I guess most of us have implemented certain changes to business procedures, due to the Covid-19 crisis. There is certainly some truth in the following ‘multiple choice questionnaire’ which I have recently seen first on Twitter (@MBA_ish):
Challenging times demand for creative solutions. This certainly holds true for the EPO, too. Clearly, the EPO should not and cannot be shut down completely in these times.
But how to deal with oral proceedings, when crowds of people should be avoided and with all those travel restrictions in place?
[…] if there are serious reasons against holding the oral proceedings by videoconference such as, in particular, the need to take evidence directly.
The Notice of the EPO (¶3) makes clear that there may be other serious reasons for not holding a videoconference,
[…] for example where an impediment prevents an applicant or representative from participating in oral proceedings held by videoconference.
But at the same token, the Notice makes clear that
[s]weeping objections against the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons in this regard. Equally, the need to consider written evidence will not qualify as a serious reason.
That’s a pretty drastic change — not only during the current pandemic, but even thereafter. Even though videoconferencing as a means for conducting oral proceedings has been available at the EPO since 1998(!) (see OJ EPO 12/1997, 572), it had not gained much practical relevance. To the best of my knowledge, less than 10% of oral proceedings before Examining Divisions had actually been held by videoconference, even in recent times.
Why is that?
First, it is my understanding that it was the EPO that refused requests for videoconferencing quite often. Thus, there was a demand for more videoconferences.
Second, there are people like me. Of course there are pros and cons for both, videoconferencing and face-to-face oral proceedings. You may call me a flat-earther, but I am a big fan of face-to-face hearings. I would never opt for a videoconference in an important case that is at the brink of being refused (which is why one normally is summoned to oral proceedings, right?). Oral proceedings are the last chance to convince the ED that a patent should be granted. There is more to oral proceedings than just the spoken word and a tiny, delayed and sluggish image of the person who is speaking. Compared to a face-to-face hearing, videoconferencing to me clearly is no more than a second-best solution.
If the case at hand is of less importance for a client, a videoconference might well suffice — and I would no doubt make use of videoconferencing in such cases. It all boils down to costs. But there is a difference between cost-worthy and cheap. When I go to oral proceedings, I do make sure that it is cost-worthy in view of the importance of the case for the client, and I am convinced that I can do the best for my client in a face-to-face hearing.
It is hard for me to accept that a second-best solution is now being implemented on the rush as a standard for conducting oral proceedings before EDs. It may be pragmatic in the current situation, and it may be cost-effective in general. But:
Imposing videoconferencing on all users as a general rule, with very limited exceptions, is not user-friendly.
In my perception, there would well have been other, far less strict possibilities to promote increased usage of videoconferencing, e.g. by just accepting the videoconferencing request of parties that are willing to do the oral proceedings by videoconference.
See also the News Release on the epi‘s website: The President of the EPO had sent a letter to epi (received on 27 March 2020) informing about the planned changes, and user representatives have been informed about it at the SACEPO Working Party on Rules meeting of 31 March 2020. epi expressed concerns with letter of same day; these concerns had also been expressed in the said SACEPO WPR meeting.
UPDATE 20 April 2020:
Some Italian colleagues raised their concerns in an open letter of 11 April 2020 to the President of the EPO; the letter is available here.
UPDATE 22 April 2020:
epi is collecting the experiences of users with video conferencing before Examining Divisions and Opposition Divisions (according to the EPO pilot program). Please report good or bad experiences. Have your say on the epi forum here (EDs) and here (ODs). Thank you.
UPDATE 1 May 2020:
As reported on Kluwer Patent Blog, the EPO’s Central Staff Committee (CSC) apparently commented on the EPO’s intranet as follows (hyperlinks added, for ease of reference):
[It]would make sense to align the Office with the practice as well as with emergency provisions of its host countries. This would also appear mandated by the Protocol on Privileges and Immunities.
Holding oral proceedings as distributed videoconferences with the members of the division participating at different locations in the Office or at home is part of your initiative of generalising and making teleworking mandatory, which constitutes a fundamental change in the working conditions of a[n] major part of staff. It must therefore be subject to statutory consultation with the COHSEC [Central Occupational Health, Safety and Ergonomics Committee] and the GCC [General Consultative Committee] in accordance with Articles 38(2) and 38a(3) ServRegs.
Since it has been decided to extend the new procedures for oral proceedings in examination beyond the current Corona crisis, in-depth consultation is necessary. The same applies to opposition oral proceedings for which this new procedure appears likewise here to stay.
