Notes:

Technical Board of Appeal (TBA) Decisions are available on the EPO website at http://legal.european-patent-office.org/dg3/updates/index.htm and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from http://www.european-patent-office.org/dg3/g_dec/index.htm. A list of the matters pending before the Enlarged Board is included at http://www.european-patent-office.org/dg3/g_dec/pending.htm.

Recent notices and press releases of the EPO are published at http://www.european-patent-office.org/news/info/index.htm and http://www.european-patent-office.org/news/pressrel/index.htm respectively, and recent issues of the Official Journal can be downloaded from http://www.european-patent-office.org/epo/pubs/oj_index_e.htm.

 

Form And Content Of Claims (Rule 29 EPC)

T 0671/06: System and method for operating a hid lamp / Koninklijke Philips Electronics NV

TBA Decision of 2 August 2007

Chairman: R. O’Connell

Members: V. Frank and U. Tronser

This is a decision of the TBA in respect of an appeal from the Examining Division refusing the appellant’s application for non-compliance with Rule 29(2) which, except in specific situations, prevents patents from containing more than one independent claim. The application in question concerned a system for operating a high-intensity discharge (or ‘hid’) lamp. The application comprised three independent product claims, the first being for a system, and the latter two for specific power sources for a system according the first claim (see for e.g. the figure on the left). The latter two claims were not dependent on the first claim as the features of the first claim were not incorporated into the latter claims, and the structural features of the latter claims were not specified in the first claim. The application had been refused on the grounds that the three independent product claims did not fall within any of the exceptions of Rule 29(2).

In its appeal, the applicant argued that the claims concerned a plurality of inter-related products (Rule 29(2)(a)), as the power source was inter-related to a controller (and a lamp) in forming a system.

The TBA identified the principles for determining the meaning of an inter-related product as set out in the case law (e.g. T 56/01, where inter-related products were considered to be different objects that complement each other, or somehow work together) and C-III, 3.2 of the Guidelines for application of Rule 29(2)(a). The TBA concluded that products which could be considered to be inter-related fell into two categories. The first included products which, although existing independently from each other as stand-alone products, only performed the distributed invention when interacting with each other, for example a plug and socket or a transmitter-receiver. The second category was chemical products which are derived from their predecessors, for example intermediate and final chemical products or gene-gene construct-host-protein-medicament claims.

In the present case, the independent claims could not be said to fall within either category; the system as claimed in the first independent claim and the power sources in the latter two independent claims did not interact with each other as the system in the first claim was completely self-contained in performing the invention. The power sources were considered a constitutive substituent part of the system and could not therefore interact with it. The appeal was therefore dismissed and the case was remitted to the Examining Division for further prosecution on the basis of auxiliary claims containing only one independent product claim.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.