T 0246/86 (Identification system) of 11.1.1988

Summary of Facts and Submissions

I. In response to European patent application No. 80 401 534.5, a European patent with the No. 0028965 was granted.

II. The respondents (opponents) entered opposition to this patent and requested that it be revoked in its entirety since its subject-matter extended beyond the content of the application as filed and did not involve inventive step.

III. The Opposition Division revoked the European patent on the ground that the subject-matter of the granted patent had been extended compared with the content of the original application.

IV. The appellants (patent proprietors) lodged an appeal against this decision, requesting that the contested decision be revoked and, in the alternative, that the patent be maintained with a new subsidiary sole claim attached to their statement of appeal. ...

VII. The arguments put forward by the appellants in their statement of appeal and in their reply to a communication from the Board of Appeal's rapporteur may be summarised as follows: The subject-matter of the European patent does not extend beyond the content of the application as filed, because: - the feature in the sole claim of the main request, whereby "the processing circuits and the memory of the apparatus are located in a portable object connected to the said apparatus", is contained in the original description which expressly refers to an electronic device similar to that "constituting" and not "contained in" the portable object. Furthermore, this feature is mentioned in the abstract which is part of the application, and intended to facilitate understanding of the technical problem; - the feature in the sole claim whereby the data recorded in the electronic device is inaccessible from the outside is also described in the application as filed, where the memory of the apparatus is referred to as being a protected facility with controlled access; - the fact that a feature of the system claimed in the original application involving a first means of identification was not included in the claim of the contested patent does not extend the content of the application, such a deletion being clearly possible by virtue of Article 123 and Rule 86 EPC. ....

VIII. The respondents do not accept the appellants' arguments; in their opinion the amendments made are supported neither by the original claims and description nor by the drawings and the abstract cannot be considered to form part of the original disclosure. ...

Reasons for the Decision

1. The appeal is admissible.

2. Main request

2.1 The Board considers that the first element of the characterising part of the claim, according to which "the processing circuits (5) and the memory (6) of the apparatus (2) are located in a portable object (1 bis) connected to the said apparatus (2)", is not disclosed by the content of the application as filed, since neither the description nor the drawings nor the claims originally filed mention, show or suggest that the apparatus could include a portable object containing these processing circuits and this memory. ...

2.2 The appellants have also cited in support of their argument the abstract filed together with the original application according to which the portable object (1) and the electronic device (1bis) were both "credit cards". As 2.1 above implies, that is not at all the same as saying that the electronic device (1bis) had to be portable. Be that as it may, Article 85 EPC provides that "the abstract shall merely serve for use as technical information; it may not be taken into account for any other purpose, in particular not for the purpose of interpreting the scope of the protection sought ...". As Rule 33(5) EPC states, "the abstract shall be so drafted that it constitutes an efficient instrument for purposes of searching in the particular technical field particularly by making it possible to assess whether there is a need for consulting the European patent application itself". Contrary to what the appellants maintain, it cannot therefore be deduced from the expression "for use as technical information" used in Article 85 EPC and from the passage in Rule 33(2) "allows the clear understanding of the technical problem, the gist of the solution of that problem ..." that the abstract could be used to interpret the content of the application for the purposes of Article 123(2) EPC. Moreover, while the abstract is indeed a mandatory feature of the European patent application under Article 78(1) EPC, it is not indispensable for according a date of filing to the application (Article 80 EPC) and its omission in the documents filed merely constitutes a deficiency which can be corrected in accordance with Article 91(1)(c) and (2) and Rule 41(1) EPC. The abstract is therefore intended solely for documentation purposes and does not form part of the disclosure of the invention. The Board is of the opinion that no other interpretation of Article 85 EPC is possible, an opinion unanimously confirmed by the relevant literature (see in particular "Patentgesetz" by Dr Rainer Schulte, published by Carl Heymanns, Cologne 1981, third edition, page 327; IV, Rechtliche Bedeutung, 2. Offenbarung, and also "Kommentierung des Europäischen Patentübereinkommens" Art. 82-86, published by Carl Heymanns, Cologne, Berlin, Bonn, Munich, page 14 and "Le droit européen des brevets d'invention" by P. Mathély, Librairie du journal des notaires et des avocats, Paris, pages 234 and 235).

2.3 From the foregoing it follows that the subject-matter of the European patent extends beyond the content of the application as filed (Articles 100(c) and 123(2) EPC), that consequently the appellants' main request must be refused and that it is therefore not necessary to examine the appellants' other arguments or the other grounds for opposition put forward by the respondents.

3. Subsidiary request: ...

ORDER

For these reasons, it is decided that:

the appeal is rejected.