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Information 3 16

Institut der beim Europäischen Patentamt zugelassenen Vertreter

Institute of Professional Representatives before the European Patent Office

Institut des mandataires agréés près l’Office européen des brevets

ISSN 1434-8853 September 2016

®

5 95th Board Meeting in Haarlem

9 Considerations about the Code of Conduct for UPC representatives

10 Toujours la politesse

21 A Review of the “Problem and Solution” Approach to Inventive Step under Article 56 EPC, Part 3

27 Limits of a Limited Opposition

30 Thoughts About the EQE, Part 2

34 The Problem and Solution Approach – Basic Case Law andRecent Development, Part 1

44 Evaluation of Claim Amendments

J owi Burger (68), European PatentAttorney from the Netherlands, is

painting since 1991 next to his legalactivities on intellectual propertyrights. He studied mechanical engi-neering and industrial design atDelft University and after militaryservice studied chemistry, pharma-cology and IP law at Leiden Univer-sity and Free University Amsterdam.Painting and designing not only givehim much joy but also have provento be a source of inspiration for hislegal work. He focusses on abstractpainting but also paints portraits and“en plein air“ works. Inspired by theart of drafting claims of patent appli-cations, Jowi decided to seek pre-ferred embodiments in his paintings.The pictures shown on his website(http://jowiartpreferredembodiments.blogspot.de/) reveal the surprisingwealth of pictures extracted from hispaintings that may be regarded“main claims”.

Jowi Burger (68), zugelassener Ver-treter vor dem Europäischen Patent-

amt aus den Niederlanden, maltbereits seit 1991 neben seiner berufli-chen Tätigkeit in Rechtsfragen zu gei-stigem Eigentum. Er studierte Maschi-nenbau und Industriedesign an derUniversität Delft und nach seinem Mili-tärdienst studierte er Chemie, Phar-makologie und IP Recht and der Uni-versität Leiden und der FreienUniversität Amsterdam. Das Malenund das Designen bereiten ihm nichtnur sehr viel Freude, sondern habensich auch als eine Quelle der Inspirationfür seine Arbeit herausgestellt. Er kon-zentriert sich auf abstrakte Malerei,malt aber ebenso Portraits und soge-nannte „en plein air“ Bilder. Inspiriertdurch seine Arbeit, dem Formulierenvon Patentansprüchen, hat Jowibeschlossen, vorzugsweise Verkörpe-rungen derselben in seiner Malereiauszudrücken. Die auf seiner Webseite(http://jowiartpreferredembodiments.blogspot.de/) präsentierten Bilderoffenbaren den erstaunlichen Reichtuman Bildern, die seinen Gemälden ent-nommen wurden und als „Hauptan-spruch“ angesehen werden können.

Jowi Burger (68), mandataire agrééprès l'office européen des brevets,

originaire des Pays-Bas, s’adonne à lapeinture depuis 1991, parallèlementà ses activités jurdidiques sur les droitsde la propriété intellectuelle. Il a étudiéle génie mécanique et le dessin indus-triel à l’université de Delft et, aprèsson service militaire, il a étudié la chi-mie, la pharmacologie et les droits depropriété intellectuelle à l’universitéde Leyde et à l’université libre d'Ams-terdam. La peinture et le dessin ne luiprocurent pas seulement beaucoupde joie mais se sont révélés être dessources d’inspiration pour son travailjuridique. Il se concentre sur la pein-ture abstraite mais peint égalementdes portraits et des œuvres “en pleinair“. Inspiré par l’art d’établir desrevendications de demandes de bre-vets, Jowi a décidé de chercher desincarnations dans ses peintures. Lespeintures exposées sur son site internet(http://jowiartpreferredembodiments.blogspot.de/) révèlent la surprenanterichesse des peintures extraites de sesœuvres qui peuvent être considéréescomme des “revendications princi-pales”.

Jowi Burger

Cover:III Claim 6This picture painted byMr. Jowi Burger (European Patent Attorney, NL) was part of the epi Artists Exhibition 2015 at the EPO, Munich

Information 03/2016 Table of Contents 3

Editorial . . . . . . . . . . . . . . . . . . . . . . . . . 4

I – Information concerning epi

95th Board Meeting in Haarlem on 10th September, 2016. . . . . . . . . . . . . . . . . 5Report of the Oral Proceedings before the EnlargedBoard of Appeal in case G 1/15, by R. Jorritsma . . . . 6Considerations about the Code of Conduct for UPC representatives, by G. Checcacci . . . . . . . . . . 9Conflict of Interest, by P. Rosenich . . . . . . . . . . . 10Toujours la politesse, by C. Mercer . . . . . . . . . . . 10Workshop on the Technical Implementation of the Unitary Patent, by Y. Biron . . . . . . . . . . . 12

Committee Reports

Report of the European Patent Practice Committee (EPPC), by F. Leyder. . . . . . . . . . . . . 14Report of the Litigation Committee, by A. Casalonga. . . . . . . . . . . . . . . . . . . . . 16

Education and Training

Forthcoming Educational Events . . . . . . . . . . . . 17Flexible epi Tutorials . . . . . . . . . . . . . . . . . . 17Milestone: more than 1000 patent attorneys attended the Opposition and Appeal Seminars . . . . 18

Information from the EPO

The eDrex tool – leaving dinosaurs behind, by H. Pihlajamaa, EPO Director Patent Law . . . . . . 19Contact Data of Legal and Unitary Patent Division . . 20

Information from the Secretariat

Election to Council 2017 . . . . . . . . . . . . . . . . . 4Next Board and Council Meetings . . . . . . . . . . . 16Deadline 4/2016 . . . . . . . . . . . . . . . . . . . . 20epi Disciplinary bodies and Committees . . . . . . . . 50epi Board . . . . . . . . . . . . . . . . . . . . . . . . 54

II – Contributions from epiMembers and other contributions

Articles

A Review of the “Problem and Solution” Approach to Inventive Step under Article 56 EPCPart 3 – Modifying the Comvik Formulation of the Problem, by A. Kennington . . . . . . . . . . . 21Limits of a limited opposition - Part II, by Dr. L. Walder-Hartmann . . . . . . . . . . . . . . . 27Thoughts about the EQE – Effectiveness of EQE Training - Part II, by B. Cronin . . . . . . . . . 30The Problem and Solution Approach – Basic Case Law and Recent Development (Part I), by M. M. Fischer . . . . . . . . . . . . . . . . . . . . 34Evaluation of Claim Amendments, by S. Adams . . . . 44

Letter to the Editor

Computing time limits under the EPC, by F. Leyder . . 49

Table of Contents

The result of the UK Referendum on EU membershipis in, the great British public having voted ‘out’, in

what has become known as Brexit. There will be manyissues to resolve before the UK finally leaves the EU post- Brexit, and IP will certainly not be immune fromthem.

One thing is certain. The UK will remain a MemberState of the EPC, no matter what is decided on theBrexit front. However, we have heard of rumours beingput about that the UK, and hence our British members,will have no future in the EPC, which as our readersknow is not an EU creation and so has nothing to dowith Brexit. We feel it regrettable that terminologicalinexactitudes such as these rumours are put about andcan, again regrettably, gain credence by repetition. Wefeel confident that our Institute will quash such inaccu-rate rumours, to the benefit of the membership as awhole.

Reverting to Brexit, negotiations regarding the future ofthe UP and UPC will however continue post-Brexit. It shouldbe borne in mind that despite the Brexit vote, the UK isstill a part of the EU, and will remain so until a final EU exitstrategy is agreed with the other Member States. Suchagreement may well not be reached until 2019-2020. Witha fair wind and national resolve, the UPC for examplecould be ratified before the UK formally leaves the EU.Measures would need to be agreed between the EU mem-ber states and the UK government as to how the UK woulddeal with the (ratified) UPC after exiting the EU. Govern-ments will decide, but if our proposition comes to pass,we would hope that such measures would be simple,transparent and proportional, to provide certainty for allusers of the system going forward from say 2020.

In our view Brexit does not mean ‘put the brakes on’ theUP or UPC, rather ‘let’s move forward’. We wish the nego-tiators well!

Editorial

T. Johnson (GB), Editorial Committee

Information 03/2016Editorial4

Election to Council 2017

At the beginning of next year, the Council of theInstitute is due to be elected for its new term. You

can declare from 1st October 2016 – 1st November2016 according to the Rules for Election to Council thatyou are ready to stand for election or for re-election tothe Council. This time your nomination can be doneonline through the epi website. The instructions how tolog-in on the epi website can be found here: http://patentepi.com

Alternatively, if the online nomination is impossible foryou, you can use the nomination paper form that willbe sent to you by 1st October 2016.The usual case is that you stand for election in your ownconstituency, corresponding to your address registered atthe EPO. Your constituency is the State party to the EPCin which you have your place of business or employment.

The election shall be by remote e-voting. You shall receiveon 15 January 2017 at the latest, a web address for asecure website, and a personal password from our inde-pendent voting service provider. The epi Secretariat willsend you a ballot paper by post if remote e-voting isimpossible for you.

You can request the ballot paper by returning a corre-sponding form that you will receive together with thepaper nomination form mentioned above. The formmust be received by the epi Secretariat at the latest on1st November 2016.

If you have any questions, please contact the epi Secretariat as follows:Tel +49 89 242052 0 or email: [email protected]

Information 03/2016 Information concering epi 5

The 95th meeting of epi’s Board took place on 10th

September, 2016 in Haarlem (NL). The Presidentopened the meeting by welcoming the Board members.The minutes of the 94th Board Meeting were adopted with minor amendments. The Secretary General, Mr Pereirada Cruz, on behalf of Mr Markus Müller (Chair of the Elec-toral Committee), briefed Board about the next Councilelections and on the ongoing Belgium vote on the splitconstituency, which resulted on a change from non-unitaryto unitary. Mr Boff informed the Board about an ongoinguser consultation launched by the EPO on fee payments.The EPO Finances Committee will draft a response to theconsultation which will be further communicated to allepi members. After a discussion on the Brexit led by MrChris Mercer and Mr Jim Boff, Board agreed to send a

letter to the EU Council on the occasion of the forthcomingCompetitiveness Council scheduled for next 29th Septem-ber, expressing the epi views on the UPC/UP ratificationand implementation. Mr Durán-Moya and Mr Leyder, onbehalf of the Reporting Group, presented to Board someworking recommendations for Presidium, Board and Coun-cil as well as proposals to implement electronic voting forCouncil decisions. The President updated the Board aboutthe ongoing reform of the EQE. Mr Leyder, as Chair of theEPPC, gave a presentation on EPO prosecution focused onthe 3-speed system.

The Board meeting was followed by an official receptionand dinner on Saturday with guests and IP experts fromthe Netherlands.

95th Board Meeting in Haarlem on 10th September, 2016

A. Faivre (epi Secretariat)

Information 03/2016Information concering epi6

The chairman opened the proceedings by introducingthe case and parties involved. He recited the referred

questions (see below) and indicated that the Board wasfamiliar with the issues at stake, and had taken due noteof the numerous (over 40) amicus curiae briefs.

The case was considered admissible. The chairman furtherindicated that the appellant, opponent and EPO were giventhe floor in that order, in two rounds, and that members ofthe Board might ask questions afterwards. He wanted the5 questions to be dealt with without being split, becauseof the close interdependence of the questions. He repeatedthe 5 questions (the full questions can be found in thedecision T557/13).

The questions (in summary):1. Can partial priority for alternative subject matters be

refused at all?2. If yes, is proviso of 6.7 of G2/98 (limited, clearly

defined) to be used as a test?3. If yes to Q2, how to interpret “limited” and “clearly

defined”?4. If no to Q2, what is the test?5. If yes to Q1, can divisional be held against parent (or

vice versa) under A54.3?

The patentee/appellant comprehensively (1.5 h) set out hisposition. This position fully corresponds to what many inter-ested parties (at least epi and some other organisations)have argued.

Some of his arguments:

– General interest: most inventions are developed furtherafter the first filing. If a second, improved, filing hasintrinsic risks of the poisoning type, such inventions willnot be protected well and active innovators are thuspunished. This is increasingly relevant because ofincreased collaboration in innovation and henceincreased demand for careful management. Self-destruction when there is no interference by others iswrong.

– Legislation, direct and indirect (interpretation): Vienna,Paris, with the explanations by Bodenhausen, EPC,Travaux Préparatoires including FICPI 1973 Memoran-dum C, which links Paris to EPC A88. Conclusion: Partial(multiple) priorities are allowed, and intended to haveeffect only for the applicant; they cannot give rise toany right of third parties.

– Disclosure test: this should be applied along the sameprinciples of conceptuality as the novelty test. It is wrongto apply an additional test (literal, spelled-out) only topriorities. The conceptual approach is the right one.

– G2/98, in particular section 6.7 (the famous proviso):The question is whether it was intended as a new testfor acknowledging multiple priorities or not. We haveno clue, since the decision does not explain why theproviso was made, it was not necessary for answeringthe question at stake, and there was no problem to besolved. So, we must assume it was not intended by theEBoA as an extra test. If it was, it was against the legis-lation and the legislators’ intentions. T1222/11 is help-ful.

– A54.3 (Q5): a divisional is not changed compared tothe parent, as to its maximum content; and it is thesame from its background as the parent; only in its fur-ther examination it is treated differently, on its ownmerits. Therefore it cannot be a(nother) “Europeanapplication” in the sense of A54.3.

– The respondent also notes that the EPO President largelyagrees with his views as does the vast majority of theamicus curiae briefs.

Some of the arguments of the respondent/opponent(much was an argued disagreement with the appellant’sarguments).

Report of the Oral Proceedings before the Enlarged Board of Appeal in case G 1/15

R. Jorritsma (NL)

Date: Munich, 7 June, 2016 Composition of the Board:W. van der Eijk (chair)C. Vallet (Ms.) (legal; rapporteur)P. Carlsson (legal, external)I. Beckedorf (legal)F. Blumer (legal)W. Sieber (technical)H. Meinders (technical)Appellant/Proprietor: Infineum USA L.P., represented by Richard HartRespondent/Opponent: Clariant Produkte, represented by Klaus MikuleckyOther party: President EPO, represented by two EPO officials

The case was referred by Board of Appeal 3.3.6 (B. Czech) in T 557/13.

– Paris only rules that priority of an application (whenfiling; not of a patent later on) cannot be simply refusedbecause the contents are not identical. Paris does notprovide an absolute right to multiple priorities. This isnot against Travaux Préparatoires and Memorandum,since it does not abolish the allowability of generic or-claims, but only reduces it.

– Full applicability of partial (multiple) priorities is unde-sired, following the interpretation of the law and caselaw, because it leads to double patenting.

– A conceptual approach for assessing partial priority iswrong, because the law, and in particular G2/98, pre-scribes a strict approach.

– Proviso of G2/98 6.7 (limited number, clearly defined)is to be followed.

– Partial priority cannot apply when ranges are involved,because ranges are, by nature, a collection of an infinitenumber of embodiments, against the proviso of G2/986.7.

– The FICPI Memorandum C would show, at III, where itdeals with later amendments in some countries, thatfull applicability of partial priority was not intended bythe legislators.

– A divisional is, according to the convention (A76), adifferent application from the parent, and therefore itcan be a conflicting application under A54.3. It wasalso meant to be so in order to limit a practice ofdouble patenting.

– Even if the intentions in the 1970’s were to accept par-tial priority, times have changed, and there would nowbe a need to put a limit to it.

The representatives of the EPO President argued inessence:

– Multiple priorities are frequent, especially in pharmaand chemistry and the present case will have a signifi-cant impact. The interested circles need legal certaintyand predictability of the system.

– A literal approach would depart from the EPO princi-ples.

– A literal approach would not lead to legal certainty,because it would compel applicants to draft complexclaims. Claims need not only be complete, but alsoclear and concise.

– It should be possible to discern multiple alternatives(and priorities) from a claim.

– A conceptual approach raises concern with alterna-tives.

– A conceptual approach does not imply an automatismin acknowledging priority for generic or-claims (inresponse to respondent)

– A divisional is, for the purpose of A54.3, not a differentapplication from the parent since it has the same historyand does not go beyond the content of the parent (inresponse to the respondent).

Then members of the Board asked some questions tothe parties:

Meinders: assuming that alternative subject matter hav-ing different properties would have to be spelled out,should applicant have a duty to explain it? (no clearanswers from the parties, although respondent showedsome support of yes).

Sieber: (to respondent): is a later broader claim after anearlier narrow claim objectionable for double patenting?If it is, this is not specific for priority situations, is it?(answer: sort of yes; no, indeed); (to the office): is it the conceptual approach or the literalapproach that should prevail? (answer: conceptual)

Beckedorf: (to respondent): what about requirement tospecify alternatives later on? (answer: not only formalrequirement but more, priority requires same invention,which is identical invention. If differences, then newinvention, no priority)

Van der Eijk: (to respondent): what is difference in real-ity? hasn’t assessment of disclosed subject matterchanged? (answer: could be)

Blumen: (to respondent): Is FICPI Memorandum C IIIreally to be understood as not supporting alternativesbeing claimed together? (no clear answer)

Van der Eijk: (to respondent): what precisely has changedin the last 40 years that would necessitate differentapproach? (no clear answer).

The chairman closed the oral proceedings by announcingthat the Board would render its decision in November2016 at the latest.


I n the long path towards UPC, an interesting step is thedefinition of the code of conduct for representatives.

Since the beginning of July, it is possible to download adraft code of conduct from the website of the UPC, seehttps://www.unified-patent-court.org/file/112/download?token=RUCko2XM.This draft is the result of a joint effort of epi together withEPLAW (a private association of European patent lawyers:http://eplaw.org) and EPLIT (a private association of Euro-pean patent litigators: http://www.eplit.eu). It is not yet acode, as only the future Administrative Committee of theUPC will have the power to adopt a code of conduct,when UPC eventually comes to life. This might mean yearsfrom now, and besides there is no guarantee that theAdministrative Committee will actually adopt this draft asthe code of conduct; nevertheless reading this draft is aninteresting and after all short- exercise.

The first interesting aspect of this draft code is merelypolitical: its provisions will apply equally to UPC represen-tatives under art. 48(1), i.e. the lawyers, and UPC repre-sentatives under art. 48(2), i.e. the European Patent Attor-neys allowed to represent. So, after the milestoneconstituted by art. 48(2) itself, this draft code is a furtherstep towards a better recognition of the equal dignity ofour profession in the field of patent litigations.

When considering the actual provisions of the draft code,it is necessary to start from the framework already definedby the UPC Rules of Procedure, in particular rules 290.2and 291.1:

Rule 290.2: Representatives who appear before the Courtshall strictly comply with any code of conduct adopted forsuch representatives by the Administrative Committee.

Rule 291.1: If the Court considers that the conduct of aparty’s representative towards the Court, towards any judgeof the Court or towards any member of the staff of theRegistry is incompatible with the dignity of the Court orwith the requirements of the proper administration of jus-tice, or that such representative uses his rights for purposesother than those for which they were granted, or that suchrepresentative is otherwise in breach of any code of conductadopted pursuant to Rule 290.2 it shall so inform the personconcerned. On the same grounds, the Court may at anytime, after having given the person concerned an opportu-nity to be heard, exclude that person from the proceedingsby way of order. That order shall have immediate effect.

In simple words, rule 291.1 already defines a disciplinarybody (the Court itself) and a sanction for behaviours inbreach of the code of conduct (exclusion from the pro-ceeding), as well as a disciplinary procedure (information –opportunity to be heard – order).

This is something dramatically different from what weare used to within epi. The sanction consisting in theexclusion from the proceeding is potentially very hard forthe specific case, however not so much on the personalrecord of the representative; indeed, there is no suchrecord, and -in principle- a representative might repeatedlybreach the code of conduct without any direct conse-quences on his ability to address clients. One might argueabout the lack of any “social effect” of a disciplinary system like this, that does not give the public any sort ofguarantee about the quality of the service provided by arepresentative, but this goes beyond the purpose of thisarticle.

It is to be noted that Rules 290 and 291 do not excludethat (further) disciplinary bodies and sanctions are definedby the code of conduct; however, the present draft codedoes not include anything like that.

The draft code is accompanied by a memo that givessome explanations about the process by which the draftcode was defined. Inter alia, it is explained that someimportant aspects (e.g. conflicts) had to be left out ofthe draft code because of the difficulties in coordinatingwith existing national provisions: lawyers do not have aunified European profession; rather, they are subject tonational laws. The memo also seems to keep a door open in respect of the possible future introduction of adisciplinary body; for the time being, however, there isjust a reference to national and epi provisions.

The draft code itself is divided in four sections:1 – Field of application2 – General conduct3 – Dealings with Witnesses and Party Experts4 – Change of representation

In the first section (Field of application), it is stated thatthis code applies to all activities of all representatives inrelation to the UPC. There is also an explicit reference topossible other existing codes and laws and to their possi-ble disciplinary measures. This reference means that theobligations of this code must be seen as additional obli-gations with respect to existing other obligations, that

Considerations about the Code of Conduct for UPC representatives

G. Checcacci (IT), PCC



remain valid (as far as applicable) and will be treatedaccording to the respective laws and codes: for EuropeanPatent Attorneys, this means that epi disciplinary provi-sions apply, and indeed they are under revision in thesemonths in order to clearly define their application to UPC-related activities.

In the second section (General conduct), six subsectionsaddress different aspects of the conduct.

A first aspect is relationship with the Court (judges aswell as registry staff): respect, courtesy, competence(based on education), reputation of the respective pro-fessional association (e.g. epi) are the keywords here. Itrust that this is not surprising for anybody. A noteexplains that the reference to competence shall not beintended as a basis for imposing any formal requirementfor Continuing Professional Education.

A second aspect is the conduct of the proceedings, thatmust be fair. Here, good faith and non-abuse of the pro-cedure are the keywords; again, no surprise. A possiblyunexpected provision is the obligation to be reasonablyaccommodating and flexible regarding scheduling androutine matters: this seems an obligation for which Euro-pean Patent Attorneys might have to be a bit more carefulthan they are used, e.g. in opposition proceedings beforethe EPO.

