For discussion: Has the requirement that claims be «supported by the description» been perverted over time?

Reading time: 13 minutes

Objections with respect to alleged violations of Art. 84 EPC have become more and more cumbersome in recent times. I cannot really tell why. The law has not changed ever since enactment of the EPC 1973 in this respect. But the EPO Guidelines were tightened substantially, purportedly merely reflecting long-standing practice. My experience is different. Back in the days, I had only been required to make features of independent claims also mandatory in the specification. A no-brainer that did no harm, so I complied. Nowadays, practitioners are regularly facing extensive objections to tidy up the specification to large extent, causing anything but minimally invasive changes.

The 2021 revision of the Guidelines caused an outcry amongst users, and the EPO made certain minor amendments in the next revision cycle of the Guidelines (see e.g. here). The most controversially discussed sections of the Guidelines are F-IV, 4.3 (inconsistencies), F-IV, 4.4 (claim-like clauses); don’t miss to tick the ‘show modifications’ checkbox on the right side.

However, the more general question is still unresolved:

Why the heck do we have to adapt the specification at all?

In my view, there is just no sound legal basis for it. I am fully aware that this position is controversial, running against the gist of some rather old decisions of Boards of Appeal of the EPO. My line of thinking is as follows. As always, I stand to be proven wrong. 

Article 84 at a glance

The mere wording of Art. 84 EPC is plain and simple (emphasis added):

Art. 84 — Claims
The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

The second sentence of Art. 84 EPC requires the claims to be

    1. clear;
    2. concise; and
    3. supported by the description.
the travaux préparatoires

It is evident from the TP that the first two criteria, i.e. clarity and conciseness were meant to reflect Art. 6 PCT in the new legal framework of the EPC:

The same holds true for the «support by the description» requirement, with an initially pretty different (but much clearer) wording:  

No patent claim shall contain subject matter that is not listed in the description.

The TP are silent about the reasons why the initially very clear wording of the third criterion had not been further pursued but rather been amended to exactly match Art. 6 PCT. In my view, the most likely reason is an attempt of harmonization of the wording. There is nothing in the TP that could suggest an intent of the legislator to change the substance of the initial draft, i.e. that the third criterion was simply meant to exclude subject-matter from the claims that is not listed in the description.

In the first place, all requirements of this provision had been included in the draft Implementing Regulations. Later, the sub-committee proposed to adopt the exact same wording of Art. 6 PCT, and to move it to the Convention itself:

In the first place, the draft article read as follows (exactly as Art. 6 PCT):

However, the Conference did not like the wording «fully supported by the description» and asked the Working Party to examine deletion of «fully» and the replacement by a less restrictive wording:

And, indeed, the term «fully» was deleted:

Even though the term «fully» was not replaced by a less restrictive wording, the TP leave no doubt about the legislator’s intent to prevent the third criterion from being interpreteded in the sense of the initial draft, i.e. that the claims shall be «fully supported by the description».

This is how we ended up with the wording of Art. 71a at the Conference:

Here is the final wording of the article, which has never been changed ever since:

For sake of completeness, I have reviewed the records of the Washington Conference on the PCT — which do not provide any further insight.

T 1989/18 — 3.3.04: Shaking the current practice to the very foundations

Applicants rarely risk a refusal merely for non-compliance with a formalistic objection concerning the «necessary» adaptation of the description once allowability of a set of claims has been indicated by the ED. Not so in the case underlying T 1989/18 — 3.3.04 (EP 2 794 651; DREX and file wrapper). Accordingly, the Board of Appeal had to investigate whether there was any legal basis for demanding an adaptation of the specification at all.

The Board took an approach similar to what I take from the TP, i.e. the «supported by the description» simply means:

[T]he subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described.

This must not be confused with the first requirement of clarity, in this Board’s view:

When assessing clarity, the description cannot be relied upon to resolve a clarity issue in a claim, nor can it give rise to any such isseue if the definition of the subject-matter in a claim is clear per se.

Accordingly, it is held (¶7):

Article 84 EPC cannot serve as a legal basis for the refusal.

The Board did not find any legal basis in R. 42(1) lit. c EPC (in the absence of a non-unity objection; ¶8) and R. 48(1) lit. c EPC (only pertaining to patent applications, not patents — opposed to R. 42 EPC; ¶9-12), either.

