The patent relates to a communication system for providing data communication to a vehicle, for example a train.
Brief outline of the case
The opposition was rejected and the opponent appealed.
Contrary to the OD, the board found claim 1 as granted as lacking N over D5=US 2011/0296006.
AR1-7 filed when entering appeal were not admitted under Art 12(4) RPBA.
The patent was thus revoked
The case is interesting in that the AR filed when entering appeal were not admitted.
The proprietor’s point of view
The proprietor explained that there was no need to file any AR during the opposition proceedings because the OD rejected the opposition. D5 was not considered N destroying for claim 1 as granted.
AR 1 to 7 were submitted in order to respond to the opponent’s argument that D5 anticipated feature (g).
The opponent’s point of view
The opponent drew the attention to page 13 of the appealed decision dealing with feature (g). This point was refuted in the statement of grounds of appeal.
The opponent raised an objection as to insufficiency of disclosure under Art100(b) in combination with Art 83 against claims 1 of AR 1-7 as a number of expressions used in those AR like “intercept”, “masquerade” and “terminates”, have no well recognised meaning in the field.
The board’s decision
For the board, the appealed decision was not “based on” AR 1 to 7 within the meaning of Art 12(1)(a) RPBA.
The board held that in such a case, the proprietor has to demonstrate that these requests were admissibly filed and maintained in the proceedings before the opposition division and referred to Art 12(4) RPBA.
If this is done, the AR form part of the appeal proceedings. In the case in hand, the proprietor has not made submissions to that effect.
Therefore, the AR on file are to be regarded as an “amendment” within the meaning of Art 12(4) RPBA, and may be admitted only at the discretion of the board
The board, however, considered that a party prevailing in opposition proceedings is not relieved from its duty to timely prepare its case for the event of subsequent appeal proceedings.
Indeed, each party should take into account that either the OD or the board may depart from the preliminary view expressed by the OD and adopt an opposing view. The proprietor should prepare the relevant “fallback positions” for that eventuality.
There is however no right to present on appeal “fallback positions” that could have been presented already in the first-instance proceedings. Anything else would be contrary to the primary purpose of the appeal proceedings as laid down in Article 12(2) RPBA, i.e. the judicial review of the decision under appeal.
The amendments underlying claim 1 of AR 1 to 7 would further necessitate an n interpretation of several new expressions for the first time, like “intercept”, “masquerade” and “terminates”, have no well recognised meaning in the field.
The board therefore considered that admitting AR 1 to 7 into the proceedings would be detrimental to procedural economy.
Comments
Admissibility of AR in appeal
In matter of admissibility of submissions, the situation at the boards is slowly but surely getting from bad to worse.
On the one hand, some boards require from an opponent to comment on all AR filed in opposition, but not dealt with in opposition, while other say that the opponent does not know whether there will be an appeal and which AR will be kept.
Here we have a board which says that the proprietor should have filed AR in opposition, even if the opposition is rejected. The proprietor did not even know whether there would be an appeal!
As the OD would not have dealt with those AR, as it rejected the opposition, the content of those requests would actually have been irrelevant. They could have contained expressions like “intercept”, “masquerade” and “terminates”, which apparently have no well recognised meaning in the field.
But they would have been in the procedure in spite of all possible defects and Art 12(4) RPBA would have been respected.
The present attitude of the board is going to a level of formalism which is barely acceptable. It is clear that the board was not minded to look at the AR, and would not look at the AR, but then, it should have remitted the case for further prosecution.
That a board can take a different position than that of an OD is not at stake. As the board has decided that N was not given, it could and should have remitted the case for further prosecution. Why is it necessary to submit requests when the decision of the OD is such that no AR were needed?
If the decision of the OD is positive for the proprietor, it will difficult for it to substantiate AR with respect to the decision of the OD when entering appeal.
However, according to the present board, AR should have been be filed! If they are maintained, but not substantiated, what would be difficult, the board could dismiss them as not being substantiated. It is difficult to top the formalism of the present board.
It has also to be noted that in its annex to the summons the OD found at least one difference with D5, which was different from that of the board.
In the present case, the proprietor had no reason to file any AR in reply to the provisional opinion of the OD. Should the OD have changed its opinion during the OP, the proprietor would have been allowed to file at least one AR. As the decision of the OD was positive, the proprietor could only file AR when entering appeal.
Once the decision has been set aside, there is no obligation to keep the requests filed during opposition, so AR can be formulated anew. So why the big discussion about admissibility?
The attitude of the board can be qualified as excessively formalistic in its interpretation od Art 12(4) RPBA and bearing no relationship with real life.
