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

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

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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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Yet another referral to the Enlarged Board of Appeal upon to be planted

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In addition to the cases concerning double patenting, computer-implemented simulation and the location in Haar, there is yet another referral to the Enlarged Board of Appeal (EBoA) in the pipeline, i.e. concerning patentability of plants exclusively obtained by an essentially biological process.

In case T 1063/18, an Examining Division had refused the European patent application no. 12 756 468.0 (publication no. EP 2 753 168) for the sole reason that plants exclusively obtained by means of an essentially biological process fall within the exception to patentability according to Article 53(b) and Rule 28(2) EPC. However, Board of Appeal (BoA) 3.3.04, in an enlarged composition consisting of three technically and two legally qualified members, decided that Rule 28(2) EPC (see OJ 2017, A56) was in conflict with Article 53(b) EPC as interpreted by the EBoA in decisions G 2/12 and G 2/13. In these decisions, the EBoA had concluded that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC did not preclude the allowability of a product claim directed to plants or plant material.

Moreover, BoA 3.3.04 held that Rule 28(2) EPC could not be interpreted in such a way that it was not in conflict with Article 53(b) EPC as interpreted by the EBoA. The board also saw no reason to deviate from the interpretation of the EBoA. Thus, in view of Article 164(2) EPC, the provisions of the Convention prevail.

Now, how to resolve this clash of an Article as interpreted by the EBoA on the one hand, and a Rule and the political will on the other hand?

That’s what this referral is all about. According to a news alert on the EPO website, the President of the EPO expressed his view at the 159th meeting of the Administrative Council on 27/28 March 2019 as follows:

[…] that a President’s referral of the case to the Enlarged Board of Appeal is justified and necessary. The aim is to obtain an opinion from the Enlarged Board of Appeal on the patentability of plants exclusively obtained by essentially biological processes, hereby considering recent legal developments (interpretations and statements of the European Commission, the EU Council, European Parliament and EPO’s Administrative Council on the interpretation of the European Patent Convention and the EU Bio-Directive, all of them concluding that there should be no patentability in these cases).

The President’s proposal apparently received broad and overwhelming support from almost all Contracting States, and President António Campinos announced that the EPO will proceed swiftly to submit the referral.

It will be highly interesting to see how the EBoA deals with this referral, in light of what Art. 112(2) EPC requires, i.e.

[…] a point of law […] where two Boards of Appeal have given different decisions on that question.

I will report again when the referral is available; stay tuned …

UPDATE 3 April 2019:

The Chartered Institute of Patent Attorneys (CIPA) has issued a position paper on this issue on 25 March 2019, which is well worth reading and to the point.

UPDATE 9 April 2019:

The President’s questions referred to the Enlarged Board of Appeal are now available; see here. Here they are:

    1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?
    2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

The official case no. is G 3/19.

Reported by Martin WILMING

EPO NEWS ALERT

from the 159th meeting of the Administrative Council

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T 1063/18

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Board of Appeal 3.3.01 moving house on the rush

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As reported earlier on this Blog here, the Enlarged Board of Appeal will have to decide whether or not the Boards of Appeal may properly summon parties to oral proceedings at their new premises in Haar.

But this will take some time. What’s happening in the meantime? There are hearings in Haar every single day. Will proceedings be stayed? Or will parties be re-summoned to Munich, as a matter of precaution? All these options would be highly uncomfortable for the Boards which are still struggling with a huge backlog and an ever increasing number of incoming appeals.

In a hearing of 11 March 2019 in Haar, Board of Appeal 3.3.01 was faced with a request to conduct the hearing in Munich; the patentee’s representative relied on the pending referral to the Enlarged Board of Appeal.

According to the minutes, the hearing in Haar was indeed postponed — but re-started at 1pm on the same day in the EPO’s building at Bob-van-Benthem-Platz 1 in Munich downtown, the previous premises of the Boards of Appeal. A smart move! See the EPO Register for any further information on the case; the reasoned decision is not out yet.

About three hours later, the patent was revoked. (Note that this patent had been at stake in proceedings at the FPC; see this Blog here.)

I sincerely hope that parties will not try to take advantage of the current legal uncertaintly about whether or not the venue in Haar is proper. Board 3.3.01 gave a clear sign that the venue may quickly be changed, if necessary.

UPDATE 3 April 2019:

The case is officially referred to as G 2/19, according to the list of referrals pending before the Enlarged Board of Appeal (visited 3 April 2019).

Reported by Martin WILMING

MINUTES
of the oral proceedings in case T 403/18 before the Board 3.3.01

Chairman: A. Lindner
Member: T. Sommerfeld
L. Bühler
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Munich, or Haar, or what?! The Enlarged Board of Appeal will have its say!

