Title: EPO Decision T 0566/20: Revocation of Vision Measuring Device Patent Over Added Subject-Matter and Procedural Issues

Introduction

In decision T 0566/20, the European Patent Office (EPO) Board of Appeal revoked the patent for a vision measuring device, focusing on added subject-matter (Article 100(c) EPC) and procedural compliance regarding the admittance of auxiliary requests (Articles 12(6) and 13(2) RPBA). The Board determined that the patent contained claims that extended beyond the original application and ruled against the admittance of several auxiliary requests due to procedural shortcomings by the patentee.

Summary of the Invention

The patent in question, European Patent No. 2490438, titled "Vision Measuring Device," involves a sophisticated system designed to enhance measurement precision using advanced imaging technology. The main components of this invention include:

1. Imaging Device: Captures images of a measurement target.
2. Position Control Device: Manages the focus position of the imaging device and records positional data.
3. Vision Measuring System: Utilizes image and positional data to perform measurements and control focusing automatically.

The device is innovative in its integration of serial number information with image and positional data, which enhances measurement accuracy and system functionality.

Summary of the Board of Appeal Decision

Arguments by the Opponent (

Carl Zeiss Industrielle Messtechnik GmbH)

Added Subject-Matter (Article 100(c) EPC): The opponent argued that the patent contained subject-matter extending beyond the original application, which violates Article 100(c) EPC.

Non-Admittance of Auxiliary Requests: The opponent contended that the auxiliary requests were inadmissible because they should have been presented during the first-instance proceedings.

Arguments by the Patentee

(Mitutoyo Corporation)

1. Defense Against Added Subject-Matter: The patentee maintained that the claims as granted did not extend beyond the content of the original application.
2. Admittance of Auxiliary Requests: The patentee argued that the auxiliary requests were a legitimate response to new arguments raised in the appeal and should be considered.

Board’s Decision

1. Added Subject-Matter (Article 100(c) EPC): The Board concluded that claim 1 of the granted patent extended beyond the content of the original application. The interpretation that the position control device could output serial number information was not supported by the initial disclosure.
2. Non-Admittance of Auxiliary Requests (Article 12(6) RPBA): The Board decided that auxiliary requests 1, 3a, 3b, 4a, and 4b should not be admitted since they were not submitted during the first-instance proceedings. Additionally, auxiliary requests 5 and 6 were found to contain added subject-matter, violating Article 123(2) EPC.
3. Late Amendments (Article 13(2) RPBA): Auxiliary request 7, filed during the oral proceedings, was not admitted due to the lack of exceptional circumstances and potential for new objections.

Conclusion

The Board's decision emphasizes the importance of ensuring that claims are tightly aligned with the original application to avoid issues of added subject-matter. It also underscores the necessity for timely submission of auxiliary requests and addressing objections promptly during first-instance proceedings.

Lessons Learned

1. Strict Adherence to Original Disclosure: All claims must be directly and unambiguously supported by the original application to prevent challenges under Article 100(c) EPC.
2. Timely Submission of Requests: All potential auxiliary requests should be submitted during the first-instance proceedings to avoid inadmissibility during appeal.
3. Preparation for Appeal: Clear and precise claim drafting is crucial, and patent proprietors must be prepared for the Board to interpret claims independently.

The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case T 0566/20 are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.

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