Opposition oral proceedings are by law public proceedings, cf. Article 116(4) EPC. It is not at all clear how this is guaranteed if the hearing is conducted as a ViCo (see e.g. T1266/07, points 1.2 and 1.3). The preliminary guidance given in VP1’s announcement (…) states that if the division “receive[s] requests of public to attend opposition proceedings performed via ViCo” it should “contact [its] line manager”, presumably that of the first examiner. Aside from the fact that the line manager is not competent for interfering with the discretionary decisions of the Divisions, the public does not need to “request” attendance, or to announce it in advance. A possibility for the public to attend should therefore be guaranteed in all cases, regardless of any advance request. The guidance thus brings examiners into a conflict between the expectations of management and the requirements of the EPC.
A problem of breach of confidentiality might further arise if members of divisions were not able to adequately isolate themselves, especially during examination non-public OP’s and during deliberations.
[A] yet unknown number of examiners cannot establish simultaneously both a Skype for Business connection and an EPO network connection via Pulse-VPN, as would be required for ViCo OPs, because the network hosts the application documents and the EPO email account. Only either connection works fine by itself.
At present there are no clear laws, no guidelines and no technical facilities to allow distributed oral proceedings in examination and opposition proceedings. In the latter case, even “non-distributed” ViCos with divisions on the Office premises would at present not rest on a solid legal basis.
The measures presently foreseen should be immediately halted and reviewed, also involving the Staff Representation.
In view of the additional strain on the examiner’s mental health, we can at present only advise divisions to judiciously choose, weighing all circumstances, whether to conduct oral proceedings by ViCo or rather to postpone them to a later date until circumstances for conducting them either as a classical ViCo from the Office premises or as “standard” proceedings in person are restored.
Note that I cannot independently verify that this is taken verbatim from the EPO’s intranet, but at least I have no reason to doubt that this is the case.
The official Annual Report 2019 of the FPC has been published yesterday. It comes along with an Executive Summary as follows:
The number of incoming cases fell compared to the previous year to 21 (29 in the previous year). The number of ordinary proceedings decreased (13; 22 in the previous year), while the number of summary proceedings remained virtually unchanged (8; 7 in the previous year).
During the reporting year, the Federal Patent Court handled 30 ordinary proceedings, of which seven were settled and 15 terminated by judgment. Eight proceedings were declared groundless. A total of ten summary proceedings were disposed of during the reporting year, of which one was settled, one was declared groundless and eight were terminated by judgment. The number of cases pending by the end of the year was practically halved due to the high number of cases settled and the simultaneous decline in incoming cases (21; 39 in the previous year).
Income rose to an all-time high of CHF 1,051,936 (CHF 965,741 in the previous year). This improved the Federal Patent Court’s coverage ratio from 54.4% to an alltime high of 60% despite expenses remaining largely the same (CHF 1,753,918; CHF 1,776,342 in the previous year).
Geschäftsbericht 2019 – Rückgang bei den ordentl. Verfahren, v.a. betr. Arzneimittel; rekordhohe Erledigungen führen zur Halbierung der Pendenzen und hohen Einnahmen aus Gerichtsgebühren; Kostendeckung bei 60%; https://t.co/ohyGYNRlwipic.twitter.com/WsaEAzbLAT
The number of incoming cases fell sharply, and 2019 is the second year in a row with a decline:
Actually, it was only in 2012 (the first operative year of the FPC) when less ordinary proceedings commenced at the FPC. But is that something to worry about? I don’t think so. Statistics with small numbers are frequently overinterpreted, and I do not feel that this is anything more than regular fluctuation. I would hold a bet that the number of incoming cases will go up again in 2020. Is anyone taking the challenge?
The overall number of concluded cases increased remarkably. It may well be that the President’s case management efforts bear fruit:
But for some reason the FPC itself does not expect to again conclude this many cases in 2020:
Maybe this is due to the reduced backlog which is now the lowest ever, by far. Only 20 ordinary proceedings and not a single summary proceeding were pending at the end of 2019:
It will be interesting to see how this develops further. But even a lower case-load would not be critical, in my perception, in view of the organisational setup of the FPC with mostly non-permanent judges.
What has been the rule in the early years of the FPC (and a selling point, so to speak) has meanwhile become the exception: A settlement by compromise.
While the previous Annual Report had still mentioned that
[o]ver the first seven years of activity, the ratio of cases settled stands at around 70%
the present Annual Report does not reflect at all on the ratio of cases settled. Admittedly, I am not overly enthusiastic about very high settlement ratios, let’s say of about 50% or more. But the present ratio is definitely not a selling point anymore. Let’s see whether the FPC will attempt to bring the settlement rate up again — and if so, how.
