is optional.
In T 3142/19 it was held that an excessive number of optional features may also have an impact on the assessment of compliance with Art 123(2). In a forest of optional features, a singled-out individual combination may not be clearly and unambiguously derivable by the skilled person. Whether this is indeed the case depends, however on the specifics of the case, e.g. on the level of complexity caused by the optional features.
https://www.epo.org/law-practice/case-law-appeals/recent/t200532eu1.html
Comments
10 replies on “T 532/20 – Added subject-matter and optional but essential features”
Very useful, M. Thomas, to be alerted to this case. Many thanks indeed. In discussing it, there is fortunately no need to get into the problematic area of conforming the description.
For one who represents clients who do their patent drafting in US-style, this Board decision is of very general relevance, for this case features the modern US style, to announce every feature as optional and none as essential. They do this thinking it minimises the likelihood of facing added subject matter objections. And, until this Board stepped in, they were probably thinking that their drafting style was optimal, not only for the USA but also in Europe.
I can well imagine that this Decision will be noted widely and will have deep and wide repercussions at the EPO for those who draft in US style. It strikes me that Art 123(2) is not the only way to point up the disadvantages of the style of drafting. One can envisage objections to a claim narrowed in prosecution also under Art 56, 83 and 84 EPC, depending on the facts of the case (features and effects) and the extent to which the claim in dispute recites function. But I guess that Art 123(2) will become the objection of choice because it leaves Applicant less able to counter-argue, and so brings the debate to an end more quickly.
Dear Max Drei,
Thanks for your comments. I am pleased to see that my post rang a bell.
Your comments remind me of comments I recently heard from US attorneys and it helps me to better grasp those.
So far as I understood the US attorneys, if the skilled person is in possession of the invention, it also possesses any variation around the theme. This explains why it can be obvious to combine features during prosecution in the US, but not in Europe. This also explains why in the US incorporation by reference is not a problem.
I have just checked and in the present case and in the two decisions I referred to at the end of my post, i.e. T 1203/13 and T 3142/19, the proprietors or the applicants were US companies.
In T 1203/13, Art 123(2) was infringed. It was not the case in T 3142/19, but the board warned about the problems which can occur with too many optional features.
It clear that for an opponent it is much easier to come up with a ground of opposition under Art 100(c) rather than a ground under Art 100(a). I do however agree that at least objections under Art 56, 83 and 84 can be raised depending on the circumstances.
I would however claim that besides the case of an intermediate generalisation, should the independent claim as granted be infringing Art 123(2), the proprietor sits in an inescapable trap. and this means bingo for any opponent.
Interesting answer, Daniel. When I wrote that Art 123(2) might be the objection of choice, against a narrowed independent claim, I was thinking of Examining Divisions. But of course that is also the case, after issue, for an Opponent, who will be hoping that the patent owner is fatally caught in an inescapable trap of their own making.
I must say that I hope for further distillation of the law on prosecution amendments and whether they add subject matter. I hope to see international harmonisation around the EPO jurisprudence as opposed to the American case law. I would think it very infortunate if the EPO case law gets out of line with that of all other of the world’s five leading Patent Offices. However, as far as I know, that is not the case. Rather, I understand that it is the case law of the USA which is out of line with that of the rest of the world. Which would not be the first time that the USA is out of line with everywhere else. On a smaller scale, that’s like the UK being out of line with the rest of Europe. But not on the issue of added subject matter, thank goodness.
@Max Drei
I do not think the drafting style which depicts every feature as optional should deserve so much attention. A feature is « essential » when it is claimed.
Note that the notion of « essential feature» has several meanings : it may mean that a feature is necessary for a technical effect to be achieved ; or that a feature must be mentioned in a claim so as to overcome an objection ; or simply that a feature is mentioned in a claim. And in the context of Art 69 EPC, the definition of « essential » is broadened to the equivalents of a feature mentioned in a claim i.e. to a functional definition.
The current practice at the EPO is to include in all search reports a « boiler-plate » paragraph banning the use of optional language such as « may » or « for example » when they precede a feature specified in an independent claim, regardless of whether such terms are actually used in the description.
It seems the EPO’s objective of this heavy-handed language policing practice is to force the applicant to formally disclaim certain options. I consider this is clearly in violation of the EPC, since the protocol on interpretation of Art 69 recognises the right for a patent owner to claim an interpretation of a claim broader than its literal meaning.
3 replies on “T 532/20 – Added subject-matter and optional but essential features”
Max Dreisays:
date_range 29 May. 2023
Very useful, M. Thomas, to be alerted to this case. Many thanks indeed. In discussing it, there is fortunately no need to get into the problematic area of conforming the description.
For one who represents clients who do their patent drafting in US-style, this Board decision is of very general relevance, for this case features the modern US style, to announce every feature as optional and none as essential. They do this thinking it minimises the likelihood of facing added subject matter objections. And, until this Board stepped in, they were probably thinking that their drafting style was optimal, not only for the USA but also in Europe.
