My french blogger friends Oliver Randl of K’s-law and Laurent Teyssèdre of Le blog dudroit européen des brevets have both reported an interesting decision of the EPO board of appeal dealing with the often frustrating question allowability of an amendment under Art. 123(2) EPC.
The patent related to the use of a preservative for food products, “wherein the preservative is added to such food products at a concentration from 0,006% to 0,015%” (cited from claim 1 as amended).
The upper- and lower limits of this concentration range were taken from different examples where the preservative was used for different types of food products.
I presume that most people would guess that this amendment is not allowable as it combines features from different embodiments. However the board Z 3.3.09 allowed the amendment. Why?
Here is the essential part of the argument (reasons, 2.1):
In order to assess whether this new range complies with A 123(2) it has to be considered whether a skilled person, in analogy to T 201/83, would generalise these values in the sense that he would recognise them as not only associated with the specific food products and temperatures used in the examples.
In this context, it emerges from table 1 of the application as filed that LAE as preservative is active against a number of gram-positive and gram-negative bacteria as well as fungi and yeast. It is furthermore stated on page 1, lines 4 to 5 from the bottom that “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products”. From this the skilled person would therefore recognise that the preservative effect of LAE is universal and not limited to specific bacteria and food products."
I am pleased to see that at least one board appears to argue technically rather than linguistically when it comes to 123(2) EPC.
Indeed, the alarm bells of the examiners are usually set off when the "skilled person" is invoked for disclosure.
However, what is "clearly and unambiguously" disclosed in a text depends on the reader and his background knowledge. The case law is very clear in that the disclosure original documents has to be viewed through the eyes of the skilled person - and not even any ordinary skilled person but a skilled person with the famous "mind willing to understand and not with the mind desirous of misunderstanding". Decisive is what this person in this state of mind understands and whether or not this understanding is unambiguous.
I think that this is disregarded too often when the allowability of amendments is discussed.
My impression not only from this decision but as well from a decision of the BGH reported here is tha the case-law both at the EPO and in Germany goes into the direction that a combination or sub-combination of features is considered to be disclosed in an individualized way and "as an invention" (rather than as an arbitrary selection) if the notional skilled person may clearly and unambiguously derive technical advantages of that specific combination or sub-combination from the documents as a whole. In the above case, it was the sentence “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products” that has saved the case.
This should have, according to my personal opinion, a strong impact on how to draft patent specifications in the future. Sub-combinations disclosed without mentioning specific advantages thereof are pointless and mentioning many advantages applicable to sub-combinations is essential and creates valuable disclosure.