T 0847/24 - (II) Schrodinger's method claim

Key points

• The post title is not meant as criticism of the Board's decision. 
• Claim 1 as granted describes, in effect, a preparation method that yields product A. The description discloses an additional step of converting A into B. The proprietor wishes to amend claim 1 by adding that step of converting A into B. Is this permitted?
• In the case at hand, A is a digital design of an implant and B is the physical implant, but that should not distract us.
• The Board agrees that claim 1 as amended "confers protection not only to the claimed method but also, pursuant to Article 64(2) EPC, to the implant directly obtained by that method, i.e. to a physical implant produced in accordance with the method defined in claim 1 of auxiliary request 1."
• The issue is Art. 123(3).
• "the Board also agrees, that a method comprising all the steps of claim 1 as granted and, in addition, a step of producing the implant also falls within the scope of claim 1 as granted, even though claim 1 as granted does not comprise any production step. This is because the added production step merely limits the method defined in claim 1 as granted."
• "carrying out the method of claim 1 as granted results only in the configuration of an implant, i.e. in data defining such a configured implant. It does not result in a physical implant. The appellant [proprietor] argued that, since a method including an additional production step fell within the scope of claim 1 as granted, the product directly obtained by that more limited method was also covered by the protection conferred by claim 1 as granted, by virtue of Article 64(2) EPC. "

• "The Board does not consider this persuasive. Pursuant to Article 64(2) EPC, if the subject-matter of the patent is a process, the protection conferred by the patent extends to products directly obtained by such a process. This provision therefore requires that the product in question be "directly" obtained by the claimed method. The Board understands this to mean that the protection conferred by a process claim does not, as a rule, extend to products obtained only by carrying out further steps which are neither defined in that claim nor implied by it."

• "The product protection conferred by Article 64(2) EPC is different from, and additional to, the protection conferred by a process claim as such. Hence, if a part of the patent's scope of protection is, in view of Article 64(2) EPC, extended because of the amendment, Article 123(3) EPC is infringed. In such a situation, it does not matter whether the patent's scope of protection is partly also, with regard to the process claim as such, more limited than before the amendment. Generally speaking, this is comparable to how an aliud partly extending and partly limiting the scope of protection also infringes Article 123(3) EPC."

• 6.7 Hence, if a granted claim defines [a method of making product A], amending the claim such that it additionally includes the step of [converting A into B] in view of Article 64(2) EPC, not allowable under Article 123(3) EPC." (generalisation in square brackets is mine).

• I don't know if this point has been decided before. The amendment of adding a method step to a preparation step does not seem very unusual to me.

• The background is that Article 64(2) EPC codifies a judicial stopgap from German case law to prevent imports of chemical compounds from Switzerland at a time when German patent law did not allow product claims for chemical products (and claims for the preparation method were used instead). (see, generally, Uhrich, Stoffschutz, 2010). The exclusion of chemical products from patentability in turn was a lesson learned from an early French case about a patent with a product claim for a dye, fuchsine (see e.g. here; and this article, p.19 of the PDF) 

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EPO 

The link to the decision is provided after the jump.

T 0772/24 - Analysable properties for inventive step

Key points

• My big post on G 1/23 is still a work in progress.
• G 1/23 said that: "It also follows from the correct interpretation of G 1/92 that all analysable properties of the product put on the market will belong to the state of the art, i.e. they will represent technical information that the skilled person is aware of and will consider relying on when looking at technical solutions."
• The present case is admittedly not about commercial products as prior art, but still.
• "there is nothing in D11 [a patent application] that suggests that the three primer coatings disclosed therein would perform differently in terms of adhesion to a coating applied thereto. Fully in agreement with this, the coatings according to D11 are only assessed in terms of their non-fouling properties in the example section; they are not assessed with respect to their adhesion to underlying surfaces or coatings. Accordingly, while experiments testing these three primers for a given property such as adhesion might have been routine for the skilled person, the fact remains that there is no incentive to be found in D11 to perform this testing. The targeted testing and comparison of these primers with respect to their adhesion to a coating applied thereto in order to determine which primer performs best in this regard, would not have been obvious, contrary to the appellant's argument. In other words, on the basis of D11 alone, the skilled person would not have had a reasonable expectation that an epoxy primer would have solved the objective technical problem."
See also G 1/92: "The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition."

EPO 

The link to the decision is provided after the jump.

