T 2188/22 - Renumbering requests during the OP OD

Key points

• The proprietor renumbered auxiliary request during the OP before the OD: "auxiliary requests 18 to 33 filed during the oral proceedings were identical to auxiliary requests 2 to 17 filed during the written proceedings"
• Hence, new requests 2-17 were inserted during the oral proceedings after the OD concluded that claim 1 was not new over D4.
• "The opposition division decided not to admit auxiliary request 2 into the proceedings. Thereafter the appellant stated that it wished to revert to the auxiliary requests submitted in the written procedure (cf. minutes, page 6, para 4). After the parties were heard on the issue of novelty of the subject-matter of claim 1 of auxiliary request 2 filed on 21 June 2021 the opposition division concluded that auxiliary request 2 lacked novelty. Thereafter the Chairman informed the parties that no further request would be admitted and announced the opposition division's decision revoking the patent"
• The Board: "With regard to the Chairman's statement that only one further request may be filed, it should be noted that it is up to the parties to define their requests. In principle the opposition division cannot prevent the filing of requests, but can only decide on their admittance after having heard the parties on that issue."
• "it should be noted that the appellant had not withdrawn its auxiliary requests 2 to 17 filed in the written procedure. By submitting auxiliary requests 2 to 34 at the oral proceedings, the appellant obviously only pursued the goal of ranking the previous auxiliary requests after the newly submitted auxiliary requests. This follows from the fact that auxiliary requests 18 to 33 submitted at the oral proceedings corresponded to the auxiliary requests 2 to 17 submitted in the written procedure. The fact that the appellant subsequently stated that it wished to revert to its original requests merely meant that it did not wish to pursue the auxiliary requests 2 to 17 newly filed during the oral proceedings. Since the parties were neither heard on the question of admissibility of auxiliary requests 3 to 17 (filed in the written proceedings), nor was the content of those auxiliary requests discussed, the appellant's right to be heard was violated (Article 113(1) EPC). "
• "The fact that the auxiliary requests filed in the written proceedings were renumbered during the oral proceedings before the opposition division does not mean that these requests are to be regarded as "new" requests as stated under point 6 of the impugned decision. "
• "it should be noted that the renumbering of the auxiliary requests which took place during the oral proceedings before the opposition division is not a sufficient reason for disregarding those requests in the proceedings."
• The Board: "The [proprietor] did not file an unreasonable number of requests, nor can the [proprietor's] conduct be considered abusive" because "the higher ranking requests additionally filed in the oral proceedings (i.e. auxiliary requests 2 to 17 then on file) were withdrawn immediately after the opposition division had decided not to admit the newly filed auxiliary request 2. Thus, in fact, the substance of any further request had not been discussed before the appellant decided to revert to its original requests".
• As a comment, the position of the opponent who had to prepare for 17 newly filed auxiliary requests during the hearing should also be considered. Forcing the opponent to prepare for a large number of requests only to withdraw them during the same oral proceedings can be an abuse of procedure in my view, depending on the circumstance (i.e. I'm not saying that it was abusive in the present procedure). 
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0813/20 - A case amendment under Art.12(4) ?

Key points

• The OD maintains the patent in amended form based on AR-II (identical to AR-2 in appeal). Both parties appeal.
• "The statement of grounds of appeal of the opponent contains an objection of lack of inventive step based on D11 as closest prior art against claim 1 of auxiliary request II underlying the contested decision.
• That objection was maintained in the rejoinder of the opponent (section 4.4, item 42), as the present second auxiliary request corresponds to said auxiliary request II. An objection based on D11 as closest prior art was also raised in the rejoinder of the opponent against the main request, the first auxiliary request, and the third auxiliary request in appeal (rejoinder of the opponent, sections 4.3 and 4.5, item 53). 
• The objection against the main request [i.e. lack of inventive step over D11], which corresponds to the patent as granted, is to be regarded as an amendment to the opponent's case within the meaning of Article 12(4) RPBA 2020. Its admittance is at the discretion of the Board."
• The OD had held the claims as granted to lack basis in the application as filed, Art. 123(2).
• The OD also found that AR-2 was inventive over D11 as the closest prior art. As the Board notes: " It is also immediately apparent that the objection of lack of inventive step over D11 submitted against claim 1 of the second auxiliary request is also relevant for the main request whose claim 1 is more broadly defined"
• It is  not clear to me how the inventive step attack from D11 can then be a case amendment. More precisely, how it can be a "part of appeal case not meeting the requirements of Art.12(2)", i.e. not directed to the ... objections ... on which the impugned decision was based. If the inventive step attack against AR-2 is valid, then it must apply equally to the main request, which must be broader (claims as granted).
• At any rate, the Board considers the "unless clause" of Art. 12(4) to apply, such that following the wording of Art.12(4), the attack is "not to be regarded as an amendment".
• The unless clause applies because, even though the attack was "first raised towards the end of the oral proceedings before the opposition division", "it is however apparent from the minutes that the admittance of the objection was discussed between the parties at the oral proceedings proceedings, after which the opposition division admitted the objection into the proceedings. The parties provided their arguments relating to that objection and the impugned decision is based on that objection " (indeed in view of AR-II)
• " Under Article 12(1)(a) RPBA 2020, any such facts, having become part of the contested decision, are basically part of the appeal proceedings too"
• Under the one-way interpretation of G7/93, r.2.6, this is the case.
• "In addition, that amendment of the opponent's case does not add complexity or goes against procedural economy. "
• As the Board had already concluded that it had no discretion to hold the attack inadmissible under Art. 12(4) and established case law, this added remark is puzzling. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

