T 1261/21 - Selections from lists

Key points

• Claim 1 of auxiliary request 26 is based on claim 1 of the application as filed; with three features selected from three lists.
• "in claim 1, the deodorisation time and the deodorisation temperature are limited based on a disclosure of converging numerical ranges or converging elements of the same feature (also named "converging alternatives" in some board decisions) in claims 3 and 4 of the application as filed, and the triglyceride composition is limited based on a list of non-converging alternatives in claim 10 of the application as filed."
• "The "gold standard" is to be applied universally to assess whether amendments to a claim comply with Article 123(2) EPC (G 2/10). In this case, the criteria specified in T 1621/16 are helpful."
• "T 1621/16 contains the following ruling (see Catchword):
  "1) When fall-back positions for a feature are described in terms of a list of converging alternatives, the choice of a more or less preferred element from such a list should not be treated as an arbitrary selection, because this choice does not lead to a singling out of an invention from among a plurality of distinct options, but simply to a subject-matter based on a more or less restricted version of said feature.
  2) A claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if:
  - the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and
  - the application as filed includes a pointer to the combination of features resulting from the multiple selections."
• "The board concurs with the view expressed in T 1937/17 that the first criterion of point 2) of the Catchword of T 1621/16 ("the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution") should not be considered a criterion in establishing whether there is a direct and unambiguous disclosure for the combination of features resulting from a multiple selection"
• "Otherwise, the board shares the conclusion reached in T 1621/16 that the choice of a more or less preferred element from a list of converging elements (or alternatives) should not be treated as an arbitrary selection because this choice does not lead to a "singling out" (see point 1 of the Catchword of T 1621/16); and that in general a pointer to the combination of features resulting from multiple selections is necessary to meet the requirements of Article 123(2) EPC"
• "the assessment of situations like the one underlying T 1621/16 should not be treated in the same way as amendments resulting from selections from two or more lists of non-converging alternatives ""
• "the board prefers the term "converging elements" over "converging alternatives". To the board, "alternatives" seems to imply that there are real alternatives having no overlap with each other. However, where the broadest feature, such as a numerical range, simply converges towards the narrowest feature, fully lying within the broadest feature and not merely partly overlapping it or lying beside it, as in the case at hand, it seems misleading to use the term "alternatives". Thus, in the case at hand, the board prefers the term "converging elements"."
• "the mere fact that features are described in terms of lists of more or less converging elements (converging alternatives) does not give the proprietor carte blanche to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed and that any amendment is only allowable under Article 123(2) EPC if it complies with the gold standard. This is particularly relevant where an application as filed provides a large reservoir of options and alternatives to be selected and combined to create a vast number of embodiments as in the case underlying T 1133/21"
• "the assessment of compliance with Article 123(2) EPC in situations like the present one should be case specific, as also stated by the opposition division (see page 26, third paragraph of the decision under appeal). Factors playing a role in this assessment are, inter alia, the number of elements (alternatives) disclosed in the application; the length, convergence and any preference in the lists of enumerated features; and the presence of examples pointing to a combination of features (see point 2.16 of T 1133/21)." 
• "A pointer is an (implicit or explicit) indication or hint towards the combination of features in question. The pointer needs to be suited to demonstrate that the claimed combination of features is envisaged in the application as filed. Such information must be provided in the application as filed. Typically, it consists of an example or embodiment disclosed in the application which demonstrates that the combination of features was already envisaged in the application as filed, e.g. by the fact that the new combination of features falls within an example. The existence of a pointer must exclude that arbitrary new combinations of features are created which are merely conceptually comprised in the application as filed."
  
• Example 1 is a sufficient pointer in the case at hand.
• "The board does not take issue with the fact that these experiments of example 1 not only fall within the scope of claim 1 but also within an even further restricted scope of more preferred options."

EPO 

The link to the decision and (an extract of) the decision text are provided after the jump.

