J 0002/22 - Interruption of proceedings

Key points

• There is a lot going on in this decision. The applicant is a natural person living in London and acting without a professional representative.
• The application was filed as a PCT application. The applicant entered the European phase late, with further processing. More precisely, he filed Form 1200 on the last day of the period for requesting further processing, using web-form filing. The fees were received by the EPO on 18 October. 
• The EPO issued an invitation under Art.7(3) Rfees on 21 November 2019 to file evidence that payment was initiated on 16 October and pay the (then applicable) surcharge. 
• "With e-mails of 2 January 2020 and 24 January 2020 the appellant was reminded of the deadline to reply to the communication of 21 November 2019 concerning fee payment."
• This is remarkable because email is officially not a permitted means of communication in procedures (still).
• "On 23 April 2020, the appellant submitted a written confirmation by his bank XXX of 11 March 2020 that the payment of fees had effectively been requested on 16 October 2019, but had only been sent two days later."
• I understand the EUR 150 surcharge was paid. 
• "Such evidence was indeed provided, if only on 23 April 2020, by a written confirmation of XXX of 11 March 2020 that the payment of fees had effectively been requested on 16 October 2019, and that it had been sent only two days later, i.e. on 18 October 2019 (notably because of initial doubts on the bank's side that such payment has indeed been the appellant's intention)."
•  "In a telephone consultation on 13 July 2020 with a Formalities Officer, the appellant announced that he had meanwhile "found" the communication of 21 November 2019."
• "Upon an internal investigation, receipts of 25 November 2019 were unearthed, signed by the appellant, confirming handover of the communications of 21 November 2019 to him."
• This is remarkable. I wonder what kind of documents these are that are not included in the file but are only "unearthed" later.
• " With a further communication of 20 October 2020, the Receiving Section informed the appellant that notifi cation of the communication of 21 November 2019 had thus been duly effected, and the time limit for reply ing thereto had expired on 3 February 2020, so that his response of 23 April 2020 had (finally) been too late. The Receiving Section announced their intention to issue a decision rejecting the request for further pro ces sing, and gave the appellant the opportunity to respond within two months. "
• The spurious spacing in the text is from the HTML publication of the decision. 
• " By fax of 4 January 2021, the appellant responded, inter alia stating that he had made the necessary payment on the due date of 16 October 2019, but it had been delayed for two days by his bank, for reasons outside his control. He had been diagnosed with a serious medical condition which had the effect that he could enter fairly suddenly and without warning into periods of diminished cognitive capacity, making ma nage ment of day-to-day correspondence difficult. One such episode occurred late 2019 and into early 2020. It was during this time that the communication of 21 No vember 2019 was sent but due to his health difficulties at that time he was not aware of its arrival and the dead line set therein. [....] He pointed at Rule 142 EPC, according to which the pro ceedings should be interrupted in case of legal incapacity. 
• 4 January 2021 was indeed the first Monday after the EPO's end-of-year closing and hence the last day of the period from 20.10.2020.
• It is remarkable that the pro se applicant points to Rule 142 EPC, a rule that could be easily overlooked even by some EQE candidates.
• The Board finds that proceedings are retroactively interrupted from 21 November 2019, so that the invitation under Rfees7 was not validly notified. 
• At least that is how I understand point 2 of the order; see also para. 35 of the reasons.
• "the valid notification on a natural person as party to the proceedings presupposes their legal capacity (cf. Rule 142(1)(a) EPC; as to the term and the conditions see below). The notification on a legally incapable person who is not properly repre sen ted is null and void, as are other procedural acts involving or regarding them (cf. Articles 467, 468, 473 and 475 French Civil Code (FCC); 170 German Code of Civil Procedure (ZPO), 1(1), 6 Austrian Code of Ci vil Procedure (ZPO); cf. Austrian jurisprudence, see Le gal Information System of the Republic of Austria ,,RIS-Justiz" RS0006948, RS0122203, RS0083724). '" 

A uniform standard for legal incapacity of applicants?

