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.

What is a "Normal" Dog Biting Event? - T 718/08

The main request in an appeal against the decision of the opposition division to revoke a patent amongst other grounds on Article 100(b) EPC as the patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by the person skilled in the art.

Claim 1 of the main request reads:

A chewable product (40) capable of enhancing dental hygiene in a pet, comprising a continuous phase (44) and a discontinuous phase (46) characterised in that the phase proportions are such that a force of at least 100 Newtons is required to penetrate a surface of the product (40).

In the Auxiliary request, the it was claimed that the force required to penetrate the product is greater than expected to be exerted by such pet during a normal biting event.

The methods for measuring the penetration force given in the specification made reference to a "specially constructed model tooth" of and an analysis system "designed to simulate the biting action of a dog's teeth" and to "a specially designed cone-shaped penetrometry probe of length 12mm" pushed into the product "at a rate of 2mm/s". Further geometrical details such as the cone angle of the model tooth or the probe were lacking.

The board discusses various attempts of the patentee to provide evidence for the fact that the skilled person will be able to derive suitable values for the cone angle as a matter of routine and concludes that the skilled person is unable to determine the missing cone angle on the basis of the patent and his common general knowledge. Failing a specific value of the cone angle he will be unable to reliably measure penetration force and thus reproduce the claimed invention. The invention according to the claims of the main request is thus insufficiently disclosed (Articles 83, 100(b) EPC).

This is a good example of the inescapable enablement-disclosure-trap where a drafting error turns out to be fatal many years after filing.

Farewell Handwritten Amendments at the EPO

As of January 1, 2014, the EPO does no longer accept submissions including handwritten amendments on replacement sheets of the application documents. Under Rule 86 EPC this also applies to amendments in patent specification documents in opposition proceedings.

This may be of particular relevance if the patentee wishes to submit new requests in the course of oral proceedings. According to the FAQ page:

Documents containing handwritten amendments may be used as a basis for discussion during oral proceedings until agreement is reached on the final text of the patent; a final decision granting a patent or maintaining it in amended form may only be taken on the basis of a document which is not formally deficient.


In order to assist the parties in such circumstances, the Office provides technical facilities that will allow compliance with the formal requirements while ensuring a smooth conduct of the oral proceedings at the same time.

The author of this note has always appreciated the craftsmanship involved in preparing artful collages of paper snippets and spiced op with handwritten notes and the smell of glue in the attorney's rooms. The FAQ page further explains how the new and sterile reality will look like:

Parties using their own laptops or other electronic devices to prepare amendments may rely on the EPO’s public Wireless Network, which is widely available in public areas, or printers available in the EPO. 

For parties who do not use their own electronic equipment, the EPO provides for PCs and printers in the attorney rooms as well as in many rooms used for oral proceedings. Additionally each attorney’s room is equipped with at least two PCs and one local printer. The local printer can be either used via the EPO PC or an external laptop which can be connected via USB cable to the local printer allowing direct use. 

Additionally EPO LAN printers allow for printing PDF documents directly from a standard USB stick (FAT32 filesystem). It is sufficient to stick a USB stick into the USB port of the printer on the left-hand side of the front panel. Then using the touchscreen control panel, select “Print from USB” and choose a PDF document to be printed.
State-of-the-art text editing software (such as MS Word, OpenOffice, etc.) provides for a possibility to directly save any document as a PDF file, which then can be stored on a USB stick and printed from the LAN printers.