22 May 2024

T 1220/21 - A tutorial on Art. 12(3) RPBA

Key points

  • A carry-over auxiliary request [*] was re-submitted with the reply of the proprietor/respondent. The basis for the amendments was indicated in a marked-up copy of the claims. The Board, in the end, considers this insufficient because references were made to paragraph numbers.  "In fact, the description as originally filed does not even include numbered paragraphs, so the reference to "[SP [0056]]" (probably also the reference to claim 5) is either wrong or refers to the patent as granted rather to the application as filed".
    • * =  i.e. an auxiliary request that is lower ranking that the claim request that was held to be allowable by the OD./
  • The Board first confirms established case law that requests that benefit from the unless clause of Art. 12(4)(s.1) RPBA must be substantiated in appeal under Art.12(3), and adds that this involves indicating the basis for the amendments by analogous application of Art. 12(4)(s.4).
  • "According to Article 12(3) and (5) RPBA 2020, a lack of or an insufficient substantiation of an amended request may lead to the non-admittance of this request. This does however not imply that the request has not been validly filed" (note that Art. 12(5) indeed mentions this discretion).
  • "The admittance of an amended request which is not expressly substantiated pursuant to Article 12(3) RPBA 2020 is at the discretion of the Board under Article 12(5) RPBA, even if the amendments are self-explanatory". The reason is that "an implicit argument does not meet the requirement that the party should specify expressly the arguments relied on (T 2598/12, reasons 1.10)" Art.12(3) requires a substantiation and requires parties to specify expressly the arguments relied on, which is not complied with by an implicit argument. The Board adds that the self-explanatory nature of the amendments will be a factor to consider when deciding on whether to admit the claim request.
    • I'm unsure about this reasoning. Any appeal case relies on a large number of technical/scientific arguments/facts which are implicit but evident to the skilled person as common general knowledge. Article 12(3) can not be interpreted to require that self-evident arguments/facts are spelled out in the appeal submissions. 
  • "The substantiation of an amended request under Article 12(3) RPBA 2020 includes the primary duty of the proprietor to indicate the basis for the amendments in the application as originally filed, even if no objection under Article 123(2) EPC has been previously raised" (the possibility of previously raised objections applies to carry over requests).
  • The Board is not in favour of annexes. "Information that can only be found in attached documents, without an explicit reference and explanation by the party, cannot be regarded as sufficient substantiation pursuant to Article 12(3) RPBA 2020".
  • Turning to substantiation of amended claims in general: "(b) If a claim request is intended to overcome novelty or inventive step objections, the proprietor should at least identify the relevant documents and the features which distinguish the claimed subject-matter therefrom (see T 1659/20, reasons 2.1). According to some Boards, where a claim request is filed to overcome an objection under Article 56 EPC, the proprietor should even substantiate it on the basis of a more detailed chain of logic (see for example T 420/14, reasons 9.5).
  • (c) However, the specific extent and detail of the explanations required to substantiate a claim request cannot be determined in an absolute or precise manner. This may depend on the level of detail and accuracy of the objections to be overcome in the impugned decision or as raised by the opponent (see T 1659/20, reasons 2.1). Moreover, the required degree of substantiation is not static, but might depend on how the corresponding objections evolve.'

  • "The purpose of Article 12(3) RPBA 2020 is to ensure that the relevant submissions are present in the proceedings as early as possible to enable the Board and the other party(ies) to start working on the case on the basis of the parties' complete submissions (Case Law of the Boards of Appeal, 10th edition, V.A.4.3.5 a)) without being forced to speculate on the intentions of the other parties. The extent to which a lack of or an incomplete substantiation runs counter to this objective is a factor that may be taken into account when exercising the discretion under Article 12(5) RPBA 2020 (T 1659/20, reasons 2.1). This includes addressing the question of whether the amendments and the chain of logic underlying the claim requests are self-explanatory."

  • I recommend reading the entire decision.

