I have attended the EPO’s online conference Boards of Appeal and key decisions 2022 earlier this week. Highly interesting, as always. My personal highlight was the second day when the focus was on Art. 123(2) EPC (added matter):
Oliver RANDL (I am still yearning for his K’s law blog) gave a brilliant presentation to set the stage on Art. 123 EPC in general, followed by a panel discussion about intermediate generalisations. Of particular interest from a Swiss perspective and in view of proceedings at the FPC: Tobias BREMI sat on that panel.
Here are my take-home messages and some food for further thought.
Article 123(2) EPC — Musings on a golden oldie
Oliver RANDL’s general presentation on Art. 123 EPC was fantastic. His talk was entertaining, thrilling and with clear messages of practical relevance. The most important one, in my view: Forget about all those dubious tests like the ‘novelty test’, the ‘essentiality test’, etc. What matters is the gold standard.
On the fun side, he taught me that I am running a freak show here:
Case law blogs are freak shows!
So, take good care of how to make use of all this … 😉
Intermediate generalisations: Views from national judges and board members
Allowability of intermediate generalisations is getting quiete some attention in recent times. Graham MURNANE gave a good summary in epi Information 1/2022: Intermediate Generaliations — a review. The topic is dealt with in the EPO Guidelines (2022), chapter H-V, 3.2.1; and the Case Law of the Boards of Appeal (2022), chapter II.E.1.9.
The panel discussion of Giovanni PRICOLO (EPO), Tobias BREMI (CH) and Sir Richard ARNOLD (U.K.) was moderated by Wolfgang SEKRETARUK (EPO).
All three panelists presented a decision from their respective jurisdictions; red indicates an inadmissible intermediate generalisation, green an admissible amendment (I am referring to the latter only as an amendment and not as an intermediate generalisation for reasons that will become clear later):
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- EPO: T 0879/18;
- Switzerland: 4A_11/2022 (Supreme Court) on appeal against O2019_007 of the Swiss FPC; and
- U.K.: Vector v Glatt, [2007] EWCA Civ 805
Let’s have a closer look at these three cases.
Giovanni PRICOLO introduced the EPO case: T 0879/18 (HTML | PDF). Indeed, I find that this decision is a very exhaustively and well reasoned example (spanning about 7.5 pages) of how the Boards typically assess allowability of intermediate generalisations; ¶4. I have no issue with it, really.
What is remarkable, though, is the Board’s note in ¶4.14: Mere boilerplate language to the effect that some shown features are optional is of no avail. Not much of a surprise, in my view.
The appearance of the Swiss case made my blood run cold because I was involved in that case and advocated with full conviction that the amendment added matter / was inadmissble. Without success. It’s okay, I’m over it. But since this case unexpectedly popped up again, here is the factual setup, in brief:
It was all about the feature «exposure to repeated and intense illumination»: It was part of the independent claim as filed (but not included anymore in the claim as granted (see the box at the bottom of the slide), and it was consistently also part of the most general introduction of the method of the invention in the specification. The box at the top of the slide is an abridged version of that disclosure; here is the full paragraph (recited in the FPC’s judgment):
This section requires that the detection step (singular, i.e. a single one) includes repeated and intense illumination. In my view, the terms repeated and intense are broad, but they are not just meaningless.
The claim as granted pretty much resembled the wording of the box in the middle, which is introduced in the general specification as «a preferred embodiment» of «the» method. Clearly, the argument was that this preferred embodiment carries all the limitations of the more general definition of the method with it, and that omission of «exposure to repeated and intense illumination» was an unallowable intermediate generalisation.
The FPC did not buy into this. But it is important to note at which point the argument failed. The FPC held two things in ¶57 of the judgment: (1.) What is described in the specification as a «preferred embodiment» (the box in the middle of the slide) would actually be understood by the skilled person in the case at hand as a standalone definition of the invention; and (2.) the feature would be implicit anyway / read along by the skilled person (‘liest der Fachmann […] implizit im erteilten Anspruch mit’).
Accordingly, and I’m really trying hard to be objective here, the FPC did not rule on the conditions under which an intermediate generalisation is admissible. Rather, the FPC held there was no intermediate generalisation at all. I do not believe that this decision is of much help to learn anything about whether or not the current approach of the FPC to admissibility of intermediate generalisations is more liberal than, e.g., the EPO’s approach.
At the appeal stage, the Supreme Court did not add much. The judgment simply holds that the FPC cannot be accused of a violation of the law if it did not simply apply linguistic logic:
Der Vorinstanz ist keine Rechtsverletzung vorzuwerfen, wenn sie es im Rahmen ihrer Prüfung der Offenbarungen nicht bei sprachlogischen Elementen bewenden liess; […].
Well, this is nothing new under the sun. What matters is the skilled person’s understanding: What is directly and unambiguosly disclosed? It is self-evident that this assessment cannot be a purely linguistic exercise. In any event, the Supreme Court doesn’t say anything about intermediate generalisations here.
To complete the picture from a Swiss perspective: It is not that there is no relevant case law on intermediate generalisations. In litigation between BD and Ypsomed, the Supreme Court clarified only recently that it is fully aligned with the jurisprudence of the Boards of Appeal in this respect:
The Supreme Court took note of some criticism e.g. by Stephan FREISCHEM in GRUR 2021, pp. 188-191 (‘[D]ie schleichende Enteignung der Erfinder’); see this Blog here. (I do like catchy titles myself. But I really don’t see the analogy with expropriation. Sorry not sorry; see below.) But it stood firm, and I could not agree more in this respect.
