T 2149/22 - Offering to cancel independent claims

Key points

•  The OD revoked the patent. The proprietor appeals. In translation: "the patent proprietor as appellant requests [in the statement of grounds], in the alternative, that the patent be maintained to the extent of auxiliary request 1 [], or, further, in the alternative, "to the extent  the independent patent claims and the corresponding dependent claims are considered to be new and inventive" ("im Umfang der als neu und erfinderisch angesehenen unabhängigen Patentansprüchen und den davon abhängigen Unteransprüchen"). 
• The proprietor does not submit the written-out auxiliary requests with the statement of grounds.
• The Board; "The request for maintenance in the scope of the independent patent claims considered to be new and inventive and the dependent subclaims, which was filed with the statement of grounds of appeal [] comprises in the present case seven possible combinations of independent claims, namely (a) independent claims 1, 2 and 6 of auxiliary request 1, b) independent claims 1 and 2, c) independent claims 1 and 6, d) independent claims 2 and 6, e) only independent claim 1, f) only independent claim 2, or g) only independent claim 6."
• AR-2 was filed during the oral proceedings before the Board and directed to combination d) of the above list, i.e. original claims 2 and 6 which were independent claims in the patent as granted. 
• "The board considers it excessive formalism to require in the present case that fully worded auxiliary requests directed at the seven possible combinations mentioned above should have been filed with the statement of grounds of appeal."
• Note, this is the reason why the Board considers Art. 12(3) RPBA ("specify expressly all requests" to be complied with. 
• "Thankfully, in the present case the opposition division, after finding that claim 1 of auxiliary request 1 lacked novelty, also examined the requirements of novelty and inventive step for its other independent claims 2 and 6, see paragraphs 6-9 of the contested decision. Therefore, the subject matter of the appeal proceedings has already been fully dealt with by the opposition division and neither the parties nor the board have to deal with substantively new arguments that have not yet been dealt with in the previous proceedings. "
• Note, this is the reason why it is no case amendment in the sense of Art. 12(4). It is unclear to me if the OD considered claims 2 and 6 to be allowable and/or how the parties presented their arguments on those claims in appeal. 
• "Therefore, in the exercise of its discretion under Article 114(2) EPC and Article 13(1)RPBA, the board decided to admit auxiliary request 2". 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2043/22 - Combinations of features

Key points

• "In the auxiliary requests, several amendments are made and differently combined. The individual amendments are:
  
  Amendment A1 concerns feature 1.2.2:
  
  "a leaflet assembly (102) mounted on and positioned within the frame (104), [...]" [the PDF file of the decision uses funderlining to show the amendments)
  
  Amendment A2 also concerns feature 1.2.2:
  
  "[...] a plurality of leaflets (106) that are connected to each other at commissure tabs to form commissures of the leaflet assembly (102);"
  
  Amendment A3 adds ...
  
  [...] Amendment A5' is based on corrected amendment A5 and also submitted as an alternative to A5. [...]
  
  Additionally claims 2, 3, 6 and 11 to 14 as granted are deleted.
• Auxiliary request 1 includes amendment A1.
  
  Auxiliary request 2 includes amendment A2.
  
  Auxiliary request 3 includes amendment A3.
  
  Auxiliary request 4 includes amendment A4.
  
  Auxiliary request 5 includes amendment A5.
  
  Auxiliary request 6 includes amendments A1 and A2.
  
  Auxiliary request 7 includes amendments A1 and A3.
  
  Auxiliary request 8 includes amendments A1 and A4.
  
  Auxiliary request 9 includes amendments A1 and A5.
  
  Auxiliary request 10 includes amendments A1, A2 and A3.
  
  Auxiliary request 11 includes amendments A1, A3 and A4.
  
  Auxiliary request 12 includes amendments A1, A2, A3 and A4.
  
  Auxiliary request 13 includes amendments A2 and A3.
  
  Auxiliary request 14 includes amendments A2 and A4.
  
  Auxiliary request 15 includes amendments A2, A3 and A4.
  
  Auxiliary request 16 includes amendments A2, A3, A4 and A5.
  
  Auxiliary request 17 includes amendments A3 and A4.
  
  Auxiliary request 18 includes amendments A3, A4 and A5.
  
  Auxiliary request 19 includes amendments A4 and A5.
  
  Auxiliary request 20 includes amendments A1, A2, A3, A4 and A5.
  
  Corrected auxiliary request 5 includes corrected amendment A5.
  
  Corrected auxiliary request 9 includes amendment A1 and corrected amendment A5.
  
  Corrected auxiliary request 16 includes amendments A2, A3, A4 and corrected amendment A5.
  
  Corrected auxiliary request 18 includes amendments A3, A4 and corrected amendment A5.
  
  Corrected auxiliary request 19 includes amendment A4 and corrected amendment A5.
  
  Corrected auxiliary request 20 includes amendments A1, A2, A3, A4 and corrected amendment A5.
  
  Auxiliary request 5' includes amendment A5'.
  
  Auxiliary request 9' includes amendments A1 and A5'.
  
  Auxiliary request 16' includes amendments A2, A3, A4 and A5'.
  
  Auxiliary request 18' includes amendments A3, A4 and A5'.
  
  Auxiliary request 19' includes amendments A4 and A5'.
  
  Auxiliary request 20' includes amendments A1, A2, A3, A4 and A5'."
  
  

• " Auxiliary request 20' does not meet the requirements of Article 54 EPC for the same reasons as auxiliary request 16'."

• " In claim 1 of all other requests (auxiliary requests 1 to 20, corrected auxiliary requests 5, 9, 16, 18 to 20 and auxiliary requests 5', 9', 18' and 19') the amendments A1 to A5 (alternatively corrected amendment A5 or amendment A5') are combined in various ways. The subject-matter of claim 1 of all of these auxiliary requests is broader than the subject-matter of claim 1 of auxiliary request 20'. As auxiliary request 20' does not meet the requirements of Article 54 EPC, also all other auxiliary requests are not allowable for the same reasons as set out in points 2 and 3 above."

• 
  

EPO 

The link to the decision can be found after the jump.