• "Legal incapacity of a person means that they are suffering from a disturbance of their mind which makes them unable to form the necessary voluntary intention to carry out legal transactions binding upon them, e.g. to make valid contracts (Case Law of the Boards of Appeal, 10th ed. 2022, III.D.4.3; J 900/85, OJ 1985, 159). In the context of the procedural system of the EPC, which does not distinguish between civil and proce dural legal capacity (see below), this also means that they cannot act on their own in proceedings before the EPO."
• "The Boards' jurisprudence in this context tells the standards regarding (private) natural persons (i.e. based on the relevant national law) apart from those regarding professional representatives (i.e. a uniform standard based on the autonomous law of the EPC, see Case Law III.D.3.2 and III.D.3.4[...]); J 900/85; J 903/87, OJ 1998, 177)."
• The present Board: "However, there is no stringent reason for making such a distinction, at all, and as to why the principles laid out in J 900/85 for professional representatives should not equally apply to natural persons, i.e. the assess ment be made on the basis of the autonomous law of the EPC"
• I've studied the Travaux to Rule 90 EPC 1973. A relevant passage can be found in 7669/IV/63, page 63, with a discussion of a fundamental difference between French, Dutch and Belgium law on the one hand and German law on the other hand, relating to legal incapacity of natural persons (page 43 of the PDF); concluding on p.64, first paragraph, last sentence, that 'the personal statute' applies in the sense of private international law, i.e. the law of the country of residence.
• The EPO no longer has the individual PDF files of the Travaux on their website, only large ZIP files with collections of files. I can not link to the relevant document or page anymore.
• As a comment, the Legal Board seems to follow the German approach to legal incapacity. There could be valid reasons for doing so, but that is beyond the scope of this blog post.
• "only unified standards according to the autonomous law of the EPC can guarantee equal treatment of the parties in proceedings before the EPO, as an essential element of fair trial"
• So, an applicant/natural person can be 'mentally fit' to conclude contracts under the national law of his/her place of residence and still 'unfit' in the procedure before the EPO, according to this decision.

The facts of the case

• In the present case, the appellant himself ... to support the request for interruption of the proceedings - had put his health issues on the table, together with me di cal documentation: the medical certificates of 3 April 2020, of 26 October 2020, and of 13 September 2021, all from the N.N. Medical Centre. Already according to them, the appellant suffered from a number of medical conditions, specifically recurrent depres sion, PTSD and dissociative seizures, and he had a tendency to experience several months long episodes where he was in a major depressive state, leaving him often unable to leave bed
• "Given the circumstances of the case and the evidence already on file at first instance, the appellant's legal capacity could no longer simply be presumed without further investigation and, in the absence of further medical evidence to the contrary, he could no longer be treated like any other party presumed to be able to act validly in the proceedings on their own, and without proper representation."
• "As the appellant is domiciled in London, the board ap proached the Court of Protection, in particular, which has a main office in London and regional hubs and is responsible for a range of decisions in financial and welfare matters for people in England and Wales who lack mental capacity. "
• " Reaching out to the Court of Protection, and the Office of the Public Guardian (an administrative and super visory body to the Court of Protection, see Part 2, Section 57, of the Mental Capacity Act 2005), did not return any responses. "
• "These further documents, atop the medical documentation already on file, and in the light of the appellant's be haviour and submissions in the proceedings, finally provide sufficient evidence to conclude that the appel lant did not possess legal capacity during a substan tial part of the proceedings, and that this problem per sists to date. In view thereof, further investi ga tions into the appellant's state of health, or even an ex-officio medical examination, could be dispensed with, at least for the time being."

Effects of the interruption

• "as outlined above, the notification of the Receiving Section's communication of 21 November 2019 is null and void, since the appellant was in a state of legal incapacity at that time, and is there fore without effect. The same applies to the entire sub sequent proceedings, i.e. the procedural steps taken by the departments of first instance and the appellant since then. This includes, in particular, the contested decision and its notification.
• These proceedings are thus (to be declared) null and void, with the consequence that the impugned decision is deemed to have never become legally effective. 

Declaration of interruption by the Board

• "The declaratory decision on interruption is to be taken by the board, and there is no room to involve the Legal Division at this stage"
• "The Deci sion of the President of the EPO concerning the res ponsibilities of the Legal Division of 21 November 2013, OJ 2013, 600, did not transfer any powers and competences from the Boards of Appeal to the Legal Division on the basis of Rule 11 EPC ("allocation of duties to the departments of first instance"), but only concerned the allocation of functions between these first-instance departments. "