  • The headnote seems to add a few points that can not be found (literally) in the reasoning itself.

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

20 May 2024

T 0983/20 - Admissibility and admissibility

Key points

  • This post is kind of at the EQE level, but still illustrative.
  • The OD rejected the opposition. The opponent appeals.
  • "In the contested decision, the opposition division considered the solution proposed by claim 1 as granted to involve an inventive step. In section 2.2 of the reasons for the decision the opposition division addressed the opponent's objection of obviousness based on a combination of D1 and  D2. The opposition division summarised the opponent's arguments and set out two reasons why they were not found convincing".
  • " In the statement of grounds of appeal the appellant (opponent) requested that the decision under appeal be set aside and that the patent be revoked in its entirety. They submitted that the subject-matter of all of the claims 1 to 7 of the patent lacked an inventive step over a combination of D1 and D2."
  • "With further submissions filed after the statement of grounds of appeal, the appellant presented further arguments regarding the objection of lack of inventive step over documents D1 and D2. The appellant also presented a new objection of lack of novelty under Article 54(3) EPC over [D3, ] a European patent application which had not previously been cited."
  • The Board considers the appeal to be inadmissible under R.99(2). 
  •  "the Board concurs with the respondents that the statement of grounds of appeal does not address the reasons given in the contested decision as to why the subject-matter of claim 1 is not rendered obvious by the combination of document D1 and document D2."
  • "The statement of grounds of appeal to a large extent merely repeats the submissions that were made in the letter of 10 October 2019 prior to the oral proceedings before the opposition division. The statement of grounds of appeal does not address or deal with the reasons set out in the penultimate paragraph of section 2.2 of the reasons for the decision and does not enable the board to understand immediately why they should be incorrect."
  • The appeal is rejected as inadmissible.
  • The Board does not arrive at the new attacks based on D3. 
  • The decision illustrates that admissibility under Rule 99(2) is not a discretionary decision and is "all or nothing". Admissibility under Rule 99(2) and under Art. 12, RPBA should not be conflated. 

EPO 
The link to the decision is provided after the jump. 

