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

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.

Friday, 22 March 2019

T 0683/14 - Unsuccessful attemts to get reimbursement of the appeal fee

The appealed decision in this case concerns a refusal by the Examining Division to reimburse the appeal fee after it had allowed interlocutory revision under Art. 109(1). The initial refusal to grant the applicant's main request and auxiliary requests 1 - 3 hinged on whether a particular document (D2) was publicly available at the priority date. After oral proceedings, the Division concluded that D2 did constitute prior art. Auxiliary request 4 was held to be allowable and a Rule 71(3) communication was issued on this basis. The applicant refused the text intended for grant and submitted a claim set corresponding to an earlier request and a new document providing evidence that D2 was in fact disclosed under confidentiality.

The Division held that it could not take the new document into account because the submission was filed after the debate on this subject had been closed and a decision had been taken at the oral proceedings. The patent application was refused. D2 was taken into account when the applicant filed its appeal, where it also argued that the Division had been guilty of a substantial procedural violation by not considering it earlier.

The Board found that the Division had made mistakes. Firstly, the oral proceeding were not terminated with a formal decision that would have prevented the admittance of new submissions. Secondly, even when debate has been formally closed, although this normally terminates the possibility of new submissions, debate may be re-opened at the discretion of the Board [T 595/90], which should also apply to EPO departments of the first instance. The Division was therefore not prohibited from taking the new evidence into account. 

The procedural consequences of the Division's decision were the result of an erroneous substantive position, but no procedural violation had occurred that would merit reimbursement of the appeal fee under R. 103(1). This preliminary opinion was issued to the (now) patent proprietor, who then attempted to obtain a 50% refund of the appeal fee by withdrawing its appeal against the decision of the Examining Division, which had led to interlocutory revision. That appeal was never remitted to the Board, so could not possibly lead to any refund under R. 103(2). Both requests for reimbursement were refused.

Tuesday, 19 March 2019

T 47/18 - Admission of new objections which were not raised in the statement of grounds of appeal

The current Rules of Procedure of the Boards of Appeal, and in particular Art. 12 and 13 thereof, have been applied more and more strictly over the last few years. We cited some of those decisions every once in a while, and this is another of those decisions. With the new Rules of Procedure, expected to enter into force early 2020 (see here; and for the user consultation documents here and here), it will get even more strict. In the opposition case below, the opponent's statement of grounds of appeal contained neither an objection of lack of clarity of the (amended) claims under Art. 84 EPC nor an objection under Article 123(2) EPC. Rather, it contained only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections.  According to the established case law of the boards of appeal, new objections which were not raised in the statement of grounds of appeal, respectively in the reply to the grounds of appeal, are considered an amendment to a party's case.  Admission of such objections is at the discretion of the board pursuant to Article 13(1) and/or 13(3) RPBA. The Board discussed in detail why, in this case, the objections were not admitted into the proceedings. Together with the current state of the proceedings and the need for procedural economy, an important factor was that the appellant could have raised the objections in question at several instances in the first instance proceedings before the opposition division.

Friday, 15 March 2019

T 1680/17 - Basic research does not give expectation of success for clinical application

This opposition appeal provides a very interesting application of the problem-solution approach to a pharmaceutical formulation. Claim 1 according to the main request was as follows:
1. A pharmaceutical formulation for use in the treatment of breast cancer by intra-muscular injection, wherein the pharmaceutical formulation comprises fulvestrant, a pharmaceutically-acceptable alcohol being a mixture of 10 % weight of ethanol per volume of formulation and 10 % weight of benzyl alcohol per volume of formulation, and the formulation contains 15 % weight of benzyl benzoate per volume of formulation and a sufficient amount of a ricinoleate vehicle so as to prepare a formulation of at least 45 mgml**(-l)of fulvestrant, wherein the ricinoleate vehicle is castor oil, and wherein the total volume of the formulation is 6 ml or less.
Interestingly, the highlighted features were known from a document 4. The unusual formulation using a combination of castor oil, ethanol, benzyl benzoate and benzyl alcohol is disclosed for fulvestrant in document 1. Indeed, the patent was revoked in first instance opposition proceedings. Nevertheless, after a careful analysis of the cited documents, the board comes to the conclusion that claim the claim is inventive. 
One of the problems found by the board is that the skilled person would not have an expectation of success that the formulation of document 1 would allow for treatment of breast cancer by intramuscular injection. Since document 1 is a scientific paper dealing with basic research, the skilled person would not expect it to provide a formulation for administration in a clinical situation.