Obligation to file AR in opposition
The only lesson to be drawn is for a proprietor is to always to file AR.
If they are not needed in opposition, they are present, and whether they are fall-back positions or not is irrelevant.
In such a situation the board will not take a final decision, as it will certainly not want to look at the AR, but will be obliged to remit once it has set aside the OD’s decision.
One could easily come to the conclusion, that in the present case, the board did not want to see the case back at all and hence fell into a formalism which is difficult to top.
On the procedure
The European Search Report only mentioned 4 documents qualified as background art (A).
D5 is classified in one the classes the search was carried on, H04L.
It is thus surprising that a N destroying document was not found. With the proper queries a N destroying document should be found without much difficulties.
According to the board’s decision D5 is US 2022/0296006. It actually is US 2011/0296006.
A look in the OD’s decision allows easily to find the correct number.
Formalism for formalism, the board can be measured by the same yardstick.
https://www.epo.org/en/boards-of-appeal/decisions/t210614eu1
Comments
18 replies on “T 614/21 – A party prevailing in opposition proceedings is not relieved from its duty to timely prepare its case for the event of subsequent appeal proceedings”
Thanks, Daniel, for posting this case. It reminds me of a discussion I had, about 25 years ago, with a learned EPO Examiner, about the relative importance of a) search and b) examination, at the EPO. From the moment the search report issues, said I, the burden is on me, as Applicant’s counsel, to work out what claim will withstand post-grant inter partes , and fully adversarial attacks on its validity (whether in opposition or in court). The early day hurried ex parte opinion of a single EPO Examiner, or even a later and more considered one from an exam division, is informative but not decisive. After all, what do ivory tower EPO Examiners know of the mental furniture of the notional person skilled in the art and the lines of attack that fierce competitors will be able to deploy?
My duty to the client is to look further down to road, to the day when the granted patent is asserted and the accused infringer fights back, with all the arguments it can come up with. How shall we make sure now, with the right pre-grant amendment, that we win in court, 10 or 20 years down the line?
Then I remember days when we, as Opponent, suffered when an OD, against all expectations, maintained the patent unamended. Don’t worry, I tell the client. This is an advantage because, when we appeal, the TBA will find itself unable to follow the OD and will find that it has to set aside the OD Decision. So we can reasonably hope to win in the end.
So I am not quite convinced that you need be so critical of this Decision. Doesn’t the old rule apply, that you cannot reasonably expect others to pro-actively take your side, to look after you, unless you yourself have aleady done all you reasonably can, yourself, to safeguard your own interests.
Conversely, Daniel, I agree with you, that no criticism can be too severe, if the EPO is, in the interests of maximising shareholder dividends, cutting back on the quality of its patentability searches.
Dear Max Drei,
Thanks for your comment.
What I am criticising is not the fact that the BA came to a different conclusion on N. This is always possible.
What I criticise, is the rather over formalistic attitude of the board by not admitting the AR filed when entering appeal as there was no objective reason to do so in opposition.
What the board actually requires is that the proprietor always files AR in opposition in view of the possibility for the board not to follow the OD when it reject the opposition.
This goes simply too far and is an interpretation of Art 12(4) RPBA which is difficult to share. In the absence of objective reasons for filing AR during opposition, filing of AR when entering appeal, should be possible.
It was the constant position of the OD that N was given. By simply saying that the question was present all along and the proprietor should have timely reacted is not correct, as the feature under scrutiny in opposition was different from that in appeal.
I can follow you when you state that you cannot reasonably expect others to pro-actively take your side, to look after you, unless you yourself have already done all you reasonably can, yourself, to safeguard your own interests.
My counter-question is then: is there a guarantee that the opponent will always appeal? No, although the likelihood is not negligible. For a purely hypothetical situation, requesting by the board to file AR is not reasonable. But if there is an appeal, the possibility to defend itself should have been given.
If the OD is constantly coming up with a lack of N, leading the OD to revoke the patent, and the board finds the N objection not tenable, the board will then remit should AR have ben filed in opposition. Should in this case the proprietor wait until entering appeal to file AR, then those are indeed too late.
In the present case, there was no objective reason to file any AR during opposition.
OK, Daniel. You maintain that there was “no objective reason” for the patent owner to present any AR’s “during opposition”. I find that an interesting statement. For me, the purpose of dependent claims is to provide a fall-back position in the event that the independent claim is no longer tenable. But during opposition proceedings dependent claims are of no help unless they are converted into AR’s. If the patent owner files no AR’s, it makes no difference how many valid fall-back positions are defined by the set of dependent claims. None of them will save the patent from extinction.
