T 1041/21 - Need to substantiate carry over requests

Key points

• Art. 12(3) RPBA requires a party's appeal case to be substantiated. This also applies to carry-over auxiliary requests that can not be held inadmissible under Art. 12(4).
• Carry-over requests are requests that were admissibly filed and maintained in the first instance proceedings. Such requests are no case amendment under Art 12(4).
• The Explanatory Remarks are imprecise when they state that "they will not be considered an amendment and, therefore, will be part of the appeal proceedings".
• Self-evident amendments need not be explained according to established case law. The present decision does not touch on that rule.
• The references of the patentee to certain letters in the first instance proceedings are no valid substantiation.
• As a practical rule of thumb, imagine (when drafting your Statement of grounds or appeal reply) that the file wrapper of the first instance proceedings is burnt, except for the minutes and the decision (Art.12(1)) and except for the claim requests and evidence (Art. 12(3)(s.3)). Letters of parties in the first instance proceedings will, however, be considered for the purpose of assessing whether submissions were "admissibly raised and maintained in the proceedings leading to the decision under appeal" under Art. 12(4)(s.1) and the entire first instance file wrapper will be considered for holding submissions under inadmissible under Art. 12(6)(s.1) RPBA by showing that the party filing the submission in appeal had one or more reasonable opportunities to file them in the first instance proceedings and made no avail of them or (tacitly) abandoned the submissions.
• As a further practical rule, attorney arguments probably should be presented in the SoG proper, not in an annexe (same for the appeal reply brief) (see T 0974/20). 
• The Board in translation: "There is agreement that auxiliary requests 0, 0.1, 1 - 11 were filed in opposition proceedings and were not abandoned. However, this is not decisive in the present case, because the non-admission is not based on the provisions of Article 12(2), (4) RPBA, but on those of Article 12(3), (5) RPBA. The objections to the reference to documents and scarcity under Article 12(3) RPBA, as well as the requirement under Article 12(3)(b) RPBA to submit such documents, have already been addressed in Section 5.1.1 above and require no further comment."

EPO 

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

T 2685/19 - On the need to adapt the description

Key points

• Board 3.5.02, in machine translation: "Based on decision T 1989/18, Reasons No. 5, the appellant argues that if the claims do not have a problem of clarity, the description cannot give rise to an ambiguity of the claimed subject-matter."
• "The board does not agree"
• "According to the settled case law of the Boards of Appeal, the description must therefore be adapted to the amended claims, as has apparently already been requested in the present case by the opposition division with regard to the request on which the decision under appeal is based. This means, among other things, that embodiments no longer covered by the amended wording of the claim are to be identified as such in the description. This is not the case for the description submitted with auxiliary request IIIbis. ... Therefore, all embodiments that only have a two-part structure at the end area no longer fall under claim 1 and are to be marked accordingly. In the present case, as can already be gathered from the version on which the contested decision is based, only the embodiment according to FIG. 5 has a three-part structure at the end area."
• "Since the description submitted with auxiliary request IIIbis does not clarify that the claimed invention concerns only the embodiment corresponding to the subject-matter of the claims, there is a contradiction between the claims and the description, as a result of which the claims, contrary to the requirement of Article 84, second sentence, EPC, are not supported by the description."
• "The weighting of the criteria specified in Article 84, second sentence, EPC in favor of the clarity of the claims, which was the basis in decision T 1989/18, cannot be inferred from Article 84 EPC. Rather, the board follows the established case law of the boards of appeal in this regard, as recently found in decisions T 1516/20, reasons for decision no. 5, T 1024/18, reasons for decision no. 3.1, and T 2293/18, reasons for decision no. 3.3 has been confirmed. In the decisions mentioned, it has been shown very clearly and convincingly that the criterion for the claims being supported by the description in Article 84, second sentence, EPC is an independent criterion which is not subordinate to the clarity of the claims."

