T 0832/22 - On evidence and when something is proven

Key points

• When is a statement proven? What is the role of the standard of proof?
• The Board: "The Enlarged Board's reference in G 2/21 to a judge's personal conviction makes clear that it is the state of mind of the members of the fact finding body which is decisive in the evaluation of evidence. This is always the case, regardless of which standard of proof is to be applied. In other words, referring to the deciding body's conviction that an alleged fact occurred (see T 1138/20, Reasons 1.2.1, last paragraph, and T 1311/21, Reasons 3.2.1(d)(vi)), does, strictly speaking, not yet say anything about which standard of proof should be applied by the deciding body to arrive at this conviction."
• "As to "the required standard of proof" referred to by the Enlarged Board in G 2/21, different concepts have been developed in the case law of the Boards of Appeal. The EPO standard of proof is generally the balance of probabilities. By way of exception, the standard of proof is that of beyond reasonable doubt, mainly in opposition proceedings where only the opponent has access to evidence concerning, usually, an alleged public prior use "
• As a comment, I'm not sure that 51% likelihood is generally sufficient, see also below.
• "[S]tandards of proof relate, in legal systems based on the principle of free evaluation of evidence, necessarily to a mental state, namely to the nature or degree of conviction of the members of the fact finding body. Accordingly, it is difficult to quantify the difference in the required degree of conviction between "the balance of probabilities" standard and the "beyond reasonable doubt" standard. In fact, attempting to describe this difference in the form of numerical thresholds, for example as a certain percentage of likelihood that an alleged fact occurred, can even be misleading. In regard to the "beyond reasonable doubt" standard, it thus seems more expedient to focus on the term "reasonable". In the present Board's view, this expresses that the "beyond reasonable doubt" standard does not require absolute certainty, and that it is sufficient if the (majority of the) members of the deciding body have no reasonable doubt that[t] an alleged fact occurred. In other words, even if there is some remaining doubt, the "beyond reasonable doubt" standard of proof can be met as long as the remaining doubt is not reasonable, which can be understood as overall insubstantial in view of the entirety of the available evidence."
• "if the higher one of two disputed standards of proof is met, it can be left open which of these standards must be applied when assessing the evidence in question. Hence, if the deciding body is convinced beyond reasonable doubt that an alleged fact occurred, there is no need to decide which standard of proof is applicable (see, for example, T 2466/13, Reasons, 2.1.1). For the reasons given below, this is the situation in the present case."
  
  
• The opponent had filed evidence of the publication date of a document. "D39 is a digital forensic report by the company BIT4LAW SRL created "in the interest of" the opponent (see D39, page 1, and chapter 2, page 4: "Introduction". D39 establishes, inter alia, the upload dates of certain documents [including D9] from the opponent's computer system to a public web server (see chapter 5 starting on page 13)."
• "the Board considers that D39 - a document only cursorily mentioned in the appealed decision and not considered in substance - establishes that D9 was publicly available on the internet at least on 19 November 2014, i.e. well before the priority date of the patent (29 March 2017)."
• "The data on page 21 of D39 also contain the information that version 1.0 of the document in question was last updated by Daniela Volpin on 19 November 2014. Ms Volpin confirmed in her affidavit (D38) that on 19 November 2014 she "personally uploaded on the Carel website the release 1.0 dated 30/10/2014 of the Technical Manual of the Heos device". The information in D38 is thus consistent with that in the report D39."
• There was further supporting evidence in the form of affidavits.
• An interesting point is the level of evidence required in this case to show the publication date of the document. "Up to the hilt" is not limited to prior use. 

