PatA revision: The dust is settling (slowly)

Reading time: 3 minutes

The envisaged changes to the Swiss PatA have caused a very intense discussion amongst stakeholders. Opinions could hardly have been more different, ranging from outright damnation of examination on the merits («bureaucratic monster») to wholehearted welcome («overdue»).

See this Blog here for some background information about how it all started; the draft bill is commented on this Blog here.

There had been a public consultation of the draft bill, with a lot of individual contributions. An official summary of the contributions is available here.

Now, the dust begins to settle. The Federal Council has informed the public on 18 August 2021 that some (major) adjustments will be made to the draft bill, as follows.

The tried and tested ‘unexamined’ Swiss patent is staying

In general, a patent application will not be examined on the merits, i.e. for novelty and inventive step. As a result, an ‘unexamined’ — but less expensive — IP right will continue to be available to inventors, as called for by the motion.

In turn, the unexamined utility model (with reduced term) that was foreseen in the draft bill is off the table.

fully examined Swiss patent on request

It shall be possible to request examination on the merits.

What is not fully clear to me, though, is whether only the applicant may request examination, or whether any third party can also do so (like, e.g., in Germany; §44(2) PatA). I have much sympathy for the latter. It is an element to improve legal certainty, which is an explicit aim of the motion.

Compulsory search reports

To improve legal certainty also for the ‘unexamined’ patent, every patent application shall be supplemented with a compulsory search report. The Federal Council holds that it will therefore be possible to better evaluate whether the invention is patentable.

I doubt that this will really improve legal certainty. A negative search report is mostly not the end but rather the beginning, i.e. the beginning of a thought process on the applicant’s side of how to proceed to grant. In most cases, there is patentable subject-matter. A negative search report might provoke a counter-productive ‘no risk’ illusion for the public.

Further, I wonder how tax authorities might react on a ‘negative’ search report in the context of the patent box. It would be a pity if this creates a ‘presumption of invalidity’ and applicants then have to go the long way through examination on the merits in order to benefit from the patent box.

Streamlined appeal procedure at the FPC

The opposition procedure introduced in 2008 shall be dispensed with altogether. It had never been used anyway.

Instead, the Federal Council intends that IPI decisions be reviewed in appeal proceedings directly through the FPC. I understand that this shall also apply to the decision to grant a patent, i.e. that third parties will be able to challenge the grant directly at the FPC, as foreshadowed by the opinion of Prof. Rainer SCHWEIZER:

It remains to be seen how this will actually be put in place, but with a (very) low threshold for the necessary legal interest of a third party and competitive fees of the FPC for these proceedings, I have no doubt that this will work smoothly.

The Federal Council has mandated the Federal Department of Justice and Police (FDJP) to submit a dispatch by the end of 2022.

Reported by Martin WILMING

SUMMARY OF PUBLIC CONSULTATION

INDIVIDUAL SUBMISSIONS

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Will the Enlarged Board of Appeal descend into the rabbit hole of ‘plausibility’?

Reading time: 10 minutes

Case No. T 116/18 – 3.3.02 (EPO) | Hearing of 22 July 2021

Board of Appeal 3.3.02 envisages to refer questions to the Enlarged Board of Appeal with respect to one of the most fancy issues in patent matters in recent times, i.e. plausibility. I have vented about the excessive reliance on ‘plausibility’ earlier on this Blog here.

The underlying case

The specific case concerns EP 2 484 209 B1 in opposition/appeal proceedings; see the EPO Register and the file wrapper for further information.

According to the preliminary opinion, it is common ground between the parties that WO 03/015519 A1 (referred to as D4) should be considered as the closest prior art, and the Board did not see any reason to deviate from this view; see ¶8.1. The claimed subject-matter differs from D4 in that both the compounds according to formula Ia and thiamethoxam have been selected from the respective broader teachings of D4. Formula Ia is this Markush formula:

Formula Ia

wherein R1 is a halogen atom or a C1-6 haloalkyl group, R2 is a halogen atom, R3 and R5 each are a C1-6 alkyl group, R4 is a hydrogen or halogen atom, and X is N, or a salt thereof (with the provisio that three specific compounds (not shown here) are excluded for most of the contracting states).

The dissent starts with the technical effect achieved by the distinguishing feature: The patentee asserts that there is a synergism between thiamethoxam and the compounds of formula Ia as incecticides, while the opponent holds that there is no technical effect achieved by the distinguishing feature at all.

