T 0239/20 - (II) Review of findings of fact (IV)

Key points

• Board 3.2.01 reviews the OD's finding, that the alleged public prior use was proven, for errors in the reasoning. The Board seems to follow its earlier decision T1418/17. See also T 1604/16 of Board 3.2.02.
• The Board: "The reasoning of the Opposition Division in this respect is free of any error as regards the underlying facts and the evaluation of the evidence is also free of any contradiction."
• "Bearing in mind the principle of free evaluation of evidence [...] the Board concludes that there is no reason to overturn the evaluation of the evidence made by the Opposition Division in its decision in this respect."
• The Board hence seems to apply a deferential standard of review, as opposed to a de novo review. As a comment, this standard may possibly follow from the nature of appeal proceedings (i.e. to review 'in a judicial manner' the appealed decision including any findings of fact therein, Art. 12(2) RPBA). 

EPO 

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

T 0239/20 - (I) Complete appeal case

Key points

• The OD finds the operative claim to be novel over the asserted public prior use by two features of the claim. The opponent addresses those features in its Statement of grounds.
• " the patent proprietor argued [...] that the appeal case of the opponent was not complete with respect to the lack of novelty of the subject-matter of claim 1 in view of Triumph and had to be held as inadmissible. In particular, the statement of grounds of appeal of the opponent addressed only the features of claim 1 which the Opposition Division found as not being disclosed by Triumph. However, for an appeal to be successful, it was not sufficient to identify where the department of first instance incurred an error of judgement. The appellant had also in line with Article 12(3) RPBA 2020 to set out the facts, evidence and arguments why the decision under appeal must be reversed. Accordingly, the opponent had also to specify where all remaining features of claim 1 were disclosed by the child car seat Triumph in order for the outcome of the decision to be reversed."  (according to patentee)
• "Article 12(3) RPBA 2020 stipulates that the statement of grounds of appeal and the reply shall contain a party's complete appeal case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on" 
• The Board: "The opponent in the statement of grounds of appeal contested the decision of the Opposition Division in this regard and indicated the reasons why the findings of the Opposition Division were not correct and the decision under appeal should be amended (see points [100] to [170] of the statement of grounds of appeal of the opponent). Consequently, the statement of grounds of appeal of the opponent fulfills the requirements set out under [...] Article 12(3) RPBA 2020, since the Opposition Division did not explicitly reason which other features the car seat Triumph did not disclose. Accordingly, the novelty objection over Triumph is part of the contested decision and also part of the current appeal proceedings because the opponent challenges the decision in that respect." 
• " If the patent proprietor further were to contest in view of the statement of grounds of appeal of the opponent that other features of claim 1 than those identified in the impugned decision were not disclosed by Triumph, these alleged facts belong to the patent proprietor's complete appeal case and should accordingly be expressly specified in the reply to the statement of grounds of appeal of the opponent." 
• For what seems to be the opposite approach, see T 2253/16, r.2.5.4 where the opponent/appellant had only engaged with the distinguishing feature identified by the opposition division. The attack was inadmissible under Art. 12(3) RPBA 2020. "Es fehlt vielmehr eine Analyse des Dokuments D4, aus der hervorgeht, wo die Beschwerdeführerin welche Anspruchsmerkmale offenbart sieht." (i.e. a complete analysis of how D4 taught all features of the claim was required by the Board in that case.)
  
• As a comment, in the present decision T 0239/20, the OD only identified the distinguishing features in the decision (here, p. 17) and did not spell out in the decision how the device of the public prior use disclosed the other features of the claim. 

EPO 

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

T 0732/21 - The purpose of the RPBA (and legal peace)

Key points

•  Board 3.4.01 recalls the purpose of the RPBA: "the purpose of [Articles 12 and 13 RPBA] 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".
• The Board then admits the amended claims because " in the present case, consideration of this particular request does not impair these basic rights of either party".
• The Board refers to T 339/19 of Board 3.3.06.
• In that decision, the Board recalled that according to T 855/96, "it serves to ensure legal peace [Rechtsfrieden] and the acceptance of the decisions of the Boards of Appeal and recognizes their importance as the only judicial instance that decides on the patentability of the patent with effect for all designated Contracting States when these decisions take into account the entire matter submitted in the appeal proceedings. A document submitted in the appeal proceedings should therefore be considered if it is not entirely irrelevant and its consideration is procedurally justifiable" (fresh machine translation of T 855/96).
• Obviously, the key part in this quote is "procedurally justifiable". 

EPO 

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

Visser's Annotated EPC - December supplement and update

Key points

• The yearly PDF supplement to update the 2022 edition of the paper book for the EQE 2023, is now available here and also here: https://www.wolterskluwer.com/en/solutions/kluweriplaw/eqe).
• I've also made a version of the supplement that you can easily print as an A5 folded booklet and fit in the back of the book; you can find it here: https://drive.google.com/file/d/1hHsJBAnGoPEqiwAAS6loCRuLFBvwazp-/view?usp=share_link 
  
  
• The online version of Visser's Annotated EPC at Kluwer IP Law is now updated (legal status date 1 November 2022). 

T 0465/19 - A non-obvious alternative solution

Key points

•  " The [opponent] cited the decision T 939/92 for the present situation. The appellant argues that, since all cited documents relate to compounds useful in optoelectronic devices and show the structural elements of the claimed compounds the fact that the claimed ones also have such properties was by no means particular or surprising." 
• " It is correct that T 939/92 held the provision of compounds without any particular properties, just for the enrichment of chemistry, to be routine work of a chemist and thus not to require any inventive activity." 
  
• " However, in the present case the claimed compounds do have useful properties and are not just provided for the enrichment of chemistry. This situation is different to the situation underlying T 939/92. Unlike there, the present compounds need to be suitable for the claimed use. Thus, inventive step may not already be denied for the only reason that the compounds have the same, or similar, properties as the compounds disclosed in the prior art. Alternative solutions for the same technical problem may still be validly claimed, provided that they do not obviously result from the teaching of the prior art." 

EPO 

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

T 0752/17 - No dominant patent could exist

Key points

• This decision was taken at the oral proceedings of 24.03.2021. The written decision was issued 26.10.2022, i.e. more than a year later.
• Note that new Article 15(9) RPBA 2020 introduced the rule that: " (9)(a) Where the Chair announces the decision on the appeal orally in accordance with paragraph 6, the Board shall put the decision in writing and despatch it within three months of the date of the oral proceedings. If the Board is unable to do so, it shall inform the parties when the decision is to be despatched. The President of the Boards of Appeal shall also be informed thereof."
• No communication to the parties about the delay in issuing the written decision is visible in the online file.  Perhaps it was sent to the parties but excluded from the public file e.g. because it contains private information about board members.
• 
  
• " Claim 1 is a second medical use claim in the format of a purpose-restricted product claim pursuant to Article 54(5) EPC, which is directed to an isolated oligonucleotide agent for use in a method of immunotherapy by inducing or stimulating an immune response." 
• Sufficiency of disclosure is at issue.
• The Board, on second medical uses: "According to the established case law of the Boards of Appeal, the mere fact that a claim is broad is not in itself a ground for considering that the requirement of sufficient disclosure in the patent is not met (see, inter alia, decision T 19/90, OJ EPO 1990, 476, point 3.3; and decision T 636/97 of 26 March 1998, point 4.5). "
• "For claims directed to a second medical use, it has been established in the case law that the requirement of sufficient disclosure is usually fulfilled if a person skilled in the art can obtain the therapeutic agent to be applied, and the patent renders it plausible that the therapeutic agent is suitable for the claimed therapeutic application (see decision T 1959/15 of 2 April 2020, point 4.2). Clinical data may not be required, if the patent provides information in the form of experimental tests showing an effect which, for the skilled person, directly and unambiguously reflects the therapeutic application (see decision T 241/95, OJ EPO 2001, 103, point 4.1.2; and decision T 158/96 of 28 October 1998, point 3.5.2)." 
• " it should be noted that the question of whether or not a skilled person is working within the scope of the claim is not related to sufficiency of disclosure, but to the definition of the scope of the claim (see, inter alia, decision T 1811/13 of 8 November 2016). 
• Also the question of whether future inventions may fall under the scope of the claim is immaterial to the assessment of sufficiency of disclosure, because otherwise no dominant patent could exist (see also decision T 292/85, point 3.1.2)." 
• T 292/85: " It follows that the [functional] features [of the claim] may generically embrace the use of unknown or not yet envisaged possibilities, including specific variants which might be provided or invented in the future." 
• I understand the Board's reference to "dominant patents" to be a reference to the principle codified in e.g. Article 31(l) TRIPS agreement ("where such use is authorized to permit the exploitation of a patent (“the second patent”) which cannot be exploited without infringing another patent (“the first patent”)".  