T 1654/22 - Counting to two with the Boards

Key points

• If a claim is novel by involving two selections from two lists, how many distinguishing features does it have?
• D2, claim 36 teaches a preparation method with as one component, "a local anaesthetic selected from the group consisting of amide and ester type local anaesthetics or a combination thereof
  
• The Board: "Mepivacaine is explicitly disclosed in the list of suitable anaesthetics recited in [the description of D2]. An embodiment of the method of claim 36 wherein the local anaesthetic is mepivacaine thus results from a single selection in D2 and is part of the direct and unambiguous disclosure of D2. " The Board refers to this embodiment as embodiment a).
• "The opposition division concluded that the subject-matter of the main request and auxiliary requests 1-8 was anticipated by the method of claim 36 of D2 as applied to mepivacaine, and thus clearly considered this embodiment a) to belong to the state of the art under Article 54(2) EPC. Nonetheless, the opposition division disregarded the same embodiment a) as starting point for the assessment of inventive step, for lack of an example or pointer to this embodiment. The appellant - proprietor also submits that embodiment a) is not a suitable starting point for the assessment of inventive step."
• "The Board does not concur with these positions.

  There is no requirement in the case law that an embodiment of the state of the art must be exemplified for it to be considered in the assessment of inventive step. There is likewise no requirement that the prior art contains any pointer, suggestion or incentive to select a particular embodiment for further development for this embodiment to qualify as a starting point in the problem solution approach."

• "The mere fact that the use of mepivacaine is not exemplified does not mean either that D2 is speculative or not enabled in this respect. This is because D2 discloses examples showing the successful use of other anaesthetics, namely bupivacaine, tetracaine and, especially, the closely related lidocaine, whose physicochemical and pharmaceutical properties are very similar to those of mepivacaine"

• "For these reasons, the above embodiment a), i.e. the method of claim 36 of D2 as applied to mepivacaine, is taken as starting point for the assessment of inventive step."

• The Board hence considers the embodiment a) to be disclosed and finds that claim 1 add two further distinguishing features. However, these features are deemed to be obvious.

• The answer to the question at the beginning of this post is, therefore, one distinguishing feature.

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0928/19 - Remitted for search in patent year 17

Key points

• Filed as a direct European application in 2007. Search report in 2008. First Communication in 2010. Refusal in 2018. Appeal decision issued in writing in 2024.
• "The Board therefore finds the claimed invention not to be obvious when starting from D1. "
• "The Board notes that document D1, relied upon by the Examining Division, is a document mainly directed to a localised load redistribution, which is conceptually the opposite of the claimed invention. Also, and perhaps more importantly, although front-end/back-end server architectures were well known in the art at the filing date of the application, the decision does not refer to any such document. More relevant prior art may therefore exist."
• "Under these circumstances the Board decides to remit the case to the Examining Division for further prosecution (Article 111(1) EPC), possibly including an additional search."

EPO 

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

R 0012/22 - Why we must announce accompanying persons in advance

Key points

• The Enlarged Board (three member panel) in translation: "G 4/95 is aimed at the case where an accompanying person has special knowledge or experience in relation to the case and wishes to use this knowledge to present his case at the oral hearing. G 4/95 aims to prevent a party from gaining an advantage over opposing parties by bringing in such an accompanying person, who do not have such knowledge or experience and are therefore unable to respond adequately to such presentations at the oral hearing. 
• "For accompanying persons without such knowledge or experience [e.g. trainee patent attorneys], an announcement of their attendance and the topic on which they are to present their case would therefore not be necessary. "
•  "G 4/95 therefore aims to ensure equality of arms as a precautionary measure, even if this would be the case in individual cases without such an announcement, since [in the individual case, viz. the trainee patent attorney case] it is not intended that the accompanying person's presentation should go beyond the content of what would be expected from an authorised representative." ( "G 4/95 will also die Waffengleichheit vorsorglich sicherstellen, auch wenn diese in Einzelfällen ohne eine derartige Ankündigung gegeben wäre, da nicht beabsichtigt ist, dass der Vortrag der Begleitperson inhaltlich über den von einem zugelassen Vertreter zu erwartenden Vortrag hinausgeht.") 
• g 4/95, headnote 2 in part: ""(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:

  (i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

  (ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions

EPO 

You can find the link to the decision and an extract of it after the jump.