Wednesday, 6 March 2019

T 489/14 - New referral on computer-implemented simulations

In the present case, the Board was faced with discussing inventive step of a computer-implemented simulation of pedestrian crowd movement in an environment. The Board tended to consider the invention to lack inventive step over a known general-purpose computer. However, the appellant argued that modelling pedestrian crowd movement in an environment constituted an adequately defined technical purpose for a computer-implemented method. The Board discussed case law relating to  the requirement of a direct link with physical reality, to simulations and to designs, and then decided to refer three questions to the Enlarged Board:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?

2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

Tuesday, 5 March 2019

T 0831/17 - Haar? Referral.

A highly intriguing referral to the Enlarged Board, for multiple reasons: it concerns questions regarding the extent of the right to be heard (by a third party) and regarding the proper venue of oral proceedings (in the light of the much-debated relocation of the Boards of Appeal to Haar).

In the present case, during examination proceedings of EP2378735 third party observations (containing objections under Art. 84 EPC) had been filed by private practice firm Jostarndt Patentanwalts-AG. The patent was nevertheless granted. Jostarndt then lodged an appeal against the decision to grant, essentially arguing that, since clarity is not a ground for opposition, it felt deprived of its opportunity to object under Art. 84.

However, the Board found itself bound by the EPC - which only allows an adversely affected party to the proceedings to appeal, the author of third party observations according to Art. 115 EPC not being a party to the proceedings - and deemed the appeal inadmissible.

The appellant saw an unacceptable hiatus in legal protection and demanded clarification of this fundamental question by a decision. It therefore requested oral proceedings on the above question of admissibility.

Surprisingly, after having been summoned on 25 January 2019 for a hearing in the premises of the Board of Appeal in Haar, the appellant then requested transfer of these oral proceedings to Munich, arguing that the European Patent Office is headquartered there and, unlike The Hague, Haar is "not evidently intended as a place for acts or proceedings" in the European Patent Convention.

The move in 2017 of the Boards of Appeal from the Munich Isar building to the municipality of Haar - in a manifest attempt to increase the perceived independence of the Boards of Appeal - was met with dismay and criticism from both the Boards themselves and the public. 

The present Board (3.5.03) considered in particular the question of the right venue of the Boards of fundamental importance for ensuring a uniform application of the law in all appeal proceedings, and decided to refer the following questions (loosely translated from the original German wording) to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Questions 1 and 2 are interesting for querying the extent of the right to be heard in proceedings before the EPO. Question 3 is likely to have the greatest impact, as it boils down to whether the President or the Administrative Council of the European Patent Organisation had the power to relocate the Boards (or departments of the Office within the meaning of Article 15 EPC in general) outside the locations mentioned in Art. 6(2) EPC or to whether "Munich" in Art. 6(2) should be interpreted merely as the city with that name (not including Haar) or a (not well-defined) greater Munich area. It would appear that the referring Board favors a more a strict interpretation of “Munich”.

Thursday, 28 February 2019

T 0414/17 - Public prior use need not be substantiated up to the hilt for admissibility

In this opposition appeal case, the opposition was rejected as being inadmissible for lack of substantiation. After withdrawal of the ground of Art. 100(b), the only remaining ground of opposition was lack of novelty (Art. 110(a)) based on public prior use, whereby the opponent submitted a product catalogue, bill of materials, drawings and also offered a witness. The patent proprietor had contested that the opposition was inadmissible because it failed to indicate the facts and evidence of the public prior use, particularly with regard to "where", "when", "how" ("under which circumstances") or by "whom" the use took place. The Opposition Division agreed on the basis that the submitted catalogue provided no evidence of to whom and when a sale occurred.