EPO 

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

T 0169/20 - Claim interpretation - using the description only exceptionally

Key points

•  Recently T 1473/19 challenged the prevailing view in the case law and proposed that Art.69 is to be used for claim interpretation, not only for Art. 123(3) (as is conventional) but also for Art. 123(2) and Art.54 etc. (see this post)
• That Board, in that case, held that "Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC"
• "The [present] board disagrees with the findings in the above decisions [i.e. T 1473/19 ] for the following reasons:"
• "The board does also not agree in that Article 69 EPC provides the only guideline for interpretation of the claims in the EPC and, as explained in the next paragraphs, considers that the provisions in Article 84 and Rules 42 and 43 EPC set out the structure of the information in the patent or patent application to elucidate the subject-matter of the invention and thus provide guidance on how to interpret the claims for the purpose of assessing patentability."
• "the provisions of Article 69(1) EPC do not apply to the interpretation of the claims for the purpose of assessing patentability but, in view of its explicit wording, to the determination of the "extent of the protection" of the patent or patent application, i.e. the object to be examined under Article 123(3) EPC or in infringement proceedings. By contrast, the wording of Articles 54 and 56 EPC expressly states that the object to be examined for assessing novelty or inventive step is the "invention"."
• This implies that the scope of the claims is different for validity and infringement.
• This also raises the question of what Art. 52, 54 and 56 mean with the "invention".
• "According to Article 84 EPC, the claims shall define the matter for which protection is sought, which in view of Rule 43(1) EPC corresponds to the technical features of the "invention". It is thus apparent that the object to be assessed under patentability corresponds to the technical features in the claims. "
• "as concluded in G 2/98 (Reasons 2 and 9), the term "invention" in the EPC should be narrowly construed as the combination of technical features in the claims. As stated in T 1845/14 (Reasons 9.6), this construction of the term "invention" implies that the subject-matter to be assessed under Articles 83, 87, 54 or 56 EPC should not be interpreted restrictively or differently from what a skilled person would understand when reading the claims on the basis of technical aspects wich are part of the description but not implicitly or explicitly defined in the claims."
• The Board, turning to the role of the description: "If the wording of a claim is unclear for a person skilled in the art, the description may fulfil its supporting function by illustrating the meaning of the unclear feature/s. Conversely, when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified. In addition, if the invention according to the description is narrower or different from that in the claim, the supporting role of the description under Article 84 EPC cannot be fulfilled, since an interpretation on this basis would not represent an illustration of the subject-matter of the claim with the aid or support of the description but a restriction or modification of the scope of the invention."
• "The board thus considers that the condition "supported by the description" in Article 84 EPC provides a legal basis for determining how and when claims should be interpreted in the light of the description. "
• "In particular, the wording of this provision explicitly limits the role of the description to an aid for understanding the subject-matter to be assessed under patentability, while implicitly confining this role to the exceptional cases where such support is both necessary and possible. The support of the description should be resorted to only in case of need, since it is the wording of the claims which defines the matter for which protection is sought (i.e. the invention) and it would not be justified to seek help in understanding a subject-matter which is in itself clear. Moreover, this support is only possible to the extent that there is a correspondence between the description and the subject matter of the claimed invention, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them."

• The Board also notes that: "While [Article 84 EPC, 2nd sentence]  is primarily applied to require that the claims be brought in line with the technical teachings of the description (i.e. due to an essential feature missing from the claim), or that the description be adapted to disclose the same invention as the claims, these issues ultimately seek to eliminate inconsistencies in order to enable the supporting function of the description as an aid for understanding the claims."

EPO 

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

T 0649/20 - Exact publication date unnecessary

Key points

•  " The patent in suit claims priority from a US patent application filed on 25 May 2006. Document D1 is a scientific article which was published in 2006 in volume 102 of the journal Anesthesia & Analgesia. The exact publication date of D1 is not available in the document itself. As evidence for its publication date being before the priority date of the patent, the respondent provided the following documents during the opposition proceedings: D1a, D14, D15 and D16."
• The board reviews the submitted evidence.
• "the board concludes that, although D1 does not feature any publication date other than the year of 2006, there is evidence on file indicating that the issue to which D1 belongs has the date of 1 May 2006 (D1a) and that it had been published on 21 April 2006 (D15 and D16). Moreover, there is evidence that the printed edition of the journal issue was publicly available on 19 May 2022, as this was the date of receipt at one public library (D14). There is no evidence on file contradicting this evidence."
• " The board is not persuaded by the appellant's arguments that the evidence on file is contradictory and does not make it possible to clearly establish when D1 was published. The fact that both a senior managing editor and a senior publisher of the journal independently indicate the same date as the date of publication for the issue in question makes it possible to conclude with a high degree of certainty that this is the correct publication date. The board fails to see any good reason to doubt the credibility of Ms [L] and Mr [B] , and the appellant has not provided any evidence to support such allegations. Moreover, it is sufficient to establish that the document was available to the public before the priority date in order to conclude that it is prior art. D14 is already considered to provide sufficient evidence that D1 was in fact publicly available before the priority date. Contrary to the appellant's arguments, it is not relevant whether or not a member of the public indeed had access to it; the librarian that received the issue and registered it in the database from which D14 has been obtained is a member of the public in any case for the purposes of Article 54(2) EPC (see e.g. T 834/09, points 5.1 to 6.3 of the Reasons)."

EPO 

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

T 2565/19 - Functionally defined receptor

Key points

•  This is an examination appeal.
• "The claim is for an isolated TRH receptor, i.e. a product. The claimed receptor is defined only by locational and functional features, i.e. the tissue from which it can be isolated: "from human CNS tissue" and its ability to bind the compounds defined in the claim"
• Claim 1 at issue: "An isolated TRH receptor subtype from human CNS tissue, the receptor displaying selective binding to a compound having the structure:- Glp-W-Pro-X [with further definition of X and W] wherein the compound having the structure Glp-W-Pro-X binds to the TRH receptor sub-type in human CNS tissues but does not bind to the TRH receptor sub-type in human pituitary tissue".
  

