Monday, 28 December 2020

T 1604/16 - Boards have competence to review points of fact

What did this car look like before the repairs?

This is a decision with the second highest distribution classification 'B'. They do no not occur that often, so the issuing board considered this to be an important case. 

In first instance opposition proceedings, the opposition division concluded that a car sold by the opponent was novelty impairing prior use. This was evidenced by hearing the car buyer as a witness. In appeal the opposition has been withdrawn, and the board wonders if it is allowed to challenge the findings of fact established in first instance. The recent decision T 1418/17 suggests that a Board of appeal should not do so. This board does not agree, and provides the following catchword:
The boards have competence to review appealed decisions in full, including points of law and fact. This applies also to findings of fact of the department of first instance which are based, at least in part, on the evaluation of witness evidence obtained in the course of hearing a witness (reasons, point 3.1 and sub-points).

Friday, 25 December 2020

T 1350/09 - Different ornaments is inventive, merely unique sensorial signals are not

Using different ornaments can be inventive

Merry  Christmas from the DeltaPatents blogging team.  This decision shows that adding pretty ornament can be inventive even if providing a unique sensorial signal is not.

Claim 1 of the main requests in this opposition was:

1. A display pack comprising a see-through container which contains a plurality of unit-doses of a detergent product in a multiplicity of sensorially distinctive groups, and wherein the groups are distinctive in terms of colour, shape, size, pattern or ornament, or wherein the groups are distinctive in terms of providing a unique sensorial signal such as smell, sound, feel, etc."

The first auxiliary request struck the  final wherein clause : " or wherein the groups are distinctive in terms of providing a unique sensorial signal such as smell, sound, feel, etc." That made the difference.

Monday, 14 December 2020

T 483/17 - 'more up to the hilt' is not needed

The opponent in this case alleged that one of its own products is novelty destroying prior art. As this prior use lies within the sphere of the opponent, proof 'up to the hilt' was required. The board's analysis of this proof is very case-specific of course, but makes for interesting reading (if you're into that kind of thing). The proprietor makes a good effort to find inconsistencies in the  provided proof, which leads the Board to state at one point that if more evidence was provided, it 'would merely have been proven even more "up to the hilt"'. 

In the end the opponent manages to prove to the Board's satisfaction that it really did sell a product that falls under the scope of the claim. 

Monday, 7 December 2020

T 2620/18 - Appeal deemed not filed due to mistaken payment of small-entities appeal fee

The  Schedule of fees of the EPO has two amounts for the appeal fee. A small fee for natural persons or small entities, as defined in Rule 6(4) and (5) EPC, and a large fee for everybody else. What happens, if you accidently declare yourself a small entity, even though you are a large entity, and thus pay the wrong fee? When filing an appeal to an opposition this happened to the unlucky appellant. In this case the appeal was deemed not filed. In particular, an attempt to correct under Rule 139, was dismissed as the correction was not filed quickly enough. 

In the decision, the Board goes through of the ways in which this may be rectified, but comes to the conclusion that none apply.  The decision has the following abstract (translated from the German):

For the question of the insignificance of the difference between the full appeal fee and the appeal fee, see Reasons No. 4.8.

On the question of an implicit request for correction of a debit order and the timeliness of the submission of a request for correction, see Reasons 5.7 to 5.14.

On the issue of ex officio correction of amounts in debit orders, see Reasons 6.1 and 6.2.

For the question of interpretation of a debit order with regard to the appeal fee, see Reasons No. 8.4.

Below a machine translation of the sections cited in the abstract is provided, and below that, the original German. 

Tuesday, 1 December 2020

T 670/19 - Technical character of lip assessment

The invention in this Examination decision concerned a scale to for clinical assessment  of the lips and mouth area. Such a scale may for example be used to judge the efficacy of new lip augmentation procedures. 

For example, one feature of claim 1 in appeal is  'a lip fullness scale comprising illustrations of the mouth area of human subjects'.  

During Examination the claims were initially objected to as lacking novelty. However, as those objections were overcome, the claims were objected to as lacking technical character.  According to the Examining division the claim 'relates to purely abstract subject-matter' and is thus excluded under Article 52(2) and (3) EPC. 

The board of appeal did not agree--these illustrations imply a physical medium and thus technical character. The case is remitted. 