What I believe is important to note is that the synergism had already been indicated in the application as filed; see e.g. [0009]. What is more, a synergism has been shown for two embodiments of formula Ia in the application as filed (examples 2 and 5). Further, even the closest prior art D4 had already been mentioned in the background section of the application as filed; see [0004], ‘Patent Literature No. 2’.

the questions

The minutes of the hearing of 22 July 2021 hold that the provisionally formulated questions read follows:

If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted data or other evidence to proof such effect, such data or other evidence having been generated only after the priority or filing date of the patent (post-published data):

(1)   Should an exception to the principle of free evaluation of evidence (see e.g. G 1/12 reasons 31) be accepted in that the post-published data must be disregarded on the ground that the proof of the effect rests exclusively on such post-published data?

(2)   If the answer is yes (post published data must be disregarded if the proof of the effect rests exclusively on these data): can post-published data be taken into consideration if based on the information in the patent application the skilled person at the relevant date would have considered the effect plausible (ab initio plausibility)?

(3)   If the answer to the first question is yes (post published data must be disregarded if the proof of the effect rests exclusively on these data): can post-published data be taken into consideration if based on the information in the patent application the skilled person at the relevant date would have seen no reason to consider the effect implausible (ab initio implausibility)?

The parties had been asked for comments on the spot in the hearing. The appellant would prefer to more precisely define the effective date, as well as to address the full ambit of the claim more precisely. The respondent suggested that an additional question should address the burden of proof of the occurrence or absence of the technical effect.

case law cited by the board

Not much more can be learned from the minutes, but the earlier preliminary opinion of the Board gives some more insight into what this Board considers to be deviating case-law.

Ab-initio plausibility criterion applied

In first place, the Board acknowledges that according to various decisions it is a precondition for taking into account post-published evidence to demonstrate a certain effect that it was already plausible at the filing date that said effect was obtained (which is what the Board refers to as ‘ab initio plausibility’); ¶8.5. In particular, the Board referred to the following decisions:

Ab-initio plausibility criterion not applied

On the contrary, the Board holds that the legal basis for such a criterion «has been questioned» — however, without explaining where or why; ¶8.6. I hope the Board will expand a bit more on that in the reasoned decision. For the time being, the Board merely holds that

[…] in numerous decisions, the ab-initio plausibility criterion was not applied.”

By way of example, the Board referred to the following decisions (of one and the same Board, i.e. Board 3.3.10):

In the former decision, the Board had held that

[…] any effects may be taken into account, so long as they concern the same field of use and do not change the character of the invention.

In the latter decision, it had been held that not taking into account the post-published experimental results would contravene the gist of the problem-solution approach: Since the applicant / patentee might well be faced with an unexpected document as closest prior art, based on which the distinguishing feature and the objective technical problem has to be defined, it should be possible to show by way of experimental evidence that this newly formulated technical problem has indeed been solved.

The preliminary opinion further referred to T 31/18 (PDF | HTML), ¶2.5.2 where a similar approach had been taken.

(No) diverging case law

The decisions referred to by the Board where the ‘ab-initio plausibility’ criterion had been applied concerned the situation where the technical problem allegedly solved by the invention had not been reformulated. The patent applications purported that a certain effect had been achieved, and it was all about whether or not this had been indeed ‘plausible’ from the application in view of the common general knowledge itself are not. In fact, the decisions are classic examples of (very) broad claims supported only by vague — if not speculative — specifications.

On the contrary, the decisions referred to by the Board where the ‘ab-initio plausibility’ criterion had not been applied concerned the situation where the technical problem had to be reformulated in an objective manner, in view of the objectively closest prior art and the resulting distinguishing feature.

In my view, the second line of decisions in no way contradicts the first line of decisions referred to by the Board. Actually, I have much sympathy for a different approach in these two situations. In my view, it is settled case-law of the Boards of Appeal that the definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting one forward, requires that it was at least made plausible by the disclosure in the application as filed that its teaching indeed solved the problem it purported to solve; see e.g. T 1329/04. The situation where the application as filed «purports to solve» a certain technical problem is obviously the one where the definition of the technical problem has not been changed. In such cases, the onus is understandably on the applicant in first place to show that the problem is indeed solved, in particular when a very broad claim (sometimes covering thousands of compounds) is supported by almost nothing in the specification. Frankly, how likely is it that essentially all compounds within a vast variety covered by a Markush formula will do equally good?

On the contray, when the objective technical problem is reformulated (but still within the gist of the original invention) in view of e.g. an unexpected closest prior art being assessed in the problem-solution approach, I cannot see how an applicant could be barred from presenting post-published evidence in support of his argument that this (re-formulated) problem is actually solved. Doing otherwise would mean that an applicant would have to anticipate any potentially differentiating features over a myriad of unknown prior art documents, in order to provide at least some indications of plausibility already in the application as filed — which is obviously not doable. This is why I feel that the second line of case law is a very sensible approach of how to deal with post-published evidence in support of a certain technical effect in the situation where the applicant/patentee is confronted with a reformulated objective technical problem: More liberally than in situations where the applicant could and should have made the technical effect plausible upfront, i.e. when it is still the very same effect he purported to have solved in the application as filed.

