T 1473/19 - (I) Killed by a lacking comma

Key points

• The currently prevailing view is that the EPO applies Article 69 only in the context of Article 123(3).
•  In the case at hand, the Board has to decide on whether the following feature has basis under Article 123(2): "said body having a free inner bore holding a capacitive data link". The opponent/appellant argues that this feature means that the body has a free inner bore and this bore holds a capacitive data link (in which case the feature lacks basis). Thus interpretation is referred to as interpretation (a).
  The patentee argues that it means that "the body has a free inner bore and, additionally, the body holds a capacitive data link" (interpretation (b)). So the question is, what is holding the capacitive data liking, the inner bore or the body?
• The Board: "Grammatically, the contentious expression is constructed as a series of noun groups ("said body", "a free inner bore", "a capacitive data link") separated by present participles ("having", "holding"). In the absence of any comma and any coordinating conjunction separating the various terms, the person skilled in the art, on a plain reading of this expression, would simply consider the subject governing each present participle to be the noun group immediately preceding it, following the usual rule that modifiers are generally placed next to the word they modify. In this way, the person skilled in the art would arrive at the construction that the body has a free inner bore and that this bore holds a capacitive data link: hence, interpretation (a) defended by the appellant [opponent]." 
• " Interpretation (a) is technically sensible and plausible. " 
• " Referring to Article 69 EPC, the respondent [patentee] argued that the description had to be used to interpret the claims. Reading claim 1 in the context of the description, in which a free inner bore in the rotary joint body is only disclosed for accommodating a patient and in which it is the body which holds a capacitive data link (paragraph [0024]), the person skilled in the art would, according to the respondent, necessarily reject interpretation (a) and instead adopt interpretation (b)." 
• This raises the question if Article 69 EPC can be used under Article 123(2) EPC.
• The Board, after an extensive legal analysis, concludes that  "the description and the drawings should indeed be taken into account when interpreting claim 1".
• I will summarize the Board's legal analysis in a separate post.
• However, this legal analysis is obiter because the Board "disagrees with the [patentee's] conclusion that doing so would lead to rejecting interpretation (a) [invoked by the opponent] and adopting interpretation (b) instead". 
• "The mere fact that the contested claim feature as understood in accordance with interpretation (a) is not disclosed in the description or drawings does not speak against this interpretation. Neither the description nor the drawings exclude the presence of a (further) capacitive data link positioned in accordance with interpretation (a)." 
• "Moreover, there is no principle of claim interpretation according to which a claim should be interpreted in a manner which makes it compliant with Article 123(2) EPC. 
• "Furthermore, contrary to the description and the drawings, the application as filed is not referred to in Article 69(1), second sentence, EPC either." 
• As a comment, this could be an indication that Article 69 is not directed to the assessment under Article 123(2).
• "The mere mention, by way of example, of an embodiment which comprises a capacitive data link not arranged in accordance with interpretation (a) is not a sufficient reason to apply interpretation (b) instead of interpretation (a)." 
• "It is common ground that the description as filed does not disclose a rotating joint body having a free inner bore, wherein this bore holds a capacitive data link." 
• "Consequently, claim 1 as interpreted by the Board in accordance with interpretation (a) presents the person skilled in the art with new information which extends beyond the content of the application as filed. The requirement of Article 123(2) EPC is therefore not met." 
  
  
• The patented tries a correction of error under Rule 139 to recite in the claim: "said body having a free inner bore, said body holding a capacitive data link" 
  
