Key points
- The currently prevailing view is that the EPO applies Article 69 only in the context of Article 123(3).
- In the case at hand, the Board has to decide on whether the following feature has basis under Article 123(2): "said body having a free inner bore holding a capacitive data link". The opponent/appellant argues that this feature means that the body has a free inner bore and this bore holds a capacitive data link (in which case the feature lacks basis). Thus interpretation is referred to as interpretation (a).
The patentee argues that it means that "the body has a free inner bore and, additionally, the body holds a capacitive data link" (interpretation (b)). So the question is, what is holding the capacitive data liking, the inner bore or the body? - The Board: "Grammatically, the contentious expression is constructed as a series of noun groups ("said body", "a free inner bore", "a capacitive data link") separated by present participles ("having", "holding"). In the absence of any comma and any coordinating conjunction separating the various terms, the person skilled in the art, on a plain reading of this expression, would simply consider the subject governing each present participle to be the noun group immediately preceding it, following the usual rule that modifiers are generally placed next to the word they modify. In this way, the person skilled in the art would arrive at the construction that the body has a free inner bore and that this bore holds a capacitive data link: hence, interpretation (a) defended by the appellant [opponent]."
- " Interpretation (a) is technically sensible and plausible. "
- " Referring to Article 69 EPC, the respondent [patentee] argued that the description had to be used to interpret the claims. Reading claim 1 in the context of the description, in which a free inner bore in the rotary joint body is only disclosed for accommodating a patient and in which it is the body which holds a capacitive data link (paragraph [0024]), the person skilled in the art would, according to the respondent, necessarily reject interpretation (a) and instead adopt interpretation (b)."
- This raises the question if Article 69 EPC can be used under Article 123(2) EPC.
- The Board, after an extensive legal analysis, concludes that "the description and the drawings should indeed be taken into account when interpreting claim 1".
- I will summarize the Board's legal analysis in a separate post.
- However, this legal analysis is obiter because the Board "disagrees with the [patentee's] conclusion that doing so would lead to rejecting interpretation (a) [invoked by the opponent] and adopting interpretation (b) instead".
- "The mere fact that the contested claim feature as understood in accordance with interpretation (a) is not disclosed in the description or drawings does not speak against this interpretation. Neither the description nor the drawings exclude the presence of a (further) capacitive data link positioned in accordance with interpretation (a)."
- "Moreover, there is no principle of claim interpretation according to which a claim should be interpreted in a manner which makes it compliant with Article 123(2) EPC.
- "Furthermore, contrary to the description and the drawings, the application as filed is not referred to in Article 69(1), second sentence, EPC either."
- As a comment, this could be an indication that Article 69 is not directed to the assessment under Article 123(2).
- "The mere mention, by way of example, of an embodiment which comprises a capacitive data link not arranged in accordance with interpretation (a) is not a sufficient reason to apply interpretation (b) instead of interpretation (a)."
- "It is common ground that the description as filed does not disclose a rotating joint body having a free inner bore, wherein this bore holds a capacitive data link."
- "Consequently, claim 1 as interpreted by the Board in accordance with interpretation (a) presents the person skilled in the art with new information which extends beyond the content of the application as filed. The requirement of Article 123(2) EPC is therefore not met."
- The patented tries a correction of error under Rule 139 to recite in the claim: "said body having a free inner bore, said body holding a capacitive data link"
- "Due to the additional comma and noun group "said body", the corrected expression contains two distinct participial phrases which both describe the body. It is common ground that the person skilled in the art would understand this [corrected] expression in line with interpretation (b) above."
- However, the Board concludes that Rule 139 EPC is not applicable to correct claim 1 of the patent as granted. The Board's reasoning seems convoluted on this point, but the Board's conclusion seems correct because the scope of protection of the patent as granted is defined by the Decision to grant (in turn referring to the Druckexemplar), which is issued by the EPO and which could be corrected under Rule 140 except for G 1/10 excluding this; Rule 139, on the other hand, applies only to documents filed with the EPO, i.e. submitted by a party, and hence not to decisions of the EPO, such as a Decision to grant.
- I note that clerical errors in the granted claims can be corrected in opposition, together with a substantive amendment, see e.g. T 1111/19. I note that upon further consideration, such a correction might not be a correction under Rule 139 stricto sensu (indeed, G 1/10 r.13 does not refer to R.139).
- As the present Board notes: "The Enlarged Board also stated in G 1/10, Reasons 13, that it is always open to a patent proprietor to seek to amend its patent during opposition proceedings and that such an amendment could remove a perceived error. However, it was also stressed by the Enlarged Board that such an amendment must satisfy all the legal requirements for amendments, including those of Article 123 EPC."
- The amendment is also submitted as an auxiliary request. "By bringing the disputed expression of claim 1 into line with interpretation (b), the limitation defined in claim 1 as granted that the free inner bore holds a capacitive link, as interpreted by the Board as discussed in section 4. above, has been removed. The protection conferred by claim 1 as granted has thus been extended in all of auxiliary requests 1 to 3. These auxiliary requests therefore do not meet the requirement of Article 123(3) EPC."
- The patent is revoked.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/01/t-147319-i-killed-by-lacking-comma.html