EPO 

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

T 0128/82 - Inventive step of product claims

Key points

• This is a decision from the archives.
• Let's assume a patent with a single claim directed to a single compound X. The claim is a pure compound claim, simply reciting the chemical formula (or IUPAC name), nothing more. The description teaches one possible use of compound X. Let's assume as a catalyst for some chemical reaction A.
• The claim is, however, not limited to that particular use. In fact, the claim gives absolute product protection, also covering other uses. For instance, as a catalyst for another chemical reaction B for which compound X may be a poor catalyst. Can an opponent use this in some way for an inventive step under current EPO case law, e.g. by filing evidence that compound X is not effective as a catalyst for chemical reaction B (assuming that chemical reactions B and A are very different from each other)?
• Decision T 0128/82 appears to indicate that such an attack does not work under the case law of the BoA.
• The decision is about first medical use claims, but that should not distract us now.
• The Board in T0128/82: "the practice of the European Patent Office hitherto has shown that substance and medical preparation claims for therapeutically active compounds not limited to specific indications are allowed, even though as a rule only certain specific activities are stipulated. " 
• So, to rephrase: the practice of the EPO then was [and still is] that product claims for compounds having some medical activity are allowed, these claims not being limited to specific uses, even though, as a rule, only one or few specific medical uses are taught in the description.
• As far as I know, the above statement is still the EPO's practice, and equally in non-medical fields of chemistry. Hence, the practice of the EPO is that product (substance, composition) claims are allowed, these claims affording absolute product protection not limited to a specific use, even though, as a rule, only one or few uses of the product are taught in the description.
• The relevant national German decision is Disiloxan, BGHZ 51, 378 (1969) on p.8, which indicates that the Kongorot decision of 20.03.1889 is to be followed (that decision can be found in Patentblatt 1889, issue 19, page 209, available at the DPMA website here. ).
• Also relevant is T 181/82, about the inventive step of a pure compound claim, which states that "An effect which may be said to be unexpected can be regarded as an indication of inventive step", the effect at issue was obtained when the claimed compounds were used as light stabilisers as was taught in the description.
• In other words, no patentability objection can be raised solely on the ground that a product claim covers any use whereas the description teaches only one use.
• Absolute product protection has been controversial in the past, somewhat recently for genes, and further back in history for chemical compounds in general. See, generally, R. Uhrich, Stoffschutz, 2010, available open access since 2020 under DOI 10.1628/978-3-16-159918-7.  The thesis is quite critical of the current case law on patents for chemical products.

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

T 0073/20 - Obligation to identify under Art. 12(4) RPBA 2020

Key points

•  With about two years delay, we are seeing an uptick in cases about Art. 12(4) RPBA 2020.
• "Article 12(4) RPBA 2020, second sentence establishes the appellant's obligation to identify any amendment to its case and provide reasons for submitting it in the appeal proceedings. " 
• "The appellant failed to fulfil its obligation under Article 12(4) RPBA 2020, second paragraph. It neither identified the amendment to its case nor provided reasons for submitting it in the appeal proceedings. " 
• The case amendment of the patentee was the new argument that " there was a technical prejudice in the prior art against the combination of the teaching of D1 and D2." 
• In particular, " The skilled person would have derived from D1 that it was essential for good MS and fluorescence signals that the group linking the labelling agent to the glycan be an amino group. As the linking group resulting from the method of D2 was a urea, the skilled person would have expected a loss of the MS signal and possibly also of the fluorescence signal when the method was used on the compounds of D1. According to the appellant, this prejudice was based on the skilled person's common general knowledge" 
• The patentee argues that the argument was based on paragraph [0037] of the patent and common general knowledge.
• Note, the Board does not apply the factors specified in Art. 12(4) for balancing the interests of the parties. 
• The Board also applies Art. 12(6)(s.2) RPBA 2020: " Furthermore, no circumstances justify the filing of the new argument in the appeal proceedings. The argument could and should have been filed in the opposition proceedings since the facts on which it relies were known to the appellant from the outset of the opposition proceedings. This is confirmed by paragraph [0037] of the patent, which hints at a relationship between the electron density on amino and urea groups and their corresponding MS signals." 
• " As this submission could not be justified as a legitimate reaction to late developments in the opposition proceedings and created a new situation on appeal, the board exercised its discretion not to admit the new argument under Article 12(4) and (6) RPBA 2020."
• As a comment, Art. 12(6)(s.2) does not clearly specify a discretion of the Board ("the Board shall not admit..."), but in the ultimate legal basis (Art. 114(2) EPC indeed specifies a discretion of the Boards).

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

T 2610/19 - Too many inventive step attacks

Key points

• Credits to T. Schürmann and M. Wachenhausen for highlighting this decision in epi Information 3/2022.
• The Board, in translation: "It is not possible to state in general how many starting points an opposition division has to take into account when examining inventive step. The answer to this question depends on the circumstances of each case, in particular on the distinguishing features of the different starting points proposed."
• "However, it is clear that in practice only a limited number of lines of attack can be examined. An opponent is therefore required to select from the multitude of possible starting points those which, in his opinion, most clearly call into question the patentability of the claimed subject-matter. If the number of attacks exceeds a reasonable level, an opposition division must have some discretion"
• As a comment, it would be useful if the Board had identified the legal basis for this discretion. Article 114(2) EPC  only refers to facts or evidence not submitted "in due time". 
• However, in the present case, the OD's had not correctly exercised this discretion. 
• The opponent had presented two inventive step attacks in the Notice of opposition, one starting from F3 and the other from F5. The OD in the preliminary opinion considered F4 to be the closest prior art.
• During the oral proceedings, the OD had decided that F5 was the closest prior art and had forbidden the opponent to present arguments regarding its attack starting from F3. In the written decision, the attack starting from F5 as well as the attack starting from F3 was considered by the OD." In the case of document F3, [the OD] only took into account the opponents' written submissions. It prevented the opponent from using any document other than document F5 as a starting point for examining inventive step during oral proceedings, relying on the third paragraph of Section G-VII, 5.1 of the Guidelines"
• ""When choosing the F5 as the closest prior art, the chairman of the opposition division pointed out that this choice determines the sole starting point.
• "Since the decision acknowledges the arguments put forward in the written procedure based on F3, the opposition division is of the opinion that the right to be heard of the opponents has not been violated (Article 113(1) EPC)."
• The Board: "the opposition division should have given the opponents the opportunity during the oral proceedings to comment orally on the attack based on document F3 and on the opposition division's preliminary view expressed in the summons."
"In this context, it is noted that the right to be heard under Article 113(1) EPC is not already fulfilled if a party who has requested oral proceedings under Article 116 EPC has only been able to submit comments in writing (see T 1077/06, points 10 and 14 of the reasons for the decision). Under the circumstances, the passage of the Guidelines cited by the opposition division cannot justify denial to the [opponent] to comment at the oral proceedings on inventive step on the basis of document F3. It is also not clear from items 23 and 24 of the minutes that there was any discussion of the relevance of other starting points at all. The opposition division's refusal to hear the opponent on those points before the opposition was rejected, constitutes a violation of the right to be heard"

EPO 

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

T 1214/18 - Disclosure of a pharmaceutical compound

Key points

• Claim 1 is directed to a compound and is based on claim 26 of the application as filed.
• The opponent argues, under Article 123(2), that "formula I in claim 1 as filed comprised an uncountable number of compounds. By contrast, with respect to this formula I, claims 1 and 2 of the main request were limited to the single specific compound cobicistat. "
• According to the opponent:  "This put the respondent [patentee] in the unforeseeable position of arguing that cobicistat had a technical effect over the other compounds disclosed in the application as filed which were in accordance with formula I. However, it was not disclosed that this technical effect was better with cobicistat than with other compounds. This gave the respondent [patentee] an unwarranted advantage."
• The Board:  "This [argument] is not convincing. For claimed subject-matter to meet the requirements of Article 123(2) EPC, it is crucial whether or not it is directly and unambiguously disclosed in the application as filed ("gold standard"). This is the case, see above. Only if subject-matter which is not directly and unambiguously disclosed were to be considered allowable could this lead to an unwarranted advantage for the respondent. Nothing other was decided in decision T 948/02 (point 2.4.1 of the Reasons), on which appellant 2 relied in support of its argument."
• The claim meets Art. 123(2) EPC.
• The Board, under inventive step: "Effects linked to the distinguishing features ... In contrast to [the prior art compound] ritonavir, cobicistat [the claimed compound] has no HIV-1 protease inhibitory activity (D6: table 1; D22: point 2.3.7 on page 24 and paragraph "Antiviral activity" on page 43; patent: paragraph [0511])." D6 and D22 seem post-filed evidence. 
• Plausibility is not discussed in the decision. 

