T 0591/23 - Sufficiency and the problem addressed by the patent

Key points

• " The appellant [opponent] referred to T 2284/15 [blog post], according to which an invention was only workable and sufficiently disclosed if it could be carried out such that it solved the technical problem posed in the patent (Reasons 19 to 26; confirmed in T 2729/18, Reasons 14.1).
• "The reasoning in T 2284/15 is based on the assertion that solving a technical problem is a fundamental characteristic of an "invention" and that Rule 42(1)(c) EPC therefore required that the description disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood.
• "The current Board doubts that this reasoning is in line with the established case law referred to under point 1.10.5 above and the understanding confirmed in G 1/19, Reasons 24 and 25, that an "invention" is defined by its technical character, whereas "non-inventions" lack such technical character. 
• "The question of whether the claimed subject-matter solves a technical problem is, on the other hand, part of the assessment whether an invention involves an inventive step. This requirement in Articles 52(1) and 56 EPC is not formulated as an inherent characteristic of an "invention" but as a separate requirement which must be met for an invention to be patentable. 
• "Furthermore, when inventive step is assessed, the objective technical problem is assessed (see G 1/19, Reasons 26, (iv)), which may be different from the subjective technical problem set out in the patent. Additionally, as explained in T 1473/19, Reasons 3.11.4, the "invention" referred to in Articles 54, 56 and 83 EPC (see T 92/21, Reasons 3.2, last sentence) and, with regard to claim amendments, the subject-matter under Article 123(2) EPC (see G 2/10, Reasons 4.5.2, last paragraph) refer to the claimed subject-matter only. "
• Note, Art. 53 is not included in the list, see also T 944/15. Note also that under Art. 56, the advantages demonstrated in the patent are relevant (G2/21). 
• "For these reasons, a technical problem which is - as in the case at hand - only set out in the patent specification is, as such, not part of the invention which must be sufficiently disclosed pursuant to Articles 83 and 100(b) EPC. 
• "It must also be stressed that Rule 42 EPC only governs the content of the description in a patent application. Hence, the requirement under Rule 42(1)(c) EPC that the description disclose the claimed invention in such terms that the technical problem and its solution can be understood cannot simply be subsumed under the requirement of sufficiency of disclosure under Articles 83 and 100(b) EPC."

EPO 

The link to the decision can be found after the jump.

T 1520/19 - The description must state a technical problem

Key points

•  In this case, the application does not comply with Rule 42(1)(c) EPC which requires that the description shall " disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art".
• The question is, what is the Article of the EPC that can be used as ground for refusal.
• The Board: " The factual situation can be summarized as follows: it is clear what the claimed invention is and how it can be implemented. However, the skilled person cannot understand from the application or its common knowledge whether the claimed invention solves a technical problem, and which one. The Examining Division refused the application pursuant to Articles 83 and 84 EPC. The Board does not find this to be correct in this case." 
• " According to the requirement of Article 83 EPC that the invention be sufficiently disclosed, the skilled person must be able to carry out the alleged invention. This is the case here for the reasons provided above" 
• " The requirement for the claims in Article 84 EPC is that they define the matter for which protection is sought and that they be clear and supported by the description. These requirements are satisfied: the claimed set of features defines the invention as the description does, so this definition of the invention is supported by the description. It is irrelevant in this regard whether the claimed invention solves a technical problem, or which one." 
• " According to T 26/81 (headnote, last sentence, and reasons 9, esp. second and last sentence), the requirement that the invention should be disclosed in such terms that the technical problem and its solution can be understood (now in Rule 42(1)(c) EPC) cannot be set up as a separate formal criterion independent of inventiveness." 
• " Established case law holds that if a technical effect is not present, i.e. if a technical problem is not solved, then inventive step is to be denied. This is also consistent with the statement in T 26/81 (reasons 9) that, if the subject-matter of of an independent claim, for which there is sufficient disclosure, is judged as being inventive, it must always be possible to derive a technical problem from the application." 
• " In the present case, the application relates to an allegedly improved [] fingerprint sensor [of a particular type]. This undoubtably has the character of an invention in the sense of Article 52 EPC. However, it does not solve any technical problem in respect of a standard [] fingerprint sensor [of that type], so inventive step is to be denied under Article 56 EPC." 

