EP 3 900 240 B1 relates to a smart proxy rotator.
Brief outline of the case
The patent was revoked and the proprietor appealed.
The board confirmed the revocation.
The case is interesting in that the board had problems with the clarity of the claims in AR 7A.
Claim 1 of AR 7A differs from claim 1 of AR 6A in that, after feature 11), the following feature has been added:
11) “wherein proxy providers’ weights are calculated by the SPR based on the evaluation of performance and availability data from at least one proxy belonging to the provider”.
12) “wherein the SPR returns the proxies of the maximized proxy provider after a cooldown period defined for the proxy provider.”
The opponent’s point of view
During the OP before the board, the opponent submitted that the unclear features underlying the amendments made to claim 1, which are based on the patent description, are building up on corresponding unclear formulations taken from dependent claim 6 as granted.
Raising an objection under Art 84 against unclear features stemming from granted dependent claims should be admissible under such circumstances.
The board’s decision
The board agreed, in principle, with the opponent’s concerns.
According to the perception of the board, there is a recent tendency that dependent claims are less and less examined with respect to clarity in examination proceedings despite the fact that their full examination under Art 84 was not considered “unrealistic” in G 3/14, Reasons 32.
Such a full examination is even expressly encouraged in G 1/24, Reasons 20, highlighting “the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Art 84 “.
The justification for such leniency may be found in the assumption that the protection conferred by a granted patent is defined only by the independent claims. Where dependent claims are subsequently added to an independent claim in the course of opposition proceedings, opponents are ultimately faced with unclear claim features which, as in the present case, are deemed to have been examined for clarity, although de facto they have not been. Nonetheless, they cannot be objected to under Art 84 due to the conclusions of G 3/14.
The board deemed this result unsatisfactory, as an independent claim with unclear features leaves much to the readers’ imagination. In addition, unclear features tend to elude a sensible comparison with the respective prior art.
On top of that, since opponents may not anticipate with certainty which claim construction will be adopted by the board or a court in infringement proceedings, they may feel obliged to put forward different lines of argumentation for all of the different potential interpretations. Categorically barring opponents in such cases from raising clarity objections under Art 84 causes undue complexities in the discussion on novelty and inventive step, to the detriment not only of opponents but also of the ODs and the boards of appeal.
Inventive step
The board held that the formulation “the SPR returns the proxies” used in feature 12) fails to mention where the proxies are to be returned to. Furthermore, the unclear term “maximised proxy provider” is undefined and may not necessarily refer to a “proxy provider” where “a threshold had been hit”, as opposed to the proprietor’s contention. Moreover, the duration of the “cooldown period” is left undefined, too.
These unclear formulations of feature 12) do not allow to determine whether the technical effect alleged by the proprietor is indeed achieved.
As a consequence, notwithstanding clarity issues, the subject-matter of claim 1 of AR 7A does not involve an IS for these reasons and the reasons provided before in the decision.
Comments
Assessing the claims as to their clarity
That the independent claim has to be clear goes without saying.
It is nothing new under the sun that when an independent claim is deemed allowable, then dependent claims are rarely checked as to their clarity.
I can agree with the board, that when it comes to opposition and when an independent claim is limited by dependent claims as granted which are unclear, as such or in combination with the independent claim, clarity of the claim can become a problem. I cam across such problems myself during my active carrier. Under G 3/14, such claims cannot be queried as to their clarity.
In the present case the notion of “cooldown period” is mentioned in the description in § 15, 41, 52, 56 and 59, but at no place in the description the cooldown period has ever been defined. Combined with the other unclarities mentioned by the board, It allows to suppose that the description was not read before grant.
In some directorates, they are clear oral instructions, according to which Art 84, not being a ground of opposition, time can be saved by ignoring clarity of the claims and not reading the description.
G 1/24, has, or a least will hopefully put an end to this misbehaviour.
What the present board is suggesting between the lines is actually a revision of G 3/14. If EDs would take to heart their duty to verify the clarity of all the claims before grant, situations like the present one would not occur.
On the procedure
The present application and patent is classified in H04L 43/08 and H04L 41/50.
The ISR established by the EPO only mentioned 3 documents of category A. The IPER was positive and before grant, the then applicant simply added to the list of prior art the documents cited in the ISR.
The document leading to the revocation of the patent (D7=EP2863607) is classified in H04L29/06 and H04N21/46, and the search was allegedly carried out in H04L. It is thus surprising that this D7 was not found.
In the IPER, the CPA was the 1st document cited in the ISR (D1=KR 2011 0066657) but the other two documents were also mentioned.
The examiner in charge requested in the IPER that
- the independent claims had to be expressed in the two-part form in accordance with Rule 6.3(b) PCT.
- the relevant background art disclosed in documents D1 to D3 is not identified in the description, cf. Rule 5.1(a)(ii) PСТ.
The examiner in charge did manifestly not check the description before grant was decided, as, besides the listing of the documents of the ISR, the claims were left unamended. The examiner in charge and the ED have superbly ignored the Guidelines F-II, 4.3.
The present board is manifestly asking much too much when it requires that the dependent claims should be assessed as to their clarity, when it can be shown, like in the present case, that the description has not been read or consulted before grant.
The tendency of skipping the examination of dependent claims as to their clarity, might have increased recently, but it is far from being recent.
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