Friday 8 February 2013

T 748/09 – Gold Governs The Globe


When G 2/10 was issued by the Enlarged Board of appeal (EBA), I was not quite certain whether it was brilliant or trivial, and to be honest, I still do not know for sure. Be that as it may, we now see decisions where G 2/10 appears to overtake G 1/03 - which puzzles your humble servant.

In the present case, both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

The appeal of the opponent was found admissible although it was filed in the wrong name, without an address and a statement explaining to which extent the decision was contested. However, the substantive arguments of the opponent were found not to be persuasive and its appeal was found unallowable.  

The Board then examined the allowability of the appeal of the patent proprietor:

[2.2.1] Claim 2 of the new main request contains the wording “with the proviso that a metal alloy consisting essentially of 50 - 98.9 % Nb, 0.5 - 5 % Zr and 0.6 - 49.5 % Ta is excluded”. The amendment to claim 1 aims at excluding the alloy compositions disclosed in Table 1 of document D1, which represents prior art in the sense of A 54(3). The amendment therefore constitutes the introduction of an “undisclosed disclaimer”.

[2.2.2] In decision G 2/10, the EBA considered that in decision G 1/03 the EBA did not provide an exhaustive treatment of the conditions when an “undisclosed disclaimer” violates A 123(2) and when it does not (G 2/10, page 34, first paragraph). Moreover, the EBA held that the gist of the questions referred to the EBA in cases G 1/03 and G 3/03 (sic) to which the EBA had to give an answer, was to establish whether, and if so, under which circumstances undisclosed disclaimers could be considered allowable at all, as a matter of principle, despite of the absence of a basis in the application as filed. It is this question and no more the EBA had answered in answer 2. The wording the EBA chose in the starting line of answer 2, reading “a disclaimer may be allowable”, indicates that with the criteria set up in answer 2 the EBA did indeed not intend to give a complete definition of when an undisclosed disclaimer violates A 123(2) and when it does not.

The EBA further stated that neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of A 123(2) established in opinion G 3/89 and decision G 11/91, which definition has become the generally accepted “gold” standard for assessing any amendment for its compliance with A 123(2). Consequently, the principle that any amendment to an application or a patent, and in particular to a claim, must fulfil the requirements of A 123(2) also applies to an amendment limiting the claim by disclaiming disclosed or undisclosed subject-matter. Therefore, as is the case for any other amendment, the test for an amendment to a claim by disclaiming subject-matter disclosed as part of invention in the application as filed, or subject-matter disclosed in a document representing prior art in the sense of A 54(3), respectively, must be that after the amendment the skilled person may not be presented with new technical information.

Put another way, the point of reference for assessing an amended claim for its compliance with A 123(2), including amendments by introducing an undisclosed disclaimer, is the subject-matter which the claim contains after the amendment. Hence, the test to be applied is whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed. This opinion corresponds to the one given in T 2464/10.

[2.2.3] The “remaining subject-matter test” applied to claim 2 of the new main request

Following the principles laid down in decision G 2/10 with respect to the “gold standard”, the remarks in this decision must be interpreted as an instruction to the Board to apply the further test developed therein, in addition to the principles set out in decision G 1/03, in order to carry out a full assessment of whether an “undisclosed” disclaimer meets the requirements of A 123(2).

The elemental limitations imposed by the disclaimer of claim 2 serves the purpose of excluding the Nb-Zr-Ta alloy compositions, which are disclosed in document D1, from the claimed Ta-alloys and - in consequence thereof - of establishing novelty vis-à-vis D1 which constitutes prior art in the sense of A 54(3). However, by introducing into claim 2 the compositional restrictions, which are exclusively based on document D1 rather than on the technical disclosure of the application, the skilled person is confronted with new subject-matter that he cannot derive clearly and unambiguously from the application as originally filed. To give an example, it is noted that the upper limit of less than 50% niobium now featuring in claim 1 is not disclosed anywhere in the application as filed and neither are the limits of less than 0.5% Zr and more than 5% Zr. It follows from the above considerations, that the disclaimer of claim 2 of the auxiliary request 1 does not satisfy the requirements of A 123(2). Hence claim 2 of the new main request is not allowable.

[2.2.4] The appeal is, therefore, not allowable.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

9 comments:

Roufousse T. Fairfly said...

When G 2/10 was issued by the Enlarged Board of appeal (EBA), I was not quite certain whether it was brilliant or trivial, and to be honest, I still do not know for sure.

This sounds like G2/10 is about as cryptic as the utterances of the oracle at Delphi.

I occasionally get the same strange feeling when I read some patent applications. ;-)

Keep up the good work!

oliver said...

Hi Roufousse,

To me it’s more like Heidegger’s famous “Die Welt weltet.” Is this deep or trivial? Or both?

Manolis said...