Monday, 23 November 2020

T 1631/17 - Not-explicit claim features cause exception to patentability

The invention relates to a  method of making dental prostheses using settable dental prosthetic material. The method is more efficient than existing methods since an impression is used of a human denture in which missing tooth substance is supplemented. 

Although not claimed, typically one would first provisionally repair the teeth and take an impression of the "finished" denture. In this way the desired external shape of the denture can be designed directly by the dentist on the patient and the production of the denture parts by the dental technician can be simplified considerably.

Even if not explicit, the Board considers that the claim still encompasses a surgical step, and so is excluded from patentability. 

The decision is in German. Below an machine translation of part of the decision is given, and below that a more extensive selection of the original German. 

Monday, 16 November 2020

User consultation on insertion of new Article 15a (oral proceedings by videoconference) in the Rules of Procedure of the Boards of Appeal (RPBA 2020)

The EPO's Boards of Appeal Committee (BOAC) and the President of the Boards of Appeal of the EPO have invited users to take part in the consultation on proposed new Article 15a RPBA. The proposed article is available in the English version. The consultation can be found here.

This online consultation will remain open until 12.00 hrs CET on 27 November 2020.

The proposed text reads:

Article 15a Oral proceedings by videoconference

(1) The Board may decide to hold oral proceedings pursuant to Article 116 EPC by videoconference if the Board considers it appropriate to do so, either upon request by a party or of its own motion.

(2) Where oral proceedings are scheduled to be held in person, the Chair may allow a party, representative or accompanying person to attend by videoconference. In exceptional circumstances, the Chair may decide that a party, representative or accompanying person shall attend by videoconference.

(3) The Chair may allow any member of the Board in the particular appeal to participate by videoconference. 

Par. (1) thus provides that oral proceedings may be held by videoconference.

Par. (2) implicitly provides that oral proceedings may be held in person; par (2) explicitly provides for hybrid oral proceedings where  a party, representative or accompanying person may (voluntarily) or shall (mandatorily) attend in oral proceedings held in person.

Par. (3) provides that any member of the Board, also the Chair, may participate by videoconference; implicitly, it provides that any Board member may participate by videoconference in oral proceedings by video conference as well as in hybrid oral proceeding as well as in oral proceedings where all parties, representatives and accompanying persons and (presumably) some -but not all- Board members attend in person.

The text of the proposed new provision and some explanatory remarks are set out in the document that is available from the Download menu in the original message. 

The text of the invitation on the webpage is duplicated below in its entirety (emphasis added).

Friday, 13 November 2020

T 844/18 - Crispy priority

You can't slice up a priority right, also not with the boards

Last week, the EPO Boards of Appeal issued a press communiqué of 6 November 2020 concerning case T 844/18.

The press communiqué  is cited integrally below (emphasis added):

Press Communiqué of 6 November 2020 from the EPO Boards of Appeal concerning case T 844/18

6 November 2020

Technical Board of Appeal 3.3.08 issued the written decision in case T 844/18 confirming the revocation of a patent related to CRISPR gene editing. The revocation was based on a lack of novelty due to an invalid claim to priority.


The European patent EP 2 771 468  held by the Broad Institute and others relates to the CRISPR (Clustered Regularly Interspaced Short Palindromic Repeats) gene editing technology. CRISPR gene editing is a genetic engineering technique which allows inter alia to modify the genomes of living organisms in a targeted manner. The technology has been developed by several competing research institutions. Numerous patents and patent applications concerning this technology are pending before the EPO.

In the appealed decision the opposition division had revoked the patent. It had found that priority had not been validly claimed and that the claimed subject-matter was therefore not novel.

Key considerations

The applicants for the patent in suit were not the same as those for the priority application. Rather, one applicant was missing from the patent application and had not transferred its priority right to the remaining applicants.

The core legal issue is governed by Article 87(1) EPC and can be described as follows:

A and B are applicants for the priority application. A alone is the applicant for the subsequent application. Is a priority claim valid even without any assignment of priority right from B to A?

Under Article 87(1) EPC, any person who has duly filed an application for a patent or their successor in title shall enjoy a right of priority during a period of twelve months from the date of filing of the first application. Article 87(1) EPC corresponds to Article 4A of the Paris Convention for the Protection of Industrial Property.

The first question addressed by the Board was whether entitlement to priority should be assessed by the EPO or rather in entitlement actions before national courts. The Board concluded that Article 87(1) EPC both empowered and obliged the EPO to assess the validity of a claim to priority.