Further procedure

• "In view of XXX's confirmation, it can be con cluded that the payment of the fees for further processing was made, and that the omitted acts were also completed, in due time. There is no harm in the fact that this confirmation was only submitted on 23 April 2020, outside the two-month deadline set out in the communication of 21 November 2019, since the notifi cation of that communication being null and void could not have triggered such deadline."
• Consequently, the request for further processing was validly made and further processing will have to be granted in the continued proceedings before the first instance. The legal consequences of Article 121(3) EPC will then apply and the proceedings at first instance will have to be further continued by dealing with the appellant's requests for entry into the European phase and for examination by the EPO as designated Office, which were validly filed on 16 November 2019, together with the request for further processing.
• " The UN Convention on the Rights of Persons with Disabilities, having been ratified by the Contracting States of the EPC, and the EPOrg Extension and Validation States, provides:"
• This seems to be an example of the systemic interpretation of the EPC; see the article of McLachlan discussed here (to cite: "This article starts from the proposition that Article 31(3)(c) [VCLT] expresses a more general principle of treaty interpretation, namely that of systemic integration within the international legal system. The foundation of this principle is that treaties are themselves creatures of international law. However wide their subject matter, they are all nevertheless limited in scope and are predicated for their existence and operation on being part of the international law system.")
• "Accordingly, national legal systems sport a variety of safeguards that persons protected by the Convention can enjoy equal access to justice. Notably, there are various mechanisms to ensure that persons lacking legal capacity can participate in legal proceedings through the appointment of (legal) representatives."
• " The appellant is in fact habitually resident in London. The system for dealing with legal incapacity in England and Wales revolves around the Court of Protection, based on the Mental Capacity Act 2005, which can, inter alia, appoint a "deputy" (for property and financial affairs or for personal welfare) to make decisions on behalf of a person who has lost legal capacity ("pro tected party"), and to also represent them as their "litigation friend" in any proceedings to which the deputy's power extends "
• " this system does not appear to provide for an easily accessible procedure for the appointment of a representative at the request of other persons or institutions, or even authorities such as the EPO, without specific permission from the court "
• "The appointment of a deputy as the appellant's liti gation friend/legal representative in accordance with the national procedures of the Court of Protection and with a view to representing him in the present proceedings before the EPO would have been the preferred option under the EPC (cf. Rule 142(1)(a) EPC "... or the person authorised by national law to act on [their] behalf")."
•  I think this part of Rule 142 EPC addresses one of the possible grounds for an interruption, and does not relate to the manner of appointment of a representative of a natural person with mental health problems. Hence, the quote 'cf.' is correct but not very helpful. 
• "Since the appellant is in a state of legal incapacity, as outlined in detail above, he could not validly authorise them directly as his representatives of choice "
• " For the time being, therefore, there is thus no al ternative to the EPO themselves appointing a represen tative, in particular the competent department of first instance, and thus resuming and continuing the proceedings before them."
• "Rule 151(2) EPC provides for the appointment [by the EPO] of a com mon representative for a multitude of applicants, in certain circumstances. The concept of the appointment of a representative for legal proceedings is thus in herent in the system of the EPC, and can, as a matter of principle, be applied to any case such as the present one, where a representative is essential to gua rantee the participation of a legally incapable person as party and thus a fair trial. Such an appoint ment by the administrative or judicial authority of the proceedings is also in accordance with the principles of procedural law generally recognised in the Contracting States to the EPC (see Article 125 EPC)."
• "On this basis, the competent department of first in stance will have to appoint a representative and continue the proceedings. "
• Which is interesting. The Legal Board could perhaps have clarified if this also means that the EPO will pay the invoices of the solicitors or patent attorneys. 
• The procedure will now be resumed under Rule 141(2) (by analogy) once the EPO has appointed the representative. 
• Unlike a court-appointed guardian of a mentally ill person, the EPO-appointed representative will not manage the applicant's bank account (as I understand it) and will not receive a court-approved renumeration. 
• I also wonder when the appointment of the EPO-appointed representative will lapse. I assume when the mental state of the applicant improves to above the threshold of Rule 142(1)(a)? (Incidentally, see his calculation of 4 January 2021 as the last day of the period mentioned above, cf. point 37 of the reasons). 
• I wonder whether the application of Rule 151(2) by analogy is the solution envisaged in Rule 142 for the case of lack of a representative. Rule 142 was amended in 2020 to clarify that the proceedings are resumed once "the European Patent Office has been informed of the identity of the person authorised to continue the proceedings" and " If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion." 
• It is also unclear to me if, under Rule 151(2) EPC which is about multiple applicants, the EPO appoints a professional representative or one of the applicants as the common representative. 

Remedies for Rfees7(4)

• Further processing is not explicitly excluded, nor re-establishment, but there is some old case law stating that the Rfees are 'outside' the EPC (in a case about a debit order filed in Dutch (J170/83). However, meanwhile, it is clear that Rule 139 EPC applies to debit orders (J8/19). Singer EPÜ, notes to the Rfees, is silent on it. 
• The period of Rfees7(4) is specified by the EPO, the applicant could have requested extension of the period before it expired.