T 2053/20 - A remedy for the opponent/appellant

Key points

• The opponent pays the appeal fee using automatic debit order...
• Question for EQE candidates: what goes wrong?
• AAD 3.2 excludes "all fees not payable by the applicant or patent proprietor", meaning "all fees payable by a party other than the applicant or patent proprietor".
• The fee payment is invalid.
• Another question for EQE candidates: what are the available remedies?
• The Board, in translation: "It is undisputed that the appellant expressed its intention to pay the appeal fee in the notice of appeal dated 18 December 2020 and the accompanying letter. The methods used to do so, namely the automatic debit order on the one hand and the direct debit from the current account, which was not issued in the correct electronic format, on the other hand, were not permitted under the provisions of the ADA and its annexes for payment of the appeal fee. This would certainly have been apparent to the appellant if she had studied the ADA carefully. However, the corresponding notification from the EPO regarding the non-execution of the payment request, as mentioned above and actually provided for in the ADA, was not sent. Such a notification might have led to the timely payment of the appeal fee, since the corresponding two-month period did not expire until 7 January 2021, 19 days after receipt of the notice of appeal."
• "Moreover, in previous cases the EPO has accepted without comment the payment of fees by the appellant by invoking the automatic debiting procedure and debited the appeal fee from the appellant's deposit account even in situations where the appellant acted as opponent, even though this was not in accordance with the applicable rules. The appellant was also not informed of any change in the EPO's practice in this regard."
• "The board therefore grants the opponent protection of legitimate expectations (EPO case law, 10th edition 2022, III.A). ["Die Kammer gewährt daher der Einsprechenden Vertrauensschutz"]
  In the absence of any communication to the contrary from the EPO, the appellant could assume under the circumstances that its payment instructions for debiting the appeal fee made on 18 December 2020 had been accepted and executed. It only became aware that this was not the case with the board's decision of 21 September 2023. The appeal fee was then paid within the time limit set by the board."
• As a comment, the Board here applies the rule that "In accordance with the principle of good faith, the EPO is obliged to warn users of the European patent system of omissions or errors which could lead to a final loss of rights. A warning would always be necessary when one could be expected in all good faith (G 2/97)" together with the rule that "The Legal Board held in J 13/90 (OJ 1994, 456) that if the applicant could expect to receive a communication warning him of an impending loss of rights, but that communication was not issued in due time, the EPO must set a new period allowing the applicant to remedy the deficiency and perform the omitted procedural act in due time (see also T 14/89)."
• The CLBA discusses these rules in III.A.4, part of chapter III.A "The principle of the protection of legitimate expectations": "The protection of the legitimate expectations of users of the European patent system has two main principles. [1] It requires that the user must not suffer a disadvantage as a result of having relied on erroneous information or a misleading communication received from the EPO (see in this chapter III.A.3.). [2] It also requires the EPO to warn the applicant of any loss of right if such a warning can be expected in good faith. This presupposes that the deficiency can be readily identified by the EPO (see in this chapter III.A.4.)." The requirements for both rules are quite different. 
• Furthermore, in the case at hand, the instruction "turning on" the automatic debiting was given in the Form accompanying the Notice of appeal. 
• In the case at hand, the opponent had paid the appeal fee after receipt of a Communication of the Board under Rule 100(2) EPC, which pointed out that the appeal fee had not been paid (the deposit account of the opponent was not charged by the EPO). The Board therein did not set a time limit for paying the appeal fee under J13/90, but the opponent/appellant paid the fee with a debit order in the period set for replying to the Communication. 

The link to the decision and an extract of it can be found after the jump.

T 3122/19 - Functional compositions for second medical uses

Key points

• Claim 1 reads: "1. A compound having FGFR inhibitory activity or a pharmaceutically acceptable salt thereof for use in a method of treating or preventing cancer
  - in a patient who has been identified to express a fusion polypeptide comprising an FGFR3 polypeptide and a BAIAP2L1 polypeptide or to carry a polynucleotide encoding the fusion polypeptide, [wherein the polypeptide expressed in the patient has a certain sequence]
  - wherein the compound or a pharmaceutically acceptable salt thereof is capable of inhibiting a growth of a cancer cell expressing the fusion polypeptide or having a nucleotide encoding the fusion polypeptide."
• The compound is hence only defined in functional terms. 
• The Board: "Claim 1 (see section I.) is a purpose-restricted product claim directed to a compound having "FGFR inhibitory activity" for use in a method of treating or preventing cancer in a patient who has been identified as expressing a particular biomarker or as carrying a polynucleotide encoding it. This biomarker is a fusion polypeptide comprising an FGFR3 polypeptide and a BAIAP2L1 polypeptide, each polypeptide being defined by particular sequences. The claim further specifies that the claimed compound is capable of inhibiting the growth of a cancer cell expressing this fusion polypeptide or having a nucleotide encoding it."
• The Board, under sufficiency: "[the question is]  (1) whether the skilled person would have been able, based on the disclosure in the application as filed and/or on their common general knowledge, to obtain compounds as defined in claim 1 without undue burden. These compounds are defined by two functional features, namely that (i) they have FGFR inhibitory activity and that (ii) they are capable of inhibiting the growth of a cancer cell expressing the fusion polypeptide comprising an FGFR3 polypeptide and a BAIAP2L1 polypeptide."
• "in addressing issue (1), [the opponent] referred to the approach developed in particular in decision T 1063/06 (OJ EPO 2009, 516) in the context of so-called "reach-through" claims. The appellant [opponent] argued that the patent did not enable the skilled person to identify all compounds falling within the broad dual-function definition of the claim without undue burden and, accordingly, such alternatives were not available to the skilled person.

• " The board is of the opinion that the situation underlying decision T 1063/06 is not the same as that in the case at hand. The invention at stake in T 1063/06 was based on the discovery that a known illness (in this case cardiovascular disease) could be treated by compounds having the capability of stimulating the soluble guanylate cyclase enzyme independently of the heme group in the enzyme, i.e. the compounds stimulated both the heme-containing soluble guanylate cyclase enzyme and the heme-free soluble guanylate cyclase enzyme. No compounds having this capability were known in the art and such compounds could only be identified by means of a newly disclosed screening method as a new research tool. The claim under consideration in that decision was thus for the use of (hitherto unidentified and thus unknown) compounds, which were defined solely in terms of the specific new capability (function), for the manufacture of a medicament to treat a known illness.

• " By contrast, the invention underlying the case at hand relates to the identification of a subgroup of cancer patients which is susceptible to treatment with FGFR inhibitors. The inventors found that a known human cancer cell line (SW780), which was known to be susceptible to the antiproliferative effect of known FGFR inhibitors, expresses a fusion polypeptide of the FGFR3 polypeptide and the BAIAP2L1 polypeptide which was also identified in various other types of human-derived cancer cells. The claim under consideration is for FGFR inhibitors which have the capability of inhibiting the growth of cancer cells expressing a FGFR3-BAIAP2L1 fusion polypeptide for use in a method of treating cancer in patients who express a FGFR3-BAIAP2L1 fusion polypeptide. This is not the same situation as in T 1063/06, in which any kind of compound (without guidance in terms of chemical structure or other selection rules) would have to be screened for the desired enzyme-stimulating activity."

• "Numerous FGFR inhibitors were known from and made available in the art, and are also identified by their chemical names or structures in the application as filed. These constitute a large pool of candidates. Together with the general structural and functional requirements mentioned in the application as filed, this information would, moreover, have provided some orientation to the person skilled in the art for identifying further FGFR inhibitors, if required"

• "Testing for the second level activity against cancer cells (as described in the application as filed) would not have had to be carried out by trial and error on randomly selected compounds, but only on a limited selection of compounds, i.e. compounds chosen from the class of FGFR inhibitors. No evidence was provided to show that a large proportion of FGFR inhibitors would fail this test (in which case identifying active compounds would be an undue burden on the skilled person). "

• Regarding another decision:" In the case underlying T 1959/15, the invention resided in providing a further class of compounds for treating the disease; in the present case, the invention resides in the identification of the specific genetic make-up of a subgroup of patients who are particularly susceptible to treatment with a known class of compounds. For this reason alone, the findings in decision T 1959/15 do not directly apply to the facts and circumstances of the case at hand."

• In a way, we are patenting a diagnostic method, it seems.