Given that parties to an opposition are required to present their “full case” before the EPO tribunal judges the merits of the case, do you not think that patent owners should include AR’s as part of their initial defence of the validity of the granted patent, within the term set by the OD for reply to the statement of grounds of opposition? How much of a risk is it, for patent owners, to wait until the OD has issued its decision (or even its preliminary opinion) before showing what AR’s it relies upon, to save the life of the patent if their MR fails? And how about the “equality of arms” issue. Opponents are required to attack all dependent claims from the outset. The argument that they need only do so when the patent owner turns one of them into an AR doesn’t carry any weight, does it?
This whole situation reminds me of the negotiation style which requires the decision-maker to select either the offer from one side, or the offer from the other, but is forbidden from splitting the difference. The EPO tribunal cannot itself write the claim that it would find valid. Such a negotiating style imposes a discipline on the parties, to ensure that their respective offer is more attractive to the decision-maker than that proffered by the other side. In consequence, the respective offers are not unreasonable. On the contrary, they are as “realistic” and attractive as possible. Why shouldn’t the EPO arrange matters such that patent owners show, at the outset, their ultimate fall-back position, their “last resort” to save the patent from extinction. Where is the harm in that? The gains in procedural efficiency are obvious.
There will be howls of protest from patent owners, of course. They will always try to keep their cards as close to their chest for as long as the EPO will tolerate. How much time should the EPO bestow on them? Until how late in the proceedings can one hold back one’s AR’s?
Dear Max Drei,
I can agree with that patent owners should preferably include AR’s as part of their initial defence of the validity of the granted patent, within the term set by the OD for reply to the statement of grounds of opposition.
It is indeed the safest way and avoids problems at the board’s level.
If the OD rejects the opposition, the gain in efficiency at the OD level is nil as the AR will not be looked at. If the board comes to a different conclusion, the board will certainly not look at the AR. The bard will remit for further prosecution. The gain in efficiency at the board’s level is thus also nil.
If the gain in efficiency is nil, why discuss the filing of ARs by the proprietor?
That it is wiser to file ARs up front, i.e. in opposition, has in my opinion, not an immediate effect on efficiency, when the opposition is rejected or when the decision of the OD is overturned in case of a lack of N, lack of sufficiency or added-matter.
In such a situation, the board should remit for further processing and not simply squeeze out the proprietor so that it I sure that the file will not come back in appeal. In the present case, I find the board’s attitude rather small minded.
What I am actually criticising is the attitude of the present board and its interpretation of the RPBA. Its interpretation of the RPBA is rather formalistic and has actually deprived the proprietor from the opportunity to defend its patent, once the board had overturned the rejection of the opposition.
Perhaps it is because of my UK background that I have a slightly different idea of procedural efficiency, Daniel. A lengthy game of ping-pong between OD and TBA strikes me as inefficient. The Boards are striving to cut back the number of remittals, I had thought. It might be risky, from now on, to take it for granted that the Board will remit.
As to AR’s in general, I often think they fall into one category or another, good and bad. The good ones are those that send out a signal that the closer one gets to the core within the patent, the more inventive it gets. The bad ones serve to confirm that even the core is devoid of anything inventive. So, filing a set of “good” AR’s at the outset raises your chances of getting home with the Main Request, both before an OD or a Board. When the core is of quality, what is the point of a bit of pruning at the edges?Conversely, filing bad AR’s will provide aid and comfort to an OD or a TBA inclined to revoke, with the thought that the patent does not deserve to be maintained.
But I myself have no experience of coming to a Decision, whether to revoke or maintain an opposed patent. OK, the AR’s should not influence the decision on the Main Request, but the psychologists tell us that there is a thing called “framing” which is very influential on human decision-making. I see AR’s as having a significant “framing” effect.
We often find that our viewpoints are so different that our opinions are different. Perhaps that is so, also here?
Dear Max Drei,
I do not think that our viewpoints are different in this matter. I agree with you that ping-pong between first-instance and boards is not efficient. Nevertheless, there are situations were a remittal cannot be avoided.
The first case is when a first instance division has committed a SPV. The original version of Art 11 RPBA20 was limiting remittals to this situation. The reason given by a member of the BOAC (coming from the German Federal Court BGH) was that at the BGH there were no technical judges, so that they have to remit. At the BA, with technical judges, there was no reason to remit.
The boards rightly protested and Art 11 was amended. If the original wording of Art 11 RPBA20 would have been kept, then the boards would have ended up with more work as they would have had to look for the first time at AR which might not have played any role in first instance. The result of the RPBA is that the bulk of the work has been transferred to the first instance. Whether the overall efficiency of the EPO has therewith been improved remains to be seen.