Accordingly, the Board allowed the appeal and remitted the case to the ED with an order to grant the patent — with an unamended description.

the aftermath of T 1989/18 — 3.3.04

To the best of my knowledge, one further Board of Appeal has explicitly adopted the approach of T 1989/18 — 3.3.04, i.e. in the matter T 1444/20 — 3.3.01 (¶2 et seqq.).

On the other hand, I am aware of four recent Board of Appeal decisions that dissent with T 1989/18 — 3.3.04. I will address them below.

T 1024/18 — 3.2.06

Decision T 1024/18 — 3.2.06 concurs with T 1989/18 — 3.3.04 in that the claims must be clear in themselves; criterion i) of Art. 84 EPC. However, with respect to the third criterion, this Board holds that «supported by the description» cannot mean support in only a part of the description, because this would be at odds with the wording «supported by the description» (apparently understood with an emphasis on the word ‘the’).

This is a somewhat circular reasoning, isn’t it? The claims are only supported by the description when they are supported throughout the description; otherwise, they are not supported(?).

What is more, the TP are clear in that a less restrictive understanding than «fully» supported by the description was intended by the legislator. Against this background, I am having a hard time to accept a reasoning according to which support by (only) «part» of the description is not sufficient (¶3.1.8). 

Further, the Board mentions that the provision (Art. 84) had been moved from the Implementing Regulations to the Convention itself, because of its importance for national infringement procedings; ¶3.1.9. The Board draws from this that also the requirement of «supported by the description» serves this purpose.

I cannot deduce this from the TP; see above. The TP refer to the importance of the provision, but they are silent about which criteria thereof were considered to be of so much importance for national infringement proceedings. In my view, there is no reason to assume all three criteria were equally meant. For instance, I fail to see that the legislator had conciseness of the claims in mind with respect to the outstanding importance in infringement litigation. In my experience, conciseness of a claim is no issue at all. So, why would one assume that «supported by the description» was meant to be of oustanding importance?

T 2293/18 — 3.5.02

This decision holds, with reference to T 409/91 (¶3.3-3.5), that «supported by the description» requires that the claimed subject-matter has a basis in the description, which is to make sure that the claims only extend to subject-matter which, after reading the description, are at the disposal of the skilled person; ¶3.3.5.

Further, with reference to T 659/93 (¶3.4), this decision holds that «supported by the description» is to assure that the scope corresponds with the actual contribution to the art, and that the claims can be worked over the entire scope; ¶3.3.5. .

All this is not really controversial. But does it help to answer the question?

The decision goes on to hold that «it follows» that claims and description must not contradict each other, as part of a single document:

I wonder: Why is this a necessary consequence? I feel that the claims may well be workable over their entire scope, and they may well correspond to the actual contribution to the art, without the need to perfectly match with the description («übereinstimmen»). In any event, I feel requiring a perfect match puts the bar at the wrong level: «Full» support was clearly not intended by the legislator.

T 0121/20 — 3.2.01

This decision concurs with the reasons of T 1024/18 — 3.2.06 (which I do not find very convincing; see above), without adding anything in substance; ¶10.2.

UPDATE 11 June 2022: Yet another decision of the same Board 3.2.01 has been published on 9 June 2022, i.e. T 1516/20. This decision, again, merely refers to and consents with T 1024/18 — 3.2.06, but does not add anything in substance; ¶5.

T 2766/17 — 3.2.02

This decision agrees with T 1989/18 in that the description cannot be relied upon to resolve a clarity issue in the claim, but it does not follow the a contrario reasoning:

The decision illustrates the unitary character of a patent with the example that terms may be given a special meaning in the description, i.e. that a patent specification can become its own dictionary. In conclusion, this decision holds that statements in the description contradicting the plain claim wording may cause doubts as to the intended meaning of this wording:

I am not convinced. Primacy of the claims is the overriding principle of any claim construction. If parts of the description really contradict the plain wording of the claim, I fail to see the clarity issue. These parts are irrelevant and can simply be ignored.