EPO 

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

T 0224/22 - Deciding on the admissibility of the lower ranking requests; obiter findings

Key points

• "The appeals by the patent proprietor (appellant 1) and opponent 2 (appellant 2) lie from the opposition division's interlocutory decision to maintain the patent in amended form on the basis of auxiliary request 1."
•  "During the opposition proceedings, the patent proprietor filed 44 auxiliary requests after the negative opinion of the opposition division and before the final date according to Rule 116(1) EPC. They were admitted into the proceedings by the opposition division. "
• Question: how, then, can the OD decide on the admissibility of the lower-ranking requests, i.e. the requests ranking lower than AR-1 that was held allowable by the OD? 
• "The present board cannot agree that the opposition division exercised their discretion in an unreasonable way or based on the wrong criteria. They considered that the requests were a serious attempt to address objections raised by the opponents. They also considered the time of filing appropriate in view of their negative opinion. These criteria are appropriate criteria to rely on when deciding on the admission of late requests."
• "According to established case law, the boards do not have the power to disregard on appeal submissions correctly admitted by the opposition division in exercise of their discretion (Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.3.4.4). Therefore, the auxiliary requests are part of the appeal proceedings."
• I have some doubts if AR-2, which was not considered in substance (on the merits) by the OD is a request "on which the decision under appeal was based" in the sense of Art. 12(2) and (4) RPBA.
• I think the case law only applies to requests that were admitted and considered on the merits, but I've not double-checked this. 
  
  
• "The subject-matter of claim 1 of auxiliary request 1 thus does not involve an inventive step (Article 56 EPC)."
• "No objection against auxiliary request 2 was raised in due time."
• The patent is to be maintained on the basis of AR-2.
  
  
• Compare T 1614/21: "The Board agrees with the respondent that the statement at the end of sheet 11 of the grounds for the decision under appeal, i.e. the passage in which auxiliary requests 2*, 3* and 4* are referred to as "late-filed" and "considered as not admissible", is an obiter dictum (auxiliary request 1 having been considered allowable by the opposition division). Regarding the right to be heard, this statement is problematic as the admittance of these requests was "not discussed" with the parties "during the oral proceedings" (decision under appeal, sheet 11) or in writing. "
• See also T 0948/19, where the Board wishes to have more obiter* findings of the OD: "In this context, the following should be noted: In a last-instance decision, when a request is not allowed on other grounds it is normally superfluous to address further objections raised against that same request that were found unconvincing after having been discussed at oral proceedings. However, the situation is different for a decision of an opposition division, which may be the subject of an appeal. In this case, if the Board is not convinced by the reasons the opposition division gave in support of precluding the maintenance of the patent on the basis of a certain request, the lack of a decision to review in respect of the aforementioned further objections may result in a remittal for the consideration of said further objections, resulting in a delay in the proceedings."
• * - I understand the part in italics to relate to "further objections raised against that same request that were found unconvincing [by the OD] after having been discussed at oral proceedings". 

EPO 

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

T 0957/22 - An exception to the exceptions to the prohibition of reformatio in peius

Key points

•  "In decision G 1/99 (OJ 2001, 382, headnote), the Enlarged Board of Appeal formulated an exception to the prohibition of reformatio in peius, namely "in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the opposition division in its interlocutory decision".
•  The Board, obiter it seems: "The board however agrees with the opponent that this exception does not apply in the case at hand, because the proprietor deliberately withdrew its appeal, and thus waived the possibility of defending its patent in a broader version than that upheld by the opposition division, although it was aware that the board had endorsed in its preliminary opinion the objection under Article 123(2) EPC against the first auxiliary request. In this situation, there is no justification to grant the proprietor back this possibility for reasons of equity, i.e. to establish an exception from the prohibition of reformatio in peius. A party who waives an existing right in full knowledge of the legal situation cannot expect to be granted back this right for reasons of equity."
• G1/99 uses the term '(in)equitable': "if during the appeal proceedings a request is filed by the patent proprietor/respondent in order to meet an objection raised by the opponent/appellant or by the Board to the effect that an amendment introduced in opposition proceedings and held allowable by the Opposition Division does not comply with the requirements of the EPC, and [which objection ] would have the direct consequence that the patent would have to be revoked, then for the reasons given supra in point 13, it would be inequitable for the patent proprietor not to be given a fair opportunity to mitigate the consequences of errors of judgement made by the Opposition Division. Therefore, the patent proprietor may be allowed to file requests in order to overcome this deficiency."
• The point about the proprietor forfeiting its (equitable) rights as a respondent under G1/99 by withdrawing the appeal could be novel. I'm not sure if it is very helpful under the RPBA: an amendment under G 1/99 in reply to an objection in the Statement of grounds of the opponent will have to be made in the reply of the proprietor as a respondent. 
• "Moreover, even if the principles as set out in decision G 1/99 were to be applied to the case at hand, i.e. if the proprietor could benefit from an exception to the principle of reformatio in peius, the decision of the Enlarged Board stipulates that such an exception can only be made if the objection cannot be overcome by two other forms of amendments set out in the headnote of decision G 1/99. However, the proprietor has not argued, nor is it discernible for the board, that claim amendments of these types were not possible."
• G1/99: "In such circumstances, in order to overcome the deficiency, the patent proprietor/respondent may be allowed to file requests, as follows:

  - in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained;

  - if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC;"
  - finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC.

