T 3000/19 - Use of video retrieved from the internet as prior-art

The grounds for refusal of the decision under appeal are based on lack of inventive step when taking as starting point documents D4 and D5. The prior-art evidence cited by the examining division as "document D4" refers to a video titled "Mac OS X Leopard Overview : Mac OS X Leopard Dictionary", retrieved from the YouTube website and, at the same time, a document including a screenshot of a web browser visiting that YouTube website. The video of D4 was cited for the first time in the examining division's communication of 24 January 2018, which provided the URL for accessing the video on the internet. The document with the screenshot also shows YouTube information about the video, including the publication date of 9 July 2008 used by the examining division. It does not show any other information relevant to the case. The Board discussed Internet disclosure as prior-art evidence, Use of electronic evidence in proceedings and Use of online video evidence in the EPO. The Board considered the procedure in accordance with the Guidelines for Examination, B-X, 11.6 to be insufficient for preserving video evidence and guaranteeing its accessibility over time as needed for EPO proceedings or for further judicial proceedings before the boards of appeal of the EPO or national courts (Article 131(1) EPC). The Board concluded to be not in a position to make its own assessment of the relevant evidence in its original presentation in an objective and independent manner. In view of this, the Board concludes that the decision under appeal is not sufficiently reasoned and violates Rule 111(2) EPC. This constitutes a substantial procedural violation. The measures recommended by the Guidelines for Examination of November 2018, B-X, 11.6, which were followed by the examining division, did not adequately preserve the relevant electronic evidence to guarantee accessibility over time.

Referral by T 1513/17 and T 2719/19 - Priority from an earlier application having different applicants for different states

In the present case (T 1517/17, consolidated with T 2719/19), the patent proprietor filed an appeal to the interlocutory decision of the opposition division revoking its patent. The application on which the patent was granted had originally been filed as an international application under the Patent Cooperation Treaty (the PCT application). It claims priority on the basis of the US provisional patent application (the priority application). The priority application was filed in the name of the two inventors H. Wang and Z. Zhong. The PCT application names the same two persons as inventors and as applicants with designation for the US only. It also names as applicants Alexion Pharmaceuticals, Inc. and the University of Western Ontario as applicants for all designated States except the US. The patent in suit names Alexion Pharmaceuticals, Inc. as patent proprietor and R.P. Rother, H. Wang and Z. Zhong as inventors.

The Board decided to refer the following questions to the Enlarged Board of Appeal:
I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?

II. If question I is answered in the affirmative [note: which seems likely, in view of it being a substantive requirement in Art.87(1) EPC]

Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC

in the case where

1) a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and

2) the PCT-application claims priority from an earlier patent application that designates party A as the applicant and

3) the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?
In reason 37, the Board also indicted that "a separate question relating to conflict of laws-rules to be applied to a transfer of the priority right is nonetheless not necessary because it is inherently contained in the questions posed and it will be addressed in the considerations of the EBA, as needed."

T 1989/18 - As a general rule, not required to bring the description in line with (amended) claims intended for grant

In the present case, the examining division found the set of amended claims of the main request to be allowable, but nevertheless it held that the amendments to the description adapted to those claims (submitted with the same letter) did not comply with the requirements of Article 84 EPC, in particular because they related to subject-matter which was broader than the subject-matter of independent claim 17 of the request, and refused the European patent application for that reason. The Board carefully assessed the applicability of Art. 84 EPC as well as of Rule 42(1)(c) and Rule 48(1)(c) EPC as possible legal basis requiring adaptation of the description, and concluded that such basis does not exist (except possible in the case of non-unity). The Board also argued why it distinguished from earlier decisions (some of whuch being cited in the Guidelines in support of such alleged requirement).

J 8/20 & J 9/20 - Inventor has to be a person with legal capacity

In the oral proceedings before the Legal Board of Appeal in the two DABUS cases earlier today, the Board decided that the appeal is dismissed and that the request for a referral to the Enlarged Board is refused.

The Board concludes that DABUS, an AI machine, cannot be considered an inventor in the meaning of the EPC, as the Board concluded that an inventor has to be a person with legal capacity.

Moving back from Haar?

Today, an EPO news message was published in the EPO website indicating that the President of the EPO and the President of the Boards of Appeal have proposed to the Administrative Council to relocate the Boards back from Haar to the city center, more specifically to Pschorr-Höfe 7 in Munich, owned by the EPO (Bayerstrasse area).

The news message reads:

Plan to relocate Boards of Appeal presented to EPO member states

14 December 2021

EPO President António Campinos and President of the Boards of Appeal Carl Josefsson have made a joint proposal today to the EPO's member states to relocate the Boards of Appeal from the Munich district of Haar to the city centre. A detailed proposal for the relocation of the Boards of Appeal will be presented for approval of the EPO member states by spring 2022.