• "unlike the conclusion in T 1959/15 for the claim at stake therein, for the reasons already set out in point 57. above this board takes the view that under the circumstances of the case at hand, the mere fact that claim 1 also covers compounds beyond those shown to be suitable for the therapeutic use does not automatically equate to an undue burden of screening arbitrary compounds. Moreover, this does not result in the claim being able to be classified as a "reach-through" claim."

• There are more interesting issues in the case, e.g. making the claim novel and inventive by adding "wherein said patient is a human patient"

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1563/22 - The prevailing proprietor

Key points

• The Board, in translation: "6. Auxiliary request 4 - Admission
• "6.1 Auxiliary request 4 was filed for the first time with the reply to the appeal and thus represents a change in the respondent's case, the admissibility of which is subject to the discretion of the Board, Article 12(2), (4) RPBA."
• "6.2 Since the opposition division found the existence of novelty and inventive step in its summons supplement and confirmed this in the decision, the patent proprietor had no reason to file auxiliary requests restricted in this regard in the opposition proceedings, contrary to the appellant's view. Therefore, auxiliary request 4 cannot be refused as inadmissible under Article 12(6) RPBA."
• " In this context, the appellant [opponent] cited three decisions (T847/20, T825/20, T1326/21) in the oral proceedings, which it found in chapters VA4.3.7.d) and VA4.3.7.f) of the case law of the boards of appeal. It did not provide any substantive arguments on the relevance of these decisions (in fact, the opposition division appears to have affirmed the existence of a ground for opposition in each case, unlike in the present case), and the board does not consider itself obliged to carry out an independent examination of their relevance. On the contrary, this would be a violation of the principle of impartiality."
• "6.3 Since the Board considers the filing of auxiliary request 4 together with the reply to the appeal to be a timely and appropriate response by the patent proprietor to the opponent's appeal, it has admitted it into the proceedings in the exercise of its discretion under Article 12(4) RPBA.
• AR-4 contains additionally the feature of original claim 2. The opponent/appellant commented on that feature in the Statement of grounds.
• "the process of claim 1 according to auxiliary request 4 involves an inventive step within the meaning of Article 56 EPC in the light of the prior art cited."

EPO 

The link to the decision can be found after the jump.

T 1132/20 - A cloud-computing provider's non-technical business decision

Key points

• As for difference (a), although document D3 does not disclose any other "middleware function" such as firewall or encryption/decryption functionality, these types of functionality are well known in the art. In the context of document D3, a cloud-computing provider's decision to provide such functionality on an optional basis and configured in accordance with the tenants' individual preferences (as negotiated in per-tenant policy agreements or "contracts") is a non-technical business decision.
• It's been a while since we saw the CardinalCommerce business person on this blog. Apparently, he/she/they moved on from insurance, gambling and tax advice to cloud computing services. 
• "the problem-and-solution approach as developed in the case law of the board of appeal is not a mechanistic tool for assessing inventive step but should rather be seen as a useful framework which can help answering in an objective manner the question whether, having regard to the state of the art, the skilled per son could and would have arrived at the invention. The problem-and-solution approach must be applied having in mind the purpose of Article 56 EPC, which is to prevent a patent from being granted on routine or otherwise obvious modifications of what, at the effective filing date, had been available to the public. "

EPO 

The link to the decision can be found after the jump.

R 0008/19 - Objective technical problem, length of review procedure

Key points

• "In the present case, a cornerstone of the Board's inventive step reasoning [in T1537/16]  with respect to claim 1 of auxiliary request 1 was the construction of the objective problem solved by the claimed subject-matter. In line with its reasoning concerning the main request, the Board did not follow the proprietor's view that the objective problem consisted of the provision of an improved pharmaceutical formulation with reduced variability in its pharmacokinetic parameters, since it considered that a corresponding effect had not been demonstrated. But it also did not follow the petitioner's view that the problem was merely the provision of an alternative tablet. Instead, it considered that the objective problem solved was the provision of a pharmaceutical formulation with a zero order release profile."
• The TBA on the main request: The TBA could not follow the argument of the proprietor that "the eroding matrix of claim 1 of the main request necessarily provides a zero order release profile, which is not the case of D1". "An eroding matrix is not necessarily a matrix with a zero order release. Said term is not necessarily connected with specific release properties, it only defines a way of releasing by slow dissolution". The Technical Board also found that the dosage form of example 16 of D1, with a matrix system and a water-insoluble rate-controlling polymer, inherently provided an eroding matrix.
• The TBA on auxiliary request 1: "contrary to claim 1 of the main request which referred generally to a "rate-controlling agent" [of the erosion matrix, I understand], claim 1 of auxiliary request 1 has been restricted to a water-soluble rate-controlling polymer". "it is clear that the distinct nature of the rate-controlling agent shows an effect on the release of the fumaric acid ester from the core tablet. Accordingly, the technical problem is the provision of a pharmaceutical formulation showing a zero order release."
• The Enlarged Board: "The question arises, whether the Board's reliance on an objective problem that was never mentioned to the petitioner amounts to a fundamental violation of the right to be heard. In the Enlarged Board's view, this question cannot generally be answered in the affirmative. The application of the problem-solution approach can be viewed as a method of determining and reasoning whether a claimed invention fulfils the requirement of inventive step (Articles 52 and 56 EPC). "
• "For the reasons given below, the Enlarged Board comes to the conclusion that the Board based its decision only on grounds that were objectively foreseeable by the parties, in view of their submissions and the Board's statements during the appeal proceedings. During the entire proceedings leading to the decision under review, the zero order release profile - the provision of which was eventually adopted by the Board as the objective technical problem - was discussed, either as a quality of the erosion matrix or as a feature that was desirable per see."
• Follows a detailed analysis of the facts of the specific case in points 19 - 27.
• "Under these circumstances, it could not be surprising that the Board connected the additional limiting feature of claim 1 of auxiliary request 1 ("wherein the rate-controlling agent is a water-soluble polymer") with the generally acknowledged advantages of a zero-release profile, which profile was also set out for examples 18 and 22 in Figure 1 of the patent."
• The Enlarged Board also includes a general remark: "In the context of the problem-solution approach, there should normally have been a discussion on the relevant prior art, the differences between the prior art and the claimed invention, and the technical relevance of these differences. Within the framework of what has been addressed in the course of these discussions, the deciding organ should be free to apply the problem-solution approach as it sees fit, and even identify an objective problem that has not been explicitly spelled out as such during the proceedings. In any case, the objective problem eventually used in the reasoning has to be based on technical effects (or the lack of any) and the features of the invention causally linked to such effects, upon which the parties had an opportunity to comment."
  
  
• The decision in case R 8/19 was issued in writing on 20.09.2024. The decision was taken on 12.04.2024. The petition for review was filed on 25.09.2019, so the Enlarged Board took five years (minus a few days) to decide on the case. The decision was taken by a five-member panel.  
• The Enlarged Board also needed more than three months to issue the decision, but Art. 15(9) RPBA has no counterpart in the RPEBA.
• At the time of writing, R12/20 is still awaiting the written decision, and three petitions that were filed in 2021 are still pending. It seems the Enlarged Board is clearing up a (corona-induced?) backlog. 
• The application was filed as a PCT application in 2010. The overall length of the procedure was 14 years. 
• No interruption of the procedure is visible in the Register (Rule 143(1)(t) EPC).

