Introduction
On November 25, 2024, the Board of Appeal rendered decision T 1420/21 concerning a patent held by Richemont International S.A. for a horological system with enhanced tribological properties. This decision emphasizes key legal principles surrounding the admissibility of appeals and the right to be heard under the European Patent Convention (EPC).
The Board addressed two pivotal issues:
- Admissibility of the appeal, grounded on compliance with Articles 106 to 108 and Rule 99 EPC.
- Allegations of procedural violations, particularly whether the first-instance Opposition Division infringed the patentee’s right to be heard (Article 113(1) EPC).
Summary of the Invention
The invention concerns a method of manufacturing a horological system with components designed to reduce wear and friction through advanced surface engineering. Key claims include:
- Providing components with functional zones that interact under friction.
- Modifying the surface topography of these zones to achieve submicron structures.
- Ensuring surface features range from 1 to 1000 nm, with a density between 15% and 80%.
Such modifications aim to enhance durability and performance by controlling tribological interactions.
Procedural Background
Following the revocation of European Patent EP 3002637, Richemont International S.A. filed an appeal. The Opposition Division deemed the patent non-compliant with Article 84 EPC (clarity of claims). The Board of Appeal was tasked with evaluating:
- Admissibility of the appeal under Article 108 and Rule 99(2) EPC.
- Alleged violations of Article 113(1) EPC regarding the patentee’s opportunity to respond to issues raised.
Key Issues and Decisions
Admissibility of the Appeal
- Opponent’s Arguments: The appeal lacked substantive engagement with decisive reasons from the first-instance decision, allegedly failing to meet Rule 99(2) EPC.
- Board's Analysis: The appeal sufficiently addressed both contested issues—clarity and measurement of claimed parameters. The Board confirmed the procedural adherence to Articles 106 to 108 EPC, rendering the appeal admissible.
Violation of the Right to Be Heard
- Patentee’s Arguments: The Opposition Division did not sufficiently discuss or allow for a response regarding multiple measurement methods for the "density" parameter, constituting a procedural violation under Article 113(1) EPC.
- Board’s Decision: While acknowledging procedural imperfections, the Board concluded that any alleged violation did not substantially affect the outcome. The independent grounds of revocation were upheld, negating the need for reimbursement of the appeal fee under Rule 103(1)(a) EPC.
Substantive Issues
- The main claim’s lack of clarity stemmed from ambiguous definitions of critical parameters like "density" and the unspecified reference surface for measurements.
- The Board affirmed the decision to revoke the patent, noting inconsistencies in claim language and the insufficiency of supporting evidence (e.g., nanostructure measurements via atomic force microscopy).
Lessons to Be Learned
Comprehensive Grounds for Appeal
- Appeals must directly address decisive issues from first-instance decisions. The appellant successfully presented arguments on both clarity and parameter measurement, reinforcing the importance of structured and detailed submissions.
Right to Be Heard
- Article 113(1) EPC demands procedural fairness. While the patentee was granted opportunities to respond, their claims of insufficient discussion highlight the necessity of thorough documentation during opposition hearings.
Claim Clarity and Supporting Evidence
- Ambiguity in claim parameters, particularly those involving complex measurements, can jeopardize patent validity. Practitioners should ensure robust definitions and methodologies are explicitly described within claims.
Procedural Strategy
- Litigants must weigh the risks of introducing extensive auxiliary requests or technical arguments late in proceedings, as these may be dismissed as inadmissible.
Legal Basis for Procedural Requests
- Requests for fee reimbursement or remittal require clear demonstration of causal links between procedural flaws and adverse decisions.
Conclusion
Decision T 1420/21 underscores the meticulous standards for claim clarity under Article 84 EPC and the procedural safeguards of the right to be heard. It serves as a reminder of the critical interplay between technical precision and procedural compliance in European patent law.
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.