• I should probably admit here that I don't fully understand the second bullet. 

• Amendments under the first bullet, of course, do not need to invoke the exception to the prohibition of reformatio in peius. They simply restrict the claims further in appeal. 

• Incidentally, the prescribed order can result in rather strange oral proceedings where the opponent identifies claim amendments that, according to the opponent, are allowable (address an intermediate generalisation in the patent as maintained by the OD, e.g. by limiting to the specific embodiment of the drawing or example), and the proprietor argues that they are not allowable (I saw that once). 

EPO 

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

T 1952/21 - Is AI / machine learning as such technical?

Key points

• Inventive step is at issue for a claim directed to a "machine learning system" comprising generic hardware and some sotware.
• The Board: "The application relates to reinforcement learning. In reinforcement learning, an agent explores the environment according to a policy, determining which action the agent takes (e.g. move right) at every juncture as a function of its current state (e.g. its position in the environment). The agent receives rewards, positive or negative. In this way it can "learn" the value of the various actions and states. The goal of training is to maximize a value function which reflects the expected sum of rewards given a certain action. The application builds upon the method of D1, called A3C (asynchronous advantage actor-critic). That method separately approximates the policy and value models as neural networks. The raw input (describing the environment) is preprocessed in sequence by a feed forward network. The result is fed to the value and the policy networks. Developments of that method [i.e. the distinguishing feature of claim 1, as I understand it], termed NoisyNet A3C in the current application, inject randomness into the training by using stochastic weights (e.g. by adding random noise or using stochastic models) in the policy and value networks. This allows for further exploration of the parameter space )." [initernal citations omitted]
• The decision does not seem to explicitly identify the distinguishing features of claim 1 over D1. Claim 1 recites: "wherein said feed-forward neural network comprises stochastic units". This may be the relevant feature.
• The Board extensively summarizes the applicant's arguments, but I'm more interested in the Board's reasoning.
• The Board: "The Board remarks that pseudorandom number generators were known to the person skilled in the art. Their use, in general or in the more specific context of "stochastic units" [] does not change in substance the computer, which remains as "deterministic" as any conventional computer. So the Board cannot see a contribution on this level."
• I'm not sure if "well known" and "non-technical" are the same under the EPO approach to inventive step (cf. the US approach in Alice, 573 U.S. 208)
  
• "The system for reinforcement learning as claimed is a neural network, comprising various sub-networks, implemented on a computer. The network, as a whole, defines a mathematical function mapping inputs into outputs. Effectively, the claim is to a mathematical method implemented on a computer."
• I guess this observation is true for any type of software?
• "the Board holds that the Enlarged Board decision G 1/19, addressing the patentability of computer-implemented mathematical models for simulation, should be the starting point when assessing the technical character of reinforcement learning. It is commonly accepted that a large part of the findings in G 1/19 apply to any computer implemented inventions.
• " In G 1/19, the Enlarged Board of Appeal stated (reasons 137) that (simulation) models by themselves are not technical but that "they may contribute to technicality if, for example, they are a reason for adapting the computer or its functioning, or if they form the basis for a further technical use of the outcomes of the simulation". However, "such further use has to be at least implicitly specified in the claim"."
• The Board finds there is no implicit further technical use in the case at hand.
• " The Board has already explained above that the functioning of the computer, or the computer itself, are not adapted. "
• Regrettably, I can't find the 'above' quickly.
• "This conclusion is consistent with that in the case T 702/20, which is in many ways similar to the present one, where this Board (in a different composition) decided, also following G 1/19, that a trained machine learning model, namely a neural network, can "only be considered for the assessment of inventive step when used to solve a technical problem, e.g. when trained with specific data for a specific technical task" []."
• "The Appellant also argued that reinforcement learning was technical based on an analogy with the case law regarding cryptography, in particular RSA [T 1326/06]
• From that case: "Nach Meinung der Kammer handelt es sich beim sicheren Austausch von elektronischen Nachrichten um eine technische Wirkung, die zu erzielen als eine technische Aufgabe angesehen werden muss. RSA löst diese Aufgabe mit mathematischen Mitteln. Mit RSA gelang ein Durchbruch in der Entwicklung der Kryptografie: RSA wird als das erste praktikable, konkret implementierbare asymmetrische Kryptosystem angesehen und ist heute in zahlreichen kryptografischen Sicherheitssystemen eine zentrale Komponente. Die RSA zugrundeliegende Mathematik dient somit unmittelbar der Lösung eines konkreten technischen Problems."
•  "The Board notes that [...] RSA and reinforcement learning are different and serve different purposes. In particular, RSA and other cryptographic methods have a specific, and at least implied, purpose, namely data security. This is not the case for reinforcement learning. So the findings regarding RSA cannot directly be transferred to reinforcement learning."
• This raises the question: why is 'data security' technical and 'machine learning' not?
• To me, as a simple chemist, ChatGPT feels just like database management technology, turbo code interleavers for wireless communication, and copy/paste (clipboard) on the computer: I have (basically) no idea how it works, but it definitely makes my computer more useful, even though they are perhaps not all prize-winning.
• Whether introducing randomness for "further exploration of the parameter space " in the given context is obvious or not, I don't know. 
• "The Board accepts that the use of the term technical in the case law of the Boards of Appeal may differ from its use elsewhere in society, especially from its colloquial use. However, this does not mean that the Boards of Appeal interpret the law incorrectly: it is common place that the legal interpretation of a term may differ from its colloquial meaning. In particular, the Boards use the term "non-technical" to denote matter excluded under Article 52(2) and (3) EPC. Any alternative interpretation of the terms "technical" and "non-technical" can only be used to justify the patentability of subject-matter to the extent that it does not contradict the law, in particular the exclusion of mathematical methods."