R 0013/22 - Patent revoked, opponent unhappy & diagnostic method

Key points

• The opponent was "European Society of Human Reproduction & Embryology". The title of the patent is "IMAGING AND EVALUATING EMBRYOS, OOCYTES, AND STEM CELLS." 
• The OD has ex officio raised an objection based on Art.53(a) with R.28(c) EPC regarding the commercial use of human embryos.
• In the decision, the OD found that the ground of Art.53(a) did not apply because there is a distinction in the EU biotech directive between inventions for diagnostic purposes applied to human embryos and useful to it, the latter not excluded from patentability.
• O2 raised an objection regarding Art.53(c), diagnostic methods.
• The OD found the claim to be allowable under Art.53(c) because the "third step"  of G 1/04, of diagnosis stricto sensu is not recited in the claim (this is the step that is a " purely intellectual exercise" according to G 1/04, but if you omit it from the claim, there is no objection under the diagnostic method prong of Art.53(c).
• Hence, the OD concluded the claim is allowable under Art.53(a) because it is a diagnostic method and, at the same time, found that it is not a diagnostic method and therefore allowable under Art.53(c). I refrain from comments on this point. 
• Claim 1 as granted is directed to:  "A method for assessing good or poor developmental competence of a human embryo". I have not studied what the patent suggests doing in case of poor developmental competence (potential in the application as filed) of an embryo, though the embryo appears to be in vitro when it is subjected to the measurements. 
• The proprietor disapproves the text of the patent shortly before the hearing in appeal. There was no preliminary opinion of the Board on the issue of Art.53.
• The opponent/appellant expressly requests oral proceedings and a decision on the issue of Art.53
• The Board revokes the patent under Art.113(2)  without giving reasons on Art.53.
• The opponent files a petition for review.
• The Enlarged Board: "The Enlarged Board is thus of the view that the non-holding of the oral proceedings, the non-consideration of the Article 53 EPC objection, and the non-referral of questions to the Enlarged Board of Appeal cannot be considered to have resulted in any prejudice to the Petitioner that would lead to the Petitioner being adversely affected by the decision to revoke the patent within the meaning of Article 112a(1) EPC." 
• " For a board to refer questions to the Enlarged Board of Appeal under Article 112a EPC certain conditions need to be fulfilled. Amongst these conditions is that the referral questions must not have merely theoretical significance. An example of such theoretical questions would be if the board could reach the same decision regardless of the answer (see G 3/98, para 1, and T 547/08, para 4, last para). Some further conditions are that the questions must be relevant for deciding the case in question (see T 2136/16, para 8.1 to 8.3); and that the answer to the referred questions must be essential for the board to reach a decision on the appeal in question (see T 154/04, para 2). None of these conditions apply in the present case. The Board was able to revoke the patent without needing an answer to the referral questions submitted by the Petitioner."
• As a comment, should proprietors withdraw all claim requests that the Boards consider unallowable if such withdrawal is procedurally possible at the end of oral proceedings (and if a petition for reviews is not considered) to avoid the creation of unfavourable case law?

