Claims can contain alternatives, e.g. “…wherein the communication link is a wired link or a wireless link…”. T 1186/24, a recent decision from the European Patent Office’s Boards of Appeal, reminds us that the requirements of the European Patent Convention must be met by all alternatives within a claim. The decisive requirement was sufficiency and this was not met by one alternative which, in this case, led to revocation of the patent.
Having an unallowable alternative within a claim does not normally lead to revocation of a patent if another alternative is allowable. Usually, an auxiliary request is filed that deletes a disputed alternative in case the objection cannot be overcome. Interestingly, the patentee did not do so in this case.
Background
This appeal case concerned a claim that contained an alternative, namely “A process for preparing (-)-Ambrox or preparing a mixture comprising (-)-Ambrox…”. The patent taught a way for the skilled person to synthesise Ambrox using enzymatic conversion. However, the patent disclosed examples that produced mixtures comprising Ambrox and lacked any disclosure of an example that produced Ambrox as the sole reaction product.
The patentee’s arguments
The patentee did not argue that the patent was sufficient as regards preparing (-)-Ambrox alone but instead argued that the claim, when properly construed, did not cover such a method.
T 190/99 and its infamous direction that a claim must be construed by a mind willing to understand was used by the patentee to argue that, after consulting the description (as per G 1/24), the claim should not be interpreted to mean that (-)-Ambrox is the sole reaction product. Instead, they argued that the alternative reciting “(-)-Ambrox” should be interpreted to mean an enriched product or a product that predominantly comprises (-)-Ambrox. The Opposition Division agreed with this argument and decided that claim 1 met the requirement for sufficiency.
The Board’s response
The Board of Appeal did not agree and instead followed the majority of case law issuing since G 1/24 by saying that the description cannot override clear claim language. The Board also followed the established principle that alternatives within a claim must be interpreted as having independent technical meanings. The patentee was arguing that the alternatives were synonymous which was at odds with this principle. The second alternative was broadly framed as any mixture comprising Ambrox and, following the principle for different meanings, it was decided that the first alternative must require Ambrox not to be part of a mixture (i.e. to be the sole reaction product).
Sufficiency of alternatives
The Board decided that for a claim to be sufficient under Article 83 EPC, the patent must teach at least one way to put each alternative into effect. It follows that it is not enough for just one alternative to be sufficient. This seems consistent with well-established case law saying that a claim is sufficient only if the disclosure enables the invention to be performed over the whole range claimed, e.g. T 1173/00. It seems reasonable to expect that if a claim explicitly defines alternatives, then the disclosure of the patent must provide at least one way of putting each alternative into practice.
No saving amendment made
The usual response to an objection being raised against an alternative in a claim is to file an auxiliary request in which that alternative is deleted. Even if the objection is successful, it will not apply to the auxiliary request. However, it appears that this was not done in this case and all auxiliary requests filed during the appeal look to include both alternatives. As a result, all requests were deemed insufficient and the patent was revoked.
Takeaway
If alternatives are presented in a claim, then they must all meet the requirements of the European Patent Convention including sufficiency.
If an alternative is suggested to be unallowable, filing an auxiliary request that deletes that alternative is almost always advisable. Arguing that the alternative suggested to be unallowable is synonymous with the allowable alternative is unlikely to succeed: if alternatives exist in a claim, the EPO will try its hardest to interpret them to have different meanings (and may raise a clarity objection if they cannot).
Wherever possible, claims should be framed to have the intended meaning. G 1/24 cannot be relied upon to allow an alternative interpretation provided by the description to override or modify a clear meaning of a claim.
For further details, please contact Nigel Tucker or your usual Boult advisor.