Moving on to the U.K.: Sir Richard ARNOLD presented Vector v Glatt, [2007] EWCA Civ 805. Back in the days, Richard ARNOLD was acting as QC for Vector, and he successfully argued that the claim at stake was a ‘true unallowable intermediate generalization.” ¶34. I have no issue with this decision.
My two cents
Art. 123(2) EPC provides that
[t]he European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.
Now, what is the ‘content of the application as filed’? The case-law of the Boards of Appeal is well established in this respect (Case Law of the Boards of Appeal, ed. 2022, II.E.1.3.1):
[W]hat a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed (G 3/89, OJ 1993, 117; G 11/91, OJ 1993, 125; G 2/10, OJ 2012, 376, referring to this test as “gold standard”).
The EPO is renown for its strict approach on this, and we all struggle with it once in a while. But the EPO applies it consistently in the assessment of novelty, allowability of amendments, etc. Rightly so. Otherwise, we would get on a very slippery slope.
I am fully aware that my position may well be unpopular. But I am convinced that the EPO’s approach of allowability of intermediate generalisations is anything but overly restrictive. In fact, it is even borderline generous in more than just some cases.
Here is why.
The ‘content of the application as filed’ under Art. 123(2) EPC and the content of a prior art document in the assessment of novelty, Art. 54 EPC, need to be measured against the standard. There is no dispute about this, I believe.
Intermediate generalisations are always about the omission of features from a certain piece of dislosure, e.g., a specific embodiment outlined in the specification. The same situation may occur in the assessment of novelty over a prior art reference. Just think of a patent that claims a scissor, as follows:
Scissor with [A], [B] and [C], characterized in that it does not comprise a coating [D].
In opposition, a product leaflet of a scissor is cited as prior art. The scissor has features [A], [B], [C] — and a coating [D]. No indication or explanation why the coating [D] is there, but it no doubt is there. Clearly, the claim is novel. I trust this is common ground.
Now, assume that the opponent additionally cites the ‘Handbook of Scissors’, and let’s further assume that this handbook is part of the skilled person’s common general knowledge. What if this handbook said: You may have a coating [D] on a scissor in order to improve cutting of X; and you better omit that coating [D] in order to improve cutting of Y? Does that change anything about the disclosure of the product leaflet? No, it doesn’t. There simply is a coating [D] in the leaflet, and it cannot be argued away by invoking common general knowledge. Whether or not that coating [D] could be omitted on the scissor disclosed in the leaflet in order to improve cutting of Y is an issue to be dealt with in the assessment of obviousness. There is just no way that the skilled person’s general knowledge can change the direct and unambiguous teaching of the leaflet. I trust that this is also common ground.
Now, why should it be any different in the assessment of intermediate generalisations? Why should an applicant be allowed to claim a scissor with only features [A], [B] and [C] based on an embodiment that undoubtedly discloses the same only in connection with a coating [D]? I am convinced that, as a rule, this should not be allowed. Exceptionally, it might be allowed when there is a clear and unambiguous teaching in the application as a whole that leaves no doubt about the fact that coating [D] was meant to be an option in the specific embodiment. If there is a remark in the general part of the specification that says coatings may or may not be there, that may well be sufficient basis for getting rid of coating [D] in the specific embodiment and to only claim [A], [B] and [C]. However, in the absence of such an overriding teaching, and even if the coating [D] is totally unrelated to the actual invention and when there is no apparent reason why it is there, it cannot be just disregarded. Very similar to the situation with the scissor leaflet: The coating is there. We may not know why, and we should not care. Any guesswork (even with the help of standard textbooks / common general knowledge) about whether it could be omitted in the context of the invention is misplaced.
Btw, Stephan FREISCHEM referred to T 1906/11 (hn; ¶4.2) as a promising example to get it better (if not even right):
In my mind, this decision is actually nothing out of the ordinary. The hn simply explains what the gold standard is all about. On the merits, the decision is telling: What carried the day for the patentee was the mentioning in the general part of the specification that the invention worked with essentially any electrode; see ¶4.2.4. Accordingly, that gave some leeway in order to allow an intermediate generalisation with respect to the electrode. I agree with that approach, as outlined above. It is already on the generous side.
Sorry not sorry
As a rule, there is no reason to have mercy with applicants when it comes to the assessment of allowability of intermediate generalisations, and they should not have the benefit of doubt: The application as filed is their own work product!
We all make mistakes, and one is always wiser after the fact. (Oh man, you can’t even imagine how mad I was at myself already, more than once!) But I cannot understand callings for changes of practice / jurisprudence in order to not run into such trouble. Getting it right from the very beginning is key, i.e., when drafting the application as filed.
In my mind, drafting patent applications is the most underrated part of the work of us patent attorneys, and quite some applicants are (very) price sensitive in particular when it comes to drafting work, for some strange reason. There will always be someone who does it for less money, no doubt about it. Fair enough. But when the work product fails later on, and when it turns out that less money meant cheap, that’s first and foremost something for the client and the drafting attorney to discuss. You can only pick two. One may be symphathetic with the applicant / patentee suffering in such a situation. But this is no good reason for the EPO or judges to be lenient and to let the reins slip.
The gold standard about direct and unambiguous disclosure is a key metric of the whole jurisprudence of the Boards of Appeal in so many aspects, it is almost sacrosanct. It should be touched only with a very trembling hand (if at all), and definitely not without an overriding need to do so. I really fail to see such an overriding need in the assessment of intermediate generalisations.
Be careful what you wish for just in order to make the work of a drafting attorney a little easier; it might blow the whole system.
✍ MW
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