T 2124/21 - Refusal after 16 years

Key points

• "On appeal, the sole request subject of the appealed decision was abandoned, and amended requests were filed instead."
• The applicant then wished to return to the claims considered in the appealed decision. This is a case amendment, and these claims are not admitted.
• The appeal against the refusal of the application is dismissed.
• PCT application filed in 2008, request for entry in 2010. Start of the examination and first communication in 2017 (!). Next action: summons for oral proceedings in 2020. Refusal of the application in 2021 for lack of inventive step. Oral proceedings before the Board: January 2024. Decision in writing: March 2024. 

EPO 

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

T 0447/22 - Claim interpretation and reverse positions

Key points

• "The present case is one where the understanding of claim 1 as granted has given rise to a considerable discussion between the parties. Since the claim interpretation was of prime importance for the outcome of the case, as it formed the basis for the subsequent findings on added subject-matter and novelty, it seems appropriate to deal with this aspect before turning to any other matter. "
• " In view of above considerations, the steering device of feature c. is construed as an actual physical component of the machining device which is adapted for actively controlling the direction of the machining device in relation to the longitudinal axis of the pipe having a smaller diameter in the pipe system."
• " The patent proprietor argued that a dedicated steering device was not required, since various passages in the description of the patent indicated that the protruding parts, by maintaining the direction of the machining device, already acted as a steering device. The board disagrees for the following reasons."
• Note, typically proprietors advocate a narrower claim interpretation before the EPO. 
• "The board is well aware that the Regional Court of Düsseldorf [in an infringement case about the patent] arrived at a different conclusion in its judgment concerning infringement proceedings 4a O 40/19 based on the patent in suit"
• The Board finds claim 1 to meet Art. 123(2)
• " the board concludes that document D22 discloses all features of claim 1 as granted, the subject-matter of which thus lacks novelty."
• AR-2 is held to be allowable.
• The opponents had argued that: "the broader claim understanding of the Regional Court of Düsseldorf in the parallel infringement cases against the opponents, namely the assumption that the protruding parts could also act as a steering device, would likely result in a finding of infringement despite the fact that the patent had an embodiment which was anticipated by the prior uses "INTEC" and documents BR12 and BR12b. "
• "Whilst it is understandable that opponent 1 deplores that claim 1 of auxiliary request 2, in particular the steering device of feature c., if it were understood in a less restrictive manner, could have resulted in a different assessment of novelty and inventive step, which in turn might affect the way national courts of competent jurisdiction decide on questions of infringement, the board cannot accept the premise that it should re-open the debate and examine the objections of novelty and inventive step anew for a broader claim interpretation, which neither the board nor the opponents endorse, in order to thwart potential findings of infringement negatively affecting the opponents."
  

On claim interpretation

13.1 There is an extensive body of case law of the Boards of Appeal according to which, within certain limits, a claim may be interpreted with the help of the description and the drawings for understanding the subject-matter to be assessed under the requirements of the EPC.

It is a general principle applied throughout the EPC that a term of a claim can be interpreted only in context. The claims do not stand on their own, but together with the description and the drawings they are part of a unitary document, which must be read as a whole (see e.g. T 556/02, Reasons 5.3; T 1646/12, Reasons 2.1, T 1817/14, Reasons 7.3, and T 169/20, Reasons 1).

The extent to which description and drawings can provide an aid to interpret the claims is however subject to certain limitations.

A decision often cited in this context is T 190/99, which in point 2.4 of the Reasons states that the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent; the patent must be construed by a mind willing to understand not a mind desirous of misunderstanding.

The present board concurs with T 1408/04 (Reasons 1) that this statement must be understood to mean only that technically illogical interpretations should be excluded (see also T 1582/08, Reasons 16, and T 169/20, Reasons 1.3.3). A claim can thus be interpreted in the light of the description and the drawings to the extent that they contain logical and technical sensible information.