When you look at the practice of the boards, the cases for remittal have not really changed under the RPBA20. When the decision of first instance set aside was a lack of N, lack of sufficiency or added-matter, the boards normally remit.
I know that the UK tradition is different and all points are decided in first instance. I do however have difficulties with this position.
When for instance there is a lack of sufficiency: how can an invention which is not enabled be compared with any prior art? On top of this, non-enabled prior art is as well no prior art under Art 54.
In case of added matter, the claim does not have an effective date: how can such a claim be compared with any prior art? Should the effective date be the priority date, the filing date, or the date at which the added matter came in the claim? In my understanding, a claim can only have one of two effective dates: the priority or the filing date.
When a decision of lack of N is set aside, IS remains to be decided.
Those are for me clear reasons in which a remittal is to be envisaged.
In ex-parte procedures the absence of AR leads to a definitive refusal. But this is not new under the RPBA20. It already existed under the RPBA07 and the corresponding case law. If the applicant was not willing to limit its claims before the ED and wanted to wait going to appeal in order to file AR, he was indeed too late.
In inter-partes procedures, the situation is different. In the absence of any necessity for filing AR before the OD, or when AR were not discussed before the OD, the board should simply remit when, in one of the three situations described above, the decision of the OD is set aside. The decision of the OD has been reviewed in an judicial manner as required under Art 12 RPBA20. Taking pretext of the absence of any AR in opposition is too me a bad excuse from the board. It does not make a difference whether AR were filed and played no role or when no AR were filed as there was no reason for doing so.
I would however agree with you that, be it in examination or in opposition, it is always better to file AR in first instance. If the AR were not needed, the board will not look at them and simply remit.
I can also agree with you that there are good and bad ARs. As AR are of the competence of the applicant/proprietor, it is his problem when he files AR. Filing AR was originally coming from German representatives, and slowly other representatives adopted them as well. I do however remember in the first years of the EPO of the fierce resistance of UK representatives to file AR, as they did not want to show how far the applicant/proprietor wanted to go.
What you call “framing” was actually a fear clearly expressed. Personally, I never considered AR under this point of view. I took them for what they were, and if late filed, I always refused to decide on their admissibility en-bloc, although some representatives of opponents would have liked it. They were discussed one at a time in the order given by the applicant/proprietor. Even in examination, I refused to make the choice for the applicant.
What I find problematic with the present attitude of the boards is that in procedural matters, the board do not act coherently. The way they exercise the discretion given to them by the RPBA is rather arbitrary. It has actually become a lottery. I am therefore convinced that with a more reasonable board, the present case would have been remitted.
Hi Daniel.
I very much understand your objection to the Board’s formalism in this case, but I think that it is simply the way the wind is blowing, particularly with the insistence that an appeal should be a review not a re-hearing.
My take on this is that the Board’s approach is consistent with the Boards’ approach on appeals from the Examining Division.
In Examining Division appeals, any claim requests not presented at first instance normally now will not get admitted on appeal unless there is a good reason to do so. This is consistent with the idea that an applicant should present its case fully at first instance. There is, of course, a discretion to admit amendments in on appeal, but then the normal rules on admitting amendments to a case should apply.
I can see the logic of taking a similar approach to new claim requests on appeal.
The decision is consistent with the EPO’s “funnel” approach. A patent proprietor is free to file claim requests up until the rule 116 deadline. Anything later than that is to be considered “late filed” and admissible only at the discretion of the Opposition Division. If an appeal is truly to be a review, then it is not clear why the filing of an appeal should re-open the window for filing new requests.
Of course, there can be a debate as to whether, the Board in T614/21 exercised its discretion properly but having a test similar to the “clear allowability” test for very late filed amendments in oppositions would be consistent with the “funnel” approach. And the fact that the Board asked whether the proposed amendments might be considered responsive to “new” arguments not previously discussed provides Board’s with the wriggle room to admit amendments when the facts have changed.
Dear Roka Ur,
There is no doubt for me that an appeal should be a review and not a re-hearing.
When no ARs are filed in first instance and the decision of the first instance is confirmed, then a definitive refusal/revocation is the direct consequence. In such a situation there is nothing left to revise in a judicial manner and this consequence is to be expected by any applicant/proprietor.
This position is not new under the RPBA20. It already existed under the RPBA07 and the corresponding case law. If the applicant/proprietor was not willing to limit its claims before the first instance and wanted to wait going to appeal in order to file AR, he was indeed too late.
I remember applicants/proprietors more or less saying that the division was too stupid to understand what was at stake and the board would give them what is due. I always virtually shrug my shoulders when I heard this, as I knew too well what would happen in appeal.