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Groundhog Day: Yet another one …

It feels like I’m on repeat: There is yet another referral to the EBoA in the pipeline, in addition to those listed on this Blog here.

Frankly, this referral is somewhat out of the ordinary.

The underlying case is IPCom‘s EP 2 378 735 B1; see the EPO Register for further bibliographic information.

The appellant Jostarndt Patentanwalts-AG had submitted various third party observations during the examination phase — but the patent had nevertheless been granted. Jostarndt lodged an appeal against the decision of the ED to grant EP'735 and argued that the raised objections re clarity had not been duly considered by the ED. Jostarndt took the view that it must be entitled to appeal since otherwise, because of the limited grounds for opposition, there is no legal protection against the ED’s failure to consider the objections under Art. 84 EPC. Further, Jostarndt argued that there was an intolerable gap of legal protection and made clear that it seeks to have this fundamental question clarified. The Board accordingly summoned to oral proceedings on 25 January 2019 to the premises of the Boards of Appeal in Haar. Now, here we are at the gist of the matter: The appellant requested that the hearing be re-located to Munich, since Haar is not listed in the EPC as one of the premises of the EPO; ¶V.

[Die Beschwerdeführerin] hat […] eine mündliche Verhandlung auch über die Zulässigkeitsfrage beantragt und stellte, nachdem die Kammer sie für den 25. Januar 2019 zu einer mündlichen Verhandlung in das Dienstgebäude der Beschwerdekammern nach Haar geladen hatte, Antrag auf Verlegung der Verhandlung nach München, da das Europäische Patentamt dort seinen Sitz habe, und Haar – anders als Den Haag – «im Europäischen Patentübereinkommen offensichtlich nicht als Ort für Handlungen oder Verhandlungen vorgesehen» ist.

The Board did not re-locate the hearing but rather cancelled it, and submitted the following questions to the EBoA (in the German language of the proceedings):

1.  Ist im Beschwerdeverfahren das Recht auf Durchführung einer mündlichen Verhandlung gemäss Artikel 116 EPÜ eingeschränkt, wenn die Beschwerde auf den ersten Blick unzulässig ist?

2.  Wenn die Antwort auf Frage 1 ja ist, ist eine Beschwerde gegen den Patenterteilungsbeschluss in diesem Sinne auf den ersten Blick unzulässig, die ein Dritter im Sinne von Artikel 115 EPÜ eingelegt und damit gerechtfertigt hat, dass im Rahmen des EPÜ kein alternativer Rechtsbehelf gegen eine Entscheidung der Prüfungsabteilung gegeben ist, seine Einwendungen betreffend die angebliche Verletzung von Artikel 84 EPÜ nicht zu berücksichtigen?

3. Wenn die Antwort auf eine der ersten beiden Fragen nein ist, kann die Kammer ohne Verletzung von Artikel 116 EPÜ die mündliche Verhandlung in Haar durchführen, wenn die Beschwerdeführerin diesen Standort als nicht EPÜ-konform gerügt und eine Verlegung der Verhandlung nach München beantragt hat?

Inofficially translated:

1.  In appeal proceedings, is the right to an oral hearing under Article 116 EPC restricted if the appeal at first sight appears inadmissible?

2.  If the answer to question 1 is in the affirmative, is an appeal against the decision to grant a patent prima facie inadmissible which a third party (in the sense of Article 115 EPC) has lodged and justified by the fact that there is no alternative remedy under the EPC against a decision of the Examining Division not to take into account its objections concerning the alleged violation of Article 84 EPC?

3. If the answer to one of the first two questions is no, can the Board hold the oral proceedings in Haar without infringing Article 116 EPC if the appellant complains that this location is not in conformity with the EPC and has requested that the hearing be moved to Munich?

Q1 and Q2 are interesting in that they will clarify the extent of the right to be heard. The referring Board explicitly notes that an answer to Q3 will likely be needed, i.e. the answer to Q1 and/or Q2 will likely be ‘No’; see ¶3.4 and 4.1:

Die Kammer geht davon aus, dass die Frage nach dem richtigen Verhandlungsort auch im vorliegenden Fall, also trotz ihrer vorläufigen Einschätzung, die Beschwerde sei unzulässig, entscheidungserheblich ist; die Kammer folgt insoweit der herrschenden Rechtsprechung […], wonach einem Antrag der Beschwerdeführerin auf Durchführung einer mündlichen Verhandlung regelmäßig auch bei ersichtlich unzulässigen Beschwerden nachzukommen ist.

