T 3048/19 - Suitable for killing P. salmonis

Key points

• Claim 1 is directed to "Propyl-methyl-phenol compound, or composition comprising a propyl-methyl-phenol compound for use in the treatment and/or prophylaxis of Salmonid rickettsial septicemia (SRS) and/or diseases caused by Piscirickettsia salmonis, and/or for the use in killing, combating or controlling Piscirickettsia salmonis."
• The Board: "Purpose limited product claims, formulated in accordance with Article 54(5) EPC, are limited by their reference to methods of Article 53(c) EPC. However, "killing, combating or controlling" is not restricted to methods for treatment of the animal (including human) body by therapy and includes disinfection of water, as also indicated in the description of the patent which states "said propyl-methyl-phenol compound is applied to a locus to be protected from said bacteria or virus" (see paragraph [0020] of the patent in suit). In this case, the killing, combating or controlling of PS/SRS or ISA/ISAv may occur outside the fish."
• "Consequently, the compounds and compositions comprising the compounds of the second alternative defined in claims 1 and 2 ("for the use in killing, combating or controlling") do not profit from the purpose limitation under Article 54(5) EPC but are to be construed as compounds and compositions merely "suitable for" the intended use"
• In D10, "Paragraphs [0043] to [0062] list a number of non-volatile or volatile bioactive compounds. Among the non-volatile compounds, phenols, including propyl-methyl-phenols such as thymol or carvacrol, are an option (see paragraph [0044])."
• "Based on the claim construction above (see point 2.1), any prior-art compound "suitable for" killing, combating or controlling PS/ISAv, i.e. inherently possessing the claimed physiological properties, will take away novelty of the claimed composition."
• "Document D10 discloses a composition comprising thymol or carvacrol (see paragraph [0044]), i.e. propyl-methyl-phenol compounds, suitable for killing, combating or controlling PS and ISAv. It is inherent that the composition has been manufactured. "
• "Thus, the second alternative "for the use in killing, combating or controlling" of claims 1, 2, 14 and 15 is anticipated by the disclosure of document D10 within the meaning of Article 54 EPC. The main request is not allowable."
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

G 2/21 - The Enlarged Board on evidence

Key points

•  The Enlarged Board provided a comprehensive analysis of the principle of the free evaluation of evidence in G 2/21.
• "In G 1/12 ... the Enlarged Board recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence."

• r.30: "Said principle can be defined in abstract and general terms as allowing and, by the same token, requiring a judicial body, like the boards of appeal, to decide [whether a contested factual assertion is to be regarded as true or false] according to its own discretion and its own conviction, by taking account of the entire content of the parties' submissions and, where appropriate, any evidence admissibly submitted or taken, without observing formal rules []"
• Admissibly submitted refers to evidence submitted by the parties. Evidence that is taken is e.g. the hearing of a witness by the EPO.
• r.31: "[This principle] does not mean that this evaluation of evidence may be arbitrary, rather the evidence must be assessed comprehensively and dutifully. The only decisive factor is whether the judge is personally convinced of the truth of the factual allegation, i.e. how credible the judge classifies a piece of evidence. To do this, the judge must put all the arguments for and against a factual statement in relation to the required standard of proof. In doing so, the judge remains bound by the laws of the logic and by probability based on experience. The reasons that led the judge to be convinced of the correctness or incorrectness of a contested allegation as to fact are to be set out in the decision."
• r.32: "The principle of free evaluation of evidence may not be used to disregard evidence per se insofar as [the evidence] is admissibly submitted and relied upon by a party in support of an inference which is challenged and is decisive for the final decision." 
• As I noted in my post about T 1418/17, the principle of free evaluation of evidence means that there are no strict rules for the evaluation of evidence, i.e. no such rules like a rule that the testimony of three witnesses is binding evidence, as was the case in medieval law (Roman-canonical law). “The [medieval] formal theory of evidence that grew out of this hierarchical evaluation [of evidence] left no option for the judge: [the judge] was required to be convinced after the designated number of witnesses had testified concordantly” (link). “The principle of free evaluation of the evidence by the judge generally dates from the French Revolution. The French introduced the concept of the judge’s conviction intime (inner, deep-seated conviction) in contrast to rules of formal evidence that prescribed exactly when the evidence amounted to proof” (link to https://www.britannica.com/topic/evidence-law).
• See also T 3120/19:  "The principle of free evaluation of evidence is only applicable after the evidence has been taken and cannot be used to justify not taking evidence that has been offered, cf. T 0474/04"; the Board here considers the types of evidence that are "taken", e.g. witness hearing, the inspection of samples, etc.
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• The Enlarged Board: "Disregarding [certain types of evidence] as a matter of principle would deprive the party submitting and relying on such evidence of a basic legal procedural right generally recognised in the EPC Contracting States and enshrined in Articles 113(1) and 117(1) EPC" (r.32)
• The Board then reviews the existing case law.  This parts includes a few general statements.
• "Parties can freely choose the evidence they wish to submit, whereby the kinds of evidence listed in Article 117(1) EPC are merely examples"
•  "Articles 113(1) and 117(1) EPC embody a basic procedural right generally recognised in the EPC contracting states, i.e. the right to give evidence in appropriate form and the right to have that evidence heard (see T 1110/03). A decision should discuss the facts, evidence and arguments which are essential to the decision in detail"
•  "If the evidence offered as proof of contested facts essential to the settlement of the dispute is decisive, the body hearing the case must, as a rule, order that it be taken into account (see T 474/04). All appropriate offers of evidence made by the parties should be taken up (see T 329/02)."
• Note, to "offer" a witness is actually a formal request of a party to hear a witness (as I understand it), with the particular feature that the witness is "on the side" of the party making the request (see here) To " offer" evidence is a term mostly used for jury trial where a party  needs permission from a judge to present evidence (a document, or a witness) to the jury. 
• Late-filed evidence can be held inadmissible, and late-filed evidential requests (e.g. to hear a witness) can probably be denied under Article 114 EPC.
• "If, however, post-published evidence is considered to lack prima facie relevance or is not required for the decision on the issue in question of the case at hand, there is no need for it to be taken into account by the competent board of appeal"
• This applies to any kind of evidence; I think the Board has to give reasons in the decision why a (timely filed and formally admitted) piece of evidence lacks relevance for the contested factual assertion at issue.
• A similar case is if a patent publication is filed as evidence of common general knowledge: the Board will briefly consider the evidence and normally reject the evidence on the merits as irrelevant. 
• In this sense, post-published evidence will often be of limited value for proving what "the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching" [at the filing date], cf. headnote 2 of G 2/21. However, there might be exceptions, e.g. a declaration of a technical expert as to what the skilled person would understand. 