A third aspect relates to contacts with judges, that mustbe limited to situations where the other parties also par-ticipate (or give their consent).

A fourth aspect is demeanour in Court and this includesseveral obligations. The representative must serve theinterests of the clients, without regard to personal feelingsor interests. Courtesy must be applied also in respect ofother representatives, accompanying persons, parties,witnesses and experts, and a representative is responsiblefor taking appropriate steps to ensure that any accom-panying person behaves appropriately. This latter obliga-tion, however, does not seem to imply that a representa-tive is responsible for misbehaviours of accompanyingpersons.

A fifth aspect is misleading information. Preliminarily, itmust be kept in mind that a strong obligation not tomisrepresent a case or facts is already included in art.48(6) UPCA. Here, it is added that the representativemust seek client's consent to inform the Court if he/shebecomes aware of any inadvertently misleading infor-mation. This is not intended to introduce a US-styleinequitable conduct doctrine (as explained in a note tothe draft code); however it seems a quite strong obliga-tion.

A sixth aspect somehow rules confidential information:in case a representative in the course of a proceeding,

e.g. inspection of premises- gets knowledge of informa-tion not related to the case, he/she must neither use nordisclose that information to anybody, including the client.

In the third section of the draft code (Dealings with Wit-nesses and Party Experts), three aspects of such dealingsare ruled.

The first aspect relates to information on legal obligationsand provides that the representative has the burden ofkeeping experts and witnesses informed of their obliga-tions, in particular obligation of impartiality.

The second aspect relates to contacts with witnesses andparty experts: they can be contacted only in limited cir-cumstances and in a way that their opinions are not influ-enced.

The third aspect rules the possible compensation for wit-nesses and party experts.

Ultimately, all provisions of this third section of the draftcode derive from the fact that both witnesses and experts(even party experts) have the same duty of impartiality,as provided by the RoP, rules 175-181: the conduct ofthe representative must be such as to ensure that thisduty is respected.

Finally, the fourth section (Change of representation)define that the former representative must both informthe UPC Registry of the change and transfer or copy doc-uments to the new representative.

This is the content of the four sections of the draft code.Then, one might look for what is not contained in thedraft code, and here the list might be long.

In short, it might be said that any provisions similar tothose of epi code of conduct (such as advertisements orrelations with the public, with clients, with other repre-sentatives) are excluded from this draft code. Represen-tatives who are epi members will have anyway the dutyto comply with epi code of conduct; other representatives(i.e. lawyers) might have to comply with national code ofconducts, depending on their place of business. Thismeans that in practice representatives will not be subjectto the same obligations: all of them will be subject to theminimum obligations of the UPC code of conduct (whichis a good point), however each representative might besubject also to other obligations depending on the coun-try and on the official association to which the represen-tative belongs (which is certainly not the best).

Thus, this situation is well acceptable now, at the begin-ning of UPC operation. However, we can legitimatelyhope that later, after some time, the code of conduct isrevised, to obtain a better uniformity of provisions amongall representatives, in all associations and in all countries.

Conflict of interest

P. Rosenich (LI), Chair Disciplinary Committee


The Chairman of the Disciplinary Committee PaulRosenich is of the opinion that the latest Decision of

Chamber Dina Korper is of general Interest to the epiMem-bers. For that reason a summary of said decision preparedby the Chairman is published.

Summary of the complaint and the defense

The complainant was of the opinion that the defendantbreached Art. 4(f) of the Code of Conduct of the Instituteof Professional Representatives (CoC) and Art. 3 (2) of theRegulation on discipline for professional representatives(RD) because the defendant was previously the representa-tive of a national part of a European Patent of which Euro-pean Patent the defendant later represented the oppo-nent.The defendant proved to the satisfaction of the Chamberthat only administrative tasks were performed for the pat-entee on the national level of procedures. Furthermore,the defendant had - apart from the publicly available infor-mation - no knowledge of the matter due to the restrictedinvolvement of the defendant’s IP-law firm.

Decision

From the wording of the relevant provisions (see below)the Chamber found that they are directly aimed at punish-ing the use/disclosing of confidential information acquiredwhile dealing with a “particular matter” entrusted by aclient, as long as such information does not belong to thepublic domain. Accordingly, as a “particular matter” shouldbe understood a substantial work – e.g. drafting a specifi-cation, since this activity provides insider knowledge oneventual weaknesses of a patent. Clerical work, such asacting as a “mail box” of the client at a national patentoffice or translating published patent specifications, whichholds only information which are fully accessible by the

public however does – according to that Chamber – notfall into the meaning of “a particular matter”. The definitionof “particular matter” is corroborated by the relevant pro-vision of Art. 2 of the RD, which refers to informationacquired from the client “in confidence”.The Chamber of the Disciplinary Committee has thereforedismissed the complaint.

Relevant Regulations

Art. 2 (RD) “Professional secrecy”: A professional represen-tative shall be bound not to discloseinformation accepted by him in confidence in the exerciseof his duties, unless he is released from this obligation.Article 3 (RD) “Special provisions on conduct towardsclients” § 2: A professional representative shall refuse orwithdraw his services if acceptance or continuation wouldnecessitate his dealing with a particular matter on whichhe has represented or advised another client with opposinginterests and the conflict has not been resolved.According to Art. 4(f) (CoC) “Relations with Clients”: Sup-plementary to Art. 2 and 3 (RD), a member shall not takeany action against a particular matter which is being han-dled or has been handled by the Member or another personin his office, unless the client in the matter agrees to thisaction or unless the Member has no cognizance of thematter and is no longer in a position to take cognizance ofit. The Member is not permitted to make use in the actionof information obtained during the time the matter waspreviously handled, unless the information is public.

The Chairman of the Disciplinary Committee reminds theepiMembers that Chambers of the Disciplinary Committeeare – like Chambers of the EPO Boards of Appeal - inde-pendent in their Decisions and that Appeals are open onlyfor the Defendant and the President of the EPO as well asthe President of the epi.

In an earlier article (see epi Information 2/2008), I reported on a meeting with members of the Boards

of Appeal at which the question of non-attendance atoral proceedings was raised. As a result of that meeting,I wrote that, as a matter of professional courtesy andgood practice, any party intending not to attend an oral

proceedings should inform the Appeal Board as soon aspossible.

It now appears that non-attendance at oral proceedingsis also becoming a problem for Examining and Opposi-tion Divisions.

Toujours la politesse

C. Mercer (GB)


Non-Attendance at Examining Division OralProceedings

The EPO is getting worried that, in an increasing numberof cases, the applicant fails to attend oral proceedingsbefore an Examining Division which have been arrangedat the applicant’s request. This causes difficulties for theExamining Division and in particular can mean that theExamining Division has to spend time and effort in deal-ing with a case in which the applicant has no interest.As a matter of professional courtesy and good practice,any applicant intending not to attend an oral proceed-ings must inform the Examining Division, and must doso as soon as possible. In the majority of cases, thisoccurs. It should occur in all cases. However, even wherethe Examining Division is informed, there can still beproblems.

Even if the applicant indicates that it will not attend theoral proceedings, the applicant may not indicate whetherthe request for oral proceedings has been withdrawn.Unless the applicant withdraws the request, the Examin-ing Division will have to continue with the oral proceed-ings.

If the applicant indicates that it withdraws its request fororal proceedings, the Examining Division will still not knowwhether the applicant is interested in the application. Ifthe applicant is no longer interested, it would be of greatassistance to the Examining Division for the applicantactively to withdraw the application. If the applicant is stillinterested in the case, it would also be helpful for theapplicant to indicate that it requires a decision accordingto the state of the file.

In some cases, as indicated in the headnote of T3/90, iforal proceedings are appointed as a result of a party’srequest for such proceedings on an auxiliary basis, and ifthat party subsequently states that it will not be representedat the oral proceedings, such a statement should normallybe treated as equivalent to a withdrawal of the requestfor oral proceedings.

Applicants should also consider seriously whether, havingrequested oral proceedings, not turning up is a goodoption. If the application is refused and the applicantappeals with amended claims, it is possible that the Boardwould reject the claims as inadmissible as they were notsubmitted, as they could have been, to the Examining Divi-sion (see Article 12(4) RPBA).

The normal result of non-attendance at oral proceedingsleads to an overall inefficiency in the examination proce-dure. It certainly does not convey the impression that theapplicant is interested in the outcome of the case. It is dif-ficult for the Examining Divisions to deal with cases morequickly if they have to hold oral proceedings on cases inwhich the applicant has no interest.

Non-Attendance at Opposition Division OralProceedings

It is also the case that a party to an opposition decidesnot to attend oral proceedings before an OppositionDivision without giving notice or only giving notice late.This can lead to significant wasted costs if the party hadrequested translation and wasted effort if the preliminaryopinion of the Opposition Division was clearly againstthe non-attending party. The Opposition Division canaward the costs incurred by the other parties againstthe non-attending party but cannot award the EPO’scosts. Thus, again, any party intending not to attendoral proceedings before an Opposition Division shouldinform the EPO and other parties as soon as possible.The party should also inform the EPO whether therequest for oral proceedings is withdrawn, whether theparty wishes for a decision on the basis of the writtensubmissions or whether the party is withdrawing fromthe proceedings completely. If the Proprietor no longerhas any interest in the patent, it is recommended that itshould withdraw its approval of the text of the patentand indicate that no replacement text will be filed sothat the proceedings can be terminated quickly andfinally.

Toujours la Politesse

Better communication with the ultimate client, whetherthis is an in-house business unit or a company instructinga representative in private practice, would ensure thatdecisions as to whether to request and attend oral pro-ceedings and whether to maintain an application, apatent or an opposition are discussed and agreed. If pos-sible, we should monitor whether the client is still inter-ested in the case. In any event, on receipt of the sum-mons to oral proceedings, we should ask the clientwhether it is still interested in the case. If it is not, weshould find out whether the client is prepared to with-draw the application, patent or opposition, thus closingthe proceedings.

We should also inform the client what we will do if theclient does not give us any instructions. The two mainpossibilities would be to indicate either that we will onlyattend the oral proceedings if the client specificallyinstructs us to do so or that we will definitely attend theoral proceedings unless the client specifically instructsus not to. In the first case, we should also indicate that,in the absence of instructions, we will notify the EPO, assoon as possible after receipt of the summons, we willnot be attending the oral proceeding and that we with-draw any request for oral proceedings.

If we make efforts to persuade clients to deal efficientlywith all cases in which they no longer have any interest,it should be possible for the EPO to deal more efficientlywith cases which are more important to our clients.


Welcome and opening remarksAlberto Casado (Vice-President, DG 2)

National patent offices are interested in understanding thetechnical implementation of the Unitary Patent e.g. pay-ments following the agreed repartition of renewal fees.The EPO decided to organize a dedicated workshop toanswer all current concerns. The objective is that theNational Patent Offices are also ready by the time the pack-age is launched.

State of play of the implementation work Legal framework

Legal frameworkMichael Fröhlich (Director European and International Legal Affairs, DG 5)

Michael reminds the audience about the Unitary Patentassociated rules and its co-existence with classic Europeanpatent validations. See slides.

Nine states have deposited their instrument for the UPC.Launch expected by the UPC preparatory committee inthe first half of 2017 with well over 13 states parties. Bul-garia should deposit their instrument very shortly. Lithuaniaand Italy should be next.

BusinessEurope’s representative comments that a top-upsearch at the end of the European patent grant proceedingswould help to identify any possibly existing national priorart, which are critical considering their impact on futureUnitary Patents.

Technical implementationDominique Furst-Fontaine (Project Manager Technical Implementation Unitary Patent, DG 2)

All EPO systems are currently being upgraded to managethe different impacts of the implementation of the unitarypatent. Compensation pay-out is a new approach to theEPO. More than 65 forms have been deployed. Interfacesare planned with the UPC and National Offices.

Online Filing System and Online Fee Payments SystemDirk van Haken (Head of IT Architecture and Solution Design, DG 2)

Presented a demo of each new system.

1. EPO Online Filing System

New feature: the system will retrieve from OPS the title ofthe invention to check that the patent number is correct.The application number is then required and the date ofthe mention of grant recommended.

Request – Three tabs: Unitary effect, Place of business atfiling, Compensation (entity profile or language-related).

Names – this section allows to add proprietors.

Documents – Translations may be submitted in this section.Other documents such as a certificate of translation ortranslation cover letter may be associated to translations.

Fee Payment – Different mode of payment are offered.From deposit account for instance: indicate PEO accountnumber and account holder name. The deposit accountmay be used for compensation or reimbursement. The listof fees to be paid

Annotations – Any comment made by made for the EPOformality Officer to review upon receipt.

Once all parameters have been entered, pressing play gen-erates the form request. If the content is fine, the applica-tion may be signed e.g. via Smart Card.

The package is then added to the ready-to-send list. Theuser may then send the request to the EPO. An acknowl-edgement of receipt will be immediately available.

If additional documents must be filed at a later stage, EPOForm UP7038 should be used (vs. EP1038 for subsequentlyfiled documents with classic European patents). Sameprocess as above. Consultation is ongoing with the usercommunity. A plugin should be installed.

2. Online Fee Payment System (through My Epoline)

A new procedure will be added on top of EP and PCTlinked to UP to pay for unitary patent protection. If no

Report from the Workshop on the Technical Implementation of the Unitary Patent

Y. Biron (BE), OCC Associate Member

Date: 20 May 2016 08:45 h to 13:00 h European Patent Office, ISAR Building Room 102Bob-Van-Benthem Platz 1 80298 MunichParticipants: EPC Member States National Patent Offices & Observers


unitary patent effect has been requested, it will displaysuch information.

3. Web-Form Filing

After login, UP7000 to request unitary effect and UP7038for subsequently filed documents will be available todeal with UP-related filings. The forms and any type ofdocuments may be uploaded in the system. The systemthen provides an overview on the request. The docu-ments can then be checked and sent. A detailed ARshould either be requested (UP7000) or downloaded(UP7038).

BusinessEurope question on multiple proprietors – whenmultiple proprietors request such unitary effect, they willhave to act through a common representative.

BusinessEurope question on representation – No changevs. classical European patents. An employee of the patentowner could request the unitary effect just as an employeecan represent its employer in European grant proceed-ings.

epi question on different representatives between Grantprocedure and Request for Unitary Effect – EPO Form1003 & 1004 forms are currently being revised to allowfor extended representation post-grant proceedings includ-ing for the Unitary Patent related tasks. Specific authori-sations would always be accepted just as a new represen-tative may be appointed for opposition proceedings only.

Republic of Eire comments on the interaction betweenthe different systems presented – The online filing systemallows to submit online forms mostly prepared offline.

Register for unitary patent protectionIgnacio Muñoz Ozores (Administrator General Publications, DG 5)Annie Decroix (Lawyer, DG 5)

Presented a demo of the extended European patent reg-ister. The register will be divided into two chapters: a firstone for the European patent; a second one for the unitarypatent (About this file, Event history, All documents).

The list of participating member states at the date ofregistration will be listed (in the “About this file” section).The UP chapter will be greyed-out if no request has beenfiled or if the request has been filed but the mention ofthe grant has not yet been published.

All UP sections will only reflect UP related events anddocuments.

New search functionalities will be implemented. The datementioned for the unitary effect request will be the dateof registration of Unitary Patent Protection.The federated register will include a line for unitary effect.Swedish comments on how will users be able to see reg-istrations such as pledges or compulsory licenses or SPCs– These are planned.

UK comments on whether the national offices will haveto communicate to the EPO about national decisions.epi comment on translation: no data will be availableon the translation at all. The translation will only beavailable in the file inspection section (All documents).No information on translation language for example.

France comment on Unitary Patent kind code – Suchkind code could be very useful for patent database users.This topic is currently being discussed as it stronglyimpacts EPO systems. The EPO is looking into differentways to solve this issue. The UK is also interested in suchfeature.

SAP - Public Sector Collection Distribution module (PSCD)Richard Grabmeir (Application Manager, DG 2)Thomas Morandell (IT Expert Finance, DG 2)

Richard presents the distribution rules and how they willbe implemented into the EPO systems (the EPO uses SAPfor accounting).

Transfer of electronic bibliographic data (EBD) – Feedback and exchangeEloy Rodriguez Barrio (IT Expert, Service Creation DG 2)

Eloy goes through the new XML parameters, as they willbe shared with the national offices. All XML technicaldetails will be described in a dedicated EBD document(available from EPO EBD website, including examples).Specific XML tags allow to identify the status of cases.

UK question on the timing between updates on the EPOand XML files – All data is updated weekly on Thursdaynights. Available the next day from the EBD restrictedarea.

Closing remarksMichael Fröhlich (Director European and International Legal Affairs, DG 5)

The EPO thanks the audience for their valuable feedbackand invites the community to test the demo interface.

Information 03/2016Committee Reports14

The EPPC is the largestcommittee of the epi, but

also the one with the broadestremit: it has to consider anddiscuss all questions pertainingto, or connected with, practiceunder (1) the EPC, (2) the PCT,and (3) “the future EU PatentRegulation”, including anyrevision thereof, except allquestions reserved for theBiotech committee.

The EPPC is presently organised with six permanent sub-committees (EPC, Guidelines, MSBA, PCT, Trilateral & IP5,and Unitary Patent). Additionally, ad hoc working groupsare set up when the need arises. Thematic groups are alsobeing set up.

This report completed on 12 August 2016 covers the periodsince my previous report dated 16 May 2016 published inepi Information 2/2016.

1. European patent with unitary effect in theparticipating Member States

On 18 May 2016, the EPO published on its website aninvitation to the patent community to test and give feed-back until 31 July 2016 on a new “Unitary Patent DEMO”plug-in for the online registration of unitary effect. Thisplug-in enables users of the Online Filing software to sim-ulate the drafting, signing and sending of a request forunitary effect and to file subsequent documents in ademonstration mode.

On 20 May 2016, the EPO organised a Workshop on thetechnical implementation of the unitary patent system.OCC represented epi.

The entry into force of the unitary patent system requiresratification or accession of 13 States to the UPC Agree-ment, including Germany, France and the UK. The outcomeof the “Brexit” referendum has created some uncertaintyabout the ratification by the UK.

The 20th Select Committee meeting was scheduled on 21September, and has been postponed to 25 October 2016.

In the meantime, the series of UP/UPC seminars initiatedby epi has successfully continued, in Paris (29 June) and inLondon (11 July). The schedule of the next seminars isbeing reviewed.

2. PCT WG9

The PCT Working Group met in Geneva from 17 to 20May 2016, with a PCT User Meeting in the morning of18 May. The working documents (including the summaryby the Chair) are available on the WIPO website:http://www.wipo.int/meetings/en/details.jsp?meeting_id=39464A report is attached.

The proposals endorsed by the PCT WG will be submittedfor approval to the PCT Assembly that will take place inthe 56th Series of Meetings of the Assemblies of theMember States of WIPO that will take place from 3 to 11October 2016. The PCT Assembly documents are or willbe available on the WIPO website :http://www.wipo.int/meetings/en/details.jsp?meeting_id=39951

The proposals relate essentially to the approval of theTurkish Patent Office as ISA and IPEA, and to the amend-ment of Rule 45bis.1(a) to extend the time limit forrequesting supplementary international search from 19to 22 months from the priority date.

3. TOSC 82

The 82nd meeting of the Technical and Operational Sup-port Committee on 19 May 2016 included an item oninformation exchange on ISO 9001 certification and Qual-ity Management. Users (epi and BusinessEurope) hadbeen invited to make presentations on “Quality Manage-ment Systems, their certification and user’s expectations”.

4. SACEPO 48

The agenda of the 48th meeting of SACEPO on 21 June2016 contained the following items with relevance tothe EPPC:

2. President's report on the development of the European patent systemEach delegate found on his table an A3-size copy of theposter prepared for and shown at the Search Mattersand Examination Matters events. The pdf version is avail-able for download in the Documents/Member section ofthe epi website.

3. Timeliness in the EPO: Early Certainty from Examination and OppositionThese “Early Certainties” had already been presented atthe SACEPO/WPR meeting of 7 April 2016 (cfr my previ-

Report of the European Patent Practice Committee (EPPC)

F. Leyder (BE), Chair

Francis Leyder

Information 03/2016 Committee Reports 15

ous report). A Notice from the EPO concerning the oppo-sition procedure as from 1 July 2016 has been publishedin the OJ EPO 5/2016, A42.

4. Refunds of fee for examination This topic had also been discussed at the SACEPO/WPRmeeting of 7 April 2016 (cfr my previous report). DecisionCA/D 4/16 of the Administrative Council amending Arti-cle 11 RRF has been published in the OJ EPO 5/2016,A48.

5. Fee payment methods The EPO presented again their intention, alreadyexpressed at the SACEPO/WPR meeting of 7 April 2016(cfr my previous report), to limit the filing of a debit orderto “online means”.

In general, the users repeated their wishes for makingpayments user-friendlier. The EPO made some promisesto implement alternatives.

In particular, having been alerted by one of the EPPCmembers, I pointed out that the EPO removed the possi-bility of paying by cheque in 2008, arguing in particularthat the use of cheques “stands in contrast to commonbusiness practice" (CA/101/07 Rev. 1, item 7), but con-tinues to reimburse using cheques.

6. Reform of the EPO’s Boards of AppealSee item 8 below.

7. IP5 Projects: Global Dossier, CPC, PPHRelevant to the EPPC was the report on the various PPHprograms. The EPO announced an expansion of the EPOPPH activities, with continuation of the IP5 PPH trial, pro-motion of the PCT-PPH, and preparation of new bilateralPPH pilot programmes (Australia, Colombia).

9. Update on PCT mattersThe EPO reported on their work as ISA and IPEA, remindedus of some changes already implemented, and announcedthat all IP5 Offices would participate in Pilot Phase 3 ofthe Collaborative Search & Examination, expected to belaunched mid-2017.

10. Unitary patent protection – progress report

5. PAOC thematic group

Ten epi delegates of the PAOC thematic group of theEPPC (pure and applied chemistry, including pharmaceu-ticals) met again with thirteen EPO representatives (mainlyDirectors in that field) on 22 June 2016. The report hadnot yet been finalised at the time of preparing the presentreport.

