Wednesday, 17 April 2019

T 0725/14 - Valid transfer of rights results in invalid priority claim


If during the priority year a European patent application - filed by applicant A - is transferred to a party B, is then the priority claim from a subsequent application (from which the patent in suit matured) by applicant A to the earlier application valid? Which acts and statements, including their timing, constitute the transfer of a priority right between parties? And what role do the parties' intentions - as far as they can be derived from the documents on file - play in this?

In the present opposition appeal case, the Opposition Decision had decided that the claimed subject matter (partially) enjoyed priority from published application EP 1834951A [D1], and that D1 was thus not novelty-destroying for the patent in suit. The patent was maintained on the basis of the then pending main request.

In its Grounds of Appeal, the opponent-appellant argued, relying on the declaration of assignment between A and B (both based in The Netherlands) of the priority application signed two weeks before filing of the subsequent application, that the right to claim priority from D1 belonged to B as successor in title, rather than to A. Emphasis was placed on the specific wording "declares to have assigned all rights pertaining to the European patent application" in the declaration of assignment, suggesting that this includes the right to claim priority from the specified European patent application.

The patentee essentially counter-argued that (i) since the actual recordal at the EPO of the assignment took only place long after the filing of the subsequent application, the transfer was only then effective, and (ii) in accordance with the "Haviltex" decision of the Dutch supreme court, the intention of parties - to merely transfer the right to the patent application, not the right to priority - should prevail. He further requested referral to the Enlarged Board of Appeal of questions regarding whether a priority right can retain both with the original applicant and be transferred to the assignee ("inclusive or") and requested correction under Rule 139 EPC of the applicant's name.

The Board (enlarged by a technically qualified and a legally qualified member) found that the declaration of assignment between A and B was clearly drawn up to bring about an assignment of rights as well as to serve the purpose to provide proof of what had been agreed between the contracting parties, A and B, i.e. of the legal basis for the assignment. Thus, the requirements of a formal delivery grounded on a valid legal basis had been met, and the document was sufficient to execute the assignment under the law of the Netherlands of the priority right, which is one of the rights pertaining to the patent application. The Board saw no basis to assume that under the law of the Netherlands the wording "all rights" would not be sufficient for this purpose and that the assignment would require explicitly mentioning the right to priority. Furthermore, although the Board accepted that under the law of the Netherlands, in particular according to the "Haviltex" principle, the intentions of the parties are relevant or even decisive for the interpretation of an agreement, in the present case the patentee did not prove such contradictory intentions, notably by using the explicit "all rights" wording rather than mentioning the priority right in any way.

The Board saw no reason to refer questions to the Enlarged Board nor to allow a correction under Rule 139 of the applicant's name. Consequently, the priority claim of the patent in suit to D1 was considered invalid, and all admissible requests were considered to lack novelty over D1.

Tuesday, 9 April 2019

G 3/19 - Patentability of plants exclusively obtained by essentially biological processes: the referral


The full text of the referral by the President to the Enlarged Board of Appeal relating to the patentability of plants exclusively obtained by essentially biological processes is available online. Also see our earlier posts (w.r.t annoucemcentearlier annoucement T 1063/18 and first news message)). The accompanying letter is dated 4.04.2019 and was received in the BoA Office on 08.04.2019.


Under Article 112(1)(b) EPC the President of the European Patent Office refers the following points of law to the Enlarged Board of Appeal:

1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?

2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant
to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

J 4/18 - Dutch and French natural persons as co-applicants entitled to language-based fee reduction


Since Rule 6 EPC was amended per 1 April 2014 by limiting the possible fee reduction to the filing and examination fee and by inserting 3 new paragraphs, 4-7, the possible fee reduction when filing an EP application or a request for examination in an admissible non-EPO language is limited to certain categories of applicants, namely small and medium-sized enterprises, natural persons or non-profit organisations, universities or public research organisation. In case of multiple applicants, each applicant shall be an entity or a natural person of those categories. So, if a Dutch natural person and a large Dutch billion-euro firm together file an EP application in Dutch, they are not entitled to a 30% reduction in the filing fee; however, if two Dutch natural persons together file an EP application in Dutch, they are entitled to such 30% reduction. But what if a Dutch natural person and a French natural person together file an EP application in Dutch? Such a situation was addressed in a list of frequently asked questions intended to provide additional information for users, publisned by the EPO at the time of entry into force of the current (amended) Rule 6 and still available. The current decision decided however differently than what the FAQ provides for. 