Finally, the Annual Report mentions that the President had to recuse in numerous proceedings (in view of his prior life as a patent litigator); this led to compensation of non-permanent judges of about CHF 140’000,– above the long-term average:
The Guidelines for Examination in the EPO («EPC Guidelines») and the Guidelines for Search and Examination at the EPO as PCT Authority («PCT-EPO Guidelines») give instructions on the practice and procedure to be followed in the various aspects of proceedings at the EPO.
Note that «[a]s a general rule, parties may expect the EPO to act in accordance with the Guidelines […]» at least to the extent first instance proceedings are concerned; see General Remarks (fifth paragraph). Accordingly, one should not blame an individual examiner for any wrongdoing as long as he/she is acting in conformance with the Guidelines. Rather, the Guidelines should be amended accordingly.
But … how would you have your say on the Guidelines?!
Here is the deal
The EPO has launched a public consultation on its Guidelines and invites all interested parties to participate. Comments can be submitted via an online form in any of the three official languages of the EPO. The consultation runs until 15 April 2020.
VESPA, the Swiss association of Swiss and European patent attorneys in private practice, is planning a submission on behalf of its membership.
Towards this end, VESPA would greatly appreciate if you send your comments on the EPO Guidelines by 31 March 2020 by e-mail to [email protected].
Please use the following forms which are based on the layout of the EPO’s input mask:
Apparently, the FPC had to deal with its first FRAND case already back in 2018, but it had been settled and thus no judgment is available. Not even the parties are known. But what is known is the following:
I had the pleasure to attend the conference on Case Management Issues in IP Proceedings earlier this week in St. Gallen, jointly organized by INGRES and SVRH. Expectedly, the discussion between judges, legal practitioners and patent attorneys was vibrant and open-minded. I gained a lot of full and frank insight into how cases are handled before the various commercial courts in Switzerland; these aspects of the conference will surely be dealt with in a summary to be made available here.
My personal take-away messages concerning proceedings before the FPC are the following:
No split reply anymore …
In the normal course of infringement proceedings, the FPC had ordered a partial reply from the plaintiff that only dealt with the nullity arguments brought forward by the defendant in his answer to the complaint, as a plea in defense. The FPC’s intention was to have a single statement of both parties on the two key aspects of the case, i.e. infringement and validity, before the parties were summoned for the instruction hearing. In the informal part of the instruction hearing, the court delegation could thus indicate a preliminary opinion on both key aspects, in view of the first exchange of arguments. Things may well have changed in view of the second exchange of briefs. But still, the interim assessment of the matter in the instruction hearing had been based on a well-balanced exchange of arguments: The first round had been completed. The exchange of briefs had been as follows:
In view of the obiter dictum in the Supreme Court’s recent decision 4A_70/2019 (discussed on this Blog here), the FPC has meanwhile discontinued the practice to split the reply in infrigement proceedings. Thus, the regular exchange of briefs in infringement cases will be as follows:
The reply will not be split anymore. The plaintiff will be invited to file his reply only after the instruction hearing. That’s a pretty standard exchange of briefs now, as it is known in any kind of proceedings governed by the CPC.
… and how that might influence the procedural strategy of the parties
Clearly, the assessment of validity of the patent in suit by the court delegation during the instruction hearing will be even more preliminary than ever before. The plaintiff will likely not have anticipated and addressed all the nullity arguments in the complaint. Thus, there will likely be nullity arguments on file on which the plaintiff / patentee has not yet been heard, and the court delegation cannot easily give an opinion on such arguments (except, maybe, for some formal / purely legal issues). Time will tell whether the instruction hearing will henceforth be of that much value to foster a settlement as it had been in the past; see the settlement rates over the years on this Blog here.
Some food for further thought, based on what has been discussed at the conference:
Will we see more infringement complaints with a full and frank discussion of potential nullity arguments, based on what has been argued in proceedings elsewhere, or in prior communication between the parties? That is pretty likely, indeed. It became clear in the discussion that such extensive frontloading has already happened.
A defendant in an infringement case has any motiviation to get invalidity reasonably addressed by the court delegation in the instruction hearing. But that will not happen to large extent when the plaintiff had just been silent on validity in his complaint. Still, the defendant might cure this ‘defect’ himself: He could gather what had been argued elsewhere by the patentee / plaintiff in defense of his patent or during prosecution, and disprove those arguments. The plaintiff would be hard pressed to contradict his own arguments that had been made elsewhere — and the court delegation could well indicate an opinion on such arguments in the instruction hearing, in my opinion.