To be clear, I am not advocating in favour of the plausibility criterion in general. Very specific ‘armchair inventions’ (e.g. claiming specific compound) are perfectly fine, in my view, even without any further explanation of how and why the invention works. As long as the  invention does work and the skilled person is sufficiently enabled to work the invention based on the information in the application as filed, there is no reason to demand more from an applicant. However, claims covering a huge number of compounds that allegedly all solve the very same technical problem are suspicious right from the outset. In such cases, it is appropriate to demand more from an applicant in order to properly support the assumption that the claimed effect really occurs over the entire scope.

In sum, I currently fail to see diverging case law of the Boards of Appeal in this respect. And there is no need for an exception to the principle of free evaluation of evidence. As always, it depends whether or not post-published evidence should be taken into account. And I feel it is important that the Boards have some leeway to accept or refuse post-published evidence depending on the circumstances, as outlined above.

Now, we have to wait for the decision of the Board with the actual wording of the questions to be referred to the Enlarged Board of Appeal. Based on the provisional formulation of the questions and in view of the above, I feel that the referral would be inadmissible because there simply is no diverging case law. I would not mind.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. T 116/18 – 3.3.02 (EPO) | Hearing of 22 July 2021

Appellant / Opponent:

Syngenta Ltd.

Representative: HGF

Respondent / Patentee:

Sumitomo Chemical Company, Ltd.

Representative: Winter, Brandl – Partnerschaft mbB

Composition of the Board:

Chairman: Marcus O. MÜLLER
Rapporteur: Achim LENZEN
Minute writer: Paul DE HEIJ

MINUTES

PRELIMINARY OPINION

PATENT AT STAKE

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Transparency of how panels of judges are composed: Room for improvement

Reading time: 2 minutes

The Control Committees (CC; ‘Geschäftsprüfungskommissionen’, GPK in German) of both the Council of States and the National Council recommend that the Federal Courts improve transparency about the formation of the panels that are handling the individual cases; see the press release of 24 June 2021 and the report of the CC and the underlying report of the Parliamentary Control of the Administration below.

Formation of panels at the FPC is governed by Art. 21 PatCA and Art. 7 PR-PatC. Even though e.g. language skills are not mentioned therein, this criterion is actually used in the formation of the panels.

Further uncodified criteria which are actually used are the relation between different cases as well as involvement in previous cases:

Accordingly, the CC’s report recommends that the Federal Courts, including the FPC, check and amend their Regulations, to bring them in line with what is actually done and to improve transparency:

The CC further mentions that even though the formation of the panels via two Excel lists is generally okay, it is not a system that is readily feasible to control the formation of the panels in a transparent manner. In particular the undocumented aniticipation of conflicts of interest is mentioned in the CC’s report. Further, the selection mechanism of the judges with a background in law is held «unclear», as well as the respective share of judges with a background in law or technology on a panel:

The CC recommends that the formation of panels be better documented, and that a report shall be made available both internally within the courts as well as to the CC:

In addition, it is recommended to include at least an abridged information of the public in the annual reports:

It will take a while for the Federal Courts to review these recommendations and to implement appropriate measures, in close cooperation with the Federal Supreme Court.

Reported by Martin WILMING

REPORT CC

REPORT PCE


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Ypsomed sued twice(!) for patent infringement by its UnoPen™

Reading time: 4 minutes

As noted earlier on this Blog here, we knew that a medical device company has been sued by two competitors for infringement of their respective patent(s) by one and the same injector pen.

Now we know that it’s Ypsomed’s UnoPen™ that is being haunted after:

With some further digging in the EPO dockets, I have now all the pieces together to summarize the essentials of the two cases that are pending at the FPC, as follows:

O2020_001

Becton, Dickinson and Company
./.
Ypsomed AG

Patent in suit: EP 2 825 227 B1 (limited, inter partes);
see EPO Register and Swissreg for further bibliographic information.
Main hearing: 4 June 2021, 10:00 hrs
BD logo

From Ypsomed’s acceleration request in EPO opposition proceedings, it is evident that corresponding infringement proceedings are pending before the Landgericht München I, case no. 21 O 367/20.

Oral proceedings in opposition at the EPO are scheduled for 18 October 2021. The summons came along with a preliminary opinion of the OD (cf. p. 2 et seqq.). By way of its main request, BD currently defends the patent in limited form only. However, it is currently unclear whether this wording corresponds to the limitation that has been made inter partes in the Swiss proceedings. The OD’s preliminary opinion holds that the main request is unclear and comprises unallowable amendments. Novelty / obviousness is not dealt with in-depth, for the time being.