The opponent argued that the Opposition Division had apparently confused the issues of (formal) admissibility and (substantive) allowability, and had committed a procedural violation for not raising the issue of admissibility in the summons to oral proceedings. The Board concluded that because the proprietor had raised the issue of admissibility, the opponent could have expected it to be the first topic of discussion at oral proceedings, since admissibility is a prerequisite for any subsequent substantive discussion. The Board therefore held that no procedural violation had occurred, but did find that the Opposition Division has reached erroneous conclusions.

Specifically, the Board found that for the purposes of admissibility, an alleged prior use needs to be substantiated only to the extent sufficient for the Opposition Division and the proprietor to understand the case. Communications from the Division and the proprietor, prior to the oral hearing, demonstrated that both the Division and the proprietor understood the case, which by itself is sufficient to establish admissibility. The Board further noted that the offering of a witness is a further admissible means of evidence, the probative value of which cannot be ascertained before it has been presented.

The Board therefore set aside the decision and remitted the case to the Opposition Division for further prosecution.

Friday, 22 February 2019

T 2050/07 - Distinguishing feature is mathematical but still inventive

If the entire contribution of your claim to the state of the art is contained in the mathematics can you be novel and inventive? In this case, the only relevant prior art was a 54(3) document, which did not disclose all of the mathematics but did disclose all of the rest. 

In this case the claim concerned "a method of analyzing a DNA sample that contains genetic material". The method contained technical steps such as amplifying a DNA sample, and producing a signal comprising signal peaks from each allele. However such steps where considered to be comprised in the Art. 54(3) prior art. 

The claim also contains a number of mathematical steps that result in a mathematical result: "a probability distribution of genotype likelihood or weight in the DNA sample". These were not disclosed in the prior art. 

The board muses that "The argument could be made that the distinguishing features described above are of non-technical nature as being a mathematical method or a method for performing mental activities, and that, in view of the established case law according to which features that do not contribute to the technical character of an invention and do not interact with the technical subject-matter of the claim for solving a technical problem, have to be ignored when assessing inventive step, such features should equally be ignored when assessing novelty. (...)". However, "the distinguishing features constitute a means for improving the confidence of the genotype estimate of the quantitative method analysis", and thus they "contribute to the technical character of the claimed invention".

Tuesday, 19 February 2019

T 1358/09 - Technical considerations in text classification (AI, ML)

This blog post is a first one of a series of blog posts in which we discuss past and recent decisions which are relevant to the field of artificial intelligence (AI) and machine learning (ML). We start with discussing older decisions which form the basis for the EPO's current approach to assessing the patentability of artificial intelligence and machine learning-based inventions.

While the revised GL G-II, 3.3.1 generally refers for guidance for the patentability of AI/ML-based inventions to mathematical models, a few areas are explicitly identified in which AI/ML is considered to make a technical contribution, such as using a neural network to identify irregular heartbeats, and classification of digital images, videos, audio or speech signals based on low-level features.

The following decision, however, is cited as an example of where machine learning does not serve a technical purpose, namely in the classification of text documents in respect of their textual content.

In particular, the Board considers the following not to make a technical contribution per se:

  • Determining whether text documents belong to the same class of documents in respect of their textual content, as the Board considers this a cognitive rather than technical consideration.
  • Providing an improved textual classification over manual classification by using precise computation steps which no human being would ever perform when classifying documents; the Board considers a comparison with what a human being would do not to be a suitable basis for distinguishing between technical and non-technical steps.
  • Providing a faster classification than prior art classification methods; the Board considers the algorithm not to go beyond a particular mathematical formulation of the task of classifying documents, and in particular, the design of the algorithm not to be motivated by technical considerations of the internal functioning of the computer to make it 'faster'.
  • Providing a reliable and objective result, as the Board considers this an inherent property of deterministic algorithms and not to make a technical contribution on its own.

Tuesday, 12 February 2019

T 0592/15 - No postponement of decision

In this examination appeal case, the application as filed comprised three independent method claims (claims 19, 39 and 40). However, after an objection under Rule 43(2) EPC in the European search opinion, all claim sets submitted by the applicant during the examination phase, as well as those filed with the grounds of appeal, contained only one independent method claim.

A month prior to the oral proceedings, the applicant filed a main request and two auxiliary requests, all containing three independent method claims. Four days before the oral proceedings, the applicant informed the Board that he would no attend the oral proceedings. He further advised that "it is intended to file a divisional application based upon the present application and it is requested that the present application be maintained pending until the divisional application has been filed".