J 0006/23 - Non-existent proprietor

Key points

• In J 12/19,  the patentee went bankrupt during the first instance opposition proceedings and the proceedings were interrupted under Rule 142(1)(b). After some time, the Legal Division announces the intention to resume the proceedings under Rule 142(2). The opponent disagrees, arguing that the insolvency proceedings were terminated by the patentee's dissolution, which is now non-existent. The opponent submits accordingly to the Legal Division. The Legal Division is of the opinion that the opponent is not a party to the proceedings in this respect, disregards the opponent's submissions, and issues a Communication to the opponent stating so. The opponent then files an appeal."
• That decision of the Legal Board of Appeal was issued on 28.04.2021. 
• The Legal Division took a new decision almost two years later, issued on 01.02.2023. That decision was: "rejecting the opponent's request that opposition proceedings be resumed pursuant to Rule 142 EPC with the opponent as the sole party. " The LD intended to resume the procedure with the proprietor as a party. 
• The opponent appealed. The Legal Board issued the present decision on 05.06.2023.
• Meanwhile, the patent has lapsed in all states. 
• On the admissibility of the appeal: "the refusal in the decision under appeal to intend resumption with the opponent alone has no immediate legal consequence either. However, it creates the threat that the LD will proceed to set a date for resumption with the proprietor as well. The opponent strongly disagreeing with the latter way to proceed, it would be required to appeal such a future decision. Due to this threat, a legitimate interest in the present appeal cannot be denied."
• I don't know whether this requirement for a legitimate interest is additional to Article 106 and 107 EPC, or whether it is a way to test "adversely affected" (or "decision")
• At issue is the (releatively new) second sentence of Rule 142(2) EPC: "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."
• The LBA clarifies that "intends" should be read as: the EPO may set a date on which the proceedings are resumed.
•  " on the basis of the capacities that Transito NV has under Belgian law, it must be concluded that it fails both prongs of the "legal personality" test of G 3/99."
• G 3/99 r.9: "The legal personality of a named entity under the EPC is decided on the same basis as before national courts, namely the capacity to sue or to be sued in its own name and on its own account." (hello DABUS, by the way, see here)
• "It follows that Transito NV no longer exist under Belgian law."
• "It is a generally recognized principle of national law and also under the EPC that legal entities which do not exist cannot bring or take part in proceedings. Transito N.V. is thus not able to take part in resumed opposition proceedings. 
• "The only way to reconcile the spirit of Rule 142(2), 2nd sentence, EPC, which aims to avoid endless interruptions of proceedings in cases where no person authorized to represent the affected party can be identified, with the aforementioned principle that legal entities which do not exist cannot take part in proceedings, appears to be a resumption of the proceedings without the affected party. 
• "The Legal Board concluded above that, if the present opposition proceedings are to be continued, then they must be continued with the opponent only. The Board must therefore set aside the LD's decision expressing the view that the proceedings are to be continued with both the opponent and the registered patent proprietor Transito NV that has ceased to exist.

  It will be for the LD to exercise its discretion pursuant to Rule 142(2), second sentence, EPC in respect of a possible resumption of the opposition proceedings. If the LD exercises its discretion by resuming the proceedings, then the proceedings will take place with the opponent only until the opposition division in turn subsequently exercises its discretion pursuant to Rule 84(1) EPC. If the opposition division does so by maintaining the continuation of those proceedings, then the opposition division will be bound by the LD's decision to continue them with the opponent only."

• I don't think the LD can arbitrarily keep the procedure interrupted, but we may have to see if the opponent has to appeal on that point as well. 

• I assume the opponent has requested that the proceedings be continued under Rule 84. We will have to see if the OD accedes to this request, or if the opponent will have to file an appeal on that point as well. 

EPO 

The link to the decision is provided after the jump.

T 0592/24 - Effect of claimed embodiment over other embodiment

Key points

• " In any event, the Board holds that reliance on post-published evidence to demonstrate an improved technical effect of the claimed subject-matter over a further embodiment originally claimed does not normally change the nature of the invention, as long as the technical effect is derivable from the application as filed and the improvement is not in contradiction with the original disclosure."
• compare: T655/24: "Applying the principles of G 2/21, the board does not consider that an improvement of an effect, here further reduced effector functions mediated by the Fc region, is encompassed by the technical teaching and embodied by the same originally disclosed invention merely because the effect itself (but not the improvement), was shown to be achieved in the application as filed (see G 2/21, Headnote, Reasons 67 and 72)."
• compare T 314/20: 

6.24 Summarising the above, the Board concludes that the technical teaching of the claimed invention that the skilled person, with the common general knowledge in mind, understands at the filing date from the application as originally filed, encompasses the following.

(a) Combination 97 (i.e. the currently claimed combinations) gives rise, inter alia, to an increase in plasma levels of active GLP-1 in patients with metabolic disorders and related diseases.

(b) Combinations 165 to 168 (i.e. combinations of empagliflozin with sitagliptin, vildagliptin, alogliptin and saxagliptin, respectively), having the same level of preference, achieve the same increase in plasma levels of active GLP-1 in patients with metabolic disorders and related diseases as combination 97.