In view of the branding on this exhibit, I feel confident enough to say that BD is represented by MLL in the Swiss proceedings.

O2017_022

Sanofi Aventis Deutschland GmbH
./.
Ypsomed AG

Patent in suit: EP 2 437 830 B2;
see EPO Register and Swissreg for further bibliographic information.
Sanofi logo

While opposition / appeal proceedings were pending at the EPO, Ypsomed interevened as an assumed infringer. From the redacted complaint it is clear that Sanofi has invoked yet two further European patents; see N 5.

Sanofi is represented by Homburger‘s Andri HESS and Roman BÄCHLER.

These proceedings have been derailed well after the expert opinion of judge-rapporteur Bremi had been established and most likely only shortly before the main hearing; see this Blog here. From the Supreme Court judgment 4A_243/2020, it is evident that Ypsomed is represented by Rentsch Partner.

A little bit of background

Ypsomed logo

It is not the first time that Ypsomed and Sanofi have locked jaws in patent infringement proceedings. They settled «all currently pending patent disputes and other litigations» in April 2008. At that time, Ypsomed had attacked Sanofi’s SoloStar®. The tables have turned now when Sanofi is seeking injunctive relief.

Noteworthy, Ypsomed’s growth in the pen business is, to large extent, attributable to the UnoPen™:

What is more, Ypsomed is being sued by a (very) good customer:

It will be interesting to see how all this finally unfolds. Stay tuned.

Reported by Martin WILMING

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G 1/21: State of play (continuously updated)

Reading time: 11 minutes

As mentioned earlier on this Blog here, the following question has been referred to the Enlarged Board of Appeal (EBA), with interlocutory decision T 1807/15 of 12 March 2021:

Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?

The docket to watch is EP 1 609 239.

I.  Composition of the EBA

In a communication of 1 April 2021 (to be published in the OJ), the EBA noted that the panel considering the referal G 1/21 will be composed as follows (L, legal member; T, technical member):

Mr. C. Josefsson SE L, Chairman
Mr. W. van der Eijk NL L, rapporteur
Mr. I. Beckedorf DE L
Mr. R. Arnold GB L, external
Mr. E. Chatzikos GR L, external
Mr. G. Eliasson SE T
Ms. A. Ritzka DE T

This composition has first been indicated with a communication of the EBA of 17 March 2021.

Isarpatent has taken over representation of the opponent / appellant with letter of 27 April 2021, suggesting that the referred question should be answered in the negative. In addition, C. Josefsson, A. Ritzka and G. Eliasson are objected for the appearance of bias (see above).

In several amicus curiae briefs, third party observations and by the appellant / opponent, some members of the panel had been put in question in view of the appearance of bias. With interlocutory decision of 17 May 2021, the EBA indeed changed the composition of the panel, as follows:

Mr. C. Josefsson
Mr. F. Blumer
SE
CH
L, Chairman
L, Chairman
Mr. W. van der Eijk NL L, rapporteur
Mr. I. Beckedorf
Mr. T. Bokor
DE
HU
L
L
Mr. R. Arnold GB L, external
Mr. E. Chatzikos GR L, external
Mr. G. Eliasson SE T
Ms. A. Ritzka DE T

The decision holds that the further objections to Ms. A. Ritzka and Mr. G. Eliasson (X and Y) were unfounded. Accordingly, they are not replaced.

II.  No stay of first instance proceedings

The President of the EPO has decided that

[…] during pendency of the referral oral proceedings before examining and opposition divisions will continue to be held by VICO as under current practice, i.e. without requiring explicit agreement of the parties.

See the EPO’s news release of 24 March 2021 for details. The official notice (for publication in the OJ) holds that this is meant 

[…] to guarantee access to justice and ensure the functioning of the EPO […].

With a communication of same day, the Boards of Appeal have informed the public that new Art. 15a of the RPBA was approved by the Administrative Council on 23 March 2021 (Art. 15a is accordingly in force since 1 April 2021). Further, the following was noted (emphasis added):

Between May 2020 and February 2021, oral proceedings were held by videoconference in over 380 appeal cases. Initially, oral proceedings were held by videoconference only if all parties agreed. Since 1 January 2021, they have also been conducted without the consent of the parties in appropriate cases. The BOAC and the Administrative Council have confirmed this practice in new Article 15a RPBA (see CA/5/21, points 5 and 7).

The notification is silent about whether or not this practice is being continued or not pending the referral to the EBA.

III.  Oral proceedings before the EBA

It is pretty clear that this referral is on the fast track.