There seems to be a tendency to combine G1/03 and G2/10. Here is how I understand it (emphasis on "I" - I am by no means the holder of the truth here!):
Normal case - no disclaimer: Original claim A+B. New feature comes into claim: A+B+C. Art. 123(2) check in two steps: (a) is C originally disclosed? if yes, then (b) is the combination A+B+C originally disclosed? If yes again then Art.123(2) is fulfilled.
If C is a disclaimer (A+B-C) the same logic applies: (a) is C disclosed? if yes (g2/10) then is the combination A+B-C (i.e. what is left in the claim after the subj. matter of disclaimer is out) disclosed? If yes 123(2) is fine.
If C is not disclosed then g1/03 gives some conditions under which C may be acceptable. If these conditions are fulfilled then the question (a) can be replied with a fictional "yes" (or at least the fact that it is replied with "no" is not fatal). Question (b) about the combination A+B-C remains, however, and it must be checked whether A+B-C is disclosed, like g2/10 says.
So the original idea that g2/10 applies to disclosed disclaimers and g1/03 to undisclosed ones and the twain shall never meet, does not seem to be correct...

Anonymous said...

You should have a look at point 4.7 of G2/10 where the application of A123(2) to undisclosed disclaimers is discussed. According to the EBA G1/03 gave the criteria under which a disclaimer "may be acceptable". That is the necessary criteria, but not the sufficient ones.

I find this interpretation not convincing, but that is not what matters.

ExaMinus said...

For what it is worth, I have the same reading as Manolis: G2/10 applies to all disclaimers, disclosed or undisclosed; G1/03 applies to undisclosed disclaimers, on top of or in parallel to G2/10.

G2/10: What is left should be derivable from the application.
I understand that (at least some) embodiments falling within the scope of the claims should be derivable. I trust this was the case here.

In this step, we are not concerned whether the borders of the claim, including the disclaimer, are disclosed.

If the borders are disclosed (disclosed disclaimer), usual Art. 123 considerations apply.

If the borders are not disclosed (undisclosed disclaimer), G1/03 applies.
G1/03 allows for undisclosed disclaimers against:
-non-technical exclusions of the EPC;
-prior art under Art. 54(3) EPC, which the applicant could not possibly write into his application;
-"accidental" prior art under Art. 54(2) EPC.
Here we have Art. 54(3) EPC prior art. For me, the undisclosed disclaimer, with undisclosed range limits, should have been allowed under G1/03.

ExaMinus said...

@Anonymous 10:45

I read the reverse in G2/10, 4.7: G1/03 is not exhaustive. I.e. G1/03 spells out sufficient conditions, but not necessary ones: There could still be further grounds to allow undisclosed disclaimers. (And these are yet undisclosed...)
The three grounds in G1/03 could hardly be necessary, as there are mutually exclusive.

Am I reading it wrong? said...

Ok, I may mis-read, but I feel the BOA just created a brand new crazy trap :

"To give an example, it is noted that the upper limit of less than 50% niobium now featuring in claim 1 is not disclosed anywhere in the application as filed and neither are the limits of less than 0.5% Zr and more than 5% Zr. It follows from the above considerations, that the disclaimer of claim 2 of the auxiliary request 1 does not satisfy the requirements of A 123(2). Hence claim 2 of the new main request is not allowable."

So we stard from an undisclosed disclaimer. Which according to G1/03 is admissible ONLY if you disclaim EXACTLY what is in the A54(3) document.

But then if you do, it is A123(2) according to the BOA since this EXACT embodiment was not disclosed in the application.

But doesn't the fact that it is an UNdisclosed disclaimer specifically mean that it is not in the patent?

How can you properly disclaim it (that is as a whole) and still be in the vicinity of what is already disclosed, based on an undisclosed disclaimer?

I'm not a chemist, but that seems ludicrous to me.

Myshkin said...

I think G 2/10 is pretty nice EXCEPT for point 4.7, which is just terribly confusing.

Using Manolis' notation, it seems clear to me that "A+B-C" is disclosed in the application as filed if and only if the subject-matter "remaining" in "A+B-C", i.e. the precise set of embodiments covered by A+B minus those having C, is disclosed in the application as filed. This is simply how Art. 123(2) works. In my view, G 2/10 simply states that the case where "C" on its own happens to have a basis in the application is no exception (and in particular, the application disclosing "A+B" and "C" does not imply by some rule of logic that "A+B-C" is disclosed). But unfortunately, the drafters of G 2/10 found it necessary to include point 4.7.

Regarding G 1/03, whatever the reason may have been for the "may", the whole point of G 1/03 (i.e. to create a legal exception to Art. 123(2) to resolve the problem of conflicting applications and accidental disclosures) is lost when one adds additional requirements.

I think the current situation really calls for a referral.

Anonymous said...

"Am I reading it wrong" has in my view not read it wrong at all! This is indeed a very strange decision which effectively holds that all "classical" (ie undisclosed) disclaimers, at least insofar as ranges are concerned, offend against Article 123(2)! Also I think the board is wrong to impute from the dislaimer three individual range limitations into the claim, what is actually disclaimed is actually only an alloy where the three stated range limiations are all met. That is quite different.