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.

Delta Patents increase their presence on the net

Following the initiative of Pete Pollard, Jelle Hoekstra, Rolf Suurmond and Joeri Beetz have joined Pete's blogging activities with respect to the EQE. The new Blogs, specifically directed to papers C and D can be found by clicking the links below :


EQE Paper C

EQE paper D

Patent Law updates


Given the high quality courses Delta Patents provide (for those wondering: no, I'm not affiliated in any way) I'm sure these Blogs will be a valuable source of information to EQE candidates.

EPC Rule changes, some comments

A number of changes to the Implementing Regulations will enter into force on the 1st of April. In a Webinar earlier today, hosted by the EPO, an overview was presented. First part of the presentation related to amended Rules 63, 64, 137 and new Rules 62a and 70a(1). The second part related to the new time limits set for filing of divisional applications.

The entire session was recorded and can be found here*.

In general, the session was well organised. The speaker, Mr Ingwer Koch, guided the participants through a presentation. By means of the chat function of WebEx attendees could submit their questions, which in turn were collected, summarised and presented by another employe of the EPO (sorry, I can't find his name anymore) to Mr. Koch directly. Worked really well!

Concerning the contents, some remarks by Mr. Koch:

New Rule 62a(1) relates to a situation where there are multiple independent claims in one category.
Applicants should seriously pay attention to Rule 137(5) as in force from April 1st, 2010. More in particular, when the applicant receives a communication under new R62a he is strongly advised to indicate which subject matter he wants to have searched. Not doing so will result in only the first claims of a category being searched. If the applicant later on realises that he in facted wanted other claims to be searched he cannot amend his case accordingly because of Rule 137(5). The only option would be to file a divisional application. If no attention is paid to the new time limits in place, this could result in a loss of protection for certain subject matter. In the words of Mr. Koch "The applicant ends up having nothing ..."

The same goes for amended Rule 63 (the EPO refers to this Rule as being applicable to complex applications): Applicants are strongly advised to indicate and explain the subject matter they want to have searched. No search means it is impossible to later on amend the case to such subject matter.

New Rule 70a EPC forces applicants to file a response to the search opinion in case this opinion is "negative". Negative (at least that's how I understood it) means the application does not fulfill the requirements of patentability. This includes all requirements (so not only novelty/ inventive step). I have not seen a lot of cases where the opinion does not have a single objection, so in practice every opinion probably needs to be replied to. Mr. Koch explained that the EPO expects a reply similar to a reply that is expected in response to an Article 94(3) communication (which makes sense as far as I'm concerned).

In case of Euro-PCT applications where the EPO was ISA (and IPEA) a reply to the WO-ISA (or IPER) is likewise obligatory. The time limit is 1 month from the Rule 161(1) communication, so more or less about 6 weeks after expiry of the 31m period for regional entry. Applicants that use Euro-PCT route for "buying time" will probably not like this Rule very much. For example, if the decision for European entry is only taken at the end of the International Phase, applicants only have a quite limited time for preparing an answer to the WO-ISA or WO-IPER.

Finally (for this post) Rule 137 will include a new paragraph which forces applicants to indicate the basis in the application as filed. Non- compliance may result in an invitation to correct. I think such a rule makes sense as it helps applicants to check their amendments in view of Article 123(2). For most attorneys/ applicants this new paragraph will probably not change the way they work drastically.

With respect to divisionals Mr. Koch gave some examples explaining how it will work, I think the presentation (see below) speaks for itself.


The presentation can be found here.


* The link may be temporary, please let me know if it no longer works.

Comments on EQE 2010 Paper A Chemistry Part I

I have studied paper A 2010 (Chemistry) recently, first of all to see if the method you can download from this website still would have worked and secondly to see what the paper was all about. I did not draft any claims, yet wrote down in general which claims I think were expected.

After having done so I checked the eqe-online forum and found out there was quite some discussion going on about what should be claimed. Below my personal opnion and some thoughts on this. I'll probably post some more on this paper later.