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2285/19 - Interlocutory revision

Key points

• The applicant appeals against the refusal of the patent application. The Board concludes that: " the amendments to the claims of the main request clearly overcome the sole objection raised by the examining division against claims 1 and 6 of auxiliary request 2 on which the decision under appeal was based." 
• The Board concludes that the ED should have granted interlocutory revision: "An appeal is to be considered well founded within the meaning of Article 109(1) EPC if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision. Other objections which may arise in the main request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC". 
• Note that admissibility under Art.12 RPBA is not mentioned as a factor for Art.109 EPC. See T 0682/22.
• "  In view of the board's findings in point 2. above, the examining division could reasonably have been expected to recognise that the amendments made to the claims of the current main request overcame the sole ground for refusing then auxiliary request 2, and should have rectified its decision." 
• The Board does not conclude that this is a substantial procedural violation. This conclusion aligns with T 1060/13 and T 0682/22. 
• The Board remits the case and refunds the appeal fee at 25% because the request for oral proceedings was withdrawn in time (the withdrawal was conditional on the remittal). 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0921/21 - Two lines of case law about Rule 116

Key points

• The decision was issued on 16.08.2023 and is already discussed elsewhere. 
• The opponent filed new documents by the Rule 116 date before the OD. The proprietor filed new claim requests in reply before the oral proceedings. The OD did not admit them. The Board has to review under Art. 12(6) RPBA.
• The Board in adjusted machine translation: " In the jurisprudence of the Boards of Appeal, there are different approaches to assessing the admissibility of claim requests, filed under Rule 116(1), sentence 4, and  (2) EPC in response to a [case amendment of the opponent]."
• "According to one view, a new application prompted by new submissions is considered timely at least if it was submitted at the earliest possible point in the procedure (see ... T 754/16, reasons for the decision 1.3.1; T 487/13, reasons 6.2; see also T 688/16, Reasons 2, according to which the discretion is conditioned by a communication of the reasons opposing maintenance). This earliest possible point in time is determined based on evaluative criteria. According to this legal opinion, the opposition division would not have had any discretion not to admit the applications".
• "According to another view, it should always be possible to hold inadmissible any new submissions if a time limit has not been met (Article 114(2) EPC). This should apply, in particular, to sets of claims filed after the deadline set in Rule 116(1) EPC (T 1776/18, [from 2023] reasons 4.6). According to this view, the assessment is not limited to checking whether the submission was made at the earliest possible point in time, but criteria evaluating the content, such as prima facie allowability, can also be taken into account (T 966/17, reasons 2; T 1776/ 18, reasons for the decision 4.6)."
• However, in this case, the OD had based its decision on the argument that "there were reasons to assume that the patent owner did not only take note of the opponent's written submission when it was transmitted by the Office on January 20, 2021, but rather before Christmas. "
• The Board: "this consideration represents an inadmissible discretionary criterion because it is speculative and was disputed by the [appellant/proprietor]. Rather, what is relevant is when the written statement was served on the patent holder. However, notification [to the proprietor] was only arranged four weeks after documents D5 to D9 were received [by the EPO]. When it would have been possible to view this in the register* is irrelevant and also not proven. Thus, by taking into account an inadmissible criterion, the opposition division has (at least also) come to its conclusion that the applications were filed so exceptionally late that a departure from the normally applicable principle of admitting applications that were filed late by the opposing side was justified facts were submitted."
• * - as a comment, documents are visible in the online file, not in the Register.
• "the fact that the department partly based its discretion on the correct criteria does not change the fact that an inadmissible criterion was also taken into account"
• The request is admitted.
• The request is also held allowable.

EPO 

The link to the decision is provided after the jump.

T 1996/20 - A blog post as prior art

Key points

• In what has a distinct EQE Paper C vibe: "Document D4 is a disclosure made available on the internet in the form of a blog entry published at a certain date followed by a series of user comments posted at a later point in time. In the present case, the board has no doubt that the content of the blog entry dated 15 June 2013 ("2013 06/15") as well as the first three comments on page 6/7 of 16 June 2013 and 10 October 2013 were made available to the public before the priority date of the patent in suit, i.e. before 29 January 2014. With the exclusion of the last five comments of pages 6/7 and 7/7, posted between 3 December 2014 and 16 March 2016, document D4 therefore constitutes prior art under Article 54(2) EPC." 
• " D4 - "Lexan: The 3D-Printer build platform of the future", dated between 15 June 2013 and 16 March 2016, retrieved from the internet (http://www.akeric.com/blog/?p=2158);|" 
• The claim is found to be obvious over the blog post in combination with a patent document D5, it seems with the teaching of a single paragraph of D5 and some dependent claims. 
• "  In the board's view, the skilled person would not have ignored this clear and unambiguous teaching in document D5. This explicit solution to the objective technical problem would have prompted the skilled person to modify the substrate, i.e. the flexible Lexan sheet, of document D4 by texturing its top surface. In so doing, the skilled person would have arrived at the subject-matter of claim 1 of the patent as granted. Hence, the claimed subject-matter is obvious." 
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• The rest of the decision is also interesting, including a discussion of the permitted role of post-published documents under inventive step as evidence of common general knowledge, technical prejudice, "one of many feasible solutions"  and long-felt need. 
• " The appellant's submissions concerning the "dominant thinking" and the "prejudice" at the time of filing seem to miss the point that document D4, the starting point for the inventive step assessment, already discloses an alternative to the Kapton tape, the blue painter's tape and the hairspray, namely a build plate consisting of a flat sheet of flexible material"
• " It may very well be that the textured top surface is just one of several different feasible solutions to the objective technical problem. But it is the only solution to the problem offered by document D5."
•   " The board does not dispute the appellant's argument that producers of 3D printers at the time the application for the patent in suit was filed relied on Kapton foil, blue painter's tape or hairspray. Documents D14 and D17 are proof thereof. However, this does not imply a long-felt need that was overcome by the claimed invention and that is therefore indicative of an inventive step." 
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1203/19 - Novelty of second medical use claims, and credibility of prior art

