EPO case-law Snap Track: Clarity in the patent claim
European patent applications are frequently rejected for lack of inventive step, often with reference to conflicting documents. However, an invention can also be considered non-inventive if there is a lack of clarity in the patent claim.
Such a case was recently decided with a patent application of SnapTrack, Inc.. It concerns an invention for mobile devices with an integrated circuit (IC) that can be set to a standby mode, the title is “A mobile apparatus comprising integrated circuit and method of powering down such circuit”. The aim is to reduce the standby current by minimising the leakage current. To achieve this, the IC includes sequential logic with defined states.
The EPO's Examining Division had rejected the Sequential logic/SNAPTRACK European patent application in October 2018 on the grounds that it was not inventive under Article 56 EPC and lacked clarity of the claims.
Clarity in the patent claim thanks to definition in the description?
Before the EPO Board of Appeal, this aspect came into focus. The terms "configuration sequence logic" and "function sequence logic" used in claim 1 of the main request were not standardised terms, the board of appeal found. There was therefore a lack of required clarity of the claims under Article 84 EPC.
The patent applicant disagreed. She argued that if a claim contains a previously unused term, that term does not necessarily have to be defined in the patent claim, but the claim can rely on a definition from the description.
An interesting argumentation, but unfortunately the board of appeal did not decide whether and to what extent this would be admissible. Because, according to the board of appeal, the description did not contain an unambiguous definition of the terms "configuration sequence logic" and "functional sequence logic" either.
Non-standardised terms - how to define?
The Board of Appeal explained its assessment in detail. In the definition of the term "configuration sequence logic" it remained unclear what information was "necessary" for the function of the input/output peripheral block.
This would depend on parameters and circumstances that should have been defined in the claims. In particular, necessity would depend on what "predefined functions" were provided and what was required for "resumption of operation". Also, what "within a predefined period of time" meant had not been defined, as well as the choices made by the skilled person depending on his or her desires or preferences, both of which may change over time.
The relevance around the term "functional consequence logic" was also not sufficiently defined in the board's view. The patent application states that "... "also consists of flip-flops, but its state is not relevant when the Input/Output peripheral block is not used...". Here it was not clear what it meant for a state to be "relevant", the board ruled. In the board's understanding this depends on undefined parameters and circumstances and on subjective and variable user preferences.
The applicant's appeal was therefore dismissed in its entirety (T 0890/19 (Sequential logic/SNAPTRACK) 19-06-2023). Claim 1 of the main request lacked clarity, either because of the use of indefinite and non-standard terminology in the claim, and the same applied to the explanations given in the description.
Patent drafting and patent claim
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