In his letter, the client indicates that he would like to have protection not only to the specific invention described but that he would also like coverage for any other application that may be envisaged in the future. The client does not give any example of such a possible other application.

The letter then continues by stating the main problems of the known bio-active glasses:

- known glasses need to be ground, which results in
            o non uniform particles; some of them are too large
            o irregular in shape
            o random arrangement encourages irregular bone structure
            o use of powder may be dangerous

- known glasses cannot be drawn into fibres easily and fibres not very well absorbed in the bone

The basic idea of the invention resides in the finding that certain compositions were found that in fact can be drawn in fibres easily and that these fibres (when cut) are very suitable for ossification.

(Note that the client does not mention anything about grinding the “inventive” composition, he only talks about making the fibres!)

The prior art consists of two small documents, D1 basically corresponding to what the client already described in the letter. D2 also discloses glass compositions, but does not mention anything about the use  thereof as bioactive material.

Unfortunately (?) D2 discloses compositions that fall in the range of compositions that were found to be suitable by the client. In fact, D2 discloses the exact same compositions as in the examples provided by the client.

Thus, a composition can not be claimed as it is not novel over D2.

There is an interesting discussion on the eqe-online forum where some people are of the opinion that it was possible to add a disclaimer, thereby disclaiming the D2 compositions. Ocassionally reference is made to G1/03.

My personal opinion is that introduction of a disclaimer is incorrect:

- With respect to G1/03 it is noted that this decision relates to amendments. More in particular, the decision sets out the criteria to be met when amending an application by introducing an “undisclosed disclaimer” without offending against Article 123(2). Obviously when you are drafting a patent application you are not amending anything so that these criteria don’t apply and G1/03 is not so relevant at all. (You can disclaim anything you like in an application; it will by definition be a “disclosed disclaimer”.)

So, the argument that "D2 is from a totally remote field" is in my view irrelevant for arguing the introduction of a disclaimer.

- More importantly, D2 clearly discloses “compositions around compositions 1-3”. This means in my opinion that D2 not only discloses the compositions 1-3 but also compositions that are “close”. So, a disclaimer disclaiming the three compositions from D2 only would arguably be insufficient to create novelty over D2. The result is a strange situation where you cannot really disclaim what D2 discloses. To me this was a clear pointer that a disclaimer is not what the exam committee is looking for.

- Further to this the compositions of D2 are exactly the same as the compositions according to the client's examples. This again is (in my view) a hint that a disclaimer is not appropriate.

In this respect it is finally noted that (although not explicitly mentioned as far as I know) the composition as such only solves the technical problem of being able to be drawn into fibres more easily. All the other technical problems mentioned above seem to be solved only by making fibres from the compositions first.

All in all, I don’t think you could have claimed a composition.

(As a general comment I can add that I found this paper a bit more difficult than the paper of 2009.)

PCT Procedures and Passage into the European Phase: 2nd edition available

Peter Watchorn and Andrea Veronese brought to my attention that as of March 2010 the second edition of their book "PCT Procedures and Passage into the European Phase" is available. 

Peter and Andrea wrote the following :

This second edition of "PCT Procedures" incorporates and explains all legal changes which came into force for the EPC and the PCT since the first edition of this book was published in 2006 (including, in particular, the coming into force of the EPC-2000). 

It also pre-empts changes to the EPC and the PCT which will comeinto force in 2010 (on 1 April and 1 July respectively). It explains in particular the changes regarding the limitation of supplementary searches in the European system, changes to the filing of divisional applications (relevant to non-unitary cases entering the European phase from the PCT) as well as changes to the procedures for making and indicating amendments in the EPC and the requirement to reply to EPO opinions or reports after entry into the European phase. 

Likewise for the PCT, the new Supplementary International Search, new procedures for the acquisition of a filing date and the late filing of application documents in the PCT as well as new procedures for correcting application documents are also explained in detail.

More information can be found on their website : http://www.pct-compass.com/

More links to study material can be found here.