Examples of the specific topics discussed were use claimscontaining the feature “non-therapeutic” and whether

experimental evidence of a second medical use needs tobe included in the priority application. Many topics ofmore general interest were discussed.

The epi delegates concluded that the meeting was veryuseful again, they appreciated the open and cooperativeatmosphere, and they hoped such a meeting could berepeated on an annual basis.

6. Independence of the Boards of Appeal

The Administrative Council approved a comprehensivepackage of reform of the Boards of Appeal on 30 June2016. The decisions (CA/D 5/16, 6/16, 7/16 and 7/16)and the preparatory documents (CA/29/16 Rev.1 andCA/43/16 Rev.1) are available on the EPO website:http://www.epo.org/about-us/organisation/documentation/ac-documents.html

7. IP5

IP5 announced on 1 August 2016 a common PPH requestformhttp://www.fiveipoffices.org/activities/ws/ip5pph.html

8. Guidelines sub-committee

The epi delegates to the SACEPO/Working Party onGuidelines received the draft 2016 Guidelines for reviewin preparation of the annual meeting in the autumn. Thesub-committee will meet on 15 and 16 September todiscuss the draft and set up a list of further proposedamendments.

9. ITC thematic group

The ITC thematic group of the EPPC (Information andcommunications technology) will meet again with theEPO Directors in that field on 21 September 2016.

Guidelines

The EPPC urges the readers of this journal to addressto its Guidelines Sub-Committee at [email protected] comments regarding the Guidelines for Examina-tion in the European Patent Office https://www.epo.org/law-practice/legal-texts/guidelines.htmlor suggestions to improve them.

The same applies to the Guidelines for Search andExamination at the EPO as PCT authorityhttps://www.epo.org/law-practice/legal-texts/guidelines-pct.html.

Information 03/2016Committee Reports16

Update on Training Activities

An inter committee work-ing group under the lead

of PEC had been establishedwith members of LitCom,EPPC and PEC. The task of thisgroup is to plan trainingevents in connection with theUnitary Patent and the UPC.A series of seminars havealready been scheduled.

Each seminar has three speakers, two for the Unitary Patentpart and one for the UPC part. The EPO agreed to providea speaker for the Unitary Patent part for eight of the sem-inars. The other speakers are epi members.

Due to the UK’s referendum, some of the seminars havebeen cancelled or replaced by different topics.

Code of Conduct for UPC Representatives

A first draft Code of Conduct for the UPC has been pre-pared by the epi, EPLAW and EPLIT.

It was suggested to include rules on the conduct of arepresentative in ex parte proceedings, e.g. preservationof evidence or inspection. It should be regulated that the

representative needs to be careful with confidential infor-mation and is not allowed to communicate to his clientanything he saw during the saisie, or inspection which isnot related to the case, e.g. infringements of otherpatents.

Litcom’s comments prepared by the Litcom were pre-sented by Mr Casalonga and discussed with Klaus Haftwho was responsible of the first draft on behalf of EPLAW.A part of the Litcom’s suggestions were incorporated inthe final draft. The Preparatory Committee agreed onthe UPC CoC at its 17th meeting in Stockholm on 30June 2016.

Consequences of a Brexit

The result of the referendum in UK will certainly have con-sequences on the UPC and the Unitary patent. At the pres-ent time it is impossible to ascertain those consequences.

The UK may decide to ratify the UPC Agreement beforeeffectively leaving the EU, which could lead to an entryinto force of the UPC and the UP in 2017 as previouslyannounced. Specific arrangements could then be foundto allow the UPC and possibly also the UP to extend theireffects to the UK territory, even after UK would have leftthe EU.

The Litigation Committee will monitor the changing situationand draft epi opinions on proposed changes, if necessary.

Report of the Litigation Committee

A. Casalonga (FR), Chair

Axel Casalonga

Next Board and Council Meetings

Board Meetings96th Board meeting on 11 March 2017 in Manchester (UK)

Council Meetings81st Council meeting on 12 November 2016 in Berlin (DE)82nd Council meeting on 24/25 April 2017 in Munich (DE)

Information 03/2016 Education and Training 17

Forthcoming epi Educational Events

Time schedule:

Mock EQE session

24.10.2016: Paper D 09:30 - 14:30Pre - Examination 09:30 - 13:30

25.10.2016: Paper A 09:30 - 13:00Paper B 14:30 - 17:30

26.10.2016: Paper C 09:30 - 14:30

Feedback session December 2016

1 Day: Paper DPre-Examination

2 Day: Paper APaper B

3 Day: Paper C

The final selection of the location(s) are Brussels, Helsinkiand Munich.The feedback sessions can be expected to take place inDecember 2016

Preparation Courses for the EQE

Flexible epi Tutorial

(see announcement below)

epi Mock EQEs 2016

The mock EQEs allow participants to attempt an EQE examunder exam conditions. The participants sit the papers inthe same order, and in the same time, as the real exam.The exam papers are from previous EQE exams and arechosen for their didactic value. Experienced epi tutorsmark the papers. About one month after the mock EQE,the tutors discuss the answers with small groups of candi-dates. Each participant receives personal feedback onhis/her work. Participants may sit any combination of papers.

Scheduled epi Mock EQEs:The registration is available on the epi website.

epi CPE Seminars - Updated Event Calendar

25 October 2016 Milan (IT) »Unitary patent and Unified Patent Court« epi roadshow supported by the EPO

8 November 2016 Prague (CZ) »Unitary patent and Unified Patent Court« epi roadshow

17 November 2016 Eindhoven (NL) Subject to be advised

7 December 2016 Hamburg (DE) »Unitary patent and Unified Patent Court« epi roadshow

• Sign up for a tutorial whenever you want

• Decide which paper you want to prepare

• Arrange individually with your tutor:

– the due date when to transfer your prepared paperto your tutor

– the date when to discuss the result of your individualpaper with your tutor

• Discuss the result of your paper with your tutor– in small groups (upon request) or– in a one to one session

epi connects you to a tutor speaking your preferred EPOlanguage and will assist you, in case anything went wrong.

Further information on our website: http://patentepi.com/en/education-and-training/qualifying-as-a-european-patent-attorney/epi-tutorial.html

Flexible epi TutorialGet your individual feedback on papers A/B/C/D

whenever you need it during your preparation for the EQE

On 27 September 2016, Marcus Müller (member ofthe Boards of Appeal of the European Patent Office)

and Cees Mulder (European patent attorney and associateprofessor of intellectual property lay at Maastricht Univer-sity) gave an Opposition and Appeal seminar in the DanishPatent and Trademark Office in Taastrup (close to Copen-hagen) for an audience of around 70 patent attorneys.The seminar was skilfully moderated by Pia Stahr (PECMember, DK).

The cycle of the epi Opposition and Appeal seminars sup-ported by the EPO started in December 2013 in Milan onrequest of Paolo Rambelli (PEC Chairman). Since then theseminars have been given twelve times at various locationsall over Europe, including Barcelona, Copenhagen, Eind-hoven, Helsinki, London (twice), Munich, Oslo, Paris, Stock-holm, Warsaw and Zurich. In the three years, a total of1,034 patent attorneys have attended the Opposition andAppeal seminars. This shows the success of the programmeof continued education organised by the epi for its mem-bers.

The format of the seminar is that Marcus Müller takes thelead in presenting the seminar and that Cees Mulder actsas a side kick with questions and remarks. This interaction

encourages the participants to ask questions and makesthe seminars very vivid and stimulating. A lot of practicaladvice is given by the two speakers. For instance, CeesMulder talks about how to behave in oral proceedingsand how to draft a patent application with the aim of pre-venting problems later on in opposition and appeal.

The morning programme of the seminar focuses on oppo-sition proceedings and the afternoon session is devotedto appeal. For instance, the Rules of Procedure of theBoards of Appeal are discussed in relation to their effecton the admissibility of late-filed documents and evidenceand claim requests. The presentations are continuouslyupdated to reflect the latest developments in the case lawof the boards of appeal. In addition, the relevantdecisions/opinions of the Enlarged Board of Appeal arediscussed including the pending referrals.

Usually, the seminars are moderated by the local epi PECmember. The epi organises the events in a friendly andprofessional manner.

The successful cycle of Opposition and Appeal seminarswill be continued in 2017 with events foreseen in Budapest,Dublin, Hamburg and Rome.

Milestone: more than 1000 patent attorneys attended the Opposition and Appeal Seminars

C. Mulder (NL) and M. Müller (DE)

Information 03/2016 Education and Training 18

Information 03/2016Information from the EPO19

During the last few years the EPO has been investingin the overhaul of its IT systems with the major pur-

pose to streamline the procedure by processing Europeanpatent applications electronically. A further aim of thisexercise is to increase the accuracy of the publicationsof both patent applications and patent specifications. Inorder to achieve this, the Office, in a first step, discon-tinued its past practice governing the form of amend-ments and thus no longer accepts handwritten amend-ments in documents replacing parts of the Europeanpatent application (Rule 50(1) EPC in conjunction withRule 49(8) EPC; see also the Notice from the EPO dated8 November 2013, OJ 2013, 603). In a next step theOffice has developed a tool for examiners to producethe Druckexemplar electronically (“eDrex”). This toolallows in particular for the electronic insertion of amend-ments by the Examining Division to the text of the patentintended for grant.

Yet concerns have been raised about the accuracy ofthe OCR source that eDrex uses and the ensuing risksfor applicants.

The purpose of this article is to provide relevant technicalinformation on the eDrex tool and its functionalities andto clarify certain legal aspects arising from the introduc-tion of this new tool.

The eDrex tool

Documents may be filed with the EPO on paper, by fax,or electronically (pdf or xml); after filing they are includedin the electronic file as an image. The new eDrex toolprovides examiners with the possibility to edit the Druck-exemplar electronically.

The examiner can make amendments to the Druckex-emplar in two different ways. The first, image mode,works on the scanned image submitted by the applicant.Text can be deleted or added and all unamended text onthe page remains as filed by the applicant. The second,text mode, is where the examiner can make changes toan OCRed version of the original page. Here, amendmentis similar to editing with a traditional word processorwhere text can be added or deleted just like in MS Word.In addition to these two main ways of preparing theelectronic Druckexemplar, there is also a bitmap modewhich is used infrequently for amendments to drawings.Pages edited using image or bitmap mode are indicatedas “AMENDED” in the header of the Druckexemplar.Pages edited using text mode/OCR data are specificallyindicated by “AMENDED/OCR”.

Any amendments or corrections using the electronic toolare indicated by means of standard marks and any inser-tion is made in-line. Detailed explanations on the stan-dard marks used are contained in the Guidelines forexamination before the EPO, Annex to C-V. A furtheradvantage of this tool is that all amended pages aretracked and this information is automatically transferredto the communication under Rule 71(3) EPC (forms2004C or 2004W). This functionality immensely improvesthe quality and accuracy of this communication.

Relevant legal aspects

The text (Druckexemplar) issued with the communicationunder Rule 71(3) EPC can only be the subject of a decisionto grant if approved by the applicant (Art. 113(2) EPC).Given the opportunities an applicant has at any stage upto and including the final approval to check the accuracyof the text of the patent, corrections in the patent docu-ments after grant are no longer accepted and the respon-sibility for any remaining errors lies with the applicant(see decision G 1/10, OJ EPO 2013, 194).

During the electronic preparation of the Druckexemplar,alterations in the text of the patent may occur. Theseso-called formatting/editing errors may be characterizedby e.g. the shifting of text lines outside the margins of adocument with the consequence that they are deletedor any OCR errors on the pages that were edited in textmode. These alterations are typically neither indicatedby standard marks in the Druckexemplar nor inForm 2004.

Although already contained in the text approved by theapplicant, these errors may be corrected under Rule 140EPC upon a careful assessment of all relevant circum-stances of each case by the competent division (seeGuidelines for examination before the EPO, H-VI, 4). Thiskind of correction can be carried out by the EPO of itsown motion or at the request of the patent proprietor.

However, for the text in or around the amended part(s)of the text of the patent requests for correction of errorswill in principle not benefit from this exceptional handling,even if they were introduced by the Examining Divisionor otherwise arose during the automated process of theDruckexemplar. It is expected that the applicant ensuresthat the amended part of the text is correct when receiv-ing the communication under Rule 71(3) EPC. Substantiveamendments deliberately introduced by the ExaminingDivision are also not covered by the new Guideline sincethey do not qualify as formatting or editing errors.

The eDrex tool - Leaving Dinosaurs Behind

H. Pihlajamaa, EPO Director Patent Law

Information 03/2016 Information from the EPO 20

Conclusions

The EPO strives to ensure the high quality of its work,including any OCR processing of application documents.The text version available to the Examiner when preparingthe Druckexemplar in text mode comes from a high qual-ity OCR conversion with a quality of 99.995% accuracy(the same standard as used for all A and B publicationsfor the last 20 years). This is achieved at considerableexpense by a combination of automated conversions andhuman intervention to verify areas where doubts occur.This is especially the case with certain letter combinations(e.g. “rn” vs “m”), with symbols (such as “μ”, “β” or“Å”) or with more complex text such as tables and math-

ematical or chemical formulae. In addition, examinersreceive intensive training with the new tool.

When documents submitted to the EPO comply with therequirements of the EPC as regards text size and spacing,line spacing, quality of the print, margins etc., as well asby avoiding fax and paper submissions where possible(see in particular Rule 49 EPC), OCR errors will be reducedsignificantly, if not avoided.

The EPO trusts that this new key development will proveto be of long term benefit for all stakeholders in sup-porting the quality and efficiency of the patent grantprocedure.

P lease send any change of contact details using EPO Form 52301 (Request for changes in the list of profes-

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Information 03/2016Articles21

The first part of this article con-sidered the correct formula-

tion of the problem in the prob-lem and solution approach toanalysing inventive step. It pro-posed that the formulation is onlycorrect if the problem is knownor obvious in view of everything

made available to the public before the priority date.This rule was derived from the requirement in Arti-cle 56 EPC that there is inventive step if the claim isnot obvious in view of the state of the art, and thedefinition of the state of the art in Article 54(2) EPCthat the state of the art comprises everything madeavailable to the public. Consequently, if the problemis not obvious in view of everything made availableto the public, the problem and solution analysis can-not establish a lack of inventive step under Article 56EPC. However, this rule appears to conflict with thetreatment of non-technical features in the formula-tion of the problem under the so-called Comvikapproach.

The second part of the article reviewed the origins ofthe Comvik approach and the circumstances underwhich it was developed. It concluded that treatmentof non-technical features in the analysis of inventivestep has developed since the approach was first pro-posed. It also concluded that in early decisionsT 1053/98 Canon and T 0931/95 Pension Benefits Sys-tems the same conclusions could have been reachedwithout incorporating novel non-technical featuresinto the problem. However, in decision T 0641/00Comvik it would not have been possible to reach thesame conclusion without the presence of the novelfeatures in the problem. Therefore there is unavoid-able conflict between the Comvik approach to for-mulation the problem and the rule that the problemmust itself be obvious.This part of this article considers whether it is appro-priate to modify the Comvik approach to the formu-lation of the problem, and proposes a modificationto the approach to make it consistent with Articles 56and 54(2) EPC with the proposed rule that the prob-lem should be obvious.

A Review of the “Problem and Solution” Approach to Inventive Step under Article 56 EPC

Part 3 – Modifying the Comvik Formulation of the Problem

A. Kennington (GB)

Part 3

This is the third part of a long article, which isbeing published in threeparts in successive issuesof epi Information.

Possibility of Modifying the Comvik Approach

The Comvik approach, following decision T 0641/00, canbe summarised as providing two rules for the treatmentof non-technical features in a claim, where those non-technical features do not combine with technical featuresto contribute to a technical effect (although the Comvikdecision itself does not explicitly identify these as separaterules). The first rule is that such features cannot contributeto the inventive step of the claim, and in particular theycannot form part of the solution in the problem and solu-tion approach. The second rule is that such features canbe included in the formulation of the problem, for exam-ple as a constraint that has to be met, regardless ofwhether the features are novel or not.

The first rule (non-technical features cannot contributeto an inventive step) is well established and is at the coreof the current EPO practice in the treatment of non-tech-nical features in claims. I do not wish to challenge thisrule. On the contrary, I regard it as correct. This rule hasbeen justified on the basis that inventions are inherentlytechnical, so that anything that is wholly non-technicalcannot be an invention, and this view is reflected in the

wording of Article 52(1) of EPC 2000 which states thatpatents shall be granted for inventions “in all fields oftechnology”. On this basis, if a claim includes a featurethat is non-technical and does not combine with technicalfeatures to contribute towards a technical effect, thatfeature can be regarded as not being part of the inven-tion. Article 52(1) requires that patents shall be grantedfor inventions that have an inventive step (as defined inArticle 56). It may be that the non-technical feature ofthe claim meets the requirements of Article 56 (not obvi-ous over everything that was made available to the pub-lic). However, such a feature is not part of the inventionand so it cannot provide the invention with an inventivestep. This line of reasoning leads directly to the rule thatnon-technical features cannot contribute to the inventivestep of the solution.

On the other hand, I propose that the second rule (novelnon-technical features can be part of the problem) shouldbe modified to state that non-technical features may beincluded in the formulation of the problem, regardless ofwhether those features are recited in the claim or not,

Information 03/2016 Articles 22

provided that the inclusion of those features in the prob-lem is known or would be obvious in view of everythingmade available to the public before the date of the claim.

I think that it is reasonable to consider modifying thisrule because the Boards of Appeal have developed theirunderstanding of the problem and solution approach fur-ther since the time of decision T 0641/00 Comvik. InT 0641/00 Comvik, it was considered that the problemhas to be a technical problem, whereas more recent deci-sion T 1784/06 Comptel (21 September 2012) makes itclear that the problem and solution approach does notneed to involve a technical problem (see part 11 of theReasons for the Decision). Also, decision T 1689/07 Proc-tor & Gamble, Colour-changing absorbent article (6November 2009) states clearly that a claim may have aninventive step even if the novel technical features areprovided purely for a non-technical purpose. It seems dif-ficult to reconcile this decision with the practice of includ-ing a novel non-technical purpose in the formulation ofthe problem. Thus there has clearly been a developmentof ideas about the nature of the problem in the problemand solution approach.

Also, the two rules set out above appear to be sufficientlyindependent that the proposed modification of the sec-ond rule does not have any impact on the first rule. Arti-cle 52 EPC requires that an invention must be technicaland must have an inventive step. Therefore the solutionin the problem and solution approach cannot rely onnon-technical features that do not contribute to a tech-nical effect, because they are not part of the invention.On the other hand, Article 56 EPC requires that an inven-tion has an inventive step if it is not obvious over thestate of the art, and Article 54 EPC defines the state ofthe art as everything made available to the public in anyway before the priority date of the claim. Therefore theproblem can be based on anything known before thepriority date of the claim regardless of whether it is tech-nical or not. Thus the need to preserve Comvik’s firstrule, concerning non-technical features in the solution,does not prevent a reconsideration of Comvik’s secondrule, concerning non-technical features in the problem.

Having established that it is reasonable to reconsiderComvik’s approach to the formulation of the problem,there are several reasons to favour modification of thatapproach.

First, the Comvik approach to the formulation of theproblem, in which novel non-technical features of theclaim are included in the problem, appears to havebecome accepted practice without any consideration ofits compatibility with Article 56 EPC.

Decision T 0641/00 Comvik, and the two preceding deci-sions T 1053/98 Canon and T 0931/95 Pension BenefitSystems, did not consider whether this approach to for-

mulating the problem was compatible with Article 56.After decision T 0641/00 Comvik, it was regarded as anestablished part of the case law of the Boards of Appealthat non-technical features of the invention, even if new,could be included in the statement of the problem. Sub-sequent decisions, such as T 0531/03 Catalina Marketing(17 March 2005) and T 0764/02 Online Resources & Com-munications Corp (20 September 2005) explicitly regardthe jurisprudence as having been settled by T 0641/00Comvik and do not examine whether it is compatiblewith the EPC.

In decision T 0154/04 Duns Licensing, the appellantattacked the legality of the Comvik approach as a whole,and this decision contains a lengthy defence of it. How-ever, the Board’s argument is based entirely on Article 52EPC, and there is no consideration of whether theapproach to formulating the problem is consistent withArticle 56. I am not aware of any decision of the Boardsof Appeal that has considered whether the practice ofincluding novel non-technical features in the problemcan be permitted under Article 56.

In retrospect, it may seem surprising that there was noconsideration of whether this practice was compatiblewith Article 56. However, this may be the result of theway in which the whole approach to non-technical fea-tures was regarded at the time. I have characterised theComvik approach as consisting of the two rules that Isummarised above, and I have argued that these tworules are substantially independent of each other. How-ever, that is not how the approach is discussed in decisionT 0641/00 Comvik itself. The Board in Comvik does notseem to have considered that it was establishing twoseparate rules, but instead it seems to have regardedthe manner of formulating the problem simply as a con-venient way of establishing that non-technical featurescould not improperly contribute to the inventive step.Since the exclusion of non-technical features from theconsideration of inventive step was justified by referenceto Article 52, it may not have been apparent at the timethat there was any issue of compatibility of the formula-tion of the problem with Article 56.

If the Comvik rule for formulating the problem is com-pared with Article 56, it appears that there is inevitablya conflict. Article 56 defines inventive step in terms ofobviousness “having regard to the state of the art”, andArticle 54 defines the state of the art as comprising“everything made available to the public by means of awritten or oral description, by use, or in any other way”.There can be no justification under these Articles of theEPC for basing an obviousness argument on anythingthat is novel. This immediately conflicts with the state-ment in decision T 0641/00 Comvik that it is correct toformulate the technical problem to include non-technicalaspects “whether novel or not” (Reasons for the Deci-sion, part 7).

