Friday, 8 August 2014
Mined Regions - T 2231/09
Very few people speak about a far more frequent sort of inescapable trap: the clarity-disclosure trap (sometimes appearing as enablement-disclosure trap as well). This unpleasant trap is set when somebody objects that an expression in a claim is unclear and the trap snaps if the pitiful applicant has no disclosure in the documents as originally filed which could serve as a clarifying limitation.
The decision T 2231/09 is an example of such a trap. The application relates to an image processing algorithm wherein a certain parameter is derived from a subset of pixels in a region (whereas the prior art used all the pixels in the region). Four years of search and examination at the EPO did not reveal any problems with the word "region". The application was then refused on the grounds that the subject-matter of the claims lacked novelty or did not involve an inventive step over the prior art.
The patentee appealed the decision, waited further four years and was then summoned to oral proceedings before the Technical Board of Appeal. The board raised objections on the clarity of the expressions "region" and "subset of pixels" for the first time in the annex to the summons. As a clarifying definition of these expression was missing in the documents as filed, all the attempts of the patentee to overcome this clarity problem were doomed to fail.
Apparently, the claim was considered sufficiently clear in the US, in JP and in China, where the patent was granted.
I cannot help to feel uncomfortable about this course of procedure and about the fact that a potentially valuable intellectual property right was completely lost as a consequence of a minute (if any) imprecision of the draftsman many years ago. The discretionary decision of the Board of Appeals whether or not the ordinary language expression "region" is clear is final and cannot be reversed by a higher instance It is therefore clearly problematic if it is introduced ex officio in the ex parte appeal procedure.
The full text of the decision can be accessed here