I can well imagine that this Decision will be noted widely and will have deep and wide repercussions at the EPO for those who draft in US style. It strikes me that Art 123(2) is not the only way to point up the disadvantages of the style of drafting. One can envisage objections to a claim narrowed in prosecution also under Art 56, 83 and 84 EPC, depending on the facts of the case (features and effects) and the extent to which the claim in dispute recites function. But I guess that Art 123(2) will become the objection of choice because it leaves Applicant less able to counter-argue, and so brings the debate to an end more quickly.
Reply
Daniel X. Thomassays:
date_range 29 May. 2023
Dear Max Drei,
Thanks for your comments. I am pleased to see that my post rang a bell.
Your comments remind me of comments I recently heard from US attorneys and it helps me to better grasp those.
So far as I understood the US attorneys, if the skilled person is in possession of the invention, it also possesses any variation around the theme. This explains why it can be obvious to combine features during prosecution in the US, but not in Europe. This also explains why in the US incorporation by reference is not a problem.
I have just checked and in the present case and in the two decisions I referred to at the end of my post, i.e. T 1203/13 and T 3142/19, the proprietors or the applicants were US companies.
In T 1203/13, Art 123(2) was infringed. It was not the case in T 3142/19, but the board warned about the problems which can occur with too many optional features.
It clear that for an opponent it is much easier to come up with a ground of opposition under Art 100(c) rather than a ground under Art 100(a). I do however agree that at least objections under Art 56, 83 and 84 can be raised depending on the circumstances.
I would however claim that besides the case of an intermediate generalisation, should the independent claim as granted be infringing Art 123(2), the proprietor sits in an inescapable trap. and this means bingo for any opponent.
ReplyBy Post Author
Max Dreisays:
date_range 29 May. 2023
Interesting answer, Daniel. When I wrote that Art 123(2) might be the objection of choice, against a narrowed independent claim, I was thinking of Examining Divisions. But of course that is also the case, after issue, for an Opponent, who will be hoping that the patent owner is fatally caught in an inescapable trap of their own making.
I must say that I hope for further distillation of the law on prosecution amendments and whether they add subject matter. I hope to see international harmonisation around the EPO jurisprudence as opposed to the American case law. I would think it very infortunate if the EPO case law gets out of line with that of all other of the world’s five leading Patent Offices. However, as far as I know, that is not the case. Rather, I understand that it is the case law of the USA which is out of line with that of the rest of the world. Which would not be the first time that the USA is out of line with everywhere else. On a smaller scale, that’s like the UK being out of line with the rest of Europe. But not on the issue of added subject matter, thank goodness.
Dear Mr Hagel,
I can agree with you that a feature is “essential” when it is claimed, but I would specify that this is only the case when it is claimed in an independent claim. Anything claimed in a dependent claim cannot be considered as being essential.
What you call a “boiler plate” paragraph is what is called in EPO jargon a “standard clause”. In my opinion, this “standard clause” is useful, as it warns the applicant that any feature in an independent claim cannot be considered as optional but, by definition, is essential. That such a “standard clause” should not be used when it is not necessary, does not alter my position.
I have difficulties in following that by requiring the deletion of “may” or “for example” it boils down to formally disclaim certain options. Any feature contained in an independent claim cannot be considered optional.
There are indeed two lines of case law at the boards.
One is considering that the claim have always to be interpreted in the light of the description, which means that Art 69 is to be used during prosecution. I consider this view corresponding to what is known as the “German approach’’ in which the claim is systematically interpreted before deciding on any comparison with the prior art or with the originally filed disclosure.
The other one is considering that Art 69 is only to be used in opposition in order to determine whether the scope of protection is broadened during opposition. If the claim is clear as such, no recourse to the description is necessary. It is only in case that the claim is unclear, that recourse can be had to the description. In any case, the description can never be used to give a more restricted interpretation of a feature which is clear as such in the claim.
I have amply commented on those two lines of case in the present blog. i am clearly for the second approach.
It is not disputed that Art 69 recognises “the right for a patent owner to claim an interpretation of a claim broader than its literal meaning”, but this is a question to be dealt with by a national judge, not by the EPO.
Nice to see a comment from FH, except that, this time, I’m not sure I’m grasping the point which he is making.
The purpose of the claim is to define the area protected by the patent. The concept isn’t as simple as a “boundary fence” because there can be infringement by equivalent, outside the literal wording of the claim.
I prefer to think of a modern claim as having the attributes of an angioplasty balloon. You inflate it like a paper bag and if you push it too far, it bursts like a paper bag. But it’s not like a child’s party balloon either: you, the practitioner, can’t inflate it to whatever size you choose. A modern angioplasty balloon allows only a small safe inflation beyong its designed “paper bag” inflated size, because then it can cope with an unforeseen need for a slightly larger diameter to deal effectively with a stenosis in a blood vessel having unexpected attributes, and so deal with justice with the situation “on the ground”.