In decision T 0641/00 Comvik, part 7 of the Reasons forthe Decision begins

“The technical problem should not be formulated torefer to matters of which the skilled person would onlyhave become aware by knowledge of the solution nowclaimed. … Thus a problem should not contain point-ers to the solution or partially anticipate it

However, in the Board's view this principle applies tothose aspects of the subject matter claimed which con-tribute to the technical character of the invention andhence are part of the technical solution.”

The principle, that the problem should not contain mat-ters that derive only from the solution, and should notcontain pointers to the solution, is fundamental to ensur-ing that inventive step is judged only against the stateof the art and does not include any hindsight reasoning.Board does not explain why it considers that this principleapplies only to aspects of the claimed subject matterthat contribute to the technical character of the inven-tion. It is understandable that aspects of the claimedsubject matter that are not part of the technical solutionshould not be regarded as contributing to the inventivestep (since such aspects are not part of the inventionunder Article 52 EPC). However, this does not mean thatsuch aspects should be regarded as part of the problem.The removal of a feature from one side of the scalesdoes not imply that it should be added to the other side.Instead, the novel non-technical features should simplybe ignored. Once a novel but non-technical aspect ofthe claim is included in the problem, the question ofinventive step is no longer being judged against the stateof the art alone.

In conclusion, it seems that there has never been a properevaluation of the compatibility of the Comvik formulationof the problem with Article 56 EPC, and there is at leasta question over whether the formulation can in fact bepermitted under Article 56.

The conflict with Article 56 EPC can be seen also in thecomment included for several years in part G-VII, 5.4.1of the Guidelines for Examination in the EPO (it has beenremoved in the 2015 edition)

The requirements specification is not deemed to belongto the prior art; it is merely used in the formulation ofthe technical problem.

This appears to be an explicit admission that this formu-lation of the problem involves the inclusion in the prob-lem of features that are not in the prior art. Since Article56 EPC requires that obviousness is judged “havingregard to the state of the art”, there is an immediateconflict between this formulation of the problem andArticle 56.

It might be argued that there is no problem in includingnovel features in the formulation of the problem so longas they are non-technical, since non-technical featurescannot be part of the invention and therefore do notmatter. However, this cannot be correct. Article 56 EPCstates that an invention shall be considered as involvingan inventive step if it is not obvious having regard to thestate of the art. This clearly excludes the possibility that afinding of obviousness (lack of inventive step) can rely ona feature that is not part of the state of the art. There isno leeway in Article 56 to base an argument of obvious-ness on anything that is not in the state of the art. Thus,if there is a finding of obviousness in view of the require-ments specification, and the requirements specificationdoes not belong to the state of the art, the finding ofobviousness is not based on the state of the art and so itdoes not establish a lack of inventive step as defined inArticle 56 EPC.

A second reason for favouring modification of the Comvikformulation of the problem is that the reasons given forformulating the problem in this way do not in fact supportit, and in some cases actually contradict this formulationof the problem.

Thus in decision T 0154/04 Duns Licensing, part 16 ofthe Reasons, defending the Comvik approach, begins“For the purpose of the problem-and-solution approachdeveloped as a test for whether an invention meets therequirement of inventive step, the problem must be atechnical problem (see the COMVIK decision T 641/00(supra), Reasons Nos. 5 ff.)”. The decision then statesthat there are difficulties in defining an intelligible tech-nical problem without referring to non-technical features.Next, the decision states “The Board, therefore, allowedin COMVIK an aim to be achieved in a non-technical fieldto appear in the formulation of the problem as part ofthe framework of the technical problem that is to besolved, in particular as a constraint that is to be met (Rea-sons No. 7)”. However, the basic premise of this reason-ing, that the problem has to be a technical problem, isno longer good law as has already been discussed above.Consequently the Comvik formulation of the problem isjustified in T 0154/04 Duns Licensing on the basis of alegal requirement that no longer exists.

Decision T 0154/04 Duns Licensing continues in part 16of the Reasons by stating “Such a formulation has theadditional, desirable effect that the non-technical aspectsof the claimed invention, which generally relate to non-patentable desiderata, ideas, and concepts and belongto the phase preceding any invention, are automaticallycut out of the assessment of inventive step and cannotbe mistaken for technical features positively contributingto inventive step. However, this contradicts the actual situation, since the non-technical features are not “cutout” of the assessment of inventive step according tothe Comvik formulation of the problem, but are in fact


transferred to the opposing side of the assessment aspart of the problem to be solved. If they were truly “cutout”, these features would not appear either in the for-mulation of the problem or in the features contributingto the solution.

Similarly, the decision in T 0641/00 Comvik states that“where a feature cannot be considered as contributingto the solution of any technical problem by providing atechnical effect it has no significance for the purpose ofassessing inventive step” (Reasons, part 6). However, if afeature is to have “no significance for the purpose ofassessing inventive step” it should not be taken intoaccount in that assessment. This implies that in the assess-ment of inventive step, such non-technical features shouldnot be included in either the problem or the solution.Therefore the Comvik formulation of the problem isdirectly contrary to the fundamental objective of the treat-ment of non-technical features in decision T 0641/00Comvik itself.

A further problem with the logic of the Comvik formula-tion of the problem can be seen in decision T 0154/04Duns Licensing at part 16 of the Reasons, where it states“Since only technical features and aspects of the claimedinvention should be taken into account in assessing inven-tive step, … it is irrelevant whether such a non-technicalaim was known before the priority date of the application,or not.” The conclusion clearly does not follow from thepremise. The requirement that only technical features areto be taken into account does not imply that a non-tech-nical aim can be included in the problem. Specifically,the inclusion of a non-technical aim in the problem makesit inevitable that this non-technical aim will be taken intoaccount, which is directly contrary to the stated require-ment that only technical features and aspects should betaken into account. Also, it is not explained how thedesire to avoid taking non-technical features into accountcan justify the incorporation of novel features into theproblem.

Thus it can be seen that the reasons given in decisionT 0641/00 Comvik and in its defence in decisionT 0154/04 Duns Licensing do not in fact provide any rea-son to maintain the Comvik approach to the formulationof the problem (new and non-obvious non-technical fea-tures of the claim may be included in the problem). It issufficient, in order to satisfy these reasons, simply to usethe Comvik approach to non-technical features in thesolution (non-technical features that do not contributeto a technical effect cannot be used to provide a solutionwith an inventive step).

A third reason for moving away from the Comvik formu-lation of the problem is that it appears to make thepatentability of a claim depend on what non-technicalfeatures it contains, in direct contradiction of its objec-tives. This has arbitrary and contradictory consequences

for the patentability of different claims to essentially thesame invention.

Decision T 0641/00 Comvik considers that the problemhas to be technical, and therefore non-technical featureswill not normally be included on the statement of theproblem. However, part 7 of the Reasons in decisionT 0641/00 Comvik states that “where the claim refers toan aim to be achieved in a non-technical field, this aimmay legitimately appear in the formulation of the problemas part of the framework of the technical problem that isto be solved, in particular as a constraint that has to bemet”. Thus, the non-technical features that “may legiti-mately appear in the formulation of the problem” arethose that define a non-technical aim that appears in the claim. Claim 1 of the 1st auxiliary request in decisionT 0641/00 Comvik included the feature of “the selectiveactivation being used by the home database for distrib-uting the costs for service and private calls or among dif-ferent users” as the final clause of the claim. Since thejustification for including this feature in the problem wasthat it appeared in the claim, it must be concluded that ifthis feature had not appeared in the claim at all it couldnot have been included in the problem, according to therule for formulating the problem as set out in the deci-sion.

However, the finding of lack of inventive step in decisionT 0641/00 Comvik relies entirely on the inclusion of thisfeature in the problem. If the final clause of the claimhad simply been deleted, this non-technical aim wouldnot have been present in the claim. As a result, it wouldnot have been permitted to include it in the problem. Inthe absence of this feature in the problem, the Boardcould not have used the reasoning that led them to findthat the novel technical features of the claim were obvi-ous. It appears, from the reasoning in the decision, thatthis situation would have obliged the Board to find theclaim non-obvious and hence inventive. In this way itseems that the reasoning of the decision, if followedstrictly, implies that the simple deletion of a non-technicalaim from the claim would have rendered the claim inven-tive, without any change to the technical features. Sucha result, implied by the reasoning of decision T 0641/00Comvik, would be the exact opposite of the intention ofthe Board, who wished to ensure that inventive stepwould not be dependent on non-technical features.

It also follows from the reasoning of decision T 0641/00Comvik that if the same technical features are combinedwith different non-technical aims in different claims, thenon-technical aim included in the formulation of theproblem would be different for the different claims. Thesedifferent formulations of the problem could lead to dif-ferent conclusions concerning the obviousness or non-obviousness of the technical solution, and therefore dif-ferent conclusions about the patentability of the claim.Thus the same combination of technical features could



be patentable or non-patentable depending on whichnon-technical aim was stated in the claim. Given that aninvention must be technical, and non-technical featurescannot contribute to inventive step, it seems contradic-tory that the patentability of a claim could depend onwhich non-technical features are recited in the claim.

It must be concluded from this result that the precisemethod of formulating the problem set out in decisionT 0641/00 Comvik cannot be sustained.

Finally, it is generally accepted that the patentability ofan invention is not affected by the reason why the inven-tion was made. An invention is patentable or not on thebasis of the features of the invention, irrespective of whythe inventor invented it. Therefore it cannot be right totreat the inventive step of the technical features of aninvention differently depending on whether the under-lying purpose for making that combination of technicalfeatures is a technical objective or a non-technical objec-tive.

Consider a situation where the technical features couldbe provided either for a technical purpose or for an aes-thetic (non-technical) purpose. According to the Comvikformulation of the problem, it is permissible to includethe non-technical aim in the formulation of the problemeven if this non-technical aim is entirely new. On theother hand, it would not be permissible to include thetechnical aim in the problem if this aim is entirely new,since the problem may not contain pointers to the solu-tion. If the claimed technical features would not be obvi-ous in the absence of the aim, but become obvious ifeither aim (technical or non-technical) is considered, thenthe inventive step of the claim depends on whether thetechnical aim or the non-technical aim is considered atthe time of formulating the problem. This has the effectthat the patentability of the same set of technical featuresdepends on why the invention was made.

Since the patentability of an invention should dependonly on the technical character of the invention, and noton the reason why it was made, it does not appear pos-sible to support the Comvik manner of formulating theproblem.

Proposal – Refined Comvik Approach

For these reasons, I suggest that it is now correct to con-sider that the law has developed since decision T 0641/00Comvik, as the Comvik approach has been refined andestablished, and it is now justified to abandon theComvik manner of formulating the problem.

In particular, it is now recognised that the Comvikapproach involves explicitly ignoring, in the assessmentif inventive step, those features that do not contributeto a technical effect, and this principle can be applied

independently of the proposal to formulate the problemby reference to non-technical aims stated in the claim.This separation of the approach into two distinct parts isnot present in decision T 0641/00 itself, but has onlybeen recognised during the application of the approachin later decisions. In decision T 0641/00, the incorpora-tion of non-technical features of the claim into the state-ment of the problem was not seen as a separate principlefrom the removal of non-technical features from theassessment of inventive step, but instead it was seen asthe manner in which the removal of non-technical fea-tures was to be achieved.

With experience of applying the Comvik approach gainedover more than ten years since decision T 0641/00 wasissued, we can now see that the incorporation of novelnon-technical features into the formulation of the prob-lem is unnecessary. It is also problematic. It conflicts withthe requirement of Articles 54(2) and 56 EPC that obvi-ousness is considered having regard to everything madeavailable to the public before the date of filing of theEuropean patent application. Additionally it appears tomake patentability depend on the reasons why the inven-tion was made and on the choice of what non-technicalfeatures (if any) are recited in the claim, rather thandepending on the technical features of the claim.

Accordingly, I propose that when a claim includes non-technical features, inventive step should be assessedusing a refined Comvik approach in which those featuresthat do not contribute to a technical effect are notregarded as providing an inventive step to the claimedsolution, but such features are not included in the state-ment of the problem unless they are known or obvious.

This approach can be supported in the EPC in the fol-lowing way. (i) It follows from the wording of Article52(1) that an invention is inherently technical. Thereforeonly those features in a claim that are technical, or whichcontribute (on their own or in combination with anyother feature(s)) to a technical effect, can be regardedas part of an invention. Article 52(1) also requires thatan invention must have an inventive step. Therefore aclaimed feature that does not contribute to a technicaleffect cannot contribute to an inventive step because itis not part of the invention. (ii) An inventive step is pres-ent if the combination of features having a technicalcharacter or effect are not obvious over what is madeavailable to the public anywhere in the world (Article 56in combination with Article 54(2) EPC). Therefore claimednon-technical features cannot be considered as part ofthe problem if they have not been made available to thepublic, but conversely such non-technical features canbe included in the problem if they have been made avail-able to the public.

To some extent, this already appears to be the practice of the Boards of Appeal. For example, decision


T 1784/06 Comptel (21 September 2012) explicitlyupholds the Comvik approach that only features con-tributing to the technical character of the claimed sub-ject-matter enter into the examination of inventive step(T 1784/06 at part 2 of the reasons for the Decision),but does not mention the inclusion of non-technicalfeatures of the claim in the formulation of the problem.In fact, this decision stresses that the problem does notneed to be technical, in contradiction to the decision inT 0641/00 Comvik where it is stated that the problemmust be technical.

However, the Comvik formulation of the problem is stillbeing used in some cases. For example, in decisionT 2063/09 BlackBerry (29 October 2013) the Board con-sidered that the claimed feature, that a user had a fixedmonthly data limit in an image repository, was a non-technical feature that could be added to the problem asa constraint to be met. It does not seem to have beennecessary for the Board to taken this approach, sincesuch data limits are very well known and it could easilyhave been established that they were part of the priorart (which appears to have been the view adopted in theexamining division decision under appeal). If the presentproposal for formulating the problem is adopted, theBoard would not be able to add such a feature to theproblem simply because it was in the claim and instead itwould have to show that the problem (including theclaimed non-technical feature) was obvious in view ofthe state of the art. In T 2063/09, it would probably havebeen easy for the Board to have done this.

Conclusion

The purpose of the problem and solution approach is todetermine whether the claim is obvious over everythingmade available to the public before the priority date ofthe claim (Article 56 EPC, together with Article 54(2)and Article 89). Since the problem and solution analysisrelies on an assessment of whether the claim providesan obvious solution to the problem, this approach canonly be valid if the problem is itself known or obvious

over everything made available to the public before thepriority date of the claim. If the problem is not obviousover what is already known, no valid conclusion can bedrawn from the problem and solution analysis becauseobviousness of the solution over the problem fails toestablish obviousness of the invention over the state ofthe art.

Since the assessment of inventive step has regard toeverything made available to the public, it is acceptablefor the problem to start from any known disclosure, andit is acceptable for the problem to include non-technicalfeatures provided that they are known or obvious. How-ever, since an invention is inherently technical (Article52(1) EPC), the solution provided by the claim cannotderive inventive step from non-technical features thatdo not contribute to a technical effect. On the otherhand, the claim can derive an inventive step from a tech-nical feature that is new and not obvious over what isalready known even if the technical feature is an obvioussolution to or consequence of a non-technical problemor consideration that is itself unknown and not obviousover what is already known. The mere fact that a tech-nical feature has a (new and non-obvious) non-technicalaim or motivation cannot be used to deprive that featureof inventive step over what is already known. In order tobe relevant, that aim or motivation must itself be alreadyknown or obvious, and this applies equally to non-tech-nical aims and to technical aims.

This will require a change in the manner of formulatingthe problem in cases where a non-technical aim is statedin a claim, but I believe that this change is both necessaryand justified for the reasons set out above.

The rule, that the problem must be obvious over thestate of the art, should make it easier to determinewhether the problem has been stated in a permissiblemanner or whether it inadvertently includes an imper-missible pointer to the solution. This may provide anobjective way to resolve disputes over the proper formu-lation of the problem in some cases.

To be continued


The EPC requires a statementabout the extent to which a

patent is opposed (R. 76 (2) (c) EPC).If it is not the entire patent that isindicated in this statement, the oppo-sition is understood to be a limitedopposition. The way in which a lim-ited opposition influences the exam-

ination of the opposition has been determined in moredetail in the decision G 9/91 of the Enlarged Board ofAppeal. However, not all case constellations have been

considered. The question remains where exactly the limitsof a limited opposition lie and if, and under which condi-tions, such a limited opposition may later be extended. Toanswer this question, an investigation into the nature ofan opposition as well as a critical review of the reasons ofthe decision G 9/91 was the subject of a previous part Aof this article. Based on the analysis of part A, the presentpart B of the article identifies the limits of a limited oppo-sition and the conditions under which they can be pushed.The present part B seamlessly continues part A, thus start-ing with section III.

Limits of a Limited Opposition

L. Walder-Hartmann (DE)

Part 2

This is part B of a longarticle. Part A was published in issue02/2016 of the epi Information

III. Examination Beyond the Extent to Whichthe Patent is Opposed

The principle of procedural fairness and the principle ofprocedural economy found in part A to determine thelimits of limited opposition are applied here to answer thequestion where exactly the duty and power of the EPO toexamine a limited opposition ends and under which con-ditions the extent to which the European patent is opposedcan be changed later in the proceedings.

1. Amendment with a feature from thedescription

There is one trivial case in which examination (beyond theextent to which the patent is opposed) shall be carriedout. Consider the example case again. If the patenteeamends claim 1 with a feature from the description andrequests maintenance of the European patent in thisamended form then the opponent is free to oppose thisamended form. The indication in the statement under Rule76 (2) (c) EPC as to the extent of the opposition only refersto the claims as granted. If the patent is defended in someother form the opponent’s statement does not cover thissituation, and, as is established practice in considerationof the new situation created by the patentee, proceduralfairness dictates that the opponent can react to this newsituation, and even perform a further search and introducenew facts and evidence relating to the amendment.

2. Examination of independent claims

Further, in direct continuation of the balance of interestestablished in the second part of the order of the decisionG 9/91, there are cases in which examination may even becarried out on independent claims that were not includedin the statement under Rule 76 (2) (c) EPC. Such a case isgiven if the independent claim is a claim for which novelty

1 Related: T 1350/09, reason 1 of the decision. Contrary to the case discussed here, the patent was formally opposed in its entirety in thecase at hand in the decision T 1350/09.

and inventive step need not be examined in grant pro-ceedings if another independent claim is found allowable.Examples of such independent claims are given in theGuidelines for Examination in the EPO, G‑ VII, 13, andinclude method claims for manufacturing a product orclaims directed to the use of a product, where an allowableindependent claim is directed to the product, provided themanufacturing method inevitably leads to that product.For instance, if claim 1 of the example case were directedto a product found allowable during prosecution, thenclaim 1 directed to “A manufacturing method, comprisingproviding the product of claim 1” would be such an inde-pendent claim, no matter if it contained further featuresor not.

Since such an independent claim is granted without furtherexamination, just like regular dependent claims, it is justifiedthat the Opposition Division shall also have the opportunityto examine such a claim if its validity is prima facie doubtfulbased on information already available in the proceedings.1

For the example claim “A manufacturing method, com-prising providing the product of claim 1” the validity isevidently not only doubtful if claim 1 is found invalid, butthis claim is certainly invalid. Further, claims dependingfrom such an independent claim may also be examinedunder the same conditions if a corresponding request tomaintain the patent in amended form is put forth.

3. Consent of the patentee

In addition, the opposition can be extended, possibly upto the point where it becomes an unlimited opposition, ifthe patentee consents. The situation is analogous to what


is said in Reason 19 of the decision G 9/91: volenti non fitiniuria, i.e., a person who consents does not suffer injustice.The distinction made in Reason 12 of the decision G 9/91according to which the extent is a matter of formal com-petence while the introduction of new grounds of opposi-tion are a question of procedural principles is unfoundedas explained above. Both situations are governed specifi-cally by the principles of procedural fairness and proceduraleconomy. In practice, the opponent would have to invitethe patentee to declare his consent which, if given, removesprior legal effects of the limitation of the opposition bythe statement made in accordance with Rule 76 (2) (c)EPC. This means, inter alia, that substantive examinationmust be carried out by the EPO, and is not limited to becarried out on available information. The general rules ofa regular, unlimited opposition apply. The EPO is not in aposition to forestall this extension of the opposition, inparticular because the opposition fee for a limited opposi-tion is not less than the opposition fee for an unlimitedopposition.

4. Intervention of an assumed infringer

The decision G 9/91 does evidently not consider the situ-ation in which an assumed infringer intervenes into alimited opposition. The intervener becomes a party tothe proceedings and shall be treated as an opponent(Art. 105 EPC). The question is if the intervener is subjectto the limitations of the opposition imposed by the state-ment of the opponent according to Rule 76 (2) (c) EPC orif his opposition is an unlimited opposition unless indi-cated otherwise by the intervener.

If it were true that no opposition proceedings are in exis-tence concerning non-opposed subject matters and if itwere true that the EPO lacked the formal competence todecide on such matters once and for all after expiry ofthe opposition period one might be led to believe thatthe intervener would have to accept the opposition pro-ceedings in the state that they are in, excluding the pos-sibility to oppose these other subject matters. However,these assumptions are incorrect as explained above. Thetime limit set by the opposition period does not apply tothe intervener in any case, and so any reasoning basedthereon cannot hold for the intervener. The question hasto be decided once again by the guidance of the principleof procedural fairness.

In this case, it is the patentee who creates a new situationby attacking the assumed infringer. If a claim assertedagainst the assumed infringer in the infringement pro-ceedings belongs to those claims to which the extent ofthe limited opposition does not reach, a fair balance ofthe interests of the patentee and of the assumed infringer(intervener) shifts entirely towards protecting the interestof the assumed infringer to bring down the claimsasserted against him as a means of defence. Even if theclaims asserted against the assumed infringer are among

those claims covered by the limited opposition, theassumed infringer (intervener) shall still be free to opposethe European patent in an unlimited way. There is noreason to restrict the possibility of defence for theassumed infringer to the choice made by the opponent.The situation and the interests are not different to the fil-ing of a limited opposition by a first opponent and thefiling of an unlimited opposition by a second opponent,resulting in opposition proceedings like any normal oppo-sition proceedings resulting from a single unlimited oppo-sition.

