Complete victory in a speedy decision at the EPO Board of Appeal

Krister Mindrebøe and Arild Tofting, who represented Aker Solutions, were heard by the EPO Board of Appeal (BoA) on the arguments that FMC Kongsberg Subsea’s patent on a trigger joint should be revoked.

The patent was declared invalid based on the fact that the claims defined the invention more generally than what the application as filed could support.

The patent (EP2863005) was granted by the EPO in 2015, based on a divisional application filed in 2010. Aker Solutions filed an opposition, and the patent was first revoked by the Opposition Division after oral proceedings. The reason for the revocation was the lack of novelty. FMC appealed this decision, and Thursday morning, 12th January, the oral proceedings at the BoA commenced. After hearing both parties on the first question, the Board concluded that the claims did go beyond the application as filed.

The decision builds on the relatively strict practice established by the EPO several years ago, which is often referred to as the “Gold Standard”. Accordingly, an invention must be directly and unambiguously derivable from the application as filed. The applicant may not add or remove features from the claims without direct and unambiguous support. It was the removal of features that was the case here.

Somewhat simplified, the patent was directed towards a safety system for disconnecting a riser from the seabed should the riser be subjected to excessive stress. In such a situation, a signal would be sent from a joint in the riser to a control unit that initiates a disconnect from the seabed. The parent application was, however, directed towards a particular type of joint having two pressure chambers, which would allow a certain extension of the joint. In the amended claims, these features were not present, and the joint was defined as a generic joint capable of measuring stress or extension. The BoA concluded that the application as filed did not support such a generalization and that the application did not describe a joint without the two pressure chambers.

As the patent was revoked on this basis, the BoA did not need to discuss our arguments regarding the lack of novelty and inventive steps.

This decision aligns with the EPO’s stricter practice compared to many other patent offices. It shows that great care must be taken when drafting an application that may contain more than one invention so that more general concepts will be sufficiently described.

The written decision will be published shortly as T2333/18.