EPO  G 0002/21

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

G 2/21 - The Enlarged Board on sufficiency

Key points

• "[The] referred questions do not require an answer to the issue of sufficiency of disclosure and Article 83 EPC. However, as the terminological notion of plausibility relied upon by the referring board [] is mainly to be found in the case law of the boards of appeal with regard to the patentability requirement of sufficiency of disclosure, the Enlarged Board accepts the appropriateness of a comparative analysis and comparative considerations in this regard."
• "Indeed, a technical effect, which in the case of for example a second medical use claim is usually a therapeutic effect, is a feature of the claim, so that the issue of whether it has been shown that this effect is achieved is a question of sufficiency of disclosure under Article 83 EPC"
• To rephrase this statement slightly:  if technical effect ... is a feature of the claim, the issue of whether it has been shown that this effect is achieved is a question of sufficiency of disclosure under Article 83 EPC. This was also noted in G 2/03. 
• "Hence, because the subject-matter of second medical use claims is commonly limited to a known therapeutic agent for use in a new therapeutic application, it is necessary that the patent at the date of its filing renders it credible that the known therapeutic agent, i.e. the product, is suitable for the claimed therapeutic application.  The Enlarged Board explained the legal and historical background to the patentability of further medical uses in its decision G 2/08." [r.74.3]
• In other words, it is necessary under Art. 83 for second medical use claims that the patent (or patent application) at the filing date renders it credible that the known therapeutic agent, i.e. the product, is suitable for the claimed therapeutic application. 
• Note, the Enlarged Board does not say that the opponent must show that it was not credible on the basis of the patent application (as filed) on the filing date the recited therapeutic agent was suitable for the claimed therapeutic application.
• Clearly, it is the application as filed, as understood by the skilled person on the filing date in the light of common general knowledge of the skilled person on that date, that must render it credible that the recited therapeutic agent is suitable for the therapeutic application specified in the claim under examination. 
• Note, the Enlarged Board does not say that the application as filed must provide full proof that the recited therapeutic agent is suitable for the therapeutic application specified in the claim under examination. 
• Note, the Enlarged Board says, "renders it credible". A purely verbal statement that a compound is suitable for treating disease X may not always be sufficient to meed this requirement (in fact, may often be insufficient) even though (at least under currently prevailing case law) such a statement would be fine as disclosure under Art. 123(2) for a corresponding second medical use claim.
• Note, the Enlarged Board's requirement logically extends to allegedly novelty-destroying prior art for second medical use claims. 
• The requirement, probably, also extends to non-medical use claims ("use of compound X for purpose Z"), and to first medical use claims ("compound X for use as medicament"), for the latter the application as filed must render it credible that the recited compound is suitable for a therapeutic application.
• The Enlarged Board does not mention serious doubts substantiated by verifiable facts, i.e facts to be adduced by the opponent. Because the Enlarged Board specifically mentions that "it is necessary that the patent ... renders it credible", the Enlarged Board's holding appears to be directed not in the least to opposition proceedings. 
• The Enlarged Board's reasoning to arrive at this conclusion regarding sufficiency is remarkably brief, though building on the preceding extensive review of the case law on inventive step in the decision. The Enlarged Board observes that "the technical effect ... is a feature of the claim", and then the above-cited r.74.3 follows. This paragraph is followed by providing summaries of a number of decision of Technical Boards of Appeal on sufficiency. 
• The precise function of the reference to G 2/08 is not entirely clear to me. It might be noted that G 2/08, r.5.3 mentioned that "the exclusion from patentability of [medical methods]  seemed actually to be based on socio-ethical and public health considerations."