In summary, just as the intervener is not bound to thegrounds of opposition set forth by the opponent2, he isalso not bound by the extent to which the opponentopposed the patent in the statement made in the noticeof opposition in accordance with Rule 76 (2) (c) EPC. His(unlimited) intervention shall be treated as an unlimitedopposition.

That this is an appropriate result is further justified bythe following consideration. In Germany, the contractingstate with the highest number of European patents andEuropean patent applications, invalidity of a patent cannotbe claimed as a defence in infringement proceedings.Instead, nullity proceedings are separate proceedingsdealt with by a special court, the Federal Patent Court.German law provides that an action for declaration ofnullity of a patent may not be brought as long as oppo-sition may still be filed or opposition proceedings arepending (Section 81 paragraph 2 of the German PatentAct)3. There is a silent – and correct – assumption herethat opposition proceedings always seize the wholepatent as the matter in dispute. If one did not allow theassumed infringer to fully oppose a European patent ifhe intervenes into European opposition proceedings basedon a limited opposition he would be left without thepossibility to defend himself against “unopposed patentclaims” asserted against him in Germany until such timewhen the European opposition proceedings are termi-nated4. With the possibility of the patentee to appeal,and possibly with a patentee trying to prolong the pro-ceedings in any other way, the assumed infringer may befactually bereft of an effective defence in Germaninfringement proceedings.

5. “Intervention” by an opponent to his ownlimited opposition

When an opponent filed a limited opposition, expressinghis limited interest to attack the European patent, butthe patentee changes the situation by suing this oppo-nent, the opponent’s interest to attack the European

2 G 1/94, Order. 3 BGH, BGHZ 163, 369, mn. 4 – Strahlungssteuerung; GRUR 2011, 848,

mn. 9f. – Mautberechnung; Schulte/Voit, Patentgesetz mit EPÜ,. 9.Auflage, § 81 PatG, mn. 34ff.

4 BGH, BGHZ 163, 369, mn. 6 – Strahlungssteuerung; GRUR 2011, 848,mn. 9 – Mautberechnung.


patent to a larger extent will surge, and legitimately so.Then, the opponent shall not be bound to the limitationof the opposition. The situation and the balance of inter-ests are analogous to the case discussed above when athird party is sued and becomes an intervener. There isno reason why the third party intervening in limited oppo-sition proceedings should be in a better position thanthe opponent himself.

In practice, the opponent could not intervene into hisown opposition proceedings under Art. 105 EPC becausehe cannot become a party to the proceedings twice.Instead, he should be allowed to prove that the conditionsset forth under Art. 105 (1) (a) or (b) EPC are fulfilled,and then to extend his opposition freely.

This mechanism does not only work once. Assume thateither the opponent extended his opposition, but not upto the point where it becomes unlimited, or else a thirdparty intervener filed a limited intervention to be treatedas a limited opposition, and then the patentee extendshis infringement action. Again, it is the patentee whochanges the balance of interest, and so the opponent orthe intervener shall not be bound by the limitations oftheir opposition and intervention, respectively.

IV. Conclusion

An opposition, be it unlimited or limited, always seizesthe entire European Patent. A limited opposition means,in the first place, a limitation of the duty and the powerof the Opposition Division to examine an opposed Euro-pean patent. Whether examination of granted claimslying outside the extent to which the patent was opposedaccording to the statement made by the opponent in ful-fillment of Rule 76 (2) (c) EPC needs to be carried out,and if it can be carried out, is a question of exercise ofdiscretion by the Opposition Division. The discretion ofthe Opposition Division in this matter is analogous to thediscretion it has to exercise when deciding if oppositionproceedings are to be continued of its own motion underRule 84 (2) EPC. The discretion has to be exercised duti-fully having regard to fairly balancing the interests of theparties in interest, i.e., the parties to the proceedings andthe public, and having regard to procedural fairness andprocedural economy. The limitation of the duty to exam-ine is the lower bound of the scope of discretion (“abuseof discretion by doing too little”), and the limitation ofthe power to examine is the upper bound of the scopeof discretion (“abuse of discretion by doing too much”).The statement of extent under Rule 76 (2) (c) EPC hasfurther implications on the right to appeal (conditionalwaiver).

Following these principles the consequence is thatgranted claims not mentioned in the statement of extentshall in principle not be examined, be it as independentclaims in the patent as granted or as independent claims

in the patent as amended during opposition. Two excep-tions apply. Firstly, such claims may be examined providedtheir validity is prima facie in doubt on the basis ofalready available information. The justification is givenin this case by a predominant interest of the public.Examples are the examination of (pseudo-)independentclaims in the patent as granted, and the examination ofclaims which formerly depended on an attacked inde-pendent claim and which are made the subject matterof an independent claim during opposition proceedings.Secondly, such claims may be examined if the balanceof interests changes after expiry of the opposition perioddue to an action of the patentee. This action can be thepatentee’s consent to extending examination. This actioncan also be an infringement action brought against theopponent or other assumed infringer who then inter-venes in opposition proceedings. In the latter case, theopponent or intervener are free to oppose the patent toany extent.

This result fits in with the order of the decision G 9/91 ifthat order is carefully interpreted.

Zusammenfassung

Das EPÜ erfordert eine Erklärung darüber, inwelchem Umfang gegen das europäische Patent

Einspruch eingelegt wird (R. 76 (2) (c) EPÜ). Falls nichtdas gesamte Patent in dieser Erklärung angegebenwird, wird der Einspruch als beschränkter Einspruchverstanden. Die Art und Weise, in der ein beschränkterEinspruch die Prüfung des Einspruchs beeinflusst,wurde im Detail in der Entscheidung G 9/91 der GroßenBeschwerdekammer festgelegt. Es bleibt jedoch dieFrage, wo genau die Grenzen eines beschränkten Ein-spruchs liegen und ob, und falls ja unter welchenBedingungen, ein solcher beschränkter Einspruchspäter erweitert werden kann. Um diese Frage zubeantworten, war eine Untersuchung der Rechtsnaturdes Einspruchs und eine kritische Beleuchtung derEntscheidungsgründe der Entscheidung G 9/91 Gegen-stand des Teils A dieses Aufsatzes. Aufbauend auf derAnalyse des Teils A identifiziert der vorliegende Teil Bdes Aufsatzes die Grenzen des beschränkten Einspruchsund die Bedingungen, unter welchen sie verschobenwerden können. Der vorliegende Teil B führt den TeilA nahtlos fort und beginnt daher mit Abschnitt III.


Effectiveness of EQE Training

B. Cronin (CH)

Aprevious article (epi Information 02/2016) showedthat the EQE was effective for promoting training

and outlined the importance of exam-driven training forour profession and for the European patent system. Theefficiency of training can be assessed in terms of itslearning outcomes, and this article uses the notion oflearning outcomes to assess the effectiveness of thetraining. The EQE acts as an incentive for training butwas set up with no pre-determined learning outcomes.However, by postulating notional learning outcomes thattrainees ought to accomplish at the end of their trainingprogramme, and then verifying the accomplishment ofthese learning outcomes by comparing with what isachieved by successful EQE candidates, this article cor-roborates the effectiveness of EQE-driven training.

Introduction

The previous article “Thoughts on EQE Training” (epi Infor-mation 02/2016) demonstrated that the EQE has provenitself to be an effective means for promoting professionaltraining throughout Europe. Can we now ascertain theefficiency of this training?

Learning Outcomes

The efficiency of training can be assessed in terms of itslearning outcomes and I would like to use this notion toassess the effectiveness of our exam-driven training.

In academic circles, learning outcomes are used for thepurpose of course design or for designing entire learningprogrammes, for motivating students and for providing ameans of facilitating the assessment of student perform-ance. There are various definitions of “learning outcome”for instance:

“Statements of what a learner can be expected to know, understand and/or do as a result of a learningexperience”1

Learning theories require that it should be possible tomeasure or assess if a learning outcome has been achieved. In a larger sense the term “learning outcomes” also appliesto complete learning programmes and to actually achievedoutcomes rather than those to be achieved.

In our profession, trainees follow an exam-driven learningprogramme that extends over several years depending onthe number of sittings. It consists basically of four compo-

nents that are modulated according to the trainees’ per-sonal situation:

• exam-directed basic training• personal work on past exam papers• external exam preparation by courses, mock exams etc.

and • work experience coordinated with exam preparations.

By the end of a period of 6-8 years in the profession, aconsiderable number of trainees has followed the just-defined learning programme, sat the EQE and succeededin all or most papers.

At the outset, we do not confront the trainees with aspecified set of learning outcomes. Instead, passing theexam is set as a challenge to provide evidence of fitness topractice. Nevertheless, I believe the learning programmecan be expressed in terms of learning outcomes that areactually achieved even though these outcomes were notidentified at the outset but instead identified using hind-sight.

From my observations, I have identified a number of learn-ing outcomes that I think have been achieved by traineesfollowing the overall exam-driven learning programme.Here is a list of those I identified. After going through thelist, I will discuss how the learning outcomes can be verifiedor measured.

By the end of the 6-8 year programme, according to myobservations our trainees have accomplished the followinglearning outcomes, namely:

1) Assumed responsibility in representing clients.2) Defended successfully client’s interests.3) Provided reliable patent/legal advice in response to

client’s questions.4) Performed client-set tasks according to requirements.5) Mastered the main aspects of European patent law.6) Acquired a Patent Attorney’s legal thinking.7) Developed arguments to achieve legal consequences.8) Demystified the novel/not-novel boundary.9) Mastered the problem and solution approach.

10) Understood the concept of claim scope.11) Drafted claims for maximum protection and compli-

ance.12) Amended claims for compliance with the EPC.13) Managed vast quantities of information/facts.14) Shown ability to work under pressure.15) Selectively input information by purposeful reading.16) Planned set tasks to obtain a desired outcome.1 The Credit Common Accord for Wales, QCA/LSC, 2004, p. 12


17) Optimised performance of a task in a set time bygood time management.

18) Acquired the perception of time peculiar to the PatentAttorney profession.

Verification of the Training Programme’s Out-comes

How can we ascertain whether these learning outcomeshave been achieved? For the main part, success in theEQE or a specific paper can be used as proof. Let’s con-sider the outcomes in turn to see what support we havefor their achievement.

The first four outcomes are all related to the essence ofa Patent Attorney’s job, performing tasks for clients.

Assuming responsibility in representing clients presup-poses that the trainees have evolved from being studentswho are willing to learn to being representatives whotake on clients and accept responsibility for handling theclient’s patent matters. Candidates for the EQE enterinto an attorney-client relationship with the ExaminationBoard who act as a notional client that supplies tasks tobe completed and judges if the tasks are performed upto standard. Success in the exam implies that the client’stasks have been performed up to a standard of fitnessto practice. By acting for the exam client the candidateshave shown that they have assumed responsibility in rep-resenting clients.

Outcome 2 “defending successfully client’s interests” isa key aspect of the European Patent Attorney’s task asset out in the epi Code of Conduct. Successfully defend-ing a client’s interests is attested by passing exam papersA, B and C where the client imposed a policy of maxi-mum defense of its interests including full compliancewith the EPC. Candidates who defend the EQE client’sinterests successfully are deemed fit to represent anyother client.

Outcome 3 “providing reliable patent/legal advice” isalso defined in the Code of Conduct as a key aspect ofour task. Providing reliable legal advice in response toclients’ questions is tested mainly in paper D Part I. Reli-able legal advice means correct advice where the legalbasis is identified. For most candidates, study for thelegal paper represents a monumental effort that gener-ates enough momentum for them to continue providingreliable legal advice throughout their careers. Success inpaper D Part I definitely attests that this learning outcomehas been achieved.

Performing client-set tasks according to given require-ments is attested mainly by success in paper A – draftingso as to obtain maximum protection that meets up toofficial requirements – paper B salvaging the client’s pro-posed amendment and arguing in support of patentabil-

ity – and paper C presenting all good arguments againstpatentability and only arguments that will succeed. Pass-ing these papers attests that the candidate has completedthe set tasks to satisfaction.

The next learning outcomes are related to legal matters,first mastery of the main aspects of European patentlaw, substantive and formalities. Novelty and inventivestep are the main legal notions that are exhaustivelytested in papers A, B and C. Priority issues are extensivelytested in papers C and D. A wide spectrum of legal mat-ters pertaining to the EPC and the PCT is tested in paperD. There is no way of succeeding in the EQE withoutmastering the main aspects of European patent law.

A Patent Attorney’s legal thinking takes years to developand this form of legal thinking sets our profession apartfrom ordinary lawyers. Our careers are spent largely tryingto achieve legal consequences wanted by clients (likeobtaining a valid patent) and avoiding unwanted legalconsequences (like losses of rights). It takes years for awould-be Patent Attorney to accumulate a personal data-base of all sorts of facts that lead to various legal conse-quences. There is no doubt that training for and passingthe EQE greatly accelerates the development of our spe-cific type of legal thinking.

Making arguments to achieve legal consequences istested in paper B (arguments in support of patentability)and paper C (arguments against patentability). Thesepapers have predetermined legal consequences so can-didates have to locate and select facts that they thenhave to present as arguments in support of the givenlegal consequence. Developing convincing arguments isa key to obtaining good marks on papers B and C and isthe hallmark of a proficient European Patent Attorney.

The boundary between what is novel and what is not-novel is a mystery for the uninitiated. Demystifying thisboundary is one of the challenges met by our trainees.Presenting non-novel claims in papers A and B is a shortcut to instant death, as is attacking a novel claim forlack of novelty or a non-novel claim for lack of inventivestep in paper C. Bearing in mind that the novel/not-novel boundary can be razor edged, the difficulty ofmastering it cannot be underestimated. Achieving successin these papers implies that trainees are ready to tacklethis tricky issue during their careers.

Using the problem and solution approach to assess inven-tive step is a requirement of the EQE because the clientinstructs candidates to follow the Guidelines which ofcourse include the problem-solution approach (GL-GVII.5). Candidates use the problem-solution approachinformally in paper A (explaining the problem solved), inpaper B to support patentability and in paper C againstpatentability. Trainees are also confronted with the prob-lem-solution approach in their dealings with the EPO.


This outcome is surely achieved.

For the man in the street the concept of claim scope isdifficult to understand, which is one good reason forconsulting a Patent Attorney. Understanding claim scopebegins nowadays with claim analysis in the pre-exam,followed by paper A (drafting claims to obtain a desiredscope), paper B (limiting claims to a scope in compliancewith the EPC) and paper C (attacking claims of unduescope). By considering claim scope from all angles overseveral years, our candidates come to a firm understand-ing of this concept.

By preparing for and passing paper A, trainees havedrafted claims for maximum protection and compliancewith EPC requirements as stipulated by the client.

Amending claims for compliance with the EPC was thetask of paper B up to 2012. From 2013 this continues tobe tested in a more limited way, mainly for compliancewith Article 123(2). Amending claims to salvagepatentability inevitably means restricting the claim scopeand doing this without inadmissibly extending the subjectmatter presents a particular challenge. This aspect hasbeen tested by paper B.

Patent Attorneys must manage vast quantities of infor-mation/facts. This is tested by preparing for and sittingthe EQE. In their exam preparations, candidates are over-loaded with numerous legal sources and commentariesthat they have to manage, starting with the EPC itself,the Guidelines, the PCT, and so on. The list is long. Addi-tionally, the individual papers all contain abundant factsthat have to be managed during practice and during the exam. Dealing with enormous quantities of informa-tion/facts is part of exam preparation and is attested bysuccess in the exam.The ability to work under pressure is of course an impor-tant attribute for a European Patent Attorney and can-didates have demonstrated this ability by succeeding inthe different papers of the exam.

The pressure of the EQE is of two sorts, first the pressuregenerated by the accumulation of exam preparationwork, especially where candidates begin late and over-work in the months before the exam. Other candidatesreduce this pressure by spreading out their exam prepa-rations and deferring the sitting of different papers. Inboth cases, the successful candidates showed they couldmanage this type of pressure.

The second type of pressure is that for completing thetask of the various papers in the allotted time. The doa-bility of the exam is tested by guinea pigs who establishthat each paper can be done in the set time by a well-trained, brilliant, qualified individual. For the majority ofcandidates, completing the papers in time represents amajor challenge that depends largely on their degree of

preparation. Working under time pressure tends to pushcandidates into an error mode and errors tend to com-pound leading to poor quality answers and low scores.Successfully finishing these exams attests an ability towork under pressure without making too many errors.

The next outcome concerns inputting information byreading. Reading is something we learn at school andtake for granted. In the EQE, candidates are faced withan abundance of information, a fraction of which is use-ful for the task at hand. This helps to develop a PatentAttorney’s way of reading which is to read given docu-ments so as to select information according to the pur-pose of the given task. For example, in the oppositionpaper the candidate will read the patent to be opposedsolely looking for ammunition for future attacks. In thisway, training for the EQE develops a Patent Attorney’sability to select information by purposeful reading.

Planning tasks to obtain a desired outcome is inherentin the EQE. To complete every part of the exam in theallotted time, candidates must follow the workingmethod : read – plan – write. The planning phase isspecific to each part of the EQE and has to be speciallyprepared. In their preparations, candidates do a lot ofpre-planning which reduces the amount of residual plan-ning to complete the specific task on the day of theexam. One way or another, candidates are forced toadopt a planning strategy for each EQE paper. The plan-ning compacts an unstructured factual input into a struc-tured legal output in a short time and departs fromeveryday practices where work can be spread over severaldays or weeks. Success in the exam attests success ofthe plan.

The next outcome is optimising the performance of atask in a set time by good time management. This impliesnot just finishing in time, but making full use of theavailable time to perform the task. This can be accom-plished by practice on earlier papers to get to theexpected level of answering, followed by acceleratingthe pace to finish in time, always correcting so the answerbecomes more and more reliable. Good time manage-ment for the EQE flows from good preparations.

The last listed outcome is acquiring the perception oftime that is peculiar to our profession. Practicing our jobinduces us to adopt a forward-looking attitude that isdeveloped by exam preparations. By doing many time-related Part I questions our trainees are conditioned tobecome aware of time limits and the associated conse-quences. The situations usually start in the past butinevitably project into the future. The Part II legal opiniongives trainees a golden opportunity to foretell futureevents as a basis for advising the client to plan ahead.Just like fortune tellers who use a crystal ball, we makeuse of time diagrams for peering into the future, to theamazement of our respective clients. Extended practice


on the time-related aspects of the exam greatly acceler-ates acquiring a Patent Attorney’s perception of time.

It follows that all of the postulated learning outcomesare achieved. These outcomes can be regarded as com-ponents of fitness to practice in core activities. Thus, wecan consider that the training programme’s learning out-comes express different aspects that make up the multi-facetted concept of fitness to practice. In any event, can-didates who have followed the training programme andpassed the EQE are well equipped to perform as Euro-pean Patent Attorneys. Note that it is the training that produces the results, notthe exam itself which can be a bad experience for thosewho tackle it unprepared.

Summary/Conclusions

In summary, my belief that exam-driven training is effec-tive is corroborated by the examination we have madeof the accomplishment of the given learning outcomes.

As we have seen, all of the postulated learning outcomesare accomplished, which means that the trainees havereached a high level of competence. Over 10,000 candi-dates have passed the exam to date which correspondsto an overall 80% pass rate. These candidates were allbrought to “fit to practice” level by exam-driven training.This represents a tremendous collective achievement ofour profession. In my opinion we could not have accom-plished this result by any other type of training.

Die Wirksamkeit der EEP Ausbildung L’efficacité de la formation EEQ

Effizienz der Vorbereitung auf die EEP

EEin vorangegangener Artikel hat aufgezeigt, dass dieEEP (europäische Eignungsprüfung) bei der Förderung

der Ausbildung wirksam war und hat die Bedeutung derprüfungsorientierten Ausbildung für unser Berufsbild undfür das Europäische Patentsystem hervorgehoben. Die Effi-zienz der Ausbildung kann hinsichtlich der Lernergebnissegewertet werden und dieser Artikel nutzt die Ideen derLernergebnisse, um die Wirksamkeit der Ausbildung zubemessen. Die EEP schafft somit einen Anreiz für die Aus-bildung, wurde aber ohne vorher festgelegte Lernzieleerstellt.Wie auch immer, beim Festlegen fiktiver Lernergebnisse,die Auszubildende am Ende ihrer Ausbildung erreichensollten und der Überprüfung der Erfüllung der Lernzieledurch einen Vergleich der Resultate bei einem erfolgreichenAbschluss eines EEP Kandidaten, belegt dieser Artikel dieEffizienz einer prüfungsorientierten Ausbildung zur EEP.

Abrège

Un article précédent a montré que l'EEQ était efficacepour la promotion de la formation et a souligné

l'importance que ces formations dérivées de l’examenont eu pour notre profession et pour le système de breveteuropéen. L'efficacité de la formation peut être évaluéeen termes de « résultats d'apprentissage », et cet articleutilise cette notion de résultats d'apprentissage pourévaluer le rendement de la formation. Le EEQ agit commeune incitation à la formation, mais a été mis en placesans définir des résultats d'apprentissage prédéterminés.Par contre, en supposant les résultats d’apprentissagethéoriques que les stagiaires devraient accomplir à la finde leur formation, puis en vérifiant la réalisation de cesrésultats d'apprentissage en comparant avec ce que lescandidats ayant réussi EEQ ont accompli, cet article cor-robore le rendement de la formation dérivée de l’EEQ.


