T 2257/19 18-04-2023

1. The invention as described

1.1 The aim of the present invention is to provide a security element, particularly for banknotes, security cards and the like, having magnetic elements in which the magnetic difference of the regions (magnetic codes) cannot be detected by normal instruments, but exclusively by means of dedicated sensors. However, the magnetic codes have to be reliable, relatively simple to be provided and suitable to be detected with devices whose feed rate is up to at least 50 banknotes per second.

1.2 This is achieved by a magnetic code which is complex enough that only someone who knows the basic principle - and the location of the coded areas - can detect the content of the magnetic code. A first code related to the low coercivity bits (4) and a second code related to the high coercivity bits (3) is provided in the security element. Superimposed areas with low (4) and high (3) coercivity values provide a third code:

FORMULA/TABLE/GRAPHICimpugned patent

2. Main Request - Articles 123(2)/100(c) and 123 (3) EPC

2.1 Feature (H).

2.1.1 The appellant held that feature (H) ("at least some of said magnetic areas (3, 4) with low and high coercivity value being deposited so as to be superimposed one over another and onto said first substrate (2)") was not disclosed in the underlying original patent application, because the option "magnetic areas with low coercivity value positioned so as to be at least partially superimposed on magnetic areas with a high coercivity value" was not disclosed in the originally filed documents. Original claim 11 only disclosed the opposite arrangement (magnetic areas with high coercivity value superimposed on magnetic areas with low coercivity value). The original description, page 7, lines 2 to 8, also provided basis only for the option defined in original claim 11. Original claim 6 did not provide basis that layers with high and low coercivity value can be superimposed in any order. This claim only referred to any magnetic layer without referring to layers with high/low coercivity value.

2.1.2 The respondent argued that in view of substrate 5 being equivalent to substrate 2 and the fact that a banknote could be rotated by 180° the order from the bottom to the top and from the top to the bottom could be considered equivalent therefore rendering the scope of protection of original claim 11 equivalent to the option "low coercivity superimposing high coercivity".

2.1.3 The board agrees with the appellant's argumentation and notes in particular that by the nomenclature both in the description (see, e.g., page 5, line 18) and in the claims as well as in Figure 5 ("first substrate or first supporting layer 2"), layer 5 being referred to as "second supporting layer/substrate" (see, e.g., page 7, line 17) a certain order of the layers in the banknote - also with regard to the method of producing the security element - is established and therefore the hypothetical case of the banknote being turned by 180° cannot be used to remedy the violation of Article 123(2) EPC.

2.2 Feature (G)

2.2.1 The appellant held that this feature was allegedly based on the originally filed description, page 9, lines 3 to 5 ("Therefore, magnetic areas 3, 4, for example 2 mm long, spaced by spaces 10 without magnetic material for a length of for example 4 mm, are thus deposited between one text and the other"). However, by removing this feature from the specific context of the corresponding very complex and specific embodiment and by placing it in the context of the originally claimed features (A) to (F) together with the new feature (H), new subject-matter was created.

2.3 Feature (C) in combination with feature (D) required that both the high coercivity (3) and the low coercivity (4) magnetic areas were deposited on the substrate (2). At the same time, however, feature (H) required that the high coercivity (3) and the low coercivity magnetic areas (4) were superimposed as shown in the second, fifth, seventh and eighth positions from the left in Figure 5.

FORMULA/TABLE/GRAPHICimpugned patent

2.4 Therefore, feature (C) had to be interpreted broadly to the extent that, in the case of superimposed layers, the layer package (combination of layers 3 and 4) was deposited on the substrate or that the layers were not deposited directly on the substrate. The latter was also not explicitly required by the wording of the claim.

2.5 The newly added feature (G) had to be read in the context of features (C) and (H). Layers 3 and 4 were deposited (in the "horizontal plane") on a substrate, but partially arranged on top of each other as a layer package (3, 4). Feature (G) now required that all magnetic areas 3 and 4 were separated by non magnetic material. This meant that areas 3 and 4, if deposited individually, had to be separated from each other, but also that areas 3 and 4, if deposited on top of each other (feature (H)), had each to be separated from each other, namely by non-magnetic material.

2.6 Thus, the separation had to be compulsory in the horizontal as well as in the vertical direction. However, such a vertical separation was nowhere disclosed in the originally filed application.