Further information:

Joint declaration

 

• The Joint declaration reads [colour added]:

Joint Declaration

of the President of the European Patent Office and

of the President of the Boards of Appeal

on the re-location of the Boards of Appeal

CONSIDERING the decision of the Administrative Council of 30 June 2016 (CA/43/16 Rev.1) on a comprehensive reform of the structures, management and career scheme of the Boards of Appeal aiming at improving the organisational autonomy of the Boards of Appeal and the perception of independence in their activities;

CONSIDERING the decision of the Administrative Council of 30 June 2016 (CA/D 6/16) amending the Implementing Regulations to the European Patent Convention and establishing the rules governing the organisation and management of the Boards of Appeal and President of the Boards of Appeal;

CONSIDERING the decision of the Administrative Council of 30 June 2016 (CA/D 7/16) setting up a Boards of Appeal Committee and adopting its Regulations;

CONSIDERING the decision of the Administrative Council of 30 June 2016 (CA/43/16 rev. 1 – Part C) concerning the relocation of the Boards of Appeal in a separate building in Munich;

CONSIDERING the decision of the Administrative Council of 16 October 2016 (CA/82/16) to conclude a rental agreement for the new location of the Boards of Appeal in Haar;

CONSIDERING the Memorandum of Understanding between the President of the Office and the President of the Boards of Appeal on the organisational autonomy of the Boards of Appeal, signed on 29 June 2019;

WHEREAS the rental contract for the building in Haar was concluded in 2017, for the duration of 15 years, ending in 2032, and an additional contract concluded in 2019, for the duration of 84 months, ending in 2026;

WHEREAS the Office will introduce the New Ways of working (CA 77/21) in 2022 for a three-year pilot;

The President of the Boards of Appeal and the President of the Office jointly propose to the Administrative Council to re-locate the Boards of Appeal from Haar to the building Pschorr-Höfe 7 in Munich, owned by the EPO, as of 2025/2026.

Munich, 10 December 2021

António Campinos           Carl Josefsson

President of the Office     President of the Boards of Appeal

G 1/21 - OP by Vico - the full decision is out!

On 16 July 2021, a Press Communiqué was issued by Spokespersons of the Boards of Appeal of the European Patent Office on the decision of the Enlarged Board in G 1/21. The full reasoning of the decision was not yet issued at that time, but only the Order and some comments. E.g, in the press communique, the Enlarged Board of Appeal "limited the scope of its answer  by confining its order to oral proceedings that are held during a period of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises and moreover are conducted specifically before the Boards of Appeal. Accordingly, in its order the Enlarged Board did not address the question whether oral proceedings by videoconference may be held without the consent of the parties in the absence of a period of general emergency. Nor did the order address the question whether oral proceedings by videoconference may be held without the consent of the parties in examination or opposition proceedings before the EPO's departments of first instance." The full reasoning of the decision was expected to shed some light on the effect on the legality and conditions of oral proceedings by videoconference in first instance proceedings and in "normal times", when the pandemic is over.

The full decision was published today, 29 October 2021. 
In reason 32 of the decision, "Ihe Enlarged Board considers that the limitations currently inherent in the use of video technology can make it suboptimal as a format for oral proceedings, either objectively or in the perception of the participants, but normally not to such a degree that a party's right to be heard or right to fair proceedings is seriously impaired. If in an individual case these rights cannot be respected, it is of course the duty of the deciding body to take appropriate measures to remedy this."
In reason 45, the Enlarged Board indicates that "a hearing in person is the optimum format or, to use a term well known in the field of European patent law, it is the gold standard. It definitely fulfils the requirements of Article 113 EPC and Article 6 ECHR. It is also the format that the legislator had in mind when drafting Article 116 EPC. Therefore, in-person hearings should be the default option. Parties can only be denied this option for good reasons."
In reason 46, the Enlarged Board indicates that "[...] the holding of oral proceedings is seen as serving the interests of the parties. The vast majority of oral proceedings are held upon request by a party. It therefore makes sense that the choice of format for these oral proceedings can be made by the party who requested them and not by the board of appeal, especially as this concerns more than just an organisational matter. As stated earlier, the Enlarged Board holds that at this point in time videoconferences do not provide the same level of communication possibilities as in-person oral proceedings. A party may thus have good reasons to prefer in-person oral proceedings to a videoconference." (see reasons 47-50)

T 116/18 - Referral to the Enlarged Board on post-published evidence and plausibility of an effect relied on for inventive step (G 2/12)

 Today, T 116/18 was published on the Recent Decisions pages of the Boards of Appeal, referring the following questions to the EBA (as G 2/12):

The following questions are referred to the Enlarged Board of Appeal for decision.

If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having been filed after that date (post-published evidence):

1. Should an exception to the principle of free evaluation of evidence (see e.g. G 3/97, Reasons 5, and G 1/12, Reasons 31) be accepted in that post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on the post-published evidence?

2. If the answer is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have considered the effect plausible (ab initio plausibility)?

3. If the answer to the first question is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have seen no reason to consider the effect implausible (ab initio implausibility)?