In the absence of any necessity for filing AR before an OD, or when AR were not discussed before the same, the board should simply remit when, in one of the three situations lack of N, lack of sufficiency and added matter, the decision of the OD is set aside. It should apply mutatis mutandis when the appeal is after examination and a lack of N, sufficiency or added matter is set aside by a board.
When the decision is set aside, the game starts anew in the first instance and I do not see why the applicant/proprietor is bound by the AR he originally filed. He cannot be pinned down on those AR and is free to change those. I remember a decision, which I could not find quickly, in which the board refused to pin the proprietor down to the requests he filed before the decision was set aside.
When the board has been setting aside the decision of the first instance, the legal and factual situation has changed, the parties are set again in the situation of the beginning of the procedure, with the proviso that the board’s decision cannot be challenged. The rest can well be challenged.
When the decision is set aside, I would claim that a new time limit under R 116(1) is starting. As long as the applicant/proprietor files and substantiates its requests within the time limit under R 116(1), they are in principle admissible.
If the new AR are a mere combination of granted claims, then new prior art by the opponent might be late as the 9 months of opposition has lapsed a while ago. When the AR comprise features from the description, then the opponent can file prior art in order to challenge the patentability of these new Ars. For the same token the ED can introduce new prior art in the procedure.
I could agree with you if the “clear allowability” test was used the same way by all boards. Some boards admit such late filed ARs, other refuse to admit them. This is the problem.
By setting aside the lack of N, lack of sufficiency and added matter, I claim that there was no “wriggle room” for the board. The decision of first instance has been reviewed in a judicial manner. Claiming that in any case ARs should be filed in first instance goes a trifle too far.
It is clear that the applicant/proprietor takes a risk. If the decision of the first instance is confirmed he is out, but not when the decision of the first instance is set aside by the board.
I am not for taking unnecessary risks. This is why it is always advisable to file AR, be it in examination or opposition.
What I am actually criticising is that the boards are not consistent when it comes to procedural aspects. The discretion given to them is not applied uniformly as similar situations are not dealt with in a similar way. This is a not an extraordinary requirement. It is simply treating all appellants in a similar way. Or am I asking too much?
Dear Daniel,
I agree with you entirely that consistency is not too much to ask for.
It is, however, evident that the Boards are struggling to achieve that at the moment.
There seems to be a developing consensus amongst the Boards that claim deletions are permissible provided that deleting a claim does not shift the focus of an appeal. However, in other areas, such as the extent to which a patentee should be permitted file new requests, not filed before the OD, not so much.
Getting ARs before the rule 116 deadline before the OD is clearly the best advice!
[Apologies for my failed and confusing comment attempt above – I got the comment field and the name field mixed up, somehow then prematurely posting an entry twice. I am trying again here]
Mr Thomas,
In these comments you express an opinion I have heard often from EPO insiders:
“When for instance there is a lack of sufficiency: how can an invention which is not enabled be compared with any prior art? On top of this, non-enabled prior art is as well no prior art under Art 54.
In case of added matter, the claim does not have an effective date: how can such a claim be compared with any prior art? Should the effective date be the priority date, the filing date, or the date at which the added matter came in the claim? In my understanding, a claim can only have one of two effective dates: the priority or the filing date.”
Perhaps I can explain the contrary perspective.
When we are comparing a claim with the prior art, the starting point is of course the wording of the claim. For an assessment of novelty, the question is: are the features expressed in the wording of the claim also disclosed in the prior art? Such a comparison can be performed separately from any consideration of whether those claimed features are also enabled under Article 83 EPC in the patent application. Of course you are right that non-enabled prior art cannot take away novelty. But a non-enabled claim can still lack novelty over the prior art if the prior art itself is enabled, as long as that prior art discloses all of the features of the claim.
With inventive step it perhaps becomes trickier to separate out the issue of technical effect from that of enablement. This is why we have the case law which continues to evolve concerning the distinction between Article 83 and Article 56. But, again, it is conceptually possible to take the approach of: what are the claimed features, and are they disclosed or made obvious in the prior art? A finding of lack of sufficiency does not impair that comparison with the prior art disclosure.
Now turning to Article 123(2). “If a claim adds matter, what is its effective date for comparison with the prior art?” is, I submit, the wrong way round to look at it. If all of the prior art pre-dates the (alleged) priority date, it is Article 54(2) prior art no matter what. The claim cannot take an earlier date: its date is the priority date, or a later date, but never an earlier date. So, a finding of added matter cannot impair the comparison of the claim with the disclosure of the prior art. Getting hung up on the effective date of the claim in this context is a distraction. I will grant you that the effective date becomes relevant if the available prior art has a status which changes depending on the effective date. But, what is to prevent an Examiner from saying: “*assuming* that the effective date is X, then this document is prior art under Article 54(2); and on that basis I assess novelty and inventive step; *assuming* that the effective date is Y, then this document is prior art under Article 54(3), and on that basis I assess novelty only.” Similar exercises are performed routinely in the case of disputed priority entitlement. Why not in the case of added matter?