What the Lord’s Prayer is to Christians all over the world,is the problem and solution approach to European

Patent Attorneys. You pray it whenever it comes to theassessment of inventive step – before the Examining Division,the Opposition Division or the Board of Appeal – in hopethat your prayer will be answered and a patent will begranted. While it cannot be proven that the Lord’s Prayer isGod’s favourite prayer, there cannot be any doubt that theproblem and solution approach is the EPO’s favourite prayer.And what is more, it is the one and only that will beanswered. This should be reasons enough to know as muchas possible about this approach. Although the problem andsolution approach is very well established case law of theBoards of Appeal, there has been a development in theunderstanding of the term “closest prior art” which has nowfound its way into the latest version of the Guidelines forExamination in the European Patent Office (GL). While theGuidelines give some advice on how to apply the problem

and solution approach,some more examplesfrom the case law may behelpful to add some fleshto the bones in order tofully elucidate theapproach. The purpose ofthis article is to give anintroduction into the con-cept of the problem andsolution approach in itsbasic version by supple-menting the correspon-ding passages in theGuidelines with recent decisions of the Boards of Appeal andthe author’s personal thoughts. This article does not coverthe treatment of a mix of technical and non-technical features,partial problems, problem inventions and secondary indicia.

The Problem and Solution Approach – Basic Case Law and Recent Development (I)

M. M. Fischer (DE), European Patent Attorney

Part 1

This is the first part of an article that is based on a talk held by the authoron September 8, 2015 at the Euro-pean Patent Experts’ Forum (EuPEX) in Munich. The author thanks theaudience for the animated discussionaccompanying the talk. Some of the contributions have been woveninto the article. The second part of this article will be published in epi Information 4/2016.

The EPO assesses the presence of an inventive step (Art.56 EPC) using the problem and solution approach.Although the problem and solution approach does nothave a direct basis in the EPC, it can be derived from R.42(1) (c) EPC which stipulates that the invention must bedisclosed in terms of a technical problem and its solution.1

The Guidelines state under G-VII, 5 that in order to assessinventive step in an objective and predictable manner, theso-called "problem and solution approach" should beapplied. Thus deviation from this approach should beexceptional. In the problem and solution approach, thereare three main stages:

(i) determining the "closest prior art",(ii) establishing the "objective technical problem" to be

solved, and (iii) considering whether or not the claimed invention, starting

from the closest prior art and the objective technical prob-lem, would have been obvious to the skilled person.

A. Closest Prior Art

Turning to the identification of the closest prior art first,the main criteria for selecting the closest prior art docu-ment2 are that the closest prior art:

a) should have a same or similar purpose or effect as theinvention or

b) should deal with a similar technical problem as the inven-tion or at least belong to the same or a closely relatedtechnical field as the claimed invention or

c) should have a similar use and require minimal structuralmodifications.

It has always been emphasized that the number of featuresthat the claim has in common with the prior art is by itselfnot a suitable criterion for selecting the closest prior art.Although the criteria above are based on well-establishedcase law, it still seems to be a constant source of disputeas more recent decisions show.

A lot of effort was invested in the past to show that onedocument is the (one and only) closest prior art document,while other documents may have been prematurely disre-garded as closest prior art documents3. This practice is prob-ably also due to the superlative expression “closest priorart”. Fortunately, in response to some recent decisions ofthe EPO, also section G-VII, 5.1 of the Guidelines has beenupdated such that it now explains that in some cases thereare several equally valid starting points for the assessmentof inventive step, e.g. if the skilled person has a choice of several workable solutions, i.e. solutions starting fromdifferent documents, which might lead to the invention. 1 Visser, D., “The Annotated European Patent Convention”, 21st edition,

2013, p.115, section 62 To be precise, it can also be a single embodiment (item) within a docu-

ment. Art 56 EPC itself states that documents within the meaning ofArt. 54(3) EPC must not be considered in deciding whether there hasbeen an inventive step.

3 This practice was, for example, criticized in the decision “Fisch -bissanzeiger” (BGH Xa ZR 138/05) by the Federal Court of Justice of Germany.


The requirement of inventive step is negatively defined inthe EPC. Pursuant to Art. 56 EPC, an invention shall beconsidered as involving an inventive step if, having regardto the state of the art, it is not obvious to a person skilledin the art. That means that it cannot be shown directlythat the subject-matter of a claim invention involves aninventive step. Rather, if the subject-matter of a claim canbe derived from the state of the art in an obvious manner,it can be concluded that it does not involve an inventivestep; in all other cases, it involves an inventive step. Theproblem and solution approach allows to construct a log-ical chain of arguments (or “convincing chain of consid-erations”) to demonstrate that the subject-matter of aclaim can be derived from the state of the art in an obviousway. If such a logical chain of arguments cannot be built,the subject-matter of the claim involves an inventive step.

As a consequence, in order to show that the subject-matterof a claim involves an inventive step, it may be necessaryto apply the problem and solution approach to each ofthese starting points in turn, i.e. in respect of all theseworkable solutions. In order to show that the subject-mat-ter of a claim does not involve an inventive step, it is suffi-cient to show starting from one appropriate starting pointusing the problem-and-solution approach that it was obvi-ous for the skilled person to arrive at the claimed subject-matter.4 The Guidelines come to the conclusion that theonly relevant question is whether the document used is anappropriate/feasible starting point for assessing inven-tive step.

Hence, any document that fulfills one or more of the cri-teria mentioned above may qualify as an appropriatestarting point. Instead of thinking of the selection of theclosest prior art as the one and only document, oneshould think of this step in terms of a (pre-)selection of aset of documents from which the skilled person couldhave realistically started to arrive at the subject-matter ofthe claim in an obvious way. In other words, only those

starting points (documents) are considered from whichthe skilled person had a reasonable chance to arrive atthe subject-matter of the claim in an obvious manner5. Ifit cannot be shown from these appropriate starting pointdocuments that the subject-matter of the claim is obvious,then it can be shown even less that the subject-matter ofthe claim can be arrived at in an obvious way startingfrom any other (inappropriate) starting point which leadsto the conclusion that the subject-matter of the claim isinventive.

In T 967/97 the Board stated that the problem and solutionapproach was essentially based on actual knowledge oftechnical problems and ways to solve them technically thatthe skilled person would, at the priority date, be expectedto possess objectively, i.e. without being aware of thepatent application and the invention that it concerned. Ifthe skilled person had a choice of several workable solu-tions that might suggest the invention, the rationale ofthe problem and solution approach required that the inven-tion be assessed relative to all these possible solutionsbefore any decision confirming inventive step was taken.To deny inventive step, no special grounds had to be givenfor a pre-selection of prior-art citations, even if severalworkable solutions were available to the skilled person;the reasoning on inventive step merely served to showthat the invention was obvious to the skilled person fromthe prior art in relation to (at least) one of these solutions(see also T 558/00, T 970/00, T 172/03, T 323/03, T 21/08, T 308/09, T 1289/09).

The following table6 provides an exemplary overview overhow the Boards of Appeal have applied the main criteriaabove (and other criteria) in various cases to qualify docu-ments as appropriate starting points:

4 section 3.5 of http://www.bardehle.com/en/publications/interactive_brochures/inventive_step.html

5 If this selection was not made, theoretically, one would have to test eachavailable prior art document whether one could (and would) arrive at the sub-ject-matter of the claim in an obvious manner from it until one finds such adocument. In this case, the subject-matter of the claim is not inventive. If sucha document is not found, one will have to go through all prior art documentsavailable to show that the subject-matter of the claim is inventive.

6 A comprehensive selection of decisions illustrating the selection of the closestprior art can also be found at “Case Law of the Boards of Appeal”, sectionI.D.3.4, 7th edition, 2013

“1. A piston for an inter-nal combustion engine...”

Piston for internal com-bustion engines

Piston for a compressor Same purpose (generi-cally the same)

T 570/91

"1. An electrically oper-ated hand mixer for pro-cessing food…”

Electrically operated handmixer

Stand mixer Similar use and requiresminimal structural modifi-cations. In contrast to thestand mixer, in the handmixer, the drive unit andthe mixing tool are in aright angle.

T 817/94

Claim Appropriate starting point

Inappropriate starting point

RemarkDecision


“1. Military protectivehelmet comprising acalotte resistive againstgunfire…”

Military protective helmet A worker’s safety helmet.This document also formspart of the knowledge ofthe person skilled in theart and can be used as adocument in which theskilled practitioner couldfind a solution to anobjective technical prob-lem, see also T 149/00.

Same purpose (generi-cally the same)

T 487/95

"1. An image projectionapparatus comprising an information displaysystem having at leastone display panel [typi-cally a LCD panel] with a rectangular surface forgenerating images to beprojected,…”

Image projection appara-tus having an LCD panelwith a rectangular surface for generatingimages to be projected. Italso relates to problem ofincreasing the brightnessand uniformity of the illu-mination system associ-ated with said displaypanel.

Lenticulated collimatingcondensing system. Itdoes not relate to LCDprojection.

Examining Division choseinappropriate CPA, possi-bly based on number ofcommon features.

T 870/96



RemarkDecision

"1. A method of con-necting a pair of hermeticoptical fibers having anelectrically conductivehermetic layer coated onoptical fiber glass,…”

A method of connectinghermetic optical fibres byan aerial discharge. It alsorelates to the problem ofreduced break strengtharising in this context dueto the interference of thehermetic layer with thefusion process.

It has no reference to her-metic optical fibres and,not surprisingly, to anyfusion problems causedby the presence of her-metic layers.

Examining Division chosean inappropriate CPA,which cannot be consid-ered as a technically realistic starting point.

T 66/97

<Automatic coffee makerthat has one brew cham-ber for coffee alone ortogether with milk forcappuccino.>

No appropriate startingpoint available.The available prior artdocuments do not showany piece of prior artfrom which the subject-matter of claim 1 couldbe obtained in an obvi-ous manner.

D1 refers to known cof-fee machines whichrequire a human beingfor the preparation ofcappuccino.D1 shows a coffee makerwhich has a first stationfor the delivery of coffeeand a second station forthe delivery of milk foam.A human being has tomove a cup from the firststation to the second sta-tion.

The problem indicated inthe patent and the origi-nal patent applicationrefers to a difficulty thatarises with an automaticcoffee maker that hasone station for the deliv-ery of either coffee orcappuccino. It makessense that the skilled person starts from a cof-fee maker for which thisdifficulty exists. Since thisdifficulty does not existwith a coffee maker asdisclosed in D1, such acoffee maker representsan artificial rather than arealistic starting point.See also T 835/00 whichsays that if a relevantproblem is not derivable,the measures for its solution are a fortiori notderivable. In other words,the invention is not obvi-ous in the light of suchart.

T 513/00

"1. A process for prepar-ing a halogen-freehydroxy- polyalkeneamine composition…."

The most suitable startingpoint is the prior artprocess mentioned in thepatent in suit on page 2,lines 25 to 29, fromwhich the same productswere obtainable as in thepatent in suit via imina-tion of an ozonolysisproduct of a polyolefinand final hydrogenationof the imine.

Evidence was providedthat D5 did not furnishany amination reaction atall but merely an inhomo-geneous mixture of start-ing materials. Since thisevidence was not con-tested by the Appellants,the Board concludes thatD5 is obviously defectiveas would be readilyrecognised by thoseskilled in the art whentrying to reproduce itsdisclosure.

A document which isobviously defective aswould be readily recog-nised by those skilled inthe art when trying toreproduce its disclosurecannot be taken as themost promising andappropriate starting pointfor the assessment ofinventive step. Quiteapart from the fact that askilled person would nor-mally not consider anobviously defective dis-closure at all, the Boarddeems it in particular arti-ficial to select such defec-tive disclosure as a start-ing point for evaluatinginventive step, whenthere exists other prior artwhich is not doubtedwith regard to its disclo-sure but is also directedto the same purpose oreffect as the patent insuit.

T 211/01

"1. Apparatus for pro-cessing a signal compris-ing:

<features relating to hier-archical coding but not tomulticasting>”

In this music-on-demandsystem, a server storesvarious compressed ver-sions of a musical piece,each version correspon-ding to a different con-nection speed betweenthe server and the clientand consequently to adifferent quality. In deliv-ering the music to aclient, the appropriateversion is packetized andcommunicated through apacket-switched net-work.

It discloses the use ofhierarchical coding,which is indeed a majoraspect of the present, butin the context of multi-casting.

A conscious choice ofstarting point not onlydetermines the subject-matter serving as a start-ing point but also definesthe framework for fur-ther development. Thus,using D1 as a startingpoint would mean thatany further developmentwould be carried out inthe context of multicast-ing: it is unrealistic tosuggest that, startingfrom this disclosure, theskilled person would gooutside this framework -indeed take a technicalstep back - to develop anon-multicasting system(see also T 439/92).

T 1228/08



RemarkDecision

"1. A syringe by whichmedicine may be appor-tioned in preset dosesfrom an ampoule…”

A syringe by which medi-cine may be apportionedin preset doses from anampoule.

The syringe disclosed inD6 is not of the sametype as that claimed,since it is not a syringe bywhich medicine may beapportioned in set dosesfrom an ampoule, and asalready mentioned aboveit has fewer features incommon with the sub-ject-matter of claim 1than D1.

Different type of syringecannot be appropriatestarting point. [To makethe case even more vividand memorable: A firebrigade syringe can neverbe an appropriate start-ing point prior art for amedical syringe regard-less how many featuresthey have in common.]

T 56/09

37 Articles Information 03/2016

“A variable focus lens (2,26) being adapted for acontact lens or anintraocular lens compris-ing a transparent rearwall (8, 28), a transparentfront wall (6, 106) havinga convex curved surface(10) and a concave innersurface (19), a cavity (14,114) formed between thetransparent front walland the transparent rearwall, first and secondimmiscible fluids (16, 17)of differing refractiveindex contained withinsaid cavity, and electrodes(18, 21) to which a volt-age is able to be appliedto change the curvatureof a fluid meniscus (4,104) between the twofluids, wherein at leastthe rear wall of the lensincludes a biocompatiblematerial, which materialprovides for biocompati-bility of the lens with theeye and a periphery ofthe front wall joins aperiphery of the rear wallto form an acute internalangle (alpha) at their join-ing region (J)."

The invention generallyrelates to a lens adaptedfor a contact lens or anintraocular lens. Its focallength can be varied bycontrolling the voltageapplied to electrodes soas to change the curva-ture of a fluid meniscusbetween two immisciblefluids, based on the phys-ical phenomenon of elec-tro-wetting.No prior art is availabledisclosing the use of elec-tro-wetting in such alens. (Possibly a pioneer-ing invention.)

D1 is no more than aspeculative review ofwhat might be potentiallyfeasible in the future. Noconcrete realisation of afully adapted lens for acontact or intraocularlens was described in D1.

Speculative documentnot suitable as appropri-ate starting point (similarto T 211/01)

T 1764/09

"A mirror (1) comprisinga first transparent glassplate (4) at least partlyprovided on the rear sidewith a reflecting coating(2) as well as at least oneintegrated electricalmeans (6), wherein the first glass plate (4)comprises transparentand/or half-reflecting por-tions (8), the first glass plate (4) isbonded to a second glassplate (10) with the aid ofa transparent adhesivelayer (12) in the form of alaminated glass pane,and electrical means (6) aremounted on an electri-cally conducting coating(14) of the second glassplate (10) in portionsopposite the transparent

D1 shows a mirror for usein a damp room.

The mirror shown in D13is an interior rear-viewmirror for a vehicle andnot appropriate for use indamp rooms.

Appellant has explainedthat the skilled personwould proceed in thisway in order to make themirror [of D13] suitablefor use in a damp room.However, this argumentcannot be endorsed.There is no reason tomake an interior rear-view mirror suitable foruse in a damp room. Thiswould lead to rebuildingsaid mirror for a com-pletely different use. Sucha way of proceeding can-not be obvious.

Although the skilled per-son is completely free inthe choice of a startingpoint, he is later boundby this choice. If a skilledperson choses a specificinterior rear-view mirror

T 535/107



RemarkDecision

7 http://k-slaw.blogspot.de/2013/05/t-53510-do-not-cross-tracks.html

38ArticlesInformation 03/2016


and/or half-reflecting portions (8) of the firstglass plate (4).” Although not explicitlymentioned in the claim(but implicit by the fea-tures), the claim isdirected to a mirror foruse in a damp room.

for a car as starting point,he can pursue its devel-opment, but the normaloutcome of this develop-ment will in the end stillbe a rear-view mirror fora car and not a mirrorsuitable for use in adamp room (see T 570/91 [4.4]). A conscious choice, i.e. a choice made in fullawareness of the advan-tages and drawbacks ofthe different types, notonly determines the sub-ject-matter serving asstarting point but alsothe framework of thedevelopment, i.e. a devel-opment within this type.In the course of thedevelopment a changefrom the consciously cho-sen type to another,which was known beforebut which had not beenchosen, is unlikely and, as a rule, not obvious (T 817/94).

"A method for video pro-cessing, the methodcomprising: decoding anAVS bitstream based ondecoding version infor-mation within said AVSbitstream, wherein saiddecoding version infor-mation was inserted insaid AVS bitstream into asequence user data (206)after a sequence header(204) of the AVS bit-stream during coding ofsaid AVS bitstream,wherein decoding com-prises mapping of thesequence user data (206)to a decoding version IDvia a AVS decoding list."

D1 is an article describingthe main technical fea-tures of the AVS standardfor coding and decodingvideo signals. The AVSstandard is described inthe present application asthe starting point for theinvention (see paragraphs[0002] to [0006] of theapplication as filed). D1thus belongs to the sametechnical field as theclaimed invention, i.e. thecoding and decoding ofvideo signals according tothe AVS standard. It alsoserves a similar purposeand implicitly or explicitlyaddresses similar or thesame technical problemsas the claimed invention,i.e. those solved by theuse of the AVS standard,such as a highly efficientvideo coding/decodingand an optimisationbetween absolute codingperformance and com-plexity of implementation(see the INTRODUCTIONsection on the first page

According to the appel-lant, no available prior artdocument is an appropri-ate starting point.

The appellant disputedthat D1 could beregarded as the closestprior art, because it didnot disclose the problemarising from the existenceof different versions ofthe AVS standard.The Board concurs withthe appellant that D1does not disclose this fur-ther problem, but dis-agrees that it should dis-qualify D1 as startingpoint for the assessmentof inventive step. Indeed,the closest prior art neednot disclose all the prob-lems solved by theclaimed invention, in par-ticular it need not dis-close the objective tech-nical problem, which isonly determined in thesecond step of the prob-lem and solutionapproach based on thetechnical effect(s) pro-vided by those featuresdistinguishing the inven-tion as claimed from theclosest prior art.

T 698/10



RemarkDecision


of D1). Moreover, thevideo processing methoddisclosed in D1 has sev-eral technical features incommon with themethod of claim 1, thesefeatures being essentiallyimplied by the referenceto the AVS standard inclaim 1.

In the present case, thereis no other prior art onfile which discloses theobjective technical prob-lem or which would qual-ify better than D1 as theclosest prior art. Duringthe oral proceedings,when asked by the Boardwhich prior art was theclosest prior art if not D1,the appellant replied thatthere was none. TheBoard cannot agree withthis view. According toArticle 56 EPC an inven-tion is to be consideredto involve an inventivestep if, "having regard tothe state of the art", it isnot obvious to the skilledperson. Hence, theassessment of inventivestep has to be based onan evaluation of theinvention in view of theprior art. The expression"closest prior art" alsodoes not mean that itmust be sufficiently closeto the claimed inventionon an absolute basis, butonly that it must be rela-tively closer to theclaimed invention thanthe other prior-art disclo-sures, i.e. it is selected asthe most promising start-ing point - or the mostpromising springboardtowards the invention.

"1. A production methodfor silicon wafers, com-prising:...”

D1 discloses a method bywhich vacancies areinjected into a siliconwafer. Moreover, themethod of document D1has many technical fea-tures in common with theclaimed invention. TheBoard therefore considersthat document D1 is aperfectly suitable choiceas closest prior art for themain request.

The appellant stresses theaspect of providing ahigh density of oxygenprecipitates (BMDs). TheBoard accepts that thisaim is mentioned in theapplication, the inventionbeing described, forexample, as providing a"high quality siliconwafer having a DZ layer,which is suitable forforming a device, as thesurface layer, and alsohaving a high BMD den-sity area having a proxim-ity gettering effect". The appellant concludesthat document D1 is nota suitable choice of clos-est prior art, as the pur-

In establishing the closestprior art, the determina-tion of the purpose ofthe invention is not to bemade on the basis of asubjective selection fromamong statements ofpurpose which may beset out in the descriptionof the application, with-out any reference to theinvention as defined inthe claims. On the con-trary, the question to beasked is, what, in thelight of the application asa whole, would beachieved by the inventionas claimed.The applicant cannotinfluence the selection of

T 2255/10



RemarkDecision


pose of the method dis-closed in this document isdifferent, namely to con-trol the distribution ofdopant elements in thesilicon wafer, therebycontrolling resistivity.The Board holds that itcannot be legitimatelyasserted that the purposeof the invention asclaimed is to provide a sil-icon wafer having BMDlayer with high density, or for that matter havinga denuded zone.

the closest prior art byadding purposes into theapplication that are notachieved by the inven-tion.

"1. "An apparatus forconveying slaughteredanimals, in particularbirds or parts of birds,which apparatus com-prises …, and whereinalong the conveyor'spath there is at least oneguide member providedwhich is capable, afterthe carrier is rotated to apredetermined position,of moving the animalsuspended from the carrier such that it isdiverted around the processing station, characterized in that..."

It discloses an apparatuscomprising carriers thatcan rotate the trans-ported birds over 90° butthat do not divert themaround a processing sta-tion, which is a centralaspect of the presentpatent.

It discloses an apparatusfor conveying slaugh-tered birds, comprising aplurality of carriers forthe birds which travel apath passing at least oneprocessing station andwhich is also capable ofmoving the bird sus-pended from the carriersuch that it is divertedaround the processingstation.

Not only features at thebeginning of the claimwhich often define the“main object” of theclaim are important. If,for instance, for whateverreason it may be, a per-son skilled in the artprefers and decides tostart from a specificapparatus for rotating the transported birds overa quarter turn, he canfurther develop thatapparatus, but at the endof that development thenormal result will still bean apparatus for rotatingthe transported birds overa quarter turn and not anapparatus for divertingthe transported birdsaround a processing station.