EPO 

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

T 1224/24 - When the EPO forgets the drawings and the proprietor notices in time

Key points

• The appeal lies from the decision of the examining division to grant a European patent on the basis of the application documents indicated in the communication under Rule 71(3) EPC dated 13 December 2023.
• The appeal was filed on 03.07.2024. The DTG was dated 03.05.2024. The mention of the grant was 29.05.2024.
• The Board: "The appeal is admissible since the appellant is adversely affected by the omission of 48 out of 52 drawings in the decision to grant. The granted version of the patent corresponds neither to the text submitted by the applicant, nor to a text agreed upon or deemed approved by the applicant." 
• "A review of the file history reveals that while several versions of the description and claims were submitted by the applicant on 16 September 2021, 2 August 2022, 10 August 2022, and 13 September 2023, the figures or drawing sheets were never amended or partially withdrawn. This indicates that the drawings forming part of the applicant's request for grant were those filed with the request for entry into the European phase-namely, the original drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52, and 41/52 to 52/52, along with the amended drawing sheets 3/52, 28/52, 37/52, and 40/52, which were submitted on 27 September 2020 upon entry into the European phase. All these drawings were correctly published in the A1 application."
• "The communication under Rule 71(3) EPC dated 13 December 2023 proposed amendments to the description and to claim 1 but did not indicate that the text intended for grant differed from the applicant's request regarding the drawings. Furthermore, no prior communication from the examining division proposed amendments to the drawings filed by the applicant, or contained any comments on them. All communications stated that, for the figures, the examination was carried out on the amended drawing sheets 1/4-4/4 as filed upon entry into the regional phase before the EPO. However, the file contains no explicit approval from the applicant for the removal of the remaining 48 originally filed drawings. It appears that neither the members of the examining division nor the appellant realized that the original drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52 and 41/52 to 52/52 were omitted and only the amended drawing sheets 3/52, 28/52, 37/52 - renumbered 1/4- 4/4 - were considered by the examining division."
• " In accordance with T 1003/19 (catchword and point 2.4 of the reasons), T 1823/23 (point 1.9 of the reasons), T 2081/16 (point 1.4 of the reasons), the Board considers that the legal consequence set out in Rule 71(5) EPC can only apply if the communication under Rule 71(3) EPC reflects the examining division's intention regarding the application documents on which the patent is to be granted."
• "Under normal circumstances, it can be assumed that the text referred to in a communication under Rule 71(3) EPC reflects the examining division's intention regarding the text on which the patent is to be granted. However, this is not the case when objective elements in the communication and/or in the text annexed to the it, such as significant discrepancies between the communication and the "Druckexemplar", or within the "Druckexemplar" itself, clearly indicate that the text does not correspond to the examining division's intention (see T 1003/19, points 2.4.3 and 2.4.4)."
• "  the Board concludes in the present case that neither the documents referred to in Form 2004C nor the "Druckexemplar" reflected the text in which the examining division intended to grant the patent. Hence the text communicated to the applicant with the communication of 13 December 2023 did not correspond to the text intended for grant under Rule 71(3) EPC."
• " If the applicant is not communicated the text intended for grant under Rule 71(3) EPC, the legal consequence outlined in Rule 71(5) EPC does not apply. Therefore, the applicant's subsequent filing of translations and payment of fees for grant and publishing do not imply approval of the communicated text."
• " A decision to grant under Article 97(1) EPC, based on a text that was neither submitted nor agreed upon by the applicant, as is this case (see points 1.1- 1.11 above), does not comply with Article 113(2) EPC. Therefore, the decision under appeal is to be set aside."
• " the board considers that the present decision does not deviate from G 1/10, which determined that Rule 140 EPC cannot be used to correct the text of a patent, but did not concern the interpretation of Rule 71 (5) EPC. Therefore, Article 21 RPBA does not apply. The Board fully agrees with and refers to the reasoning in T 2081/16 (point 3) and T 1003/19 (point 4)."