17 May 2024

T 1252/20 - A solution for forming a blockage in a blood vessel

Key points

  • Claim 1 is directed to " A composition for use in reducing ... cancerous cells in a subject by forming at least a partial blockage, ... in a blood vessel to deprive a tumor in the subject of blood supply, ...  the composition comprising: a solution comprising an amphiphilic peptide in an effective amount and in an effective concentration to form a hydrogel under physiological conditions to allow at least a partial blockage of the biological vessel to effect embolization or cell necrosis therein, ..."
  • The question is whether this is a valid second medical use claim. 
  • " In its decision the Examining Division came to the conclusion that the peptide solutions defined in claim 1 of the applicant's main request did not qualify as "substance or composition" in the sense of Article 54(5) EPC, their mode of action being purely mechanical. The Examining Division referred in particular to decision T 1758/15 to support this view. " 
  • " The Board, however, is convinced that the peptide solutions defined in the claim do qualify as "substance or composition" in the sense of Article 54(5) EPC, and that thus the claimed subject-matter is novel over D1 and D2 due to the specific use defined therein. This will be reasoned in the following." 
  • "  The question of what can be considered a "substance or composition" in the sense of Articles 54(4) and (5) EPC regularly emerges in cases before the Boards of Appeal. From the analysis of Articles 53(c) and 54(4) and (5) EPC as explained above it follows that not every object can be read on this definition, although of course every object, also a medical device, is in the end made up of substances and/or compositions. The decision G 5/83 which established the patentability of second medical indications and in fact served as the basis for Article 54(5) EPC (see T 1758/15, Reasons 5.2.5) also emphasised that the application of the special approach to novelty through the intended use is strictly limited to claims that are directed at substances or compositions intended for use in methods stipulated by Article 52(4) EPC 1973, corresponding to Article 53(c) EPC (G 5/83, Reasons 21, last sentence)." 
  • " [Established] case law imposes restrictions to what may fall under the definition of "substance or composition" in the sense of Article 54(5) EPC based on its mode of action. Whereas the materials underlying these cases, collagen fillers, alginates or bone glue, would, in everyday language, be seen as substances or compositions, they were not considered "substances or compositions" in the sense of Article 54(5) EPC since once inside the body they acted as a device." 
  • " [The Board] is convinced that the peptide solutions defined in the claim must be considered a "substance or composition" in the sense of Article 54(5) EPC already for more fundamental reasons. In the following, for reasons of brevity, also where only "substance" is mentioned, it is understood that a "substance or composition" within the meaning of Article 54(5) EPC is meant."
    • I recommend reading the entire decision.  
  • " the exceptional approach to novelty of Article 54(5) EPC (and equally of Article 54(4) EPC) is not only applicable in case of therapeutic treatments, but also for treatments by surgery and for diagnostic methods. Decision G 5/83 addresses exclusively a therapy where a medicament is administered and its active agent achieves some therapeutic effect, such as treating an illness. The claim category endorsed by G 5/83 was also explicitly directed at the "use for manufacture of a medicament". However, with the adoption of the EPC 2000 it became clear that the novelty exception now generally encompassed all uses of a substance falling under Article 53(c) EPC, e. g. also surgical treatments and diagnostic methods, meaning that the the scope of Article 54(5) EPC is broader (G 2/08, Reasons 6.5). This already speaks against a too narrow interpretation of "substance or composition", possibly limiting it to such uses where the mode of action is exclusively or at least predominantly chemical. In particular, the use of a substance in a surgical or diagnostic method may possibly involve various mechanisms of action which may not immediately appear comparable to a classical "chemical" reaction triggered by a medicament." 
  • " There is no legal basis for the mode of action as a criterion for qualifying a material or object as a substance or composition under Article 54(5) EPC. " 
  • In addition to the lack of a legal basis, the use of the mode of action as the decisive criterion seems problematic for several other reasons. First of all, the material acting inside the body may not be the same than the material the claim is directed to. The material defined in the claim and the material acting inside the body may differ in composition or in some other relevant property. This is clearly so in the present case. The claim requires the presence of a peptide solution. Already for this reason the claim is not directed to any particulate or spheric form of a hydrogel formed from the peptide solution inside the body. The question to be asked is whether the peptide solution defined in the claim is a "substance or composition". This question is to be decided irrespective of whether any solidified macrostructure formed from the substance, upon application in a specific way, can also be considered a substance or composition, or should rather be seen as a device. In other cases even the chemical structure of the substance may not remain the same during the therapeutic use. The Board notes that there are classical drugs which are administered as inactive prodrugs, the active species only being formed in the body by metabolic processes. However, second medical use claims under Article 54(4) and (5) EPC are generally directed to the administered substance. Since it is this substance which is used in a method excluded under Article 53(c) EPC, such a claim drafting is entirely in line with Articles 54(4) and (5) EPC."
  • "The Board does not overlook the fact that distinguishing devices from substances for the purposes of Article 54(5) EPC is indeed required, and this article should not be used to circumvent the usual assessment of novelty of devices. A pacemaker or a surgical scalpel made of a particular stainless steel alloy do not qualify as a "substance or composition", even if they are claimed for use in an arguably novel therapeutic or surgical method. However, there is no apparent reason to disqualify a solution of a peptide, i. e. a shapeless liquid defined without any device-like features, from the scope of Article 54(5) EPC."
EPO 
The link to the decision is provided after the jump, as well as (an extract of) the decision text.

15 May 2024

T 0956/21 - Is one way of preparing a product enough?

