T 0131/15 - Scope of protection

Key points

• This opposition appeal is about whether amended claims involve an extension of protection (Article 123(3) EPC).
• " Thus, in the [amended claims], the two light paths are offset by a small angle, and if the "opposite direction" defined in claim 1 of the granted patent were interpreted in a precise geometrical sense (i.e. strictly antiparallel) [i.e. without any offset], there could be no doubt that claim 1 of the present request would introduce embodiments not falling within the claim. " 
• "Adopting the narrow definition of "opposite direction", as advocated by the opponent, would therefore have the effect that none of the disclosed embodiments [of the description] would fall within the scope of protection of the claim." 
• However, " in determining whether the requirements of Article 123(3) EPC 1973 are met, it is not sufficient to look only at the claims in isolation" (citing G2/88)
• " In the present case, a definition of "in the opposite direction" can be derived from the description and drawings (see paragraph [0021]), according to which this expression means that the transmitted and received beams follow substantially the same path, with a small deviation to take account of the physical sizes of the transmitter and receiver. " 
• " Since this definition has been incorporated into [amended claim 1], it follows that the scope of protection conferred by the claim has not been extended, and the requirements of Article 123(3) EPC 1973 are met." 
• A further point is whether to remit the case. The Board does not remit the case. " Given the age of the case (filing date: 13 December 2002  [decision 10.10.2019]) and the requirement of legal certainty, both for the parties and the public, a further delay would not be appropriate." 

Note 29.03.2021: T 1127/16 stated that: “such a comprehensive and intricate test as suggested in T 131/15 could arguably place an undue burden on third parties when trying to establish the "true" (i.e. intended) scope of protection conferred by a granted patent,”

EPO T 0131/15 -  link

EPO  Headnote

Where an expression in a granted claim, taken literally and in isolation, would have the effect of excluding all of the disclosed embodiments from the scope of protection, but where a definition of the expression may be derived from the patent itself which would locate (at least some of) the disclosed embodiments within the ambit of the claim, and provided this definition is not manifestly unreasonable, having regard to the normal meaning of the words used in the expression, then in judging compliance with the requirements of Article 123(3) EPC, the scope of protection should normally be considered to include at least that which would fall within the terms of the claim understood according to this definition.

5. Article 123(3) EPC 1973

5.1 Article 123(3) EPC 1973 states the following:

"The claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred."

5.2 Claim 1 of the granted patent comprises the following feature (emphasis added by the Board):

"the first receiver (6;7) being arranged to receive light from the first transmitter (4) which has been reflected by the banknote and which is also travelling in said sensing plane (P2), but in the opposite direction from the light emitted by the transmitter (4)."

5.3 Claim 1 of the present request defines the following (emphasis added by the Board):

"the first optical receiver (6; 7) being adjacent the first optical transmitter (4)"; and

"the first receiver (6; 7) being arranged to receive light from the first transmitter (4) which has been reflected by the banknote and which is also travelling in said sensing plane (P2) in substantially the same path, but in the opposite direction from the light emitted by the transmitter (4), the small path difference being as a result of the fact that the physical sizes of the transmitter and receivers cause a small angle to be subtended between the light paths at the banknote."

5.4 Thus, in the present request, the two light paths are offset by a small angle, and if the "opposite direction" defined in claim 1 of the granted patent were interpreted in a precise geometrical sense (i.e. strictly antiparallel), there could be no doubt that claim 1 of the present request would introduce embodiments not falling within the claim. This would also be the case even if the scope of the granted claim were considered to extend to, but not further than, the sort of small deviations arising, for example, from manufacturing tolerances.