EPO 

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

T 0423/21 - When the EPO forgets the drawings

 Key points

• This applicant reaps the bitter fruits of  G 1/10 (in other words, the present case illustrates the harsh consequences of the Boards' current interpretation of G 1/10. 
• The PCT application was filed with drawings (18 pages) and had the drawings in the WO publication in 2013. 
• The PCT Pamphlet  (WO publication WO2013184830) is not included in the EPO's online file wrapper. 
• Why is unclear to me. The WO publication is usually included in the EPO online file, see e.g. this case. 
• Hence, we cannot see what the EPO received (or obtained) from the IB / WIPO as the PCT application in 2014. Does any of the readers know more about this? 
• Amended claims and an amended description are filed in the prosecution.
• The Rule 71(3) Communication does not include the drawings: they are not part of the Druckexemplar (the "Text intended for grant (version for approval")  in the online file, nor are they listed in Form 2004, i.e. the form that is the basic part of the Rule 71(3) communication). Nothing is said about the drawings in Form 2004: some amendments by the EPO are listed, but nothing about the drawings. 
• The patent is granted on 8 May 2019 (the date of the publication of the mention of the grant). The decision to grant is dated 11.04.2019.
• The applicant files a request for a correction on 23.07.2019. 
• The Board does not grant any remedy. The B1 publication corresponded to the Druckexemplar. The request for a correction under Rule 140 is refused, referring to G 1/10.
• "As it is the applicant's duty to properly check all the documents making up the communication under Rule 71(3) EPC (i.e. Form 2004 and the Druckexemplar), the responsibility for any errors remaining after grant are his alone, whether the error was made (or introduced) by him or by the examining division."
• The request under Rule 139 is also refused.
• Perhaps an appeal against the decision to grant in combination with a request for re-establishment could have been tried, but that procedure was ruled out by the recent decision T 0178/23. 
• Of course, decisions of the Enlarged Board are not carved in stone (see G3/19 point xx), so a referral could have been requested. G1/10 was about a change of a typographic error in the claims. It is not about the EPO losing parts of the application, in other words, ummarked amendments by the EPO of the application.
• Finally, possibly the error by the EPO can be treated as a correctable formatting error: H-VI,4: "Formatting/editing errors are alterations in the patent documents which occur during the preparation of the Druckexemplar and which are indicated neither by standard marks nor in Form 2004." (also in the 2019 edition). The decision of the Examining Division does not refer to this specific paragraph of the Guidelines. 
• The example in the Guidelines of a "formatting/editing error" refers to "the two top lines" in a page that "have just disappeared" from the Druckexamplar without editing marks in the Druckexmplar and without an indication on Form 2004). This can be corrected, according to the GL.
• Given that the letters in the Druckexamplar don't have little legs, the example in the GL  actually refers to the EPO's software deleting or omitting the two sentences during the preparation by the Druckexmplare (in fact, the example mentions that there are other, marked, edits by the Examining Divisio on the same page). 
• I don't see a size limit in the GL's definition of "Formatting/editing errors are alterations in the patent documents which occur during the preparation of the Druckexemplar and which are indicated neither by standard marks nor in Form 2004", i.e. no limit to alterations of less than three lines, and no exclusion of alterations in the drawings. 
• There could be possible reasons why the remedy of H-VI,4 is not applicable, but as the present  decision is not concerned with that remedy, there is no need to speculate on any possible obstacles. 
• The Board does not comment on the procedure of GL H-VI,4, so nothing in the present decision is a problem for that remedy. 