EPO 

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

R 0003/22 - Successful petition for review

Key points

•  This is the 10th successful petition for review. The petition was filed on 30.11.2021, written decision was issued on 29.11.2022.
• The applicant/appellant filed a withdrawal of the appeal on 28.09.2021 and filed a retraction of the withdrawal on 29.09.2021. A notice of closure of the appeal proceedings was issued on 01.10.2021. The appellant then substantiates the request of 29.09.2021 as a request for correction under Rule 139 with a letter of 05.10.2021 and receives a communication from the Registrar on 05.10.2021 stating that the proceedings are terminated. The appellant requested a decision on 15.11.2021 and filed a petition for review on 29.11.2021 against the communication of the Registrar of 05.10.2021. 
• A divisional application was filed on 08.10.2021. 
• The Enlarged Board: "The Enlarged Board of Appeal concurs with the petitioner that it is admissible to file a petition for review against the decision of the Board as communicated by the registrar on 5 October 2021. Determining whether there is a decision depends on the substance of the document content and not its form. The decisive question is whether the document at issue is to be understood by its addressee as a final determination of substantive or procedural issues by the competent organ of the EPO (see T 165/07). 
• "The Enlarged Board interprets the Registrar's communication of 5 October 2021 as a decision in which the Board implicitly decided on the appeal [namely: "The appeal proceedings have come to an end and will not be re-opened"], while not deciding on the request for correction. A ruling of this kind would not normally be considered to be a decision within the meaning of the EPC. Even after such a determination, the proceedings may be resumed at any time if it transpires, for example, that the determination was made in error. However, in order to avoid gaps in legal protection, an exception must apply in the situation where a board of appeal expressly indicates that it considers the appeal proceedings to be closed and refuses to deal with the case further."
• Note that the EBA considers the communication of the Registrar as a decision taken by/on behalf of the Boards. See OJ EPO 2008, Supplement 1, 49: 
• "The request for correction, i.e. the retraction of the withdrawal of the appeal filed after its withdrawal is a relevant request within the meaning of Rule 104(b) EPC for the purposes of Article 112a(2)(d) EPC. According to the case law of the Boards of Appeal on Rule 139 EPC (see Case Law of the Boards of Appeal of the EPO, 10**(th) edition 2022, V.A.7.3.7), the success of such a request cannot be ruled out a priori, and if the request is successful, a decision on the merits of the appeal would be possible."
• "For this reason, the Enlarged Board holds that the Board's refusal to decide on the request for correction under Rule 139 EPC in the present case is a fundamental procedural defect within the meaning of Article 112a(2)(d) EPC [in conjunction with Rule 104(b), "decided on the appeal without deciding on a request relevant to that decision"], and the Enlarged Board holds that the petition is allowable."
• As the petition is allowable and the proceedings before the Board of Appeal must be reopened (Rule 108(3) EPC) the fee for the petition for review is to be reimbursed (Rule 110 EPC).

The successful petitions for review are now: The successful petitions are now: R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13.

 

EPO 

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

T 2269/19 - No review admissibility under Art. 12(4) RPBA 2007

Key points

• "Both appellant [opponent] O3 and respondent [opponent]  O1 relied on document D41 in their respective replies to appellant P's grounds of appeal filed on 4 November 2019. Appellant [proprietor] P contested the admittance of D41 into the appeal proceedings. Following the transitional provisions set out in Article 25(2) RPBA 2020, Article 12(4) RPBA 2007 is applicable. Article 12(4) RPBA 2007 gives the Board discretion not to admit, on appeal, facts and evidence which could have been presented or were not admitted in the opposition proceedings" (and any such submissions not complying with Art. 12(2) RPBA 2007, it may be added). 
• " D41 had already been filed during the first instance proceedings. The opposition division did not take any decision not to admit this document. Hence, D41 is neither a document which could have been presented in the first instance proceedings (i.e. but was not), nor a document which was not admitted in the first instance proceedings. Thus the discretionary power not to admit evidence under Article 12(4) RPBA 2007 does not apply to D41. Accordingly, D41 was taken into account in the appeal proceedings."
• As a comment, this is of course a clear difference with Art. 12(4) RPBA 2020 where the Board would still have discretionary power if the request was filed during the first instance proceedings, but not admissibly filed, i.e. if D41 would have been filed late in the first instance proceedings. 
• As a further comment, this reasoning of the Board seems correct, though there seem to be not many decisions on this particular point. See e.g. T 0882/19 r. 3.4
• Note that the auxiliary request can still be held inadmissible if not substantiated in the initial appeal submissions of the patentee.

EPO 

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

T 3097/19 - On the need to adapt the description

Key points

• In this examination appeal, the Board finds an auxiliary request allowable, but the applicant did not file an adapted description.
• The Board: "The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. In the Board's view, the clarity and conciseness requirements in Article 84 ultimately serve that purpose, but they are not sufficient to ensure it. To mark this distinction, the Board prefers to talk about the scope and extent of protection being "precisely determined" rather than being "clear".
• " under a systematic interpretation of the EPC, the function of the claims, as defined in Article 84 EPC, is only achieved when the potentially conferred scope of protection can be determined precisely. Whe­ther this is the case for a specific patent application (or an amended patent) can only be made with due consideration of the description."
• "if a claim is directed to something which is different than that described to be the invention, then the application for grant is self-contradictory, and it can be questioned for which matter the protection is actually sought. For the scope of protection to be determined precisely, the definition provided by the claims of the matter for which protection is sought must therefore be consistent with the definition of the invention provided by its description"
• "the Board disagrees with the conclusions in T 1989/18, but rather concurs with the conclusions expressed in, especially, T 1024/18 and T 2766/17. It also disagrees with the conclusions of T 2194/19 (catchword), inasmuch as it considers necessary that embodiments said to be "of the invention" must fall within the scope of the claims", i.e. (as I understand it) the present Board considers the phrase "embodiments of the invention" in the description to mean, to the skilled person, "embodiments falling within the scope of the claims".
• The Board acknowledges that  "the often {but incorrectly, see *} expressed requirement that the claims be clear "from the wording of the claims alone" appears to be hardly compatible with the idea {underlying the Boards reasoning} that the patent (application) must be read "as a whole"" (the curly brackets {} indicating my analysis)
• * - "The Board does not agree with a verbatim reading of the former requirement, nor, without further qualification, with the statement of T 454/89 (reasons 4.1 (vii) as cited in T 1989/18 (reasons 4) that "Claims must be clear in themselves when being read with the normal skills including the knowledge about the prior art, but not including any knowledge derived from the descrip­tion of the patent application or the amended patent"."
• "The Board considers that these statements cannot literally be correct, for the reasons given above, and rather concurs with the qualification in the Guidelines for Examination, F-IV, 4.1, according to which "the meaning of the terms of a claim must, as far as possible, be clear for the person skilled in the art from the wording of the claim alone".
• "That, however, the claims should be, as far as possible, clear from their wording alone, is an expression of the desire, in the interest of legal certainty (see G 1/04, reasons 5), that the divergence of post-grant jurisprudence be limited (see also T 1817/14, reasons 7.4 and 7.5)."
• "in the case at hand the way the invention is described in the description is inconsistent with the wording of the claims. As a consequence, the Board is convinced that the scope of protection cannot be determined precisely, due in particular to conflicting statements as to which features constitute the invention (see point 23a) and b)) and to the sweeping statement that new embodiments of the invention can be obtained by combining technical means (see 23 c)). Therefore, in the absence of an adapted description, the requirements of Article 84 EPC are not met."
• The Board, in the headnote: "The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other"