EPO 

The link to the decision and an extract of it can be found after the jump.

J 0003/24 - Late FP request granted

Key points

• "The present application EP 22 155 454.6 was filed on 7 February 2022. The examination and designation fees were due on 10 February 2023 (Friday). These fees were paid on Monday 13 February 2023. By letter of 12 February 2023, the appellant's representative requested that the payment be considered as being on time, as he had assumed that he had given an automatic debit order at the time of taking over representation from the previous representative, but on checking the deposit account on 12 February 2023 it turned out that this was not the case."
• Note, 'due' is here not used in the EPC sense of the first day a fee can be paid validly (Visser's Annotated EPC, 2024, page 855). 
• The Receiving Section allowed the appeal. As the decision is not reasoned, we don't know why.
• "On 21 February 2023, a notification of loss of rights pursuant to Rule 112(1) EPC was sent undated, and was sent again on 7 March 2023, informing the appellant that the application was deemed to be withdrawn because the examination fee and the designation fee had been paid after expiry of the prescribed period for payment. The notification indicated as available means of redress a request for a decision under Rule 112(2) EPC, a request for further processing under Article 121 EPC and a request to consider the fee to have been paid in due time under Article 7(3), (4) Rules relating to Fees (RFees), each with a two-month time limit for filing. 
• IV. On 1 June 2023, the appellant submitted an enquiry regarding his request of 12 February 2023."
• " By a communication of 22 June 2023, the appellant was informed that no valid request for further processing had been filed as the relevant fee had not been paid in due time. "
• "By letter of 29 June 2023, the appellant reiterated his request that the payment of the fees be considered as having been made in time. He explained that he had not interpreted the notification of loss of rights as a reaction to his request filed on 12 February 2023, but as an automatically generated letter. As an auxiliary request he claimed further processing and requested that the required fees be debited from his deposit account."
• Interestingly enough, for some reason, the FP request of 29 June 2023 was apparently granted in appeal by the Receiving Section by interlocutory revision.
• The Legal Board: " In the present case, it must be conceded to the appellant that the notification of loss of rights of 21 February / 7 March 2023 according to Rule 112 EPC made reference to the late payment but did not expressly address the appellant's request of 12 February 2023 for the late payment to be considered as having been made on time. From an objective point of view, it was therefore not clearly apparent whether the Receiving Section had taken this request into account in its communication.
However, on an objective basis and under the present circumstances, it was not reasonable for the appellant to completely disregard this communication. Even if the appellant's representative had considered the notification as having been generated automatically without taking into account the request of 12 February 2023, it is expected that communications from the European Patent Office will be observed. The present notification pointed out the legal remedies available to overcome the loss of rights caused by the late payment of the examination and designation fees and, in particular, indicated the time limit for filing a request for further processing (Article 121 EPC, Rule 135(1) EPC). Such an official communication cannot simply be ignored and set aside. Rather, it was the appellant's own responsibility to enquire about the situation regarding his request of 12 February 2023 before expiry of the triggered time limits in order to ensure that he did not suffer any loss of rights. The fact that he only contacted the Receiving Section on 1 June 2023 must be attributed solely to the appellant."
The appellant could also have requested a decision under Rule 112 on whether the notice of loss of rights was correct; suitably with an auxiliary request for further processing.
• However, the Receiving Section granted the FP request in interlocutory revision, and that decision stands. 
• The request for reimbursement of the appeal fee is rejected.

•  

 

 

 

EPO 

The link to the decision and an extract of it can be found after the jump.

J 0004/23 - Getting on the list without passing the EQE (not)

Key points

• "The requestor (the appellant) asked to be entered on the list of professional representatives before the EPO. He addressed the Vice-President in charge of the Directorate-General for Legal and International Affairs (VP5) and requested an exemption from the requirement of passing the European Qualifying Examination (EQE) as set out under Article 134(2)(c) EPC [i.e. the EQE]. For his request, he relied on the following information published on the EPO's website at the time of the request (emphasis added): "... in accordance with Article 134(7) EPC, the Vice-President in charge of DG5 is entitled to grant exemption from requirements (a) and (c) of Article 134(2) EPC (see Decision of the President of the EPO dated 1 December 2011 delegating his powers to decide on requests for exemption from requirements for entry on the list of professional representatives, OJ EPO 2012, 13)".

• IV. In reply, VP5 informed the requestor that the erroneous information on the website had been rectified but that the request for an exemption could not be granted since there was no possibility of being exempted from having to pass the EQE other than the so-called grandfather clause under Article 134(3) EPC, which was not applicable to the requestor's case."

• After some back and forth, the requester is at the Legal Board. T" The appellant further submitted that it was he who had found this "crack" in the system and that he should therefore be able to benefit from it. The "crack" had also been closed since as the EPO had removed the information from its website, so there was no danger for the EPO that anybody else could claim an exemption in the future. But in his case, he could rely on what had been stated on the website when he had filed his request for an exemption."

• The Board dismisses the appeal.

• "The facts of the case are not disputed. The appellant has not passed the European qualifying examination (EQE). He also confirmed during the oral proceedings that there was no legal basis in the EPC under which the EPO could grant an exemption from the requirement under Article 134(2)(c) EPC to pass the EQE for being entered on the list of professional representatives. Indeed, no such legal basis exists.

  The appellant also confirmed at the oral proceedings before the Board that he relied solely on the principle of legitimate expectations, also called the principle good faith, for his main request."

• "As set out above under point 2., the principle of legitimate expectation is not unrestricted, and it is inherent in the principle that a person can only successfully invoke an expectation on which they could, on an objective basis, legitimately rely. It must be established that, on an objective basis, it was reasonable for a requestor to have been misled by the information on which they relied, here the information of the EPO's website. The appellant has not sufficiently and convincingly demonstrated in his favour that this is the case."

As a comment, I'm not 100% sure if getting on the list without passing the EQE should not be ruled out a priori (except for cases of new contracting states acceding to the EPC under  Article 134(7) EPC). 

•  After some analysis: "Hence, even if the appellant had the expectation that an exemption for the requirement set out in lit. (c) of Article 134(2) EPC could be granted, this expectation was not legitimate."
  
  
• "The principle of the protection of legitimate expectations

• 2. The principle of the protection of legitimate expectations is well established in proceedings before the EPO. This is also made clear in the decisions referred to by the appellant (see above point VII., in particular the decisions of the Enlarged Board of Appeal G 2/97, G 5/88 and G 5/93). It is thus not necessary to invoke, as the appellant did, further legal principles, such as legal certainty or the rule of law, in support of the principle's existence.

  However, the principle of the protection of legitimate expectations does not give a carte blanche to the person relying on it. Rather, it is subject to several limitations (see in general Case Law of the Boards of Appeal, 10th edition 2022, III.A.2.2). First and foremost, not any expectation held by a person is automatically a legitimate one within the meaning of this principle. Whether an expectation is legitimate must be assessed by applying the principle to the facts of the case and, depending on the circumstances of the case, the relief sought may or may not be granted.