It took the Registry of the EBA only 5 calendar days from the date of the referring decision (including a weekend) to issue summons to oral proceedings. They are scheduled to take place on 28 May 2021 at 09:00 hrs, by videoconference:

This is a very tight schedule. What is more, the EBA noted that

[…] a decision of the points of law referred to the Enlarged Board could be issued promptly

if the parties consider oral proceedings before the EBA not to be expedient and/or envisage not to attend the oral proceedings:

III.1  First ‘oral proceedings’ of 28 May 2021

The patentee / respondent has indicated with letter of 26 April 2021 that he will not attend the ‘oral proceedings’ before the EBA; see here.

With a communication of 14 May 2021, registration of members of the public to watch the live stream (via Zoom) has been opened.

waiting …

However, most of the hearing took place in camera. The interlocutory decision of the EBA on the recomposition of the panel had been challenged by the opponent / appellant with letter of 24 May 2021, inter alia for non-compliance with the Business Distribution of the EBA. As indicated in a notification of the EBA of 27 May 2021, the EBA discussed the substance of these requests while the public was excluded.

The EBA later announced its decision that all requests of the opponent / appellant raised with letter of 24 May 2021 were either inadmissible or refused (except for the one that aimed to discuss the issue on 28 May 2021, which is what obviously happened). The reasoned decision has been published on 29 June 2021.

In a public part of the hearing, the EBA dealt with yet another procedural objection. It appears that the opponent / appellant had onlyy been served with the EPO President’s comments two (2) days before the hearing. Even though the EPO President’s comments had been published on the EPO website on 28 April 2021, the opponent / appellant (rightly!) argued that parties cannot be expected to collect the relevant bits of information to comment on from such sources. (Haste makes waste.) Accordingly, the opponent / appellant was asked how much time he would need for considering / commenting on the EPO President’s comments. In accordance with the reply (1m), the EBA indicated that new summons will be issued for late June / early July in order to continue with assessment of the substance of the case as soon as possible.

In accordance with what has been held in the minutes of the vico ‘oral proceedings’, the appellant / opponent has submitted its observations on the President’s comments on 25 June 2021.

III.2  Second ‘oral proceedings’ of 2 July 2021

Summons for the second round of ‘oral proceedings’ have been issued for 2 July 2021.

IV.  Amicus curiae briefs

With a communication of 24 March 2021, third parties have been invited to submit written statements in accordance with Art. 10(1) of the Rules of Procedure of the Enlarged Board of Appeal, so-called amicus curiae briefs. They should be filed by 27 April 2021 with the Registry of the EBA, quoting case number G 1/21, and should be marked for the attention of Mr Nicolas Michaleczek ([email protected]).

The following list of amicus curiae briefs is continuously updated as they appear online. The color indicates whether the respective submission argues in favor (green) or against (red) ‘oral proceedings’ by videoconference without the consent of a party at least in non-pandemic times and/or before the Boards of Appeal. Unlabeled submissions are either not taking such a clear-cut position on the referred question, or relate to the appearance of bias only (epi (1) and (2)).

Amicus curiae

Date Submitted by
01 08 Apr 2021  VESPA
02 12 Apr 2021  epi (1)
03 13 Apr 2021  Bayer
04 15 Apr 2021  A. Schauinsland
05 16 Apr 2021  C. Menges
06 19 Apr 2021  Siemens
07 19 Apr 2021  BASF
08 20 Apr 2021  Med. for Europe
09 21 Apr 2021  Philips
10 21 Apr 2021  VPP
11 21 Apr 2021  APEB
12 22 Apr 2021  G-F & D
13 22 Apr 2021  VDA
14 23 Apr 2021  FEMIPI
15 23 Apr 2021  REPI
16 25 Apr 2021  BDPA
17 27. Apr 2021  PAkammer
18 26 Apr 2021  Plasseraud
19 26 Apr 2021  Roche
20 26 Apr 2021  Maiwald et al.
(EN tranlation)
21 26 Apr 2021  Laine IP
22 26 Apr 2021  epi (2)
23 (undated)  IP Ability
24 26 Apr 2021  J. Cockburn
25 27 Apr 2021  Saint-Gobain
26 27 Apr 2021  Murgitroyd
27 27 Apr 2021  CIPA
28 27 Apr 2021  Clariant
29 27 Apr 2021  M. D. Snodin
30 27 Apr 2021  J. Schmidtchen
31 27 Apr 2021  VCI/VDMA/ZVEI
32 27 Apr 2021  EPLIT
33 27 Apr 2021  Fresenius Kabi
34 27 Apr 2021  IPO
35 27 Apr 2021  C&R
36 27 Apr 2021  FICPI
37 27 Apr 2021  IP Federation
38 27 Apr 2021  F. P. Vatti
39 27 Apr 2021  IK-IP
40 27 Apr 2021  Ericsson
41 27 Apr 2021  C. Beckmann
42 27 Apr 2021  CNCPI
43 27 Apr 2021  epi (3)
44 27 Apr 2021  Philip Morris
45 27 Apr 2021  ReadyOppoOne
46 27 Apr 2021  Union
47 28 Apr 2021  Downing IP
48 12 May 2021  Meissner Bolte
49 12 May 2021  Ruhr IP
50 08 Jun 2021  Sabic

There is also a list of the amicus curiae briefs in a websection of the Boards of Appeal which is dedicated to G 1/21 here.