EPO 

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

T 0938/20 - Making use of the 10d period to file 100+ AR's

Key points

• The summons for oral proceedings was dated 07.10.2021.
• On 12.10.2021,  the patentee filed auxiliary requests 25 to 139. The operative main request was filed as auxiliary request 105.
• The Board: " The present request was submitted on 12 October 2021, i.e. shortly before notification of the summons to oral proceedings was deemed to have been delivered (Rule 126 EPC). Therefore Article 13(1) RPBA 2020 applies." 
• " The request is a reply to an objection raised under Article 83 EPC by opponent 2 in their reply to the appeal concerning enablement over the whole scope. This objection was not part of the impugned decision, but was admissibly raised within the meaning of Article 12(4) RPBA 2020 in opponent 2's notice of opposition. 
• " However, it had apparently not been discussed during the oral proceedings before the opposition division, although said objection would equally apply to the then-auxiliary request 4. (...) Therefore in the case in hand it cannot be clearly established whether the objection was indeed maintained as required by Article 12(4) RPBA 2020. In view of this, the board considers that it can be accepted that the objection was re-introduced with opponent 2's reply to the appeal. Although it took some time for the appellant to react, the request is considered a fair reaction to opponent 2's objection independently of the fact that many other requests had been filed. The request could have been filed before the opposition division, but, taking into account the total number of objections raised by the opponents in opposition proceedings, it appears that there is no clear indication that it should have been filed in addition to the numerous requests filed before the opposition division, since the opposition division apparently did not consider this objection critical for the requirements of Article 83 EPC. Therefore there is no reason not to admit it when considering Article 12(6) RPBA 2020" [which also applies under Art. 13(1) RPBA 2020] 
• " The request is not detrimental to procedural economy, but to the contrary in the case at hand helped to streamline the proceedings and led to an allowable request as set out below. ' 
• "  the board notes that "giving rise to new objections" is understood to mean that the appellant has to show that prima facie no valid new objection is recognisable (see Supplementary publication 2, Official Journal 2020, RPBA 2020, Table setting out the amendments to the RPBA and the explanatory remarks). It is not understood to mean that any new objection raised by the opponents - whether justified or not - renders the request inadmissible. In the present case it means in particular with respect to Article 123(2) EPC that a basis for the amendment should be easily recognisable." 
• " As to the question of convergence of the (former) requests, the board accepts that in the case at issue, where an extremely large number of objections of different kinds were raised against all the requests on file, convergence was particularly difficult to achieve and under the given circumstances should not be used as the only criterion for denying admissibility of this request. It may be noted in this context that a series of requests that are drafted in defence against a single objection are expected to converge, but equality of arms would be infringed if the opponent was free to raise a multitude of diverging objections, whereas the patentee was restricted to only one line of defence against all of these. In view of all these considerations, the board exercises its discretion to admit the request into the proceedings.'
• Turning to sufficiency: "It is well-established case law that an objection of insufficient disclosure cannot legitimately be based on an argument that the patent does not enable a skilled person to achieve a technical effect which is not defined in the claim (see T 1311/15, Reasons 5.2). The effect is however of relevance to the question of inventive step (see point 7.5 below)."
• Turning to inventive step: " Therefore the board accepts that there is no convincing evidence from the opponents' side showing that a sheet obtained by the process of D9b has as good weldability as a sheet obtained according to the claimed process. In other words, due to the lack of evidence to the contrary it is accepted that the problem posed is solved. The problem does not need to be redefined in less-ambitious terms."
• In this case, the patent included an example showing certain good weldability values, and a comparative example. The burden of proof was on the opponent to show that the cited prior art D9 had already achieved the same weldability as the claimed invention. 
• " the specific combination of heating conditions and pre-coating for good weldability is not rendered obvious by the prior art. The subject-matter of claim 1 of the main request meets the requirements of Article 56 EPC."

• 
  

EPO 

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

T 2194/19 - On the need (or not) to adapt the description

Key points

• Board 3.5.03 takes position and is of the view that if the description mentions "embodiments" which are outside the scope of the claims, the description does not need to be amended to remove such "embodiments" or to change them into "embodiments not according to the invention" .
• The Board: " First, the board is not convinced that, according to the EPC, the "invention" is necessarily and always to be equated with the "invention claimed" (see e.g. T 944/15, Reasons 17)." 
• T 944/15 is the case where a computer program was held to be excluded from patentability under Art. 53(c) which specifies that "methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body" are excluded from patentability.
• T 944/15, cited r.17:  "[claims] do not, in themselves, define what the invention is. Instead, it is the corresponding teaching in the application which does that" 
• Compare Article 52(1) EPC: "European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application". 
• The Examining Division's analysis was: "the examining division equated the term "embodiment" with subject-matter that has to fall "within the scope of the invention as defined by the claims". 
• " Secondly, this board takes issue with the conclusion that the requirement that the claims are to be supported by the description (Article 84, second sentence, EPC) necessarily means that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims. This conclusion cannot be derived from the EPC. It can also not be derived from the jurisprudence of the Boards of Appeal, according to which merely inconsistencies or contradictions between the claims and the underlying description are to be avoided in that context (see e.g. T 1808/06, Reasons 2; T 2293/18, Reasons 3.3.5). [....] The mere indication that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard." 
•  T 1806/06 r.2: " In order to meet the requirement of Article 84 EPC that the claims have to be supported by the description, the adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description/drawings which could render the scope of the claims unclear. Any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated."
• The Board seems to cite T 1806/06 at the correct place in its reasoning: namely for the position that "inconsistencies or contradictions between the claims and the underlying description are to be avoided" (which is indeed what T 1806/06 says). The Board, interestingly, cites no earlier case law for it's analysis that "The mere [fact] that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard".  Nor is any explanation or supporting reasoning given for this view of the Board (in para. 6.2.2 dealing with the matter).
• Als on T 2293/18, the Board required an amendment of the description because, essentially, "Folglich liegt eine Unstimmigkeit zwischen dem Anspruch 1 und Teilen der Beschreibung vor, weil beim Fachmann der Eindruck erweckt wird, dass die Beschreibung Wege zur Ausführung der Erfindung offenbart, die aber nicht unter den Wortlaut des Anspruchs fallen." 

EPO 

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

T 2179/16 - Waiver of attack

Key points

•  The opponent argues that the claim at issue is not inventive over D10. The Board decides that the claim is inventive over D10.
• With the SoG, the opponent had also submitted an attack using D2 as the closest prior art.
• Admissibility of the attack is to be decided under Article 12(4) RPBA 2007.
• The attack "had initially been submitted with the notice of opposition at the outset of opposition proceedings. At that point in time, those objections were directed against the claims of the granted patent, which were the basis for the main request before the opposition division."
• According to Article 12(4) RPBA 2007, the board has the discretion to hold inadmissible inter alia facts which could have been presented in opposition proceedings. It is established case law that this provision also applies to facts (attacks) which were submitted and subsequently withdrawn during the first instance proceedings. Article 12(6)(s.2) RPBA 2020 uses "were no longer maintained".
• The AR was filed shortly before the hearing before the OD. The opponent did not comment in writing on it. 
• Inventive step was discussed during the oral proceedings before the OD. "Thus, at the outset of the discussion on inventive step, the parties were not requested to limit their oral submissions on inventive step in any way, but were simply requested to provide their arguments."
• "There then ensued a discussion starting only from D10 as closest prior art."
  