  It is therefore inherent in the principle of the protection of legitimate expectations that a person can only successfully invoke an expectation on which they could, on an objective basis, legitimately rely. As put by the Enlarged Board in G 2/97, the erroneous information from the EPO must objectively justify their conduct (G 2/97, Reasons 4.1, citing T 460/95). Therefore, it must be established that, on an objective basis, it was reasonable for the appellant to have been misled by the information on which he relied (see also J 27/92, Reasons 3.2; on the requirement to know the relevant legal provisions, see J 10/17, Reasons 3.3)."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1813/22 - The disappearing commercial device

Key points

• The preliminary opinion in G 1/23 proposes that commercially available products will be deemed to be enabled.
• The Board, on suficiency: "According to the last feature of claim 1 (M1.13), the formation value is to be determined according to a method set out in the description, notably in paragraph 43 of the patent. Accordingly, this method should make use of a specific apparatus ("Paper PerFect Formation Analyzer Code LPA07" manufactured by OPTEST Equipment Inc.) and of a specific test procedure outlined in section 10.0 of its operation manual ("LPA07_PPF_Operation_ManuaI_004.wpd 2009-05-20")."
• "As argued by the respondent, at the filing date of the patent this specific apparatus was seemingly available and so was presumably its manual of operation. The Board however cannot agree with the respondent's conclusion that for this reason the invention defined in claim 1 meets the requirement of sufficiency of disclosure (see point 8 of the respondent's reply to the appeal grounds). Such conclusion could only be confirmed if the apparatus mentioned in the cited paragraph as well as the manual were available over the entire lifespan of the patent (see for example Reasons 3.3 of T 1714/15)."
• "In the present case, the specific machine referred to in paragraph 43 of the patent as well as its operation manual containing the information necessary to perform the test according to its section 10.0, are undisputedly no longer available"
• The appeal decision was taken about 10 years after the filing date.
• Now, as a question, is this patent application enabling as prior art? Was it at the publication date of the patent application?
• How about the EP application as a prior right under Art.54(3) ? 
• "The Board therefore confirms its provisional opinion set out in its communication under Article 15(1) RPBA and concludes that the ground for opposition pursuant to Article 100(b) EPC prejudices maintenance of the patent."

EPO 

The link to the decision and an extract of it can be found after the jump.

Will we get an on sale bar in G 1/23?

Key points

• A few quotes from the observations of the President of the EPO, dated 15.10.2024:
• "Prior art should be understood broadly and Article 54(2) EPC does not make any distinction between products sold or otherwise available on the market, natural substances, documents, or any other disclosure."
• "Should the decision of the EBoA follow the preliminary opinion, the current practice would need to be revised, by differentiating the assessment of products and naturally occurring substances on the one hand, and documents, on the other."
  
  
• "Products available on the market or naturally occurring substances are part of the state of the art with all their properties, i.e. in the specific form in which they were put on the market and in which they are readily available."
• Compare recent decision T2510/18, which found a claim directed to a naturally occurring compound to be novel over a man-made plant extract containing that compound.
• Perhaps the EPO's analysis is to be read as: "Products available on the market or naturally occurring substances are part of the state of the art with all their properties, i.e. in the specific form in which they were put on the market respectively in which they are readily available [in nature]."
  
  
• The following observations of the President are likely restricted to the case of products available on the market or naturally occurring substances: 
• "“Enablement” or “reproducibility” in the sense as derivable from G 1/92, i.e. understood in the same way under Article 54 EPC as under Article 83 EPC, finds no legal basis in the EPC."
• "requiring “enablement” or “reproducibility” to confirm prior art status, finds support neither in the literal meaning of Article 54(2) EPC, nor in the system of the EPC, nor in the preparatory works for the Convention."
• "requiring prior art to be disclosed in an enabling manner would remove from the state of the art practically “anything under the sun”." 
• Cf. the US Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303 (1980) (about patenting a genetically engineered, i.e. human-made, bacteria]: "The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter [under 35 U.S.C. 101] to "include anything under the sun that is made by man.""
  
  
• "The purpose of the requirement of sufficiency of disclosure under Article 83 EPC is to exclude hypothetical or speculative applications, which cannot be put into practice."
• "For a product on the market this  requirement [i.e. Art.83] is of no relevance, because the product exists and therefore it cannot be hypothetical or speculative"
• I recall that the primary purpose of Article 83 EPC is to deal with cases where the inventor can carry out the invention but would like to keep it a secret and obtain a patent. In particular, Article 83 EPC prevents strategies of proprietors that attempt to provide that after the expiry of a patent (e.g. on a product), the proprietor can still have a de facto monopoly as the sole supplier of the invention on the market based on their trade secrets (e.g., the preparation method for that product; unless and until someone independently invents the same invention).
  
  
• "Accordingly, non-reproducible products which are available on the market (or in nature) belong to the state of the art, including all their analysable properties and features, e.g. their composition."
• "non-analysable features" are also possibly part of the prior art, according to the observations: "As regards non-analysable features of a prior art product, excluding them from prior art might lead to similarly problematic results as excluding readily available products from prior art by creating a legal fiction that features which were present in a readily available product do not belong to the state of the art because they could not be analysed at the relevant date. ... Such a legal fiction would ignore the fact that a product was available on the market with all its features and might open the possibility to patent products which have already been put on the market.
  
  
• Hence, G 1/23 could cause an upheaval of the case law on novelty and enablement, and prior art in general (also for Article 56 EPC). 

EPO 

The link to the document is after the jump.

T 2510/18 - Traditional knowledge, alleged biopiracy, and novelty of natural products

Key points

• Article 53 EPC
•  The Board, in translation: "in the early 2000s, the respondent [proprietor] conducted research on traditional anti-malarial remedies among the populations of French Guiana. As part of this project, a survey was conducted in 2001. 117 people from different communities in French Guiana responded to this questionnaire. The traditional remedies used for the treatment of malaria were collected. The project led to the identification of 45 curative recipes involving the use of 27 species of plants. The researchers studied these traditional remedies and subsequently focused their efforts on studying the plant Quassia amara. As a result, the researchers managed to identify an anti-malarial molecule, SkE."
• The molecule is now claimed: claim 1 is a compound claim directed to the molecule SkE.  
• "These observations [submitted by the appellants/opponents] were not contested by the respondent [proprietor] and can therefore be considered as facts."
•  "As indicated by the respondent [proprietors] , none of the appellants' allegations concern the commercial exploitation of the invention, a prerequisite for concluding that the invention would be excluded under Article 53 EPC."
• " the commercial exploitation of this molecule, of the drug containing it and of its isolation process is not contrary to morality, good customs or public order. On the contrary, there is a great need for drugs against malaria, and finding new antimalarial drugs is a mission whose aim is to treat populations at risk and save lives."
• "In the present case, the original development of the invention and the historical process by which the SkE molecule was discovered and isolated have no relevance to the commercial exploitation of the present claims, which require only the isolation of SkE from the plant Quassia amara and its administration to patients. The development of an invention is therefore distinct from its commercial exploitation once it has been achieved."
• "even if the respondent's conduct during the discovery and development of the invention as described by the appellants above were considered to be contrary to good morals and public policy, this does not concern the commercial exploitation of the invention, and therefore does not constitute a reason to exclude the claimed invention from patentability under Article 53(a) EPC."
• I refrain from adding comments on this point of the decision. 
• 
  