The President of the EPO has submitted comments under Art. 9 RPEBA on 27 April 2021.

V.  Third party observations

In addition to the amicus curiae briefs, there are also a lot of unsolicited / anonymous third party observations (TPO) in the online file wrapper.

The following list of TPOs is continuously updated as they appear online.

VI.  What to wish for, and what to expect

One may like videoconferencing or not. That is a matter of opinion, not a matter of fact or law. I have attended quite some ‘oral proceedings’ by videoconference over the last months, in examination, opposition and appeal proceedings. I did not object to any of those, and they had all been reasonably okay under the current pandemic circumstances. Accordingly, I am not fundamentally against oral proceedings by videoconference per se.

However, I am a big fan of in-person oral proceedings when it really matters; see e.g. this Blog here. In non-pandemic times, parties should have the right (again) to insist on oral proceedings in person if they wish so. This must not be only something that is occasionally allowed upon request at the mercy of a deciding body of the EPO in individual cases.

So, this is what I wish for. Not much, actually.

What is more, I feel in good company with the views taken by both epi and BusinessEurope:

epi is the professional body representing all European Patent Attorneys, with currently about 12’300 members. BusinessEurope speaks for all-sized enterprises in 35 European countries whose national business federations are its direct members. Accordingly, the Standing Advisory Committee before the EPO (SACEPO) is mainly staffed with representatives nominated by epi and BusinessEurope; see here. Thus, the users have been consulted, and they clearly and overwhelmingly expressed their views.

But what to expect?

Some say that the answer will surely be ‘Yes’ (contrary to my wish), inter alia in view of:

    • the explanatory notes to Art. 15a RPBA in BOAC/16/20 (N 20) and the subsequent approval by the Boards of Appeal Committee and the Administrative Council (see above);
    • the composition of the panel of the EBA; and
    • the notice in the summons that a decision could be issued ‘promptly’ if no oral proceedings were necessary (see above).

I am not so sure about it. But I’m a die-hard optimist.

Reported by Martin WILMING

T 1807/15 – 3.5.02

Interlocutory decision of 12 March 2021

Appellant / opponent:

Rohde & Schwarz GmbH & Co KG
Mühldorfstrasse 15
D-81671 München (DE)

Respondent / patentee:

Andrew AG
Bächliwis 2B
CH-8184 Bachenbülach / Zürich

Composition of the Board:

Chairman: Richard LORD
Member and rapporteur: Wilhelm UNGLER
Member and rapporteur: Fabian GIESEN

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VESPA’s amicus curiae statement re G 1/21

Reading time: 2 minutes

The Enlarged Board of Appeal of the European Patent Office will soon hear a case of fundamental importance for the parties’ right to be heard and the right to a fair trial. The question is how oral proceedings may be conducted in accordance with Art. 116 EPC. See this Blog here and the interlocutory decision T 1807/15 for details.

The referral is pending under G 1/21. ‘Oral proceedings’ (by videoconference, actually) are scheduled for 28 May 2021.

VESPA, the Swiss association of Swiss and European patent attorneys working in private practice, has filed a statement earlier today (see VESPA’s press release here), referring to a whole body of evidence-based research on the issue of videoconferencing in court proceedings. This research clearly shows that videoconferencing and in-person hearings are not equivalent, and the differences do affect the outcome.

Did the lawmaker tacitly accept or even intend that parties may be forced to settle with a second-best alternative to in-person oral proceedings? I could see that for a state of emergency (like a pandemic), to maintain access to justice. But not in normal times. No way.

HAVE YOUR SAY!

Any third party wishing to make a written statement can do so under Article 10(1) of the Rules of Procedure of the Enlarged Board of Appeal. Such statements should be filed by 27 April 2021 with the Registry of the Enlarged Board of Appeal, quoting case number G 1/21, and should be marked for the attention of Mr Nicolas Michaleczek ([email protected]); see the communication of 24 March 2021 for details.

