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.