12 August 2022

T 0809/21 - Limited extent of opposition

Key points

  • " In most cases oppositions are filed against the patent as a whole; the present case is one of those relatively rare cases where the patent is opposed only to a limited extent." 
  • The OD  nevertheless revoked the patent in its entirety. In particular, independent claim 8 was found not allowable, even taking into account all amendments of that claim in the auxiliary request, and there was no auxiliary request directed to unopposed claims 1-7 only. 
  • " According to G 9/91, the Opposition Division's discretion to extend the opposition to unopposed claims is limited to claims which, while not explicitly opposed, are dependent upon an opposed independent claim "which falls in opposition or appeal proceedings". This does not apply in the present case as claims 1 to 7 are not dependent on opposed independent claim 8. Hence, the Opposition Division had no discretion whatsoever to extend the opposition to the unopposed claims 1 to 7." 
  • " Claims 1 to 7 are not, therefore, subject to any opposition in the sense of Articles 99 to 105 EPC, nor are they the subject of any current proceedings before the EPO." 
  • " The Opposition Division reports a number of statements purportedly made by the opponent after the nine month opposition period, to the effect that the opposition was directed at the patent as a whole". The Board: " such statements could have no bearing whatsoever on the determination of the extent of the opposition. It is clear from the passage from G 9/91 cited above (point 3.4) that the extent of the opposition cannot be enlarged retrospectively after the expiry of the period prescribed in Article 99(1) EPC." 
  • " According to the minutes of the oral proceedings (see point III(x), above), the opponent argued that if one claim falls (claim 8, for example) the request in which it is comprised falls. The Board agrees, but the meaning of a "request" in a case where only certain claims are opposed must be clearly understood. An admissible request to the EPO can only be made in the context of ongoing proceedings before the EPO; if there are no proceedings there can be no requests. In the present case claims 1 to 7 are not the subject of any proceedings before the EPO, and cannot therefore be the subject of any admissible request. Hence, the requests of the proprietor are to be understood as being directed at the opposed claims 8 and 9 only." 
  • "  The result was that the opposition against claims 8 and 9 was successful, in that the Opposition Division decided that the patent could not be maintained in a form which included any version of claims 8 and 9 submitted by the proprietor." 
  • " In a case where the patent is not opposed in its entirety, the opposition being directed at certain claims only, and where the Opposition Division decides that all of the proprietor's requests in relation to the opposed claims must fail, only the unopposed claims, which are not part of any opposition proceedings, are left standing.
  • Hence, provided the requirements of Rule 82(1) EPC are met [*] (either during oral proceedings or, in a written procedure, by means of a separate communication, see below, point 5.4), the patent may be maintained on the basis of the unopposed claims, irrespective of whether the proprietor has filed an explicit request for this during the proceedings. Such a request would, in fact, be superfluous, since the unopposed claims have been granted and are not the subject of any opposition. "
    • * - it is unclear to me what these requirements are, in view of G 1/88. Rather, Art. 113(1) and (2) must be complied with. 
  • "The procedure to be followed in such a case is ... In other words, the Opposition Division should inform the parties that it intends to maintain the patent on the basis of the unopposed claims only, possibly with an amended description, and should ensure that the proprietor approves the text and that the opponent has had an opportunity to comment upon it. According to standard procedure, these requirements can all be fulfilled during oral proceedings, in which case a separate communication under Rule 82(1) EPC is neither necessary nor appropriate (see G 1/88, Reasons, point 5.1.3 and point 5.2.3, final two sentences). Guidelines D-VI, 7.2.1 also sets out the procedure whereby the requirements of Rule 82(1) EPC may be most conveniently met in a purely written procedure. The subsequent procedure for issuing an interlocutory decision according to Article 101(3)(a) and 106(2) EPC is set out in Guidelines D-VI, 7.2.2 (March 2022 ed.
    • Note, failure to pay the fee under Rule 82 probably leads to revocation of the patent in its entirity.
  • The Board remits and reimburses the appeal fee. " Faced with a procedurally incorrect decision to revoke the patent in its entirety, the proprietor had no choice but to file an appeal if it wished to preserve any rights in the matter whatsoever, even to the granted and unopposed claims. Under these circumstances, the Board deems it equitable to reimburse the appeal fee."