Reported by Martin WILMING

AMICUS CURIAE BRIEF

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*** BREAKING *** Be prepared for patent term adjustments, to compensate for delays during prosecution

Reading time: 3 minutes

Case No. O2020_08/15 | Main hearing of 1 April 2021

The main hearing in this matter earlier today was highly interesting.

The ACME catalog
Acme Corp.

In brief, Acme Corp. asserts infringement of a European patent by Globex Corp. The tricky thing is that the patent had already been cancelled from the register at the end of its 20y term more than two years(!) before the alleged infringement took place.

Globex Corp.

Globex Corp. essentially contends that the complaint is simply an impertinence. What no longer exists cannot be infringed. Hank Scorpio, the CEO of Globex Corp., shouted out:

Where would we be?

But it appears to be not that easy. Acme Corp. essentially argued that it has been cheated out of several years of patent term because the patent was granted only more than 15 years(!) after the filing date. In Acme’s view, this demands for a term adjustment to compensate for the delay during prosecution through no fault of their own. Such term adjustments are granted ex officio in the U.S., and Acme argued that this was only fair.

We want this!

During a break, I had a quick chat with a person who prefers to not see his name on this Blog but who is knowledgeable of the current status of the draft of the forthcoming revision of the Swiss Patent Act; see this Blog here for further information on the draft bill. It appears that some wished for U.S.-style patent term adjustments (similar to 35 U.S.C. 154) during public consultation, which will indeed be included in the final draft of the revised Swiss Patent Act. Accordingly, I understand that we may see patents valid in Switzerland with terms reaching months, if not years beyond the 20y term. This is unprecedented in Europe, to the best of my knowledge!

Stay tuned for further details to be published soon. It may well be that the transitional provisions of the revised PatA turn out to be decisive for the case at hand. And others. Yours, maybe?

Reported by Martin WILMING

April Fool! 😂

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The (more) competent court shall decide examination and opposition appeals

Reading time: 2 minutes

A major revision of the Swiss PatA is currently in the making; see this Blog here, here and here. Inter alia, examination on the merits (novelty and inventive step) as well as a full-fledged opposition proceeding is proposed.

According to the draft bill, the Federal Administrative Court should have handled appeals against decisions of the IPI in examination and opposition. This has been criticized by many because the FPC would appear to be the more intuitive choice. The submissions during the public consultation almost unanimously reflect this.

The Supreme Court recommends that the FPC should handle such appeals:

The FPC is apparently willing to do so and proposes itself:

The Federal Administrative Court abstains from taking a position on whether or not it should be the responsible authority (obviously already in knowledge of the Supreme Court’s take on this), but reminds that independence of justice needs to be maintained if the FPC would be responsible for both administrative and civil proceedings:

But this can surely be resolved. INGRES, AIPPI, VESPA, VIPS and VSP have jointly commissioned an expert opinion of Prof. Dr. Rainer J. Schweizer who proposes to install a second administrative department (‘zweite verwaltungsgerichtliche Abteilung’).

In my perception, this addresses — and resolves — the reservations of the Federal Administrative Court. Some amendments to the PatCA will be necessary, but this appears doable. Accordingly, I would be surprised if the FPC would not turn out to be the appeal authority in the final bill.

Reported by Martin WILMING

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Resolving scheduling conflicts between EPO and FPC oral proceedings

Reading time: 2 minutes

The EPO has a pretty strict regime in place with respect to postponement of oral proceedings. As you might know, only a single date is fixed by the EPO ex officio, and this date

[…] will be cancelled and another date fixed […] only if the party concerned can advance serious reasons which justify the fixing of a new date. The request to fix another date shall be filed as soon as possible after the ground preventing the party concerned from attending the oral proceedings have arisen.

See the Notice from the EPO of 18 December 2008. Only a very limited set of ‘serious reasons’ is expressly whitelisted in ¶ 2.3. But even those whitelisted reasons are not sufficient sometimes. In particular in more recent times, at least in my experience. But that’s a different story; I might come back to this soon.

One of the whitelisted ‘serious reasons’ is a previously notified summons to oral proceedings before a national court. However, patent attorneys are not the legal representatives in by far the most cases at the FPC. They are rather only assisting, and the summons are not addressed to them. That makes it cumbersome to invoke the summons as a ‘serious reason’ with a request for postponement at the EPO.

However, the FPC has now issued a notice that patent attorneys assisting in proceedings before the FPC can request a confirmation that they are required to attend a hearing at the FPC, to avoid scheduling conflicts with the EPO.

Needless to say that this is MUCH appreciated.

/MW

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Referral to the Enlarged Board of Appeal re video-conferencing: All you need to know for now

Reading time: 4 minutes

As reported by the IPKat, with reference to a note of Reddie & Grose on their website, a referral to the Enlarged Board of Appeal is currently in the making. The legality of oral proceedings conducted as video-conference will be looked at.