Practice under the PCT

The PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/11) are meant to reflect the practice under Art. 6 PCT, i.e. under the more restrictive wording «fully supported by the description». The following is noted therein:

Notably, not each and every inconsistency has to be removed even under Art. 6 PCT:

However, inconsistencies which do not cause doubt as to the meaning of the claims may be overlooked.

I feel the above examle in the PCT Guidelines is telling — because it illustrates how this practice will inevitably lead to undesired results. I cannot see how a semiconductor in one «embodiment» of the description could cause doubt as to the meaning of the plain wording «electronic tube» in a claim. A tube is a tube, not a semiconductor. Period. The disclosed (non-)embodiment is simply not literally covered by the claimed invention — and we all know what that means for a patentee when trying to assert infringement under the DoE. On the other hand, if this (non-)embodiment is deleted before grant in order to meet the «supported by the description» requirement, a semiconductor may easily be asserted as infringement under the DoE. The result is the exact opposite of legal certainty and serves no public interest at all.

Comparative study of national practices

WIPO has conducted a comparative study on  the relationship of the claims and the disclosure back in 2002; SCP/7/6.

The practice of the EPO is extensively reviewed, and summarized as follows:

No mentioning of amendments to the description at all. Essential features must be taken up in the claims, but that’s it. The same holds true for the other jurisdictions assessed.

In any event, no national practice in a major jurisdiction that I am aware of requires applicants to adapt the description, and in particular not in the way the EPO does. Against this background, I feel that it is somewhat far-fetched to assume that the PCT contracting states really intended to require substantial amendments to the description by way of Art. 6 PCT (and even less so under the less restrictive wording of Art. 84 EPC).

Yet another WIPO document gets it right, in my view. SCP/22/4 holds:

I would just leave it at this. No touching of the description is necessary towards this end.

Where are we going from here

Within a time frame of only a few months, we have seen six decisions on the issue of «supported by the description» and its implications under Art. 84 EPC. T 1989/18 — 3.3.04 cannot simply be ignored anymore since its approach is explicitly supported by yet another Board in T 1444/20 — 3.3.01. Four other Boards dissented. I feel it is only a matter of time until a Board decides to refer the issue to the Enlarged Board of Appeal; Art. 112(1) lit. a EPC. The sooner the better, to finally get things straight.

A referal by the President of the EPO under Art. 112(1) lit. b EPC is not to be expected, in my opinion.

/MW

T 1989/18 — 3.3.04 (HTML)

Chair: Bart CLAES
Member: Oskar LECHNER
Lukas BÜHLER (lm)

Decision of 16 December 2021:

DISSENTING WITH T 1989/18 — 3.3.04

T 1024/18 — 3.2.06 (HTML)

Chair: Michael HARRISON
Member: Martin HANNAM
Wilhelm UNGLER (lm)
Thomas ROSENBLATT
Claes ALMBERG (lm)

Decision of 1 March 2022:

T 2293/18 — 3.5.02 (HTML)

Chair: Richard LORD
Member: Claudia VASSOILLE
Anna BACCHIN (lm)

Decision of 31 March 2022:

T 0121/20 — 3.2.01 (HTML)

Chair: Giovanni PRICOLO
Member: Andrea WAGNER
Peter GUNTZ (lm)

Decision of 11 March 2022:

T 2766/17 — 3.2.02 (HTML)

Chair: Marco ALVAZZI DELFRATE
Member: David CECCARELLI
Christof SCHMIDT (lm)

Decision of 17 March 2022:

CONSENTING WITH T 1989/18 — 3.3.04 

T 1444/20 — 3.3.01 (HTML)

Chair: Albert LINDNER
Member: Regina HAUSS
Lukas BÜHLER (lm)

Decision of 28 April 2022:

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

The revival of in-person oral proceedings as the default format in post-pandemic times

Reading time: 7 minutes

‘Oral proceedings’ by videoconference without the parties’ consent has been the uproar of the year; see this Blog here for some background information. Positions could hardly have been more irreconcilable. The Enlarged Board of Appeal had to step in to resolve the issue. It did so, in stages. The operative part of G 1/21 had been published already on 16 July 2021:

During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even 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.

But this obviously clarified things only to a very limited extent, i.e. (i) for proceedings before the Boards of Appeal; and (ii) for times of ‘general emergency’. It remained unclear what that meant for the first instance bodies of the EPO, and for non-pandemic times.