  • The Board remits for further protection, as I understand it because the description has to be adapted.

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

11 August 2022

T 0682/22 - Interlocutory revision and Art. 12 RPBA

Key points

  •  This is an appeal against a refusal decision. The applicant files amended claims as sole request in appeal. The amendments make the claim undoubtedly novel over a prior right under Art. 54(3) EPC.
  • The Board is of the view that interlocutory revision should have been granted.
  • " Under Article 109(1) EPC, if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. In the context of Article 109(1) EPC, an appeal is to be considered "well founded" if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision (cf. T 691/18, Reasons 2). " 
  • The Board then adds a remark that I consider to be a major clarification: " The board, to avoid misunderstandings, also notes that in the context of Article 109(1) EPC, an "admissible appeal" is not to be conflated with any admittance considerations whatsoever as regards newly filed claim requests." 
    • Hence, admissibility under Article 12 RPBA plays no rule for interlocutory revision! (it seems).
    • Strictly speaking, admissibility of the amended claims could play a role under the "well-founded" prong of the test (as is does for appeal), but I think the Board would then have made that clear. 
  • " It is established case law of the Boards of Appeal that other objections which arise in the current request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC (cf. T 691/18, Reasons 2, citing T 139/87, and Reasons 4; T 1060/13, Reasons 4.1). Thus, even if the amendments raise "new" objections not previously discussed, interlocutory revision must be allowed since the main purpose of this legal instrument is to shorten the appeal proceedings to the benefit of procedural expediency and economy and to avoid unnecessary workload for the Boards of Appeal in the interest of both the appellant and the EPO (see e.g. T 1060/13, Reasons 4.1)." 
  • " Nonetheless, some passages of those Guidelines are not consistent with those conclusions. [The Board] considers it appropriate to point out that there are (still) some significant inconsistencies between the current Guidelines and the established case law as to the interpretation of Article 109(1) EPC. More specifically, according to those Guidelines (see e.g. chapter E-XII, section 7.4.2, 6th paragraph), "[i]f amendments made to the independent claims clearly do not meet the requirements of Art. 123(2), interlocutory revision is not granted, but the division sends the file to the boards of appeal. If there are doubts as to whether the amendments meet the requirements of Art. 123(2) or the amendments clearly meet the requirements of Art. 123(2), the division checks whether the amended claims overcome the ground(s) for refusal"." 
  • " Moreover, in arriving at a decision on granting interlocutory revision, according to those Guidelines (cf. E-XII, section 7.4.2, 5th paragraph), the examiner is supposed to take into account all the grounds mentioned in the original decision, including the main or supporting arguments already raised in previous objections to patentability to which the applicant has had an opportunity to respond and to which reference is made in the grounds of refusal (e.g. objections mentioned in previous communications, during personal consultation or at oral proceedings). Conversely, [*] on the basis of the established case law, interlocutory revision must be granted if the amendments clearly overcome the grounds for refusal, even if further new objections arise, i.e. irrespective of whether new objections under Article 123(2) EPC [arise ?] or whether previous objections referenced in the appealed decision were raised by the first-instance department." 
    • * = perhaps to be understood as "The Board, however, is of the opinion that on the basis of the established case law, interlocutory revision" 
    • The part in italics may pertain to the remark in the refusal decision that: "It is also underlined that the novelty objections based on document D2 is abandoned, since D2 seems not to disclosed [sic] the sending from MeNB to SeNB of the CSG status."
  • " the present board does not follow the conclusions drawn in case T 2445/11. The fact that the first-instance proceedings must be "repeated" is a consequence of the very fact that the examining division decided to refuse an application on specific grounds - and not on others - and that these specific grounds are overcome with the appeal. In such a situation and in line with the established case law, Article 109(1) EPC obliges the examining division to rectify its decision and continue examination of the application." 
  • " 2.4.5 Hence, the established case law (see point 2.4.2 above) and the current Guidelines are inconsistent with each other."
  • " As to the present case, it is apparent to the board that, in view of the statements made by the examining division (cf. point 2.2.2 above), the addition of at least feature (d) (taken from former claims 5 and 18) to the independent claims clearly overcomes all the objections raised in the appealed decision." 
    • The Board indeed does not consider the admissibility of the amended claims under, say, Art. 12(6) RPBA. Possibly the Board is of the view that Art.12 RPBA is to be considered under Art.109. That would be quite an interesting development because then you coud get amendments "in" with the Statement of grounds that are actually inadmissible under Art.12 RPBA.
  • As a comment, this may be quite an important development for the practice of appeals against refusal decisions, especially where the main request is amended by adding a feature to address novelty or inventive step objections. 
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

