Key points
- In this case, the claim as granted contains an unclear feature. The feature is alleged to lack basis in the application as filed.
- The Board 3.5.06 in the headnote: “If a claim is ambiguous/unclear, all technically reasonable claim interpretations must be considered. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that added subject-matter is present”
- “The Board finds the above claim construction to be a reasonable one, but does not exclude that the interpretation provided by the appellant may also be a reasonable one, in fact the Board is of the opinion that the amendments themselves are not clear and may be interpreted in different ways. This lack of clarity, while it cannot be invoked as a ground for opposition to the patent as granted, causes the subject-matter of the claim to be ambiguously defined. In such circumstances, in the interest of legal certainty, the Board must consider all technically reasonable claim interpretations. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that a breach of Article 100(c) EPC has occurred. This is the case here.”
- I will discuss in another post recent decision T 0195/20 wherein the same Board uses a completely different approach.
https://www.epo.org/law-practice/case-law-appeals/recent/t161791eu1.html
11. The Board finds the above claim construction to be a reasonable one, but does not exclude that the interpretation provided by the appellant may also be a reasonable one, in fact the Board is of the opinion that the amendments themselves are not clear and may be interpreted in different ways. This lack of clarity, while it cannot be invoked as a ground for opposition to the patent as granted, causes the subject-matter of the claim to be ambiguously defined. In such circumstances, in the interest of legal certainty, the Board must consider all technically reasonable claim interpretations. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that a breach of Article 100(c) EPC has occurred. This is the case here.
Peter, I'm appalled. Thank goodness there is at the EPO no doctrine of binding precedent, because for me this Decision is a stinker.
ReplyDeleteThere are two ways to understand the term "ambiguous". Does it mean "unclear" or does it mean "having two possible meanings, both equally likely, with no way to tell which of the two is the correct one"? The patents courts in the USA have lots of jurisprudence on this question. Nevertheless, the present EPO Board choses not to say which of the two meanings it follows, and I can't derive from its written Decision which it had in mind.
That a string of words can enjoy more than one plausible meaning is a commonplace, the rule rather than the exception. So no wonder the writers of the EPC excluded Art 84 as a ground of revocation. Amending a claim before the ED is commonplace, routine, normal. This Board has invented a way to revoke every such claim it doesn't like, simply by discovering in it more than one plausible meaning. Which very often isn't hard to do.
The present crusade against "trivial" patents might be going a bit too far, going in particular deep into the notorious Bermuda Triangle with its three apices of EPC Art 54, 84 and 123(2). Amend to satisfy Art 54 and you end up offending Art 84, or Art 123(2) or both, and the application then disappears. Prosecution amendments hve to be at a level of "beyond doubt" that they are clean on Art 123(2). No such "beyond doubt" standard for satisfying Art 84. Until now, that is. This Board wants to impose on those Applicants that amend after fling the same rigor under Art 84 as that already imposed under Art 123(2). I suppose they think that because Art 84 is not a ground of revocation, the standard pre-grant should be at least as tough as the "beyond doubt" standard under Art 123(2). After all, shrugs the EPO in its Ivory Tower, Applicants have only themselves to blame. If only they would draft their patent applications at a higher level of quality, these dificulties would not arise.
Two wrongs don't make a right. Extending the "beyond doubt" standard to the second apex of the Bermuda Triangle is not delivering a "fair" scope of protection to inventors but instead tipping the scales too far in the direction of the elusive "legal certainty". The better way would be to ease the present "beyond doubt" standard for both Art 123(2) and 84. After all, when the EPO was written, it was thought that judges, post-issue, would be able to cope with claims less than 100% clear ie possessing ambiguity to some extent. No claim ever issued had, in the eyes of a zealous advocate for revocation, zero percent ambiguity and it is high time that high level deciders at the EPO acknowledged this reality.