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Case Law of the Boards of Appeal

 
 
2.2.1 Conditions

In case T 56/01 each of the appellant's requests in the appeal stage contained three independent claims of the same category: one claim to a broadband communications module and two claims to a signal transport system. Hence, the board had to discuss compliance with R. 29(2) EPC 1973. The board concluded from the preparatory documents that condition (a), in spite of the distinction made between products and apparatus in the opening part of the Rule, also applied to apparatus claims. Nevertheless, the board did not consider that condition (a) was met by the two claims for the signal transport system because they were not interrelated. The board inferred from the examples in an early proposal to the Administrative Council for the amendment of R. 29(2) EPC 1973 that interrelated products were meant to be different objects that complement each other, or somehow work together. However, in the present case, the two different claims to the signal transport system were for essentially the same object. Moreover, the board defined the "alternative solutions" under R. 29(2)(c) EPC 1973 as different or even mutually exclusive possibilities. The claims at issue, however, related to one and the same solution with slightly different wording and level of detail. Moreover, even alternative solutions were only allowed under the condition that "it is not appropriate to cover these alternatives by a single claim". The board concluded from the preparatory documents that "not appropriate" meant "not possible or not practical". The intention was that, if it was possible to cover alternative solutions by a single claim, then the applicant should do so. In the case at issue, given the overlap and similarities in the features of the claims, the board held that it would have been entirely appropriate to cover the subject­matter of the signal transport system by a single independent claim with dependent claims as necessary.

In T 659/03 the board had to decide whether the two contentious independent claims in the same category were covered by the exception in R. 29(2)(c) EPC 1973. The board held, first of all, that the appellant's wish to protect the two alternative processes by two independent process claims was justified. It then confirmed that there were alternative solutions to a particular problem, since the independent claims each contained all the features required to solve the problem addressed. In T 525/03, the board found that there were alternative solutions and held that it would not appear appropriate to cover those alternative solutions in a single independent claim. Rather, attempting to redefine the subject-matter of these claims in a more generalising way in one independent claim might lead to an objection under Art. 123(2) EPC 1973. Such generalisation could furthermore be problematic for Art. 87 EPC 1973. In T 895/05 too the board found that the requirements of R. 29(2)(c) EPC 1973 were satisfied.

In T 671/06 the board found that a claim to a system comprising a power source specified in broad functional terms and a claim to a power source for the system specified in structural terms did not fall under the exception envisaged in R. 29(2)(a) EPC 1973. It could be deduced from the examples provided in the Guidelines that inter-related products were, on the one hand, products which, although existing independently from each other as stand alone products, only performed the distributed invention when interacting with each other (e.g. plug and socket, transmitter - receiver), and, on the other hand, chemical products which were derived from their predecessors (i.e. intermediate(s) and final chemical product, gene - gene construct - host - protein - medicament). In contrast, the system as claimed in claim 8 on the one hand and the power sources of claims 13 and 15 on the other hand (i.e. substitutes for part of this system) did not interact with each other, since the claimed system was completely self-contained in performing the invention. The clause "for a system according to claim 8" used in claims 13 and 15 meant "suitable for substitution in" rather than "suitable for interaction with". The board concluded that the term "inter-related products" in R. 29(2) EPC 1973 did not extend to a system which is self-contained in performing the invention (the system of claim 8) and a product which is a constitutive substituent part for the system (the power sources of claims 13 and 15).

The board did not follow T 133/02, which had held that a system claim and a means claim relating to a component of the system were directed to inter-related products, similar to a plug and a connection system combining the plug with an adapted socket. The board in T 671/06 argued that a claim directed to a connection system comprising the plug would be dependent on the claim to the plug, as it necessarily comprised all the features of the plug (R. 29(4) EPC 1973). However, R. 29(2) EPC 1973 was not intended to permit or prohibit claims which were permitted under R. 29(4) EPC 1973. The domain of application of these sub-rules should be kept separate.

Likewise in T 1232/07 the same board, discussing the exceptions laid down in R. 29(2) EPC 1973, highlighted that exception (a) referred only to interrelated products and not to some kind of interrelationship between the subject-matter of independent claims. Such products were, on the one hand, objects which although existing independently of each other as stand alone products only performed the distributed invention when interacting with each other (e.g. lock and key) and, on the other hand, chemical compounds derived from their precursors. Moreover, the board found that the contested claims were not permissible under exception (b), as point (b) referred to different uses of a product or apparatus and not to different uses of a concept as was argued by the appellant applicant.