EPO 

The link to the decision is provided after the jump, as well as an extract of the decision text.

T 0088/21 - No undisclosed disclaimers for partial priority

Key points

• Claim 1 without the disclaimer enjoys partial priority from D0 because there is a still earlier application D1a, of the (same) applicant, which discloses (in the examples) an embodiment of the present claims without the disclaimer. The still earlier application D1a serves as the priority application for a PCT application D1 that was published in the priority year; the PCT application is also a Euro-PCT application which forms a prior right for the part of the claim for which the priority is valid. 
• I'm aware that the above paragraph is perhaps a bit concise summary. The Board sets out the relevant facts very clearly. 
• So, for the claims without the disclaimer, D1 is novelty destroying prior art under Article 54(2). For the claims with the disclaimer, D1 is a prior right under Art. 54(3) and not novelty-destroying because the overlapping subject-matter is disclaimed.
• An undisclosed disclaimer was accepted in such a case in T1872/14 which was, however, issued before G1/15 on partial priority.
• The Board:  "the criteria developed in G 1/03, together with G 1/16, are not fulfilled, and the disclaimer in claim 1 of the main request violates Article 123(2) EPC."
• " This line of argument [of the applicant] is based on the incorrect assumption that the claim with (i.e. after the inclusion of) the disclaimer was decisive in the given context. This is, however, not in accordance with the principles developed in G 1/03 and G 1/16."
• The Board agrees with the concise reasoning in T 0311/18: "The requirements of Article 123(2) EPC are not met for the following reasons: The disclaimer introduced in claim 1 is not allowable since, for the subject-matter disclaimed, D5 is not prior art under Article 54(3) EPC, but rather it is the first application within the meaning of Article 87(1)(b) (see T 282/12, Reasons 2). Consequently the patent in this case does not validly claim priority for said subject-matter and D5 is prior art under Article 54(2) EPC for the disclaimed subject-matter. The requirements for a disclaimer to be allowable, as set out in G 1/16, OJ EPO 2018, A70, in combination with G 1/03, OJ EPO 2004, 413, are therefore not met."
• The present Board: "The concept of G 1/15 that alternative subject-matter encompassed by a generic claim may enjoy partial priority is beneficial [for applicants] in some situations, namely when it is to be assessed whether a priority document relates to the same invention. But it may be disadvantageous in other situations, namely when the nature of a priority document as the first application is at stake in view of an even earlier application by the same applicant."
• "G 2/98 advocates a "narrow or strict interpretation" of the concept of the same invention and the right to priority (see Reasons 9 and T 1222/11, Reasons 9.1)."
• As a comment, G 2/98 only uses the phrase "narrow or strict interpretation" in relation to the concept of the same invention, not in relation to priority in general.
• "Moreover, the appellant already knew the content of their documents D1a/D1 at the time of filing the current application, and it was in their hands for the current situation not to occur. It rests with an applicant to manage their patent portfolio in line with the provisions of the EPC they want to avail themselves of, however large this portfolio may be, not least in the interest of legal certainty for third parties."
• This reasoning does not convince me. G 2/03 permits undisclosed disclaimers in case the prior right originates from the same applicant and is hence not based on reasons of culpability. On the other hand, in the present case of a priority gap, it is incidental that the cited document is a patent application of the same applicant. Even though a priority gap is always caused by a still earlier application or the same applicant, that still earlier publication does not need to be published, let alone in the priority year; it is also possible that the cited document is a publication of a third party in the priority year. 
• As a comment, I leave it as a question to the reader whether G2/03 expressly or implicitly says the list of cases permitting undisclosed disclaimers given therein is exhaustive and whether we should take it "as carved in stone" (cf. G 3/19). 
• I note that G 2/03 r.2.6.3 considered the case of "a lack-of-novelty objection raised under Article 54(3) EPC [which] becomes an anticipation under Article 54(2) EPC because the application-in-suit turns out not to enjoy the claimed right of priority, either because it was not valid from the outset, or because it was lost following a further amendment, additional to the disclaimer, not disclosed in the priority application."
• I note that G 2/03 seems to provide an equitable solution, at least refers to "unfairness" in r. 2.1.1 and 2.2.1. 
  