Will patents more often be asserted only to a limited extent in the future, i.e. limited enough to render the (expected) plea for nullity in defense moot, yet broad enough to cover the allegedly infringing embodiment? In my perception, that would not be a sign of weakness at all. It is just pragmatic to assert the patent only to the extent necessary.
Yet another strategy of patentees might be to frontload various limited versions of the patent for assertion inter partes (verbal limitations) as auxiliary requests already with the complaint, to get a broad(er) picture of potential allowability in the instruction hearing.
Finally, patentees might also consider to assert the patent as granted, but to set out in the reasons that a whole lot of further features of the patent, from dependent claims or even from the specification, are fulfilled in the allegedly infringing embodiment. That leaves much leeway for various verbal limitations at a later stage of the proceedings.
Now, what if the instruction hearing turns out to be not of much value under the new regime anymore? Dieter BRÄNDLE mentioned that the Commercial Court Zurich had invited the parties to submit a brief statement only for consideration in the instruction hearing. If no settlement was reached and the parties wanted to rely on anything from their statements, they had to refile those arguments with their outstanding briefs.
Could that maybe a worthwile approach to bring the patentee’s complete view on defendant’s plea for nullity to the court delegation’s attention before the instruction hearing? Initial reactions were split: Would such a statement maybe considered as a reply in disguise? That could have fatal consequences with respect to an early closure of the file. However, I have also heard prominent voices in favor of this approach. Mark SCHWEIZER indicated that nothing like this would now be introduced in a rush now. Let’s see how the new regime works in practice. If it doesn’t, one might well consider this in more detail.
On a sidenote, I have recently been involved in a settlement conference in U.S. proceedings. The judge did a great job, even though no settlement could be reached in the end. The judge issued a very specific order beforehand about a confidential memorandum to be filed by both parties; see the Order for Settlement Conference. Along with a strict word count limit, I feel this is indeed very helpful for a judge to better understand where both parties are coming from. I am not overly enthusiastic about litigation in the U.S. at all, but this could be sth worth to consider.
Settlement talks in general
Should court-mediated settlement talks be held only with the two parties together? What about shuttle diplomacy, i.e. the judge(s) also talking with each party individually, e.g. to overcome certain personal tensions or hostile feelings between the parties and/or their representatives. Shuttle diplomacy (referred to as ‘Einzelabreibung’ or ‘Einzelabschlachtung’ by some participants) is practised at least by some Swiss courts; see Mark SCHWEIZER’s recent comparative study.
One potential downside is, of course, that a party may easily feel uncomfortable with the fact that some unilateral conversation is going on behind the scene between the judge(s) and the counterparty.
Mark SCHWEIZER had been asked whether shuttle diplomacy is done at the FPC. The answer was a clear ‘No’, and it became pretty clear that this was not an option for him at all.
Further news from the FPC
The FPC has recently issued ex parte interim measures without any written statement of the grounds, in accordance with Art 239(1) lit. a CPC. A written statement of the grounds must be provided if one of the parties so requests within 10 days of the notice being given of the decision; else, the parties are deemed to have waived their right to challenge the decision (Art 239(2) CPC). Since ex parte interim measures cannot be appealed in any event (see e.g. decision 134 III 417 of the Supreme Court), ex parte interim measures need arguably not come along with a written statement of the grounds in any event. It would have been interesting to learn more about the particular urgency of this matter that urged the FPC to explore this possibility. However, nothing will be published: The parties have settled. Darn!
As mentioned on this Blog here,a timeline for the further course of the proceedings is established during the instruction hearing if no settlement is reached. It became clear that not everybody at the FPC believes that this is feasible, but Mark SCHWEIZER said that he is a die-hard optimist.
Claim construction is key in almost every case — and it might perhaps play an even more important role in the instruction hearing than ever before. However, Mark SCHWEIZER indicated that claim construction is still frequently treated like a red-headed stepchild in the briefs, and that it is hard for the court to only catch a glimpse of a party’s understanding of a certain feature from e.g. the discussion of the cited prior art.
Mark SCHWEIZER mentioned on a sidenote that he would tend to always allow joint procedural requests of both parties, as long as they do not contravene the law. Let’s see how parties make use of this flexibility.
The unconditional right to be heard sometimes leads to an essentially meaningless exchange of party submissions after formal closure of the file. Both sides feel prompted to reply just in order to formally contest the other party’s allegations. The question came up whether a court could forward such statements with the comment that the submission is deemed to be contested in any event. Mark SCHWEIZER indicated that the FPC would look into this, in particular whether this would be compliant with the CPC.
