Care should be taken when using the phrase “useful for” when drafting claims in light of decision T 1170/16 of the EPO Board of Appeal. European Patent EP1621167 had previously been found by the Opposition Division to be allowable in an amended form. The Opponent appealed against this decision, and the subsequent hearing took place on 1 September 2020.
The patent in question related to a process for producing absorbent sandwich structures for use in disposable diapers. The crux of the Board of Appeal’s decision concerned Article 84 EPC, which requires that the claims shall define the protection which is sought, be clear and concise and be supported by the description.
Claim 1 of the patent contained the following phrase, introduced via the amendments filed during the proceedings before the Opposition Division: “wherein the sandwich structure is a liquid absorbent structure useful for absorbent articles”. The Board of Appeal found that this phrase introduced a lack of clarity, because the claim failed to provide any elucidation of how the liquid absorbent structure is ‘useful for’ absorbent articles. Moreover, because the claims must be clear in their own right, it was not permissible to refer to the description to try to resolve this lack of clarity.
In particular, the Board held that the expression “useful for” implies an element of value in relation to the features that it links, i.e. a beneficial suitability of one feature to the other, and that claim 1 failed to define what said benefit was. The Board rejected the patent proprietor’s argument that “useful for” is effectively synonymous with “suitable for”, since the latter merely indicates a suitability, rather than benefit, for a particular purpose.
The patent proprietor argued that the context for “useful for” (as disclosed in the description) was not lost in the claims, given that the sandwich structure, which provides the benefit to absorbent articles, was recited in claim 1. However, the Board did not agree and stated that the inclusion of “useful for” must introduce some form of further limitation, yet what this limitation is, is not clear.
Consequently, the Board found that claim 1 lacked clarity and was therefore not allowable. The patent proprietor had also filed 2 auxiliary requests, however these were not admitted as they had been filed late and should have been submitted earlier.
Therefore, caution should be exercised when using “useful for” in claim drafting. On the basis of this decision, “suitable for” or simply “for” is the preferred language where it is necessary to specify the intended use of an article. Furthermore, if “useful for” is included in the claim, care should be taken to ensure that the benefit imparted is defined in the claim such that it would be clear to the skilled person in what way is it “useful”.
The full decision can be found here.