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.