T 386/11



RemarkDecision

"1. Steam cooker forwarming up food atambient pressure…<steam is led from thesteam generator into aheating chamber>“

Standard oven (does notwork with steam).A standard oven is basi-cally not arranged to heatfood using steam. Itbelongs to another typeand is not a steamcooker. Even if a bowlfilled with water were inthe heating chamber, thestandard oven cannot beconsidered as a steamcooker. Furthermore, thesteam would not be ledinto the heating chamber,as claimed, since it woulddevelop in the heatingchamber itself.

Steam cooker Same type (genericallythe same)

T 749/11


In the determination of an appropriate starting point, notall features of the claim have the same weight. While somefeatures define the type/genus of the subject-matter, otherfeatures are less important. In apparatus claims, the claimsstart with the term defining the “main subject-matter”,e.g. “A lawn mower, comprising…”. These first words ofa claim typically define what the subject-matter of theclaim is all about and also contain inherent features (e.g.four wheels, engine, blades, etc.). The first words of aclaim are often an important indicator for documents whichqualify as appropriate starting point. However, also otherfeatures which define the type of the main subject-mattershould be disclosed in the appropriate starting point. Indi-cations of purpose (“Apparatus for cooking…”) are impor-tant. An appropriate starting point should/must bedesigned for the same purpose. The purpose of an appa-ratus does not have to be mentioned explicitly but canalso be implicitly derived by the features it contains. More-over, the term “type” or “genus” is intimately related tothe term “purpose” in the sense that things that belongto the same type/genus also have the same purpose. Inparticular if a prior art item accidentally anticipates all thefeatures of a claim, it often occurs that a small clarificationof the claim renders the subject-matter of the claim noveland at the same time diverts the subject-matter of theclaim so far from the prior art item that it disqualifies asclosest prior art.

Also the constituent material (main material) of the sub-ject-matter of the claim can be an indicator for a closestprior art document.8 It can be derived, for instance, fromT 1228/08 that the skilled person would not make anystep back (undo any steps that are substantial for theappropriate starting point). For example, if the inventionconcerns a “tool made from metal”, it would not makeany sense for the skilled person to start with a “tool madefrom wood” because it would be of no use to him in thesense of a realistic further development. As will be dis-cussed below, it is often impossible in such cases to for-mulate a problem without giving a hint to the solution.Moreover, a claim dependent on an independent claimmay have a different closest prior art item since e.g. a fea-ture in the dependent claim may change the constituentmaterial such that a closest prior art item for the inde-pendent claim may disqualify as the closest prior art itemfor the dependent claim.

A document that the applicant mentions himself in thebackground section of the application but which is onlyan “internal prior art” that has not become public beforethe priority date of the application cannot be used for theassessment of inventive step (T 211/06).

One may be inclined to think that a first document is betterstarting point than a second document since the first doc-

ument already contains the features relating to what issubjectively considered to be the “gist”, “core” or “knack”of the invention. This, however, may be a misconceptionsince the skilled person may well be able to transfer theteaching relating to this “knack” of the invention from ateaching relating to the same, broader or neighboringtechnical field. As explained above, it is more important toselect a generically similar or identical document as appro-priate starting point.

Regarding the criterion “similarity of the problem”, itshould be mentioned that this criterion appears to be moreproblematic than the criterion of the same or similar pur-pose. The reason is that it is not quite clear which problemsare to be compared. Since the selection of one or moreappropriate starting points is made to determine the objec-tive technical problem, it cannot be the objective technicalproblem. Hence, one can only compare the subjective tech-nical problem of the potential appropriate starting pointwith the subjective technical problem of the claimed inven-tion. However, while a purpose can be attributed to anysubject-matter disclosed in a prior art document, a problemcannot always be attributed. The reason is that a purposeis an absolute criterion while a problem is a relative crite-rion. In particular non-patent prior art documents do notalways mention a (subjective) problem. The situation iseven worse for a prior use. Nevertheless, the problem men-tioned in the background section of a prior art documentfrom patent literature often is a good indicator whetherthe document is suitable as an appropriate starting pointor not.

The most recent decision regarding the selection of theclosest prior art, T 1841/11 of 3 December 2015, statesthat a document relating to a similar purpose as the claimedinvention is not disqualified as closest prior document ifthere is another document which even relates to the samepurpose. “The closest prior art should relate to the sameor at least a similar purpose (or objective) as the claimedinvention. Even if prior art relating to the same purpose isavailable, it is not excluded that a document relating to asimilar purpose might be considered to represent a better- or at least an equally plausible - choice of closest priorart, provided that it would be immediately apparent tothe skilled person that what is disclosed in the documentcould be adapted to the purpose of the claimed inventionin a straightforward manner, using no more than commongeneral knowledge. If, despite the availability of prior artrelating to the same purpose as the claimed invention(here: manufacturing a semiconductor substrate comprisinga silicon-germanium film), it is nevertheless consideredappropriate to select as closest prior art a disclosure relatingto a similar purpose (here: manufacturing a semiconductorsubstrate comprising a germanium film), at least oneclaimed feature corresponding to the purpose of the inven-tion will generally appear as a difference over the closestprior art (here: silicon-germanium). However, this differenceis not one which can legitimately be invoked in support of

8 Hoekstra, J., “Methodology for Paper C – Training for the European QualifyingExamination”, Deltapatents, October 2009, p.151-152


inventive step. The problem-solution approach presupposesthat the skilled person has a purpose in mind from thevery beginning of the inventive process, which in this caseis the manufacture of a known type of semiconductorsubstrate comprising a silicon-germanium film. Within thisconceptual framework, it cannot be logically argued thatthe skilled person would find no motivation to incorporatesilicon-germanium. Moreover, an argument that it wouldnot be straightforward to incorporate this difference intothe teaching of the document considered to be closestprior art, or that this would require more than commongeneral knowledge, would not, in such a case, constitutean argument in favour of inventive step, but rather anargument that this document is not in fact a promisingstarting point”.

It is often criticized that the selection of the appropriatestarting point is based on hindsight. The author of thisarticle cannot share this criticism. The selection of an appro-priate starting point merely serves to make a reasonablepre-selection of documents departing from which therewas a realistic chance of arriving at the invention in thesense that if one cannot arrive from these documents,then it is not possible to arrive from any other documents.(Otherwise one would have to test all documents.) As longas this pre-selection is not made to restrictive (e.g. byfocusing on one closest prior art document), the hindsightin selecting an appropriate starting point does not appearto be problematic.

In T 1613/09 the appellant argued that D1 cannot be con-sidered the closest prior art since starting from a "tower"computer is plainly contrary to the situation encountered

by the inventor. This statementimplies that, according to the appel-lant, the closest prior art should nec-essarily reflect the situation allegedlytackled by the person mentioned asinventor in the present application.

It goes without saying that the actual situation in whichthe person mentioned as inventor was does not play anyrole in the assessment of inventive step.

The content of a prior art document has to be carefullyassessed since it is read/interpreted in the knowledge ofthe subject-matter of the claims. It is important to notethat according to the GL G-VII, 5.2, “the closest prior artmust be assessed from the skilled person's point of viewon the day before the filing or priority date valid for theclaimed invention”. (By contrast, for the assessment ofnovelty, a prior document should be read as it would havebeen read by a person skilled in the art on the relevantdate of the document. By "relevant" date is meant thepublication date in the case of a previously published doc-ument and the date of filing (or priority date, where appro-priate) in the case of a document according to Art. 54(3),see GL G-VI, 3). For example, when inventive step isassessed for a claim commencing with “A device for gen-erating blue light…”, selecting an LED as closest prior artwas not an appropriate starting point until the middle ofthe nineties of the last century since no technology wasknown until then how to produce blue light with LEDs9.Hence, LEDs were considered to be not “suitable for”10

the generation of blue light. After the invention of blueLEDs, an LED could indeed be selected as a closest priorart. The situation is different for a claim starting with “Adevice for generating wind, comprising a, b, c…”. A grind-ing machine having features a, b and c may qualify as aclosest prior art since it was known before the prioritydate that a grinding machine is (at least to a certain degree)suitable for generating wind.

9 The Nobel Prize for physics in 2014 was awarded for "the invention of efficientblue light-emitting diodes, which has enabled bright and energy-saving whitelight sources". The “blue diode case” is also interesting for another reason.After one of the inventors sued his employer because the compensation hereceived for the invention was far too low, a court decided that his employerhad to pay him 8.1 Mio US$.

10 GL G-IV, 4.13 “An apparatus for carrying out the process of …etc.” is construedin the sense of merely meaning an apparatus that is suitable for carrying outthe process.

To be continued

This article will be continued in the epiInformation 4/2016

Any feedback is welcome and can be sent to [email protected] or [email protected]


Evaluation of Claim Amendments

S. Adams (DE)

Many practitioners who attempt to steer patentapplications through the gauntlet of prosecution

are painfully aware of the different ways the applicationsare assessed on opposite sides of the Atlantic. The dif-ference in assessment is perhaps most visible with regardto claim amendments. While starting from virtually thesame roots and having more similarities than might beinitially apparent, the EPO and the USPTO approachchanges to claims in patent documents very differently.Although the EPO might be accused of being biasedagainst applicants when assessing amendments, partic-ularly in comparison to their American counterpart, theapproach of the USPTO seems to defy clear explana-tion.

Applicable Law and Brief Interpretation

The applicable law for assessing the formal allowability1

of amendments to the claims before the USPTO is the"written description" requirement of 35 U.S.C. 112(a). Itreads, in relevant part, as follows:

“The specification2 shall contain a written descriptionof the invention”.

In more detail, to meet the written description requirement,the applicant must convey “with reasonable clarity to thoseskilled in the art that, as of the filing date sought, he orshe was in possession of the invention… now claimed”(Vas-Cath v. Mahurkar, Fed. Cir. 1991). Further, an applicantshows "possession" by describing the claimed inventionwith all of its essential novel elements (Lockwood v. Amer-ican Airlines, Fed. Cir. 1997).

Under 35 U.S.C. Sec. 112, the “specification” contains awritten description and concludes with the claims. Draw-ings are covered by Sec. 113, a separate provision. How-ever, in the context of the written description requirement,“possession may be shown … by showing that the inven-tion was ‘ready for patenting’ such as by the disclosure ofdrawings” (MPEP, 2163.02).

Also, a US Examiner should be “mindful of the prohibitionagainst the addition of new matter in the claims or descrip-tion” (MPEP, 2163.04, I).

The applicable law for a corresponding assessment beforethe EPO is Article 123(2) of the European Patent Conven-tion. It reads, in relevant part, as follows:

“The European patent application … may not beamended in such a way that it contains subject-matterwhich extends beyond the content of the application asfiled”.

Thus, claim amendments “are permitted within the limitsof what the skilled person would derive directly and unam-biguously, using common general knowledge[,] from theapplication as filed” (CLBA, II.E.1).

Similarities in the Approaches of the EPO and the USPTO when Assessing Claim Amendments

1. The requirements of 35 U.S.C. 112(a) and Art. 123(2)EPC serve a similar goal

In particular, the written description requirement preventsclaim amendments that introduce "new matter" into thedisclosure of the invention. “The proscription against theintroduction of new matter in a patent application …serves to prevent an applicant from adding informationthat goes beyond the subject matter originally filed” (MPEP,2163, I, B).

Similarly, as articulated by the Enlarged Board of Appealof the EPO, “the underlying idea [of Article 123(2) EPC] isclearly that an applicant shall not be allowed to improvehis position by adding subject-matter not disclosed in theapplication as filed” (G 1/93, reasons 9).

2. A requirement to submit a basis for claim amend-ments is also provided for

According to USPTO regulations, “[a]ll claims being cur-rently amended … shall be … submitted with markings toindicate the changes that have been made” (37 CFR 1.121(c)(2); see also MPEP, 714, II.C).

Further, “Applicant should… specifically point out the sup-port for any amendments made to the disclosure” (MPEP,2163, II , A) and when “the support for the [claim] limita-tion is not apparent, and applicant has not pointed outwhere the limitation is supported”, a statement from the

1 In examination proceedings before the EPO, "allowability" refers to the appli-cation of Art. 123(2) EPC, whereas "admissibility" refers to procedural require-ments that must be met before compliance with Art 123(2) EPC is assessed.The term "formal allowability" occasionally appears in opinions of the Boardsof Appeal of the EPO and is used in this article with respect to the assessmentof claims before both the EPO and the USPTO.

2 The EPC and EPO Examination Guidelines use the term “specification” differ-ently than the US Patent Act. In the EPC (e.g. Art. 98, 103), the term “specifi-cation” refers to an entire published patent, including drawings, and is notused in the context of an application. In contrast, the US Patent Act (e.g. 35U.S.C. Sec. 10-12) uses “specification” in the context of both applicationsand patents to refer to the description and claims while excluding the draw-ings.


Examiner to this effect may be enough to support a rejec-tion3 for lack of adequate written description (MPEP,2163.04, I).

The EPO has implemented this requirement more conciselyin Rule 137(4) EPC:

“When filing any amendments … the applicant shallidentify them and indicate the basis for them in theapplication as filed”.

3. Subject matter must be disclosed to be availableas a claim amendment.

“To comply with the written description requirement of35 U.S.C. Sec. 112(a) … each claim limitation must beexpressly, implicitly, or inherently supported in the originallyfiled disclosure” (MPEP, 2163, II, 3, (b)). What is claimedby the patent application must be the same as what is dis-closed in the specification; claims directed to a “distinctinvention from that disclosed in the specification” do notsatisfy the written description requirement (Lockwood v.American Airlines, Inc. (Fed. Cir. 1997)).

Similarly, the EPO requires the claims to be directly derivablefrom the originally filed application, also taking into accountany features implicit to a person skilled in the art in what isexpressly mentioned in the document (GL, H-III, 2.1-2.2).

4. Rendering a claim amendment obvious is not suf-ficient

Although amendments based on what is implied by theoriginal application are allowed by both the EPO and theUSPTO, amendments rendered obvious by the original dis-closure are not.

Referring to the case law of the Federal Circuit, “ a descrip-tion that merely renders the invention obvious does notsatisfy the [written description] requirement” (Ariad v. EliLilly, Fed Cir., en banc, 2010). “Entitlement to a filing datedoes not extend to subject matter which is not disclosed,but would be obvious over what is expressly disclosed. Itextends only to that which is disclosed” (Lockwood v.American Airlines, Fed. Cir. 1997).

Similarly, in T 118/88, a Technical Board of Appeal of theEPO concluded that “[o]bviousness is not… an allowablereplacement for disclosure. … in the examination of whathas been disclosed, novelty criteria may be applied, but not… obviousness”. (T 118/88, reasons 4.4). Accordingly, “thequestion of what may be rendered obvious by [the] disclosure[of a document] in the light of common general knowledgeis not relevant to the assessment of what is implied by thedisclosure of that document” (T 823/96, emphasis added).

5. Literal disclosure of claim amendments is notrequired

Just as a disclosure rendering a claim obvious is not suffi-cient, there also seems to be common ground that literaldisclosure of new claim language is not required.

Referring to the MPEP, the “subject matter of the claimneed not be described literally … in order for the disclosureto satisfy the [written] description requirement” (MPEP,2163.02). In Kennecott Corp. v. Kyocera International, Inc.the Federal Circuit held that ''the earlier and later applica-tions need not use the identical words, if the earlier appli-cation shows the subject matter that is claimed in the laterapplication, with adequate direction as to how to obtain it... an invention may be described in different ways andstill be the same invention" (1987).

Similarly, the Guidelines for Examination in the EPO specifythat literal support is “not required by the wording of Art.123(2)” (GL, H-IV, 2.2).

6. A claim amendment may be supported by a draw-ing

In the following, the USPTO seems to put drawings on thesame level as other means of description, “An applicantshows possession of the claimed invention by describingthe claimed invention with all of its limitations using suchdescriptive means as words, structures, figures, diagrams,and formulas” (MPEP, 2163.02).

Similarly, according to the Technical Boards of Appeal,“[t]he drawings are not treated differently from either theclaims or the description as regards amendments made tothe application or to the patent itself as governed by Article123” (T 169/83, reasons 3.2.5). Put another way, regardingthe allowability of claim amendments, “[d]rawings wereto be treated on an equal footing with the other partsof the application” (CLBA, II.E.1.5, emphasis in original).

Differences in the Approaches of the EPO and the USPTO When Assessing Claim Amendments

1. Burden of proof

The allocation of the burden of proof might be the mostimportant difference between the approaches of the EPOand the USPTO. In particular, it seems likely that the allo-cation of the burden of proof is one of the main reasonsthat objections to claim amendments are far more commonbefore the EPO than the USPTO.

Before the USPTO, "the examiner has the initial burden ofpresenting evidence or reasoning to explain why personsskilled in the art would not recognize in the original dis-closure a description of the invention defined by the

3 According to MPEP, 706.01, a "rejection" relates to the substance of a claim,whereas an "objection" is raised with respect to formal aspects of a claim.


claims" (MPEP, 2163, II, A). Accordingly, once an indicationof support in the application for claim amendments hasbeen provided, a US Examiner bears the initial burden ofmaking a case that the amendments cannot be derivedfrom the original disclosure.

Before the EPO, the applicant has the initial burden ofestablishing that the requirements of Art. 123(2) EPC havebeen met after amending the claims, even assuming thatthe applicant has already cited portions of the applicationsupporting the amendments. The indication of the basisfor the amendments required by Rule 137(4) EPC "shouldbe understood as an opportunity for the applicant to pro-vide convincing arguments to the [examining] division asto why the amendment(s) is/are directly and unambiguouslyderivable from the application as filed" (GL, H-III, 2.1). Sim-ply citing passages of the description having wording similarto the claim amendment in question is often insufficient. Ifa connection between the amended claims and the originalapplication is not immediately clear to an EP Examiner, theExaminer can (and often does) simply object to the claims,without making a case to support the objection.

For example, in T 1239/03, a Technical Board of Appealanswered the question as to “which requirements have tobe satisfied by the author of the amendment(s) in order to[establish] that the requirements of Article 123(2) EPC havebeen met”. Upon examination of claims amended by thepatent proprietor, the Board found that the patent propri-etor “has not discharged the burden of proof which wason him” in meeting the requirements of Art. 123(2) EPC.Accordingly, the amendments were not allowed.

2. Standard for evaluating claim amendments

An applicant before the USPTO generally has much morefreedom to depart from the literal wording of the descrip-tion than his counterpart before the EPO.

When an applicant amends a claim before the USPTO, thesupport for the claim amendment in the original disclosureneed not exclude all possibilities other than the claimamendment. In other words, the claim amendment doesnot need to be unambiguously derivable from the originaldisclosure.

For example, in Vas-Cath v. Mahurkar, a US District Courtinterpreted the written description requirement in a waythat is not so different from a typical interpretation of Art.123(2) EPC. The Court found that the drawings providedin a priority application did not provide an adequate writtendescription of claim 1 of a patent relying on the drawingsfor a filing date.

Claim 1 of one of US 4,568,329 (Mahurkar) specifies adouble lumen catheter in which the diameter of the returnlumen is greater than one-half but less than the full diam-eter of the catheter tubing. The Court posed the following

question: "how does [the priority application] necessarilyexclude" other ratios? The Court also noted that"Mahurkar's patents… contain limitations that did not fol-low ineluctably from the [priority application]". The phrases"necessarily exclude" and "ineluctably" suggest that theCourt was of the opinion that the claimed ratio and otherclaimed limitations must be unambiguously derivable fromthe original disclosure.

The Federal Circuit held that the district court “erred inapplying a legal standard that essentially required the draw-ings of the [priority] application to necessarily exclude alldiameters other than those within the claimed range…the proper test is whether the drawings conveyed withreasonable clarity to those of ordinary skill that Mahurkarhad in fact invented the catheter recited in those claims”(Vas-Cath Inc. v. Mahurkar, Fed. Cir., 1991).

Accordingly, the Federal Circuit held invalid a legal stan-dard in which the original disclosure must "necessarilyexclude" all other possibilities and "ineluctably" lead tothe amended claims in favor of a lower standard of "rea-sonable clarity".

In Lizardtech Inc. v. Earth Resource Mapping Inc. (2005),the Federal Circuit found that “a recitation of how tomake and use the invention across the full breadth of theclaim is ordinarily sufficient to demonstrate that the inven-tor possesses the full scope of the invention, and viceversa”. In other words, if the claims are enabled (i.e. suffi-ciently disclosed), then the claims ordinarily meet the writ-ten description requirement (i.e. the claim amendmentsare formally allowable).

As discussed above, both the EPO and the USPTO requireclaim amendments to be directly derivable from the originalapplication. Unlike the USPTO, the EPO also requires theclaim amendments to be unambiguously derivable (GL, H-IV, 2.1). In other words, starting from the original applica-tion, formal allowability under Art. 123(2) EPC requiresthat the skilled person would inevitably (or ineluctably)arrive at the amended claim.

For example, in T 824/06 the claim at issue was directedto the preservation of a slaughtered chicken. The claimwas amended during opposition proceedings to associatea maximum temperature of 15°C for the surface of thechicken with both a first cooling step and a second cool-ing step. The application discloses that the temperatureof the surface of the chicken "is brought to a maximumof 15°C". However, the Board found that this indication"can be understood as being the result of the overallprocess and not as a requirement for each individualcooling step".

The Board accepted the appellant's argument that provid-ing for a maximum temperature of 15°C for the coolingsteps would be a reasonable way to carry out the invention.


The Board also indicated that the amendment would be"within the scope of the disclosure of the application asoriginally filed" and would meet a standard of "reasonableplausibility". Presumably, reasonable plausibility is similarto the standard of reasonable clarity articulated by theFederal Circuit. However, the Board rejected the amend-ment in view of the stricter requirement of "unambiguousdisclosure", particularly because the application did notunambiguously disclose that the maximum temperatureof 15°C was applicable to the claimed cooling steps.

3. Claim amendments derived via (intermediate) generalization

In contrast to EP practice, the US practice with regard togeneralizations seems to be rather liberal. In particular, itappears that a preferred embodiment or a list of rangescan often be used to derive generic claim language, atleast in the absence of inconsistencies or specific disclosureto the contrary.