Key points

• The decision was taken on 26.04.2022 and was notified in writing on 18.07.2023. The minutes were forwarded on 06.05.2022. No communications under Art. 15(9) RPBA are visible in the (public) online file.
• A petition for review is pending.  
• 
  
• " claim 18, is directed to the therapeutic use of an oncolytic adenovirus"
• "Use of the oncolytic adenovirus comprising a sequence encoding a hyaluronidase enzyme inserted in its genome for the manufacture of a medicament for the treatment of a cancer or a pre-malignant state of cancer, in a mammal including a human."
• "If the claimed subject-matter pertains to a use in connection with a medical treatment, for the requirement of reproducibility to be regarded as fulfilled it is necessary that the disclosure in the prior art document is such as to make it credible that the therapeutic effect on which the method of treatment relies can be achieved (see decision T 1457/09 of 17 January 2014, point 36 of the Reasons which refers to decision T 609/02 of 27 October 2004, point 9 of the Reasons). The therapeutic application of the present patent is based on the finding that the expression of a sequence encoding a hyaluronidase enzyme inserted in the genome of an oncolytic adenovirus improves the distribution of the virus through the tumour mass, increases its antitumour efficacy and induces tumour regression (see paragraphs [0017] and [0060] to [0064] and Figures 7 to 9 of the patent)."
• "Document (13) [WO 2005/018332]  does not include any experimental results whatsoever showing expression of the hyaluronidase sequence in tumour cells infected with the described adenovirus, either in vitro or in vivo, nor improved distribution of the described genetically engineered adenovirus within a tumour or tumour regression induced by administering the adenovirus. As a matter of fact, none of the examples of document (13) involves the use of an adenovirus, let alone an oncolytic adenovirus comprising a sequence which encodes a hyaluronase enzyme. Hence, document (13) itself does not provide anything of substance that makes it credible that the genetically engineered adenovirus described therein is in fact suitable for the treatment of cancer."
• "In the board's view, in the absence of relevant experimental data in the document which may support a therapeutic effect, the common general knowledge of the skilled person at the publication date of document (13) becomes highly relevant. Therefore, only if - in the light of this common general knowledge - it was credible that the genetically engineered adenovirus described in document (13), which comprises a sequence encoding a hyaluronidase, was suitable for treating cancer in a mammal, it can be concluded that the skilled person derives this technical teaching from document (13). The board considers that - in view of the common general knowledge set out below - the skilled person would have had serious doubts in this regard and that, therefore, this technical teaching cannot be seen as being derivable from document (13)"
• Regarding inventive step: "As stated above in connection with novelty, document (13) is not considered to be enabling for the use of the oncolytic adenovirus as defined in claim 1 for the treatment of cancer. If, as the respondent contended, the problem to be solved starting from this document were to provide an adequate treatment for cancer, the statements in document (8) (see page 12, last sentence of the second paragraph) would not suggest to the skilled person the use of an oncolytic adenovirus comprising a sequence which encodes a hyaluronidase, but rather the co-administration of an oncolytic adenovirus and hyaluronidase enzyme in the tumour."
• "It follows from the above that the subject-matter of claim 18 is not obvious to a person skilled in the art in view of document (13) combined with common general knowledge. Hence, inventive step is acknowledged."
• Hence, this second medical use claim appears [*] novel and inventive over a prior art document literally apparently disclosing the second medical use.
• [*] - It is not entirely clear to me what the relevant paragraphs of D13 are. The Board's decision does not seem to contain pin-point citations, as D13 is dismissed as not making certain statements credible. 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.