6.25 By contrast, the purported technical effect relied upon by the respondent for inventive step is an increase in plasma levels of active GLP-1 which is stronger and more prolonged in time [in Combination 97 ] than the one achieved by combinations 165 and 166, i.e. combinations of empagliflozin with sitagliptin and vildagliptin, respectively (see point 6.9 above).

6.26 It follows from the analysis made in points 6.20 to 6.24 above that the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would not derive the increase in plasma levels of active GLP-1 relied on by the respondent (see point 6.25 above) as being encompassed by the technical teaching of the claimed invention and embodied by the same originally disclosed invention.

EPO 

The link to the decision is provided after the jump.

T 1176/24 - Rule 137(5)

Key points

• Cases about Rule 137(5) were more frequent in the past (see my article in epi Information 2018/2).
• The EPO was ISA and requested an additional search fee for claim 93. The applicant did not pay. Operative claim 1 is based on the features of original claim 93.
• "The Examination Division [sic!] concluded not to admit the Main Request under Rule 137(5) EPC since the amendments to the claims of the Main Request were based on original claim 93 that was found to be non-unitary during the international search phase."
• The Board: "the Examination Division erred in its application of Rule 137(5) EPC by merely finding that original claim 93 did not meet the requirements of unity when assessed a posteriori. This criterion is irrelevant in the present context when applying Rule 137(5) EPC."
• The Board's analysis is correct; the correct legal basis in G 2/92 (for Euro-direct applications at least). See GL H-II 6.2 (2025): "Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the [additional search fee]."
• The Board does not explicitly state the legal basis for the current Euro-PCT application (I would say: G 2/92 mutatis mutandis), but analyses that claim 93 had unity of invention with a searched claim.
• "The Board is therefore convinced that claim 1 of the Main Request merely constitutes a restriction to a particular embodiment of the subject matter as claimed in the original claim 90 (with reference to original claim 1) and can be subordinated to the original general inventive idea."
• "The decision under appeal is therefore to be set aside."
• "The Board stresses that a supplementary search concerning the aspects arising from the original claim 93, now reflected in claim 1 of the Main Request, would be in accordance with due process should the Examining Division deem it necessary. Moreover, such supplementary search appears to be highly appropriate in the light of the Examining Division's findings set out in point 12.2 of the grounds for the decision under appeal."

EPO 

The link to the decision is provided after the jump.

T 0011/25 - Fresh ground in appeal

Key points

• With the statement of grounds of appeal, the opponent raised for the first time an objection under Article 100(c) EPC. 
• In the appellant's [opponent]s' view, the objection should be admitted as it was closely linked to the objection of sufficiency of disclosure discussed before the opposition division (see point 1.3.1 above). Originally the features were disclosed in the order Fl-F2-F4-F5-F3 but in granted claim 1 the order was Fl to F5. This resulted in an aliud that did not find basis in the original application.
• The Board: 2.2 Even assuming that the objection of added subject-matter is linked, in substance, to the objection of sufficiency of disclosure, still the ground for opposition under Article 100(c) EPC was not submitted and substantiated in opposition proceedings, as acknowledged by the appellant (opponent). It thus constitutes a fresh ground for opposition. As the respondent (patent proprietor) explicitly did not approve the introduction of the new ground for opposition, the objection under Article 100(c) EPC can not be considered in appeal proceedings pursuant to G10/91.
• The Board, under sufficiency: "As the claim does not specify when steps F4 and F5 are executed (before or after the automatic uncoupling), the opposition division correctly stated (decision, 2.1.5) that this objection is rather a clarity objection, and clarity is not a ground for opposition."
• Suppose the proprietor argues, for the first time in appeal,  that in claim 1 the order of the steps was undefined, and because of that, the claim met Art. 83 (and suppose the argument is admitted). Suppose the opponent wishes to point out that the application as filed only provides a basis for the steps in a specific order, and that the opponent was initially unaware that the pre-grant amendment changing the order of the steps changed the meaning of the claim. Can the objection under Art. 123(2) be admitted (independent of the consent of the patentee)?

EPO 

The link to the decision is provided after the jump.

T 0644/24 - Amendments and new grounds of opposition

Key points

• The Board, in the headnote, in translation: "If the grounds for opposition under Article 100(b) EPC and Article 100(c) EPC were not raised in the opposition proceedings and the patent proprietor does not consent to their examination in the appeal proceedings, the patent may not be examined in its entirety for insufficient disclosure and added subject-matter in the appeal proceedings if the patent is amended in the opposition or appeal proceedings, but only insofar as the amendment brings about the insufficient disclosure or added subject-matter".
• This concerns the details of G10/91 hn. 3 about new grounds of opposition in appeal. 
• As far as Art. 100(c) is concerned, the current headnote is the same as the holding of T 693/98.
• Concerning Art. 110(b), the point is obiter, it seems. Still, the point seems valid, and the Board's reasoning is interesting (very German in the degree of detail, but good).

EPO 

The link to the decision is provided after the jump.