• Novelty of natural products
• Claim 1 recites the molecule. I understand that the molecule as such is present in the leaves or stems of a particular plant, Quassia amara. The claim does not recite 'isolated' or 'purified', only the structural formula of the molecule. Is it novel? 
• EPO Guidelines, G-II,3.1 "To find a previously unrecognised substance occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature can be shown to produce a technical effect, it may be patentable. An example of such a case is that of a substance occurring in nature which is found to have an antibiotic effect."
• Here, implicitly, "patentable" means not excluded by Article 52(2), novel and inventive, in combination. Hence, the Guidelines here kind of say that there are no novelty issues on the ground that the compound, as such (and as claimed), existed in nature before. In particular, "it", i.e. the substance, may be patentable, not only the method or use wherein the technical effect is achieved. 
• I'm looking for the EPO case law that supports the statement in the Guidelines.
• Of course, the German decision is BPatG 28.07.1977, 16 W (pat) 64/75, GRUR 1978, 238 Antamanid (no open access copy known to me): "Aber selbst wenn der beanspruchte Stoff Antamanid nachweisbar als solcher in der Natur vorkommen würde, stünde diese Tatsache einer Patentierung nicht entgegen." "Das beanspruchte Antamanid ist neu. Geht man von der Identität des beanspruchten Antamanids und dem im grünen Knollenblätterpilz enthaltenen Stoff als, so steht dieser Umstand der Neuheit der vorliegenden Erfindung nicht entgegen. Nach § 2 PatG gilt eine Erfindung nicht mehr als neu, wenn sie zur Zeit der Anmeldung in öffentlichen Druckschriften bereits derart beschrieben oder im Inland bereits so offenkundig benutzt ist, daß danach die Benutzung durch andere Sachverständige möglich erscheint. [this is the old German law] Am Anmeldetag war aber kein Sachverständiger in der Lage, das cyclische Dekapeptid Antaminid mit der in Anspruch 1 angegebenen Formel zu benutzen. Ihm war der Stoff als solcher und erst recht dessen wertvolle Eigenschaft, nämlich die Wirkung einer absolut tödlichen Dosis Phalloidin aufzuheben, unbekannt, Die Tatsache der Existenz dieses Stoffes in der Natur ist aber für sich genommen noch kein neuheitsschädlicher Umstand, sofern nicht die Kenntnis des Durchschnittsfachmanns von dieser Existenz hinzukommt. Nur ein öffentlich zugänglicher Naturstoff ist im Sinne des Gesetzes nicht mehr neu." . 
• I would be grateful to learn about the corresponding decision of the Technical Boards of Appeal.
• The court in the Antamanid case referred to the identical sentence in the first edition of the EPO Guidelines. 
• "Documents D2, D3 and D5 therefore do not explicitly disclose the SkE molecule or SkE in combination with other compounds. Rather, these documents disclose traditional antimalarial remedies, i.e. preparations derived from the leaves or stems of a particular plant, Quassia amara."
• 3.14: "even if one accepts the presence of SkE in the extracts of D2, D3 and D5, and even interpreting the scope of claim 1 in the broadest possible manner, as the applicants argue, for example to include the plant Quassia amara and its extracts disclosed in D2, D3 and D5, a direct and unambiguous disclosure of the technical features of claim 1, or even of the SkE molecule alone or in combination with other compounds, is still necessary to conclude a lack of novelty. 
•  See also point 4.4.2: " Although the scope of claim 1 may include preparations as set out above,"
• "There is no question of implicit disclosure of the SkE molecule or its combination with other compounds in these documents either. According to the consistent case law of the Boards of Appeal, a prior art document destroys the novelty of the claimed subject-matter if it follows directly and unambiguously from that document, including features implicit for the person skilled in the art. However, an alleged disclosure can only be considered "implicit" if the person skilled in the art immediately recognizes that nothing other than the alleged implicit feature is part of the disclosed subject-matter ... This situation does not apply to the SkE molecule and its combination with other compounds."
• "The fact that the SkE molecule may be contained in the extracts of D2, D3 and D5 does not amount to an implicit disclosure either. According to the decision of the Enlarged Board of Appeal in G 2/88 (points 10 and 10.1 of the Reasons), the question is what has been made available to the public, not what could be inherently contained in what has been made available to the public. Even if that decision concerned a use, the same applies in the present case: the presence of the SkE molecule in the leaves of Quassia amara or their decoction has not been made available to the public by the extracts of D2, D3 or D5."
• G 2/88 was about second non-medical uses. However, the remark is there in point 10.1 - imprecise in my view: "the Enlarged Board would emphasise that under Article 54(2) EPC the question to be decided is what has been "made available" to the public: the question is not what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example). Under the EPC, a hidden or secret use, because it has not been made available to the public, is not a ground of objection to validity of a European patent. In this respect, the provisions of the EPC may differ from the previous national laws of some Contracting States, and even from the current national laws of some non-Contracting States. Thus, the question of "inherency" does not arise as such under Article 54 EPC. Any vested right derived from prior use of an invention is a matter for national law (see, in this connection, e.g. Article 38 of the Community Patent Convention, not yet in force).". 
• Note, indeed 'secret prior use' is no prior art. That, however, is not very relevant to the issue of novelty of a second non-medical use claim over a public prior use of a method (with the same method steps) as at hand in G2/88, nor to the public prior use of the extracts for treating malaria in the case at hand. The EBA's term 'hidden prior use' is unclear to me, I'm unaware of a legal definition of it.
• In my view, at least for product claims and method claims, it is  relevant "what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example)."
• Thanks to the IP Kat comment: "Lord Hoffman's comments in Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1995] UKHL 14 (26 October 1995): 
  "There is an infinite variety of descriptions under which the same thing may be known. Things may be described according what they look like, how they are made, what they do and in many other ways. Under what description must it be known in order to justify the statement that one knows that it exists? This depends entirely upon the purpose for which the question is being asked. Let me elaborate upon an example which was mentioned in argument. The Amazonian Indians have known for centuries that cinchona bark can be used to treat malarial and other fevers. They used it in the form of powdered bark. In 1820, French scientists discovered that the active ingredient, an alkaloid called quinine, could be extracted and used more effectively in the form of sulphate of quinine. In 1944, the structure of the alkaloid molecule (C20H24N2O2) was discovered. This meant that the substance could be synthesised. 
  Imagine a scientist telling an Amazonian Indian about the discoveries of 1820 and 1944. He says: "We have found that the reason why the bark is good for fevers is that it contains an alkaloid with a rather complicated chemical structure which reacts with the red corpuscles in the bloodstream. It is called quinine." The Indian replies: "That is very interesting. In my tribe, we call it the magic spirit of the bark." Does the Indian know about quinine? My Lords, under the description of a quality of the bark which makes it useful for treating fevers, he obviously does. I do not think it matters that he chooses to label it in animistic rather than chemical terms. He knows that the bark has a quality which makes it good for fever and that is one description of quinine."
• Incidentally, I believe there were indeed some national laws in Europe that at one time considered even secret prior use to be part of the state, but I would have to find a source for more details.
• In my article in EPI Information 2020/4, I wrote that "it is established case law that the ‘falling within’ test for lack of novelty can be satisfied based on inherent features of the prior art subject-matter", footnote: "T 12/81 hn.1, see e.g. also T 680/00, r.3. The exceptions are, of course, the special rules for first and second medical uses of Art. 54(4) and (5) EPC 2000, and the special rule for second non-medical use claims of G 2/88; however, these exceptions could also be seen as special rules for claim interpretation (cf. T 308/17, r.7). The remark in G 2/88, r.10.1 that ‘the question of “inherency” does not arise as such under Article 54 EPC’ is probably restricted to use claims as considered therein."
• T12/81, point 6 of the reasons: "If inventions relating to chemical substances defined by claims of this kind are patented, it necessarily follows that the resulting patent documents, once they enter the state of the art, will be prejudicial to the novelty of applications claiming the same substance although in a different and perhaps more closely defined form. This is the case with the present application."
• The present Board does not seem to be of the view that  G 2/88, r.10.1  is limited to use claims.
• Note that the Board expressly states that the claim is novel even if understood as covering "the plant Quassia amara and its extracts" (such extracts undisputedly being known from D2, D3 and D5) (point 3.14; see also point 4.4.2. Hence, the claim covers extracts that were described in scientific articles, e.g. D2: M. Vigneron et al., Journal of Ethnopharmacology 98 (2005), 351-360. These extracts are now patented.
• "D2 is an article that describes a study of antimalarial remedies used in French Guiana. The study found that the most commonly used species was Quassia amara alone or in combination with other plant species [...]. D2 describes that this plant is used in the form of decoctions [i.e. extracts] in water". 
• Hence, D2 discloses technical teachings about the plant and the extract and how to use it in a practical manner. It does not seem that the inventor of the patent discovered the plant or found a practical, technical use for the plant or a use of the extract from it. 
• I believe that in the Antamanid case, there was no known technical use of the poisonous mushroom (death cap) from which it was isolated. 
• Also, the court in that case did not explicitly state that the claim (reciting the compound as such) covered the mushroom. The court held that it could leave open the question of whether "eine ausdrückliche Beschränkung des Stoffanspruchs [to synthetic compounds] unnötig ist, weil es sich von selbst verstehen könnte, daß unter den Schutz des Patents nie das Naturvorkommen als solches fällt, kann hier wegen der mangelnden Nachweisbarkeit der Identität beider Stoffe unentschieden bleiben. Die Regelung im britischen Patentgesetz in Art. 4 Abs. 7 deutet in die Richtung, daß chemische Stoffe, die in der Natur als solche vorkommen, nicht unter das Patent fallen."
• The Board: "SkE was not disclosed in Documents D2, D3 and D5, and the molecule was not made available to the public through the use of Quassia amara leaves to prepare remedies disclosed in those documents."
• 
  