Meanwhile, the reasoned decision of the EBA has been published on 28 October 2021, accompanied by a press release.

The reasoning of the EBA is straight-forward.

Interpretation of article 116 epc

The EBA had no doubt that those involved in the legislative process leading to Art. 116 EPC 1973 had in-person oral proceedings in a courtroom in mind (¶ 26). However, that does not mean that ‘oral proceedings’ were meant to be limited to this particular format:

In the EBA’s view, it is improbable that the legislator wished to rule out potential future formats which would allow the parties to appropriately plead their case orally (¶ 28-29). Accordingly, the EBA holds (¶ 30):

[O]ral proceedings in the form of a videoconference are oral proceedings within the meaning of Article 116 EPC.

The EBA notes in passing that holding differently would have meant that oral proceedings by videoconference would take place in a legal vacuum, meaning that the provisions and practices relating to oral proceedings would not apply either (¶ 31). I understand that this is not only a forward-looking statement, but would consequently also have applied to videoconferences that had already taken place. Obviously, this would have resulted in a complete mess.

Is a videoconference equivalent to in-person oral proceedings and, if not,  is it a suitable format for conducting oral proceedings?

The equivalence of both formats had been postulated in various decisions of the President (see e.g. here, Art. 1(3)), and this alleged equivalence was much debated.

The EBA’s take on this is very clear (¶ 38):

[C]ommunicating via videoconference cannot, at least for the time being, be put on the same level as communicating in person.

Accordingly, both formats are not equivalent — even though the EBA avoided to bluntly say it that way but rather softpedalled it as «not fully equivalent» (¶ 44). In my view, future developments of the kind of Google’s Project Starline may indeed further narrow the gap between the two formats. But we are clearly not yet there.

But at the same token, the EBA held (¶ 40):

In combination with the written part of the proceedings [a videoconference] normally is sufficient to comply with the principles of fairness of proceedings and the right to be heard.

The EBA therefore comes to the Solomonic conclusion (¶ 43):

[T]he limitations currently inherent in the use of video technology can make it suboptimal as a format for oral proceedings, either objectively or in the perception of the participants, but normally not to such a degree that a party’s right to be heard or right to fair proceedings is seriously impaired.

The role of the parties’ consent

Here we are at the heart of the dispute: Can ‘oral proceedings’ by videoconference be imposed on a party, despite its shortcomings but in view of the EBA’s finding that they are normally okay in terms of the party’s right to be heard and the right to fair proceedings?

The EBA held in no uncertain terms (¶ 45):

[I]n-person hearings should be the default option. Parties can only be denied this option for good reasons.

In setting the stage, the EBA even refers to the in-person format as the ‘gold standard’ (¶ 45). Now, what are these «good reasons» for which a party may be denied the gold standard?

First, «a suitable, even if not equivalent, alternative» must be available (¶ 48). In view of the foregoing, a state-of-the art videoconference will normally be sufficient in this respect.

Secondly, «there must also be circumstances specific to the case that justify the decision not to hold the oral proceedings in person» (¶ 49). This cannot be emphasized enough: It is not (anymore) that a party has to establish why a videoconference is inappropriate in a specific case. It is rather the other way around. What is more, the «circumstances specific to the case» are very limited (¶ 49):

These circumstances should relate to limitations and impairments affecting the parties’ ability to attend oral proceedings in person at the premises of the EPO.

That’s it: A clear-cut criterion, not just an example of what else might come to mind as a «circumstance specific to the case». The EBA went even further and held that «administrative issues such as the availability of conference rooms and interpretation facilities or intented efficiency gains» (sic!) are irrelevant.

Thirdly, «the decision whether good reasons justify a deviation from the preference of a party to hold the oral proceedings in person must be a discretionary decision of the Board of Appeal summoning them to the oral proceedings» (¶ 50).

Finally, the EBA notes that the European Court of Human Rights apparently dealt similarly with the issue; see the ECHR’s Guidelines on Hearings by Videoconference (¶ 1-2).

Now, what does that mean for first instance proceedings?