Key points

  • Claim 1 is directed to a "Coated cutting tool comprising a substrate coated with a coating". The coating has some properties, in particular a specific texture.
  • "the skilled person has to know how to choose the appropriate deposition conditions to obtain a cutting tool insert comprising an alpha-Al2O3 layer and a MTCVD TiCN layer as required by claim 1."
  • "The examples of the patent describe a very detailed manufacturing method. However, this exemplified method encompasses a lot of process steps and settings (such as a "CO ramp") relating to the production of non-claimed details (such as a bonding layer), these process steps being non-essential in regard to the manufacture of a cutting tool insert according to claim 1 but still having have an influence on the texture as argued by the appellant"
  •  "The experimental data presented in Table 2 of D7 raised serious doubts as to whether the skilled person could rework the invention over the whole scope of protection based on the general disclosure of the patent specification while taking into account the examples of the patent."
  •  "The appellant [proprietor] accordingly argues that the skilled person could obtain coated tool inserts according to claim 1 by following the specific examples of the patent, since the examples would appear to describe a detailed manufacturing process."
  • "In the present case, the appellant's arguments with regard to the experiments in D7 and D50 confirm that any minor deviation from the very detailed and very specific method described in the examples of the patent may be expected to result in failure to obtain the required texture of the alpha-Al2O3 layer even if these specific method steps relate to the manufacture of a non-essential bonding layer which is not required according to claim 1."
  • "the patent does not provide any teaching which might guide the skilled person to obtain coated cutting tool inserts according to claim 1 in the event of deviation from the very specific exemplary manufacturing method described in the example."
  • As a comment, according to T 595/95, "A product which can be envisaged as such with all the characteristics determining its identity including its properties in use, i.e. an otherwise obvious entity, may become non-obvious and claimable as such, if there is no known way or applicable (analogy) method in the art to make it and the claimed methods for its preparation are the first to achieve this and do so in an inventive manner". Under T 595/95, providing one way of preparing the desirable product is (as far as I know) regularly considered to be sufficient to support a product claim. 
EPO 
The link to the decision is provided after the jump, as well as (an extract of) the decision text.


13 May 2024

T 0614/21 - Could have presented in first instance proceedings (?)

Key points

  • The OD maintained the patent as granted.
  • The Board finds the claims as granted to be not new.
  • The auxiliary requests were filed with the Statement of grounds and were substantiated.
  • The Board does not admit them.
  • "The board notes that the novelty analysis of claim 1 of the main request already required  a discussion during the oral proceedings before the board on how to interpret - the verb "to accept" in accordance with feature (d) and - the expressions "on behalf of" and "whilst identifying as" according to features (e) and (g). The amendments underlying claim 1 of auxiliary requests 1 to 7 would further necessitate an interpretation of several new expressions for the first time. The board refers in particular to - the expressions like "intercept", "masquerade" and "terminates" as per features (i), (k) and (l), or, similarly, "intercepting", "masquerading" and "terminating" as per features (j) and (m) and to - the term "believes" in accordance with features (l) and (m)."
    • As a comment, it seems to me that any added feature may involve new expressions and hence claim interpretation. I do not see how a need for claim interpretation could be a reason for holding the amended claims inadmissible, in particular if there are no clarity objections.
    • I am also not sure if the Board here is perhaps holding the fact that the proprietor made use of its right under Article 116 EPC to defend the main request in oral proceedings against the proprietor.
  • "It is also worth noting that the appellant [opponent] indicated already in its statement setting out the grounds of appeal that the term "masquerading" did not have "a well recognised meaning in the field". It raised an objection as to insufficiency of disclosure under Article 100(b) in combination with Article 83 EPC in this respect. The board therefore considers that admitting auxiliary requests 1 to 7 into the proceedings would be detrimental to procedural economy."
    • The Board does not indicate if the opponent's objections made sense prima facie. The mere fact that the opponent had objections is stated as ground.
  • The patent is revoked.
  • The Board does not explicitly consider the two other factors of Art. 12(4) besides procedural economy. 
  • The issues about new allegations under Art. 83 seem to pertain to Art. 13(1)(s.4) (and, for completeness' sake,  the phrase "does not give rise to new objections" in Art. 13(1) logically means (in my opinion) (prima facie) valid objections, not the mere fact that an opponent comes up with some allegations.