Based on what had been mentioned at the conference I have to believe that the recent dissenting opinion had been supported by two judges; the actual split of the panel was thus 3:2. That’s a close call, indeed! See this Blog here for further information.
Plausibility is a big deal nowadays in almost every high stake patent case:
Does the application as filed in view of the common general knowledge at the filing date make it plausible that the invention really works?
This question addresses the sufficiency of disclosure requirement, Art. 83 EPC, when the alleged effect is recited in the claim (i.e. in case of a medical use claim).
Or, when the alleged effect is not recited in the claim, in assessment of the non-obviousness requirement; Art. 56 EPC:
Is it plausible that (essentially) all embodiments covered by the claim really solve the problem the invention allegedly solves?
Frankly, I am constantly struggling with all the hustle and bustle about ‘plausibility’.
What is it all good for?
‘Plausibility’ is nowhere mentioned in the law, and I question that the ‘plausibility’ criterion is sth that is really needed to come to ‘right’ decisions. Thus, I have eagerly awaited the VESPA autumn conference of 31 October 2019:
Plausibilität — Ein neuer Nichtigkeitsgrund in Europa?
Expectedly, it was a phantastic event. Lara Dorigo (Lenz & Staehlin), Prisca von Ballmoos (Merck Group) and Els Cielen (EPO) shed light on the issue from various perspectives. But still, I am struggling with the over-emphasis on ‘plausibility’ in recent times.
Here is why:
Sufficiency of disclosure
Sufficiency of disclosure is all about the basic trade-off in patent law: In accordance with Art. 83 EPC, the invention has to be disclosed in the application as filed
[…] in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art […]
for that it really provides a contribution to the art in a way that enables the skilled person to carry out the invention later, when the patent has lapsed.
Lara rightly pointed out that ‘plausibility’ is frequently associated with the necessity of including data in the specification:
I have at least two issues with that.
First, the EPC in no way requires data or experimental evidence, and I am convinced that one must not introduce such a requirement through the backdoor. An ‘armchair invention’ is perfectly fine. If an inventor correctly anticipates that his invention will work in practice, and the skilled person is enabled to carry out the invention based on the information given in the application as filed and in further view of the common general knowledge, I fail to see any issue under Art. 83 EPC.
And, second, there is just no basis in the law to only trust in god but not to trust an applicant. If there is a firm statement in the application as filed concerning a certain effect being achieved, I cannot see how that could have been held ‘not plausible’ per se. Unless, of course, there are indications to the contrary. But if that is not the case, then a mere statement w/o any data or experiments should suffice, in my opinion.
Problems typically arise with (overly) broad claims and/or very vague specifications. No applicant / patentee should be surprised to get in trouble in such cases. But ‘plausibility’ is not the real issue, in my perception. I feel that the problem in such cases is rather that the invention just cannot be worked by the skilled person without undue burden. The ‘undue burden’ criterion is established in the case law and EPO practice since ages, and it would well be sufficient to sort out those cases that only confront the skilled person with some indications of how to set up a research program in the hope to finally make the invention. A prime example in this respect is T 609/02 — Salk Institute / AP-1 complex (HTML | PDF), specifically referring to the ‘undue burden’ criterion in ¶ 12. Consequently, the Board held that the alleged invention was insufficiently disclosed.
No need to fiddle around with ‘plausibility’ in such cases.
T 939/92 — AgrEvo / Triazoles (HTML | PDF) is mostly referred to as the origin of all ‘plausibility’ discussions. Interestingly, though, T 939/92 is silent about ‘plausibility’. It rather uses the term ‘credibly’. In a nutshell, T 939/92 had held that an ambitious technical problem (herbicidal activity) could only be taken into account if it could be accepted as having been solved, i.e. if it would be credible that substantially all claimed compounds possessed this activity — which was clearly not the case here.
Now, let’s have a look at the most controversially discussed case T 488/16 — BMS / Dasatinib I (HTML | PDF). The alleged effect was not recited in the claim; the single claim at stake was a straight forward compound claim:
Sufficiency of disclosure was not an issue; the alleged effect is not recited in the claim. ‘Plausibility’ was thus dealt with by the Board in the assessment of inventive step. The Board held in ¶ 4.9:
In the board’s judgement, it is not acceptable to draw up a generic formula, which covers millions of compounds, vaguely indicate an “activity” against PTKs and leave it to the imagination of the skilled reader or to future investigations to establish which compound inhibits which kinase and is therefore suitable to treat the respective diseases associated therewith. In this context, the board notes that it has been acknowledged by the appellant that the skilled person would not expect that each compound would be active against all kinases.