EPO 

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

T 0533/17 - Conceal own earlier plublication

 Key points

• This decision deals with the admissibility of D19 filed in the course of the appeal (Article 13(1) RPBA).
• “In the appellant's [opponent's] view, the poster D19 and the related documents D19a and D19b should be considered since the respondent [patentee] "apparently decided to conceal this earlier own publication". Such behaviour should not be rewarded by not admitting these documents.”
• The Board: “However, it is noted, first, that Rule 42(1)(b) EPC does not put a stringent obligation on the applicant to acknowledge prior art known to him already at the time of filing the application. Therefore, the failure to acknowledge D19 in the patent in suit is not a sufficient reason for admitting this document into the appeal proceedings. 
• Secondly, the appellant has not provided a convincing justification of why it was possible to find D19 when preparing for the oral proceedings relating to the patent originating from the divisional European patent application No. 12 004 053, but not when preparing the present case at the opposition stage. In the present case, the amendments to the main request were made as long ago as 2015, and auxiliary request 1 differs therefrom only in the deletion of claims. Consequently, the amendments cannot be considered to have triggered an additional search late in the appeal stage.”

T 0533/17

https://www.epo.org/law-practice/case-law-appeals/recent/t170533eu1.html

decision text omitted

T 3003/18 - Why the description must be adapted to the claims

Key points

• The EPO frequently requires that the description is amended to be consistent with the claims as granted or as amended in opposition. But why? E.g. the USPTO does not have such a requirement at all (and in fact, US clients may not always know beforehand how strictly this requirement is applied by the EPO).
• In this opposition appeal, the opponent “submitted that these amendments to the description of the patent as granted were not occasioned by a ground for opposition under Article 100 EPC, and that for this reason the amendments were contrary to Rule 80 EPC.”
• The Board: “compared with claim 1 as granted, present claim 1 has been amended to require that the fiber optic connector of the claimed fiber optic plug [is selected from three particular types of connectors], and that this amendment [of the claim] was occasioned by the grounds for opposition of lack of novelty and of inventive step raised under Article 100(a) EPC by the opponents during the proceedings.” The amendments of the description make the description consistent with the amended claim. 
• The Board: “Furthermore, according to Article 101 (3) EPC the amendments to the patent as granted shall meet the requirements of the EPC, and in particular the requirements of Article 84 EPC according to which the claims shall be supported by the description, together with the requirements of Rule 42 (1) (c) EPC according to which the description shall disclose the invention as claimed.” (emphasis added) 
• Rule 42(1)(c) prescribes that “the description shall ... disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art”.
• Article 84, second sentence specifies that “[The claims] shall be clear and concise and be supported by the description.”. The EPO publication of the EPC does not crosslink Article 84 to Rule 42 or vice versa (link). It's the third requirement of Article 84, second sentence, that matters here ('shall be supported by the description'). 
• Article 101(3) specifies that the "the patent and the invention to which it relates meet the requirements of the [EPC]", not that the “the amendments to the patent as granted shall meet the requirements of the EPC”, but perhaps the present Board tries to reflect the holding of G3/14 that “the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC”
• Upon first reading, the prescriptive part of Rule 42(1)(c) may appear to be the ‘in such terms’ phrase, but the Board leaves out the comma and recognizes an independent requirement that “according to [Rule 42(1)(c)] the description shall disclose the invention as claimed.”
• The 'supported by the description' requirement should of course not be confused with Article 83 EPC or Article 123(2) EPC. 

EPO T 3003/18 -  link



4. Description - Rule 80 and Articles 123(2) and 76(1) EPC

4.1 Amended pages 3 and 4 of the description marked "18:12" correspond to pages 3 and 4 of the description of the patent specification amended as follows:

i) the expressions "according to an embodiment of this invention", "of this invention", and "according to one embodiment of this invention" in the passages in column [0012] and [0014] referring to Fig. 1, 2 and 9 have been deleted; and

ii) the passage in paragraph [0016] reading "[...] depending upon the type of fiber optic connector. Although the fiber optic plug may include a variety of fiber optic connectors including MTRJ connectors, SC-DC connectors, Unicam**TM connectors, SC connectors, LC connectors, and the like, the fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but not of limitation" has been amended to read "[...] depending upon the type of fiber optic connector, the fiber optic connectors being MTRJ connectors, SC connectors, or LC connectors. The fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but falling outside of the scope of the claimed invention."

