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

Key points

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

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

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

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

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

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

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

EPO 

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

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

Key points

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

EPO 

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

T 2036/22 - Excluding admitted evidence

Key points

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

EPO 

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

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

Key points

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

EPO 

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

T 0250/20 - Four oral proceedings

Key points

• In translation: " European Patent No. 2,430,207 relates to a metal part obtained by deformation of a metal strip having an improved appearance. The metal parts thus obtained are more particularly intended, but not exclusively, for the manufacture of skin parts for land motor vehicles."
• "A first oral procedure [in appeal] took place on 21 December 2022, at the end of which an adjournment was decided. "
• A second oral procedure was held on 25 September 2023 at the end of which an adjournment was again decided. 
• A third oral proceeding was held on 11 March 2024, during which it was decided that the main request filed with the letter of 29 February 2024 was not admitted into the proceedings, that the new auxiliary request 1 filed during the oral proceedings (hereinafter "amended auxiliary request 1") in replacement of the previous auxiliary request 1 was admitted and that the subject-matters of its two claims 1 and 2 alone corresponded to the subject-matters of claims 10 and 11 of the patent as granted, respectively. At the end of the oral proceedings an adjournment was again decided.
• A final oral procedure took place on 23 August 2024 at the end of which the operative part of this decision was pronounced. 
  
  
• There is a lot in the decision (but less than could be expected, as the operative requests are significantly limited compared to the claims as granted).
• On the issue of cross-party reliance on arugments: "As stated by Applicants I and II [the opponents], there is no legal provision preventing a party, Applicant I in this case, from resuming in appeal proceedings an objection, line of attack or argument that was raised and maintained by another party in opposition proceedings, in this case Applicant II. The provisions of Articles 12(3) and (4) RPBA do not in any way prevent this way of proceeding. There is no specification therein of what the respondent seeks to allege through the interpretation of the indefinite or definite articles used, namely that only the party that raised and maintained the objection in opposition appeal proceedings would be entitled to pursue it in appeal proceedings. Such a restriction is not inferred from the wording of Articles 12(3) and (4) RPBA.

  This is supported by established case law according to which, for example, an opponent may rely on a ground of opposition invoked by other opponents either during the opposition proceedings or during any subsequent appeal proceedings, cf. JCR, IV.C.2.1.6, T 920/20, point 4.4 of the grounds."

EPO 

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

R 0005/23 - No petition for review against interlocutory decisions

Key points

• The Enlarged Board (in three-member composition) clarifies that petitions for review cannot be filed against interlocutory decisions of a Board of Appeal.
• The Enlarged Board in headnote (translated): "An interlocutory decision by which a Board of Appeal, in its composition as a substitute Board, has rejected as inadmissible a motion for recusal directed against its three members on the grounds of suspicion of partiality is not a decision against which a petition for review within the meaning of Article 112a EPC can be filed."
• Point 6 of the reasons confirms this holds for any interlocutory decision.
• The Enlarged Board: "The legal consequence of a successful petition for review is, according to Article 112a(5) EPC, the annulment of the decision and the "resumption of the proceedings before the Boards of Appeal"."
• "Accordingly, the review procedure under Article 112a EPC, as the relevant provisions are worded, does not in any event concern decisions which do not terminate proceedings before a Board of Appeal as regards the person concerned."
• " the Enlarged Board of Appeal is of the opinion that the application of Article 106(2) EPC in the context of the review procedure is out of the question. " 
• As a comment, a petition for review filed after the final decision can then also be based (exclusively) on a procedural violation of an interlocutory decision, provided that the petitioner shows that the outcome of the final decision could have been different (and more favourable for it) without the procedural violation; cf. J37/89, r.4.2-4.3 for Art.106(2).

EPO 

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

T 2360/19 - Rebutting the presumption on priority entitlement

Key points

• In T 0844/18, the Board had decided - after an extensive debate between the parties - that the priority of one of the major patents for 'CRISPR/Cas' was invalid because the PCT application was filed by the company and the priority application (a US provisional application) was filed by the inventors and there was no assignment in place from one of the inventors to the PCT applicants at the PCT filing date.
• The Board applied the established case law at that time (in my view).
• The Enlarged Board, in G 1/22, where the question was whether an informal / oral assignment of the priority right was possible, added the remark in para. 128 that: "An agreement (regardless of its form) can only be held against parties who were involved in the facts establishing the agreement. Co-applicants for the priority application who were not involved in the subsequent application may not be deemed to have consented to the reliance on the priority right by the other co-applicants for the priority application (a situation underlying e.g. T 844/18). The subsequent applicant(s) may however still be entitled to claim priority since the rebuttable presumption of entitlement does not depend on whether the involved applicants acted as co-applicants at any stage."
• This is quite remarkable, given that a large number of divisional patent applications in the patent family of T 0844/18 were still pending. 
• The present case is about a divisional application originating from the same PCT application ('819) filed in 2013.
• "15. The opponents are thus arguing that the appellants [proprietors] have not provided evidence that they are entitled to the priority rights they claim. However, this is precisely what the presumption in G 1/22 states: that the appellants do not have to provide such evidence, but the opponents have to rebut the presumption. There is no evidence that rebuts this presumption in the present case."
• The Board then discusses a settlement between the inventor Mr. Marrafini and the proprietors of the present patent, concluded in 2018. "However, it is common ground between the parties that the inventorship dispute between Marraffini/Rockefeller University and the appellants has been settled in 2018. The entire purpose of the inventorship dispute was to have Marraffini named as inventor, and the Rockefeller University as proprietor, of PCT 819 (and some other PCT applications). "
• " Such settlement of the dispute was, by definition, "retroactive", as putting an end to a dispute that arose in the past, and thus relates to the (earliest) date on which priority was claimed (see G 1/22, reasons 100, 109)."
• G 1/22 r.100: "Even the requirement that the transfer of the right of priority needs to be concluded before the filing of the subsequent European patent application (above point 68) is questionable in the Enlarged Board's view. If there are jurisdictions that allow an ex post ("nunc pro tunc") transfer of priority rights (see the extensive discussion of such transfers under US law in T 1201/14), the EPO should not apply higher standards."
• "However, for clarification, it is recalled that even in the absence of any evidence regarding the settlement of the inventorship dispute, the result would have been the same, based on the presumption of a valid priority claim, which has neither been rebutted by this nor any other evidence on file (see again G 1/22, reasons 100). As also reiterated in G 1/22, reasons 114: There is always a party who is entitled to claim priority, even if this party has to be determined in national proceedings (with this being the same if the dispute is settled outside the courts, by way of amicable settlement or arbitration, as is the case here). Not the least, the present case clearly shows that only the rebuttable presumption of a priority right guarantees that there is a party being entitled to claim priority, and that this right is not "lost" somewhere in an inventorship dispute. Hence the entitlement to priority was validly claimed."
• Im unsure about how this paragraphs should be understood.
• "G 1/22 brings legal certainty to all involved, in particular for the parties that the system was designed to protect."
• The priority is considered to be valid.
• After the clear 'instruction' of the Enlarged Board in para. 128, this is perhaps not a surprising outcome. 
• However, generally, the substantiation of the rebuttal of the presumption of G 1/22 by the opponents should not be a burden to prove a negative. 

EPO 

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