T 0294/20 - Sufficiency (plausibility) for second medical use claim

 Key points

• "Claim 1 is drafted in the form of a purpose-limited product claim, pursuant to Article 54(5) EPC, and is directed to a compound that reduces the activity or expression of a Programmed Cell Death-1 (PD-1) polypeptide (in the following "PD-1 inhibitor") for use in the treatment of nodular lymphocyte predominant Hodgkin lymphoma (NLPHL)"
• Sufficiency of disclosure in the sense of G 2/21 is at issue (i.e., former plausibility).
• "According to decision G 2/21 (OJ EPO 2023, A85, point 77 of the Reasons), "[i]n order to meet the requirement that the disclosure of the invention be sufficiently clear and complete for it to be carried out by the person skilled in the art, the proof of a claimed therapeutic effect has to be provided in the application as filed, in particular if, in the absence of experimental data in the application as filed, it would not be credible to the skilled person that the therapeutic effect is achieved. A lack in this respect cannot be remedied by post-published evidence." 
• This intermediate conclusion of the Enlarged Board of Appeal can be understood as confirming the established case law that post-published evidence cannot be used to remedy a lack of sufficient disclosure in respect of a medical use (cf. T 609/02, headnote).
• By this statement, the Enlarged Board of Appeal can also [i.e., additionally] be seen to have endorsed the jurisprudence of the boards of appeal that attaining a claimed therapeutic effect is a limiting functional technical feature of a claim directed to the use of a substance or composition in a method of treatment (see also G 2/21, point 74 of the Reasons). 
• [...]  in decision G 2/21 the Enlarged Board of Appeal focussed on the issue of whether or not post-published evidence can be used by an applicant or patent proprietor in the assessment of Articles 83 and 56 EPC, but did not address the question of the level of proof in an application as filed required to substantiate a therapeutic effect as a prerequisite for using post-published evidence for assessing the requirements of Article 83 EPC."
• "The board therefore does not understand G 2/21 to have quashed the principles established by leading decision T 609/02 despite having qualified the term "plausibility" merely as a generic catchword. Indeed, as decision T 609/02 clearly sets out, a balance should be struck between enabling early patent protection for therapeutic uses and avoiding that the claimed invention is only completed at a later point in time. As a consequence, in order to fulfil the requirements of Article 83 EPC, the suitability of the product for the claimed therapeutic application must be derivable from the application, unless this is already known to the skilled person at the priority date (see T 609/02, point 9 of the Reasons and T 895/13, points 3 to 5 of the Reasons)."
• "The board cannot accept the appellants' [proprietors'] line of argument, that "plausible" in this context means that the "technical concept" and hence the suitability of the claimed compounds for the claimed therapeutic application is "plausible" as long as it is not shown to be "implausible". That would be in direct contradiction with the principles set out in decision T 609/02. 
• The current Board then adds some reasoning: "The burden to show the suitability is on the applicant (see G 1/03, OJ EPO 2004, 413, point 2.5.3 of the Reasons: "When an application for a patent is filed, the process of making the invention has to be completed. The requirement of sufficiency of disclosure ensures that a patent is only granted if there is a corresponding contribution to the state of the art. Such a contribution is not present as long as the person skilled in the art is not able to carry out the invention. Therefore, the decisive date for fulfilling the requirement has to be the date of filing or priority, as the case may be. Deficiencies in this respect cannot be remedied during the proceedings before the EPO."). This burden cannot be discharged or shifted to the EPO or the public by merely alleging that a claimed therapeutic effect has to be regarded as having been demonstrated as long as it has not been disproven."
• Cited point 2.5.3 of G 1/03 (about non-disclosed disclaimers) may not directly address the issue of the burden of proof. The current Board uses "see", probably in the strict legal sense of that term  ("See [] is used when the cited authority clearly supports a proposition but there is an inferential step between the proposition as stated and the cited authority." - link) 
• It would have been useful if the Board had spelt out the 'inferential step' since the case at hand is an opposition appeal, and the general case law is that attacks under Article 100(b)  EPC require serious doubts substantiated by verifiable facts. 
• "The board therefore assesses below what can be inferred from the information provided in the patent as to a direct effect of a PD-1 inhibitor on a metabolic mechanism specifically involved in NLPHL."
• The Board, after reviewing the technical details, "the appellants [proprietors] on the one hand argued that tumours are characterised by T cell exhaustion and on the other hand that PD-1 expression is concomitant with T cell exhaustion. This explanation would lead to the conclusion that all cancers may be treated by PD-1 blockade, which manifestly is not the case. This is acknowledged in the declaration D55 submitted by the appellants: "All cancers are distinct and it is not possible to predict that a specific pathway, such as the PD-1 pathway, is present in any given type of cancer".
• The Board concludes that the application as filed does not provide support for the second medical indication in the sense of G 2/21, r.77. 
• The argument that post-published evidence shows that the compound works (allegedly), therefore, "must fail".

EPO

The link can be found after the jump. 