T 1462/14 - The skilled person vs a lawyer

Key points

• In this examination appeal, a feature is omitted in claim 1 of the main request compared to claim 1 as filed. The issue is whether this amendment complies with Art. 123(2) EPC.
• The Board: "The mere fact that the conditions defining the essentiality test, referred to in the guidelines for examination are met, is not conclusive."
• " Contrary to the general statement later incorporated into the Guidelines for Examination, the original English text of the decision [T331/87] did not state that meeting the three conditions would be sufficient for the amendment to be allowable; but rather that such an amendment may not violate Article 123(2) EPC" (italics in present decision; as a comment I refrain from discussing the meaning of the phrase "may not").
• The requirement of G 2/10 refers to the skilled person. 
• "Many of the appellant's arguments rely on the knowledge to be attributed to the skilled person, as opposed to that of a lawyer.  In the appellant's view, the skilled person would have recognised that the claimed circuit could be used in various environments.[...] Contrary to a lawyer's, the skilled person's understanding would not be limited to the literal content of a written disclosure." 
• The Board is not persuaded. "The Board notes that the skilled person is a notional entity that has been elaborated by the jurisprudence of the boards of appeal in order to serve as an objective reference when deciding on various issues under the EPC. The jurisprudence makes it clear that this notional person cannot be equated with any real person in the technical field of the invention. Neither an inventor, nor an opponent, nor an examiner, nor a member of a board of appeal, can be equated with the skilled person. This also applies to a representative, independently of any qualification."
• " The question to be answered is thus whether this fictional skilled person would have derived from the application as a whole that the disclosed circuit is not limited to the field of contactless communication devices." 
• " The Board thus has no doubt that the skilled person would have construed the invention as a voltage supplying circuit to be used in the context of contactless communication devices only." 
• As an obiter, the Boards add that  "[t]he Board finds further support for this view in the following observations. Rule 42 EPC specifies the requirements which apply to the patent description. A distinction is made therein between the technical field of the invention (Rule 42(1)(a) EPC), the disclosure of the invention (Rule 42(1)(c) EPC) and the possibility of incorporating examples when describing in detail at least one way of carrying out the invention (Rule 42(1)(e) EPC)."
• The Board then discusses that para. [0006] at issue is the disclosure of the invention under Rule 42(1)(c) rather than an example under Rule 42(1)(e) EPC. " The reading in accordance with Rule 42(1) EPC confirms thus that contactless communication devices define the field of the invention and not a possible example of its use."
• This raises the question of whether the "fictional skilled person"  reads a patent application with detailed knowledge of Rule 42 EPC.

T 1462/14 - link

Reasons for the Decision

Main request - Added subject-matter

1. Claim 1 of the main request specifies that the claimed circuit comprises first and second input terminals. The indication in original claim 1 according to which the circuit comprises an input "configured for coupling to an antenna and for receiving an alternating voltage from the antenna" has been deleted.

Essentiality test

5. The mere fact that the conditions defining the essentiality test, referred to in the guidelines for examination are met, is not conclusive.

6. The conditions defining the essentiality test were first defined in the context of case T 331/87, "Removal of a feature", OJ EPO 1991, 22. Contrary to the general statement later incorporated into the Guidelines for Examination, the original English text of the decision did not state that meeting the three conditions would be sufficient for the amendment to be allowable; but rather that such an amendment may not violate Article 123(2) EPC (see T 331/87 point 6, and also T 1852/13, points 2.2.3 and 2.2.7; Case Law of the Boards of appeal, Section II.E.1.4.4 c), 9th edition 2019).

7. As underlined in decision T 1852/13, the correct approach is the so-called "gold standard" as summarised in G 2/10, "Disclaimer/SCRIPPS", OJ EPC 2012, 376: "... any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed" (G 2/10, point 4.3).

Gold standard - the skilled person

8. The definition of the invention, contained in paragraphs [0006] and [0007] of the published application, albeit imperfect, confirms that the claimed invention is to be used with antennas.

9. The patent application as originally filed is, in effect, devoid of ambiguity as to the fact that the claimed circuit is to be used in the context of contactless communication devices, the communication being established by means of antennas.