The second question was how to interpret the expression "any person" in Article 87(1) EPC. Under the established practice both at EPO and national level, a valid priority claim requires that all persons listed as applicants for the priority application are also listed as applicants for the subsequent application, allowance being made for successors in title. The Board confirmed this so-called "all applicants" approach.

A third question concerned whether national law (in this case US law) governs the determination of "any person" who has "duly filed" under Article 87(1) EPC. On this point, the Board concluded that the Paris Convention was the law which determines who "any person" is.

For these reasons, the Board found that priority had not been validly claimed from several US provisional applications. Therefore, documents became relevant prior art over which the claimed subject-matter was not novel. The Board thus dismissed the patent proprietors' appeal against the opposition division's decision to revoke the patent.

The Board also stated that a referral to the Enlarged Board of Appeal was not necessary, because Article 87(1) EPC had been interpreted consistently by the EPO and the questions raised could be answered beyond doubt by the Board itself.


Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office


This press release is a non-binding document for media use. The full text of the decision is available here.

The file wrapper can be found here. 

Also refer to our blog posts of 20 January 2020, "Breaking news - Decision in case T 844/18 on the CRISPR gene editing technology" (here) and of 29 May 2018, "EP2771468 - Decision of OD in Crispr case (first instance)" (here). Photo obtained via Pixabay by Couleur under CC0 license (no changes made).

Tuesday, 3 November 2020

T 1439/16 - Late filed request with deleted claim allowable as it improves procedural economy

In response to the Boards preliminary opinion, the proprietor filed a request (auxiliary request 6) by deleting claim 1 of an existing request. This resolved an added subject matter problem. The opponent objects against the new request as being late filed. The Board agrees that the request ought to have been filed with the proprietor's reply to the statement setting out the grounds of appeal. However, since a claim has been deleted procedural economy has improved, and so the request is allowed. 

In response, the opponent voices new added subject matter objections to (now) claim 7 of the new request. These are not allowed in the procedure, as that would be detrimental to procedural economy. The objection should have been raised before the oral proceedings-- It was the choice of the appellant to make an objection for added subject-matter only to claim 1 and not to (then) claim 8 in the statement setting out the grounds of appeal.

Tuesday, 27 October 2020

T 560/20 - Change from novelty objection to inventive step in decision to refuse

Does membrane thickness have a technical effect? Does it matter?

During prosecution the claim was objected to on the basis of novelty. In its decision to refuse, it was acknowledged that the thickness of a membrane was not disclosed in the prior art document. As said thickness had no technical effect, the Examining division turned the novelty objection into an inventive step objection. The appropriate thickness could be found from the common general knowledge. 

The board does not like this, and in fact, considers it to be a substantial procedural violation 

Tuesday, 20 October 2020

T 294/16 - The Board shall not remit, unless

It is not always so easy to turn around and go back.

Article 11 of the Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) reads as follows:

Article 11


The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons.

In this decision the Board found that such special reasons were present. The application was rejected for lack of novelty, but the Board did not agree with that finding. As inventive step or clarity was not examined, the case is remitted. 

Thursday, 15 October 2020

T 421/14 - Sufficiency for a composition with non-responders

No response for a subpopulation

How credible should evidence for a composition be? In this case, the opponent argued that the initial analysis of therapeutic efficacy lacked statistical significance. Only a post hoc analysis revealed a  significantly better response for a treatment group compared to a placebo group. Moreover, the effect only occurred in a subpopulation of responders, not for the general population. Is one allowed to claim a composition for a general group even if the majority are non-responders, or should one disclaim the non-responders?  

Another issue, was the public availability of two documents C30 and C31.  C30 was poster and C31 a slide show, both allegedly displayed at a public conference by the proprietor. Both were also included in the IDS statement for a corresponding US patent. Who should prove the public availability in this situation, and what is the appropriate standard?

A related case T 799/16 sharing some of its reasons with the present decision has also been decided. 

Tuesday, 6 October 2020

T 1188/16 - Request filed in appeal is too late


Another case showing that filing new requests with the appeal can be a perilous undertaking. In first instance proceedings, the proprietor amended claims by including a 'fluid delivery interface' disclosed in paragraph 44 of the description. The opposition division objected that this was added matter since the amendment failed to include a 'reduced pressure interface' which was shown together with the former interface. In appeal, an auxiliary request is filed that addresses this objection, but the board will not allow it. 

