EPO – The inescapable trap enlarged

Posted: February 5th, 2011

EPO, Technical Board of Appeal  3.2.04, 28 September 2009, Decision No. T 567/08 – Unilever v. Plasticos and Colgate-Palmolive

As to the problem of added subject-matter, EPO practice exhibits a specific feature which is dangerous for the patentee in opposition proceedings. If the EPO considers a limiting amendment, made and allowed in grant proceedings, to have added new matter, the patentee falls into the inescapable trap created by the Enlarged Board of Appeal in decision G 1/93: The amendment cannot remain in the claim because of the prohibition of adding new matter in and it cannot be removed from the claim because of the prohibition of extending the scope of protection after grant.

In the reported decision, Board of Appeal 3.2.04 has increased this danger by interpreting a feature in the claim in two different ways and choosing, to the disadvantage of the proprietor, one of the possible interpretations as the basis for revocation as a limiting amendment which cannot be removed after grant in opposition proceedings before the EPO. The Board concluded that both interpretations represented common usage and held the amendment a limiting extension within the meaning of G 1/93. Thus, the patent was to be revoked.

The decision gives rise to two comments. First, national practice has shown that the interests of the public and the interests of the patentee can be safeguarded without facing the patentee with an inescapable trap. In its recent decision “Winkelmesseinrichtung” (GRUR 2011, 40) the German Federal Supreme Court, explicitly discussing the differing EPO approach, concluded that a limiting feature may remain in the claim. Of course, the added feature may not be used as a basis for arguing inventive step.

Second, it is the task of the Courts to interpret a patent for the purposes of assessing validity and infringement. The conclusion in T 567/08 that two interpretations are possible is not such a decision. Rather, it is the denial to take a decision. Also in this respect a reference may be made to a recent judgment of the German Federal Supreme Court. In “Straßenbaumaschine” (GRUR 2009, 653), the Court noted that the assessment of the claimed subject-matter is a question of law and concluded therefrom that, notwithstanding any unclarities, the judge cannot abstain from defining what the subject of the invention is.

Read decision T 567/08 (in English) here.

Headnote and summary: Rudolf Teschemacher

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