• On inventive step: "Although the scope of claim 1 may include preparations as set out above, the technical features of the claim relate to a specific compound. Therefore, the objective technical problem must also include the provision of a compound. Furthermore, as stated by the respondent, and not disputed by the appellants, the SkE molecule has low toxicity"
• "The objective technical problem can therefore be formulated essentially as proposed by the respondent, namely to provide a specific compound, or a preparation comprising a specific compound having good antimalarial activity and low toxicity. "
• The Board's review of inventive step is then quite detailed and fact-specific.
• "Therefore, the subject-matter of claim 1 involves an inventive step."
• "The same conclusion applies to claims 2 to 6, which depend on claim 1 and relate to a medicament comprising the SkE molecule"
• Claim 3 is a second medical use claim, in translation: "Medicament according to claim 2, for its use in the prevention and/or treatment of malaria". Claim 2 specifies "Medicament comprising the molecule of formula I according to claim 1 and a pharmaceutically acceptable carrier."  Depending on the interpretation of the claim term  "a pharmaceutically acceptable carrier", claim 3 could possibly cover exactly the already known use of the aqueous extracts of the plant to treat malaria, as known e.g. from D2 - which describes the traditional knowledge.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1762/21 - On Art. 88(4) EPC

Key points

•  The proprietor argued that Paragraphs [0007], [0010], [0020] to [0023], [0026] to [0032], [0048], [0051], [0052], [0054], [0060], [0063] and [0064] of the priority application provided a basis for the subject-matter of claims 1 and 7 of the main request, so priority was valid.
• "Point 4 of the Reasons of G 2/98 referred to by the appellant [opponent] does not imply any different criterion in the assessment of added subject-matter and the validity of a priority claim [than the headnote of G2/98]. The relevant passage reads: "It follows that priority for a claim, i.e. an 'element of the invention' within the meaning of Article 4H of the Paris Convention, is to be acknowledged, if the subject-matter of the claim is specifically disclosed be it explicitly or implicitly in the application documents relating to the disclosure, in particular, in the form of a claim or in the form of an embodiment or example specified in the description of the application whose priority is claimed, and that priority for the claim can be refused, if there is no such disclosure."
• "This passage is in line with and does not go beyond the order of G 2/98, as it states that, in order for a priority claim to be valid, a specific disclosure, be it explicit or implicit, has to be present in the application from which the priority is claimed. The term "deutlich" in the German version of the decision [and in Art.88(4) EPC, see below], which is a translation of the term "specifically" in the English version, does not imply that only a clear claim may enjoy a priority claim. The term qualifies the disclosure in the application from which priority is claimed. This disclosure should be specific ("deutlich") in the sense that the subject-matter for which priority is claimed is to be derived from the disclosure in a direct and unambiguous way."
• "Whether this subject-matter as such is unclear is not decisive as long as the same (unclear) subject-matter is directly and unambiguously disclosed in the application from which priority is claimed. In view of Article 88(4) EPC, it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which priority is claimed. In the passage in point 4 of the Reasons of G 2/98, these items, as derived from the expression "in particular", are simply listed as exemplary parts of the application documents."
• Article 88(4) EPC reads: "If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted, provided that the documents of the previous application as a whole specifically disclose / deutlich offenbart / révèle d'une façon précise such elements. "

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1088/21 - Oppo rejected, ARs not admitted

Key points

• "The Opposition Division came to the conclusion that none of the grounds of opposition brought forward by the Opponent prejudiced maintenance of the patent, and rejected the opposition.

  IV. The opponent appealed, arguing, inter alia, that claim 1 of the patent lacked novelty in view of D1. They requested that the decision be set aside and the patent revoked."

• The Board: "Therefore claim 1 of the main request lacks an inventive step in view of D1 (Articles 52(1), 56 and 100(a) EPC)."

• "Auxiliary requests 1 to 6 were submitted for the first time with the reply to the grounds of appeal.  They are amendments in the sense of Article 12(4), first sentence, RPBA, and may be admitted only at the discretion of the Board, subject to the provisions of Article 12(4) to 12(6) RPBA. "

• "the question of inventive step, for claim 1 of the patent as granted in view of D1, was raised in the notice of opposition. Auxiliary requests representing fall-back positions in reaction to such an attack could and should have been filed with the reply to the opposition (Article 12(6), second sentence, RPBA). And indeed, some auxiliary requests were then filed, that were not pursued on appeal."

The qustion is: why should the proprietor have submitted them, vis-a-vis the judicial review in appeal? The OD would not have commented on them at any rate"

• "auxiliary requests 3 to 6 are furthermore clearly not suitable for addressing the issue of lack of an inventive step in view of D1, identified above with regard to the main request (Article 12(4), fifth sentence, RPBA), for the following reasons [giving one sentence reasons why the feature of each auxiliary request does not provide for an inventive step over D1]
• The patent is revoked.    