10. The appellant's reference to paragraph [0014] of the published application, in particualar to the statement that "In some implementations, LC circuit 110 comprises antenna 112", is not persuasive. Indeed, it would be misleading to say that, in other implementations, there may be no antenna. The whole sentence reads "In some implementations, LC circuit 110 comprises antenna 112 (e.g., a coil) coupled in parallel to capacitor 114." What is optional is not the antenna, but the specific arrangement consisting of the antenna in parallel to the capacitor.

11. Many of the appellant's arguments rely on the knowledge to be attributed to the skilled person, as opposed to that of a lawyer.

12. In the appellant's view, the skilled person would have recognised that the claimed circuit could be used in various environments. It was thus not limited to the field of contactless communication devices. Similarly, the skilled person would have also recognised that the claimed circuit could be used with a signal already rectified or provided by a DC source. Contrary to a lawyer's, the skilled person's understanding would not be limited to the literal content of a written disclosure.

13. The Board concurs that literal support is not required under Article 123(2) EPC: what is relevant is the actual teaching conveyed by the original disclosure, i.e. the technical information that the skilled person, reading the original disclosure, would have derived from its content (description, claims and drawings) considered in its entirety. This approach might lead to the identification of subject-matter which has not been explicitly stated as such in the application as filed, but nevertheless derives directly and unambiguously from its content (cf. T 667/08, point 4.1.4). What the skilled person will derive from the content of an application or other written disclosure depends, however, on both his skills and inabilities.

14. The Board notes that the skilled person is a notional entity that has been elaborated by the jurisprudence of the boards of appeal in order to serve as an objective reference when deciding on various issues under the EPC. The jurisprudence makes it clear that this notional person cannot be equated with any real person in the technical field of the invention.

15. Neither an inventor, nor an opponent, nor an examiner, nor a member of a board of appeal, can be equated with the skilled person. This also applies to a representative, independently of any qualification.

16. The question to be answered is thus whether this fictional skilled person would have derived from the application as a whole that the disclosed circuit is not limited to the field of contactless communication devices. In other words, it should be established whether the reference to an antenna would have been construed by the skilled person as referring to a mere example of use of the claimed circuit.

17. As stressed above, the original application is consistent as to the fact that the claimed voltage supply circuit is to be used in association with an antenna input i.e. in the context of contactless communication devices. The wording of original claim 1 is corroborated by the statement in the description regarding the definition of the invention (cf. paragraphs [0006], [0007]). Nothing in the description suggests that some other applications might have been envisaged. In particular, paragraph [0014] does not suggest it.

18. The Board thus has no doubt that the skilled person would have construed the invention as a voltage supplying circuit to be used in the context of contactless communication devices only.

19. The Board finds further support for this view in the following observations.

20. Rule 42 EPC specifies the requirements which apply to the patent description. A distinction is made therein between the technical field of the invention (Rule 42(1)(a) EPC), the disclosure of the invention (Rule 42(1)(c) EPC) and the possibility of incorporating examples when describing in detail at least one way of carrying out the invention (Rule 42(1)(e) EPC).

21. In the present case, the subject-matter is defined in paragraph [0001] as relating "generally to electronic interfaces, and more particularly to contactless interfaces..." in accordance with Rule 42(1)(a) EPC. As underlined above, the disclosure of the invention is disclosed in paragraphs [0006] and [0007] in relation with an inductive antenna in accordance with Rule 42(1)(c) EPC. In accordance with Rule 42(1)(e) EPC, the detailed description of the invention incorporates examples of the contactless interface, switching regulator circuit and timer for switch control.

22. The reading in accordance with Rule 42(1) EPC confirms thus that contactless communication devices define the field of the invention and not a possible example of its use.

23. It follows that the deletion of the reference to the antenna leads to a non-allowable generalisation of the claimed subject-matter, contrary to Article 123(2) EPC.

Subsidiary set of claims - Added subject-matter

24. The independent claim of the auxiliary request differs from claim 1 of the main request in that the features considered to be missing in claim 1 of the main request have been reintroduced.

25. The Board is satisfied that overcomes the objection under Article 123(2) EPC.

26. Since the decision to refuse the application relied exclusively on this objection, the case is remitted to the Examining Division for further prosecution.

Order

For these reasons it is decided that:

The case is remitted to the department of first instance for further prosecution on the basis of the set of claims 1 to 3 according to the subsidiary set of claims filed on 30 September 2019.