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

J 0011/20 - Correcting the drawings effectively in appeal

Key points

• An application is refused on 17.01.2020 under Art. 90(5) for failure to correct drawings in due time (more details below).
• "as clarified in decision J 18/08 (Reasons 4 and 6), when an application is refused under Article 90(5) EPC, if an appeal is filed against such a refusal, the board of appeal has to examine whether the deficiency noted has been corrected or not. Thus the deficiency on which the decision under Article 90(5) EPC is based can be corrected at the appeal stage."
• J 18/08, issued in 2009, concerned the failure to appoint a professional representative where required. The Board allowed the applicant to repair that deficiency in appeal.
• In the case at hand, the deficiency had been remedied already (the correct drawings were filed). In fact, the Receiving Section had informed the applicant in August 2019 that the correct drawings had been filed late (namely after the period set in the communication informing the applicant about the deficiency). Then, in October, there was a phone call and a request for re-establishment, followed by the Receiving Section issuing in January 2020 a decision refusing the application. The Board concludes that the decision must be 'reversed'. 
• The Board expresses surprise at the Receiving Section not granting interlocutory revision. "The practice of the Receiving Section, based on this procedure and following the cited case law, has been to rectify its decision refusing an application under Article 90(5) EPC, if an appeal is filed and the deficiency is remedied at the appeal instance and to forward the appeal to the boards of appeal as far as the request for reimbursement of the appeal fee is concerned (see also Neumann in Singer, Stauder, Luginb hl, EP , 9th edition 2023, Art. 90, note 59, as well as Ehlers in Benkard, EP , 4th edition 2023, Art. 90, note 130)."
• I don't know what is going on with the Ü.
• In view of the rather strange chronology (deficiency remedied before the filing of the appeal) and the request for re-establishment made before the refusal decision (and again with the appeal), I can see some reasons for not granting interlocutory revision. 
• The Board sees a substantial procedural violation, in that the Receiving Section did not decide at all on the request for re-establishment and in that the Receiving Section had not commented on the argument of the applicant, already presented then, that it had not received the Communication setting the time limit.
• " although the appellant had contested the receipt of the Communication on 24 October 2019 in a timely and formal manner (see point X. above), the Receiving Section made no attempt to initiate a postal investigation, as prescribed by Rule 126(2) EPC. Such investigation would still have been possible at that time, since 7 months had passed from the notification of the Communication (14 March 2019)."
• This pertains to Rule 125(4) EPC. I believe that there is a one year period is for postal investigations for the delivery of registered letters under the Universal Postal Convention.
• "Since the appeal is allowed and the appeal fee to be reimbursed, the request for re-establishment of rights is without object and there is no need to remit the case to the first instance for a decision on it. It also follows that the fees paid twice for the requests for re-establishment of rights were paid without a legal basis and are to be reimbursed."
•  Remarkably, the application was published in September 2020, well after 18 months from the priority date (in November 2017) and somewhere during the course of the appeal. 