The proprietor considered that the request  should be admitted, since it is responsive to objections first raised during oral proceedings. However, the board finds that the problem was unambiguously indicated at the oral proceedings, so that the appellant could have filed a request including the omitted feature then.

The appeal was dismissed. 

Tuesday, 15 September 2020

T 1030/19 - Plants filed before 1 July 2017

In the present case,  the examining division held, in its decision dated 28 November 2018, that the subject-matter of the set of claims of the main request and of auxiliary requests 1 to 4 fell under the exclusions from patentability as defined by Rule 28(2) EPC and that, consequently, the application did not meet the requirements of Article 53(b) EPC. In the grounds of appeal of 28 March 2019, the applicant referred to T 1063/18 which decided that Rule 28(2) is in conflict with Art.53(b) as interpreted by the Enlarged Board in G 2/12 and G 2/13 and that the refusal in that case based on Rule 28(2) should be set aside. While the current appeal was pending, the President referred questions to the Enlarged Board. The Board waited until G 3/19 was decided before ruling on this case.

Tuesday, 1 September 2020

T 2214/15 - Ordinary, not exceptional

According to Article 13(2) of the revised Rules of Procedure of the Boards of Appeal (RPBA 2020), any amendment to a party’s appeal case made after notification of a summons to oral proceedings (or after a deadline set by the Board with an express invitation to file observations) shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned. The basic principle of this third level of the new "convergent approach" applicable in EPO appeal proceedings is that, at this stage of the appeal proceedings, amendments to a party’s appeal case are not to be taken into consideration. Only if a party can present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular case. For example, if a party submits that the Board raised an objection for the first time, it must explain precisely why this objection is new and does not fall under objections previously raised by the Board (or a party). The Board may decide to admit the amendment in the exercise of its discretion. 

In the present examination appeal case, the appellant had filed Auxiliary Request 2 after notification of the summons to oral proceedings. During oral proceedings, the appellant argued that this late-filed request should be admitted, as the Board had raised a number of new issues in the summons to which auxiliary request 2 represented a good faith reaction. Indeed, the Board accepted that in the present case this represented exceptional circumstances within the meaning of Article 13(2) RPBA 2020.
Unfortunately, the Board found that Auxiliary Request 2 does not comply with Articles 84 and 123(2). 

Auxiliary Request 3 filed subsequently during oral proceedings was however not admitted. While the appellant asserted that a further request should be admitted because the Board had raised new objections in connection with the second auxiliary request that the appellant could not have been expected to anticipate, the Board was not persuaded by these arguments. According to the Board, the topics of discussion in view of auxiliary request 2 did not differ in substance from those identified in the summons; the identification of newly introduced problems when attempting to solve issues discussed in the procedure up to that point is rather to be seen as the ordinary development of the discussion, rather than an exceptional circumstance justifying the admittance of a further auxiliary request. In the view of the Board, if such newly introduced problems would represent exceptional circumstances, this would imply that the appellant would have to be given repeated opportunity to file amended claims until no new problems were introduced. Such a procedure could only be characterised as a continuation of the first-instance examination proceedings and would thus be at odds with the primary object of the appeal proceedings of a judicial review of the impugned decision.

If amendments intended to overcome objections of lack of support and lack of clarity raised in the summons give rise to further objections concerning clarity or added subject-matter, pointing out these further objections does not represent exceptional circumstances within the meaning of Article 13(2) RPBA 2020, but rather an ordinary development of the discussion which does not go beyond the framework of the initial objection. See reasons 5.3 and 5.4.

Wednesday, 26 August 2020

T 2210/16 - Careful with predetermined values

This patent was opposed as not disclosing the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Claim 1 as granted states (in my translation)

Method for reducing microphone noise (feature A) in an input signal (x) of a hearing aid (10, 46) by filtering the input signal (x) by means of a Wiener filter (26) if a Noise Performance (NPSD) determined from the input signal (x) is less than a predetermined limit value (G) (feature C1) and deactivating the Wiener filter (26) if the Noise Performance (NPSD) is greater than or equal to the limit value (G) (feature D1).

The problem that was raised is that if the skilled person happened to select a microphone with good Noise Performance and a high predetermined limit value, then the Wiener filter would never be activated and the aim of reducing microphone noise would not be realized. 

Below is a translation of the German decision, with help from the DeepL Translation tool. Below the cut is the German original.  


