Useless drawings

If anyone still had a doubt that French courts have gotten really tough on extension of subject-matter, despite previous indications to this effect (here, here, here and there), the present post may come as a final confirmation.

The patent which was revoked this time is EP 1215336, in the name of Paper Machinery Technology Italia SpA (or PMT Italia) – as first reported on this French blog. As the name of the company suggests, the patent relates to a machine for manufacturing paper.

PMT Italia sued French Alps-based ABK Machinery for infringement of the patent in February 2012. The defendant lodged a nullity counterclaim which was successful, according to a judgment from the Paris Tribunal de grande instance dated May 7, 2014.

PMT Italia appealed. The appeal proceedings were suspended between January 2015 and June 2016, as ABK Machinery went bankrupt, before resuming in the presence of the court-appointed liquidator. On October 7, 2016, the Cour d’appel confirmed the first instance judgment.

Claim 1 of the patent as granted reads as follows:

A counterblade assembly (10) for a wet section (1) of a paper machine, comprising a fixed structure (13) fixed to a frame (5) of the machine; a counterblade (9) connected to said fixed structure (13) and movable, with respect to it, by actuating means (25) to exert pressure on two wires (2, 3) travelling between said counterblade (9) and a guide surface (8) along a substantially horizontal traveling path (P); and connecting means (22) interposed between said counterblade (9) and said fixed structure (13), characterized in that said connecting means (22) are articulated-parallelogram type connecting means and include a plurality of articulated rod elements (16) hinged to said fixed structure (13) and to said counterblade (9) about respective horizontal axes (A, B) perpendicular to said travelling path (P).

In the above paragraph, expressions in bold are those which were added relative to claim 1 as filed.

This modification was introduced by the applicant in response to the sole communication from the examining division during examination proceedings. Here is what the representative wrote in the letter to the EPO regarding compliance with Art. 123(2) EPC:

The added feature in the claim is at least implicitly disclosed in the description as originally filed (page 5, second paragraph) and clearly and unambiguously disclosed in the drawings (figs. 2 and 4). Therefore, the amendment does not contravene art. 123(2) EPC. However, an explicit support has been added in amended sheet 5 of the description.

[…]

Amended drawings 1 and 2 are also filed, with added reference signs for axes A, B and added reference signs P1, P2 in fig. 1.

Therefore, although an implicit support for claim 1 was supposed to be present in the application as filed, it appeared necessary to modify the description and drawings to make the support more explicit.

Clearly, the court was not very fond of this approach.

The judges started by looking at the modified paragraph of the description, which reads as follows:

More specifically, each connecting assembly 22 comprises two pairs of elements 16 located on opposite sides of post 15 and bar 21, and each defined by two parallel elements 16 extending in a substantially horizontal direction. Each element has one end 16a hinged to post 15, and one end 16b hinged to bar 21 about respective horizontal axes A, B that are perpendicular to the traveling path P of wires 2, 3.

Again, the underlined phrase corresponds to the addition relative to the application as filed.

Says the court:

The respondent rightly notes that, in the original application, nothing taught the skilled person […] about the orientation that the articulation axes should have, namely a position perpendicular to the direction of travel of the wires, for implementing the invention as recited in the claim as amended during examination proceedings. 

Indeed, the paragraph relied upon […] does not contain nor suggest any information on this orientation which was precisely set at 90° during examination proceedings, and the appellant wrongly claims that it is implicitly disclosed. 

Quite frankly, I have not fully studied the application, but the above assessment seems to make a lot of sense. The original paragraph at stake was simply silent on the orientation of the articulation axes.

The next step in the court’s reasoning is probably more controversial, though. Indeed, the court stated that Figures 2 and 4 of the original application as filed could not possibly be relied upon

insofar as the implicit disclosure from the above-mentioned second paragraph on page 5 cannot be acknowledged; the drawings are optional, they are meant to supplement the description which is the only one which is mandatory, since it is not possible to protect something which is claimed without being described (so as to interpret it), and not the other way around.

It seems that the court introduced a hierarchy between the description and drawings (because the presence of a description is mandatory whereas drawings can very well be omitted). According to this hierarchy, the drawings could not be used as the sole support for a claim amendment.

There can certainly be valuable arguments for this approach, but it is contrary to the case law of the Boards of appeal, per which drawings are “to be treated on an equal footing with the other parts of the application” (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, July 2016, section II.E.1.12.1, p.453).

It is in fact also contradictory with earlier case law from the Cour d’appel itself. Indeed, at least in a judgment Knauf Insulation v. Saint-Gobain Isover dated May 16, 2014, the court accepted that a certain claimed feature could be derived from the drawing figures of the application as filed.

In the present case, the stricter standard applied made all the difference, because it seems that the perpendicular orientation of the axes recited in claim 1 of the granted patent with respect to the traveling path P was indeed visible on the drawings.

This does not imply that the amendment was necessarily allowable by the Boards of Appeal’s standards, though. Indeed, according to the latter, “the EPC does not prohibit the amendment of claims to include features from drawings, provided the structure and the function of such features were clearly, unmistakably and fully derivable from the drawings by the skilled person and not at odds with the other parts of the disclosure. Nor could any element be dropped” (Ibid.). A thorough analysis would thus be necessary to come to a conclusion -which was not performed by the court.

Sometimes drawings are the crux of a patent
Sometimes drawings are the crux of a patent

There are two different ways of looking at this, a pessimistic one and an optimistic one.

The pessimistic view is that the court made an error of law by conflating support of the claims in the description and extension of subject-matter, or in other terms Art. 84 EPC and Art. 123(2) EPC. Indeed, Art. 84 EPC, which was explicitly cited in the decision, provides that the claims “shall be clear and concise and be supported by the description“. Note: “by the description“, the law says, and not “by the description and/or the drawings“.

But non-compliance with Art. 84 EPC is not a ground for revocation of a granted patent. Only non-compliance with Art. 123(2) EPC is (see Art. 138(1)(c) EPC). And the latter broadly makes reference to “the content of the application as filed“, without distinguishing between the original description, claims and drawings. In summary, according to this pessimistic view, the court had it all wrong.

But there is a more optimistic view, which is that the court in fact made a thorough assessment of the application as filed, and came to the conclusion that, in this particular case, the amendment could not possibly be justified by the drawings.

The reasoning is not sufficiently explicit to definitively exclude one of these two views, but the optimistic one can be supported by the following statements in the judgment.

First, the court noted that the description makes it clear that variations can be made relative to what is depicted in the drawings. If my understanding is correct, the added feature was therefore considered by the judges as a non-essential, or even unimportant one, in view of the original disclosure, so that the skilled person would not have isolated it from the disclosure to include it in the main claim.

Second, the court emphasized that the applicant heavily relied on the added feature during examination proceedings in support of inventive step. For the court, “the new claim brings a technical contribution to the invention, it does not merely correspond to a reformulation of the technical problem and of its solution which could be deduced from the overall content of the application as filed“.

Again, trying to translate what is meant there, the point is the added feature completely changes the problem at stake and its solution. As this change was not derivable from the original application, the addition is unallowable.

In summary, if the optimistic view is correct, the analysis made by the French judges may not be that different from the analysis that a Board could have made, after all.

Anyway, claim 1 was held invalid. The same applied to dependent claims 2-7, quite easily so as the patentee did not develop any specific argumentation to defend these claims.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, October 7, 2016, Paper Machinery Technology Italia SpA v. SA ABK Machinery, RG No. 14/16544.

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