To put it even more briefly:
Situation 1:
Claim 1 is to a product comprising A + B. This combination is not disclosed in the application as filed, so it contravenes Article 123(2) EPC.
Prior art document D1 is prior art under Article 54(2) EPC. It discloses A + B.
What is to prevent the conclusion that claim 1 would lack novelty over D1, *even if* it were hypothesised that A + B did not violate Article 123(2)?
Situation 2:
Claim 1 is to a product comprising A + B. This combination is disclosed in the application as filed, so it complies with Article 123(2) EPC. However, the combination violates Article 83 EPC.
Prior art document D1 is prior art under Article 54(2) or Article 54(3) EPC. It discloses A + B.
What is to prevent the conclusion that claim 1 would lack novelty over D1, *even if* it were hypothesised that A + B did not violate Article 83?
@ Not Max Drei,
I reply to both comments at once.
For a start, contrary to what you claim, the invention is not defined by the claims. According to Art 84, the claims define the matter for which protection is sought. In some patent laws in Eastern European countries, before they joined the EPO, claims defined the invention. Those times have gone.
I strongly disagree that a finding of lack of sufficiency does not impair a comparison with the prior art disclosure. In whichever way you turn it, non-enablement does not allow a proper comparison with any prior art as you do not know what the invention is about.
I also strongly disagree that a finding of added matter cannot impair the comparison of the claim with the disclosure of the prior art. In whichever way you turn it, added matter does not allow a proper comparison with any prior art as you do not know what the claimed invention actually is and what effective date it has.
To decide on the on the effective date of the claim is not a distraction. Your comparison with the priority is a distraction. If there is no enablement of the teaching in the priority document, the priority is not valid. You can add new matter to the priority document, but all claims containing the new matter will not benefit from the priority.
My reply to your second comment is very brief: whether in situation 1 or 2, the comparison is not valid for the reasons I have just repeated above.
Mr Thomas, those are bare assertions that are not backed up by reasoning or reality. It is trivial to find cases where an insufficient claim could be compared against the prior art. If the insufficient claim is insufficient due to excessive breadth but encompasses an example that has been known for 50 years, then the insufficient claim is also not novel. It’s really quite simple.
@ Confused
I think that you chose the right pseudo as what you are saying in a rather apodictic way is clearly confuse. You have the right to disagree with me, but you should at the bare minimum stay polite. I have not started a blog in order to be insulted in such an uncouth manner. Reducing my comments to bare assertions not backed up by reasoning or reality boils down to saying that I am a liar. This goes way too far.
Up to now, I have not deleted any comments, unless they bear no relationship with the topic discussed, but I am thinking of checking comments before they become public.
I do not know in which reality you live, but it seems to be in a world which is foreign to all what I have been taught in my long life in patents, and what I have been telling people for many years.
There is an easy possibility to discriminate in first approximation between clarity and sufficiency.
If the necessary information is found in the originally filed documents a clarity objection can be overcome by bringing in the claim the features disclosed in the original documents.
If the original documents are silent on the lacking feature, an objection of lack of sufficiency cannot be overcome as bringing in the original disclosure the missing information would amount to add subject-matter.
In T 930/18, the board had no doubt that the subject-matter of claim 1 was broad and may be considered to lack essential features. It added that the breadth of a claim is generally a question of clarity under Art 84 and not primarily of sufficiency under Art 83. A potential lack of clarity does thus not necessarily deprive the skilled person of the ability to carry out the invention as foreseen. For more detailed explanations concerning the relationship between Art 83 EPC and clarity of the claims, see T 593/09, in particular points 4.1.2 to 4.1.4 of the reasons.
In T 219/18 it was held that the mere fact that a feature is broad is not in itself a ground for considering a claimed subject-matter insufficiently disclosed.
In the example you give, the objection is manifestly a problem of lack of clarity and not of sufficiency. There cannot be a lack of sufficiency as enablement is given at least for part of a claim. The claim should then be limited to what is enabled. It is only with a limited claim that a comparison is possible with the prior art.
You seem manifestly confusing breath of a claim with sufficiency, or in other words you are one of the artists which bring in a hidden lack of clarity in opposition. It is indeed trivial to to find cases where clarity is at stake.