3.7 For the, in the field of hearing aids, realistic case  that already the noise power of the microphone noise is higher than the claimed "predetermined limit" according to features C1) and D1), the Wiener filter remains deactivated. Thus, in the opinion of the Board, the hearing aid professional cannot achieve the "reduction of microphone noise" on the basis of the original disclosure of the patent in dispute.

3.8 In particular, the following two aspects would, in the opinion of the Board, present the person skilled in the art with insurmountable difficulties in the execution of the claimed invention

3.8.1 Firstly, with regard to feature A), it should be noted that neither the description nor claim 1 of the patent in suit contain an explicit or implicit reference to limit the claimed process to a microphone with low microphone noise - however "low" should be defined.

3.8.2 On the other hand, the wording of the claim regarding feature C1) in no way indicates a setting of the "predetermined limit value" dependent on the microphone noise, as claimed by the respondent. Accordingly, the argument put forward by the respondent with reference to paragraph [0031] (in particular page 5, lines 33-38 and paragraph [0039]) of the patent specification, that the realization that the setting of the limit value is the "only possible adjustment screw" of the claimed method, which would cause the skilled person to set the limit value appropriately under consideration of the microphone noise to be reduced, cannot be applied in this generality.

3.9 With regard to the feasibility of these two aspects, i.e. the microphone with low self-noise and the selection of the predetermined limit value, the patent in dispute teaches that the microphone should be designed in the form of a condenser microphone and that the limit value should be set at 30 dB (see page 2, lines 16-31; page 10, lines 31-32 in connection with Figs. 2 and 3 of the original application).

In this context, the Board cannot share the respondent's view that the value of 28 dB used by the appellants in an illustrative example represents the absolute limit for the inherent noise of a microphone. For example, the Shure condenser microphone "Beta 98A", available before the priority date of the patent in dispute, has a microphone noise of 30 dB. The microphone noise of its predecessor "Beta 98" is even 5 dB higher. Consequently, within the scope of the patent in dispute, it would be quite plausible and realistic for the skilled person to apply the claimed method in a microphone with high microphone noise, for example with a microphone noise of about 30 dB. According to features D) and D1) of claim 1, however, the Wiener filter is permanently deactivated for such a microphone with a microphone noise in the range of the limit value (e.g. 30 dB) and therefore cannot be used to reduce the microphone noise according to feature A).

Tuesday, 4 August 2020

T 1414/18 - Don't ask and ye shall nevertheless receive, as long as equitable

The central issue in this appeal was the decision to refuse the EP application on the grounds of non-unity. The applicant paid an additional search fee, then requested that it be refunded when submitting responses to the Examining Division and arguments in defense of the unity of the claims. The Board found in favour of the applicant and ordered a refund of the additional search fee, commenting that the decision to refuse the application contained an implicit refusal of the request for the refund, even though a decision on the refund of further search fees should be indicated in the order of the written decision.

The Board was critical of the reasoning given for the need to perform two searches and, in particular, of a communication from the ED in which the applicant was informed, "The next procedural step will be summons to oral proceedings during which the application will be refused (Article 97(2) EPC)". The applicant withdrew the request for oral proceedings and requested a decision according to the state of the file.

The phrase "will be refused" was found to be in contradiction with the principles of the right to be heard under Art. 113(1), as it implied that there were no arguments that could be presented that would not lead to a final refusal of the application. The Board held this to be a substantial procedural violation, which necessitated the applicant's request for a decision according to the state of the file and thus the filing of the appeal. Reimbursement of the appeal fee was ordered on the Board's own motion.

Tuesday, 14 July 2020

T 1378/16 - Oral proceedings before the Board held by videoconference

The oral proceedings in the present case took place on 8 May 2020 and were the first held by videoconference in the history of the Boards of the Appeal of the EPO. Unlike some national legal systems, the EPC does not stipulate explicitly the form(s) in which oral proceedings under Article 116 EPC shall take place. For these reasons, the Board considers it appropriate to address briefly the legal basis for oral proceedings within the meaning of Article 116 EPC.

