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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[start of citation of Press Communiqué]

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.

Background

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.

Contact

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

Further information

06.07.1998
EU Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions;
16.06.1999
Decision CA/D 10/99 of the Administrative Council, insertion of new Chapter VI "Biotechnological inventions" in Implementing Regulations to the EPC;
09.12.2010
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;
01.07.2017
Rule 28(2) EPC (entry into force), see Decision CA/D 6/17 of the Administrative Council;
05.12.2018
T 1063/18, Decision of Technical Board of Appeal 3.3.04;
decision text (not published in OJ EPO)
05.04.2019
Referral of a point of law by the President of the EPO;
14.05.2020
G 3/19 (Pepper), Opinion of the Enlarged Board of Appeal;
opinion text (not yet published in OJ EPO)
Amicus curiae briefs
[end of citation of Press Communiqué]
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Tuesday, 12 May 2020

T 487/16 - Can a document admitted by the opposition division and upon which the decision was based be excluded from appeal proceedings?


In the present case, an appeal was filed by the appellant (patent proprietor) against the decision of the opposition division revoking his patent due to lack of novelty  w.r.t. D1 and lack of inventive step w.r.t. D3 in combination with late-filed document D7. D7 was admitted by the Opposition Division as prima facie relevant (page 5 of the decision). Arguments of the proprietor before the Opposition Division, that D7 belongs to a remote technical field were not of any avail. In his grounds of appeal, the appellant submitted that "D7 was late filed before the opposition division which then erred in admitting the document despite its content relating to a remote technical field and not being of prima facie relevance to the claimed subject-matter. D7 should thus not have been admitted into the proceedings." Was the Board convinced? Did the Board allow D7 to be used? Did the Board agree with D7 being from an unrelated or remote technical field and did that have any effect on its admissibility or otherwise?

Monday, 11 May 2020

T 509/18 - Lack of sufficiency in a machine learning application



This examination appeal concerns a driver alertness detection system. Based on imaging of the driver's head and eyes the driver's attention state is determined. Determining the attention state uses a machine learning system. 

The description has a few sections in which the machine learning aspects are explained. Apparently, a matrix of inter-point metrics is used for a look-up-table classification. In principle classification systems are well known, and this suggests some kind of nearest neighbor classification, so I didn't think anything of it.  But the board probes deeper and finds the description insufficient. On closer reading it is indeed unclear what exactly is happening. I'm convinced that one could make a system like this work in many ways; but perhaps not while literally following the description. 

The applicant had argued that the skilled person would know how to enable this based on his common general knowledge; the applicant cited multiple documents in support of this argument. Moreover, in first instance the application was refused for lack of novelty not for lack of sufficiency.  The reasons of the appeal decision do not refer to the common general knowledge though.

In any case, it is a useful reminder not to be too succinct in your description. 


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