The Board found the filing of more than one independent method claim at this stage of the proceedings to be prima facie objectionable under Rule 43(2) EPC. Accordingly, the appellant's main, first and second auxiliary claim requests were not admitted into the proceedings.

As there was no admissible claim request of the appellant, the appeal was to be dismissed. The Board found that the request of the applicant to postpone the taking of this actual decision at least until a divisional application had been filed would require the Board to investigate whether the appellant has eventually indeed filed a divisional application and, as the case may be, to even postpone the oral proceedings. Moreover, the Board found that the appellant would gain complete control over the duration of the present appeal proceedings including the possibility of having them pending ad infinitum if no divisional application was filed at all.

Consequently, the Board refused the appellant's request to postpone the taking of the decision on the allowability of the appeal and decided to dismiss the appeal.

Friday, 8 February 2019

R 0003/18 - petition without "correct" grounds

This petition was filed on the grounds of Art. 112(a), EPC, i.e. on the grounds of fundamental procedural defect of the appeal proceedings. 

In the present case an appeal was filed against the decision of the examining division to refuse the patent application.
The applicant requested an extension of the time limit (four-month period under Art. 108, EPC) for filing the grounds of appeal  because he needed more time to find a representative who could represent him before the Board. The EPO refused the extension and the applicant requested re-establishment of rights in respect of said missed period. The request of re-establishement was refused and the appeal rejected as inadmissible (Art. 108 and Rule 101(1), EPC).

The petitioner claims that the fact that an extension of time limit was not granted for allowing him to change his representative, amounted to an estoppel situation, i.e. a situation in which the petitioner was deprived of the right to assert his appeal position, which is illegal in common law.

However, neither the BoA nor the president of EPO had referred a question regarding the estoppel situation to the Enlarged Board of Appeal (EBOA) pursuant Art. 112, reason for which the EBOA is not entitled to look into the issue of the estoppel situation and to eventually correct it because the grounds set out in Art. 112(a), EPC, used by the petitioner, do not entitle the EBOA to review the application of substantive law but only to remedy intolerable deficiencies occurring during individual appeal proceedings.

The petition for review was thus rejected as inadmissible under Rule 108(1) and Rule 109(2)(a), EPC.

Wednesday, 6 February 2019

T 1063/18 - The full decision: why Rule 28(2) is in conflict with Art.53(b) EPC and why no referral was necessary

On 7 December, the Board of Appeal posted a communication on their website wherein the decision in case T 1063/18 on the patentability of plants was summarized (see here). Yesterday, the complete written decision was issued and became available in the register. In the Decision, the Board does not only motivate in detail why Rule 28(2) EPC as it was amended is in conflict with Art. 53(b) EPC as interpreted by the Enlarged Board in G 2/12 and G 2/13, as well as why the Adm Council was not competent to adopt this Rule, as well as why no further referral was needed - the Board also explained why they consider the opinion of the Enlarged Board to be unchanged also after the Commission Notice after the amendment to Rule 28(2) EPC. Not all arguments submitted by the parties and third parties were addressed in view of the intermediate conclusions taken - so, unfortunately, whether there is a difference as to what the scope of the exclusion of "essentially biologial processes" or not, was not discussed by the Boards (one submission argued that the Commission uses a narrow exclusion (strictly 100% biological, without any techncal step) whereas the Enlarged Board uses a broad exclusion (crossing whole genomes, irrespective of whether further technical steps are also excluded): if Rule 28(2) EPC would have been maintained, that could have meant that it excluded more than was intended.
This will probably not be the last legal development on patentability of "plants exclusively obtained by means of an essentially biological process" via Art. 53(b) EPC or otherwise... 

