|European Case Law Identifier:||ECLI:EP:BA:1993:J003489.19931210|
|Date of decision:||10 December 1993|
|Case number:||J 0034/89|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||Arrangement of an A-type mast on a sailing boat|
|Applicant name:||Atkinson Christopher et al|
|Relevant legal provisions:||
|Keywords:||Claims - number incurring fees
Claims - abandonment
Summary of Facts and Submissions
I. European patent application 87 310 780.9 was filed on 08.12.87 and published on 13.07.88 (Bulletin 88/28).
II. The descriptive part of the application as published contains a section headed "PREFERRED ASPECTS OF THE INVENTION ARE DEFINED AS FOLLOWS:" (col. 9, line 15 to col. 12, line 50). In this section 36 different "aspects" in all are numbered separately.
III. In a decision dated 12.02.89 the Receiving Section found the above mentioned "aspects" to constitute 36 patent claims and declared them to be abandoned, on the ground that the corresponding claim fees had not been paid.
IV. The decision of 12.02.89 has been duly appealed. The Appellant requests that the Decision be cancelled and the abandoned matter be restored.
V. In his submissions, the Appellant argues mainly as follows: The preferred aspects are not claims and are therefore not to be included in the search. It is expressly noted in the patent application that the applicant has refrained from claiming these aspects to be included in the scope of protection. Consequently, no claims fees are due.
Reasons for the Decision
1. The appeal is admissible.
2. In several recent decisions (J 15/88, dated 20.07.1989, J 16/88, dated 18.08.1989, and J 29/89, dated 18.10.1989), the Legal Board of Appeal has decided that such parts of the description of a patent application as are headed "preferred aspects", "preferred features of the invention" or some similar phrase, are not to be considered as patent claims, unless the applicant has shown his intention to have them included in the scope of protection of the patent.
In so finding, the Board noted that there was no conflict with the decision J 05/87, 0J 1987, p. 295, "Number of claims incurring fees/PHILLIPS", in which case it had been the stated intention of the applicant to have the aspects
in question treated as patent claims.
3. The further reasoning in J 29/88 (paras 3-8) can be applied mutatis mutandis to the case at hand. Thus, in summary, the presence of what are unquestionably claims in a section headed "CLAIMS", as well as the express reference in column 12, lines 36-50, preceding that section to the applicant's restricting the claimed scope of protection "in accordance with the following claims" indicate that the intention of the applicant was to have the section of the description headed "PREFERRED ASPECTS ..." regarded as part of the description only and not as claims.
4. Consequently, the Board holds that the section headed "PREFERRED ASPECTS ..." is not to be treated as abandoned, but is and always has been a part of the description.
For these reasons it is decided that
1. The decision under appeal is set aside.
2. It is declared that the section of the text of patent application 87 310 780.9 headed "PREFERRED ASPECTS OF THE INVENTION ARE DEFINED AS FOLLOWS:
", col. 9, line 15 to col. 12, line 50, is and always has been part of the description.