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

Clarity in Europe and Germany

• Dr. Dominique Trösch, May 2016

2 The following slides are based on a presentation recently given at Beyond Borders, a joint event of the HARRIS FIRM and PATRONUS IP. PATRONUS IP is a Patent Attorney firm in Munich, Germany, which represents both domestic and from abroad clients in front

• f the German Patent and Trademark Office, the European

Patent Office, the European Trademark Office, as well as the relevant courts in matters relating to industrial and intellectual property rights, covering all relevant technical fields. For further information, please visit our website: www.patronus-ip.com

• Dr. Dominique Trösch, May 2016

People at Patronus IP

3 Jan Robert Naefe

Dipl.-Ing. (Material Science)

European Patent Attorney Patentanwalt

Bernhard Ganahl

Dipl.-Phys.

European Patent Attorney Patentanwalt

Christian Himmler

Dipl.-Ing.

European Patent Attorney

Veronika Schwepler

Lawyer

• Dr. Dominique Trösch

Dipl.-Chem.

European Patent Attorney Patentanwalt

• Dr. Markus Zoller

Master of Science

European Patent Attorney Patentanwalt

• Dr. Dominique Trösch, May 2016

Speaker

4 The speaker on behalf of PATRONUS IP is Dr Dominique J.M. Trösch. Dr Trösch studied chemistry at the Julius-Maximilians-Universität Würzburg (Dipl.-Chem.), where he also worked on his thesis and obtained his doctor’s degree (Dr. rer. nat.). His research included research stays at Nottingham & Oxford Universities, funded by the British Council and the DAAD.

• Dr. Trösch has been working in the field of industrial and intellectual property since 2000. He has

particular experience in the field of industrial property relating to pharmaceuticals (patents, SPC’S), in prosecution proceedings in front of the German Patent and Trademark Office as well as in front of the European Patent Office (EPO), opposition and appeal proceedings in front of the EPO, as well as in patent nullity proceedings in front of the German Federal Patent Court (Bundespatentgericht, BPatG) and the Federal Court (Bundesgerichtshof, BGH), in infringement/preliminary injunction proceedings (Landgericht Düsseldorf), as well as in drafting legal opinions and FTO analyses.

• Dr. Dominique Trösch, May 2016

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Clarity

• During EPO Examination Proceedings (pre-grant)

legal background; general principles

• During EPO Opposition Proceedings (post-grant)

G 3/14; example

• In front of German Courts (post-grant)

BGH Fugenband, Polymerschaum

• Dr. Dominique Trösch, May 2016

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Legal Background

• Art. 84 EPC

The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

Clarity under the EPC

• Dr. Dominique Trösch, May 2016

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“The purpose of claims under the EPC is to enable the protection conferred to be determined” (G 2/88, OJ EPO 4/1990, pp. 99-100, reasons 2.5) Article 84 EPC signifies

• that an independent claim should explicitly specify all of the essential features

needed to define the invention, and that

• the meaning of these features should be clear for the person skilled in the art

from the wording of the claim alone. These requirements serve the overriding purpose of legal certainty. (G 1/04, OJ EPO 5/2006, pp. 351-352 reasons 6.2)

Clarity under the EPC

• Dr. Dominique Trösch, May 2016

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Clarity – General Principles Claims must teach the exact distinctions delimiting the scope of protection; Claims must not be contradictive; Claims must be clear in themselves; Claims must indicate all the essential features of the claimed invention Essential features = all features necessary for solving the technical problem Note: Complexity is not equivalent to lack of clarity – clarity merely requires that the scope of the claim is clear and unambiguous for the skilled person

Clarity under the EPC

• Dr. Dominique Trösch, May 2016

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Example: T 809/12 (lack of clarity due to a missing essential feature) Claim: “A coated article comprising a layer system … characterized in that the coated Article has a DeltaE* value (glass side) no greater than 2.5 after or due to heat treatment, …”. The claim further specified thickness of layers (5), (9), but remained silent on other layers. DeltaE* was important for the result to be achieved (good matchability). According to the description, good matchability was obtained (i) when certain layers (5) (9) are thicker than in the prior art, and (ii) when other layers are thinner than in the prior art. A “belief” was expressed that “one or more of these changes results in good matchability”. “Belief” was not a valid basis for omitting details about the other layers. The claim was considered to contravene Art. 84 EPC, because the remaining features of the claim did not comprise all the features necessary for achieving good matchability.

Clarity under the EPC

• Dr. Dominique Trösch, May 2016

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Note the catchword of this decision: “If an independent claim contains a feature defined by a result to be achieved which essentially corresponds to the problem underlying the application, to comply with Article 84 EPC 1973 the remaining features of the claim must comprise all essential features necessary for achieving that result (see reasons 2.2 to 2.9.2).” (T 809/12, catchword, emphasis added) Note: The situation may be different for claims comprising a similar feature, which is not related to the objective technical problem solved.