Am I correct to understand that the underlying principle in your viewpoint is that we must know “what the claimed invention actually is” – and that without an effective date, this is unknowable?
If that is the case, I wonder if the difference in our viewpoints is because of a disagreement about what the meaning of “invention” is in this context.
If I understand you correctly, your view is that the “invention” is not only the thing which is specified by the wording of the claims – but it also incorporates, in some way, a date, and also an element of the technical effect or technical teaching (“what the invention is about”; “what the invention actually is”).
But, from the alternative point of view, isn’t the “invention” simply “what is defined by the claims”, irrespective of those considerations?
A simple thought experiment might help to illustrate what I mean.
Imagine a very simple patent application. The description says:
“The invention relates to compounds, and to compositions comprising such compounds for treating cancer.
In a first embodiment the invention provides compound A.
In a second embodiment the invention provides a composition comprising compound A.
In a third embodiment the invention provides a composition comprising compound A, for the treatment of cancer.”
There are no examples – nothing to explain how the compounds or compositions are made, and nothing to illustrate that such compounds or compositions actually treat cancer, or that make it credible that they do.
The original claims exactly reproduce the four embodiments above.
Now during examination, the claims are amended so that there are only two claims:
1. A composition comprising compounds A and B.
2. A composition comprising compound A, for the treatment of cancer.
Based on what I have described, I think we can agree that claim 1 adds matter, because there is no disclosure of compound B in the application as filed. I think we can also agree that claim 2 violates Article 83 EPC, because there is nothing to make credible the treatment of cancer by compound A.
The Examiner also finds a document D1. This was published 5 years before the claimed priority date. Its status as prior art is not affected by the effective date of the claims.
D1 very clearly discloses “a composition comprising compounds A and B”. It describes how to make such compositions. And it provides supporting data showing the effectiveness of such compositions in treating cancer.
If I understand your point of view, because claims 1 and 2 above have no effective date, we do not know “what the invention is about” and so we cannot compare them with D1.
From my point of view, though, the “invention” is simply what is defined in the claims. And we can easily see that precisely what is defined in the claims is disclosed in the prior art.
We do not need to consider what the invention is “about” in order to make that comparison. And the effective date of the claims does not come into it, because D1 is prior art no matter what.
How does the effective date, or knowing what the invention is “about”, change that?
Another example: you have sometimes expressed the opinion, I think, that it is similarly impossible to examine the novelty or inventive step of unclear claims, because if they are unclear they cannot be compared with the prior art. But the Opposition Divisions and Boards of Appeal do that all the time, in the case of claims having unclear features which were present in the claims as granted. The approach is simply to try to come to a technically sensible understanding of the claim in the context in which it appears – and to give the unclear feature it its broadest technically sensible meaning in that context. If it is so unclear that no meaning can be given to it, in extreme cases then it might simply be ignored, as though the unclear feature is not there. Having done this, it can be compared with the prior art.
Are the Opposition Divisions and Boards of Appeal wrong in this approach, in your view?
@ Not Max Drei
If you had taken the bother to correctly look at what I have written, you would not have started as you did. I repeat it here: to my understanding without an effective date, you cannot compare the subject-matter of the claims with the prior art. This is nothing new under the sun and it is what I have been taught in my long life in patents, and what I have been telling people for many years.
Furthermore, claims are not there to define the invention, but to define the matter for which protection is sought. The claims, in particular the independent claim, which is generally the broadest, represents the essence of the invention disclosed in the application or patent. I do thus not agree that the “invention” is simply what is defined in the claims.
I do not like oversimplified examples, but for the sake of argumentation I will discuss your first example with the two claims
1. A composition comprising compounds A and B.
2. A composition comprising compound A, for the treatment of cancer.
I can agree that claim 1 adds matter, because there is no disclosure of compound B in the application as filed.
I can also agree that claim 2 violates Art 83, because there is nothing to make credible the treatment of cancer by compound A.
I can as well agree that the status as prior art of D1 is not affected by the effective date of the claims.
Claim 1 comprising added matter has no effective date due to the added matter.
That D1 discloses A will only be applicable once the claim has been limited to A, i.e. in which the added matter has been removed.
In the absence of claim limited to A a comparison with the prior art is not possible. In order to accelerate the procedure, it is possible for a division to say that with a claim limited to A, we have a lack of N, but this cannot apply to the claim with A+B. To my knowledge, there is no partial lack N in claims under the EPC.
For the same token, I maintain that an unclear claim cannot be compared with any prior art. What is however possible, is to give the claim a specific interpretation on the basis of the description, and under this interpretation an objection of lack of N or IS can be raised. A lack of IS cannot be raised against a claim you do not know what it represents. I have practised this many times during my active career as examiner and in this respect, I agree with the divisions of first instance and the boards.