Friday, 1 February 2019

T 2435/13 - More Broccoli: the meaning of "sexually crossing the whole genomes of plants"

In the present case, the proprietor gave his interpretation of the decisions in consolidated cases G 2/07 and G 1/08, which dealt with the question of whether conventional methods for the breeding of plant varieties should be excluded from patentability under Article 53(b) EPC. The proprietor referred to the third paragraph of point " Conclusions" that "These conventional methods included in particular those (relevant for the present referrals) based on the sexual crossing of plants (i.e. of their whole genomes) deemed suitable for the purpose pursued and on the subsequent selection of the plants having the desired traits", and the sexual crossing of whole genomes was subsequently said to be "characterized by the fact that the traits of the plants resulting from the crossing were determined by the underlying natural phenomenon of meiosis". The proprietor argued that the decisions consistently referred to "sexually crossing the whole genomes of plants" as being the key criteria for determining whether a process for the production of plants was "essentially biological" and thus excluded from patentability or not. The proprietor argued that txpression "sexually crossing the whole genomes of plants" emphasised that the conventional breeding processes referred to in the two decisions of the EBA were construed as being those involving meiotic recombination events throughout the whole genome during the pairing of homologous chromosomes. The proprietor argued that the meiosis in the claimed regenerated F1 plant (grown from a rescued embryo) which preceded a back-crossing step of the claimed method was distorted; Indeed, since the A- and C-chromosomes were not homologous and did not pair with each other, only very few homologous recombination events took place over only very limited parts of their respective genomes (one being the required transfer of the clubroot resistance trait from A-genome to C-genome). Furthermore, he argued that the genomes of the first generation of back-crossed plants (BC1 plants) produced in steps f) to h) of the claimed method could range from a CC-genome (2n=18, i.e. no Brassica rapa A-chromosome derived from the F1 plant present in the BC1 progeny) to an ACC-genome (2n=28, i.e. all Brassica rapa A-chromosomes derived from the F1 plant present in the progeny); In the former case, it was literally impossible to state that the whole genomes had been sexually crossed since no A-chromosomes were retained in the produced plant. The proprietor concluded that, accordingly, since only partial homologous recombination on limited portions of the respective genomes took place, the claimed method was not directed to a process for the production of plants involving sexually crossing the whole genomes of plants as referred to decisions G 2/07 and G 1/08, and that, consequently, decisions G 2/07 and G 1/08 did not apply and the claimed subject-matter did not fall within the exceptions of Article 53(b) EPC. The Board did not agree: its conclusion is given in reasons 12-13 and the substantiation of the conclusion in the reasons just before.

Tuesday, 22 January 2019

T 623/18 - On the quality of the arguments in the statement

Sufficiently substantiated?

In the present case, the notice of opposition was based on the grounds of opposition under Article 100(a) EPC, in combination with Articles 54 and 56 EPC, and Article 100(b) EPC. Several documents were mentioned, some of which were con­si­dered in more detail in the reasons relating to the ground for opposition under Article 100(a) EPC.

However, the opposition division followed the proprietor in finding that none of the grounds for opposition was sufficiently substantiated within the meaning of Rule 76(2)(c) EPC, and thus held the opposition inadmissible.

With respect to Art. 100(a) EPC, one of the reasons was that the opponent's arguments failed to refer to the individual features of claim 1 and so did not enable the patent proprietor or the opposition division to reconstruct the novelty objection without making their own investigations.

The board disagrees with this conclusion. As summarized in reason 8, the board considers that Rule 76(2)(c) EPC does not require as much from the notice of opposition; in particular, whether the "written reasoned statement" enables the "patent proprietor and the opposition division to clearly understand the nature of the objection raised and the evidence and arguments adducted in its support" and whether "further investigations" are necessary for the patentee or the opposition division "to be able to form a definitive opinion on the grounds for opposition" (emphasis by the board) is, in the board's judgment, a matter for the allowability rather than the admissibility of the opposition.

Friday, 18 January 2019

T 1085/13 - Purity of a compound is not the inevitable result of a prior art preparation method

If the prior art already discloses a (low-molecular) chemical compound having a certain degree of purity and a method for its manufacture, does this imply an implicit disclosure of the same compound having a higher purity - thus prohibiting later claims to the compound defined by a certain higher degree of purity?