10 August 2022

T 0267/18 - The term therapeutic agent is unclear

Key points

  • The present decision deals with clarity of the term 'therapeutic agent', but first provides a useful summary of the rules for admissibility of amended claims filed during oral proceedings before the OD.
  •  " Auxiliary Request 1 was filed and admitted during the oral proceedings in Opposition (see decision under appeal item 3.3.1). The amendments required no undue evaluation and complied with the requirements of Rule 80 EPC. Since the opposition division departed from its provisional opinion set out in the annex to the summons and finding on the novelty of the main request during the oral proceedings and concluded that the patent could not be maintained as granted, the filing of an auxiliary request, which intended to overcome the novelty objection, seemed justified as the subject of the proceedings had surprisingly changed for the patentee at a late stage of the proceedings." 
  • " In principle, a decision taken by a department of first instance in the exercise of its discretion may be overruled by a Board of Appeal only if it is concluded that the department exercised its discretion in accordance with the wrong principles, without taking the right principles into account or in an arbitrarily or unreasonable way, thereby exceeding the proper limits of its discretion (see Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, in the following "Case Law", V.A.3.5.1.b), and in particular decision G 7/93, OJ EPO 1994, 775, reasons 2.6)." 
  • "  In exercising its discretion, the division had first to consider the reasons for filing the request at such a late stage in the proceedings, the allowability of the late-filed amendments, on a prima facie basis, and whether the parties and the opposition division could reasonably be expected to familiarise themselves with the proposed amendments in the time available. Since the amendments introduced in claim 1 of the auxiliary request 1 were filed in reaction to a change of the opposition division's opinion regarding novelty, were intended to overcome a novelty objection, did not require any further extensive assessment for both the opposition division and the opponent, and were "prima facie" allowable, they were admitted." 
    • italics added. A pertinent question may be whether "the time available" is simply the time scheduled for the oral proceedings before the opposition division or something else.
  • " Hence the board fails to see why the opposition division had exercised its discretion according to the wrong principles or in an unreasonable way." 
  • " For this reason, it will not overrule the way in which the first instance has exercised its discretion. Furthermore, since the auxiliary request 1 was admitted by the opposition division in the proper exercise of its discretion and was decided upon by the opposition division, the board fails to see a legal basis for disregarding this request (see also Case Law, supra, V.A.3.5.4). It follows that since the aim of appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), auxiliary request 1, the only request now on file, forms part of the appeal proceedings." 
    • The duty of the Board to review decisions to admit a case amendment was also acknowledged in T 0960/15.
  • However, the amendment is found to be unclear. " Since the term "therapeutic agent" is open to interpretation or ambiguous, claim 1 lacks clarity within the meaning of Article 84 EPC."
  • " Although a skilled person is able in most cases to decide whether a certain amount of a specifically defined product has a therapeutic effect or not (see decision T 151/01 of 9 February 2006, reasons 2.1), the "therapeutic agent" used in claim 1 defines far more than a specific class of compounds in a specific quantity having a therapeutic effect for a disease. It defines any known or yet unknown biologically active compound capable of treating or alleviating at least one disease state or condition. It is not limited to agents that are approved by a competent regulatory authority and/or are on a publicly available list of therapeutics. Hence, the respondent's argument that the skilled person would be able to determine from a list of approved therapeutic products whether any agent is a therapeutic agent or not, is not decisive in resolving the present clarity issue." 

  •  The claim is directed to a delivery vehicle for a medicament, as I understand it, and reads: "1. A fully intact eubacterial minicell derived from a eubacterial parent cell, wherein the minicell comprises biologically active compound which is a therapeutic agent and displays an antibody or antibody derivative directed to a surface antigen of a cell for cell- or tissue-specific targeting of said eubacterial minicell, wherein the biologically active compound and the antibody or antibody derivative are exogenous to the parent cell and distinct from each other."


