T 2017/07 : Extension of protection conferred

This case, which recently published, is an example of how things can go very wrong for a patent proprietor when claims directed to compositions which contain both open language (comprising) and generic terms of the "Markush type" have to be amended.

To refresh the memory, Article 123(3) EPC reads:
"The European patent may not be amended in such a way as to extend the protection it confers."

In this particular case claim 1 as granted reads:

"A hair dye composition which comprises
                 (A) an acid dye and
                 (B) an alkylene carbonate having 3-5 carbon atoms in total,
                 wherein the content of (B) is 0.5-50 % by weight
                 [..]"

During opposition this claim was amended to read :

"A hair dye composition which comprises
                 (A) an acid dye and
                 (B) an alkylene carbonate having 3-5 carbon atoms in total,
                 wherein the content of (B) is 0.5-50 % by weight,
                 the alkylene carbonate being propylene carbonate
                 [..]"

At first sight such a claim seems acceptable. However, the opponent and the Board further examined the case and found that by limiting the claim to a species of the genus "carbonate" at the same time maintaining the "comprising" language the scope of protection was in fact not limited but extended. The Board basically reasons that because of the "comprising" nature of the claim the hair dye may still contain carbonates falling within the genus "carbonate having 3-5 carbon atoms in total". As the amount of these further carbonates is not defined in the claim, one may end up with a total of "carbonate" well over 50%. This would result in a broader protection than the protection conferred by the claim as granted.

The Board of Appeal formulated the following headnote :

A composition which is specified in a claim to comprise a component in an amount which is defined by a numerical range of values is subject to an implicit proviso excluding the presence of that component in an amount outside of that range.


An amendment restricting the breadth of that component, for instance by narrowing down a generic class or a list of chemical compounds defining that component, has the consequence of limiting the scope of this implicit proviso.


A composition which is defined as comprising the components indicated in the claim is open to the presence of any further components, unless otherwise specified. In a claim directed to such an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (Article 123(3) EPC).

To me the decision makes sense, but at the same time I have to admit that this is a scenario I have never considered before when drafting claims.

Article on problem-solution-approach updated

I recently updated the article on the problem solution approach in view of the new version of the Guidelines. All references to the Guidelines now apply to the April 2010 version.

Some additional remarks were added w.r.t. reformulation of the objective technical technical problem.

The article can be downloaded/viewed from the download area, or simply by clicking here.

PCT Newsletter - April 2010 (No. 04/2010)

The latest issue of the PCT Newsletter (No. 04/2010) is now available on
the PCT Resources page in:

http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_04.pdf

Although interesting to read, w.r.t. importance for the EQE you can skip the practical advice in my view as it does not relate to the law as such but more or less is aimed at providing strategic advice for applicants. More in particular the advice is aimed at whether or not is appropriate to file a demand. I personally wonder why the WIPO decided to do this.

Anyway, I've copied the items which I think are important to the PCT summary.
- EPO will be SISA as per July 1st 2010
- Notifications by e-mail
- Example request forms
- Updated ISA and IPEA agreements
- Power of Attorney waivers

Editable copy of EPC Implementing Regulations updated

The Editable version of the Implementing Regulations has been updated. Download here directly or go to the downloads section. The update concerns the amendments that entered into force on April 1, 2010.

The following Rules were amended/ inserted :

Rule 36 (1) and (2)
Rule 57(a)
Rule 135(2)
Rule 62a
Rule 63
Rule 64, paragraph 1
Rule 69
Rule 70a
Rule 137
Rule 161

T 0961/09: Legal framework w.r.t. Article 76(1)

T 0961/09 and T 0962/09 relate to decisions by the Examining Division refusing a divisional application for non-compliance with Article 76(1). To refresh the memory, Article 76(1) reads:

A European divisional application shall be filed directly with the European Patent Office in accordance with the Implementing Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed; in so far as this requirement is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority.

In both decisions, the Board of Appeal summarizes the legal framework with respect to this Article :

[..]

In summary, as follows from reasons 5.1 of G 1/05 (OJ EPO 2008, 271) and G 1/06 (OJ EPO 2008, 307) the main criterion for assessing compliance of Article 76(1) is essentially the same as that applied when assessing compliance to Article 123(2) EPC. 

Thus, subject-matter of the divisional must be directly and unambiguously derivable by the skilled person from the disclosure of the earlier, parent application as originally filed, as determined by the totality of its claims, description and figures when read in context. 

Moreover, it is normally not admissible to extract isolated features from a set of features originally disclosed in combination, see T 1067/97, T 714/00 or T 25/03.

Following T 770/90, an unduly broad filed claim cannot justify new feature combinations. Nor, the Board adds, can the content of a document be regarded as a reservoir for combining features from separate embodiments, see e.g. T 296/96. 

The Board further refers to decisions T 1500/07, T 1501/07 and T 1502/07 in particular reasons 2 thereof.

Although specifically directed to Article 76(1) I'd say this is a very useful summary.

The counter starts again !

In Official Journal  3, 2010 the date for the EQE 2011 has been announced. As you may have guessed, the examination starts March 1. Applications may be filed as per April 1, 2010 and have to be received by the EPO no later than July 19, 2010.

For those who sat the EQE 2010 and handed in at least one paper, you can enrol as from August 10, 2010 and your application should be received no later than September 20, 2010.

A lot more information can be found here.