The issue with the drawings and Rule 137(1)

• The drawings as filed contained in Fig. 5 some blurry text and, legibly, the words "thermocouple" and gas valve.
• In invitation to correct was sent in December 2018.
• A corrected Figure 5 was filed in February 2018, with legible text, but with the original legible words omitted.
• A communication was issued in March 2019 stating in the first sentence that the amended document was not in agreement with the application document as originally filed.
• This is strange, as simply deleting labels in a figure can hardly violate Article 123(2).
• However, the second sentence states that before receipt of the search report, the drawings may only be amended to the extent sufficient to remedy the deficiencies noted by the Receiving Section.  
• The Board: "as can be seen from the reference to Rules 137(1) and 58 EPC in the Communication, the Receiving Section raised an objection under these provision".

Ex nunc examination only in appeal

• "The deficiency having been remedied late and no means of redress having been filed, the Receiving Section was empowered to issue the refusal decision at expiry of the time limit given under Rule 58 EPC (see in particular J 1/18, Reasons 5)."
• It seems the appeal against a decision under Article 90(5) functions like an expensive kind of further processing. Re-establishment is the cheaper remedy but is less certain. 

EPO 

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

T 1354/23 - Crystalline form

Key points

• Claim 1 is directed to a crystalline form of a medical compound, apalutamide.
• Inventive step is at issue. "In experimental report D3, appellant I [opponent I] reworked the preparation of apalutamide according to D1 and obtained a solid which when analysed by XRPD was revealed as amorphous. Since this conclusion was not disputed by the respondents, it is accepted in the following that apalutamide prepared according to D1 is amorphous."
• Patent document D2 discloses the preparation of apalutamide and its recrystallisation from DCM/EtOH (paragraph [0091]). There is no information in D2 nor has any evidence been provided by any of the parties as to the specific form of the crystalline material prepared according to D2."
• "Claim 1 of the main request is therefore distinguished from both D1 and D2 in that a specific crystalline form of apalutamide denoted Form B is provided, while D1 discloses the amorphous form and D2 discloses an undefined crystalline form.
• "The respondents [proprietors] , relying on evidence in the patent as well as D19, argued that a technical effect of Form B was that it was less hygroscopic than the amorphous form of D1 and the other forms disclosed in the patent.
• "D19 also indicates that another crystalline form, namely Form A is significantly more hygroscopic, demonstrating a weight change of about 1.8% (D19, figure 1). "
• "On the contrary, as argued by the respondent, in relation to hygroscopicity, example 7 of the patent indicates that Forms C, D and J are "slightly hygroscopic" according to the definition provided in D18, addressed above, in contrast to Form B, which was demonstrated as negligibly hygroscopic. Since as set out above D19 also demonstrates that Form A is more hygroscopic than Form B, in the absence of any evidence to the contrary, it can be accepted that Form B is less hygroscopic than the other forms disclosed in the patent. "
• In the PCT application, forms C, D and J are solvates. The PCT application mentions an unsolvated form, form H.
•  The comparison of form H and form B using the data in the patent was not admitted into the proceedings under Art. 13(2) RPBA - the Board considered it a new 'fact' in the sense of T1914/12. 
• "Appellant II [opponent] argued that no improvement in hygroscopicity was demonstrated in relation to other polymorphic forms, in particular the undefined form of D2. The board disagrees. As argued by the respondents, the disclosure of D2 in relation to the crystalline form obtained is vague: the only information provided in paragraph [0091] thereof is that the obtained solid was recrystallised from DCM/EtOH. However, insufficient information is provided to reproduce the recrystallised product, such as relative amounts of the solvents mentioned, order of addition, addition rate, etc. As stated by the respondents, the information in the patent in combination with D19 is sufficient to render credible the effect that Form B is negligibly hygroscopic. The burden of proof in demonstrating a equally low hygroscopicity for other crystalline forms or the undefined form of D2 therefore lies with the appellants [opponents]."
• This touches on G 1/23: what about non-enabled prior art?
• See also G 2/21 r.26: " According to the established case law of the boards of appeal (see CLB, 10th edition, I.D.4.2, and the decisions therein) it rests with the patent applicant or proprietor to properly demonstrate that the purported advantages of the claimed invention have successfully been achieved.". The Enlarged Board here did not say that the proprietor has the burden of proof to show the improvement, i.e. to rework the prior art. 
• " Consequently, an improvement (i.e. reduction) in hygroscopicity relative to the amorphous form of D1 and the undefined form disclosed in D2 can be relied on in defining the objective technical problem."
• Another approach is that the objective technical problem over D2 is the provision of a 'negligible hygroscopic' form of the compound.
• The Board considers some further evidence on other properties and concludes: " On the basis of the foregoing, the objective technical problem underlying claim 1 starting from either of D1 or D2 is essentially that proposed by the respondents, namely the provision of a form of apalutamide with a beneficial combination of properties, namely improved hygroscopicity, high thermodynamic stability and high polymorphic stability." 