Wednesday, 1 July 2020

T 1294/15 - A business method claim without claiming the business is still a business method

A rose by any other name would smell as sweet
In affiliate reward programs, rewards might need to be divided among different participants; in the claim between a content manager and an introduction page manager. Instead of dividing up each reward among the parties, the application proposes to sometimes award the full amount to one single party and sometimes to another single party. Overtime this balances out so that the rewards are are about equal to exact division. The new scheme is more efficient since it needs fewer divisions. 
The board doesn't like the claim, as it represents a business method. However the applicant makes an interesting argument. By stripping all the business aspects of the claim, one is left with merely an improved division algorithm. If the stripped claim is technical and inventive then surely further restricting it can't remove patentability? Unfortunately for the applicant this argument is not accepted. 

Friday, 19 June 2020

T 2133/14 - Skilled person resolving a clarity problems in the claim

Sending an interrogation signal

How much can the skilled person bring to the table when establishing the meaning and enablement of a claim? This application was refused by the Examining division for being neither clear nor sufficiently disclosed. But the board has a higher opinion of the skilled person, and consider him capable enough to bridge the gaps.

The claims relate to a first device that stores 'multiple versions of application software'. The first device want to communicate with a second device, but its software may not be compatible. This is solved according to Claim 1 by sending 'an interrogation signal' to the second device and receiving back 'identification information'. The first device's method then comprises, based on the identification information:
correlating (225) thereto a version of the application software from among the multiple versions of application software associated with the first electronic device that is compatible with the recognized version of the application software currently being utilized by the second electronic device, wherein the correlating step utilizes a look-up-table."
An auxiliary request restricts claim 1 to a control device and an implantable medical device. Although the board reverses the Examining division on clarity and sufficient disclosure, in the end the claims are found to be non-inventive. 

