Taking the measure of the prior art (T 1943/15)

A picture may speak a thousand words, but how many of those words are clear and unambiguous? In a recently published Board of Appeal decision (T 1943/15), the Board considered the circumstances under which a disclosure of a component's dimension may be derived solely from the patent drawings, either by eye or by measurement. 

What do patent drawings disclose?

As with any disclosure, the disclosure of a drawing used in a novelty attack should be clearly and unambiguously derivable. In order to assess whether a measurement in a drawing is clear and unambiguous, it is necessary to assess what technical teaching a skilled person could be said to derive from the drawing (T 204/83). Consequently, dimensions derived solely by measuring a patent drawing (and not complemented by the description) are not considered part of the disclosure of a patent.

What about relative measurements? Are these disclosed by a patent drawing? In a previous decision of the Boards of Appeal, the relative size of two components deduced solely from the drawings in a patent were not considered part of the patent's disclosure (T 1664/06). Several other decisions, based on different facts, have reached the opposite conclusion. In one decision, the relative thickness of two drawing components were considered disclosed, as the relative thickness of the components was identified in the specification as an essential component of the invention (T 748/91). Practical technical teaching could thus be said to be derivable from measurement of the drawings. In other decisions, the drawing in a patent were considered “quite” precise (T 1200/05) or akin to construction drawings (T 422/95). Measurement of the drawings could therefore again be said to confer practical teaching.

Of course, it is not always necessary to measure a drawing. It may also be possible to obtain information on the relative size of components just by looking closely at the drawing. The case law provides no general rules by which the disclosure of drawings deduced by eye should be assessed (T 204/83). This is instead determined on a case-by-case basis.

Measuring the threads

The patent in question (EP 2366075) in the most recent Board of Appeal decision on the issue of drawing measurements, related to oil extraction machinery. A novelty attack against the claims relied on dimensions derived from the drawings of the prior art. The granted claim related to a threaded connection between a first and second tube. The threads of the first tube increased in size towards the end of the tube, whilst the threads of the second tube correspondingly decreased in size towards the end of the tube. The relative max and min sizes of the threads on the two tubes were characterised as having a ratio of greater or equal to 0.2.

The Board of Appeal were satisfied that the lower limit of the range (0.2) could not be clearly and unambiguously derived merely by looking at the drawings of the prior art. Particularly, inferring by eye that one dimension was five times the size of a second dimension was said by the Board to verge on speculation. The Board contrasted the situation to one in which an open range was claimed (i.e. one dimension is greater than another). The Board acknowledged that it may sometimes be clear that one dimension is intended to be larger than another. However, this is different to determining the ratio of the dimensions, which would require mentally ascribing sizes to the dimensions. The skilled person would therefore have to measure the drawings of the prior art.

After reviewing the case law, the Board of Appeal (3.2.05) concluded that any patent drawing falling short of the standard of construction drawings could not considered part of the clear and unambiguous disclosure of the patent. Construction drawings, the Board reasoned, could generally be relied on to show dimensions and proportions of elements to scale. In the opinion of the Board, even patent drawings in the mechanical field could not be relied on to the same extent as construction drawings.

The drawings of the prior art in question were not considered by the Board to correspond to the standard of construction drawings. The Board was not even convinced that the drawings of the prior art were to scale. Multiple dimensions were also missing from the drawings which, in the Board’s opinion, meant that there was no way telling whether the figures actually showed the relevant part of the threads of the tubes. The claims were therefore found to be novel in view of the prior art.

Is this latest Board of Appeal decision in line with all those of the previous Boards? A 2007 decision cited by the Board itself considered a measurement from the drawings of a patent as prior art for the purposes of an inventive step attack. These drawings were considered "precise", but the quality of the drawings compared to construction drawings was not considered. However, as highlighted throughout the case law on this issue, establishing rules for assessing the disclosure of drawings is difficult. As a general principle however, relying on measurements from drawings either for basis or a novelty attack can be an uphill battle. A picture may speak a thousand words, but words are clearer. 
Taking the measure of the prior art (T 1943/15) Taking the measure of the prior art (T 1943/15) Reviewed by Rose Hughes on Monday, January 20, 2020 Rating: 5

1 comment:

  1. It is often said that the severity with which the EPO examines for compliance with Art 123(2) EPC is a consequence of the severity with which Art 54 docs are found NOT to prejudice novelty. But unwillingness to sustain Art 54(3) novelty attacks is a point of particular stress in the jurisprudence of the EPO, almost as high as the stress caused by excessive zeal in sustaining objections under Art 123(2) EPC. The question what constitutes the "disclosure" of a document is perhaps the hottest question of all, in the corpus of the law of patentability.

    So I wish to plead here for a refinement of the Gold Standard, to carry it forward into a Grand Unifying Theory (GUT) of what the disclosure of any given document includes, that fits with the gut feelings of the real life counterparts of the imaginary "skilled reader" deemed to be the addressee of the document. This is one way to keep patent law "real" and thereby nurture public confidence in the fairness and justice of the European patent system, balancing the rights of patent owners against the rights of those who have patents asserted against them.

    We already know the concepts of "plausible" and "implicit" and "seriously contemplate" and "mind willing to understand". It seems to me that the notional skilled person has only one reason to read a patent publication and that is to derive from it any useful technical teaching that can be found in the document. The reader ought then to be deemed to be "hungry" to find any such teaching, anywhere in the document. The reader is not a lay reader. Rather, the reader applies to the task of deriving teaching all the general knowledge in the field that is already known to the reader. That which such a reader seriously contemplates is, for me, coterminous with what that reader has already unambiguously "derived" from the document. Here, what does the reader "seriously contemplate" when assessing the disclosure of the drawings in this case, in the context of the entire document containing the drawings?

    You might say that I am straying into the area of what is obvious rather than what is disclosed but I don't think so. By now, we understand obviousness well enough to grasp the difference between it and a novelty-destroying disclosure.

    But I do hope the Boards will strive to keep the Gold Standard in line with the real world in which, for example, the AIA in the USA allows obviousness attacks using 54(3) art in order to prevent hopelessly complex thickets of overlapping patent rights held by a multiplicity of parties who all filed on overlapping subject matter on overlapping dates (a situation getting ever more common). Impenetrable thickets are not good for the long term health of the patent system. We need clear rules on patentability, accepted as pragmatic and fair by business people and investors in new technology. Impenetrable thickets might suit some users, but most will be turned off by them, and so will withdraw their support for the patent system.

    What do other readers think? Are you, like me, troubled by the severity with which the Boards currently interpret the Gold Standard?


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