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

Reading time: 8 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.

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.

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.

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:

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

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.

Amicus curiae briefs

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

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

Amicus curiae

Date Submitted by
01 08 Apr 2021  VESPA
02 12 Apr 2021  epi (1)
03 13 Apr 2021  Bayer
04 15 Apr 2021  A. Schauinsland
05 16 Apr 2021  C. Menges
06 19 Apr 2021  Siemens
07 19 Apr 2021  BASF
08 20 Apr 2021  Med. for Europe
09 21 Apr 2021  Philips
10 21 Apr 2021  VPP
11 21 Apr 2021  APEB
12 22 Apr 2021  G-F & D
13 22 Apr 2021  VDA
14 23 Apr 2021  FEMIPI
15 23 Apr 2021  REPI
16 25 Apr 2021  BDPA
17 27. Apr 2021  PAkammer
18 26 Apr 2021  Plasseraud
19 26 Apr 2021  Roche
20 26 Apr 2021  Maiwald et al.
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

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.

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.

What to wish for, and what to expect

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

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

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

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

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

But what to expect?

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

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

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

Reported by Martin WILMING

T 1807/15 – 3.5.02

Interlocutory decision of 12 March 2021

Appellant / opponent:

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

Respondent / patentee:

Andrew AG
Bächliwis 2B
CH-8184 Bachenbülach / Zürich

Composition of the Board:

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

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VESPA’s amicus curiae statement re G 1/21

Reading time: 2 minutes

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

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

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

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

HAVE YOUR SAY!

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

Reported by Martin WILMING

AMICUS CURIAE BRIEF

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

Reading time: 4 minutes

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

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

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

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

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

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

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

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

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

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

UPDATE 16 March 2021:

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

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

What is to be hoped for

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

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

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

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

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

UPDATE 19 February 2021:

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

Reported by Martin WILMING

T 1807/15 – 3.5.02

Interlocutory Decision of 12 March 2021

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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

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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

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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

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T 1063/18

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Board of Appeal 3.3.01 moving house on the rush

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

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

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

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

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

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

UPDATE 3 April 2019:

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

Reported by Martin WILMING

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

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

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:

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

Reading time: 4 minutes

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

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

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

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

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

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

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

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

Stay tuned …

UPDATE 3 April 2019:

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

Reported by Martin WILMING

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

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

Interlocutory decision of 22 February 2019:

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

Reading time: 6 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

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

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

Minutes of the hearing of 7 February 2019:

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Communication of the BoA before the hearing:

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

Reading time: 4 minutes

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

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

Boards of Appeal

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

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

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

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

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

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

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

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

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

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

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

Reported by Martin WILMING

REFERRAL G 1/18 

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REFERRAL G 1/18 (TRANSLATED)

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

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G 1/14

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T 1897/17 – 3.4.01
14 February 2018

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