Furthermore, interpreting the claims in the light of the description and the drawings does not make it legitimate to read into the claim features appearing only in the description or the drawings and then relying on such features to provide a distinction over the prior art. This would not be to interpret claims but to rewrite them (see T 881/01, Reasons 2.1). In this context, it is important to differentiate between a claim consisting of terms with a clear technical meaning and an unclear claim wording. The preparatory material available on the discussions leading up to the European Patent Convention shows that even in the framework of Article 69 EPC and its Protocol on Interpretation (see for instance Armitage, "Die Auslegung europäischer Patente", in GRUR Int. 1983, 242; Decker in Stauder/Luginbühl, "Europäisches Patentübereinkommen", 9th edition, Art 69, marginal no. 22, with reference to Stauder, "Die Entstehungsgeschichte von Art 69(1) EPÜ und Art 8(3) StraßbÜ über den Schutzbereich des Patents", GRUR Int. 1990, 793, 799), it was never the scope to exclude what on the clear meaning was covered by the terms of the claims. Accordingly, many decisions of the Boards of Appeal have concluded that a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently (see, for example, T 431/03, Reasons 2.2.2; T 1597/12, Reasons 3.2.1; T 1249/14, Reasons 1.5). The description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader (T 1018/02, Reasons 3.8; T 1391/15, Reasons 3.5). On a similar note, the board in T 197/10 (Reasons 2.3) held that, in the event of a discrepancy between the claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step.

EPO 

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

J 0001/23 - Entitled to a share

Key points

• "The appeal of the registered applicant Beamocular AB (Beamocular) lies against the decision of the Legal Division, dated 13 October 2022, providing that the previously stayed patent grant proceedings for European patent application No. 16 708 122.3 (the application) be resumed, with Beamocular and the third party within the meaning of Rule 14 EPC, C-Rad Imaging AB (C-Rad), as co-applicants. "
• "-Rad informed the EPO that it had instituted proceedings before the Stockholm District Court (in case No. PMT 6829-17) against Beamocular to seek a decision within the meaning of Article 61(1) EPC, and it requested that the patent grant proceedings based on the application be stayed under Rule 14(1) EPC. "
• Proceedings were stayed.
• The Swedish Court of Appeal held that: "[...] declares that C-RAD Imaging AB has a better title than Beamocular AB (in bankruptcy) to half of the or those inventions specified in the patent claims [...] in the European patent application with publication number EP 3265852 as worded after the amendment made when the application was pursued at the European Patent office [...]"
• Seems the procedure before the EPO was not interrupted despite the bankruptcy (note, interruption must be applied by the EPO ex officio if it sees grounds).
• Note also that the resumption was first communication with a  Communication. The party requested an appealable decision, which was then issued. It says 'will be resumed'. Note that the party can appeal it, which is one of the few permitted procedural acts during a stay, I think.
• "It is established case law that the EPO is not competent to examine the substance and merits of a national entitlement decision (Case Law of the Boards of Appeal, 10th edition, July 2022, III.M.3.1.2, fifth and sixth paragraphs; G 3/92, Reasons 3.3 and 3.4). The Swedish Court explicitly based its decision on, inter alia, Article 18(1) of the Swedish Patents Act, (page 5, fourth full paragraph, "Legal points of departure"), and the Board has no competence to review the correctness of this legal basis."
• 
  
• A translation of the Swedish court decision can be found in the EPO file here.
• I omit a discussion of the headnote. It is a reply to the argument that "" the Swedish decision does not mention any ground, by agreement or law, for a transfer of rights from the inventors to C-Rad, i.e. that there is no reference to a legal situation or transaction which would have made C-Rad successor in title in compliance with Article 81, second sentence EPC in conjunction with Article 60(1) EPC". The interested reader could read the  Swedish decision to see how the court came to its conclusion. 
• The Legal Board explains that in "cases where a final sovereign decision of a national court  [of an EPC contracting state, it must be added!] has determined that a person other than the applicant is entitled to the grant of the European patent under Article 61(1) EPC. In such instances, the matter of by whom and how the right to the patent was acquired is deliberated and settled by the competent national court, and the EPO is bound by the court's conclusion without further requirement." 

EPO 

You can find the link to the decision after the jump.