Reasons for the Decision
The invention
1. The application is concerned with ensuring the compatibility of application software running on two communicating electronic devices, preferably an implantable medical device such as a cardiac pacemaker and an associated control device (see paragraphs 1 and 15).
1.1 More specifically, it is observed that the application software running on the implantable device (the "second" device in claim 1 of the main request) may be updated during its lifetime and stated that, for proper operation, the control device (the "first" device) will need to run a "compatible version of application software" (see paragraph 17).
1.2 According to a prior art solution, discussed in paragraph 4 (U.S. patent application 5,800,473), if it is detected that the implant runs a more recent version of the application software than the control device, then the more recent software "objects" are downloaded from the implant to the control device. In the application, this solution is stated to require an undesirably complex implantable device, too much energy and time, and to have the further disadvantage that the control device will at any point in time only run a single version of the application software, which may not be compatible with all implantable devices (see paragraph 4, lines 11-15, and paragraph 5). The invention is intended to overcome these disadvantages (see paragraph 9).
1.3 As a solution, it is proposed that a control device for communicating with a specific implantable device generate and transmit an "interrogation signal" to the implantable device. In response, the latter generates and transmits a "response signal" to the control device, the response signal comprising "identification information" including one or more of its type and a "unique identification number" and the version of the application software installed on it (see paragraphs 10, 20 and 23-30). The control device stores "multiple, preferably all, updates, versions or generations of the application software for the control device" in question (see paragraphs 16 and 34). Based on the received "identification information", the control device "correlates or maps" to the implantable device a compatible version of the application software using a lookup table (see paragraphs 21 and 22). Subsequently, the control device uses the so-determined compatible version (see para­graph 33). The procedure is depicted in figure 2.
Clarity and sufficiency of disclosure,
Articles 84 and 83 EPC
2. The examining division found the independent claims of both requests to be unclear for the following reasons (see the decision, points 19-22 and 25).
2.1 It was left open what kinds of interrogation and response signals could be processed by all possible electronic devices. At least for some pairs of elec­tronic devices, it would require inventive skill to provide suitable interconnection signals, while the description did not disclose further details. As a consequence, the independent claims were not supported over their full breadth by the description, Article 84 EPC, and, because "said clarity objection" could not be resolved using the description, their subject-matter was insufficiently disclosed, Article 83 EPC (see esp. the recitation of section on pages 6 and 7 of the decision).
2.2 The claimed invention presupposed that the different software versions all had different interfaces. Because this was an unrealistic assumption, the intended "system context" was unclear (see the recitation of sections to on page 7 of the decision).
2.3 The claims left open how the control device was meant to be "'equipped with multiple software versions initially' for all diverse types of 'second electronic devices', [and] for all their respective versions of software", and how it was avoided that the first electronic device had to be modified whenever the application software was changed (i.e. continuously or frequently). Also, for combinatorial reasons it was unrealistic to assume that each first electronic device could store all versions of the application software for all types of second electronic device. This rendered the claims unclear, Article 84 EPC, and meant that their subject-matter was insufficiently disclosed, Article 83 EPC, because "said clarity objection" could not be resolved using the description (see the recitation of sections to on pages 9 and 10 of the decision).
2.4 "Correlating" a version of the application software to the second device did not have a clear technical effect, since the "correlated version of [the] application software" was neither loaded nor used for communication (see esp. the recitation of section 9.1.3 on page 11 of the decision).
The board's view on clarity and sufficiency
3. The board does not share the conclusions of the examining division on clarity of the independent claims.
3.1 While the board agrees with the examining division's view that "correlating" has no clear technical effect (see point 2.4 above), this alone does not imply a lack of clarity.
3.2 The board also agrees with the examining division that the claims do not specify any details about the inter­rogation or response signals, or what it would mean for two devices to be compatible or incompatible. The claims further do not include any feature that would allow an estimate of the number of versions the first electronic device would have to store and when or how the first electronic device would have to be updated.
3.3 None of these omissions however implies, in the board's view, a lack of clarity - or an insufficiency of disclosure, for that matter.
3.3.1 The board considers that the skilled person would have no technical difficulty in implementing a form of interrogation/response-protocol in devices even in a "non-standard scenario" such as a smartphone communicating with a cardiac pacemaker (see paragraph bridging pages 6 and 7 in the decision).
3.3.2 The skilled person would interpret the notion of "compatibility" as used in the claims broadly. In the broadest reasonable sense, two pieces of software would be considered "compatible" if they are intended - and can, thus, be assumed - to interoperate properly. Apparently, this would not be the case if their interfaces did not match. However, even software with matching interfaces might not properly interoperate, for various reasons apparent to anyone skilled in the art of programming. The skilled person would understand that, effectively, "compatibility" is what the "correlating" step establishes, and - for the purposes of the claimed subject-matter - two pieces of software are compatible if the look-up-table "says so".
3.3.3 It would have been evident to the skilled person that the memory requirements on the first electronic device grow with the number of versions of the application software to be stored. The board also agrees with the examining division that this number might well be larger than what a typical such "first electronic device" can actually store (see also "all possible versions" in claim 2). However, while it might be undesirable or impracticable for various reasons, it would not be technically difficult to either enlarge the memory of the first electronic device or to limit the number of versions to some (the most recent say, or only those needed for some "second" device types) to the detriment of others.
3.4 The board takes the view that the skilled person would not need any explicit statement in the application to be able to handle the mentioned situations properly. Hence, in the board's view, the independent claims are neither unclear in the mentioned respects, nor insufficiently supported. Their subject-matter is also not insufficiently disclosed.
4. The findings in point 3 are further corroborated by the following considerations.
4.1 An objection that a claim is too broad to be supported by the description over its full breadth can be addressed by limiting the claim to a breadth which is. For that reason, the limitation of a claim covering standard and non-standard scenarios (claim 1 of the main request) to only the standard scenario of a control device and an implantable medical device (see the auxiliary request) is a valid attempt to overcome at least one of the objections regarding incomplete support by the description labelled "" (see paragraph bridging pages 6 and 7 of the decision).
4.2 Moreover, the board does not agree that the subject-matter of a claim which is not supported over its full breadth by the description or which is unclear is ipso facto insufficiently disclosed, as the examining division suggests (loc. cit.). Accordingly, the board considers that the objection under Article 83 EPC is not correctly reasoned in the decision.
5. In the following, the board takes the view that the skilled person would construe claim 1 of the auxiliary request as follows. The first electronic device (the control device), storing multiple versions of some application software, asks the second electronic device (the implantable medical device) for identification information which, inter alia, identifies the version of the application software it runs. This information is then used to identify a preferred version of the software to be run on the first electronic device. This version is identified using a look-up table and referred to in the claims as "compatible".

This decision T 2133/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2020:T213314.20200603. The file wrapper can be found here . Image by Stafford Green (staffordgreen0obtained under the Pixabay license

Friday, 12 June 2020

T 1798/13: Improving accuracy of forecasted weather data is akin to a scientific discovery, so not technical

The invention relates to a method and system for forecasting the value of a weather-based financial product using forecasted weather data. This data is derived from historical weather data for a defined time and geographical area and is processed to obtain a "quality indicator", which is indicative of the reliability of the forecasted data. The quality indicator is then used to forecast the value of the financial product. The application was refused for lack of inventive step, because in the opinion of the Examining division, no technical problem was solved.