It is pretty evident from the above that a second medical use claim, i.e. a product claim with the alleged effect being recited in the claim, would have been doomed for lack of sufficiency of disclosure. No discussion of ‘plausiblity’ would have been necessary at all; it could have been a straight forward revocation based on the ‘undue burden’ criterion, essentially in line with T 609/02 — Salk Institute / AP-1 complex (HTML | PDF), ¶ 12.
But since a claim on the compound per se was at stake, the Board had to deal with it in the assessment of inventive step; Art. 56 EPC. But that claim is even broader than any medical use claim. Could the result be any different? That would have been somewhat strange, wouldn’t it?
This is where T 1329/04 — Johns Hopkins / Factor-9 (HTML | PDF) comes into play (hn):
The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve.
Against this standard, the patentee in T 488/16 failed and the patent was revoked. The Board was not convinced that the technical problem had already been solved at the filing date, in particular by dasatinib. Apparently, two post-published documents were the first disclosure showing that for dasatinib the purported technical problem has actually been solved. In accordance with established case law, these documents were therefore not taken into consideration in the assessment of inventive step. Thus, the problem to be solved had to be defined in a less ambitious way, namely as the provision of a further chemical compound — a non-starter at the EPO in any event.
I fully agree with the result, but I am not convinced that one really needs the concept of ‘plausibility’ for that. I feel the Board could just have held that the specification re dasatinib was so vague and unspecific that it appears that the invention (in terms of an actual ‘contribution to the art’) had not yet been made on the filing date.
Lara pointed out that the concept of ‘plausibility’ has not yet appeared in Swiss jurisprudence. Frankly, I feel it is not being missed.
Tobias Bremi mentioned in the final discussions that the concept of ‘plausibility’ is sth that judges in various jurisdictions are struggling with. Lack of ‘plausibility’ may have been useful to sort out some cases, but any broader application might well have the (unwanted) consequence that ‘armchair’ inventions were prohibited.
As discussed a while ago on this Blog here, the settlement discussion at the occasion of a main hearing is non-public at the FPC. I trust that this will not change any time soon, in view of a decision of the Supreme Court that has been published earlier this week (4A_179/2019 of 24 September 2019). In that case, an accredited court reporter of the Republik had been asked to leave the room for the settlement discussion at the end of a main hearing in proceedings at the Zurich labor court. Ultimately, the Supreme Court has now endorsed this exclusion of the public from the settlement discussion:
Die Bemühungen des Gerichts, zwischen den Parteien zu vermitteln, gelten nicht als Gerichtsverhandlung respektive Verhandlung und unterstehen nicht dem Grundsatz der Justizöffentlichkeit.
Maybe, the Supreme Court telegraphed a message by explicitly saying nothing (emphasis added):
Demgegenüber ist hier nicht zu beurteilen, ob es zulässig wäre, die Öffentlichkeit über die Vergleichsgespräche hinaus generell von Instruktionsverhandlungen auszuschliessen, zumal an solchen nach Art. 226 Abs. 2 ZPO unter anderem auch der Sachverhalt ergänzt und die Hauptverhandlung vorbereitet werden kann ([…]).
In English (emphasis added):
On the other hand, it is not necessary here to assess whether it would be permissible to generally exclude the public from instruction hearings beyond the settlement discussions, especially since, according to Art. 226 para. 2 CPC, the facts of the case can be supplemented and the main hearing can be prepared in the instruction hearings ([…]).
The FPC took note. Here is the FPC’s tweet of earlier today:
BGer vom 24. September 2019: Gericht darf Öffentlichkeit, inkl. Medien, von informellen Vergleichsgesprächen ausschliessen; offen gelassen, ob das auch für den formellen Teil der Instruktionsverhandlung gilt; https://t.co/3bkf7ZyXiTpic.twitter.com/0zi1jYGjNp
Indeed, the Supreme Court did leave it undecided whether the public could also be excluded from the formal part of an instruction hearing. Still, the Supreme Court made it crystal clear that it does not want to see its judgement being read on instruction hearings in general, in view of what is (or maybe) going on in (the formal part of) an instruction hearing — contrary to mere settlement discussions, be it during a main hearing or an instruction hearing.
In my perception, that’s a somewhat deafening silence on this issue, isn’t it?
The annual INGRESevent of 2 July 2019 (‘Praxis des Immaterialgüterrechts’) has been very interesting and enjoyable, as always. I am not intending to anticipate the full report about the event that will be prepared by Estelle SEILER for publication in sic!, but there was one specific discussion following-up on Susanna RUDER‘s presentation that I am still digesting.