The EPO had switched to ‘oral proceedings’ by videoconference as the default format in examination proceedings with decision of the President of 17 December 2020. Not as a pilot or during pandemic times only, but rather permanently. The current pilot for ‘oral proceedings’ by videoconference in opposition proceedings is coming to an end on 31 January 2021.

The reasons of the EBA are crystal-clear and in no way specific for ‘oral proceedings’ before the Boards of Appeal; Art. 116 EPC applies equally to first and second instance proceedings. Accordingly, there will have to be changes to how ‘oral proceedings’ are being conducted in first-instance proceedings: In non-pandemic times, in-person oral proceedings will have to be the default format again. Which I truly feel is good.

On the other hand, we have witnessed an extensive field test of videoconference ‘oral proceedings’ at the EPO during the pandemic. Many practitioners surely have appreciated the possibility of ‘oral proceedings’ by videoconference. Including me. This will no doubt spill over to non-pandemic times, i.e. many practitioners will happily choose the videoconference format for many ‘oral proceedings’. Voluntarily. Which, again, is good.

On a personal note, I feel that the EBA’s reasoning is so straight-forward and self-evident that what troubles me most in retrospect is that a referral to the EBA was necessary at all.

Reported by Martin WILMING

G 1/21 — Decision of 16 July 2021

Composition of the Enlarged Board:

Chairman: Fritz BLUMER
Member: Wim VAN DER EIJK
Tamás BOKOR
Richard ARNOLD
Evangelos CHATZIKOS
Gunnar ELIASSON
Andrea RITZKA


BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

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.

UPDATE 21 October 2021: The interlocutory decision T 116/18 of 11 October 2021 has been published yesterday, with a revised wording of the qestions referred to the EBoA. See below.

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

INTERLOCUTORY DECISION

MINUTES

PRELIMINARY OPINION

PATENT AT STAKE

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

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 (EBAamicuscuriae@epo.org).

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

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

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 (EBAamicuscuriae@epo.org); see the communication of 24 March 2021 for details.

Reported by Martin WILMING

AMICUS CURIAE BRIEF

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

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

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

Hearing in G1/19 re computer-implemented simulation

The hearing in case G1/19 took place today.

The decision of the EPO’s Enlarged Board of Appeal will undoubtedly be of outstanding relevance for a whole (service) industry with respect to access to adequate patent protection at the EPO.

Here are my notes from the hearing (please be patient, it may take a few seconds to load):

No April Fool’s joke: A hard move to videoconferencing at the EPO

Reading time: 8 minutes

I guess most of us have implemented certain changes to business procedures, due to the Covid-19 crisis. There is certainly some truth in the following ‘multiple choice questionnaire’ which I have recently seen first on Twitter (@MBA_ish):

Digitalization driver

Challenging times demand for creative solutions. This certainly holds true for the EPO, too. Clearly, the EPO should not and cannot be shut down completely in these times.

But how to deal with oral proceedings, when crowds of people should be avoided and with all those travel restrictions in place?

The EPO’s approach is to make videoconferencing the general rule for oral proceedings before Examining Divisions; see the Decision of the President of the EPO of 1 April 2020 and the Notice from the EPO of same date.

According to the President’s Decision (Art. 1), face-to-face oral proceedings will only be held

 […] if there are serious reasons against holding the oral proceedings by videoconference such as, in particular, the need to take evidence directly.

The Notice of the EPO (¶3) makes clear that there may be other serious reasons for not holding a videoconference,

[…] for example where an impediment prevents an applicant or representative from participating in oral proceedings held by videoconference.

But at the same token, the Notice makes clear that

[s]weeping objections against the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons in this regard. Equally, the need to consider written evidence will not qualify as a serious reason.

That’s a pretty drastic change — not only during the current pandemic, but even thereafter. Even though videoconferencing as a means for conducting oral proceedings has been available at the EPO since 1998(!) (see OJ EPO 12/1997, 572), it had not gained much practical relevance. To the best of my knowledge, less than 10% of oral proceedings before Examining Divisions had actually been held by videoconference, even in recent times.

Why is that?

First, it is my understanding that it was the EPO that refused requests for videoconferencing quite often. Thus, there was a demand for more videoconferences.

