Clarity in Europe and Germany - EU-JP TTHelpdesk · T 684/89, reasons 2.1.2; T 5/99 reasons 2; T...

Clarity in Europe and Germany

Dr. Dominique Trösch, May 2016 2

The following slides are based on a presentation recently given

at Beyond Borders, a joint event of the HARRIS FIRM and

PATRONUS IP.

PATRONUS IP is a Patent Attorney firm in Munich, Germany,

which represents both domestic and from abroad clients in front

of the German Patent and Trademark Office, the European

Patent Office, the European Trademark Office, as well as the

relevant courts in matters relating to industrial and intellectual

property rights, covering all relevant technical fields. For further

information, please visit our website: www.patronus-ip.com

Dr. Dominique Trösch, May 2016

People at Patronus IP

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Jan Robert NaefeDipl.-Ing. (Material Science)European Patent AttorneyPatentanwalt

Bernhard GanahlDipl.-Phys.European Patent AttorneyPatentanwalt

Christian HimmlerDipl.-Ing.European Patent Attorney

Veronika SchweplerLawyer

Dr. Dominique TröschDipl.-Chem.European Patent AttorneyPatentanwalt

Dr. Markus ZollerMaster of ScienceEuropean Patent AttorneyPatentanwalt

Dr. Dominique Trösch, May 2016

Speaker

4

The speaker on behalf of PATRONUS IP is Dr Dominique J.M. Trösch.

Dr Trösch studied chemistry at the Julius-Maximilians-Universität Würzburg (Dipl.-Chem.), where

he also worked on his thesis and obtained his doctor’s degree (Dr. rer. nat.). His research

included research stays at Nottingham & Oxford Universities, funded by the British Council and

the DAAD.

Dr. Trösch has been working in the field of industrial and intellectual property since 2000. He has

particular experience in the field of industrial property relating to pharmaceuticals (patents,

SPC’S), in prosecution proceedings in front of the German Patent and Trademark Office as well

as in front of the European Patent Office (EPO), opposition and appeal proceedings in front of

the EPO, as well as in patent nullity proceedings in front of the German Federal Patent Court

(Bundespatentgericht, BPatG) and the Federal Court (Bundesgerichtshof, BGH), in

infringement/preliminary injunction proceedings (Landgericht Düsseldorf), as well as in drafting

legal opinions and FTO analyses.


Clarity

• During EPO Examination Proceedings (pre-grant)legal background; general principles

• During EPO Opposition Proceedings (post-grant)G 3/14; example

• In front of German Courts (post-grant)BGH Fugenband, Polymerschaum


Legal Background

Art. 84 EPC

The claims shall define the matter for which protection is sought. They shallbe clear and concise and be supported by the description.

Clarity under the EPC


“The purpose of claims under the EPC is to enable the protection conferred tobe determined” (G 2/88, OJ EPO 4/1990, pp. 99-100, reasons 2.5)

Article 84 EPC signifies

- that an independent claim should explicitly specify all of the essential featuresneeded to define the invention, and that- the meaning of these features should be clear for the person skilled in the artfrom the wording of the claim alone.

These requirements serve the overriding purpose of legal certainty.(G 1/04, OJ EPO 5/2006, pp. 351-352 reasons 6.2)


http://archive.epo.org/epo/pubs/oj1990/p093_185.pdf

http://archive.epo.org/epo/pubs/oj006/05_06/05_3346.pdf


Clarity – General Principles

Claims must teach the exact distinctions delimiting the scope of protection;

Claims must not be contradictive;

Claims must be clear in themselves;

Claims must indicate all the essential features of the claimed invention

Essential features = all features necessary for solving the technical problem

Note:Complexity is not equivalent to lack of clarity – clarity merely requires that thescope of the claim is clear and unambiguous for the skilled person



Example: T 809/12 (lack of clarity due to a missing essential feature)

Claim: “A coated article comprising a layer system … characterized in that the coated Article hasa DeltaE* value (glass side) no greater than 2.5 after or due to heat treatment, …”.

The claim further specified thickness of layers (5), (9), but remained silent on other layers.

DeltaE* was important for the result to be achieved (good matchability). According to thedescription, good matchability was obtained(i) when certain layers (5) (9) are thicker than in the prior art, and(ii) when other layers are thinner than in the prior art.

A “belief” was expressed that “one or more of these changes results in good matchability”.

“Belief” was not a valid basis for omitting details about the other layers. The claim wasconsidered to contravene Art. 84 EPC, because the remaining features of the claim did notcomprise all the features necessary for achieving good matchability.



