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. [G 2/19]

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”.