Susanna had opened the discussion with the following (somewhat provocative) questions:
May the court correct a claim construction mutually agreed upon by the parties? If so, under which conditions?
May the court correct divergent claim constructions of the parties if they both are wrong? If so, under which conditions?
In first place, this gave rise to some discussion about the difference between questions of fact on the one hand (governed by the principle of party presentation [Verhandlungsmaxime]), and questions of law on the other hand (which the court may freely assess).
Michael RITSCHER teased the Supreme Court judges in the room with the remark that aspects are typically considered questions of law when the Supreme Court wants to decide on them. Else, they are (only) questions of fact and remain untouched by the Supreme Court.
In reply, Kathrin KLETT clarified that a question of fact is something about which evidence can be gathered. A legal issue, on the other hand, is something that can be discussed.
Next, on an abstract level of the discussion, there was some agreement that claim construction is a question of law. And I fully concur therewith — in general. But life is complicated. In an attempt to nail the abstract discussion down with an example, I mentioned the following example of a nullity case (adapted from some thoughts on this Blog here):
A claim feature of the attacked patent is “round” (rund);
The parties mutually agreed that “round” means “circular” (kreisrund).
The patent is only attacked for lack of inventive step / obviousness because the prior art on file only showed a polygon, but no circular shape (i.e. “round” as mutually agreed upon by the parties). Let us further assume that the attack for lack of inventive step is weak, for any reason whatsoever.
But: In a single, isolated example 97 on page 35 of the patent, the shape of a “polygon” is used. Neither party ever pointed to that example.
Now, just imagine the potential consequences if the court points to that example on page 35 and corrects the claim construction mutually agreed upon by the parties: The prior art on file would in fact be novelty destroying. I argued that this should not happen because it contravenes the principle of party presentation (Verhandlungsmaxime).
Interestingly, Mark SCHWEIZER jumped in and said that there are two separate issues involved: First, the court should indeed not pinpoint to the example on page 35. Second, he confirmed that in his view claim construction is a question of law which can and should be adressed by the court.
I did not manage to follow-up on this remark. Now, what does that mean when both issues are intermingled in a specific situation like the example above? In my perception, proper claim construction can only be done in light of the specification. But may the court only construe the claim in light of the specification to the extent pleaded?
Any thoughts, anyone? Or would someone please get this clarified in a case to be decided by the FPC? 😉
Proper assignment of the right to claim priority is intensely discussed in recent times, in particular the way how the EPO addresses such issues.
Why is that?
Most attention is where the biggest money is. Or where the most spectacular mishap occurs. Or both. The Broad Institute is upon to lose its CRISPR-Cas gene editing patents in Europe, for a lack of entitlement to priority. It’s not a question of ‘same invention’ this time, but rather of identity of inventor(s) / applicant(s) in both the priority application and the subsequent application.
Some priority basics at the EPO
Art. 87 to 89 EPC provide a complete, self-contained code of rules on claiming priority for the purpose of filing a European patent application (see J 15/80, confirmed in e.g. J 9/07). However, since the EPC — according to its preamble — constitutes a special agreement within the meaning of Art. 19 PC, it is clearly intended not to contravene the basic principles concerning priority laid down in the latter (see T 301/87, G 3/93 and G 2/98).
The EPO does not normally check the validity of a priority right during examination. A check, however, is made if relevant prior art has been made available to the public within the meaning of Art. 54(2) EPC on or after the priority date claimed and before the date of filing or if the content of the European patent application is totally or partially identical with the content of another European application within the meaning of Art. 54(3) EPC, such other application claiming a priority date within the above-mentioned period. In opposition proceedings this applies where prior art is invoked in connection with a ground for opposition under Art. 100(a) EPC in relation to which the priority date is of decisive importance. If the claim to priority turns out to be not valid, intervening prior art may lead to revocation of the patent.
All this is not very exciting; it’s just the law because the patentee cannot enjoy the benefit of an earlier effective date.
It is established practice at the EPO that the claim to priority is invalid if, at the filing date of the subsequent application, the applicant did not have the right to claim priority. Further, it is settled case-law at the EPO that the validity of the transfer of the right to claim priority is a matter of national law (cf. e.g. T 1008/96). All this is even reflected in the Guidelines, A-III, 6.1:
[T]he transfer of the application (or of the priority right as such) must have taken place before the filing date of the later European application and must be a transfer valid under the relevant national provisions. Proof of this transfer can be filed later.
A revolutionary new approach?