Second, there are people like me. Of course there are pros and cons for both, videoconferencing and face-to-face oral proceedings. You may call me a flat-earther, but I am a big fan of face-to-face hearings. I would never opt for a videoconference in an important case that is at the brink of being refused (which is why one normally is summoned to oral proceedings, right?). Oral proceedings are the last chance to convince the ED that a patent should be granted. There is more to oral proceedings than just the spoken word and a tiny, delayed and sluggish image of the person who is speaking. Compared to a face-to-face hearing, videoconferencing to me clearly is no more than a second-best solution.

If the case at hand is of less importance for a client, a videoconference might well suffice — and I would no doubt make use of videoconferencing in such cases. It all boils down to costs. But there is a difference between cost-worthy and cheap. When I go to oral proceedings, I do make sure that it is cost-worthy in view of the importance of the case for the client, and I am convinced that I can do the best for my client in a face-to-face hearing.

It is hard for me to accept that a second-best solution is now being implemented on the rush as a standard for conducting oral proceedings before EDs. It may be pragmatic in the current situation, and it may be cost-effective in general. But:

Imposing videoconferencing on all users as a general rule, with very limited exceptions, is not user-friendly.

In my perception, there would well have been other, far less strict possibilities to promote increased usage of videoconferencing, e.g. by just accepting the videoconferencing request of parties that are willing to do the oral proceedings by videoconference.

See also the News Release on the epi‘s website: The President of the EPO had sent a letter to epi (received on 27 March 2020) informing about the planned changes, and user representatives have been informed about it at the SACEPO Working Party on Rules meeting of 31 March 2020. epi expressed concerns with letter of same day; these concerns had also been expressed in the said SACEPO WPR meeting.

UPDATE 20 April 2020:

Some Italian colleagues raised their concerns in an open letter of 11 April 2020 to the President of the EPO; the letter is available here.

UPDATE 22 April 2020:

epi is collecting the experiences of users with video conferencing before Examining Divisions and Opposition Divisions (according to the EPO pilot program). Please report good or bad experiences. Have your say on the epi forum here (EDs) and here (ODs). Thank you.

UPDATE 1 May 2020:

As reported on Kluwer Patent Blog, the EPO’s Central Staff Committee (CSC) apparently commented on the EPO’s intranet  as follows (hyperlinks added, for ease of reference):

[It]would make sense to align the Office with the practice as well as with emergency provisions of its host countries. This would also appear mandated by the Protocol on Privileges and Immunities.

Holding oral proceedings as distributed videoconferences with the members of the division participating at different locations in the Office or at home is part of your initiative of generalising and making teleworking mandatory, which constitutes a fundamental change in the working conditions of a[n] major part of staff. It must therefore be subject to statutory consultation with the COHSEC [Central Occupational Health, Safety and Ergonomics Committee] and the GCC [General Consultative Committee] in accordance with Articles 38(2) and 38a(3) ServRegs.

Since it has been decided to extend the new procedures for oral proceedings in examination beyond the current Corona crisis, in-depth consultation is necessary. The same applies to opposition oral proceedings for which this new procedure appears likewise here to stay.

Opposition oral proceedings are by law public proceedings, cf. Article 116(4) EPC. It is not at all clear how this is guaranteed if the hearing is conducted as a ViCo (see e.g. T1266/07, points 1.2 and 1.3). The preliminary guidance given in VP1’s announcement (…) states that if the division “receive[s] requests of public to attend opposition proceedings performed via ViCo” it should “contact [its] line manager”, presumably that of the first examiner. Aside from the fact that the line manager is not competent for interfering with the discretionary decisions of the Divisions, the public does not need to “request” attendance, or to announce it in advance. A possibility for the public to attend should therefore be guaranteed in all cases, regardless of any advance request. The guidance thus brings examiners into a conflict between the expectations of management and the requirements of the EPC.

A problem of breach of confidentiality might further arise if members of divisions were not able to adequately isolate themselves, especially during examination non-public OP’s and during deliberations.

[A] yet unknown number of examiners cannot establish simultaneously both a Skype for Business connection and an EPO network connection via Pulse-VPN, as would be required for ViCo OPs, because the network hosts the application documents and the EPO email account. Only either connection works fine by itself.