• "Specifically, the minutes (page 11, "12:30") state the following: "The parties having indicated that they have nothing more to add, the Chairman announces a break of 15 minutes to deliberate on the question of inventive step". Hence, the chair of the opposition division, having opened the discussion in relation to inventive step and having heard arguments from the appellant only in relation to D10 as closest prior art, subsequently confirmed with the parties whether there was anything further to add to their submissions. In the absence of any further submissions, it can only have been concluded that the parties had nothing to add. This in turn can only mean that the further objections that had previously been raised against the then main request, were not pursued or raised against the then first auxiliary request."
• It seems that the Board here identifies a waiver of the attack. Note, this waiver is based on an action of the opponent, namely, indicating that they had nothing more to add, in combination with the attack being on file. However, if the auxiliary request had significant claim amendments (for inventive step) compared to the claims as granted, it may also be a case of forfeiture, in the sense that the opponent failed to present the attack, instead of presenting the attack and then abandoning it.
• After the break, "oral proceedings were resumed, and the chair announced the conclusion that the first auxiliary request met the requirements of Article 56 EPC. At this point in the oral proceedings, it would still not have been too late for the appellant to have raised the further objections had it so desired, or at the very least, to have enquired with the opposition division as to whether said further objections had been taken into account in reaching its conclusion. However, the appellant remained silent."
• Practice point: if a conclusion is announced, the debate can be reopened. If a decision is announced, not. 
• "In view of the above, there can be no doubt that the further objections were not pursued or raised against the then first auxiliary request during the opposition proceedings."
• "By not pursuing or raising these objections before the opposition division and introducing them for the first time before the board, the appellant effectively avoided a decision by the opposition division on the merits of these objections. Their admittance would therefore oblige the board to decide for the first time on their relevance."
• As a comment, Art. 12(4) RPBA  20007 speaks only of the power of the Board to hold such attacks inadmissible. Article 12(6)(s.2) RPBA 2020 likewise provides for an exception (i.e. admissibility) "unless the circumstances of the appeal case justify their admittance". For this exercise of discretion, it may matter whether the attack was waived or forfeited before the OD (cf. USA law, see here).
• The case is similar to T 1958/19, also in the outcome. 
• See, however, also R 5/19, r.3.6, in translation: "The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part." 

EPO 

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

T 0698/19 - Technical effect must be derivable from the application as a whole

Key points

• The applicant of the application at issue is Swiss Reinsurance Company Ltd.
  
•  Board 3.4.03 in the headnote: " If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole".
• This statement appears to combine two distinct rules: 1) "If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step" and 2) a  "technical effect must be clearly derivable from the application as a whole".
• The arguments of the applicant: " Prior to automation, the handling of insured loss cases was handled by an insurance agent who determined the amount of loss to be reimbursed based on similar claims and the insurance policy. In the 1960s, attempts were made to automate the handling of claims by a computer. For this purpose, the procedures were parameterized, which led to an efficient (but less accurate) claims handling. However, there were parts that could not be parameterized. The present procedure solved this problem by automating these non-parameterized parts through pattern matching with historical data by use of seamless integration. The invention represented the complete automation of an insurance premium payment. Automation was technical as such and had a technical effect." 
• The Board: " Automation is admittedly technical in itself. This is inherent in the very fact that the method runs on a computer. The board agrees with the Appellant that in the present case technical and non-technical features are interwoven and that generally non-technical features can have a technical effect. If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole." 
• " The Board is not persuaded either that steps (b) to (d) in combination  have a technical effect, i.e. improving the stability of the automated system of the invention, for the following reasons."
• "Disclosure as to how the algorithm is implemented in practice must be provided in order to give evidence that the algorithm has any proved further technical effect with respect to known algorithms and that it provides an improvement over the prior art. The present invention has the object to provide a stable system. However, as discussed above, no details are given why the proposed system should be considered to provide better stability than any other system, for example, how and at which level improved stability or accuracy of the algorithm is achieved, which kind of data is used for pattern matching, how historical data is selected, prepared and compared, and which parameters are matched. The only data provided in the application is pure economical data (see e.g. Fig. 3)."
• Note, " The system should be stable and "give basis to better investment grounds for partners and clients supporting the system" (description, page 3, lines 28-33)." The term 'stability' of the automated insurance system may refer, possibly, to financial stability, but the Board's decision does not comment on that point.
• "To summarise, any further technical considerations or effect must be derivable from the application as a whole and the claims must comprise the specific features which contribute to the further technical effect of the invention, ... "
• The Board adds: "... since it must be made clear to third parties what the technical part of the invention is, and the technically skilled person needs these details to carry out the invention (Article 83 EPC). This is not the case for present claim 1." 
• As a comment, it may also be said that an inventive step is to be based on features specified in the claim and the technical effect provided by those features (if any).

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 preliminary opinion (and Ariad and Toolgen)

Key points

• The Enlarged Board has issued a preliminary opinion in referral G 2/21. This opinion is of course non-binding. It was naturally discussed on numerous weblogs already (e.g. here).
• The Enlarged Board, in the preliminary opinion: "the core issue rests with the question of what the skilled person, with the common general knowledge in mind, understands at the filing date from the application as originally filed as the technical teaching of the claimed invention. The technical effect relied upon [for inventive step],  even at a later stage, needs to be encompassed by that technical teaching and to embody the same invention." (r.15)
• As a comment, the Board here seems to  formulate the requirement that a technical effect, which is invoked by the patentee (or applicant) in the assessment of inventive step according to the problem-solution approach, needs to be "encompassed by [the] technical teaching [of the application as filed]", wherein said technical teaching is "what the skilled person, with the common general knowledge in mind, understands at the filing date from the application as originally filed as the technical teaching of the claimed invention" 
• This rule appears to be an elaboration of the established line of case law that "as a matter of principle, any effect provided by the invention may be used as a basis for reformulating the technical problem, as long as that effect is derivable from the application as filed (T 452/05, ...) (CLBA I.D.4.4.2); see also T 13/84: "A reformulation of the problem which then may become necessary is not precluded [...] if the problem could be deduced by the person skilled in the art from the application as filed when considered in the light of the [closest prior art]." The Enlarged Board seems to rephrase and refine "derivable"  and "could be deduced"  in terms of the technical teaching of the application.
• The technical effect invoked by the patentee (i.e. "relied upon") also needs to "embody the same invention", according to the above-cited part of the preliminary opinion.  I understand this requirement to refer to the invention as the skilled person understands it from the application as filed (i.e. not necessarily the same invention as claimed in the application as filed). The phrase "the same invention" is (probably) not used here in the sense of "the same subject matter" (as it was in G2/98) since G 2/21 is about inventive step and not about Article 123(2).
  
• see CLBA I.D.4.4.2: "In relation to new effects it was not permissible to change the nature of the invention".
• These requirements are tied to the application as filed and the skilled person's common general knowledge at the filing date.
• To cite Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010): “the test [for possession/written description] requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.”
• These requirements are probably to be applied in addition to, and distinct from, the requirement of T939/92 r.2.6 that a technical effect must be credibly achieved over (substantially) the entire claim.
• The Enlarged Board: "It is then on the basis of the application documents and this technical teaching that a purported technical effect relied upon for inventive step is to be assessed as to whether the skilled person, having the common general knowledge in mind, would have had any significant reason to doubt it."
• " In the absence of any such doubts, the reliance on post-published evidence, such as experimental data, for the purported technical effect would seem to serve as a potential source for a deciding body to conclude whether or not it is convinced of said technical effect when deciding on the inventiveness of the claimed subject-matter." 
• The Enlarged Board here seems to confirm the main rule that post-published evidence can be used to show that the effect is actually achieved (over the entire claim), cf. T939/92. 
• The Enlarged Board: " However, whether such [post-published] evidence could also successfully be relied upon in the event that the skilled person, on the basis of the application as originally filed together with the common general knowledge, had significant doubts in respect of the purported technical effect, appears questionable." 
• The Enlarged Board here possibly conveys that post-published evidence is, as a general rule, not suitable to show what the skilled person would consider as the technical teaching of the patent application "on the basis of the application as originally filed together with the common general knowledge" (i.e. as of the filing date). This observation seems as such independent of the existence, or not, of significant doubts.
• To give a noteworthy example of possible suitable post-published evidence was recently given in one of the CRISPR-Cas interference cases: 
  "the [PTAB] considered the opinion of the peer reviewers of the eLife manuscript, that: "This excellent paper [note, this paper was published a day after filing provisional patent application P3] demonstrates the capability of a method based on the bacterial CRISPR-Cas system to introduce targeted, mutagenic double-strand breaks into human chromosomal DNA. (...)" The Board concludes that "[t]hus, the reviewers, persons of ordinary skill in the art at the time CVC P3 was filed, considered the gels depicted in Figures 38B and 36E [of the manuscript, but also included in the patent application] to contribute to evidence of a CRISPR-Cas9 system that successfully cleaved DNA within eukaryotic cells, noting 'the paper demonstrates' this and the study 'show[s]' it.  ... the Board emphasizes that the possession test requires "an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art" (emphasis in opinion) [citing Ariad, see above]. The similarity of the disclosure in P3 and the eLife publication, and the publication reviewer's assessment of the science disclosed therein, was sufficient to convince the Board that the CVC inventors possessed the invention and were entitled to priority benefit to the P3 provisional application. " (source: PatentDocs 23.10.2022) (I'm not entirely sure if contemporaneous non-published documents such as peer review comments are post-published evidence in the sense of G2/21).
• Perhaps it can be said that a technical effect is not a part of the technical teaching of the application as filed, even if it is explicitly (or verbatim) stated in the application as filed, if the skilled person would have had significant doubts about that technical effect on the filing date and on the basis of (only) the application as filed and his/her common general knowledge at that date. This technical effect can then not be invoked under the PSA.
• The burden to show the significant doubts will be on the opponent but the initial burden to show the required technical teaching will be on the patentee, it seems to me.
• An example would be a patent application stating that 'the inventive compound are effective against [long list of all kinds of diseases]'. The application in such a case states verbatim that the compound works, but that may be no technical teaching in the sense of the preliminary opinion. 
• The Enlarged Board seems to indicate that the above-discussed rules, as stated in the preliminary opinion,  are not rules pertaining to the admissibility of the evidence. The Enlarged Board, as a preliminary remark, observes that "the principle of free evaluation of evidence [under Article 117 EPC] does not appear to allow disregarding evidence per se insofar as it is submitted and relied upon by a party in support of an inference which is challenged and is decisive for the final decision" (without prejudice to the discretionary power to hold late-filed evidence inadmissible, it may be added). 