Note, however, that the referral has not yet been made as per today.

The docket to watch is EP 1 609 239. The parties had not consented to oral proceedings by video-conferencing, but they have nevertheless been summoned to a video-conference. The minutes of the oral proceedings of 8 February 2021 hold:

After deliberation by the Board, the Chairman informed the parties that the Board will refer a question to the Enlarged Board of Appeal. The decision will be given in writing.

The composition of the to-be-referring Board 3.5.02 of Chaiman Richard LORD has then been changed on 11 February 2021; Wilhelm UNGLER (legal member) has been appointed as an additional rapporteur besides Fabian GIESEN (technical member).

One of the parties had filed an auxiliary request by Email, apparently during the oral proceedings. Since the request was in German, I suspect that it was filed by the opponent / appellant. It losely translates as follows:

We hereby submit the auxiliary request to submit to the Enlarged Board of Appeal for decision the question whether oral proceedings pursuant to Art. 116 EPC may be replaced by a video-conference if the parties do not agree thereto.

(On the fun side: Does that mean that a video-conference had been okay if the main request had been granted?)

I don’t think that this will be the question finally being referred to the EBoA because it already assumes that a video-conference is something different than oral proceedings pursuant to Art. 116 EPC. This, in my perception, is already part of the problem to be finally resolved by the EPO.

Once the referral has actually been made, cases with parties being summoned to oral proceedings by video-conference without their consent will likely be stayed. This will concern quite a lot of cases. Accordingly, I would expect that the EBoA will pick it up as soon as possible, like G 2/19 (Haar vs Munich) which had been resolved in less than five months.

UPDATE 16 March 2021:

Decision T 1807/15 of 12 March 2021 (see below) refers the following question to the EBoA:

«Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?»

What is to be hoped for

I am a big fan of oral proceedings in person; see e.g. this Blog here.

Still, I feel it would be a disaster if the EBoA concluded that a whole lot of unsolicited oral proceedings by video-conference during the pandemic were illegal. What I do hope for though is that the EBoA paves the way back to oral proceedings in normal times / after the pandemic as we had been used to have them at the EPO: In person, at least for those who expressly do not consent with video-conferencing.

The best piece of research in this respect that I have seen by now is from Tilman PFRANG, available here.

Further, many submissions have been made during public consultation on the new Art. 15a of the Rules of Procedure of the Boards of Appeal that expressly provides for video-conferencing (at the discretion of the respective Board). Not even a summary of all the submissions is available to date, but quite some associations have made their submissions publicly available. This is a wealth of information on the issue:

If you are aware or come across further publicly available submissions, please let me know and I will include them here.

UPDATE 19 February 2021:

The (very brief) summary of responses to the online user consultation on Art. 15a has been published earlier today; see here.

Reported by Martin WILMING

T 1807/15 – 3.5.02

Interlocutory Decision of 12 March 2021

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Will you join the ‘Fireside Chat’ on Clubhouse?

Are you tired of only reading Blog posts and Tweets?

Are you missing the discussion, in particular in these pandemic times?

Then let’s have a chat on Clubhouse! 👋

Honestly, I am normally not an early adopter of social media stuff, but the live audio chat concept of Clubhouse is pretty appealing to me.

It’s supposed to become the interactive part of this Blog:

🔥 FIRESIDE CHAT

Fireside Chat
Fireside Chat

My current idea is roughly as follows:

1 // I will provide a quick update on what has been decided by the Swiss Federal Patent Court and the Supreme Court in patent matters; 15 min.

2 // Q&A, discussion and gossip; open end.

SAVE THE DATE

Wednesday, 24 February 2021, 7:00 pm CET

I am planning to have the Fireside Chat on a monthly basis, always on the last Wednesday of a month.

WILL YOU JOIN ME?

Proposed amendment of the PatA: Do you like it?

As mentioned earlier on this Blog here, the draft bill of the new PatA has been published recently, in accordance with the ‘motion Hefti’.

Clearly, the interested circles had been involved early on in the discussion, see e.g. the Polynomics report of 2015 that recommended the introduction of examination on the merits for patents, alongside with a utility model. But participation in the underlying survey had been low at that time (3.8% return rate), and there have also been critical voices (see e.g. here, fulltext available here).

I’d really like to know, in the face of the draft bill with examination on the merits for patents, alongside with a utility model:

Do you support the gist of the draft bill, i.e. the 'motion Hefti'?

  • No (64%, 25 Votes)
  • Yes (36%, 14 Votes)

Total Voters: 39

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The poll has been open 14-22 November 2020.

Thank you very much for taking the time to respond.

/MW

POLYNOMICS REPORT (2015)

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