At present there are no clear laws, no guidelines and no technical facilities to allow distributed oral proceedings in examination and opposition proceedings. In the latter case, even “non-distributed” ViCos with divisions on the Office premises would at present not rest on a solid legal basis.

The measures presently foreseen should be immediately halted and reviewed, also involving the Staff Representation.

In view of the additional strain on the examiner’s mental health, we can at present only advise divisions to judiciously choose, weighing all circumstances, whether to conduct oral proceedings by ViCo or rather to postpone them to a later date until circumstances for conducting them either as a classical ViCo from the Office premises or as “standard” proceedings in person are restored.

Note that I cannot independently verify that this is taken verbatim from the EPO’s intranet, but at least I have no reason to doubt that this is the case.

Reported by Martin WILMING

LETTER OF epi

LETTER OF EPO PRESIDENT

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

The EPO assesses all aspects of entitlement to priority. Rightly so.

Reading time: 9 minutes

Proper assignment of the right to claim priority is intensely discussed in recent times, in particular the way how the EPO addresses such issues.

Why is that?

Broad’s logo

Most attention is where the biggest money is. Or where the most spectacular mishap occurs. Or both. The Broad Institute is upon to lose its CRISPR-Cas gene editing patents in Europe, for a lack of entitlement to priority. It’s not a question of ‘same invention’ this time, but rather of identity of inventor(s) / applicant(s) in both the priority application and the subsequent application.

Some priority basics at the EPO

Art. 87 to 89 EPC provide a complete, self-contained code of rules on claiming priority for the purpose of filing a European patent application (see J 15/80, confirmed in e.g. J 9/07). However, since the EPC — according to its preamble — constitutes a special agreement within the meaning of Art. 19 PC, it is clearly intended not to contravene the basic principles concerning priority laid down in the latter (see T 301/87, G 3/93 and G 2/98).

EPO logo

The EPO does not normally check the validity of a priority right during examination. A check, however, is made if relevant prior art has been made available to the public within the meaning of Art. 54(2) EPC on or after the priority date claimed and before the date of filing or if the content of the European patent application is totally or partially identical with the content of another European application within the meaning of Art. 54(3) EPC, such other application claiming a priority date within the above-mentioned period. In opposition proceedings this applies where prior art is invoked in connection with a ground for opposition under Art. 100(a) EPC in relation to which the priority date is of decisive importance. If the claim to priority turns out to be not valid, intervening prior art may lead to revocation of the patent.

All this is not very exciting; it’s just the law because the patentee cannot enjoy the benefit of an earlier effective date.

It is established practice at the EPO that the claim to priority is invalid if, at the filing date of the subsequent application, the applicant did not have the right to claim priority. Further, it is settled case-law at the EPO that the validity of the transfer of the right to claim priority is a matter of national law (cf. e.g. T 1008/96). All this is even reflected in the Guidelines, A-III, 6.1:

[T]he transfer of the application (or of the priority right as such) must have taken place before the filing date of the later European application and must be a transfer valid under the relevant national provisions. Proof of this transfer can be filed later.

A revolutionary new approach?

Tobias Bremi (second ordinary judge at the FPC) recently made an interesting contribution to the discussion on priority issues at the Fordham Conference (summarized on IPKat here). Tobias argued:

[The] EPO is not competent to assess entitlement to priority issues. […] As long as the formalities encoded in the law have been complied with, entitlement is to be presumed by the EPO.

And, finally, with respect to the CRISPR-Cas case referred to above, Tobias mentioned that he is

still hopeful that they will reconsider in the next instance.

The FPC has distributed a link to IPKat’s report, and the tweet is strict to the point: In Tobias’ view, third parties have no standing to challenge the assignment of the right to priority.

That’s a pretty bold statement, and Judge Grabinski apparently referred to it as ‘revolutionary’. Tobias’ key arguments are as follows:

  1. Analogy to entitlement proceedings

Tobias is cited on IPKat as follows:

Once the formal requirements for claiming priority have been complied with, there is actually no legal basis for questioning entitlement, there is no legal basis for the EPO to ask for proof, and there is also no legal basis for finding a loss of the priority right. [T]he general idea of the EPC was to keep the EPO completely out of entitlement issues as a matter of principle for a number of reasons and to leave that exclusively to the jurisdiction of national courts. It is for national courts to decide on entitlement issues when challenged by an allegedly entitled person. As long as the formalities encoded in the law have been complied with, entitlement is to be presumed by the EPO.

