Introduction
The European Patent Office’s (EPO) Board of Appeal decision in T1362/15 (application number: EP05773234.9) provides critical insights into the risks associated with using US-style dependent claims during European patent prosecution. The decision emphasizes the difficulties of justifying amendments derived from US-style claims within the framework of Article 123(2) EPC, particularly regarding intermediate generalizations and combinations of features from different claim dependencies. This case reinforces the need for strategic foresight when drafting claims for patents intended for European validation.
Summary of the Invention
The invention concerns a catalytic converter and its assembly process, designed for effective exhaust emission control. Key features include:
Seamless Outer Tube:
- An outer tubular structure formed without welds, offering improved durability and resistance to thermal stresses.
Tubular Heat Shield:
- Positioned within the intermediate portion of the catalytic converter to reduce heat transfer from exhaust gases.
Catalyzed Substrates:
- Located at each end of the tube, facilitating chemical reactions to reduce harmful emissions.
Additional Configurations:
- Optional insulation layers, inner tubes, and an oxygen sensor for advanced designs.
The invention focuses on providing robust and efficient catalytic converter designs while addressing manufacturing challenges.
Key Points of the Decision
1. Procedural Background
The patent was initially upheld in an amended form by the Opposition Division. The patentee appealed, seeking reinstatement of the original claims or allowance of auxiliary requests. The opponent challenged the validity of the amended claims, arguing that they introduced subject-matter extending beyond the original disclosure (Article 123(2) EPC).
2. The US-Style Claim Dependency Issue
US-style dependent claims often include multiple dependencies that can be read as stand-alone claims or in various combinations. This practice differs from the strict hierarchy expected in European claims. While US-style claims provide flexibility, they can create significant challenges in European proceedings, particularly when amendments involve combining features from various dependent claims.
In this case, the patentee’s amendments combined features from different dependent claims. The opponent argued that these combinations:
- Were not directly and unambiguously disclosed in the original application.
- Constituted an intermediate generalization, omitting essential features from the embodiments described in the application.
3. Arguments by the Parties
- Patentee’s Position:The patentee claimed that the amended features were supported by the US-style claims and corresponding embodiments in the description. They argued that the original claim set allowed for flexibility in combining features without introducing added subject-matter.
- Opponent’s Position:The opponent maintained that the amended claims were unallowable under Article 123(2) EPC because they selectively combined features from dependent claims without preserving their original context. This selective combination resulted in an unallowable intermediate generalization.
4. Board’s Analysis and Findings
- Intermediate Generalizations:The Board reiterated that amendments must be directly and unambiguously derivable from the original disclosure. Selectively combining features from dependent claims without their original context often leads to intermediate generalizations, which are not permitted under European law.
- US-Style Dependency and EPC Requirements:The Board highlighted that the dependency structure of the original claims did not align with European standards for ensuring clarity and unambiguous disclosure. This discrepancy made it challenging to justify the amended combinations under Article 123(2) EPC.
- Referral Request:The patentee requested a referral to the Enlarged Board of Appeal, arguing that US-style dependencies should be considered acceptable in European proceedings. The Board rejected this request, citing existing case law (e.g., G 2/98, G 2/10) that already provided clear guidance on assessing added subject-matter.
Final Outcome:
- The appeal was dismissed.
- Auxiliary requests 2 to 4 were found non-compliant with Article 123(2) EPC.
Lessons to Be Learned
1. Draft Claims for European Compatibility
While US-style claims may offer flexibility in the US system, they can lead to significant challenges during European prosecution. Practitioners should ensure that claims intended for European validation comply with the hierarchical structure expected under the EPC.
2. Avoid Intermediate Generalizations
When amending claims, ensure that any combination of features is explicitly supported by the original application. Selective abstraction from specific embodiments or dependent claims risks introducing unallowable generalizations.
3. Provide Comprehensive Disclosure
Applications should include a clear and detailed description of all potential combinations of features. This approach minimizes the risk of added subject-matter objections during amendments.
4. Understand the Limits of Dependency Structures
US-style dependencies may not provide a sufficient basis for amendments in European proceedings. Claims should be drafted with a clear and logical dependency structure to facilitate amendments that comply with Article 123(2) EPC.
5. Learn from Established Case Law
Familiarity with decisions such as G 2/98 and G 2/10 is crucial for navigating issues of added subject-matter. These rulings emphasize the need for clear and unambiguous disclosure, providing a solid framework for assessing amendments.
Legal Basis
- Article 123(2) EPC: Prohibition against adding subject-matter beyond the original disclosure.
- G 2/98 and G 2/10: Guidance on the interpretation of amendments under the EPC.
- T 2619/11 and T 1414/11: Case law addressing intermediate generalizations and claim dependencies.
Conclusion
Case T1362/15 serves as a cautionary tale for patent applicants and practitioners using US-style claims in European proceedings. While these claims provide flexibility in the US system, they can lead to significant hurdles during European prosecution, particularly when amendments are required. By drafting claims with European standards in mind and avoiding intermediate generalizations, applicants can minimize risks and ensure smoother prosecution.
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.