Note the catchword of this decision:

“If an independent claim contains a feature defined by a result to be achieved which essentiallycorresponds to the problem underlying the application, to comply with Article 84 EPC 1973 theremaining features of the claim must comprise all essential features necessary for achievingthat result (see reasons 2.2 to 2.9.2).” (T 809/12, catchword, emphasis added)

Note: The situation may be different for claims comprising a similar feature, which is notrelated to the objective technical problem solved.


http://www.epo.org/law-practice/case-law-appeals/pdf/t120809eu1.pdf


Products characterized by parameters, relative terms, about

Always include a reference to the method used to determine a parameter.

Where several methods exist, choose a specific one, e.g. an industrial standard.

A relative feature may be admissible – “water-soluble” was more oftenconsidered admissible under Art. 84 EPC than not. Note in this context:

An unclear term cannot be allowed in a claim if the term is essential havingregard to the invention. Equally, an unclear term cannot be used by theapplicant to distinguish his invention from the prior art. (Guidelines, F-IV.4.6)

“about” or “approximately” only admissible if it does not prevent the inventionfrom being unambiguously distinguished from the prior art (Guidelines, F-IV.4.7)


http://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_4_6.htm

http://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_4_7.htm


Imagine a granted European Patent isbeing opposed.

The following is about the importance ofclarity in such proceedings.

Clarity in Opposition Proceedings (post grant)


Clarity Before Grant is a Prerequisite

pre-grant claim requirements:

• novel, inventive

• can be carried out by skilled person

• originally disclosed

• clarity, support by the description (Art. 84 EPC)



Clarity After Grant is not a Ground of Opposition

post-grant claim requirements:

• novel, inventive

• can be carried out by skilled person

• originally disclosed

• clarity, support by the description (Art. 84 EPC)



Clarity is still important in Opposition Proceedings

clarity is important both insofar as the claims

(1) get amended; and

(2) remain unchanged.



Art. 101 EPC:

(3) If the Opposition Division is of the opinion that, taking into consideration theamendments made by the proprietor of the European patent during theopposition proceedings, the patent and the invention to which it relates

(a) meet the requirements of this Convention, it shall decide to maintain thepatent as amended, …;

(b) do not meet the requirements of this Convention, it shall revoke the patent.

including Clarity (Art. 84)



“taking into consideration the amendments”

What does this mean?

To which extent may the Opposition Division reexamine clarity of a granted claimwhich was amended?

• undisputed: amendments possibly introducing a lack of clarity which didpreviously not exist in the claim

• what about other amendments?


Clarity in Opposition Proceedings at the EPO



possibilities considered in G 3/14:

examination of requirements of Art. 84 EPC permissible ?

(a) in case the amendment introduces lack of clarity(b) if lack of clarity is „arising out of“ amendment (but the feature in question itselfwas not amended)(c) on a case-by-case basis, as a matter of discretion, if amendment is sole featureestablishing novelty/inventive step (as e. g. in T 1459/05)(d) unrestricted examination of amended claims on a case-by-case basis, irrespectiveof the kind of amendment (as e. g. in T 459/09)(e) unrestricted examination of amended patent as a whole due to the amendment

Clarity in Opposition Proceedings at the EPO


Enlarged Board, G 3/14, OJ EPO 2015, A102, p. 2, catchword:



possibilities considered in G 3/14:

examination of requirements of Art. 84 EPC permissible ?

(a) in case the amendment introduces lack of clarity(b) if lack of clarity is „arising out of“ amendment(c) on a case-by-case basis as a matter of discretion if amendment is solefeature establishing novelty/inventive step (as e.g. in T 1459/05)(d) unrestricted examination of amended claims on a case-by-case basis,irrespective of the kind of amendment (as e.g. in T459/09)(e) unrestricted examination of amended patent as a whole due to theamendment



However, … (G 3/14, OJ EPO 2015, A102, pp. 53, 54, reasons 55)


http://www.epo.org/law-practice/legal-texts/official-journal/2015/11/a102/2015-a102.pdf


Examples according to G 3/14 for a profound effect of Lack of Clarity on the Outcome ofgrounds for opposition under

(i) Art. 100 (b) / Art. 83 EPC (Lack of Sufficiency)

T 684/89, reasons 2.1.2; T 5/99 reasons 2; T 126/91, reasons 2.1; T 59/10, reasons 4

(ii) Art. 100 (a) / Art. 54 EPC (Lack of Novelty)

T 57/94, reasons 2.1; T 525/90, reasons 2.1; T 892/90, reasons 2; T 617/92, reasons 2.2

(iii) Art. 100 (a) / Art. 56 EPC (Lack of Inventive Step)

T 892/90



example for clarity influencing outcome under Art. 54 EPC

T 493/09 (Hepatitis C/MERCK SHARP & DOHME CORP.)