  1. General principles of property law

In Tobias’ view,

[i]t goes against the general principles of property law that priority entitlement issues can be brought up by any third party before the EPO and not just by the one who is allegedly entitled. This opens up rather opportunistic and destructive battles on the validity of priority claims.

  1. Clash with the Paris Convention

With respect to the same/all applicant(s) approach of the EPO (see e.g. T 788/05), Tobias held that

if the EPO uses that approach, actually they apply the ‘lex protectionis’, i.e. the law of the country where protection is sought, to the priority applicants. However, the gist of the Paris Convention is to reduce impediments for international protection.

In Tobias’ view, these principles are in jeopardy by forcing applicants to comply with the law of the country of subsequent filing.

In sum, arguments i) – iii) are also presented by Broad on appeal in opposition proceedings of EP 2 771 468 B1; see Broad's appeal brief (p. 19 ff).

I don’t agree.

Wholeheartedly. Here is my line of thinking:

  1. The analogy with entitlement proceedings is flawed

Entitlement proceedings concern only two sides; i.e. the applicant / patentee on the one hand, and yet another party who believes to be the legitimate owner on the other hand. The EPC explicitly applies the legal fiction that the applicant is entitled (Art. 60(3) EPC), until someone else comes along at a national court and challenges this. The EPO then steps back until the national court has decided on this issue, and thereafter continues its proceedings with the legitimate owner. In my view, this makes perfectly sense since the public is not concerned in any way.

On the other hand, entitlement to priority affects the effective filing date and is therefore decisive for the EPO to correctly assess patentability. There is no legal fiction of entitlement to priority. The EPO fulfills its duties according to Art. 114 in conjunction with Art. 87 to 89 EPC and aims to grant / maintain only those patents that comply with the EPC, to full extent. Rightly so.

  1. General principles of property law are not contravened

It is not just a ‘third party’ who challenges the right to claim priority. It is either the EPO when fulfilling its duties to check for compliance with the EPC, or it is a party to the proceedings in opposition / appeal proceedings who raises the issue. It is in no way ‘destructive’ or ‘opportunistic’ by the EPO or parties to proceedings to challenge a patent for non-compliance with the law. I fail to see how this might go against general principles of property law.

  1. There is no clash with the Paris Convention

The Paris Convention clearly aimed to facilitate international filings. The current practice at the EPO in no way contradicts this purpose. It definitely makes foreign filings much more simple than before the Paris Convention. Admittedly, the European approach is not absolutely fool-proof by design. But it doesn’t have to be. It’s the law: Practitioners are navigating a jungle of pitfalls every day — not only in their home jurisdictions, but in particular abroad. Messing up a priority claim before an IP5 office is just one of many potential nightmares. 

The mere fact that the USPTO more easily acknowledges entitlement to priority even in cases where not all initial applicants are named in the subsequent application doesn’t impress me much. In my view, they just overachieve the minimum standards defined in the PC. But that’s no good reason to abolish with decades of consistently developed case-law at the EPO.

Final thoughts

Consider a world where the EPO does not care anymore about who claims priority.

Bad guys could systematically just grab all early published European patent applications, or utility models, that are still within the priority year and then file subsequent applications with the EPO, claiming priority. The applications could proceed to grant without the entitlement to claim priority ever being challenged. Bad guy could only be stopped by the legitimate owner of the utility model.  If that just doesn’t happen because he/she doesn’t care anymore, or is afraid of costly litigation, bad guy has got the patent. This cannot be it.

Stay firm, EPO.

Reported by Martin WILMING

DISCLOSURE STATEMENT

Nil. I have nothing to disclose. In particular, I am not in any way engaged in the CRISPR-Cas proceedings referred to above. /MW

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

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

Reading time: 4 minutes

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

Fullscreen view (new tab)

T 1063/18

Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

Board of Appeal 3.3.01 moving house on the rush

Reading time: 2 minutes

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
Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.

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

Reading time: 7 minutes
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:

Fullscreen view (new tab)

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.