2.7 Patentee argued that such vertical separation was indeed not disclosed anywhere in the application, and in particular was not shown in the figures. The person skilled in the art would therefore never consider this option. It would make no technical sense, either, as the desired technical effect and the coupled effect of layers 3 and 4 would be lost.

2.8 The appellant argued further that the question of technical meaning did not arise. Article 123(2) EPC was solely about an interpretation of the claim wording. Apart from that, a separation of superimposed magnetic layers was quite common (cf. GMR or TMR sensors). It was also common practice to separate differently designed layers at least by a very thin layer. Separation of the superimposed layers 3 and 4 was therefore quite possible and even made sense, and could possibly even have further advantages.

2.9 It was further argued that removing the requirement of a vertical separation would broaden the scope of claim 1 in violation of Article 123(3) EPC. On the other hand it appeared impossible to heal the violation of Article 123(2) EPC in view of the original disclosure of the patent application underlying the impugned patent. In particular, it was not directly and unambiguously disclosed in the application in the context of only features (A) to (F) that separation of the magnetic areas could only mean separation in the "horizontal direction", although feature (G) in combination with feature (H) required separation in any possible direction, in particular the "vertical direction". Consequently, there was a typical "Article 123(2)/(3) EPC trap" situation from which there was no way out.

2.10 The patentee considered that the argument that there was an "Article 123(2)/(3) EPC trap" situation was new and had not been raised in any of the opponents' submissions. In particular, it was only argued that feature (G) could be interpreted as requiring a horizontal or a vertical separation, but that this could lead to a trap situation was not argued in any of the submissions.

2.11 The board agrees with the arguments of the appellant. The appellant's argument does not constitute a new legal ground as it still concerns a violation of Article 123(2) EPC. Only - through the discussions during the oral proceedings - the consequences of this infringement proved to be those of a trap situation. The patent proprietor still has the theoretical possibility of reacting to this with new requests. However, it seems - as is inherent in an "Article 123(2)/(3) trap" situation - that there is no way out of this predicament.

2.12 Therefore, the subject-matter of claim 1 of the main request does not comply with the requirements of Articles 123(2) EPC, so that the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent as granted.

3. Auxiliary requests 1 to 4 - Article 123(2) EPC

The same reasoning applies for these requests. This was not contested by the patentee. Therefore, the subject-matter of respective claim 1 of auxiliary requests 1 to 4 does not comply with the requirements of Article 123(2) EPC, either.

4. Auxiliary requests 4A to 4C - Admission (Articles 13(2) and (1) RPBA 2020)

4.1 By filing auxiliary requests 4A to 4C the respondent attempted to overcome the "Article 123(2)/(3) EPC trap" situation by better defining the horizontal separation of the magnetic areas and excluding vertical separation of the magnetic areas. However, as usual with an "Article 123(2)/(3) EPC trap", the exclusion of vertical separation would lead to a violation of Article 123(3) EPC, as this would broaden the scope of protection granted. On the other hand, healing of the violation of Article 123(2) EPC is impossible as the original application documents do not provide a sufficient basis for the presence of a vertical separation. The elimination of feature (G) (and (H)) as a whole would be all the more contrary to the requirements of Article 123(3) EPC.

4.2 Consequently, prima facie none of the auxiliary requests 4A to 4C can overcome the objections under Articles 123(2) and (3) EPC, irrespective of the discussion whether there are exceptional circumstances that would justify filing the new requests at this very last stage of the procedure.

4.3 An inescapable trap (Article 123(2) and (3) EPC) intrinsically precludes the admission of new requests under Articles 13(1) and (2) RPBA 2020, as the requirements of Article 123(2) and (3) EPC cannot both be satisfied.

4.4 Consequently, auxiliary requests 4A to 4C are not admitted into the proceedings under Articles 13 (2) and (1) RPBA 2020 because they prima facie cannot overcome the objections under Article 123(2) EPC without infringing the requirements of Article 123(3) EPC.

5. Summary

The subject-matter of claim 1 of the main request (patent as granted) and of respective claim 1 of auxiliary requests 1 to 4 does not fulfil the requirements of Articles 123(2) EPC. Auxiliary requests 4A to 4C are not admitted into the proceedings under Article 13(2) and (1) RPBA 2020. Consequently, the patent has to be revoked.