Enlarged Board of Appeal Archives

March 29, 2019April 9, 2019

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:

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?

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

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EPO NEWS ALERT

from the 159th meeting of the Administrative Council

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T 1063/18

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March 25, 2019April 3, 2019

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

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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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March 1, 2019March 2, 2019

Munich, or Haar, or what?! The Enlarged Board of Appeal will have its say!

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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):

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.

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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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February 28, 2019April 3, 2019

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

Reading time: 2 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

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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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February 20, 2019February 28, 2019

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

Reading time: 3 minutes

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

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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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July 24, 2018October 10, 2018

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

Reading time: 2 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.

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 for examination, Art. 94 EPC;
the filing of an opposition, Art. 99 EPC;
the intervention of the assumed infringer, R. 89 EPC;
the request for limitation or revocation, Art. 105a EPC; and
the request for review by the EBoA, Art. 112a EPC.

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

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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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