On counting the number of inventions - T129/14

How many branches does this tree have?
Photo by Pablo D. Flores

The decision T129/14 deals with the algebra of counting the number of inventions in a single European Patent Application.

While the substantive examination procedure deals with the question whether there is one invention or zero inventions (wherein the applicant tends to advocate in favour of the greater among these numbers) the situation is opposite in the search procedure. In this early stage of the procedure, the examiner may, under certain circumstances, limit his search to the invention first mentioned in the claims. A search for further inventions is carried out only upon payment of a further search fee (this option having been introduced for the case of EURO-PCT applications only as of November 1, 2014).

The case of so-called non-unitiy a posteriori can be understood by adopting the illustrative image of a "claim tree", the examiner should start searching with claim 1 as the stem of the tree. When having found a document destroying novelty up to a branching point where the claim tree splits into different branches, these branches should be identified by defining "special technical features" shared by the claims being a part of the branch under consideration (Rule 44 EPC) and the examiner should then follow the branch first mentioned in the claims for the further search and invite the applicant to pay additional search fees for the other inventions. Failure to do so leads to foreclosure of the unsearched subject-matter for the further prosecution (Rule 137(5) EPC).

In the case underlying the decision T129/14, the examiner had  adopted a particularly captious approach to counting the number of inventions in the application. The examiner found prior art destroying the novelty of claims 1, 5, 14 and 15 as originally filed, which he considered to constitutethe unitary group of inventions first mentioned in the claims, and concluded that these claims cannot contain any special technical features in the sense of Rule 44 EPC which could potentially be shared with other claims. Amendments relating to subject-matter of claims other than those mentioned above were rejected as relating to unsearched subject-matter.

In the picture of the claim tree, the examiner reverses the tree and defines the stem as a further branch and magically increases the number of inventions by one.

Luckily, the board of appeal did not follow this approach. Claims which are anticipated by the prior art cannot include features which define a contribution the claimed invention makes over the prior art as stipulated in R 44 EPC. The application was remitted to the first instance and the appeal fee was refunded as a matter of equity in view of the fundamental procedural violations.

Thanks to Laurent Teyssèdre for having spotted this decision in his French blog here.

News on Enforcement of Standard Essential Patents under FRAND

The Advocate General Melchior Wathelet  has now issued his opinion on the case ZTE-Huawei (Case C 170/13) on the requirements on enforcement of a Standard Essential Patent (SEP).

Among other things, the Advocate General proposes to stipulate that:
the SEP holder must, in any event, present the alleged infringer with a written offer of a licence on FRAND terms and that offer must contain all the terms normally included in a licence in the sector in question, including the precise amount of the royalty and the way in which that amount is calculated.

The most surprising part in my view is the proposal that the infringer’s conduct cannot
be regarded as dilatory or as not serious during negotiations for a licence on FRAND terms if it reserves the right, after entering into an agreement for such a licence, to challenge before a court or arbitration tribunal the validity, use and essential nature of that patent.

This is likely to create conflicts with the existing German case-law unambiguously accepting the right of the patentee to terminate a license agreement for good cause if the licensee files a nullity action against the patent. In the case of a co-pending nullity suit, the principle of dolo agit, qui petit, quod statim redditurus est (foreclosure to claim something the claimant would have to return immediately because the corresponding counterclaim exists) therefore forecloses the licensee from forcing the patentee into an agreement which could then be terminated by the patentee immediately.
A comment by Colm Ahern can be found here.

The full text of the opinion can be found here.

The Orange Book Standard is discussed e.g. here.

No difference between "to contain" and "to comprise" - T 0056/08

The words "comprising", "consisting of" or "containing" count among the most discussed words in the patent-related case-law.

In the decision T 0056/08 here, the respondent/opponent had argued that an amendment from "to comprise" to "to contain" infringes Art. 123(2) EPC.

Respondent's argument that the verb "to contain" has a more restrictive meaning than the verb "to comprise", the Board would point out that the general meaning of the verb "to contain" is "to have in it", "to hold", "to include", "to encompass" or "to comprise". 

Therefore, the Respondent's argument cannot be accepted.

No Copy & Paste of Preliminary Opinion - T 1312/10

In the decision on the basis of the appeal T 1312/10, the Examining Division of the EPO had merely copied the reasoning given annex to the summons to oral proceedings and did not discuss the additional arguments filed in response thereto in arriving at its decision to refuse the application.

The Board judges that this constitutes a substantial procedural violation and ordered that the appeal fee be refunded although a refund was not even requested. The Board of appeal was very assiduous not only in this point but further introduced new documents D4 and D5 into the procedure (wherein D5 was not even prior art) but finally found that the claim 1 complies with the substantial requirements of the EPC.