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

9 August 2022

J 8/20 - Invention by AI

Key points

  • An application was refused because the applicant, a natural person, wished to designate an Artificial Intelligence engine as the inventor. The applicant appeals in this case, which is known as the "DABUS" case. As an auxiliary request, "an amended designation of the inventor (EPO Form 1002) [was filed] stating that no person was identified as inventor as "the invention was conceived autonomously by DABUS", and that the appellant had derived the right to the European patent "by virtue of being the owner and creator of DABUS"."
  • The Legal Board: "According to Article 81 EPC "[t]he European patent application shall designate the inventor" (first sentence); where the applicant is not the inventor or is not the sole inventor "[t]he designation shall contain a statement indicating the origin of the right to the European patent" (second sentence)."
  • "Article 81, second sentence, EPC does not require a generic explanation as to why an applicant, who is not the inventor, is entitled to file a European patent application. The provision is more specific: it refers to the "origin of the right to the European patent". In this way, by its very wording, Article 81 EPC establishes a link to Article 60 EPC, where the right to a European patent is mentioned and provided for."
  • "Under Article 60(1), first sentence, EPC, "[t]he right to a European patent shall belong to the inventor or his successor in title"."
  • "The main request is not allowable because the designation of the inventor does not comply with Article 81, first sentence, EPC. Under the EPC the designated inventor has to be a person with legal capacity. "
    • As a comment, the Legal Board refers to "a person with legal capacity", but this phrase perhaps does not imply an additional requirement. I would expect that any human can be designated as the inventor without an additional requirement for legal capacity.
    •  The Legal Board adds: "Article 60(1) EPC vests the rights to the European patent in the inventor; thus, it postulates a person with legal capacity."
    • "The purpose of the provisions dealing with the inventor and its designation is primarily to confer and to protect rights of the inventor (J 8/82, Reasons, points 12-13), to facilitate the enforcement of potential compensation claims provided under domestic law, and to identify a legal basis for entitlement to the application (on this see also the EPO President's comments, points 5-9). Designating a machine without legal capacity can serve neither of these purposes."
  • "In summary, the main request does not comply with the EPC, because a machine is not an inventor within the meaning of the EPC. For this reason alone it is not allowable. "
  • Then, somewhat surprisingly: "The auxiliary request relies on the argument that Article 81, first sentence, EPC does not apply where the application does not relate to a human-made invention. The Board agrees with this [argument of the applicant]. " "The provisions concerning the designation were drafted to confer specific rights on the inventor. It is arguable that where no human inventor can be identified, then the ratio legis of Article 81, first sentence, EPC does not apply."
  • The auxiliary request is rejected for failure to comply with Art.81 second sentence, which requires "a statement indicating the origin of the right to the European patent".
  • The Board is of the view that in the auxiliary request, "inventor and applicant differ".
    • The Legal Board does not explain this. Arguably, there is no inventor in the sense of Art. 81 first sentence, and the case of an undefined value and a defined value seems to differ from the normal case of two defined and unequal values. 
  • " According to the statement accompanying the auxiliary request, the appellant has derived the right to the European patent as owner and creator of the machine. This statement does not bring the appellant within the scope of Article 60(1) EPC. Indeed, it does not refer to a legal situation or transaction which would have made him successor in title of an inventor within the meaning of the EPC. For this reason, the auxiliary request does not comply with Article 81, second sentence, EPC in conjunction with Article 60(1) EPC, and is not allowable."
    • The Legal Board explains this no further in this r.4.4.2.
    • However, the Legal Board explained that "Both the concepts of inventor and successor in title [in Art. 60(1) EPC are notions of the EPC; they must be interpreted uniformly and autonomously. While the concept of inventor does not require any support from domestic legislation, the concept of successor in title implies an interaction with national law. Indeed, the EPC has not established a comprehensive, self-sufficient legal order and private law. This does not mean that Article 60(1) EPC constitutes a pure reference to national legislation devoid of any content. "Successor in title" has an ordinary meaning under Article 31(1) of the Vienna Convention on the Law of Treaties (1969) ("VCLT"): it refers to a situation where a pre-existing right goes from one subject (the legal predecessor; see also Article 55(1)(a) EPC) into the sphere of another (the legal successor, Article 60(1) EPC). National law governs the question of whether the transfer is valid or has occurred by operation of a contract, inheritance or other rules of law. Since the EPC is silent on the matter with the exception of employment relationships, a national court seized with the issue will identify the applicable rules according to their domestic conflict of laws-provisions"
  • The Legal Board: "it is arguable that AI-generated inventions too are patentable under Article 52(1) EPC. If national courts were to follow this interpretation, the scope of Article 52(1) EPC and Article 60(1) EPC would not be coextensive: there would be inventions patentable under Article 52(1) EPC, for which no right to a patent is provided under Article 60(1) EPC."
  • " The Board is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law. The EPC, in turn, does not prevent the applicant from providing information in the application which is not relevant for carrying out the invention [but providing information as to the conception of the invention by the AI system DABUS]"
EPO J 8/20 - J 0008/20
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

