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.

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.

No Refund of DPMA Examination Fee

In the case X ZB 11/13, the applicant had requested the refund of the examination fee for an application which had been deemed to be withdrawn when the examination hand not been started.

The BGH discusses various possible claims for refund of the examination fees including the constitution and comes to the conclusion that no statutory basis for the refund exists. In contrast to the examination fees of EPO, the examination fees are considered to be fees for formally initiating the examination procedure and not linked to any actual service being carried out.

Patentability of Cinematographic Techniques in Multi-User Games

The decision T1259/08 relates to a rejected patent application based on the problem of network delays in multi-user games.

The idea was to mask the delay by creating a distracting effect that diverts the user from the parts of the application affected by a network delay. The effect is created using a "cinematographic technique" to manipulate an image displayed to the user, sounds supplied to the user, or tactile feedback to the user. The cinematographic technique may be, for example: zooming in or zooming out; a dummy object blocking the view; an "interlude"; or switching to another scene.

In the embodiment, when either machine detects an unacceptable network delay, it switches to a close-up (zoomed in) representation of the avatars showing their facial expressions but not the blows that are affected by the delay.

The board of appeal applies a broad interpretation of "cinematographic technique" such that the latter includes so-called time warping  known from the prior art. Whether or not the time warping technique diverts the user is considered irrelevant because this feature relates to human perception.

The board further notes that the solution would not have been inventive either:

The appellant stated that the technical problem was how to deal with network delay. The technical solution was to divert the user with the effect. However, since as discussed above, this solution is a matter of human perception, it follows that it would be non-technical. Furthermore, it also follows that it would be unpredictable whether such a subjective feature would actually solve the technical problem. In this respect, the invention is somewhat analogous to showing a video clip to somebody waiting for a lift to arrive, which is also using a cinematographic technique to deal with a delay. Thus, there would be no technical solution to the problem.