Clarity in Europe and Germany The following slides are based on a - PowerPoint PPT Presentation

Clarity in Europe and Germany

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 2

People at Patronus IP Dr. Markus Zoller Bernhard Ganahl Master of Science Dipl.-Phys. European Patent Attorney European Patent Attorney Patentanwalt Patentanwalt Christian Himmler Dr. Dominique Trösch Dipl.-Ing. Dipl.-Chem. European Patent Attorney European Patent Attorney Patentanwalt Jan Robert Naefe Veronika Schwepler Lawyer Dipl.-Ing. (Material Science) European Patent Attorney Patentanwalt Dr. Dominique Trösch, May 2016 3

Speaker 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. Dr. Dominique Trösch, May 2016 4

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 Dr. Dominique Trösch, May 2016 5

Clarity under the EPC Legal Background Art. 84 EPC The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description . Dr. Dominique Trösch, May 2016 6

Clarity under the EPC “The purpose of claims under the EPC is to enable the protection conferred to be 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 features needed to define the invention, and that - the meaning of these features should be clear for the person skilled in the art from 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) Dr. Dominique Trösch, May 2016 7

Clarity under the EPC 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 the scope of the claim is clear and unambiguous for the skilled person Dr. Dominique Trösch, May 2016 8

Clarity under the EPC 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 has a 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 the description, 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 was considered to contravene Art. 84 EPC, because the remaining features of the claim did not comprise all the features necessary for achieving good matchability. Dr. Dominique Trösch, May 2016 9

Clarity under the EPC Note the catchword of this decision: “If an independent claim contains a feature defined by a result to be achieved which essentially corresponds to the problem underlying the application, to comply with Article 84 EPC 1973 the remaining features of the claim must comprise all essential features necessary for achieving that 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 not related to the objective technical problem solved. Dr. Dominique Trösch, May 2016 10

Clarity under the EPC 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 often considered 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 having regard to the invention. Equally, an unclear term cannot be used by the applicant to distinguish his invention from the prior art. (Guidelines, F-IV.4.6) “about” or “approximately” only admissible if it does not prevent the invention from being unambiguously distinguished from the prior art (Guidelines, F-IV.4.7) Dr. Dominique Trösch, May 2016 11

Clarity in Opposition Proceedings (post grant) Imagine a granted European Patent is being opposed. The following is about the importance of clarity in such proceedings. Dr. Dominique Trösch, May 2016 12

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) Dr. Dominique Trösch, May 2016 13

Clarity in Opposition Proceedings (post grant) 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) Dr. Dominique Trösch, May 2016 14

Clarity in Opposition Proceedings (post grant) Clarity is still important in Opposition Proceedings clarity is important both insofar as the claims (1) get amended; and (2) remain unchanged. Dr. Dominique Trösch, May 2016 15

Clarity in Opposition Proceedings (post grant) Art. 101 EPC: (3) If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates (a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, …; (b) do not meet the requirements of this Convention, it shall revoke the patent. including Clarity (Art. 84) Dr. Dominique Trösch, May 2016 16

Clarity in Opposition Proceedings (post grant) “taking into consideration the amendments” What does this mean? To which extent may the Opposition Division reexamine clarity of a granted claim which was amended? undisputed: amendments possibly introducing a lack of clarity which did • previously not exist in the claim what about other amendments? • Dr. Dominique Trösch, May 2016 17

Clarity in Opposition Proceedings at the EPO “taking into consideration the amendments” 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 itself was not amended) (c) on a case-by-case basis, as a matter of discretion, if amendment is sole feature 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 T 459/09) (e) unrestricted examination of amended patent as a whole due to the amendment Dr. Dominique Trösch, May 2016 18

Clarity in Opposition Proceedings at the EPO Enlarged Board, G 3/14, OJ EPO 2015, A102, p. 2, catchword: Dr. Dominique Trösch, May 2016 19