But when it comes to Q3, things can get interesting. The answer will essentially depend on whether the President of the European Patent Office or the Administrative Council of the European Patent Organisation, which authorised the President to rent the new office building and thus to relocate the Boards of Appeal to the municipality of Haar, had the power either to appoint organs of the Office within the meaning of Art. 15 EPC also outside the areas covered by the EPC (Art. 6(2) EPC including the Protocol on Centralisation, I(3)a), or whether Art. 6(2) EPC is to be interpreted in a way that ‘Munich’ does not mean the city of the same name but a whole (not more precisely defined) region, or the district (‘Landkreis’) of the same name, which borders on the city of Munich (which does not belong to the district of Munich, as it is a free city).

Let’s have a quick look at a map. The district Munich is marked-up in dark grey in the insert in the figure below. The new premises of the Boards of Appeal are located in Haar (marked-up in red):

Now, where is ‘Munich’?

The referring Board notes that it is not aware of the exact reasoning why the President took the view in 2016 that a relocation of the Boards of Appeal to a place outside the city limits of Munich was in accordance with the EPC, and that it thus has not yet formed its final opinion on the issue; ¶3.3. Well, this will now be something for the EBoA to find out.

Once more: Stay tuned …

UPDATE 2 March 2019:

I just noticed yet another twist in the file wrapper. Jostarndt has filed a second appeal in the same case, arguing that it had never been duly served with the decision of the ED and that the second appeal is thus still timely filed.

Reported by Martin WILMING

The map used in this post is based on Hagar66‘s Wikimedia Commons image (slightly modified), with kind permission. 

REFERRAL TO THE ENLARGED BOARD OF APPEAL
in case T 831/17 by Board 3.5.03

Chairman: F. van der Voort
Member: P. Guntz
A. Madenach

Interlocutory decision of 25 February 2019:

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Patentability of computer-implemented simulation upon to be reviewed by the Enlarged Board of Appeal

Reading time: 4 minutes

Busy times ahead for the Enlarged Board of Appeal (EBoA). While we are still awaiting the decision G 1/18, and only shortly after the referral re double-patenting, yet another Board referred questions to the EBoA in case T 489/14; interlocutory decision of 22 February 2019. Computer-implemented inventions (CIIs) are at stake now. The last time that the EBoA had to deal with CIIs was the finally inadmissible (yet exhaustively answered) referral by the President in G 3/08.

Now, the underlying case is EP 1 546 948 which pertains to a computer-implemented method of simulating pedestrian motion. It’s a Euro-PCT application published (without search report) as WO 2004/023347 A2; the (belated) search report had been published separately as  WO 2004/023347 A3.

The application had been refused by an Examining Division (ED) already back in 2013; the ED held that the claimed subject-matter was not inventive. It’s all about how to assess computational simulations: The referring Board disagrees with the reasoning of Board 3.5.01 in T 1227/05, the reasoning of which would clearly have helped the present applicant’s case: In T 1227/05 it had been held that a computational simulation of a circuit was both technical and non-obvious, even though it had no direct physical effect.

To resolve the issue, the following questions are referred to the EBoA:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?

2.  If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3.  What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

The outcome of this referral will not only affect claim drafting practice, i.e. whether claims will be drafted with and/or without some physical implementation step(s). Perhaps more importantly, an answer to Q1 in the affirmative would significantly improve the position of companies / developers that are active in the field of technical simulations and which are no longer involved in the actual physical implementation. Will their work product finally be patentable per se?

Stay tuned …

UPDATE 3 April 2019:

The case is officially referred to as G 1/19, according to the list of referrals pending before the Enlarged Board of Appeal (visited 3 April 2019).

Reported by Martin WILMING

REFERRAL TO THE ENLARGED BOARD OF APPEAL
in case T 489/14 by Board 3.5.07

Chairman: R. Moufang
Member: R. de Man
P. San-Bento Furtado

Interlocutory decision of 22 February 2019:

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A referral to the Enlarged Board of Appeal re double patenting, finally

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Nestlé logo

On appeal against the decision of an ED to refuse an Euro-PCT application of Nestec SA for reasons of an alleged ‘internal double patenting’ issue, i.e. a clash between a granted European patent and an Euro-PCT application claiming priority thereof, EPO Board of Appeal 3.3.01 is going to refer questions to the Enlarged Board of Appeal. The reasoned decision is not yet available, but the minutes of the hearing and the prior communication of the Board make pretty clear what to expect. In the communication (¶4),

[t]he board agrees with the appellant that there is no uniform practice and even conflicting case law on the question of whether and to what extent double patenting is prohibited.

In particular with respect to ‘internal’ double patenting issues, the Board points to decision T 2461/10 that (in an obiter dictum in ¶¶12-14) explicitly disagreed with the earlier decision T 1423/07 that had confirmed an applicant’s legitimate interest in such situations of double patenting; see hn 2.