T 2353/22 - Traversing a data structure

Key points

• The real surprise is at the end of this decision against a refusal.
• "The invention concerns a method, [...] for supporting the storage of, access to and display of lineage metadata about data stored in a storage system. The lineage metadata of a data object provides information about the sources from which the data object was derived. For instance, how the data object was generated, from which source it was imported, how it has been used by applications, how it relates to other datasets or how its modification will affect tables"
• The claim is lengthy.
• "The method according to the claimed invention includes a first step of receiving metadata from a data source, the metadata describing nodes and edges. Each node represents a metadata object, which can be a data element or a transformation. An edge represents a one-way effect of one node upon another node. According to the description, page 10, first paragraph, the data elements can represent, for instance, "datasets, tables within datasets, columns in tables, and fields in files, messages, and reports". An example of a transformation is "an element of an executable that describes how a single output of a data element is produced"."
• After reading the decision, I don't see any limitation to technical data. I understand the metadata could be metadata of pension contracts or insurance contracts, for example. The method is just generic.
• "After the step of receiving metadata from a data source, the claimed method further includes steps of generating a data structure representing the received metadata and receiving a query for lineage metadata. In response to receiving the query, the data structure is accessed and a response to the query is generated and sent to a computer system for display. The response includes the lineage metadata responsive to the query."
• The claim also includes: "in response to receiving the query (114, 126), traversing the data structure (134) in accordance with the walk plan (130) to collect lineage metadata stored in the data structure (134) that is responsive to the query (114)," 
• The walk plan is about following edges from node to node and is included in the query, i.e. preparing the walk plan is not a part of the claimed method.
• I understand graph theory, a mathematical theory, is used by the features of the edges and nodes.
• The Board: "It is true that since computer programming involves technical and non-technical aspects, it is difficult to distinguish between the "programmer as such" who, as long as they only develop abstract algorithms, are not a skilled person within the meaning of the case law, and the "technical programmer" (see also T 697/17, reasons 5.2.4). "
• "The subject-matter of claim 1 differs from the method of D2 in that it includes features (c1) to (f), (f2), (g) and (g1). These features specify details of the data structure (features (c1) to (c4)), the step of receiving a query for lineage metadata including the identification of a data element, a type of lineage and a walk plan (features (d) to (d2)), the steps of traversing the data structure and collecting data using the data structure and the walk plan (features (d3), (d4) and (e) to (e4)), the step of generating a response including lineage metadata responsive to the query ((f) and (f2)) and the steps of sending the response to a computer system and displaying the lineage data (features (g) and (g1))."
  
• "None of the cited prior-art documents disclose the combination of distinguishing features (c1) to (f), (f2), (g) and (g1). In the board's opinion, it would be within the ordinary skills of the computer expert to arrive at the data structure specified in the distinguishing features, which corresponds directly to the non-technical lineage structure. However, the board is not convinced that the skilled person would arrive at the combination of all the distinguishing features, including a walk plan to direct the way the data structure is traversed and the data is collected as claimed."
• "Therefore, the subject-matter of claim 1 of the main request involves an inventive step (Article 56 EPC)."
• Now, as a question to readers, this decision was issued by Board 3.5.07. Would Board 3.5.06 have decided differently (see yesterday's post about T1998/22 Wide and deep machine learning) ? 
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EPO 

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

T 1998/22 - Machine learning

Key points

• "It is noted that the use of a "cross-product feature transformation" in the "wide machine learning model" [as specified in the amended claims] may contribute to establishing that the advantages recited in paragraph [13] are actually achieved, as emphasised by the appellant (statement of grounds appeal, pages 10 and 11), but these advantages [see below] remain of a non-technical nature."
• "According to the description [paragraph 13], "in general, a wide machine learning model can memorize feature interactions through a wide set of cross-product feature transformations and a deep machine learning model can generalize unseen feature combinations by applying embedding functions to the input features", and "by including both [a] deep machine learning model and [a] wide machine learning model, the wide and deep machine learning model can obtain both benefits of memorization and generalization and thus can perform better on predicting an output from a set of input features" (paragraph [13])."
  