• For obviousness, "This corresponds to the principle set down in landmark decision T 777/08. According to that decision, the technical effects or properties of the claimed polymorph (improved filterability and drying characteristics) were effects which were expected merely by virtue of being crystalline. Hence, since it belonged to the routine tasks of the skilled person involved in the field of drug development to screen for solid-state forms of a drug substance, there was an incentive for the skilled person to arrive at the claimed solution in the expectation of achieving these improved characteristics. The board stated (see headnote 2) that "the arbitrary selection of a specific polymorph from a group of equally suitable candidates cannot be viewed as involving an inventive step." The implication from T 777/08 is therefore that when the advantages or effects of the claimed crystalline form are unexpected, i.e. they are not arbitrary and do not follow merely by virtue of being crystalline, then an inventive step is present.
• "In the present case, there is no absence of unexpected properties, and the selection of Form B is not arbitrary, since Form B possesses a beneficial combination of properties as set out above."

• The question is: the non-arbitrary selection of Form B from what? What are the other members of the class it is selected from?   

• It seems a useful strategy to include a few poor crystalline forms  (solvated or not) in a patent directed to a 'good' polymorph. 

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

T 0606/22 - Factory visit as (no) public prior use

Key points

• The alleged public prior use is a visit of a person to a plant.
• The Board, in machine translation: "In the present case, all evidence relating to the alleged obvious prior use was within the sphere of influence of the [former] opponent, who relied on a video made during a visit by one of its employees, the witness Mr. Traum, to Sante A. Kowalski Sp.j. The obviousness of the prior use therefore had to be proven without gaps by the opponent"
• The opponent had withdrawn the opposition in appeal before the summons. The proprietor and the opponent had both appealed the decision to maintain the patent in amended form. 
• "The opposition division based its finding on the obviousness of the prior use on the testimony of the witness Mr. Traum. In his testimony, the witness stated that during the visit to the Sante A. Kowalski Sp.j. premises on which the prior use was based, he was under no obligation with regard to what he had seen in the premises (see the minutes of the taking of evidence, page 2, last full paragraph). He further stated that he was not prevented from taking video recordings on the premises. He stated that he could not remember any instructions regarding confidentiality (see ibid., page 5, paragraphs 2 and 3). In addition, the witness stated that he had to sign at the access control to comply with hygiene and safety regulations (see ibid., page 2, paragraph 5)."
• "In its written submission of 3 June 2022, the patent proprietor submitted, through document A38, two versions of a "Guest Statement" from Sante A. Kowalski Sp.j., which are essentially identical with regard to points 3 and 9 on confidentiality, and which it claims had to be signed by every visitor to the premises of Sante A. Kowalski Sp.j. during the relevant period of the alleged prior public use.
• "2.5 Both "Guest Statements" appear to be consistent with the witness's statement regarding the access control in place during his visit to Sante A. Kowalski Sp.j. and the obligation of visitors to sign a declaration.
• 2.6 However, contrary to the vague statement of the witness, document A38 contains explicit provisions on confidentiality and a prohibition on video recordings on the premises without the consent of Sante A. Kowalski Sp.j. 

• "the submission of document A38 raises considerable doubts about the opposition division's finding that Sante A. Kowalski Sp.j. had no interest in confidentiality. Rather, confidentiality for visitors appears to have been standard practice. It is not apparent that an exception was made for certain groups of visitors, such as service technicians. The witness also only mentions access control in general terms.

  2.8 These doubts can no longer be verified in the present proceedings, since further investigations to clarify the facts necessarily require the cooperation of the opponent, given its influence over the evidence, who has, however, withdrawn its opposition. The board therefore concludes that, following the submission of document A38, there are sufficiently justified doubts as to the obviousness of the prior use (see T 1534/16, in particular point 1 of the reasons). "

• The opponent had withdrawn the opposition in 2024.

• The Board considers the public prior use to be not proven. 

• :" In its preliminary opinion of 2 August 2019 and 23 June 2020, the opposition division came to the preliminary view that, with the exception of the asserted obvious prior use, all objections raised up to that point in time were unlikely to be successful under the ground of opposition under Article 100(a) EPC. The novelty objection based on D15 was not admitted into the proceedings due to a lack of prima facie relevance. With regard to the objections newly filed with the written submissions in the appeal proceedings, in particular public prior use IV, the board sees no reason why these should be admitted into the proceedings.

  The Board therefore sees no reason to remit the case to the Opposition Division for continuation of the opposition proceedings under Rule 84(2) EPC.

  4. Accordingly, there are no grounds for opposition under Article 100 EPC which would manifestly preclude the maintenance of the patent in its granted form. "

• The patent is maintained as granted.

EPO 

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