  
• Interestingly, the disclaimer was drafted by reference to D1: "with the proviso that the glass article (300) is not a glass article according to Examples 4A, 4B, 4C, 4D or 5A of EP 3 204 338 A2." The Board needs to comment on whether such a formulation meets Art.84.
   

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

G 2/21 - Condensed version on plausibility only

Key points

•  For those readers who are in a hurry and are not specifically interested in the principle of the free evaluation of evidence, below the link is a condensed version of the decision with only the parts about "plausibility" and with the (extensive and important) citations of earlier case law and national law omitted, i.e. only the reasoning of the Enlarged Board. 
• The relevant headnote 2 of the decision is that:  "A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention."
• I note that the term "plausibility" is not used in the headnote. 
• This headnote requires some interpretation. The preliminary opinion contained a statement that is almost verbatim the same as the headnote (see my analysis of that statement here), though the remarks in the preliminary opinion about "significant doubts" did not make it to the final decision. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2156/17 - Article 113 EPC does not entail the right

Key points

• The Board does not admit request 1a.
• "Auxiliary request 1a is an attempt to parry the Board's decision not to admit the new first and fourth auxiliary requests on the ground of lack of convergence, when compared to the new main request."
• "There is nothing exceptional in the board applying the criterion of convergence to question the admissibility of an auxiliary request freshly filed in appeal proceedings (Article 13(2) RPBA 2020). Although convergence, as stressed by the appellant, is not the sole criterion, there is also nothing surprising in the Board applying it to the new first and fourth auxiliary requests filed in response to the communication of the Board. "
•  " The right to be heard under Article 113 EPC does not entail the right to be given further possibilities to file new requests if earlier attempts fail. In the Board's judgment, the appellant's right to be heard is met under the circumstances, since they were aware of the objections to the admissibility of the earlier requests, and had the opportunity to contest this and present their arguments (T 732/21)."
• The Board does not specify any particular paragraph. To cite that decision: " the purpose of the rules of procedure before the Boards is not, in itself, the refusal to consider late requests, but rather the defence of the parties rights to a fair hearing within a reasonable time, and that, in view of the above, in the present case, consideration of this particular request [i.e. admitting it] does not impair these basic rights of either party"
  
  
• On inventive step:  "The claimed invention is a mixture of technical and non-technical features. The approach generally followed to assess inventive step of the subject-matter of a claim comprising a mixture of technical and non-technical features derives from T 641/00, Two identities/COMVIQ, OJ EPO 2003, 352. This approach was generally endorsed by the Enlarged Board of Appeal in G 1/19 Pedestrial simulation, OJ EPO 2021, A77, points 31-34, and points 35 and 36 with explicit reference to G 3/08, Programs for computers, OJ EPO 2011, point 10.13.2)."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 3257/19 - Internet publication on a public 3GPP server

Key points

• "during the examination proceedings, the examining division referred inter alia to the following prior-art document: D11: Qualcomm Europe: "Processing PCC in Release 8 - IP-CAN Type & RAT Type", S2-081161, 3GPP SA2 #63, Athens, Greece, February 2008."
• "The appellant submitted that the publication date of document D11 had not been reliably established by the examining division. '
• "he appellant seems to argue that the examining division failed to establish beyond reasonable doubt the exact earliest date of public availability of those documents. However, according to the established case law (see e.g. T 884/18, Reasons 6), this is no longer the applicable standard of proof required for assessing whether or not documents downloaded from the Internet or standard preparatory documents belong to the state of the art. In view of the available evidence and arguments, the board is sufficiently convinced that D11 was indeed made available by file upload to a public 3GPP server before the 3GPP TSG-SA2 Meeting #63 took place, i.e., at any rate, well before 14 March 2008."
• The applicant had also argued that:  it could not be determined that the document "could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document", with reference to case T 1553/06, Headnote 4."" 
• " The subject-matter of claim 1 does not involve an inventive step (Article 56 EPC) starting from D11 for the following reasons ..."
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.