Introduction
The European Patent Office's Board of Appeal, in decision T 0598/20 dated December 21, 2023, addressed key issues concerning the inventive step and the admittance of late amendments. This decision is particularly relevant for patents concerning electrical apparatuses designed for the generation, transmission, distribution, and usage of electrical energy, specifically those insulated with CO2. The decision upheld the revocation of European patent No. 3069421 owned by Hitachi Energy Ltd. The case provides important insights into the application of Article 56 EPC concerning inventive step and Article 13 RPBA 2020 on the admittance of amendments.
Summary of the Invention
The patent in question, EP 3 069 421, relates to an electrical apparatus used in the generation, transmission, distribution, and usage of electrical energy. The apparatus is insulated with a gas mixture that includes carbon dioxide (CO2) and possibly an organofluorine compound. A critical aspect of the invention is the inclusion of an adsorber material that reduces or eliminates water and other contaminants from the insulation medium. The amount of adsorber is determined based on specific formulas to ensure optimal performance of the electrical apparatus by maintaining the insulation and arc-extinguishing properties while preventing excessive adsorption of CO2.
Key Points of the Decision
1. Inventive Step (Article 56 EPC):
The Board evaluated whether the patent involved an inventive step over the prior art, specifically document E1 (WO 2012/038442 A1). The Board identified that the distinguishing features of the claimed invention, which relate to the specific amounts of adsorber used in the insulation space, were not sufficient to involve an inventive step. The Board concluded that a person skilled in the art would have naturally arrived at the claimed solution through routine experimentation, aiming to achieve optimal performance without excessive adsorber use. The decision also noted that document E1 implicitly covered similar concepts, weakening the inventive claim further.
2. Arguments by the Opponent and Patentee:
- Opponent's Argument: Siemens, the opponent, argued that the claimed invention lacked novelty and inventive step, particularly emphasizing that the calculations for the adsorber amount were not innovative but rather a standard practice within the field. They also contended that the patent's scope was overly broad, encompassing known methods and materials.
- Patentee's Argument: Hitachi Energy argued that the specific formulas and the focus on minimizing the adsorption of CO2 while ensuring the removal of contaminants were innovative aspects not suggested by prior art. They also attempted to introduce late amendments to narrow the claims, which they believed would address the objections raised.
3. Board's Decision on Admittance of Amendments (Article 13 RPBA 2020):
The Board rejected the late-filed auxiliary requests from the patentee, which included amendments that were argued to be necessary in light of the objections raised. The Board held that the amendments introduced new issues that had not been examined earlier and thus constituted an amendment under Article 13 RPBA 2020. The Board emphasized that amendments filed at a late stage must demonstrate exceptional circumstances, which the patentee failed to justify adequately.
Lessons to Be Learned
1. The Importance of Clear Distinction in Technical Features:
This decision highlights the need for patent applicants to clearly distinguish their inventions from prior art, particularly in technical fields where minor variations may not be sufficient to establish inventive step.
2. Strategic Timing of Amendments:
The decision underscores the critical importance of timely filing amendments. Late-stage amendments, especially those introduced during oral proceedings, are subject to strict scrutiny and are unlikely to be admitted unless exceptional circumstances can be demonstrated.
3. Rigorous Examination of Inventive Step:
Applicants should ensure that their inventions clearly demonstrate an inventive step over known solutions, particularly when dealing with improvements that might be seen as routine optimizations by those skilled in the art.
Contact
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Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.