EPO 

https://register.epo.org/application?documentId=L95QJ8WQRL3OUXE&number=EP12002626&lng=en&npl=false 

Text of the preliminary opinion below the jump.

T 1031/00 - Novelty and phase III clinical trial announcement

Key points

• Perhaps I will post more than once a week.
•  An old decision today. Cited only once, not even for the point discussed below, which is still interesting in my view.
  
• " Claim 1 is directed to the first therapeutic application of (-) amlodipine, namely the treatment of hypertension." 
• " Thus for novelty purposes it has to be established whether or not a therapeutic application has already been disclosed in the available prior art for (-) amlodipine." 
• " [D3] shows the ability of racemic amlodipine and of (-) and (+) amlodipine to inhibit calcium ion influx into rat aorta tissue in vitro as indicative of their effectiveness in the treatment of hypertension and angina" 
• D3 " also discloses that amlodipine was then undergoing phase III clinical trials for hypertension and angina and that in vitro evaluation of the enantiomers of amlodipine shows the (-) isomer to be twice as active as the enantiomeric mixture in the rat aorta, the (+) isomer being 1000 times less active" 
• " the patent application in suit it is stated that the (-) isomer of amlodipine is an antihypertensive agent for treating human (claim 1). However, in spite of the numerous examples in the description, only one deals with hypertension but without going further than in vitro experiments. Therefore, the description provides no further evidence or data showing the actual antihypertensive effect of the (-) isomer of amlodipine in humans or animals than did the prior art document [D3]."
•  " in the absence, in the patent application as originally filed, of any data providing additional technical information in relation to the actual treatment of hypertension in humans or animals compared with the disclosure in the prior art document [D3], it must be concluded that the subject-matter of the patent application is anticipated by the disclosure in that document, ie document [D3] discloses the same "therapeutic application" as the present application." 
• " According to the appellant [applicant], only the disclosure of an actual therapeutic treatment in a prior art document could be novelty destroying for the subject-matter of a claim drafted in the first [or second] medical use form." 
• " In fact, the Board agrees with both authorities cited that the disclosure of an actual therapeutic treatment for a known substance in a prior art document would be novelty destroying for a claimed first medical use of the same substance. And the Board could also agree with the [applicant's arguments] for cases where, according to the particular circumstances the technical content of the prior art is limited when compared with that of the application in issue. In the present case however, [...]  the situation is different since the subject-matter of the patent in suit does not contain any technical information concerning the claimed therapeutic treatment going beyond that in document [D3]. Accordingly, the difference between that document and the application in suit resides merely in the words used but not in their technical content so that no novel technical feature can be recognised in the present case."
• " As to decision T 0241/95 [], also cited by the appellant during the oral proceedings, the ]Board considers that, if anything, it tends to contradict the appellant's submission that document [D3] does not disclose an actual treatment. In T 0241/95 it was stated: "It is a well-established and accepted principle that, for the purpose of patent protection of a medical application of a substance, a pharmacological effect or any other effect such as a behavioural effect observed either in vitro or on animal models is accepted as sufficient evidence of a therapeutic application if for the skilled person this observed effect directly and unambiguously reflects such a therapeutic application." (paragraph 4.1.2)." 
• In view of the foregoing, the Board considers that the subject-matter of claim 1 does not fulfil the requirements of novelty of Article 54 EPC.
• As a comment, this decision seems to propose as a principle that the level of enablement required for Art.83 and an anticipating disclosure ought to be the same, also for first and second medical use claims.

EPO T 1031/00 

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

T 0424/21 - First medical use claims revisited

Key points

• In this opposition appeal, claim 5 reads:  "The antibody or Fc fusion protein according to any one of claims 1-[] for use as a medicament." 
• The Board gives a tutorial on first medical use claims, i.e. claims reciting "for use as a medicament".
• " Claim 5 is formulated in the form of a first medical use ("for use as a medicament") according to Article 54(4) EPC ("for use in a method referred to in Article 53(c)"). In view of the above finding with regard to the sufficient disclosure of the antibody and Fc fusion protein as such, it remains to be analysed whether those compounds are suitable for use as a medicament."
• " The patent shows that the PGLALA mutations can be introduced into known therapeutic antibodies having a human IgG1 Fc region and that an antibody of this kind provides relevant medical effects such as reduced Fc receptor affinity and reduced effector function, known to be useful in several therapeutic contexts " 
• " the only remaining question is whether claim 5 should be restricted to these particular therapies."  
• "The case law of the boards of appeal concerning the question of sufficiency of disclosure of a first medical use is not very extensive " 
• The Board observes that it is irrelevant that in this case, the compound (antibody) of claim 1 is also novel.
• " In decision G 5/83, Reasons 15, the Enlarged Board of Appeal stated: "Thus the inventor of a 'first medical indication' can obtain purpose-limited product protection for a known substance or composition, without having to restrict himself to the substance or composition when in a form technically adapted to a specified therapeutic purpose. The appropriate protection for him is, therefore, in its broadest form, a purpose-limited product claim. No problem arises over its susceptibility of industrial application, within the meaning of Article 57 EPC." The board interprets this statement to mean that the Enlarged Board, although not commenting explicitly on Article 83 EPC, also saw no general issue of sufficiency of disclosure for a broad first medical use claim and did not see the need for the inventor to "restrict himself ... to a specified therapeutic purpose"." 
• " Before decision G 5/83, decision T 128/82 had followed the same line of thinking: "If an inventor is granted absolute protection in respect of a new chemical compound for use in therapy, the principle of equal treatment would require that an inventor who for the first time makes a known compound available for therapy should be correspondingly rewarded for his service with a purpose-limited substance claim under [Article 54(4) EPC 2000] to cover the whole field of therapy"
• The reasoning indeed appears to be " Argumentum a maiori ad minus", with the tacit observation that a product claim covering all possible uses of the product, even uses still to be invented, is considered to be sufficiently disclosed by an enabling disclosure of the preparation method.
• " With regard to Article 84 EPC, [T 128/82 ] stated [in r.12]: "The mere fact that there are [no] instructions concerning all and any possible specific therapeutic applications does not justify limiting the scope to the therapeutic application actually mentioned. This would not be in accord with the general practice of the European Patent Office concerning therapeutically active compounds" []. Thus, although Article 83 EPC is not mentioned, this decision does not require a limitation to a specific therapeutic use either." 
• " This board cannot derive any requirement from the EPC whereby a patent would have to show that a compound is suitable for each and every disease in order for a first medical use to be sufficiently disclosed. Instead, it is sufficient to show that the compound is suitable for at least one particular medical use, as is the case in the patent at issue" 
• T 128/82 further states that: " the practice of the European Patent Office hitherto has shown that substance and medical preparation claims for therapeutically active compounds not limited to specific indications are allowed, even though as a rule only certain specific activities are stipulated." "As a general rule the usual practice as it relates to new compounds should be followed [for first medical use claims]."
• Hence, the EPO's practice was (and is) to allow compound [and composition] claims for new (and inventive) compounds (and compositions), also if it concerns new therapeutically active compounds, even though generally only certain specific activities are disclosed in the description. These compound claims are not limited to specific uses (or medical indications). 
• The same Board 3.3.04 briefly touched on the same point recently in T 0419/16:  "  A logical consequence of the availability of purpose-limited substance protection for a first medical use is that the disclosure of a single therapeutic use of a compound is both sufficient to meet the requirements of Article 83 EPC and to serve as a basis for such a claim in the sense of Articles 87(1) EPC and Article 123(2) EPC, respectively." It may be added that a single inventive therapeutic use of a compound is also sufficient to meet the requirement of inventive step of such a first medical use claim. 

