T 1621/16 - Multiple selections from lists of converging alternatives

In the present case, amendments were based on multiple selections from lists of converging alternatives (i.e. lists of options ranked from the least to the most preferred, wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list). The appellant (patentee) argued that these should not be considered to be equivalent to selections from lists of non-converging elements, and that these rather represented a restriction of the scope of protection and were allowable under Article 123(2) EPC. The opponent and the opposition division argued that amendments based on the selection of at least two intermediate options (i.e. different from the most preferred) from lists of converging alternatives infringed Article 123(2) EPC, and that lists of converging and non-converging alternatives had to be treated in a similar way, because the convergence could only be considered to provide a specific pointer to the most preferred options. The Board had to settle on the matter.

We normally discuss decisions of the Boards of Appeal on this blog, but every once in a while a first instance decision is worth discussing, as it is today.
On 20 December 2019, the EPO published a news message on the EPO website indicating that:
"The EPO has refused two European patent applications in which a machine was designated as inventor. Both patent applications indicate “DABUS” as inventor, which is described as “a type of connectionist artificial intelligence”. The applicant stated that they acquired the right to the European patent from the inventor by being its successor in title.
After hearing the arguments of the applicant in non-public oral proceedings on 25 November the EPO refused EP 18 275 163 and EP 18 275 174 on the grounds that they do not meet the requirement of the EPC that an inventor designated in the application has to be a human being, not a machine. A reasoned decision may be expected in January 2020."
The decision is now available including the full reasoning from the Receiving Section. An appeal may be expected in due course.

T 1491/14 - A medicament for patients who have ceased use of another medicament due to sleep problems

Sleepless nights

This opposition concerns a medicament whose novel feature is that it is prescribed to particular patients. Claim 1 of the main request reads:

1. A use of 1-[2-(2,4-dimethylphenylsulfanyl)phenyl] piperazine and pharmaceutically acceptable salts thereof in the manufacture of a medicament for the treatment of a disease selected from depression, anxiety, abuse or chronic pain, wherein said medicament is for use in a patient who has previously received another medication for the treatment of said disease which medication was ceased or reduced due to sleep or sexually related adverse events.

The board accepts this as a valid claim. It turned out to be novel but obvious to prescribe the medicament to a patient who has previously received another medication which medication was ceased due to sexually related adverse events, but after limiting the claim to sleep problems it was allowed.  

Breaking news - Decision in case T 844/18 on the CRISPR gene editing technology

Last week, oral proceedings took place in T 844/18 on the CRISPR gene editing technology and a decision was taken at the end of the oral proceedings. On Friday, the news message below was posted on the EPO website.

T 1711/16 - Prima facie (ir)relevance is not always relevant

The admittance of evidence into appeal proceedings is left to the discretionary powers of the Board of Appeal (Article 12(4) RPBA). It is established case law (cf. G 7/93) that Boards of Appeal should only overturn discretionary decisions of the department of first instance if it is concluded that the department of first instance exercised its discretion according to the wrong principles, or without taking into account the right principles or in an unreasonable way.

In the present appeal case, prior art documents D6 and D7 were submitted by the opponent in response to concerns regarding the nature of a certain additive "Disperbyk-111", as expressed by the Opposition Division in its preliminary opinion accompanying summons for oral proceedings. Documents D6 and D7 were filed within the final date for making submissions set in this communication. The Opposition Division considered D6 and D7 late filed and prima facie not constituting evidence regarding the nature of "Disperbyk-111"; accordingly, the Division did not admit D6 and D7 into the proceedings.

The Board however found that D6 and D7 were timely submitted by the opponent in a fair attempt to dispel doubts about the meaning of "Disperbyk-111" voiced by the Opposition Division. As such, the "prima facie relevance" (or lack thereof) in providing convincing evidence of the identity of "Disperbyk-111" was in this case irrelevant, as the decisive point is rather whether these documents and the submissions made in their respect deal with that issue and were timely submitted. Consequently, the decision of the first instance department not to admit D6 and D7 into the proceedings was overturned.

The Board did not admit the second to nineteenth auxiliary requests of the proprietor - already filed during first instance proceedings - to the proceedings for lack of proper substantiation.

An electronic debit order is a document filed with the EPO, so errors can be corrected

Payment of the appeal fee  in this case was not executed on the date the electronic debit order was received, because in the box for "method of payment", no method was indicated. The correct fee code had been entered, indicating that the appellant intended to pay the appeal fee, but the EPO only received the money via a separate payment after the 2m period for filing the notice of appeal had expired. This payment was accompanied by a request for correction under R. 139 of the submitted electronic debit order, to indicate that the method of payment was "from deposit account".

The notice of appeal was filed on time and contained a statement that the appeal fee was being paid from the deposit account using the attached electronic debit order. This statement was refused as a valid debit order because not in electronically processable format, but was accepted by the Board as evidence of the true intent, along with correctly indicated fee code in the incomplete debit order. 

The Board further remarked that the present case clearly falls under the principles established in G 1/12 for corrections in documents filed in appeal: the request was made without delay and the true intent was immediately apparent. Furthermore, no legitimate interests of the public in being able to rely on the information published by the EPO were affected in this case.

The correction was allowed and had retroactive effect, meaning that because on the date the incomplete debit order was received, the payer's deposit account had sufficient funds to cover the appeal fee, that date was considered the date of payment and the notice of appeal had thus been validly filed.

T 405/14 - Closest prior art does not need to be the closest

Which springboard(s) can be used?

In the present opposition appeal case, inventive step was challenged. A key element in the debate was whether the presence of a document D1 which would be closer to the claimed invention than a document D2 would require any inventive step objection to start from D1 as the closest prior art, or whether an attack starting from D2 as the closest prior art would also be admissible and allowable - as well as whether doing so would not only not be correct, but would -if applied by the Examining Division- account to  a substantial procedural violation. "Concerning inventive step, the appellant (applicant) argued that the skilled person would not consider D2 as closest prior art, since it did not disclose magneto-resistive speed-sensors or sensing elements relying on the Hall effect. This appeared all the more true under the present circumstances, considering that document D1 was available. D1 appeared to be a much more suitable starting point, since it addressed problems regarding the testing of speed sensors based on Hall effect or magneto resistive sensors, which was exactly the problem addressed by the claimed invention." The Board came to conclude, with reference to an earlier decision from this same Board, that "Experience teaches that a document which shares a common purpose with a claimed invention, as well as a large number of features, in order to solve the same or a similar problem, will not necessarily allow a convincing objection of obviousness to be raised against that invention, whereas said invention may indeed result, without hindsight, in an obvious manner from an apparently less promising item of prior art. In this respect, all items of prior art considered as starting points which allow the elaboration of a realistic attack under Article 56 EPC may be considered to qualify as "closest prior art", although this currently accepted terminology is somewhat misleading." One could understand this as that this Board seems to consider the term "closest" meaningless. The Board does, unfortunately, not discuss other case law that does give (or at least seems to give) a meaning to the term "closest", e.g., by using terminology such as "most promising" springboard (see e.g. Case Law Book (2019) I.D.3.1 "Determination of closest prior art in general",  3.2 "Same purpose or effect" and 3.4 "Most promising starting point"), nor does the Board comment on its deviations from the quite clear guidance in Guidelines G-VII, 5.1 (despite Article 20(2) RPBA 2007).