• "Due to the additional comma and noun group "said body", the corrected expression contains two distinct participial phrases which both describe the body. It is common ground that the person skilled in the art would understand this [corrected] expression in line with interpretation (b) above."
• However, the Board concludes that Rule 139 EPC is not applicable to correct claim 1 of the patent as granted. The Board's reasoning seems convoluted on this point, but the Board's conclusion seems correct because the scope of protection of the patent as granted is defined by the Decision to grant (in turn referring to the Druckexemplar), which is issued by the EPO and which could be corrected under Rule 140 except for G 1/10 excluding this; Rule 139, on the other hand, applies only to documents filed with the EPO, i.e. submitted by a party, and hence not to decisions of the EPO, such as a Decision to grant. 
• I note that clerical errors in the granted claims can be corrected in opposition, together with a substantive amendment, see e.g. T 1111/19. I note that upon further consideration, such a correction might not be a correction under Rule 139 stricto sensu (indeed, G 1/10 r.13 does not refer to R.139). 
• As the present Board notes:  "The Enlarged Board also stated in G 1/10, Reasons 13, that it is always open to a patent proprietor to seek to amend its patent during opposition proceedings and that such an amendment could remove a perceived error. However, it was also stressed by the Enlarged Board that such an amendment must satisfy all the legal requirements for amendments, including those of Article 123 EPC."
• The amendment is also submitted as an auxiliary request. "By bringing the disputed expression of claim 1 into line with interpretation (b), the limitation defined in claim 1 as granted that the free inner bore holds a capacitive link, as interpreted by the Board as discussed in section 4. above, has been removed. The protection conferred by claim 1 as granted has thus been extended in all of auxiliary requests 1 to 3. These auxiliary requests therefore do not meet the requirement of Article 123(3) EPC."
• The patent is revoked.

EPO 

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/t191473eu1.html

4. Main request - added subject-matter (Article 123(2) EPC)

4.1 The parties submitted the following two different interpretations of the expression in claim 1 as granted "said body having a free inner bore holding a capacitive data link":

(a) the body has a free inner bore and this bore holds a capacitive data link, as asserted by the appellant, and

(b) the body has a free inner bore and, additionally, the body holds a capacitive data link, as asserted by the respondent and ultimately accepted by the Opposition Division after it resorted to the description (point 4.1.1 of the decision under appeal).

4.2 Grammatically, the contentious expression is constructed as a series of noun groups ("said body", "a free inner bore", "a capacitive data link") separated by present participles ("having", "holding"). In the absence of any comma and any coordinating conjunction separating the various terms, the person skilled in the art, on a plain reading of this expression, would simply consider the subject governing each present participle to be the noun group immediately preceding it, following the usual rule that modifiers are generally placed next to the word they modify. In this way, the person skilled in the art would arrive at the construction that the body has a free inner bore and that this bore holds a capacitive data link: hence, interpretation (a) defended by the appellant.

4.3 Interpretation (a) is technically sensible and plausible. A "free inner bore" formed in a body, in the context of a rotary joint as defined in claim 1, is not limited to an empty space or hole, but includes the physical surface that surrounds and defines the hole. It is therefore not illogical that a bore may "hold" a component via the interaction between this component and this physical surface, even if this surface is at the same time an inner surface of the body in which the bore is formed. Thus, contrary to the respondent's argument, there is no contradiction in the fact that the free inner bore may "hold" a capacitive data link. This was also acknowledged by the Opposition Division in the decision under appeal (last paragraph of point 4.1.1).

Hence, contrary to the respondent's argument, the person skilled in the art faced with this expression would have no reason to depart from interpretation (a) for technical reasons.

4.4 Referring to Article 69 EPC, the respondent argued that the description had to be used to interpret the claims. Reading claim 1 in the context of the description, in which a free inner bore in the rotary joint body is only disclosed for accommodating a patient and in which it is the body which holds a capacitive data link (paragraph [0024]), the person skilled in the art would, according to the respondent, necessarily reject interpretation (a) and instead adopt interpretation (b).

While it follows from the considerations in section 3. above that the description and the drawings should indeed be taken into account when interpreting claim 1, the Board disagrees with the respondent's conclusion that doing so would lead to rejecting interpretation (a) and adopting interpretation (b) instead.

The mere fact that the contested claim feature as understood in accordance with interpretation (a) is not disclosed in the description or drawings does not speak against this interpretation. Neither the description nor the drawings exclude the presence of a (further) capacitive data link positioned in accordance with interpretation (a). Moreover, there is no principle of claim interpretation according to which a claim should be interpreted in a manner which makes it compliant with Article 123(2) EPC. Furthermore, contrary to the description and the drawings, the application as filed is not referred to in Article 69(1), second sentence, EPC either.

The description and the drawings do not contain anything which makes interpretation (a) appear technically nonsensical or incompatible with the claimed invention. The description does not contain a definition of the contested feature either. The mere mention, by way of example, of an embodiment which comprises a capacitive data link not arranged in accordance with interpretation (a) is not a sufficient reason to apply interpretation (b) instead of interpretation (a).