 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0967/22 - Decision after four months

Key points

• The decision was taken on 07.05.202 and issued in writing on 12.09.2024.
• No Communication under Art. 15(9) RPBA to the parties and the President of the Boards of Appeal is visible in the online file as of this blog post's writing.
• Obviously, some summer holidays may have been a cause for the delay, but the communication could still have been sent. 
• The communication may have been included in the non-public part of the file. 

EPO 

The link to the decision and an extract of it can be found after the jump.

D 0001/22 - A disciplinary case - and the UPC

Key points

•  This is an appeal by the President of the Council of epi against a decision of the Disciplinary Committee to dismiss an appeal against a professional representative. The alleged misconduct is that the professional representative "had failed to transfer a Belgian patent from a company owned by the complainants to them as individuals, resulting in the lapse of the patent."
• The DBA, in reasoning that could be important for the question of who - which (quasi) judicial body -  exercises disciplinary oversight over acts of professional representative in proceedings before the UPC: "the jurisdiction of the disciplinary bodies of epi and the EPO as established by the RDR does not cover any and all conduct or activities of a professional representative"
• "It is true that the preamble of the current version of the epi Code of Conduct (last amended on 11 November 2023, OJ EPO 2024, A35) no longer refers to activities related to the EPC ("This Code, adopted under Articles 4(c) and 9(3) of the Founding Regulation, contains the recommendations of Council as to the conduct and activities of Members in so far as related to Members' profession"). However, this does not alter the conclusion set out in the previous point. The Board agrees with the further reasons given in decision D 19/99 (Reasons 5.1) as to why the application of the European disciplinary rules (pursuant to Article 134(8) EPC 1973, corresponding to current Article 134a(1)(c) EPC) is restricted to acts by a European professional representative connected with a European patent and the EPC, as follows.

  - It follows from Article 134(1) and (5) EPC that professional representatives are, in principle, the only ones entitled to act in all proceedings instituted by the EPC. Therefore, the disciplinary power delegated by the contracting states in Article 134a(1)(c) EPC must necessarily be understood as relating to their activity as such.

  - It is a settled principle of law in the jurisdiction of the same contracting states that provisions enacting disciplinary sanctions that restrict the free exercise of a profession are, like those of criminal law, to be interpreted strictly, and therefore narrowly. Such an interpretation is also necessary to avoid conflicts of jurisdiction between the EPO and national disciplinary bodies. As a consequence of the narrow interpretation of the texts imposing disciplinary sanctions, it is not possible to have these same texts govern, by analogy, other ancillary activities that a professional representative might also engage in.

  - Thus, the disciplinary powers of the bodies set up under Article 134a(1)(c) EPC clearly apply only to the activities of professional representatives in relation to their privilege of representation, i.e. those relating to the grant of a European patent. 

• " The case in hand is, however, exclusively concerned with a national patent. While this national patent served as a priority application for a European patent, the complaint is only about the omission of a transfer of said national patent under the applicable national law. The national parts of the European patent, which claim priority of the national application, are not at issue. The complaint is not related to any provision of the EPC either. The defendant's activities on which the complaint is based thus have no connection with a European patent and provisions of the EPC applicable to the national parts of any such patent (e.g. Articles 65 and 141 EPC). The fact that the defendant is a professional representative does not as such establish the link between the facts of the complaint and the EPC as required by the above case law."

• " the Disciplinary Committee rightly denied its jurisdiction and dismissed the complaint."

• Obiter: " The Board agrees [...] that a professional representative cannot hide behind the veil of a company to avoid the application of European disciplinary rules."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2173/22 - Public prior use in the Village Grocer in Petaling Jaya Malaysia

Key points

• I should mention firstly that the Village Grocer appears to be a nice supermarket in a suburb of Kuala Lumpur.
•   D30 is "Vanilla Mango Flavoured Formulated Milk for Pregnant Women", Mintel GNDP, Record ID: 2577737, July 2014. D30a is here. 
• "D30 is a record extracted from the Mintel GNPD database. It was not disputed that Mintel GNPD is generally acknowledged in the field of nutritional compositions to be a reliable database of commercially available products. D30 reproduces the information on the packaging of a product purchased in a public establishment. The record is also accompanied by images of the packaging, which were provided in colour and higher quality in D30a. An inspection of the images in D30a confirms that the product description and the ingredients disclosed in D30 truly reflect the information on the purchased product. In addition, D30 discloses that the product was purchased by one of Mintel's shoppers in a supermarket called "Village Grocer" in Petaling Jaya 47810, Malaysia."
• "Therefore, D30 is a valid piece of evidence of public prior use. The information it contains demonstrates beyond reasonable doubt that the product described therein was publicly available before the priority date of the patent."
• The Board finds claim 1 to be novel but obvious over D30

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2036/22 - Excluding admitted evidence

Key points

•  "The board has doubts as to whether, by way of criticising the opposition division's procedural handling of D41, a piece of documentary evidence which was admitted into the proceedings by the opposition division and taken into consideration in substance in the decision under appeal could actually be excluded from the proceedings by the board (for further considerations in this respect, see Article 114(1), Rule 81(1), Rule 84(2) EPC). The approach that on appeal, such an exclusion of evidence admitted or introduced into the proceedings by the opposition division is generally not possible implies that a patent proprietor's legal position in relation to such a new piece of evidence presented during opposition proceedings is that it is to be given, during opposition proceedings, an adequate opportunity to respond to that new evidence (see Article 113(1), Rule 81(3) EPC). "
• As a comment: and if not given by the OD, and that point is raised in appeal, the Board should give it, remitting the case where appropriate.
• Separately: "D41 had been filed before the opposition division prior to the date set according to Rule 116 EPC. Any reaction thereto, e.g. by means of experimental report A048, should have been filed with the statement of grounds of appeal at the latest. No justification has been provided as to why this was not done. The state of the proceedings at which A043 [A048 ?] was submitted thus spoke against admittance."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0160/22 - Swiss -type claims in 2024 / contraception

Key points

• Claim 1 of the patent reads: "Use of 20 myg of ethinyl estradiol and 3 mg of drospirenone for the manufacture of a medicament for female oral contraception comprising a flexible, extended regimen, the regimen comprising: ..."
• Question for trainees: what do you know about the filing date of this patent?
• Surprise: it's no divisional! PCT filed in 2005, PCT entry in 2006, first communication from the examining division: 2012 (!), second in 2014, third in 2015, summons in 2016, intention to grant in 2017, notice of opposition in 2018, decision in 2021, decision in appeal: 2024. Which is within the 20-year patent term.
• Second question: what's (allegedly) wrong with the claim?
•  "the question to be answered for determining whether the dosage regimen of claim 1 is limiting is whether the method of female oral contraception comprising the dosage regimen in claim 1 may be regarded as a method of treatment by therapy. This issue was controversial but can be left unanswered since, even if the dosage regimen was limiting, the subject-matter of claim 1 would not involve an inventive step, as outlined in point 2 below."
• "The prevention of pregnancy is not in general a therapy according to Art.53(c), because pregnancy is not an illness (T74/93 r.2.2.3). "
• I wonder if that case would be decided in the same way nowadays.

EPO 

The link to the decision can be found after the jump.