• "Neither of these features conveys any structural information about the claimed product. In other words, the language of the claim does not include or imply anything about the structure of the claimed chemical entity, for instance whether it is a protein or not, or if it were a protein, what its sequence might be."

• "28. In the absence of any structural features, the claim cannot be considered as clear because it fails to "enable the protection conferred by the patent (or patent application) to be determined" (Id.) and it does not define the claimed subject-matter in a manner which allows a meaningful comparison with the state of the art to be made.Neither of these features conveys any structural information about the claimed product. In other words, the language of the claim does not include or imply anything about the structure of the claimed chemical entity, for instance whether it is a protein or not, or if it were a protein, what its sequence might be."

• As a comment, see also recent decision T 1708/18 in an opposition case, where a patent was granted with a claim directed to: "An isolated antibody that binds specifically to the isolated polypeptide of SEQ ID NO:2 or SEQ ID NO:4". The patent in that case was granted in 2015.

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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.

T 1214/21 - Only one further request

Key points

•  "it is evident from the minutes of the oral proceedings before the opposition division (point 26) that the chair had indicated that, after having discussed three main requests in the proceedings, only one further request would be allowed without any consideration being given to (the) others, which is a further substantial procedural violation (see also T 756/18, Reasons 3)."
• The headnote of T 756/18 in translation: "The Opposition Division exceeds the appropriate limits of its discretion when it declares that it admits only one auxiliary request and immediately rejects additional requests without apparent valid reasons and without even having examined whether the amendments would have made it possible to set aside all the objections validly raised until then without giving rise to new ones, thus making them potentially admissible."

EPO 

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

T 0411/19 - Plausibility for novelty and for priority

Key points

• Claim 1 is a second medical use claim directed to:  "A composition comprising at least one peptide that inhibits plasma kallikrein for the use in the treatment of ophthalmic disorders in a patient in need thereof, ..."
•  Patentee "had several lines of argument as to why document D2 did not disclose subject matter anticipating that of claim 1. They were i) that document D2 was not enabling for the medical treatment as defined in claim 1, because the experiments reported in document D2 did not constitute an actual treatment of any ophthalmic disorder, ..."
• "The appellant's first line of argument is based on the observation that "the experiments of D2 do not constitute an actual treatment of any ophthalmic disorder at all". This, however is not the right test for deciding whether a document discloses a medical use in such a way that it can be carried out by a person skilled in the art. Instead, the document should disclose the suitability of the product for the particular therapeutic application"
• "In view of [the experimental results in] document D2 [a PCT application establishes at least an initial plausibility that the compounds mentioned in claim 1 (of document D2), i.e inhibitors of the pathway set out in Fig. 6 of document D2, are suitable for achieving the therapeutic aim."
• " To counter this initial plausibility, evidence in the form of verifiable facts would be required to show that serious doubts exist about the claimed peptides' suitability for achieving the therapeutic effect. No such evidence has been put forward by [the patentee].
  
  
• "[The opponent] was of the view that subject-matter of this claim request is not entitled to the earliest priority date, 16 February 2006 because the application [P1] from which priority is claimed (EP 06360008) does not sufficiently disclose the suitability of the claimed compounds for the claimed therapeutic use"
• "According the established case law of the boards, a claimed second medical use meets the requirements of Article 83 EPC if the patent discloses the suitability of the product for the claimed therapeutic application, if this was not known to the skilled person at the relevant date []. This standard applies to priority documents equally, because the priority document must disclose the invention claimed in the subsequent application in such a way that it can be carried out by a person skilled in the art "
• " document P1 contains no experimental data or other evidence of any kind that goes beyond a mere allegation that the peptides defined in that document are indeed suitable for treatment of any of the ophthalmic disorders listed. That the peptides mentioned are suitable is not at all self-evident because it is the essence of the contribution to the art of the invention purportedly made in document P1. In the absence of such evidence, it cannot be concluded that document P1 provides even an initial plausibility that the claimed compounds are suitable for treating the disorders in question. "
• As a comment, it seems that a sentence stating verbatim "compound X is suitable for treating disease Y", is not a disclosure that compound X is suitable for treating disease Y in this context. Perhaps the term "disclose" is not entirely precise in the sense that what is required is something different from the gold standard test of G 2/10. See also T 2842/18. 
• "the passages cited by [the patentee] on page 6 [of P1] are not evidenc/e but mere allegations of suitability. In conclusion, document P1 does not disclose the invention of claim 1 in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The invention claimed in claim 1 of the main request is therefore not the "same invention" in the sense of Article 87(1) EPC* as the invention disclosed in document P1. Thus, the invention claimed in claim 1 of the main request cannot validly claim priority from document P1."
• * = Note, it might have been the same invention in the sense of G 2/98; at least this aspect of the disclosure in P1 is not disputed. 
• As a comment, the Board apparently saw no need to wait for G 2/21 even though one of the proposed answers in that referral is "no plausibility requirement at all" (in the context of inventive step, admittedly). 

EPO 

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