Previously, the Examining Division had refused the sole request of the Applicant, pertaining to a chemical compound defined in claim 1 as "Amorphous Lercanidipine Hydrochloride having a purity of at least 99.5% determined by HPLC analysis and containing less than 0.5% of crystalline Lercanidipine Hydrochloride". Relying inter alia on T 990/96, the Examining Division argued that the disclosure of amorphous Lercanidipine Hydrochloride ("LH") and its manufacture in prior art document D1 already had made available this compound to the public in the sense of Article 54 EPC in all desired grades of purity, and the claimed degree of purity could therefore not render the claims novel.

Departing from T 990/96 and subsequent cases including T 0728/98, the present Board of Appeal held that, in line with in particular decisions G 2/88 and G 2/10, in order to conclude a lack of novelty, there must be at least an implicit disclosure in the state of the art of subject matter falling within the claimed scope. Such an implicit disclosure would mean no more than the clear and unambiguous consequence of what is explicitly mentioned in the prior art. Thus, the skilled person, using his common general knowledge, would understand a feature as implicitly disclosed in a prior-art disclosure only if it is the clear and unambiguous consequence, and hence the inevitable result of what is explicitly derivable from said prior art disclosure.

In the present case, it was demonstrated (in a report filed during examination) that a purity falling within the claimed range is not the inevitable result, and thus not an implicit feature, of the preparation method taught in D1. The question whether (further) purification methods required to reach the claimed purity were within the common general knowledge of those skilled in the art was not considered relevant to novelty, but rather a matter to be considered in the assessment of inventive step.

The Board found that having regard to both the common general knowledge and the state of the art, no purification techniques were available prompting the skilled person to solve the technical problem of providing amorphous LH having a higher purity.

Accordingly, amorphous LH having the claimed degree of purity was found to be novel and inventive.

Monday, 14 January 2019

T 2707/16 - waiting, waiting and still waiting

This examination appeal was lodged after exceptionally lengthy examination proceedings. 
The patent application in suit was filed on 30 November 2001 with a priority date of 30 November 2000. The European search report was transmitted to the applicant almost 5,5 years after the priority date. After timely filing the request of examination, the applicant receives the first communication of the Examining Division on 7 April 2008 to which he timely replies in August 2008. After more than 7 years, on 7 January 2016, the applicant receives the second communication (summons to Oral Proceedings) from the Examining Division! In the Oral Proceedings the Examining Division refuses the application for lack of inventive step (Art. 56, EPC).  
In the grounds of appeal the appellant requested that the application be granted  on the basis of a sole request and that the appeal fee be reimbursed.
At the end of oral appeal proceedings held on 25 April 2018, the BoA remits the case to the department of first instance for further prosecution.
In order to establish whether the appeal fee could be reimbursed under Rule 103(1), EPC, the BoA extensively argues (see reasons 16 to 34 of the decision), even by making reference, in line with the appellant, to the case law of the European Court of the Human Rights (ECHR), on whether the delay in the first-instance proceedings amounts to a substantial procedural violation according to Rule 103(1), EPC. The BoA concludes that indeed such a delay can be considered a substantial procedural violation (in line with T 823/11 but deviating from T 1824/15). However, the BoA considers the reimbursement of the appeal fee in view of the unreasonable delay not equitable because the applicant did not make clear by any action that he did not tacitly agree with the stagnation of the proceedings (see reasons 35 and 36).
Thus the BoA refuses the request of the appellant for the reimbursement of the appeal fee.

To date the proceedings are still pending and the applicant is requested to pay renewal fees for the 18th year to the EPO! 

Wednesday, 9 January 2019

T 384/15 - Intervention another company from the same group as the opponent: admissible?

Opposition appeal proceedings were pending with a single opponent, Santarelli SA. Early during the appeal proceedings, a first intervention was filed by a first assumed infringer, Bose Gmbh. At a later moment during ther appeal proceedings, a second intervention was filed by a second assumed infringer, Bose Limited. The proprietor objected to the interventions by Bose Gmbh and Bose Limited as both belong to the same group as Santarelli SA, and submitted that these two intervenors were not third parties and that the filed interventions were abuse of law, as a consequence of which the interventions (as well as the opposition) should be considered inadmissible. The Board did not agree. The Board and that the interveners are "third parties", and also that the invoking Article 105 EPC had not been an attempt by the opponent and/or interveners to circumvent the law by abuse of process. The Board held the opposition and both interventions admissible.