In this case, Claim 1 read as follows:

"1. The use of interferon alpha-2b in the manufacture of a medicament for treating achronic hepatitis C viral infection in a human, wherein said medicament is to beadministered to the human for at least 4 weeks in an amount of the interferon alpha-2b offrom 2 million IU per week to 10 million IU per week; wherein the administration maintainsserum concentrations of the interferon alpha-2b at a steady state for the duration of thetreatment.“

The case lastly depended on how “at a steady state” is to be interpreted.



„steady state“ a state in which the concentrationoscillates between a minimum and a maximum.

The description allowed for continuous and intermittent administration, so long as a„steady state“ resulted.

The proprietor construed „steady state“ narrowly so as to delimit the claimedsubject-matter from prior art disclosing intermittent administration with long intervals.

Opponent argued „steady state“ would give rise clarity issues, because no one knowswhere the steady state begins and where it ends, as oscillation boundaries areuncertain.



The Board of Appeal found “steady state” was not unclear, but construed it broadly:

“24. …, claim 1 has to be construed to mean that administration of interferonalpha-2b by repeated injection of substantially identical amounts of interferonalpha-2b maintains serum concentrations of interferon alpha-2b at a steady stateregardless of the dosing interval.”

As a result, three prior art documents were considered to take away novelty.

Pay attention when using terms like “steady state”. Define how the term is to beunderstood in the patent, in order to avoid such situations.



Imagine a granted European Patent is attacked innullity procedure in front of a German Court.

The following is about the relevance of clarity in suchproceedings.

Clarity in Nullity Proceedings (post grant, in Germany)


The German Federal Court in its recent decision „Fugenband“ issued the followingguiding principle relating to amendments in nullity proceedings:

„a) In the case of a limitation by the patent proprietor during nullityproceedings, an examination of clarity of the limited claim is, in any event,not allowable insofar as the possible unclarity was already comprised withinthe claims as granted.“ (BGH X ZR 11/13 of 27 October 2015 – Fugenband,guiding principle a))

Clarity in Nullity Proceedings (post grant, in Germany)

The Guiding Principle More Simply Expressed:

A feature comprised in a granted claim may not be examined for clarity in anullity procedure, even if the claim is otherwise amended.


The aforementioned guiding principle does not tell us, whether clarity could beexamined if the possible unclarity was introduced with the amendment.

The decision, however, emphasizes, that the claim must always be interpreted,or construed, even if the wording of the claim appears to be unambiguous (cf.BGH X ZR 11/13 of 27 October 2015 – Fugenband, paragraphs 14, 15).

Why this?

Clarity in Nullity Proceedings (post grant)


Another recent guiding principle issued by the Federal Court:

”One cannot desist from determining the subject-matter of the invention basedon the ground that a feature is undefined and (therefore) unsuitable fordelimiting the claimed invention from the prior art.” (BGH X ZR 101/13 of 9June 2015 – Polymerschaum II, guiding principle 2).


The Guiding Principle More Simply Expressed:

The subject-matter of the invention must be determined. The presence of anundefined (unclear) feature is no excuse for not doing so.


Here‘s what happened at the 1st instance:

In the case at issue, a claim directed to a process for producing a polymer foam referredto a “molten polymer composition” (used at some point in the process).

The Federal Patent Court (1st instance) had found that- the polymer composition was not further specified,- that the “molten” state was very difficult to determine, and- that polymer compositions could already be processed into a foam when not yet

molten, but in a viscous state.

Based on this, the 1st instance court had concluded that “molten polymer composition”could not serve to delimit the claimed invention from the prior art (because not clear).



Here‘s why this conclusion was wrong:

A granted claim is considered to have the same character as a law in Germany.

What falls under the scope of a granted claim is therefore a question of law.

Responding to a question of law is mandatory for the court concerned therewith, and thecourt may not desist therefrom only because the legal norm is unclear or itsinterpretation difficult (cf. BGH X ZR 101/13 of 9 June 2015 – Polymerschaum II,paragraph 25, with reference to further case-law).

The Federal Court lastly determined the meaning of “molten polymer composition” inlight of the description and examples comprised therein to encompass polymercompositions having a viscosity sufficiently minimized to be processed in an extruder.( The use of an unclear term is not always harmful for the proprietor)



Clarity remains an important issue before and after grant

Lack of Clarity in a Granted Claim does not constitute aGround for Opposition or Nullity

Clarity issues may nevertheless give rise to validity issues

The meaning of granted claims must always be determinedbefore assessing patentability (in Germany)

Clarity - Summary

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