Clarity under the EPC

• Dr. Dominique Trösch, May 2016

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Products characterized by parameters, relative terms, about Always include a reference to the method used to determine a parameter. Where several methods exist, choose a specific one, e.g. an industrial standard. A relative feature may be admissible – “water-soluble” was more often considered admissible under Art. 84 EPC than not. Note in this context: An unclear term cannot be allowed in a claim if the term is essential having regard to the invention. Equally, an unclear term cannot be used by the applicant to distinguish his invention from the prior art. (Guidelines, F-IV.4.6) “about” or “approximately” only admissible if it does not prevent the invention from being unambiguously distinguished from the prior art (Guidelines, F-IV.4.7)

Clarity under the EPC

• Dr. Dominique Trösch, May 2016

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Imagine a granted European Patent is being opposed. The following is about the importance of clarity in such proceedings.

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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Clarity Before Grant is a Prerequisite

pre-grant claim requirements:

• novel, inventive
• can be carried out by skilled person
• originally disclosed
• clarity, support by the description (Art. 84 EPC)

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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Clarity After Grant is not a Ground of Opposition

post-grant claim requirements:

• novel, inventive
• can be carried out by skilled person
• originally disclosed
• clarity, support by the description (Art. 84 EPC)

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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Clarity is still important in Opposition Proceedings

clarity is important both insofar as the claims (1) get amended; and (2) remain unchanged.

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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• Art. 101 EPC:

(3) If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the

• pposition proceedings, the patent and the invention to which it relates

(a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, …; (b) do not meet the requirements of this Convention, it shall revoke the patent.

including Clarity (Art. 84)

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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“taking into consideration the amendments”

What does this mean? To which extent may the Opposition Division reexamine clarity of a granted claim which was amended?

• undisputed: amendments possibly introducing a lack of clarity which did

previously not exist in the claim

• what about other amendments?

Clarity in Opposition Proceedings (post grant)

Clarity in Opposition Proceedings at the EPO

• Dr. Dominique Trösch, May 2016

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“taking into consideration the amendments”

possibilities considered in G 3/14:

examination of requirements of Art. 84 EPC permissible ? (a) in case the amendment introduces lack of clarity (b) if lack of clarity is „arising out of“ amendment (but the feature in question itself was not amended) (c) on a case-by-case basis, as a matter of discretion, if amendment is sole feature establishing novelty/inventive step (as e. g. in T 1459/05) (d) unrestricted examination of amended claims on a case-by-case basis, irrespective

• f the kind of amendment (as e. g. in T 459/09)

(e) unrestricted examination of amended patent as a whole due to the amendment

Clarity in Opposition Proceedings at the EPO

• Dr. Dominique Trösch, May 2016

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Enlarged Board, G 3/14, OJ EPO 2015, A102, p. 2, catchword:

• Dr. Dominique Trösch, May 2016

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“taking into consideration the amendments”

possibilities considered in G 3/14:

examination of requirements of Art. 84 EPC permissible ? (a) in case the amendment introduces lack of clarity (b) if lack of clarity is „arising out of“ amendment (c) on a case-by-case basis as a matter of discretion if amendment is sole feature establishing novelty/inventive step (as e.g. in T 1459/05) (d) unrestricted examination of amended claims on a case-by-case basis, irrespective of the kind of amendment (as e.g. in T459/09) (e) unrestricted examination of amended patent as a whole due to the amendment

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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However, … (G 3/14, OJ EPO 2015, A102, pp. 53, 54, reasons 55)

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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Examples according to G 3/14 for a profound effect of Lack of Clarity on the Outcome of grounds for opposition under (i) Art. 100 (b) / Art. 83 EPC (Lack of Sufficiency) T 684/89, reasons 2.1.2; T 5/99 reasons 2; T 126/91, reasons 2.1; T 59/10, reasons 4 (ii) Art. 100 (a) / Art. 54 EPC (Lack of Novelty) T 57/94, reasons 2.1; T 525/90, reasons 2.1; T 892/90, reasons 2; T 617/92, reasons 2.2 (iii) Art. 100 (a) / Art. 56 EPC (Lack of Inventive Step) T 892/90

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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example for clarity influencing outcome under Art. 54 EPC T 493/09 (Hepatitis C/MERCK SHARP & DOHME CORP.)