EPO 

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

Scaling down to weekly posts

Key points

• I will post here weekly for the time being, as I have a book to edit in my spare time. 
• Posts are scheduled for Mondays.

T 1108/20 - Closed-circuit e-commerce entity

Key points

• The title of the application in this appeal is "METHOD AND STRUCTURE FOR SIMPLIFIED CODING OF DISPLAY PAGES FOR OPERATING A CLOSED CIRCUIT E-COMMERCE"
  
• Claim 1 begins with:  "A method for connecting and operating a closed circuit e-commerce entity comprising at least one shopping terminal, at least one provider and at least one entity center" 
• The Board, however, finds claim 1 to be inventive. The decision may illustrate that non-technical features do not contribute to inventive step under the Comvik approach, but there is, strictly speaking, no penalty for specifying non-technical features under the Comvik approach either if the claim additionally recites non-obvious technical features.
• Claim 1 specifies that "said shopping terminal including a touch screen, a CPU and a second memory is connected with said building server via an interface including a CPU and a first memory"
• The Board: "the board considers that the "CPU" mentioned in distinguishing feature (ii) can only be interpreted as relating to an additional CPU, i.e. in addition to the regular CPU that each server - including the server disclosed in document D2 - possesses. The same applies analogously to the "memory" mentioned in distinguishing feature (iii)."
• "The objective technical problem is how to support a large number of kiosks without overwhelming the server. This problem is solved by distinguishing features (ii) and (iii), since adding a CPU and a memory for processing kiosk requests at the interface reduces the load on the server CPU. However, neither this problem nor its solution are disclosed or hinted at in the prior art at hand."
• "Therefore the board concludes that the subject-matter of claim 1 involves an inventive step."
  
  
• As to the description: "The board notes that the [allowed set of claims] basically corresponds to the claims originally published and that the description as published supports these claims. Hence there is no need to adapt the description to the present claims in order to meet the requirements of Article 84 EPC in the present case." (italics added)
  
  

EPO 

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

T 1436/18 - (II) Legitimate reaction to appealed decision

Key points

• The Board admits AR-6 filed with the appeal, under Art. 12(4) RPBA 2007.
• The Board essentially finds AR-6 to be a legitimate reaction to a point that became clear only in the written decision of the OD.
• In AR-6, the product claims were cancelled; only the method claim was maintained (corresponding to claim 6 as granted).
• "Claim 6 as granted was objected to and discussed between the parties since the beginning of the opposition proceedings. The decision under appeal deals with both the device claim and the method claim as granted. Even if claim 6 during oral proceedings mainly was discussed in amended form [...], the reasoning in the impugned decision for novelty and inventive step of the method claim is solely based on features of granted claim 6 "
• "the board follows the argumentation of the appellant 1 (patent proprietor) that the course of the proceedings gave the impression that claim 6 as granted was not considered new by the opposition division. As the main request was rejected for lack of novelty of claim 1 over E6, claim 6 as granted was not further discussed in connection with the main request. However as the preliminary opinion of the opposition division likewise was negative for claim 6 in view of E6, there was no motivation for the patent proprietor to file an auxiliary request according to AR6 during the first instance oral proceedings. AR6 is thus a legitimate reaction to the decision of the first instance from which it became clear for the first time that claim 6 as granted was considered new by the opposition division."

EPO 

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

T 1436/18 - No circumventing of Art. 12(4) RPBA 2007

Key points

• The Board, on the admissibility of auxiliary requests 2 to 5: 

  2.4.1 AR2 to AR5 are not literally, but in their gist (as explained below) identical to auxiliary request 5 (AR2), auxiliary request 7 (AR3, AR4) and auxiliary request 8 (AR5) which were withdrawn during oral proceedings [before the OD]. "

• "It is therefore not apparent why the auxiliary requests 5, 7 and 8 were not maintained pending during the opposition proceedings, or, alternatively, why AR2 to AR5 were not filed in the first instance proceedings, in order to be decided by the opposition division. In fact, it appears that the appellant 1 (proprietor), by filing AR2 to AR5 in appeal, seeks to circumvent the withdrawal of the similar auxiliary requests 5, 7 and 8 filed in opposition proceedings."

• " The board concludes that these minor amendments in AR2 to AR5 on file compared to the withdrawn requests are only of formal nature and do not justify the resubmission of subject-matter that could have been presented in the first instance and was not."

•  The requests are not admitted under Art. 12(4) RPBA 2007

• The Board, however, admitted AR-6 filed with the appeal and found those claims to be allowable.

EPO 

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

J 0007/21 - Co-applicants file divisional application

Key points

• A divisional application was filed in 2019. One of the co-applicants of the divisional application, was not the same as indicated in the Register for the parent application. The parent application was withdrawn the day after the filing of the divisional application. 
• The decision is anonymised, and all parties are referred to as "N.N." which makes the decision difficult to follow.
• The applicant argues that "N.N. was an applicant of the divisional application as N.N. had merged into N.N. as of 1 January 2018. Copies of the documents demonstrating the merger were submitted in the form of a confirmatory deed of merger dated 20 March 2018. It was requested that the application at issue be treated as a divisional application."
• "The appellants provided a confirmatory deed of merger dated 28 March 2018 (D2), which states that N.N. [new applicant] is a public institution serving scientific, cultural and professional purposes created pursuant to Decree No. 2017-596, issued by the French Ministry of Education on 21 April 2017, by merging N.N. [old applicant] and N.N. [another French university ?]."
• The Board: "In view of the above, it is therefore established that from 1 January 2018 N.N. became the universal successor in law of N.N.."
• "The board comes to the [...] conclusion that Rule 22(3) EPC does not apply in the context of universal succession, "
• "The board concludes that the notion of "transfer" in Rule 22 EPC should be interpreted as not covering universal successions, meaning that none of the requirements laid down in Rule 22 EPC for the registration of transfers is applicable. In the latter case, the effect of the change in ownership of the patent application is immediate and there is no need to postpone it to a later date on which the documents establishing that change have been provided to the EPO."
• "In view of the above, the board considers that as of 1 January 2018 N.N. automatically became the universal successor and owner of the patents and patent applications owned by N.N., including the jointly owned European patent application No. [X]  (the parent application), there being no need to request registration of the transfer, file documentary evidence and pay the fee. Therefore, the [divisional application], filed by the joint applicants N.N., on 17 September 2019 was filed by the same co-applicants as the parent application and meets the requirements of Article 36(1) EPC [sic]."
• "the application at issue must be treated as a divisional application of the earlier European patent application [], which was still pending on the filing date."
• As a comment, it is indeed established case law that acquiring the property of a European patent or patent application by way of universal succession, is neither subject to the requirement of Rule 22 that a fee must be paid for registering a transfer nor to the rule that a transfer is effective vis-à-vis the EPO only once the requirements for a valid request under Rule 22 EPC are fulfilled. As held in T 15/01, hn. II: " [Rule 22(3) EPC 2000] does not apply in the context of universal successions in law. The universal successor of a patent applicant or patentee automatically acquires party status in proceedings pending before the European Patent Office".
• The Board states that: "The board comes to the same conclusion that Rule 22(3) EPC does not apply in the context of universal succession, but not for the same reasons as those submitted by the applicant.". I understand that the Board considers universal succession to be a species of the genus "transfer of assets" (contrary to an argument of the applicant), but not a species of the genus "transfer in the sense of Rule 22 EPC".
• Rule 36(1) stipulates that "the applicant" may file a divisional application. The term applicant refers to the applicant of the (pending) parent application. Uncontested in the present decision is the rule that joint applicants can only file a divisional application acting jointly.
• Interestingly, a divisional application is apparently not published as long as it is not dealt with as a divisional application. 