In appeal, the applicant argued that although the use of weather data to calculate the value of a financial product had no technical character, the invention improved the reliability and predictability of weather forecast data in general, which was a technical problem.

The Board disagreed and observed that "the weather" is not a technical system, but is a physical system that can be modelled to show how it works.  In its view, this kind of modelling is considered to be a discovery or a scientific theory, which are not regarded as inventions under Art. 52(2)(a). The Board concluded that the improvement lay in the processing of data to achieve a more accurate weather forecast, i.e. an improved model using a scientific theory, which could contribute to technical character.

The appeal was dismissed. 

Friday, 29 May 2020

T 1900/16 - strict formulation of objective problem leads to inventiveness

Printer with blank pages 

When printing a document, it sometimes happens that inadvertently a blank pages ends up between the printed pages. While this is annoying in any print-job it can become a real problem if one is doing print jobs of 100,000 pages. The solution to this problem comprises better synchronization of read and write commands in the printer spool file. 
The Examining division argued for lack of inventive step by solving the general problem how to 'ensure correct printing results are generated'. A skilled person would then try to apply known techniques that avoid incorrect data and arrive at the solution defined in claim 1. 
The board found this line or arguing incorrect. Without generalizing the problem set out in the application, the skilled person would not have combined with the secondary document. 

Thursday, 14 May 2020

BREAKING NEWS: G 3/19 - Plants and animals exclusively obtained by essentially biological processes are not patentable, but no retroactive effect

Today, the EPO issued a Press Communiqué concerning opinion G 3/19 of the Enlarged Board of Appeal. (link)

The Press Communiqué is cited in full below (with emphasis added).

The full decision can be found here (G 3/19). Further references are given at the end of the Press Communiqué.

The headnote of the decision reads:

Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process. This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.

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Press Communiqué of 14 May 2020 concerning opinion G 3/19 of the Enlarged Board of Appeal

The Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) today and concluded that plants and animals exclusively obtained by essentially biological processes are not patentable.
The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.


The Enlarged Board of Appeal is the highest judicial authority under the EPC, which provides for an autonomous legal system that is separate from the European Union. The Enlarged Board's main task is to ensure the uniform application of the EPC.
Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process. Rule 28(2) EPC was introduced by decision of the Administrative Council of the European Patent Organisation and came into force on 1 July 2017.
In 2015, the Enlarged Board had concluded in its decisions G 2/12 and G 2/13 within the then applicable legal framework, i.e. before the introduction of Rule 28(2) EPC, that the non‑patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC did not extend to products that are exclusively obtained by means of an essentially biological process.
In 2018, a Technical Board of Appeal held in decision T 1063/18 that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC, and followed the Enlarged Board's earlier decisions G 2/12 and G 2/13.
In 2019, the President of the European Patent Office referred a point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC concerning the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 and G 2/13, and in particular in view of new Rule 28(2) EPC.

Key considerations

In its opinion issued today, the Enlarged Board of Appeal held the referral by the President of the European Patent Office to be admissible within the terms of a re‑phrased question. On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.
Taking account of the Administrative Council's decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.
In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.
In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date.


Nikolaus Obrovski
Spokesperson of the Boards of Appeal of the European Patent Office
This press release is a non-binding document for media use.

Further information

EU Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions;
Decision CA/D 10/99 of the Administrative Council, insertion of new Chapter VI "Biotechnological inventions" in Implementing Regulations to the EPC;
G 2/07 (Broccoli I), Decision of the Enlarged Board of Appeal;
G 1/08 (Tomatoes I), Decision of the Enlarged Board of Appeal;
25.03. 2015
G 2/12 (Tomatoes II), Decision of the Enlarged Board of Appeal;
G 2/13 (Broccoli II), Decision of the Enlarged Board of Appeal;
Rule 28(2) EPC (entry into force), see Decision CA/D 6/17 of the Administrative Council;
T 1063/18, Decision of Technical Board of Appeal 3.3.04;
decision text (not published in OJ EPO)
Referral of a point of law by the President of the EPO;
G 3/19 (Pepper), Opinion of the Enlarged Board of Appeal;
opinion text (not yet published in OJ EPO)
Amicus curiae briefs
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