Tommy Grosskreutz May 3 2021 Opposition Division revokes plastic bottle patent Grünecker | Intellectual Property - European Union Tommy Grosskreutz Intellectual Property BackgroundFactsDecisionCommentEuropean Patent EP 2 933 201 B1, which related to bottles made of plastic, was recently revoked in its entirety for not complying with Article 76(1) of the European Patent Convention (EPC).BackgroundIn recent years, bottles – specifically those made from plastic – have become one of the most important and most used supply goods. Although they are easy to use and available worldwide, they have the disadvantages of being difficult to recycle and requiring certain amounts of plastic for production, thus resulting in an ecological footprint.To address the latter issue, the relevant industry has, in recent years, made efforts to reduce the weight of such bottles and their lids. This advantages both consumers, with respect to cost, and nature, as less plastic is used.Generally, plastic containers, such as bottles, comprise:a container body to hold all or most of the liquid product; anda neck portion, which comprises the opening of the container and further means (eg, threads and support flanges) for handling the plastic container during manufacture and providing a formation that, in connection with a suitable closure, reveals any tampering to the bottle.To reduce the weight of such containers, one reasonable approach is to reduce the weight of the neck portion. Therefore, in recent years the neck portions have become increasingly shorter, thereby reducing the weight of both the container itself and the closure.FactsAs this was a field of ongoing development, in 2008 Plastipak Packaging Inc, among others, filed a European patent application which pertained to a plastic blow-moulded container. The patent as granted (EP 2 933 201 B1) covered a plastic blow-moulded container whose neck portion was of a length of 14.732mm or less. The application for which this patent was granted was a divisional application of the European Patent application EP 2 167 385. The parent application had already been refused.This patent posed a significant threat to Plastipak's competitors regarding the further development and sale of bottles with necks with reduced weight. Therefore, various parties filed notices of opposition against this patent.DecisionIn the summons to attend oral proceedings, the Opposition Division gave its view on the case and indicated that none of the alleged grounds for opposition would succeed except for a minor issue under Article 76(1) of the EPC, which prohibits the introduction of subject matter in a divisional application that had not been originally disclosed in the parent application. This issue was initially also maintained by the Opposition Division during the oral hearing but was successfully addressed by the patentee.However, the parties which filed the opposition to the patent highlighted that when reasonably interpreting Independent Claim 1 as granted, such claim specified that the support flange (ie, the portion of the container that allowed for the handling of the container by grippers) did not have only upper and lower surfaces but further comprised threads. However, this had not been disclosed in the parent application. The parent application had solely disclosed that the threads would be provided as part of the neck portion.The Opposition Division preliminarily opined that this interpretation would not reasonably be considered by a skilled person. The Opposition Division stated that a skilled person would know that threads would never be provided as part of the support flange and that, irrespective of the literal formulation of the claim, the skilled person would not interpret it as such.However, the opposing parties claimed that this interpretation was the only reasonable interpretation of the subject matter claimed and that the wording of the claim was not open for interpretation in a way that would allow it to comply with the disclosure of the parent application (ie, the threads were at the neck portion).The parties which filed the opposition to the patent introduced prior art which revealed that the Opposition Division's preliminary view (ie, that threads would never be provided to a support flange of a container) was wrong. The prior art showed that threads had been provided as part of the support flange already, some decades ago.Confronted with this evidence, the Opposition Division found that the interpretation of the claim not only immediately followed from the wording of the claim itself but was also technically reasonable and would thus be assumed by a skilled person. Therefore, it found that what was claimed in Independent Claim 1 as granted did not fulfil the requirements of Article 76(1) of the EPC because the provision of the threads at the support flange had not been disclosed in the parent application.Further, as correcting this issue would have required the specification that the threads were provided at the neck portion of the container but not necessarily at the support flange (in contrast with Claim 1 as granted), the Opposition Division found that the objected feature could not be amended in a way that would not violate Article 123(3) of the EPC, which prohibits amendments to a granted patent that extend its scope of protection.As a result, the patent was revoked in its entirety.CommentThis case evidences the importance of ensuring that the claims of a divisional application are formulated such that they cannot be interpreted in a way that extends beyond what is originally disclosed in the parent application. Otherwise, such claims, if granted, can lead to what is known as the 'inescapable trap', where it is impossible to amend the patent in such a way that the objection can be overcome. Therefore, such situations regularly result in the full revocation of the patent.While the EPC and relevant case law do not require literal support for amendments made or for features to be literally disclosed in a parent application, where the Opposition Division even slightly doubts that an amendment or a feature is disclosed in the application itself – or in the corresponding parent application, in the case of divisional applications – this can lead to the full revocation of the patent. Considering the Boards of Appeal's recent decisions, it is unlikely that, once such a decision has been made by the Opposition Division, it will be set aside by the competent Board of Appeal.For further information on this topic please contact Tommy Grosskreutz at Grünecker by telephone (+49 89 21 23 50) or email ([email protected]). The Grünecker website can be accessed at grunecker.de.