8 August 2022

T 0755/16 - Late filed objection is late filed

Key points

  •  The Board, in the headnote: " A request not to admit a certain document, this request having been filed for the first time during oral proceedings before the board, may constitute an amendment of the appeal case the admittance of which is governed by Article 13(2) RPBA 2020 "
  • The Board in the decision: " The patent proprietor objected to the admittance of A018 neither in its reply to the grounds of appeal nor in its subsequent letters. The request not to admit A018 thus represented an amendment to the patent proprietor's case." 
    • The word 'may'  in the headnote seems to soften the Board's actual reasoning a bit.
  • The Board follows the trend of e.g. T 0847/20 r.3.1 and T 2619/17, though is the first to put it in a headnote, as far as I know.
  • Treating the objection as a request is perhaps useful, but it is not the case that document A018 is to be admitted automatically if the other party does not request to hold it inadmissible, in my view.  
  • As a comment, case law may in due course require that admissibility objections are timely, specific, and reasoned; without limiting the power of the Boards to hold case amendments inadmissible ex officio. (see here)

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

5 August 2022

R 0009/21 - Effect of refused correction of minutes

Key points

  • The petitioner had requested a correction of the minutes of the oral proceedings before the Board. The Board refused the correction (blog post here). 
  • The Enlarged Board: " It has to be noted that a request for correction of the minutes was refused by the Board. The Enlarged Board has to rely on the minutes as they stand." 
  • The petition is rejected as clearly inadmissible.
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

4 August 2022

T 2776/19 - OD was right to hold request inadmissible

Key points

  • In this opposition appeal, the Board does not admit a request held inadmissible by the OD. The OD held the request inadmissible because it was filed during the oral proceedings and was considered to be late-filed.
  • The Board: " The board is not able to see an undue exercise of discretion in the way the opposition division handled the case. Therefore, following the principle laid down in decision G7/93, point 2.6, and applied, for instance, in T28/10, point 2.1, a principle according to which the exercise of discretion by the first instance should only be overturned by the board in case wrong criteria were applied or the discretion was exercised unreasonably, the board upholds the opposition division's decision and does not admit the seventh auxiliary request into the proceedings " 
  • The patentee argued that the OD's decision was incorrect because "the Opposition Division has not examined whether these amendments are prima facie suited to overcome the objections" and |" Moreover, "in case the opinion [of the opposition division] changes, the proprietor shall be given the opportunity to react"." 
  • The Board: "Whether the patentee's view is convincing that "clear allowability" is a sufficient criterion for admitting a late-filed claims request into first-instance proceedings can remain an open question. In this case "clear allowability" had been disputed by the opponents raising various objections, including objections of lack of novelty and of inventive step." 
    • In my view, it's unfortunate that there is no clearly established case law on this point.
  • Perhaps more importantly, the Board: " the fact that the opposition division changes its view on certain technical aspects between its preliminary opinion provided in the communication annexed to the summons to oral proceedings and its opinion formed during the debate taking place during the oral proceedings, so that the opposition division's view becomes less favourable to the patentee, does not mean that the patentee automatically has the right to file a new claims request during oral proceedings. Indeed, since the objections raised by the opponents and the documentary evidence on which these objections were based, remained essentially unchanged since the beginning of the opposition proceedings, the change of view of the opposition division did not correspond to an unforeseeable or unknown situation for the patentee." 

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