EPO 

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

T 2785/17 - Sufficiency of a compound claim

Key points

• Claim 1 is directed to a class of chemical compounds, purely defined in terms of the chemical formula ("A compound of formula (II) ...". 
• The Board, notes, under inventive step, that "[t]he patent states that the compounds of claim 1 of the main request are useful as proteasome inhibitors (paragraph [0002] of the patent). Proteasomes are protein complexes which degrade intracellular proteins by proteolysis, a chemical reaction that breaks peptide bonds (paragraph [0004] of the patent)."
• Turning to sufficiency, "[t]he appellant [opponent] objected to sufficiency of disclosure of the compounds of claim 1 of the main request. It argued that the subject-matter of the claim was not disclosed in a sufficiently clear and complete manner to be carried out by a person skilled in the art across the whole scope of the claim. The appellant essentially submitted that there was no limitation on the number or type of substituents allowed in claim 1 of the main request and that the compounds encompassed by the claim would not necessarily have any physical or chemical properties in common, i.e. the properties to be used as boronic ester prodrugs to treat cancer. "
• "The board does not agree. As submitted by the respondent, the technical effect relating to the pharmaceutical activity is not incorporated in the claims of the main request, and thus whether the claimed compounds achieve this effect should not be examined under Article 83 EPC but rather Article 56 EPC."
• As a comment, see G 2/03 r.2.5.2:  " If an effect is expressed in a claim, there is lack of sufficient disclosure [if there is a lack of reproducibility of the claimed invention]. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92 []). "
• "Consequently, the board concludes that the invention underlying the subject-matter of claim 1 of the main request is sufficiently disclosed within the meaning of Article 83 EPC."
• The Board also concludes that claim 1 involves an inventive step. 

EPO 

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

T 2300/18 - Considering the broad scope of claim 1

Key points

•  "In the decision under appeal, the opposition division found that D1 was not only the closest prior art for the subject-matter of claim 1 but that it was also the only suitable starting point to be used in the context of the problem-solution-approach."
• " The Board does not agree with this finding. As a general rule, the claimed invention must be non-obvious having regard to the prior art, which can only be understood to mean any prior art (see e.g. T261/19, Reasons 2.5, citing T1742/12, points 6.3 and 6.6 of the reasons and T967/97, point 3.2 of the reasons). Considering the broad scope of claim 1, the Board sees no reason as to why D8 or D9 should not represent a suitable starting point for considering inventive step, whether it be the absolute "closest" prior art in some sense, or not. The term "closest prior art" is simply a label given to the prior art from which the inventive step analysis is started."
• " Starting the inventive step analysis from prior art which is (possibly) further away from the claimed invention (e.g. by having less features in common), can merely be expected to make it more difficult to arrive at the claimed subject-matter without involving an inventive step. In order to be allowable, the claim must therefore define subject-matter involving an inventive step also when considering D8 or D9 as the closest prior art starting point."
• "During the oral proceedings before the Board, the Board furthermore concluded that the ground for opposition under Article 100(a) and 56 EPC did prejudice maintenance of the patent (according to the now withdrawn main request) when starting from D9 as the closest prior art (for further details, see the minutes of the oral proceedings before the Board), and notably without reference to any further prior art document. Since the main request was found not to be allowable, the contested decision to reject the opposition has to be set aside."
  
• "Whether inventive step would also have been lacking when starting from D1 or D8 as being the closest prior art was not decided. The Board's decision to remit the case (see below) should not be understood such that only D9 might now be considered as the closest prior art when considering inventive step."
• "D8 and D9 were filed late in the proceedings before the opposition division. Both documents were admitted into the proceedings by the opposition division" The Board does not overrule this decision.
• Auxiliary Requests 6 to 9, filed with the appeal reply brief of the patentee as respondent, are admitted. "At the start of the oral proceedings the Chairman stated that the Board could see no reason for excluding any of the auxiliary requests and made reference to its preliminary opinion (see item 4.1), whereby in particular "convergence" of the subject-matter in the auxiliary requests and the possible lack of procedural economy resulting therefrom were not factors to be considered when applying Article 12(4) RPBA 2007. "
• The Board remits the case, noting that there are no objections under Art. 123(2) and Art. 84 for auxiliary request 6.  "The added feature common to auxiliary requests 6 to 9 (i.e. the discontinuous portions) however raises questions to which the opposition division had no opportunity to give its opinion. The appellant had additionally cited further prior art (see e.g. its submission of 4 December 2019 in relation to the sixth auxiliary request) which it considered relevant in this regard."

EPO 

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

T 0929/18 - Refusal without prior art search

Key points

• This is an appeal against a refusal decision.
• The invention is about "mobile location data sharing". The filing date is in 2009; the search report was established in 2009; the first Communication was issued in 2012; next action: summons oral proceedings in 2017, refusal decision in 2017. The Board's preliminary opinion was negative. 
• The search report did not cite any documents but rather stated that "the technical aspects identified in the present application are considered part of common general knowledge" (link). 
• The Board: "The appellant's request that a patent be granted on the basis of the main request, or one of the first to third auxiliary requests, cannot be allowed because no patent can be granted without a prior art search (Article 52(1) in combination with Article 92 and Rule 61(1)EPC)."
• The independent claims as filed indeed seem to broadly specify location sharing in a group by a mobile phone [user device] for a limited time, i.e. with instructions to share the information for a limited time and to stop sharing the information thereafter. 
• I note that in 2009, the previous version of Rule 63 applied, and Rule 137(5), second sentence, accordingly does not apply to the present application. However, as the searched claims recited technical means, such as a user device and an output interface, no declaration under R.63 is issued; instead, a search report not citing any document is established (OJ 2007, p.592; T1411/08; T1242/04 r.9.2)
• "The examining division refused the application for lack of inventive step without referring to any document. Essentially, they considered that the technical character of independent [method] claim 5 resided solely in the implementation of an administrative scheme on a notoriously known electronic data processing system"
• I note that the claims as pending at the time of the refusal decision were significantly amended compared to the claims pending at the time of the search.
• "The Board does not see a problem with the practice of referring to notorious knowledge in such cases; it has the obvious benefit of avoiding the need to prove facts that are self-evident or indisputably well known."
• "According to the Boards' jurisprudence (see e.g. T 1242/04 [...]), it is possible to raise an objection of lack of inventive step without documentary prior art if the technical features of the invention are notorious, i.e. so well known that it cannot reasonably be contested that they are prior art."
• "Claim 5 refers to mobile user devices in a "peer-to-peer" data sharing group."
• " In its communication accompanying the summons to oral proceedings, the Board had misgivings about the peer-to-peer aspect of the invention. Firstly it did not appear to be part of the inventive concept in the sense that it contributed to the problem that the application set out to solve. It also rather appeared from the way in which the application presented the invention that "peer-to-peer" was part of the background framework or at least technically irrelevant." 
• "At the oral proceedings, the appellant argued that the application did not describe the claimed aspects of peer-to-peer networking as known, and moreover that limiting the time period during which the devices shared data was particularly advantageous in mobile peer-to-peer networks."
• "The Board considers that, taken together, the features of the mobile device, peer-to-peer, group data and address arrangement and the relay or router [...] define details of an electronic communication architecture that cannot be dissected into non-technical and technical parts. "
• "Although the Board still has doubts about the significance of the peer-to-peer feature it would be unfair to judge such issues without proper prior art. This would be to put the cart before the horse by putting the substantive examination before the search (see e.g. T 1515/07 []). Indeed, a search may reveal prior art which puts the invention in a perspective that is different from what was originally set out in the application."
• " Also, there has been a lot of development in mobile communication networks since the filing date of the application. Thus, what is self-evident now might not have been so in 2009. Therefore, the Board judges that a search is necessary."

EPO 

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