Sunday, 7 April 2019

News: President referred questions to the Enlarged Board on patentability of plants exclusively obtained by essentially biological processes


Following his earlier annoucement, the President has submitted questions too the Enlarged Board of Appeal which relate to the patentability of plants exclusively obtained by essentially biological processes and to decision T 1063/18 (also here). According to a news meesage from the EPO posted last Friday, the President of the EPO seeks the Enlarged Board of Appeal to clarify the applicable legal framework.
The full text of the referral is not yet available. It will be interesting to see which clarifiation the Preseident seems to be required as one may argue that T 1063/18 has already given the answer, as that decision analyzed whether conclusion from G 2/12 needed any adaptations after the introduction of Rule 28(2) EPC subsequent to a notice from the EU Commission (no). Also, the news message below does not mention any conflicting decision, which is needed for the referral to be admissable under article Art.112(1)(b) EPC. (However, also with an inadmissible referral, the Enlarged Board may give a clarification as it did in the software decision G 3/08). So, the full text will be highly interesting, we will keep you posted!

Sunday, 31 March 2019

News: President will ask Enlarged Board for opinion on patentability of plants exclusively obtained by essentially biological processes


In the latest meeting of the Administrative Council, the President expressed his view that referral of the case to the Enlarged Board of Appeal is justified and necessary, in view of the legal uncertainty caused by decision T 1063/18 (also here). 

T 437/14 (Minutes of oral proceedings) - Disclaimer decision following the decision on its referral (G 1/16)


In this case, the Board referred questions to the Enlarged Board about the applicability of the gold standard disclosure test as defined in decision G 2/10 to undisclosed disclaimers (no), and the applicability of criteria as defined in decisions G 1/03 and G 2/03 (yes). The Enlarged Board handled the case as G 1/16 and answered that "For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03. The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons." The referring Board has no issued the Minutes of the subequent oral proceedings before it.

Tuesday, 26 March 2019

T 0403/18 - Ad hoc move of oral proceedings from Haar to Munich

https://pixabay.com/nl/users/fotoart-treu-796002/

As reported earlier on this blog, the Enlarged Board of Appeal will have to decide whether or not the Boards of Appeal may properly summon parties to oral proceedings at their premises in Haar.

Alluding to this pending referral, in the present case T 0403/18 one of the parties present at an oral hearing in Haar requested that this hearing be held in Munich. As can be inferred from the minutes of this hearing (the written decision has not been published yet), with agreement of all parties the oral proceedings were indeed relocated to the former home of the Boards of Appeal in Munich, i.e. the Isar building at the Bob-van-Benthem-Platz:
"At the beginning of the oral proceedings at 09:00 hrs in the premises of Haar, the respondents relied on decision T 0831/17 of 25 February 2019 referring a question of law regarding the proper venue of oral proceedings and requested that the oral proceedings in case T 0403/18 be held in Munich. The matter was discussed with the parties. With the agreement of all parties the oral proceedings were postponed to take place in Room 111 in the EPO venue of oral proceedings and requested that the oral proceedings in case T 0403/18 be held in Munich. The matter was discussed with the parties. With the agreement of all parties the oral proceedings were postponed to take place in Room 111 in the EPO's building at Bob-van-Benthem-Platz 1 (formerly Erhardtstrasse 27) in Munich starting at 13:00 hrs on the same date."
It will be interesting to see whether pending the referral to the Enlarged Board more Boards (possibly as a precautionary measure) will adopt the same approach.

Statcounter