An other possibility to deal with the problem is rather than raising an objection of lack of clarity, an ED will raise an objection of lack of N or IS. With a lack of clarity, the applicant might argue that in his view the feature is clear. By raising an objection of lack of N or IS, provided it is properly justified, the likelihood that the applicant moves is much higher. This has also been a regular practice of mine.
In opposition the opponent will either ignore unclear features or give them a very broad interpretation. It will be to the OD to agree or not, but clarity is not a ground of opposition for granted claims taken alone or in the combination granted independent and granted dependent claims.
As far as ignoring an unclear feature is considered, I would be more circumspect. I would not necessarily ignore the feature, I would rather apply case law and consider that an unclear feature cannot help distinguishing the subject matter of a claim from the prior art. A lack of clarity can thus bring about a lack of N or IS. See for instance T 571/05, T 422/06, T 872/09, T 144/12 or T 2502/18.
From the above you can see that I am in full agreement with what divisions of first instance or boards are doing.
And yet, I maintain that a claim might not have an effective date.
As far as the boards are considered, I doubt that, in view of the present RPBA, the board will bring in the type of interpretation discussed above from its own volition. It might only do so, if it has been presented beforehand by the opponent.
Dear Mr Thomas
In a comment above you took great offence at the manner in which another commenter expressed themselves.
I would therefore appreciate it if you showed the same respect to your commenters as you demand from them. For example, by not accusing me of having not bothered to read your earlier remarks.
I had read your earlier remarks and I understood them perfectly well. That is, I understood you to be expressing your view that a lack of an effective date disables any possibility of comparison with the prior art.
I understand perfectly well *what* your view is. What I was trying to do with my further comments was to understand *why* your view is what it is. In other words, why is the lack of an effective date so fundamentally disabling that it prevents even the intellectual exercise of comparing the claim *as it stands* with the prior art, so that we must simply stop at the finding of added matter.
Your subsequent comments have clarified what you view as the problems with a lack of an effective date. But these all appear to be framed from a view focusing on procedure. I fear that I am no closer to understanding the fundamental intellectual and legal problem, in other words what it is about the effective date that is so fundamental that it stops me from saying “here is a claim to A and B, there is a prior art disclosure of A and B, so even if A+B did not add matter (which it does), it would still lack novelty”.
Finally, if I might take a point which “Confused” made. I would not express it in the same terms, but I see the point that he was trying to make. It is actually well known that – depending on how the claim is expressed – a claim can be bad for insufficiency if it is broad enough that it encompasses both working and non-working embodiments. In this case the disclosure of “at least one way” to work the invention does not mean that it complies with Article 83. In this respect see the Case Law Book, II.C.5.4. This is actually quite common in chemistry and biotechnology, at least.
@ Not Max Drei,
I have taken due note of your last entry, but I will not change one iota to what I have said. I have found your statement and that of “Confused” unnecessary provocative towards myself. You got thus the answer you deserved. You actually reminded me of an old German say: “as one calls into the forest, it echoes back”.
If you do not wish receiving from me a reply to an unnecessary provocation you should stop provoking yourself. One possibility would be to refrain from posting statements actually insinuating that I was having a position which is absent from any practice at the EPO. Without your last question, I would not have reacted as I did.
Deciding that claim has or not an effective date is by no means a question of procedure but a question of substance. Lots of people have understood the notion of effective date of a claim or of its absence and the consequences thereof.
I have just posted another blog dealing with the difference between “one way” vs. enablement “over the whole scope”.
I know the difference pretty well and do not need to be taught what it is. I have practised it myself.
In one opposition case, the OD I had the pleasure of chairing, raised ex-officio an objection of lack of enablement as the claim was actually encompassing embodiments which could not work.
The claim was so broad that it attempted to cover embodiments which were contrary to basic laws of electricity. However, the description disclosed one embodiment which was clearly enabled.
Without making any suggestion to the proprietor, he limited from it all volition its claim to the disclosed embodiment.
The representative in examination obtained a claim he thought would be as broad as possible, without realising that it was technical non-sense.
When explaining why the broad claim could not be enabled, the comment of the opponent was flabbergasting: now we know why it does not always work! Indeed in some also disclosed embodiments it could not work as claimed.
The problem of one way vs. the whole scope might be less frequent than in in chemistry and biotechnology, but it also exists in other technical areas. More frequent is that the claim is unclear. Clarity can however be overcome in view of the original disclosure. Lack of sufficiency cannot be overcome.
G 1/03 made clear that the scope of the claim has to be commensurate with the contribution to the prior art. There is nothing to add.