Let’s now turn to the issue in view, the inclusion in a claim of a statement of preference.
At first sight, there is no place for such a statement in a claim. We are interested in defining a boundary, not in describing preferred embodiments inside the inflated balloon, and statements of optionality obscure rather than define where the boundary lies.
But then again, there may occasionally be a place for such statements. I can imagine one that efficiently tethers the claim to a particular field of technology and thereby sharpens the definition and clarifies the meaning of the claim. One would hope that the EPO prohibition is not absolute but flexible enough to accommodate the unique facts of the case at issue.
Dear Max Drei,
Thanks for your comparison of an independent claim with an angioplasty balloon. It is exactly to the point.
I would add that any statement like “preferably”, “of the type” or “for instance” is not limiting an independent claim. Any feature following such an expression does not limit by any way the scope of the claim. A claim to “A shoe, preferably/like/of the type of a climbing shoe/tennis shoe….. “ merely defines an ordinary shoe and by no means a climbing or tennis shoe. Any known shoe having the features defined in the rest of the independent claim would be N destroying for the claimed shoe.
I would agree with you that, at first sight, there is no place for such a statement of preference in an independent claim. In a dependent claim, it does not harm, and can even help in saving claim fees. As an example if claim 1 defines the range 0-100, dependent claim 2 can define preferably 40-80, more preferably 50-70 and most preferably 60-65. If the independent claim says 40-80, any smaller range preceded by “preferably” will be ignored.
I agree with Mr Thomas that a preference expressed in a claim is not a limiting feature according to EPO case law. The same applies for the language “especially for” preceding a specific field of application. But this may not be true before a court, which may interpret the claim so as to make the specific field a limiting feature and overcome a prior art outside that field. This actually took place in the Itp v Technip case before the French courts, in which the patent at issue was the French equivalent of an EP patent revoked by the BOA of the EPO.
That being said, my obvious recommendation is to file an independent claim including the preferred option or specific field of application from the outset. This is advisable because the specific field is generally the one (most often the only one) of commercial interest for the applicant. And the description should mention the technical effects/advantages specific to the field of application to provide basis for novelty/IS arguments. Processwise, the advantage is that the search will encompass documents belonging to the field of application.
Dear Mr Thomas,
There is in my opinion an inappropriate use of what you call « standard clauses » when the warning is irrelevant. This is the case when the description contains absolutely no term such as « may » preceding a feature of an independent claim. In such a case, the standard clause leaves the awkward impression that the ED has not bothered to read the description.
Another inappropriate « standard clause » requires for the « summary of invention » to correspond to the amended set of claims, in other words, the summary of the original description should be replaced by claim-like language or a reference to the amended independent claim. When the original summary, precisely because it is not a claim-like clause, is informative about key features of the invention, as frequent in US style, its deletion would only impair the informative content of the description.
This practice, which fortunately is not shared by all EDs, reflects a pedantic, overformalistic approach.
As to your point regarding the divide between BOAs on the applicability of Art 69 during examination, I do not agree that it has relevance to the issue. It is clear that the description, including the drawings, is necessary to understand the claims. I refer here to the original description. This must be distinguished from the « interpretation » referred to in Art 69 and its Protocol. In addition, the normal rule of interpretation of the claims during examination is to give them the broadest reasonable scope. With this rule in mind, there is no need for a debate about the application of Art 69.
Dear Mr Hagel,
Standard clauses were originally developed as a help to examiners when they deal with a case which is not in their mother tongue. For some examiners, none of the EPO’s official languages is their mother tongue.
You might have a point when you claim an inappropriate use of “standard clauses”. I would however not conclude that it necessarily implies that the description has not been read.
Each examiner can set up his personal string of standard clauses. This makes life easier for him, and it corresponds to situations he encounters more frequently. With the production pressure, I understand that an examiner does not tailor the standard clauses to each actual case. It might not be absolutely correct, but it is life.
I beg to disagree with you when you consider that the “summary of invention” does not have to correspond to the amended set of claims. We are here at the hot topic of adaptation of the description, and you know my position. I will thus not repeat myself.
I have always been of the opinion that an ED should not adopt a pedantic, over formalistic approach. I can thus agree with you on this point. That not all ED adopt such an approach should be seen positively.
I have to disagree with you on the divide between boards on the applicability of Art 69 during examination.
In my humble opinion, Art 69 is not to be used at all during examination. It should only be used in opposition when it has to be decided whether or not the scope of protection has been expanded.
What matters are the claims, and if the claims are clear, there is no need to interpret them taking into account the description. In any case a feature in a claim has to be given the broadest possible technical interpretation available to the skilled person and the description cannot be used to give the same feature a different interpretation from that apparent for the skilled person when reading the claim.
If we start using Art 69, when for instance, it comes to added matter, we will never know where to stop. All the coherent line of case about what is directly and unambiguously derivable from the original disclosure will then have to be binned.