In this case, Claim 1 read as follows: "1. The use of interferon alpha-2b in the manufacture of a medicament for treating a chronic hepatitis C viral infection in a human, wherein said medicament is to be administered to the human for at least 4 weeks in an amount of the interferon alpha-2b of from 2 million IU per week to 10 million IU per week; wherein the administration maintains serum concentrations of the interferon alpha-2b at a steady state for the duration of the treatment.“ The case lastly depended on how “at a steady state” is to be interpreted.

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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„steady state“ a state in which the concentration

• scillates between a minimum and a maximum.

The description allowed for continuous and intermittent administration, so long as a „steady state“ resulted. The proprietor construed „steady state“ narrowly so as to delimit the claimed subject-matter from prior art disclosing intermittent administration with long intervals. Opponent argued „steady state“ would give rise clarity issues, because no one knows where the steady state begins and where it ends, as oscillation boundaries are uncertain.

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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The Board of Appeal found “steady state” was not unclear, but construed it broadly: “24. …, claim 1 has to be construed to mean that administration of interferon alpha-2b by repeated injection of substantially identical amounts of interferon alpha-2b maintains serum concentrations of interferon alpha-2b at a steady state regardless of the dosing interval.” As a result, three prior art documents were considered to take away novelty. Pay attention when using terms like “steady state”. Define how the term is to be understood in the patent, in order to avoid such situations.

Clarity in Opposition Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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Imagine a granted European Patent is attacked in nullity procedure in front of a German Court. The following is about the relevance of clarity in such proceedings.

Clarity in Nullity Proceedings (post grant, in Germany)

• Dr. Dominique Trösch, May 2016

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The German Federal Court in its recent decision „Fugenband“ issued the following guiding principle relating to amendments in nullity proceedings: „a) In the case of a limitation by the patent proprietor during nullity proceedings, an examination of clarity of the limited claim is, in any event, not allowable insofar as the possible unclarity was already comprised within the claims as granted.“ (BGH X ZR 11/13 of 27 October 2015 – Fugenband, guiding principle a))

Clarity in Nullity Proceedings (post grant, in Germany)

The Guiding Principle More Simply Expressed: A feature comprised in a granted claim may not be examined for clarity in a nullity procedure, even if the claim is otherwise amended.

• Dr. Dominique Trösch, May 2016

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The aforementioned guiding principle does not tell us, whether clarity could be examined if the possible unclarity was introduced with the amendment. The decision, however, emphasizes, that the claim must always be interpreted,

• r construed, even if the wording of the claim appears to be unambiguous (cf.

BGH X ZR 11/13 of 27 October 2015 – Fugenband, paragraphs 14, 15). Why this?

Clarity in Nullity Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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Another recent guiding principle issued by the Federal Court: ”One cannot desist from determining the subject-matter of the invention based

• n the ground that a feature is undefined and (therefore) unsuitable for

delimiting the claimed invention from the prior art.” (BGH X ZR 101/13 of 9 June 2015 – Polymerschaum II, guiding principle 2).

Clarity in Nullity Proceedings (post grant)

The Guiding Principle More Simply Expressed: The subject-matter of the invention must be determined. The presence of an undefined (unclear) feature is no excuse for not doing so.

• Dr. Dominique Trösch, May 2016

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Here‘s what happened at the 1st instance:

In the case at issue, a claim directed to a process for producing a polymer foam referred to a “molten polymer composition” (used at some point in the process). The Federal Patent Court (1st instance) had found that

• the polymer composition was not further specified,
• that the “molten” state was very difficult to determine, and
• that polymer compositions could already be processed into a foam when not yet

molten, but in a viscous state. Based on this, the 1st instance court had concluded that “molten polymer composition” could not serve to delimit the claimed invention from the prior art (because not clear).

Clarity in Nullity Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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Here‘s why this conclusion was wrong:

A granted claim is considered to have the same character as a law in Germany. What falls under the scope of a granted claim is therefore a question of law. Responding to a question of law is mandatory for the court concerned therewith, and the court may not desist therefrom only because the legal norm is unclear or its interpretation difficult (cf. BGH X ZR 101/13 of 9 June 2015 – Polymerschaum II, paragraph 25, with reference to further case-law). The Federal Court lastly determined the meaning of “molten polymer composition” in light of the description and examples comprised therein to encompass polymer compositions having a viscosity sufficiently minimized to be processed in an extruder. ( The use of an unclear term is not always harmful for the proprietor)

Clarity in Nullity Proceedings (post grant)

• Dr. Dominique Trösch, May 2016

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Clarity remains an important issue before and after grant Lack of Clarity in a Granted Claim does not constitute a Ground for Opposition or Nullity Clarity issues may nevertheless give rise to validity issues The meaning of granted claims must always be determined before assessing patentability (in Germany)

Clarity - Summary

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