T 0837/13 - Admissibility appeal and translated appellant name

EPO T 837/13 

For the decision, click here

Key point

• An inconsistent translation of the name of the Japanese appellant does not render the appeal inadmissible.
• Another point was validity of priority in view of the requirement of " same invention" . The Board finds that although for valid priority, the priority-claiming application should not solve a new problem different and not derivable from the problem posed in the priority document (T647/97), it is not required for the priority-claiming application to address all problems solved by the priority application. 

Reasons for the Decision

1. Admissibility of the appeal

The term "Kabushiki Kaisha" refers to a defined legal company status in Japanese law, and is commonly translated into English as "Company", "Corporation" or "Incorporated". In the notice of opposition, the appellant already used both names synonymously: whereas "Terumo Kabushiki Kaisha" was inserted on Form 2300.1, III, the very first page of the notice indicates "Terumo Corp. ./. EP 1 341 482 OrbusNeich Medical, Inc.". Thus, "Terumo Corporation" was simply used as a translation of "Terumo Kabushiki Kaisha" referring to the same (identical) legal entity, the appellant therefore having been party to the opposition proceedings, having been adversely affected by the decision under appeal and thus being entitled to appeal (Article 107 EPC).

With regard to the incorrect indication of the publication number of the attacked patent in the notice of appeal, it has to be noted that the further identifying data, i.e. the application number, the proprietor's name as well as the decision date are all consistent. In this context the Board notes that the date indicated by the appellant corresponds to the date printed on the decision itself, which is also the date from which the respective time limits are calculated. The alleged inconsistency in the date of the decision - brought forward by the respondent, who was of the opinion that the date of the announced order of the decision at the oral proceedings was decisive - is thus not present. Furthermore, the publication number identifying the patent only deviates in one digit from the correct one. From the consistent, redundant further information in the notice of appeal it is, however, immediately evident which decision was appealed, and the appeal is therefore admissible.

After the jump: the priority issue.

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5. Priority

5.1 Identical technical problem

It is uncontested that both the patent and the priority document aim at solving technical problems of the Palmaz-Schatz stent, i.e. a low stent-to-vessel ratio uniformity, comparative rigidity and a limited flexibility. The problem posed in the patent is thus identical to one of the problems posed in the priority document.

The appellant [opponent] argues however that the priority document solved a second problem which was not even addressed in the contested patent, namely to provide a wide range of design options.

The priority application derives this further problem with respect to the drawbacks of the Cordis coronary stent, which consists of a single piece of wire that is wrapped to form a continuous sine wave and helically wound along a longitudinal axis, with the ends of the wire being weld-terminated. Such a stent design does not have cylindrical elements and therefore is fundamentally different from the stent as claimed in the present main request. Due to the fundamentally different design, the omission of the further problem is justified.

Furthermore, there is no reason why the priority-claiming application would need to solve all problems raised in the priority document. In fact, the priority-claiming application may well relate to only one aspect of the disclosure in the priority document, not to its full disclosure. What may be objected to - see case T647/97 cited by the appellant - is a situation where the priority-claiming application solves a new problem different and not derivable from the problem posed in the priority document. In the present case there is however no doubt that the problem solved in the patent is the same as at least one of the problems posed in the priority document.

It is further noted that the stent of the present invention, which is typically made by removing various portions of the tube's wall (paragraph [0029] of the specification), does not suffer from the bemoaned restriction in design options. During the discussion on Article 123(2) EPC, the appellant complained that the wording of the claim of the main request still allowed a wide range of modifications, which indicates that the subject-matter claimed - although it is not explicitly stated - still solves the problem of providing a wide range of design options.

Thus, the appellant's attack on the validity of the priority based on an alleged non-identity of the problems posed fails.

5.2 Identity of the solution to the problem posed

As correctly pointed out by the respondent, the overall disclosure of the priority document has to be taken into account. Even if the wording of the two documents does not exactly match, the technical content of the claimed features - which is the decisive criterion - is disclosed. Figure 1 of the priority document shows the two first helices formed of S-shaped circumferential elements joined by connecting elements. Although it is true that second expandable helical segments are not explicitly mentioned, they are - for the person skilled in the art - clearly and unambiguously shown in Figure 1. Thus explicitly claiming these second expandable helical segments only puts in words what the skilled person clearly and unambiguously recognises in the figures (see Figures 1, 2a, 2b, 3, 4, 6, 10, 11) of the priority document. First and second circumferential elements as claimed are further individualised in Figure 2 (Nos. 2.01, 2.02), as are the cylindrical elements. This disclosure is also supported by the description, albeit using the terms circumferential element instead of cylindrical element, undulation element instead of first circumferential segments, and S-shaped element instead of second generally S-shaped circumferential segments.

With respect to a uniform wall thickness - considered essential by the appellant - the description of the priority document on page 11, second paragraph, provides support for this feature being optional ("The wall of the stent may have a substantially uniform thickness").

The stent is furthermore explicitly referred to as "the balloon expandable stent of the invention" ("Summary of the invention", page 4, first sentence), which is brought into the expanded / deformed state upon the application from the interior of the tubular member of a radially outwardly expanding force ("Summary of the invention", third sentence). Therefore, the alleged difference between balloon-expandability and "expandable from within by application of a radially outwardly expanding force" is not present.

Although not contested by the appellant, the Board notes that the endzones shown in some of the drawings are not at all mentioned in the description or in the claims, such that they are recognised by the skilled person as not essential to the invention disclosed in the priority document. Furthermore, the description states that the helices and the circumferential elements intersect at "one point", thereby indicating that also the H-shape of the connecting elements shown in the drawings is not an essential feature.

Consequently, the invention claimed is the same as the one disclosed in the priority document, and the priority is therefore validly claimed.