For example, “where no explicit description of a genericinvention is to be found in the specification ... mention ofrepresentative compounds may provide an implicit descrip-tion upon which to base generic claim language” The dis-closure of forty working examples was found to sufficientlydescribe the subject matter of claims directed to a genericprocess (In re Robins, 57 CCPA 1321, 1970).

In the case of In re Smith, the specification disclosed twomethods of making polymers. The second method includedstarting materials “free of alkylatable groupings”, whilethe first method did not specify this particular limitation.The USPTO Board of Appeals held that the disclosure ofthe specification was not sufficient to support a broadclaim for all polycationically active polymers free of alky-latable groups. A Technical Board of Appeal at the EPOmight have agreed with the USPTO Board of Appeals.

The CCPA heard the appeal of the decision of the USPTOBoard of Appeals in In re Smith, and did not agree. Accord-ing to the CCPA, the specification did not contain ''lan-guage which corresponds identically to the language ofthe claims on appeal,'' but the ''tenor of the specification”was that the applicant had made a generic invention, notone limited only to certain particular polycationically activepolymers (In re Smith, 481 F.2d 910, 1973).

From the opinion in Union Oil Co. of California v. AtlanticRichfield Co. (Fed. Cir., 2000), the “Appellant refinersassert that the specification does not describe the exactchemical component of each combination that falls withinthe range claims of the '393 patent. However, neitherthe Patent Act nor the case law of this court requiressuch detailed disclosure”, and citing an earlier decision,“ranges found in applicant's claims need not correspondexactly to those disclosed in [the specification]; [the] issueis whether one skilled in the art could derive the claimed

ranges from the [ ] disclosure.” (Vas-Cath Inc. v. Mahurkar,Fed.Cir., 1991)

However, US judges occasionally offer stricter opinions. Inhis dissent in Union Oil Co. of California v. Atlantic RichfieldCo. (2000), Judge Lourie argued that the specification isrequired to give “full, clear, concise, and exact direction”to a claimed combination of limitations in order to meetthe written description requirement. Judge Lourie did notfavor the “picking and choosing” from the specificationthat was required to arrive at the limitations of the claimsat issue.

Also, the Federal Circuit invalidated claims broader thanthe disclosed embodiments because "[t]here is no evidencethat the specification contemplates a more generic way"of performing the claimed invention (LizardTech Inc v. EarthResource Mapping Inc., Fed. Cir. 2005).

Similarly, the Federal Circuit recently affirmed an examiner,who, in arguing that the written description requirementwas not met, held that "while each element [of the claim]may be individually described in the specification, the defi-ciency was lack of adequate description of their combina-tion" (Hyatt v. Dudas, Fed. Cir. 2007).

Claim amendments derived by generalizing features fromthe description are generally not allowed under EP practice.In particular, an amendment is not allowable under Art.123(2) EPC when it replaces “a disclosed specific featureeither by its function or by a more general term and thusincorporate[s] undisclosed equivalents into the content ofthe application as filed” (CLBA, II.E.1.2).

Judge Lourie’s description of “picking and choosing” fea-tures to arrive at the limitations of a claim appears to cor-respond to what the EPO refers to as an “intermediategeneralization”. According to EPO practice, an intermediategeneralization occurs when a claim is limited “by a featureextracted from a combination of features” (GL, H-V, 3.2.1).

In general, the EPO allows an intermediate generalization“only in the absence of any clearly recognisable functionalor structural relationship among the features of the specificcombination” (CLBA, II.E.1.2). This means that if a claim isto be restricted to a preferred embodiment, it is normallynot permissible “to extract isolated features from a set offeatures which had originally been disclosed in combinationfor that embodiment” (Id.).

4. Different Goals of the Written Description Require-ment and Art. 123(2) EPC

Article I, Section 8, Clause 8, of the US Constitution grantsCongress the power "[t]o promote the progress of scienceand useful arts, by securing for limited times to authorsand inventors the exclusive right to their respective writingsand discoveries". This clause is the reason the US Congress


is able to enact patent legislation. In order to comply withthe cited clause of the US Constitution, the written descrip-tion requirement should serve the goal of promoting theprogress of science and useful arts.

Accordingly, "the written description requirement promotesthe progress of the useful arts by ensuring that patenteesadequately describe their inventions in their patent speci-fications in exchange for the right to exclude others frompracticing the invention for the duration of the patent’sterm" (MPEP, 2163, I). The term "adequate" is used in thecontext of the written description requirement at variousother points in the MPEP (e.g. MPEP, 2103, IV, B), as wellas in a number of decisions of the Federal Circuit (e.g.Vas-Cath Inc. v. Mahurkar, Fed. Cir., 1991).

In contrast, the Enlarged Board of Appeal held that addingundisclosed subject matter to an application "could be dam-aging to the legal security of third parties relying on the con-tent of the original application" (G 1/93). Although legalsecurity is not mentioned in the EPC, the Protocol on theInterpretation of Art. 69 EPC, for determining the extent ofprotection of a European patent or application, specifies thatArt. 69 EPC "is to be interpreted as defining a position…with a reasonable degree of legal certainty for third parties".

Conclusion

The US approach to claim amendments can be character-ized as more lenient than the "strict" approach of theEPO. Policy justifications have been brought forward forboth approaches.

In an early decision discussing the assessment of claimamendments, a Technical Board of Appeal opined thatunder a lenient approach "there is a definite risk that theprotection conferred by the patent would actually beextended if, as a result of amendments to clarify thegranted claims, the claims may be more widely construedthan a court would have construed them by the applicationof Article 69 EPC" (T 113/86, reasons 2.2).

In an even earlier decision of the CCPA, the Court heldthat a strict approach "places upon patent applicants, thePatent Office, and the public the undue burden of listing,in the case of applicants, reading and examining, in thecase of the Patent Office, and printing and storing, in thecase of the public, descriptions of the very many structuralor functional equivalents of disclosed elements or stepswhich are already stored in the minds of those skilled inthe arts, ready for instant recall upon reading the descrip-tions of specific elements or steps" (In re Smythe, 1973).

While the strict approach is sometimes less than ideal forpatentees, it is questionable whether the lenient approachcan be consistently applied. After listing various efforts ofUS courts to articulate the standard for adequate writtendescription in his treatise on US patent law, Professor Don-ald Chisum wryly notes that "[i]t can seriously be ques-tioned whether any of these articulations provide a stan-dard clearer or more certain than the statutory languageitself, which is, in simple terms, whether the specificationdescribes to a person of ordinary skill in the art the inven-tion later claimed" (Chisum on Patents, § 7.04[1][e], 2007).

Abbreviations used in this articleCCPA – United States Court of Customs and

Patent Appeals (predecessor of the Federal Circuit)

CLBA – Case Law of the Boards of Appeal of the European Patent Office, Seventh Edition, 2013

CFR – Code of Federal Regulations (US)EP – European

EPC – European Patent ConventionEPO – European Patent Office

Fed. Cir./Federal Circuit – United States Court of Appeals for the Federal Circuit

GL – Guidelines for Examination in the European Patent Office, 2015

MPEP – Manual of Patent Examining Procedure for the United States Patent and Trademark Office, Ninth Edition, November 2015 revision

USC – United States Code

Information 03/2016Letter to the Editor49

The paper “Correcting the Text of a Published Patent”,published in epi Information 02/2016 at pages 43-44,

contains the following paragraph:

The appeal can be filed within two months of notifica-tion of the decision to grant, i.e. two months from thedate of dispatch plus ten days for delivery as specifiedby either Rule 126(2) EPC or Rule 127(2) EPC.

The readers of this journal are no doubt aware of Rule126(2) EPC, which states

(2) Where notification is effected by registered letter,whether or not with advice of delivery, such letter shall

be deemed to be delivered to the addressee on thetenth day following its posting, unless it has failed toreach the addressee or has reached him at a later date;[…]

Rule 127(2) EPC is applicable to electronic transmissionand refers to the tenth day following transmission.

Thus, I trust it was immediately evident to our readersthat nothing else had been intended than two monthsfrom the date of delivery, the deemed date of deliverybeing specified by either Rule 126(2) EPC or Rule 127(2)EPC as being normally the tenth day after posting ortransmission.

Computing time limits under the EPC

F. Leyder (BE), Chair of the EPPC

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MC – THACH TumMK – PEPELJUGOSKI ValentinNL – VAN WEZENBEEK LambertusNO – BERG Per G.PL – MALCHEREK PiotrPT – FRANCO IsabelRO – FIERASCU Cosmina CatrinelSE – HOLMBERG MartinSI – FLAK AntonijaSM – PETRAZ Davide LuigiTR – YAVUZCAN Alev

Suppléants

LV – SERGEJEVA ValentinaNL – SMIT FreekNO – RØHMEN EirikPL – PAWŁOWSKI AdamPT – DE SAMPAIO JoséRO – TEODORESCU MihaelaSE – JÖNSSON ChristerSI – ROŠ ZlataSM – PRIMICERI Maria VittoriaTR – ATALAY Bariş

Examination Board Members on behalf of epi



Ausschuss für Standesregeln

Professional Conduct Committee

Commission deConduite Professionnelle


AL – SHOMO VjollcaAT – PEHAM AloisBE – VAN DEN BOECK, Wim**BG – KOSSEVA Radislava

AndreevaCH – RÜEDI RegulaCZ – MUSIL DobroslavDE – GEITZ HolgerDK – RØRBØL LeifEE – OSTRAT JaakES – ELOSEGUI DE LA PEÑA IñigoFI – KUPIAINEN Juhani°°FR – DELORME Nicolas

Stellvertreter

AT – FOX TobiasBE – VANHALST KoenBG – NEYKOV Neyko HristovCH – MAUÉ Paul-GeorgCZ – ZAK VítezslavDE – KASSECKERT RainerFI – SAHLIN JonnaFR – TARAVELLA Brigitte

Full Members

GB – NORRIS TimHR – BIJELIĆ AleksandarHU – LANTOS MihályIE – LUCEY MichaelIS – JÓNSSON ThorlákurIT – CHECCACCI Giorgio*LI – WILDI RolandLT – BANAITIENE VitalijaLU – KIHN HenriLV – SMIRNOV AlexanderMC – HAUTIER NicolasMK – KJOSESKA Marija

Substitutes

GB – POWELL TimHR – DLAČIČ AlbinaIE – O’NEILL BrianIS – FRIDRIKSSON EinarIT – MARIETTI AndreaLT – DRAUGELIENE VirginaLV – FORTUNA LarisaNL – PETERS John

Membres titulaires

MT – CAMILLERI AntoineNL – BOTTEMA HansNO – FLUGE PerPL – HUDY LudwikPT – BESSA MONTEIRO CesarRO – PETREA Dana MariaSE – LINDGREN AndersSI – MARN JureSK – ČECHVALOVÁ DagmarSM – BERGAMINI SilvioTR – ARKAN Selda

Suppléants

NO – SELMER LorentzPL – KREKORA MagdalenaPT – GARCIA João LuisRO – BUCSA GheorgheSE – SJÖGREN-PAULSSON StinaSI – GOLMAJER ZIMA MarjanaSM – MERIGHI Fabio Marcello

Ausschuss für Streitregelung

Litigation Committee

La Commission Procédure Judiciaire


AL – PANIDHA ElaAT – KOVAC WernerBE – VANDERSTEEN PieterBG – GEORGIEVA-TABAKOVA

Milena LubenovaCH – THOMSEN Peter**CY – THEODOULOU

Christos A.CZ – GUTTMANN MichalDE – PFRANG TilmanDK – KANVED NicolaiEE – KOPPEL Mart EnnES – ARIAS SANZ Juan

Stellvertreter

AT – NEMEC HaraldBE – MELLET ValérieBG – PAKIDANSKA Ivanka

SlavchevaCH – DETKEN AndreasCZ – HALAXOVÁ EvaDE – MOHSLER GabrieleDK – CHRISTIANSEN EjvindES – JORDÀ PETERSEN SantiagoFI – VÄISÄNEN Olli JaakkoFR – GENDRAUD Pierre

Full Members

FI – ETUAHO KirsikkaFR – CASALONGA Axel*GB – HEPWORTH John MalcolmHR – VUKINA SanjaHU – TÖRÖK Ferenc°IE – WALSHE TrionaIS – HARDARSON Gunnar ÖrnIT – COLUCCI GiuseppeLI – HARMANN Bernd-GüntherLT – ŽABOLIENE RedaLU – BRUCK MathiasLV – OSMANS VoldemarsMC – SCHMALZ Günther

Substitutes

HR – VUKMIR MladenIE – WHITE JonathanIS – FRIDRIKSSON Einar KarlIT – DE GREGORI AntonellaLI – MARXER AmonLT – KLIMAITIENE OtilijaLU – LECOMTE DidierLV – FORTUNA JevgenijsMC – THACH TumNL – STEENBEEK Leonardus

Johannes

Membres titulaires

MK – DAMJANSKI VancoNL – CLARKSON Paul MagnusNO – SIMONSEN KariPL – BURY LechPT – CRUZ NunoRO – PUSCASU DanRS – ZATEZALO MihajloSE – LINDEROTH MargaretaSI – DRNOVŠEK NinaSK – NEUSCHL VladimírSM – MASCIOPINTO Gian GiuseppeTR – DERIŞ Aydin

Suppléants

NO – THUE LIE HaakonPL – KORBELA AnnaPT – CORTE-REAL CRUZ AntónioRO – VASILESCU RalucaSE – MARTINSSON PeterSI – KUNIĆ TESOVIĆ BarbaraSK – BAĎUROVÁ KatarínaSM – MAROSCIA AntonioTR – CORAL Serra Yardimici


Information 03/2016Information from the Secretariat53

Ausschuss fürBiotechnologische Erfindungen

Committee onBiotechnological Inventions

Commission pour lesInventions en Biotechnologie

AL – SINOJMERI DianaAT – PFÖSTL AndreasBE – DE CLERCQ Ann*BG – STEFANOVA Stanislava

HristovaCH – WÄCHTER DieterCZ – HAK RomanDE – KELLER GüntherDK – SCHOUBOE AnneES – BERNARDO NORIEGA

FranciscoFI – KNUTH-LEHTOLA Sisko

FR – TARAVELLA BrigitteGB – WRIGHT Simon**HR – DRAGUN TihomirHU – PETHÖ ÁrpádIE – HALLY Anna LouiseIS – JÓNSSON ThorlákurIT – CAPASSO OlgaLI – BOGENSBERGER BurkhardLT – GERASIMOVIČ LiudmilaLU – SPEICH StéphaneLV – SERGEJEVA ValentinaMK – ILIEVSKI Bogoljub

MT – SANSONE Luigi A.NL – SWINKELS BartNO – THORESEN LivPL – CHLEBICKA LidiaPT – CANELAS AlbertoRO – POPA CristinaRS – BRKIČ ŽelijkaSE – MATTSSON NiklasSI – BENČINA MojcaSK – MAKELOVÁ KatarínaSM – PRIMICERI Maria VittoriaTR – ILDEŞ ERDEM Ayşe

Harmonisierungsausschuss Harmonisation Committee Commission d’Harmonisation


BE – LEYDER Francis**CH – BRAUN Axel

Stellvertreter

AT – FORSTHUBER MartinGB – JOHNSON Terry

Full Members

DE – STEILING LotharES – DURAN Luis-AlfonsoGB – BROWN John*

Substitutes

FI – KÄRKKÄINEN Veli-MattiFR – CONAN PhilippeIT – SANTI Filippo

Membres titulaires

IE – GAFFNEY Naoise EoinMC – THACH Tum

Suppléants

SE – MARTINSSON PeterTR – MUTLU Aydin

Ausschuss für Patentdokumentation

Patent Documentation Committee

Commission Documentation Brevets


AT – GASSNER Birgitta

Stellvertreter

DE – WINTER Andreas

Full Members

DK – INDAHL Peter*FI – LANGENSKIÖLD Tord

Substitutes

GB – GRAY JohnIT – GUERCI Alessandro

Membres titulaires

IE – O’NEILL Brian

Suppléants

NL – VAN WEZENBEEK Bart

Wahlausschuss Electoral Committee Commission pour les Élections

CH – MÜLLER Markus* GB – BARRETT Peter IS – VILHJÁLMSSON Árni

Redaktionsausschuss Editorial Committee Commission de Rédaction

DE – WIEDEMANN Albert FR – NEVANT MarcGB – JOHNSON Terry*

NL – NOLLEN Maarten


Ausschuss fürOnline-Kommunikation

OnlineCommunications Committee

Commission pour lesCommunications en Ligne

DE – ECKEY LudgerDK – INDAHL PeterFI – VIRKKALA Antero Jukka*

FR – MÉNÈS CatherineGB – DUNLOP HughIE – BROPHY David

Timothy**IT – BOSOTTI Luciano

NL – VAN DER VEER JohannisLeendert

SM – MASCIOPINTO Gian Giuseppe


Ständiger BeratenderAusschuss beim EPA (SACEPO)

Standing Advisory Committeebefore the EPO (SACEPO)

Comité consultatif permanentauprès de l’OEB (SACEPO)

epi-Delegierte

BE – LEYDER FrancisDE – LEISSLER-GERSTL GabrieleDK – HEGNER Annette

epi Delegates

FI – HONKASALO MarjutFI – VIRKKALA AnteroGB – BOFF JimGB – WRIGHT Simon

Délégués de l’epi

IT – BOSOTTI LucianoNL – TANGENA AntoniusRO – TEODORESCU Mihaela

SACEPO –Arbeitsgruppe Regeln

SACEPO –Working Party on Rules

SACEPO –Groupe de Travail Règles

BE – LEYDER Francis GB – MERCER Chris FI – HONKASALO Marjut

SACEPO –Arbeitsgruppe Richtlinien

SACEPO –Working Party on Guidelines

SACEPO –Groupe de Travail Directives

DE – LEISSLER-GERSTL Gabriele DK – HEGNER Anette GR – SAMUELIDES Manolis

SACEPO – PDI SACEPO – PDI SACEPO – PDI

AT – GASSNER Brigitta DK – INDAHL PeterFI – LANGENSKIÖLD Tord

IE – O’NEILL Brian

SACEPO – EPP SACEPO – EPP SACEPO – EPP

BE – BIRON Yannick FI – VIRKKALA Antero IE – BROPHY David


Präsident / President / PrésidentNL – TANGENA Antonius

Vize-Präsidenten / Vice-Presidents Vice-PrésidentsDE – LEISSLER-GERSTL GabrieleRO – TEODORESCU Mihaela

Generalsekretär / Secretary General Secrétaire GénéralPT – PEREIRA DA CRUZ João

Stellvertretender Generalsekretär Deputy Secretary General Secrétaire Général AdjointFI – HONKASALO Marjut

Schatzmeister / Treasurer / TrésorierCH – THOMSEN Peter

Stellvertretender Schatzmeister Deputy Treasurer / Trésorier AdjointEE – SARAP Margus

AL – NIKA VladimirAT – FORSTHUBER MartinBE – LEYDER FrancisBG – ANDREEVA PETKOVA

NatashaCH – LIEBETANZ MichaelCY – THEODOULOU Christos A.CZ – GUTTMANN MichalDE – MOHSLER GabrieleDK – HØIBERG SusanneES – SÁEZ GRANERO

Francisco FR – BAUVIR JacquesFR – NUSS LaurentGB – WRIGHT Simon GB – MERCER ChrisGR – BAKATSELOU VassilikiHR – BOŠKOVIC� DavorHU – TÖRÖK FerencIE – CASEY LindsayIS – JÓNSSON Thorlákur

IT – RAMBELLI PaoloLI – HARMANN Bernd-Gu� ntherLT – PETNIUNAITE JurgaLU – BEISSEL JeanLV – FORTUNA JevgenijsMC – SCHMALZ GüntherMK – PEPELJUGOSKI ValentinMT – SANSONE LuigiNO – THRANE DagPL – KORBELA AnnaRS – PETOŠEVIC� SlobodanSE – ESTREEN LarsSI – BORŠTAR DušanSK – MAJLINGOVÁ MartaSM – AGAZZANI GiampaoloTR – ARKAN Selda

Vorstand / Board / BureauPräsidium / Presidium / Présidium

Weitere Vorstandsmitglieder / Further BoardMembers / Autres Membres du Bureau

Interne Rechnungsprüfer

Internal Auditors

Commissaires aux Comptes Internes

Ordentliche Mitglieder Full Members Membres titulaires

Stellvertreter Substitutes Suppléants

CH – KLEY Hansjörg FR – CONAN Philippe

DE – TANNER Andreas IT – GUERCI Alessandro

Institut der beim Europäischen Patentamt zugelassenen VertreterInstitute of Professional Representatives before the European Patent OfficeInstitut des mandataires agréés près l‘Office européen des brevets

Redaktionsausschuss / Editorial Committee / Commission de RédactionTerry JohnsonMarc NevantMaarten NollenAlbert Wiedemann

Postanschrift / Mailing address / Adresse postaleepiBayerstrasse 8380335 MunichGermanyTel: +49 89 24 20 52-0Fax: +49 89 24 20 52-20Email: [email protected]

Layout und Satz / Layout and composition / Mise en page et ensembleSIMIUS New Media GmbHLichtenbergstraße 885354 Garching bei MünchenTel: +49 89 54 84 27 20Email: [email protected]

© Copyright epi 2016

Das Institut ist weder für Erklärungen noch für Meinungen verantwortlich, die in Beiträgen dieser Zeitschrift enthalten sind. Artikel werden in der oder den Amtsprachen (deutsch, englisch, französisch) wiedergegeben, in der bzw. denen diese Artikel eingereichtwurden.

The Institute as a body is not responsible either for the statements made, or for the opinions expressed in the publications. Articles arereproduced in the official language or languages (German, English or French) in which they are submitted.

L’Institut n’est pas responsable des opinions exprimées dans cette publication. Les articles sont publiés dans celle ou celles des troislangues officielles (allemand, anglais ou français) dans laquelle ou lesquelles ils ont été proposés.

The trade mark “epi” is the property of the Institute of Professional Representatives before the European Patent Office.epi is registered internationally, as a Community trade mark (CTM) in the EU and nationally in Germany.

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