  
• "As to the argument that only a "technical expert" could have devised the features of the invention [i.e. the CardinalCommerce test], the board notes, as a general word of caution, that this kind of enquiry may be helpful in some cases to separate non-technical features from technical features - in particular to identify business-related features - but does not constitute a definite test as it only concerns which kind of considerations underlie some features of the invention and not which kind of effects are achieved by it. For instance, a claim to a computer-implemented simulation may involve features which are based on expertise in the technical field of the technical system that is being simulated. This alone would however not be sufficient to conclude that these features contribute to the technical character of the claim (G 1/19, reasons 122, 125, 141 and 142)."
• "In any case, the board tends to consider that claim 1 does not reflect any considerations beyond computer programming (which encompasses the design of algorithms) and mathematics."

EPO 

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

T 0956/19 (II) - Res judicata and interlocutory appeal decisions

Key points

• Application filed in 2005. Grant in 2013. Interruption of the opposition at the end of 2013 (bankruptcy). Resumed in 2015. First OP OD in March 2017. Second OP in November 2018. Decision OD in 2019.  First decision Board in February 2023. Second decision Board in February 2024, issued in writing on 23.12.2024 (!)
• No communication about the delay under Art. 15(9) RPBA is visible in the online file.
• In the first appeal decision, the Board had held that (in translation): "the subject-matter of claim 1 of auxiliary request 1 is not new [over D35] within the meaning of Article 54 EPC. " Furthermore, "The examination of the other requests (see point IX) could not be completed and, therefore, after a decision has been taken on the above-mentioned aspects, the procedure must be continued for the points not yet decided." (the oral proceedings lasted to 18:35)
• Now, the Board considers that AR-2 is novel over D35. 
• "The claimed subject-matter thus differs from that disclosed in document D35 (as well as from that of claim 1 of the first auxiliary request, see point 29) in the concrete definition of the route of administration ("and wherein the glucocorticoid is administered intraperitoneally, intravenously, intraarterially, intramuscularly, intradermally, subcutaneously, intratumorally or selectively in or via a defined organ"). 
• "It is clear from [a paragraph in the patent itself]  that the defined routes of administration, which essentially represent all common routes of administration, are nothing other than those which the person skilled in the art would have routinely used."
• "Appellant I [the proprietor] has not made any submissions, either in writing or at the oral proceedings before the Board, on the inventive step in relation to the specific differences between the subject-matter of claim 1 of auxiliary request 2 and the subject-matter disclosed in document D35. In particular, it has not expressed any view as to why the route of administration which represents the difference between the subject-matter disclosed in D35, as set out in the Board's interlocutory decision on novelty in the present case, and the subject-matter of claim 1 of auxiliary request 2, should be considered inventive. At the oral proceedings before the Board, Appellant I's submissions on this issue were limited solely to arguments which presupposed that the subject-matter of document D35 did not anticipate that of claim 1 of auxiliary request 1."
• "Neither in the written procedure nor at the oral proceedings did Appellant I make any separate submissions on inventive step by reference to technical features of the claims of these auxiliary requests [3-9 and 11-13]. Rather, it relied on its arguments in relation to auxiliary request 2. "
• AR-10 is rejected as unclear.
• The patent is revoked.
• The Board running out of time during the first oral proceedings, therefore, gave the proprietor about one more year of patent lifetime in appeal (and about two years until the written decision), even though the Board does not seem to decide any substantive issue on the allowability of the claims in the present decision.
• There is the interesting development of a Board member retiring between the first and second oral proceedings, in particular one week after the first appeal decision was issued. This is covered by Article 8 RPBA.
• The proprietor would like to reopen the debate as to what D35 discloses. However, this is barred by the res judicata status of the first appeal decision: "a substantive decision was also taken [in the first appeal decision] on the objection of lack of novelty in relation to document D35, which also includes the factual finding that document D35 discloses a subject-matter which anticipates the subject-matter of claim 1 of auxiliary request 1 in a way that is detrimental to novelty and consequently has all the features of that subject-matter. This finding that document D35 discloses a subject-matter which corresponds to the subject-matter of claim 1 of auxiliary request 1, i.e. which discloses all the claimed features, is irrevocable and can no longer be called into question when assessing auxiliary requests 2 to 13. Arguments and evidence aimed at having the Board in its amended composition reassess this matter cannot be taken into account due to the binding effect which, pursuant to Article 8(2) RPBA, also applies to the substitute member."
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EPO 

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