Notes on R. 43 (2) EPC

by Michael M. Fischer (DE)

German and European Patent Attorney and Computer Scientist

Rule 43 (2) EPC stipulates that a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves (a) a plurality of interrelated products, (b) different uses of a product or apparatus, (c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.

1. Interrelated methods, apparatuses or uses

Regarding R. 43(2) (a) EPC, the Guidelines F -IV-3.2 explain:

"The following are examples of typical situations falling within the scope of the exceptions from the principle of one independent claim per category:

Examples of a plurality of interrelated products (Rule 43(2) (a))

  • plug and socket
  • transmitter - receiver
  • intermediate(s) and final chemical product
  • gene - gene construct - host - protein - medicament

For the purpose of Rule 43 (2)(a), the term "interrelated" is interpreted to mean "different objects that complement each other or work together". In addition, Rule 43(2) (a) can be interpreted as covering apparatus claims, since the term "products" is considered to include apparatuses. Likewise, it may include systems, sub-systems and sub-units of such systems, as long as these entities are interrelated. Interrelated methods claims may also fall under the exception of Rule 43(2) (a)."

Although not covered by the wording of R. 43 (2)(a) EPC, the Guidelines explain that interrelated method/process claims are also covered by R. 43 (2)(a) EPC. Analogously to the transmitter-receiver example above, one could think of a claim set containing "a method for encoding data" and "a method for decoding data". Hence, the Administrative Council should amend R. 43 (2)(a) EPC to "(a) a plurality of interrelated products or processes [methods]" or even more comprehensively to "(a) a plurality of interrelated products, processes [methods], apparatuses or uses".

2. "Method of manufacturing" and "Method of operating"

Another situation in which the EPO typically allows two method claims, although this situation is not covered by the exhaustive list ("only if") of exceptions of R. 43 (2) EPC, is the case in which the same inventive concept (Art. 82 EPC) comes into effect in a "method of manufacturing apparatus A, comprising the steps of..." and in a "method of operating apparatus A, comprising the steps of...". For example, the EPO typically allows a claim set containing

  1. A method of manufacturing semiconductor device A, comprising...
  2. A method of operating semiconductor device A, comprising...

According to the author of this article, this situation is not covered by the wording of R. 43 (2) (a) EPC (even if it referred to interrelated methods or processes) since according to the Guidelines the term "interrelated" is interpreted to mean "different objects that complement each other or work together". It should be mentioned that neither the Guidelines nor the case law of the Boards of Appeal deal with the situation above. However, the Boards of Appeal appear to construe the exception mentioned in R. 43 (2)(a) EPC quite narrowly, see T 671/07 and T 1232/07. Certainly the exceptions of R. 43 (2) (b) EPC and R. 43 (2) (c) EPC do not apply to the situation above. Hence, a fourth exception should be added to R. 43 (2) EPC or at least the situation above should be added to the Guidelines.

3. Computer-implemented inventions

The author of this article welcomes the clarification in the Guidelines under F IV-3.2 that four independent claims are allowable in the context of computer-implemented inventions.

  1. Method of operating a data-processing system comprising steps A, B, ...
  2. A data-processing apparatus/system comprising means for carrying out said method
  3. A computer program [product] adapted to perform said method
  4. A computer-readable storage medium/data carrier comprising said program.

However, it is not quite clear which of the three exceptions of R. 43 (2) EPC allows four independent claims in this case. Incidentally, the EPO recently confirmed the patentability of electrical signals in its decision T 533/09. The Technical Board of Appeal 3.4.01 held that under the EPC the notion of invention was not linked to "tangible" (in the sense of "material") subject-matter. Electrical signals, the intensity of which could be measured at any time, in fact fell within the definition of "physical entity". This decision is in line with the much earlier decision T 163/85 (Colour television signal/BBC) of 14 March 1989 which stated that a color television signal characterized by technical features of the system in which it occurred did not fall within the exclusions of Article 52(2)(d) EPC. Hence, we can add a claim such as:

  1. An electrical signal embodied on a carrier wave and propagated on an electrical medium, the electrical signal comprising the computer program of claim 3. Regarding the number of independent claims in computer-implemented inventions, please see also the examples given in the Guidelines F-IV 3.9.1 and 3.9.2.

4. 3D Printing

Many experts believe that the next industrial revolution will be based on 3D-Printing (sometimes referred to as "Additive Manufacturing") which enables the production of a three dimensional object from a digital file. Design files from which an object is printed can either be produced by the user, for example using CAD-type software, downloaded from an online source, or obtained from a 3D scanner. The technology enables copying and sharing of any printed products like the copying and sharing of music and film files in recent times. Hence, it seems to be advisable that the patent claims should include a claim covering the design file itself (i.e. usually called "a computer-readable medium" in Europe):

  1. A product, comprising...
  2. A method of manufacturing, comprising...
  3. A computer-readable medium having computer-executable instructions adapted to cause a 3D printer to print the product of claim 1.

Although the author of this article does not see any hindrance regarding the allowability of such a claim set in Europe, he is not aware of any European case law that would explicitly allow such a claim set. It would be helpful if the Guidelines or the Boards of Appeal provided some clarification in this regard in the near future.

5. Conclusion

Although it is common practice of the EPO, and also covered by the Guidelines, to allow several independent claims in cases which are not covered by the exhaustive list of exceptions of R. 43 (2) EPC, the Boards of Appeal seem to construe the term "interrelated" in R. 43 (2)(a) EPC quite narrowly in the sense of "complementing each other". Recent developments in 3D-Printing require creative approaches to claim drafting and represent a challenge to R. 43 (2) EPC and the Guidelines.

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