4.5 The situation in T 131/15, to which the respondent referred, was different. In that case, the dispute concerned an expression in a granted claim which, taken literally and in isolation, would have had the effect of excluding all of the disclosed embodiments from the extent of protection (Reasons 5.10 to 5.12). This is not the case in the present proceedings.

4.6 It is common ground that the description as filed does not disclose a rotating joint body having a free inner bore, wherein this bore holds a capacitive data link.

Consequently, claim 1 as interpreted by the Board in accordance with interpretation (a) presents the person skilled in the art with new information which extends beyond the content of the application as filed. The requirement of Article 123(2) EPC is therefore not met.

5. Request for correction under Rule 139 EPC

5.1 According to the respondent's request for correction under Rule 139 EPC, claim 1 as granted should be corrected by replacing the contentious expression above with the corrected expression "said body having a free inner bore, said body holding a capacitive data link" (amendments highlighted by the Board).

Due to the additional comma and noun group "said body", the corrected expression contains two distinct participial phrases which both describe the body. It is common ground that the person skilled in the art would understand this expression in line with interpretation (b) above.

5.2 The Board disagrees with the respondent that Rule 139 EPC is applicable to correct claim 1 of the patent as granted.

Rule 139 EPC only allows correction of linguistic errors, errors of transcription and mistakes "in any document filed with the European Patent Office".

As noted by the Opposition Division (point 3.1 of the decision under appeal), the addition of the expression "having a free inner bore" in claim 1, i.e. the amendment that the request for correction aims to correct, was made by the Examining Division in the text intended for grant sent with the communication under Rule 71(3) EPC (see point 10.1 of annexed Form 2906). The respondent approved the proposed text including this amendment by filing the translations of the claims and paying the prescribed fee. However, this approval does not mean that the amendment was submitted by the respondent "in [a] document filed with the European Patent Office" (see T 506/16, Reasons 5, second paragraph).

This requirement for a correction under Rule 139 EPC is therefore not met. Accordingly, the request for correction must be refused for this reason alone.

5.3 The Board also refers in this regard to G 1/10, Reasons 9, according to which a mistake in a document filed by an applicant can be corrected under Rule 139 EPC "before grant". Rule 139 EPC therefore cannot be applied to a granted patent (T 2864/18, Reasons 4). Furthermore, the Enlarged Board in G 1/10, Reasons 11, stated that if, given the opportunity to check the patent text before approving it, an applicant does not draw any errors to the attention of the examining division and thus ensure its approval is limited to the correct text, then the responsibility for any errors remaining in that text after grant should be its alone, whether the error was made (or introduced) by it or by the examining division. Although made in the context of Rule 140 EPC, this statement is also relevant for the application of Rule 139 EPC (see T 435/16, Reasons 48 to 50).

5.4 The Enlarged Board also stated in G 1/10, Reasons 13, that it is always open to a patent proprietor to seek to amend its patent during opposition proceedings and that such an amendment could remove a perceived error. However, it was also stressed by the Enlarged Board that such an amendment must satisfy all the legal requirements for amendments, including those of Article 123 EPC.

6. Auxiliary requests 1 to 3 - extension of the extent of protection (Article 123(3) EPC)

6.1 Claim 1 of auxiliary request 1 is identical to claim 1 as granted, but with the correction requested in the request for correction discussed above. In auxiliary requests 2 and 3, the disputed expression in claim 1 is amended to include a first comma after the first noun group "said body" and a second comma before the participle "holding". It is common ground that the person skilled in the art unambiguously understands the amended expressions in line with interpretation (b) above.

6.2 By bringing the disputed expression of claim 1 into line with interpretation (b), the limitation defined in claim 1 as granted that the free inner bore holds a capacitive link, as interpreted by the Board as discussed in section 4. above, has been removed. The protection conferred by claim 1 as granted has thus been extended in all of auxiliary requests 1 to 3. These auxiliary requests therefore do not meet the requirement of Article 123(3) EPC.

7. It follows from the above considerations that none of the respondent's claim requests is allowable.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.