Friday, 8 August 2014

Mined Regions - T 2231/09

When EP practitioners speak about inescapable traps, they usually refer to situations where the patentee in an opposition is faced with the problem that features added in the examination procedure extend beyond the subject-matter of the documents as originally filed (Art 123(2) EPC) but cannot be removed without extending the scope of protection (Art 123(3) EPC).

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


Tim said...

The post seems not entirely accurate. According to 3.1.9, the "in a region" was deleted, which was critical for the clarity objection. From 3.1.4 to 3.1.6, I understand that there was formal basis for deleting it, but that a lack of clarity was induced, as the division into regions was essential for achieving the technical effect underlying the invention (3.1.9). Perhaps lack of inventive step was a kinder way of phrasing it, but the applicant could have filed an auxiliary request with the feature of "regions"?

Anonymous said...

This does sound harsh, but I would guess that the EPO gives more consideration to third parties than the other patent offices. Sometimes unclear words can cause the claim to 'perhaps' cover embodiments which are not patentable, and if the Board felt that there were particular embodiments in the prior art that could 'perhaps' be covered they would be strict about clarity. I know how much trouble such unclear terms can cause to innocent third parties, and if we are going to have a system where patents have a presumption of validity then such harshness has its place.

MaxDrei said...

The expression "Bermuda Triangle" is beloved of DG1 when it presents its "Examination Matters" yearly seminars. Ever more cases, of clearly patentable subject matter, and otherwise sailing through substantive examination within DG1, nevertheless disappear without trace, in the Triangle formed by EPC Articles 54, 84 and 123(2). Here's how:

Using "broadest reasonable interpretation" the claim lacks novelty and so must be narrowed. But all attempts to secure novelty by such an amendment founder on the rocks of Art 84 or 123(2).

DG1 has no conscience. It has no experience how to draft and so blithely supposes that there is no difficulty at all, for any Applicant that takes the trouble to draft competently the patent application before filing it.

Mind you, it may have a point, to some extent. In the recent Nautilus case, the Supreme Court of the USA looked at clarity and the behaviour of attorneys deliberately to draft with ambiguity. At least at the EPO, if you try to have it both ways, you might end up with nothing.

I will now copy this to Patently-O, which might attract comment here, from readers there.

Anonymous said...

The discretionary decision of the Board of Appeals whether or not the ordinary language expression "region" is clear

The examination of Art. 84 EPC may in practice leave lots of room for discussion, but legally speaking there is no room for discretion.

Also the board's decision to raise the clarity objection in the first place was not a discretionary one (G 10/93).

The board did have discretion to remit the case to the ED for examination of clarity, but that might not have made much sense in this case.

Anyway, from reading the decision I get the impression that the clarity problem was introduced (or maybe highlighted) by the appellant when trying to amend and/or argue around the reasons for the refusal by the ED.