5.5 However, in determining whether the requirements of Article 123(3) EPC 1973 are met, it is not sufficient to look only at the claims in isolation. The approach to be followed was set out by the Enlarged Board as follows:

"When considering whether a proposed amendment to the claims is such as to extend the protection conferred, a first step must be to determine the extent of protection which is conferred by the patent before the amendment: it is necessary to be quite clear as to what is the protection conferred by the patent without amendment, before one can decide whether a proposed amendment is such as to extend it.
"Determination of the extent of protection has to be carried out in accordance with Article 69(1) EPC and its Protocol ...
"The object of the Protocol is clearly to avoid too much emphasis on the literal wording of the claims when considered in isolation from the remainder of the text of the patent in which they appear; and also to avoid too much emphasis upon the general inventive concept disclosed in the text of the patent as compared to the relevant prior art, without sufficient regard also to the wording of the claims as a means of definition.
"This approach to interpretation of claims must be adopted by the EPO when determining the protection conferred for the purpose of Article 123(3) EPC." (See G 2/88, OJ EPO 1990, 93, point 4).

5.6 Article 69(1) EPC 1973 states the following:

"The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims."

5.7 Article 1 of the Protocol on the Interpretation of Article 69 EPC 1973 reads as follows:

"Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties."

5.8 In the embodiment of Figs. 2 and 3, the relationship between the transmitter 4 and the receivers 6, 7 is described in paragraph [0021] of the patent as follows:

[...]

5.10 Adopting the narrow definition of "opposite direction", as advocated by the opponent, would therefore have the effect that none of the disclosed embodiments would fall within the scope of protection of the claim.

5.11 Where an expression in a granted claim, taken literally and in isolation, would have the effect of excluding all of the disclosed embodiments from the scope of protection, but where a definition of the expression may be derived from the patent itself which would locate (at least some of) the disclosed embodiments within the ambit of the claim, and provided this definition is not manifestly unreasonable, having regard to the normal meaning of the words used in the expression, then in judging compliance with the requirements of Article 123(3) EPC, the scope of protection should normally be considered to include at least that which would fall within the terms of the claim understood according to this definition.

5.12 In the present case, a definition of "in the opposite direction" can be derived from the description and drawings (see paragraph [0021]), according to which this expression means that the transmitted and received beams follow substantially the same path, with a small deviation to take account of the physical sizes of the transmitter and receiver. In the view of the Board, this definition falls within the spectrum of what could be reasonably be understood by "in the opposite direction". Hence, in judging compliance with the requirements of Article 123(3) EPC, the protection conferred by claim 1 as granted must be considered to include at least embodiments which would fall within the terms of the claim as understood according to this definition.

5.13 Since this definition has been incorporated into claim 1 of the present request, it follows that the scope of protection conferred by the claim has not been extended, and the requirements of Article 123(3) EPC 1973 are met.

6. The Question of Remittal

6.1 The opponent requested that, in the case that the decision is overturned, the case be remitted to the Opposition Division for a decision on the grounds raised in the notice of opposition but not covered by the contested decision. The proprietor was against such a measure.

6.2 For the following reasons, the Board decided not to allow the opponent's request:

(a) Remittal to the Opposition Division would inevitably involve a further delay at the department of first instance, and quite possibly a further appeal. Given the age of the case (filing date: 13 December 2002) and the requirement of legal certainty, both for the parties and the public, a further delay would not be appropriate.

(b) Although the the Opposition Division did not find it necessary to deal with novelty and inventive step in the contested decision, in the annex to the summons to oral proceedings (dated 22 July 2014) it set out its views on these issues for both the main and auxiliary requests then on file, including on the feature (the sensing plane being tilted with respect to the normal to the banknote) which the Board considers to be decisive for the assessment of novelty and inventive step (for the reasons set out below under points 7 and 8).

(c) Nothing has occurred during the appeal procedure which has altered the fundamental question in relation to the assessment of novelty and inventive step, which remains whether the feature mentioned above under sub-point (b) is disclosed in, or obvious from, the available prior art.

6.3 The Board therefore chose to use its discretion under Article 111(1) EPC 1973 to decide on novelty and inventive step also.

[...]

10. In the light of the foregoing, the patent may be maintained as amended according to auxiliary request 7 pursuant to Article 101(3)(a) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain the patent in the following version: