T1247/21 - The feature in the CPA is inventive

Key points

• The case is mostly about novelty and inventive step over a public prior use. The invention concerns a thermoforming packaging machine. The feature at issue is "a measuring unit (51, 42, 45) is provided which is configured to detect a contact between the upper tool part (7) and the lower tool part (3)".  (all quotes are machine translations).
• The opposition division [held that] knowledge of the source code [of the public prior use apparatus] was necessary in particular in order to recognize whether contact between an upper part of a tool and a lower part of a tool was being measured. Accordingly, feature K2 was not known from the obvious prior use.
• " The source code was not accessible to the customer Wolf (or other third parties) for factual and legal reasons. This was not disputed by the parties involved. "
• The Board: "an alleged disclosure can only be considered implicit if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature was part of the disclosed subject matter (cf. RdB, ibid, IC4.3). It therefore depends on whether the skilled person, in view of the information available to him on the obvious prior use, specifically recognises the real possibility of configuring the measuring unit to detect contact between the upper and lower parts of the tool, and not whether such contact is hypothetically conceivable."
• The Board concludes after consideration of the facts of the case that the feature was not implicitly disclosed because a "reference run" would have been necessary, and alternatives were conceivable. 
• As a result, the Board is convinced that the skilled person cannot directly and unambiguously derive feature K2 from the public prior use "Power PAK RT 520".
• Regarding inventive step, "the parties unanimously formulated the technical task associated with the distinguishing feature K2 as improving or facilitating the adjustment of a known foil punch, for example, when changing tools. 
• Note, if the feature was actually present in the public prior use device, then there is no actual technical improvement over that device. 
• "The appellant [opponent] merely argued that the expert would like to prevent the control of a known foil punch from going beyond the contact point. However, this consideration alone does not provide any reason or indication for providing feature K2. In fact, there is no obvious reason for this in the prior art in the proceedings. "
• The feature is held to provide for an inventive step.

You can find the link to the decision and an extract of it after the jump.

T 0655/21 - The EU as opponent in an unusual case

Key points

• The opponent is "The European Union, represented by the European Commission". The opponent is the sole appellant. The patent is directed to "A satellite (105) for satellite communication"
• "Reasons 20 to 22.3.2 of the appealed decision dealt with the issue of novelty as to the subject-matter of granted claim 1 in view of no fewer than seven different prior-art documents. "
• "The statement of grounds of appeal only addressed the matter of novelty in a substantiated manner. It did so in view of a single document (i.e. prior-art document D26). This document was not among the prior-art documents which the appealed decision dealt with. In fact, it was not even admitted into the proceedings [i.e. held inadmissible] by the opposition division. This means that the scope of the appeal lodged by the appellant was uncommonly restricted."
• The statement of grounds was submitted by a patent attorney firm.
• "from the minutes of the first-instance oral proceedings and from Reasons 16.4 of the appealed decision, it is apparent that the opposition division studied D26 "for quite some time". Therefore, any further time involvement by the board in this regard could only have reinforced a legitimate expectation on the part of the appellant that the document was already in the proceedings. Moreover, in the board's assessment, document D26 was not more relevant than D18 which was already in the proceedings. " 
• "For the sake of procedural economy, the board considered it more expedient to avoid an analysis and a discussion on whether D26 had already been implicitly admitted or should have been admitted already in the opposition proceedings, as well as an in-depth analysis of its contents. Instead, it was more appropriate to examine, in its preliminary opinion, another substantive aspect with which the appealed decision was concerned, namely the matter of inventive step starting out from D18 as dealt with in Reasons 23 to 25.1 of the appealed decision. In so doing, the board may have contributed to making the circumstances of the appeal case "exceptional". On the other hand, it upheld the EPO's responsibility towards the public not to maintain invalid patents. It also, in its view, simplified the current proceedings."
• " Against this approach, however, the proprietor raised the following objection: the only ground on which the opponent had appealed was that claim 1 lacked novelty with respect to document D26. Therefore, the board should have not extended the scope of the appeal proceedings to documents and attacks which were part of the opposition proceedings but not of the appeal proceedings."
• "the board cannot see any legal basis for such a limitation, neither in the text of the EPC nor in the Rules of Procedure of the Boards of Appeal (RPBA). Pursuant to Article 114(1) EPC, the EPO (and thus also the Boards of Appeal) shall not be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.  "
• "following the board's communication under Article 15(1) RPBA 2020, the opponent had amended its appeal case (see point 2.1 below)."
• " In its reply to the board's preliminary opinion, the appellant agreed with the board that the subject-matter of claim 1 of the main request did not involve an inventive step when starting out from document D18."
• " the board decided to admit the appellant's objection as regards lack of inventive step starting out from D18 against claim 1 of the main request into the appeal proceedings."
• "It is therefore not credible that features (a) to (i) bring about any kind of "flexibility", let alone an "increased flexibility". Thus, contrary to what is set out in Reasons 25.1 of the appealed decision, features (a) to (i) do not contribute to solving an objective technical problem. Consequently, they cannot contribute to an inventive step (cf. G 1/19, Reasons 49, last two sentences). Instead, they relate mainly to the definition of the satellite's processing and the processing of the beamforming networks as a "black box" (see e.g. T 2271/18, Reasons 2.1), with several general input parameters such as "weight sets", "transmit/receive weight vectors", "sequential dwell times", "pathway gains" and generic output parameters such as "uplink and downlink beam signals" in a static rather than an adapted or dynamic way."
• "For the reasons set out above, the subject-matter of claim 1 of the main request does not involve an inventive step (Article 56 EPC)."
• "the board decided to admit auxiliary request 1 into the proceedings."
• " The admittance into the proceedings of auxiliary request 1 and of document D26 represents a considerable change in the facts and claim requests underlying the present appeal case."
• The case is remitted.

EPO 

You can find the link to the decision after the jump.

T 0246/22 - What does admissibly raised mean?

Key points

• I think this is an important decision. 
• " Pursuant to Article 12(4), first sentence, RPBA, such qualification as "amendments" applies only "unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal" . To decide whether this exemption applies here, in which case auxiliary requests 3 to 8 would necessarily be part of the appeal proceedings, or whether they are indeed "amendments", in which case their forming part of these proceedings would be a discretionary matter for the board, requires in particular an interpretation and application of the terms "demonstrates", "admissibly raised" and "maintained".
• "the ordinary meaning of "demonstrates" must be that, as a general rule, the party making a submission that would, on the face of it, constitute an "amendment" bears the burden of showing that it was "admissibly raised and maintained" in the proceedings leading to the decision under appeal. The lawmakers' idea was obviously not to put ex officio responsibilities on the boards and/or expect them to assume an investigative role, learn every detail of the first-instance proceedings, identify and track claim requests to their source, and understand why they were filed. The onus is no doubt on the amending party."
• The Board acknowledges that there was "some leniency in this respect in the early jurisprudence (cf. T 221/20, T 42/20 and T 476/21)"
• "The proprietor also argued, in its reply to the board's communication under Article 15(1) RPBA and relevant to the matter of demonstrating that auxiliary requests 3 to 8 were "admissibly raised" in the opposition proceedings, that the requests were "entirely validly filed" six weeks in advance of the final date for making submissions ahead of the oral proceedings under Rule 116 EPC. However, what the proprietor means by the unsubstantiated phrase "entirely validly filed" is obscure, and the rest of the arguments in that reply are rather relevant to the demonstration of maintenance (i.e. a matter already resolved above)."
• What more can the patentee say about admissibility?
• The board finds it helpful, in the context of claim amendments, to establish what the actual requirements might be for a party's demonstration that submissions were indeed "admissibly raised".In that regard, one viable approach could be that a Board decides whether the opposition division should have admitted the respective claim request into the opposition proceedings, had a decision on admittance been required (see e.g. T 364/20, Reasons 7). This would in turn mean that a Board - at least in part - should slip into the shoes of the opposition division. It would then have to infer, from the Board's perspective, how the opposition division should have exercised its discretion on the basis of the applicable procedural basis, e.g. in view of the current Guidelines for Examination, but also leniently applying the RPBA (see T 364/20, Reasons 7.2.10, last sentence). However, one of the possible consequences of that approach could arguably be that the boards would have to closely monitor the currently applicable Guidelines to derive guidance as to how the respective opposition division should have exercised discretion generally conferred by Article 123(1) EPC in conjunction with Rule 81(3) EPC in inter partes proceedings (cf. R 6/19, Reasons 6 and 7). For the boards, the subject of such an approach could virtually correspond to a "moving target", possibly leading to similar cases being treated differently, depending on the amendments made to the Guidelines over the years. This approach also fails to convince this board since the Guidelines are not binding on the Boards and since the RPBA are approved and adopted specifically to govern the proceedings before the Boards.
• This board, however, proposes another approach, namely that of defining minimum requirements for the demonstration of "admissibly raised" which could be more conducive to legal certainty and fairness in that regard, especially in opposition appeal proceedings. The board considers that claim requests which were already filed during the opposition proceedings and which did not belong to the basis of the decision under appeal in the above-mentioned sense (i.e. "carry-over requests") may indeed be regarded as "admissibly raised" under the minimum requirements that the party shows
(1) that they were filed in due time, typically before expiry of the time limit set by the opposition division under Rule 116(1) and (2) EPC, and
(2) that it was made clear, explicitly or by way of unambiguous implication, for which purpose they were filed, i.e. which objections raised by the other party or the opposition division they try to overcome and how this is actually achieved.
• " the present board also does not subscribe to the test, with elaborate criteria, proposed by the competent board in case T 1800/20. According to that decision - besides the timing aspect - questions relating to (i) the suitability of the submission to overcome the objections raised against a higher-ranking claim requests, (ii) whether the submission gives rise to new objections and (iii) the suitability of the submission to be part of a convergent development of the first-instance proceedings should be considered in the assessment whether submissions were "admissibly raised" (see Reasons 3.4, items a) to d)). Taking such additional criteria into account when assessing the concept of "admissibly raised" and thus the question whether there is, at all, any discretion for a Board not to admit a party's submission into the appeal proceedings would compellingly lead to a significant overlap with the codified criteria to be used by the Boards once they indeed have such a discretion"

EPO 

You can find the link to the decision and an extract of it after the jump.

T 1437/21 - Clinical trial protocols and inventive step

Key points

• In the case at hand, D22 is a press release of the results of Phase III clinical trials.
• However, there is also the general issue of the mandatory publication of clinical trial protocols before the clinical trial is even carried out.
• The Board, obiter it seems: "The prior disclosure that an investigational product for use in the treatment of a particular condition is undergoing clinical trials may in accordance with established jurisprudence preclude that a subsequently claimed invention involving this product for use in the treatment of that specific condition is considered to involve an inventive step, even where the results of the trial have not been made available to the public (see T 2506/12, reasons 3.10 and 3.15; T 239/16, reasons 6.5 and 6.6; T 1123/16, reasons 11; T 2963/19, reasons 4.3.1)."
• " as explained in T 2963/19, the approval of a clinical study depends on the assessment of the foreseeable risks to the participants in relation to the anticipated benefit in terms of the relevance of the findings. The approval of a clinical trial does therefore not, by way of a heuristic, imply an expected positive outcome of the treatment. Furthermore, as underlined in point 4.3.1 of T 2963/19 by reference to the "Communication from the Commission 2010/c 82/01", the authorisation of a clinical trial does not represent a scientific advice on the development programme of the investigational product tested. The considerations in T 2506/12, T 239/16 and T 1123/16 regarding the expectation of success in view of the disclosure of clinical trials are, as in T 2963/19, evidently linked to the further circumstances of the cases decided therein, in particular the nature of the investigational product and of the condition to be treated and the absence of information suggestive of failure of the trial."
• Turning to the case at hand: "The crucial issue in the assessment of inventive step starting from the teaching in documents D22/D29, in particular the reported results from Study 1245.36, thus remains whether in view of the available information in the prior art, including the information in documents D22/D29, the skilled person had a reasonable expectation that empagliflozin would be effective in treatment of diabetic patients having moderate renal impairment."
• The claim is a second medical use claim specifying a sub-population of the patient population used in the clinical trial of D22, and a different sub-population than one of the sub-populations that was specified in D22.
• "The skilled person would furthermore not have expected the efficacy of the 25 mg dose of empagliflozin in patients with moderate renal impairment on the basis of the efficacy of the 10 mg dose in patients with mild renal impairment reported in documents D22/D29 due to the distinctive status of patients with moderate renal impairment which directly affects the mechanism of action of empaglifolozin. Precisely because the efficacy of SGLT-2 inhibitors was known to decrease progressively with decreasing renal function (see D8, page 235, left column), the skilled person could not reasonably expect that any significant efficacy of empagliflozin as still observed according to documents D22/D29 within the group of patients with mild renal impairment would even be retained in the distinctive group of patients with moderate renal impairment."
• "In the absence of a reasonable expectation of significant efficacy of empagliflozin in the treatment of diabetic patients with moderate renal impairment the Board concludes that the subject-matter of claim 1 as granted was not obvious to the skilled person in view of the prior art and thus involves an inventive step."

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0948/19 - Remittal for inventive step

Key points

• The Board considers the claims of an auxiliary request to be novel of the (pre-published) prior art, differently from the opposition division. The Board considers the claims of the main request to be not novel.
• The Board does not discuss inventive step. It is not clear to me if the added features of the auxiliary request are trivial or not. 
• "D1 discloses a distribution of slopes and baselines obtained prior to sensor insertion. However, D1 does not disclose the criteria according to which this selection is performed. Hence, D1 does not disclose that the calibration line selected from of multiple possible calibration lines is the one that has the slope and the baseline closest to the maximum joint probability of both the slope and the baseline."
•  The Board remits the case: "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."
• The Board does not indicate that the OD departed from the usual practice of the OD or from the Guidelines. I think the OD followed the normal practice of the first-instance departments. The Board nevertheless considers the result of this normal practice to be " a special reason within the meaning of Article 11 RPBA 2020".
• It is not clear to me if there were any specific reasons that prevented the Board from considering inventive step, like the parties not making any submissions on that topic in appeal (which possibly would be contrary to the instruction in the RPBA to present a complete case, incidentally).
• 
  EPO 

You can find the link to the decision and an extract of it after the jump.

T 1572/21 - A bit more than three months

Key points

• The decision was taken in oral proceedings on 27.03.2024 and was issued in writing on 11.07.2024.
• The public file does not include a communication pursuant to Art.15(9) RPBA.
• Perhaps it is part of the non-public file, though the notification does not need to give any reasons for the delay, so it is hard to see why it should be non-public.
• We don't know if the President of the Boards of Appeal was informed of the delay as prescribed by Art. 15(9) RPBA.
• The decision itself does not mention the (slight) delay.
• 
  
• 
  

EPO 

The link to the decision and a screenshot of the file can be found after the jump.

T 1135/22 - Admissibly filed before the OD

Key points

• The Board arrives at carry-over requests that the proprietor had filed by the Rule 116(1) date before the OD (the Board also uses the term carry-over requests in the headnote/catchword). 
• The Board 3.5.05 follows Board 3.3.02 in T 0364/20.
• The Board does not discuss it, but the Guidelines state that the current version of the Guidelines for Examination in the EPO (March 2024 Edition), in Section E-VI.2.2.2, states that "[a]mendments submitted before the date set under Rule 116(1) cannot, as a rule, be considered as being late-filed".
• The Board considers that the proprietor had not shown that the amendments were admissibly filed. The Board does not indicate what kind of proof is suitable.
• The Board, in translation: "The fact that the auxiliary requests were filed before the date specified under Rule 116(1) EPC is also not decisive. According to the case law of the Boards of Appeal, such requests could also be considered "late" (see, for example, T 364/20, Reasons 7.2.3)."
• "Even if the Board were to include in its considerations the statements in the patent proprietor's first-instance brief of 13 August 2021, with which auxiliary requests 1 to 12 were also filed - which is not necessary for the reasons set out above - the result would not be different. These statements are limited to the statement that the added features are intended to further highlight the differences from the prior art or to represent a "corresponding fallback position" "due to the new Rules of Procedure of the Boards of Appeal" (see page 2, second paragraph). The arguments at first instance also do not explain why the requests could not have been filed earlier."
• Note, currently the GL do not indicate that amended claims must be filed without delay in the first instance opposition proceeding.
• Note that it is not clear to me if in the present case, the auxiliary requests were substantiated in appeal, as is required under Art. 12(3).
• 
  

EPO 

You can find the link to the decision and an extract of it after the jump.