Furthermore, it is not yet established whether Art. 125 EPC provides the legal basis for the requirement of a legitimate interest. While T 587/98 and T 1423/07 held that this was not the case, T 2461/10 and T 2563/11 held that the intention of the legislator was to rule out double patenting arising from two European patent applications, with reference to a statement in the main committee of the diplomatic conference by the British delegation with respect to Art. 125 EPC 1973 (M/PR/I, 64, ¶665):

In connection with Article 125 it was established at the request of the United Kingdom delegation that there was majority agreement in the Main Committee on the following: that it was a generally recognised principle of procedureal law in the Contracting States that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing.

The referring Board spotted yet a further divergence in the case law, i.e. on the scope of a prohibition of double patenting. The Enlarged Board of Appeal in decisions G 1/05 (¶13.4) and G 1/06 referred to the ‘same subject-matter’. While T 307/03 (hn 3) interpreted this to also cover situations where the subject-matter of the already granted claim is (only) encompassed by the later claim, the apparent majority of the case law confined the issue to identical subject-matter only; see T 2461/10 (¶¶21-26) and T 2563/11 (¶¶2.8-2.14). Even though one might thus consider T 307/03 an isolated decision, the referring Board notes that the Enlarged Board in G 2/10 in ¶4.5.5 had left it open whether in cases where an applicant obtains protection for a preferred embodiment first, and later pursues the general teaching in a divisional application,

[…] a disclaimer would be necessary in order to avoid the so-called prohibition of double protection.

See the EPO Register and the online file wrapper for any further information about the issues at stake.

The questions that are upon to be referred to the Enlarged Board read as follows:

1.  Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent granted to the same applicant which does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1  If the answer to the first question is yes, what are the conditions for such a refusal and are different conditions to be applied where the European patent application under examination was filed

a)  on the same date as, or

b)  as a European divisional application (Article 76(1) EPC) in respect of, or

c) claiming the priority (Article 88 EPC) in respect of

a European patent application on the basis of which a European patent was granted to the same applicant?

2.2  In particular, in the latter case, does an applicant have a legitimate interest in the grant of the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?

Stay tuned, this will get interesting …

Reported by Martin WILMING

REFERRAL TO THE ENLARGED BOARD OF APPEAL
in case T 318/14 by Board 3.3.01

Chairman: A. Lindner
Member: T. Sommerfeld
L. Bühler

Minutes of the hearing of 7 February 2019:

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Communication of the BoA before the hearing:

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G 1/18: New referral to the EPO’s Enlarged Board of Appeal

Reading time: 4 minutes

Just in case you didn’t notice this in the rush before the holiday season:

There is a new referral pending before the Enlarged Board of Appeal (EBoA) of the EPO, i.e. G 1/18.

Boards of Appeal

It has apparently been put on the website of the Boards of Appeal already on June 25, but I only took notice now. In accordance with Art. 112(1)(b) EPC, the former President of the EPO, Benoît Battistelli, has referred the following point of law concerning the interpretation of Art. 108 EPC to the EBoA, in his last month in office:

Lorsque la formation d’un recours et/ou la taxe de paiement ont lieu après l’expiration du délai de deux mois prévu à l’article 108 CBE, le recours est-il irrecevable ou réputé non formé, et la taxe de recours doit-elle être remboursée?

The provisional translation of the question into English, as provided on the website of the Boards of Appeal, reads as follows:

If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?

The referral is a booklet of 18 pages in French language; please find a ‘quick and dirty’ English translation below.

Actually, the question is not all new. Essentially the same question had been at stake in cases G 1/14 and G 2/14 — but remained undecided (abandoned application in G 2/14; inadmissible referral in G 1/14). However, the former President pushed the issue again before the EBoA.

The referral was triggered by T 1897/17. In that case, the Board held that an appeal lodged after the expiry of the two-month period is inadmissible; however, it is deemed to have been filed and therefore to have legal existence; the appeal fee cannot therefore be refunded.

As set forth in the referral, this question has quite some relevance beyond appeal proceedings since further provisions of the EPC are worded similarly, e.g.:

The request is currently deemed not to have been filed in all these cases and the fee is reimbursed in case of late payment of the fee.

The former President strongly advocates to maintain the current system whereby an appeal fee that is paid late must be refunded because the appeal is considered not to have been filed; similarly, where the appeal is filed after the prescribed time limit, the appeal fee paid within the time limit shall also be refunded.

I would happily agree with this if it was the outcome.

Reported by Martin WILMING

REFERRAL G 1/18 

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REFERRAL G 1/18 (TRANSLATED)

A ‘quick and dirty’ translation from French to English:

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G 1/14

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T 1897/17 – 3.4.01
14 February 2018

Chairman: F. Neumann
Member: P. Fontenay
R. Winkelhofer
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