T 0910/18 - Grant after 20 years

Key points

• The PCT application was filed in 2001, request for entry 2003, first communication Examining Division 2004, 2nd communication in 2011, summons in 2017, appeal filed end 2017, statement of grounds in 2018, summons oral proceedings Board 2022. The Board orders the grant of the patent
• "Despite the expiration of the 20 year patent term, a patent can still be granted, as there may exist legal rights derived from it that would be affected by the grant of the patent, such as provisional protection rights conferred by Article 67 EPC upon the publication of the application." 
• The Board's further reasoning on inventive step is actually interesting, though nothing out of the ordinary. 
• In other words, I don't see any special circumstances in the decision (or in the file) justifying a 20-year grant procedure.
• "  In the decision under appeal, the examining division concluded that claim 1 of the then Main Request did not involve an inventive step in view of documents D2 and D1." 
• " [T]he board considers thus that D2 represents a rather remote starting point for the skilled person, who would have to carry out extensive modifications to its teaching in order to arrive at the claimed invention. The board takes the view that such modifications would change significantly the teaching of D2, for example transforming the described apparatus from a manually operated device to an automatically operated one. In the board's view, such modifications would go beyond what can be considered to to obvious for the skilled person." 
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• " Even if it were accepted - for the sake of the discussion - that the skilled person would have wished to automate the apparatus of D2 and would have added features for automatically transporting the certified papers within the apparatus, detecting the emitted light and determining the genuineness of the paper based on this detection, there is nothing in D2 or in the skilled person's common general knowledge that would incite the skilled person to implement the triggering of the activation of the alternating-current electromagnetic field according to claim 1 of the Main Request." 
• " The examining division considered that it would have been obvious for the skilled person to conceive the idea to limit the application of the alternating-current electromagnetic field because "it [was] generally known to activate components in automated settings only when they are needed (e.g. energy savings, lifetime of components (MTBF))" (see point 19.5 of the Reasons of the impugned decision)." 
• " The board notes that in the present case, the limitation of the application of the alternating-current electromagnetic field is related neither to energy savings nor to the lifetime of components of the apparatus."  
• I understand that the Board is applying the rule of the PSA that the distinguishing feature must be obvious for solving the particular objective technical problem. This may be contrasted with the KSR approach of the USPTO where any motivation to combine is sufficient.
• " According to the board's view and taking into account the context of D2 described above, the skilled person would not have considered the idea to limit the application of the electromagnetic field without hindsight." 
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EPO T 0910/18 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t180910eu1.html

7. Procedural aspects

7.1 The application was filed in August 2001 and the 20 years of the patent term expired in August 2021 (Article 63(1) EPC 1973). The appellant is aware of this and has explicitly stated that it wanted to pursue the appeal.

7.2 Despite the expiration of the 20 year patent term, a patent can still be granted, as there may exist legal rights derived from it that would be affected by the grant of the patent, such as provisional protection rights conferred by Article 67 EPC upon the publication of the application.

7.3 In this respect the board also refers to decision T 36/19, which states (point 2 of the Reasons):

The filing date of the present (divisional) application is 28 January 1999. As the term of a European patent amounts to 20 years from the date of filing (Article 63(1) EPC), a patent which may eventually be granted for the present application will have already expired. The Board nevertheless considers that the appellant still has a legitimate interest in the continuation of the grant and the appeal proceedings. Since a European patent application already confers rights after its publication pursuant to Article 67 EPC, a grant decision by the European Patent Office, even if taken only after expiry of the patent term, may become relevant for the determination of these rights.