  • The Board, "The respondent [proprietor] explained that there was no need to file any auxiliary requests during the opposition proceedings because the opposition division rejected the opposition. The board, however, considers that a party prevailing in opposition proceedings is not relieved from its duty to timely prepare its case for the event of subsequent appeal proceedings. Indeed, each party should take into account that either the opposition division or the board of appeal may depart from the preliminary view expressed by the opposition division and adopt an opposing view. The patent proprietor should prepare the relevant "fallback positions" for that eventuality. There is however no right to present on appeal "fallback positions" that could have been presented already in the first-instance proceedings. Anything else would be contrary to the primary purpose of the appeal proceedings as laid down in Article 12(2) RPBA 2020, i.e. the judicial review of the decision under appeal."
  • As a comment, the Board does not invoke Article 12(6) RPBA. The status of the remark is, therefore, unclear to me.  Moreover, the Board uses "could" have been presented already in the first-instance proceedings" but Article 12(6) uses "should". 
  • As a further comment, the filing of the auxiliary requests already before the OD would not have assisted the Board with the judicial review because the OD would not have decided on them.
 
EPO 
The link to the decision is provided after the jump, as well as (an extract of) the decision text.

10 May 2024

T 0762/20 - Is email a valid means of communication?

Key points

  •  "point 9 of the contested decision states the following:

    "An email was sent to the applicant on 08-10-2019, in which the first examiner communicated the feature mapping of the inventive step objection under Article 56 EPC. The Article 56 EPC objection was based on document D5 (XP010914819, 'Towards Protecting Sensitive Files in a Compromised System') a further document found by the examining division which appeared to be a closer prior art document than D4."

  • "However, the electronic file, which is the sole official file relating to the European patent application (Rule 147(1) EPC) and the record of the first-instance proceedings available for file inspection and used by the board in its judicial review, does not contain the email sent to the appellant on 8 October 2019."

  •  "it seems that the email apparently sent on 8 October 2019 was the only occasion on which the examining division may have commented on document D5 and could have given a clear indication that this document would be relevant for the assessment of inventive step before issuing the written decision. The board thus agrees with the appellant's objections (see point IV. above) to the extent that the appellant was not officially informed of an inventive-step objection based on document D5 by the EPO before the notification of the contested decision. Moreover, in the circumstances of the current case, the missing email is the essential piece of evidence for reviewing whether the appellant's right to be heard under Article 113(1) EPC was respected. Since this email is not available to the board, the board cannot review the contested decision in a judicial manner (Article 12(2) RPBA 2020). "

  • I wonder whether, had the email been available in the electronic file, it would have counted as a valid means of communication to safeguard the applicant's right to be heard.  Possible the present decision should not be interpreted in this way because the Board was addressing only the case at hand where it was not available in the file.

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

8 May 2024

T 0602/21- Admitting a request cancelling independent claims

Key points

  • "It is further noted that in the present case, the main request allowed by the opposition division contained several independent claims, namely claims 1, 2, 3, 4, 5, 6, 9 and 10. Under these circumstances, it would have been the duty of the appellant [opponent] to duly substantiate already in their statement of grounds of appeal why they considered that the decision of the opposition division was wrong that each of these independent claims met the requirements of the EPC. In that regard, admitting the appellant's objections of lack of inventive step raised against claims 1, 2 and 4 of auxiliary request 3 (which correspond to claims 1, 2 and 6 of the main request) would go against the stipulations of Article 12(3) RPBA that the appellant should present their complete case in the statement of grounds of appeal."
  • The Board admits the auxiliary request limiting to three of the independent claims that was filed after the notification of the summons, i.e. under Art. 13(2) and does not admit the inventive step attacks presented in reply to it during the oral proceedings.
  • The Board finds the auxiliary request to be allowable. 
EPO 
The link to the decision is provided after the jump, as well as (an extract of) the decision text.