Tobias Bremi (second ordinary judge at the FPC) recently made an interesting contribution to the discussion on priority issues at the Fordham Conference (summarized on IPKat here). Tobias argued:
[The] EPO is not competent to assess entitlement to priority issues. […] As long as the formalities encoded in the law have been complied with, entitlement is to be presumed by the EPO.
And, finally, with respect to the CRISPR-Cas case referred to above, Tobias mentioned that he is
still hopeful that they will reconsider in the next instance.
The FPC has distributed a link to IPKat’s report, and the tweet is strict to the point: In Tobias’ view, third parties have no standing to challenge the assignment of the right to priority.
That’s a pretty bold statement, and Judge Grabinski apparently referred to it as ‘revolutionary’. Tobias’ key arguments are as follows:
Analogy to entitlement proceedings
Tobias is cited on IPKat as follows:
Once the formal requirements for claiming priority have been complied with, there is actually no legal basis for questioning entitlement, there is no legal basis for the EPO to ask for proof, and there is also no legal basis for finding a loss of the priority right. [T]he general idea of the EPC was to keep the EPO completely out of entitlement issues as a matter of principle for a number of reasons and to leave that exclusively to the jurisdiction of national courts. It is for national courts to decide on entitlement issues when challenged by an allegedly entitled person. As long as the formalities encoded in the law have been complied with, entitlement is to be presumed by the EPO.
General principles of property law
In Tobias’ view,
[i]t goes against the general principles of property law that priority entitlement issues can be brought up by any third party before the EPO and not just by the one who is allegedly entitled. This opens up rather opportunistic and destructive battles on the validity of priority claims.
Clash with the Paris Convention
With respect to the same/all applicant(s) approach of the EPO (see e.g. T 788/05), Tobias held that
if the EPO uses that approach, actually they apply the ‘lex protectionis’, i.e. the law of the country where protection is sought, to the priority applicants. However, the gist of the Paris Convention is to reduce impediments for international protection.
In Tobias’ view, these principles are in jeopardy by forcing applicants to comply with the law of the country of subsequent filing.
The analogy with entitlement proceedings is flawed
Entitlement proceedings concern only two sides; i.e. the applicant / patentee on the one hand, and yet another party who believes to be the legitimate owner on the other hand. The EPC explicitly applies the legal fiction that the applicant is entitled (Art. 60(3) EPC), until someone else comes along at a national court and challenges this. The EPO then steps back until the national court has decided on this issue, and thereafter continues its proceedings with the legitimate owner. In my view, this makes perfectly sense since the public is not concerned in any way.
On the other hand, entitlement to priority affects the effective filing date and is therefore decisive for the EPO to correctly assess patentability. There is no legal fiction of entitlement to priority. The EPO fulfills its duties according to Art. 114 in conjunction with Art. 87 to 89 EPC and aims to grant / maintain only those patents that comply with the EPC, to full extent. Rightly so.
General principles of property law are not contravened
It is not just a ‘third party’ who challenges the right to claim priority. It is either the EPO when fulfilling its duties to check for compliance with the EPC, or it is a party to the proceedings in opposition / appeal proceedings who raises the issue. It is in no way ‘destructive’ or ‘opportunistic’ by the EPO or parties to proceedings to challenge a patent for non-compliance with the law. I fail to see how this might go against general principles of property law.
There is no clash with the Paris Convention
The Paris Convention clearly aimed to facilitate international filings. The current practice at the EPO in no way contradicts this purpose. It definitely makes foreign filings much more simple than before the Paris Convention. Admittedly, the European approach is not absolutely fool-proof by design. But it doesn’t have to be. It’s the law: Practitioners are navigating a jungle of pitfalls every day — not only in their home jurisdictions, but in particular abroad. Messing up a priority claim before an IP5 office is just one of many potential nightmares.
The mere fact that the USPTO more easily acknowledges entitlement to priority even in cases where not all initial applicants are named in the subsequent application doesn’t impress me much. In my view, they just overachieve the minimum standards defined in the PC. But that’s no good reason to abolish with decades of consistently developed case-law at the EPO.
Consider a world where the EPO does not care anymore about who claims priority.
Bad guys could systematically just grab all early published European patent applications, or utility models, that are still within the priority year and then file subsequent applications with the EPO, claiming priority. The applications could proceed to grant without the entitlement to claim priority ever being challenged. Bad guy could only be stopped by the legitimate owner of the utility model. If that just doesn’t happen because he/she doesn’t care anymore, or is afraid of costly litigation, bad guy has got the patent. This cannot be it.
Stay firm, EPO.
Reported by Martin WILMING
Nil. I have nothing to disclose. In particular, I am not in any way engaged in the CRISPR-Cas proceedings referred to above. /MW
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