T 2951/18 - Intervention and Art.14 RPBA

Key points

•  "The patent proprietor argued that, following decision T 384/15, the Board had to consider wether, in the present case, when invoking Article 105 EPC, the intervener attempted to circumvent the law by abuse of process."
• "The patent proprietor submitted that the legal requirement to present relevant evidence within the original 9 months opposition period was circumvented by the intervener."
• The Board: "The alleged existence of a relationship between the appellant and the intervener, even if confirmed, would not be sufficient for concluding that procedural abuse occurred."
• The Board derives from G3/97 r.2.1 that "it is neither vexatious nor illegitimate if the opponent and the intervener coordinate their actions within the limits of the applicable procedural framework."
• "Referring to documents and objections submitted by the opponent does not represent an abuse but rather an attempt of the intervener to pursue their legitimate interest by using information which was publicly available, e.g. by file inspection, when the intervention was filed. There is also no requirement in the EPC that the objections and the evidence submitted by an intervener should not be related to those previously submitted by an opponent."
• Finally, "The argument that using a straw man as opponent allowed the intervener to create a second, abusive, opportunity to circumvent the legal requirement to present relevant evidence within the original 9 months opposition period is therefore not convincing."
• "The procedural conduct of the intervener leading to the timing of the intervention is also not regarded as abusive, because in the present case it was the cease and desist letter, e.g. the legal action initiated by the patent proprietor against a third party, which triggered the filing of the notice of intervention at a very late stage of proceedings before the EPO."
  
  
• "The patent proprietor further argued that the evidence submitted by the intervener not be admitted into opposition proceedings in application of Articles 12(6) and 14 RPBA 2020. This was because [] Article 14 RPBA 2020 specified that Article 12(6) RPBA 2020 also applied to interventions, with the result that there were clear limits to what an intervener is allowed to submit in appeal proceedings, which were similar to those foreseen for an appellant-opponent."
• The Board: "In the present case the Board, taking into account the principle, firmly established in the case law, that an intervener has the right to present a new ground for opposition at the appeal stage (G 1/94), concludes that the purpose of an intervention under Article 105 EPC during appeal proceedings would be meaningless if the evidence upon which the intervener decides to rely was not admitted therein. Systematically preventing interveners from referring to duly filed prior-art documents only because the same or similar evidence was filed late by an opponent would force these third parties to pursue their legitimate interest, recognized under Article 105 EPC, in national proceedings. This would lead to a situation which is incompatible with the spirit and purpose of the EPC (Article 23 RPBA 2020). As a consequence of the above the Board concludes that the evidence filed by the intervener should be admitted into the present proceedings."
• Hence: " Article 12(6) RPBA 2020 is not applicable to the present case" (for the intervener)
• The Board remits the case without considering any of the substantive issues. "the particular circumstances of the present case, in particular in view of the filing of an intervention based on substantially new evidence after the decision under appeal had been announced by the opposition division, call for remitting the case to the opposition division (see also G 1/94, point 13 of the Reasons)."

EPO 

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

T 2904/19 - Intervention in appeal period

Key points

• An intervention was filed under Art.105: “The decision under appeal was announced at the end of the oral proceedings held before the opposition division on 12 June 2019. Two days later, on 14 June 2019, the intervention of an assumed infringer according to Article 105 EPC was filed. The intervention meets the formal requirements and is substantiated and therefore is seen as admissible in the sense of Rule 89 EPC. In accordance with G 4/91, point 6 of the reasons, in this particular situation where an intervention is filed after the opposition division announced its decision and where a party to the opposition proceedings files an appeal, the notice of intervention will be deemed to be filed in appeal proceedings, see also T 791/06 of the same Board in different composition, point 2.2 of the reasons. 
  ... Therefore, the Board concludes that the intervention cannot be rejected and that it forms part of the proceedings.
• The patentee is the respondent and filed new AR's with its Appeal Reply Brief. The Board: "In the case at hand, new matters have been raised in view of the notice of intervention, which was filed after oral proceedings before the opposition division were held. The respondent was thus not in place of reacting to these new matters during opposition proceedings with arguments and/or auxiliary requests. The Board concludes that due to the course of the opposition proceedings and the subsequent intervention, the filing of auxiliary requests 1 to 14 with the reply to the statement of grounds of appeal and to the intervention, where the respondent is required to form its complete appeal case in the sense of Article 12(3) RPBA 2020, was, in the present case, an appropriate point of time to present the auxiliary requests. In view of these particular circumstances, the Board, exercising its discretion under Article 12(4) RPBA 2007, admits auxiliary requests 1 to 14 into the appeal proceedings."
• The Board deals with the attacks of the opponent/appellant. "It follows that the appellant has not provided admissible objections and/or convincing arguments that would demonstrate that the subject-matter of claims 1 and 9 according to auxiliary request 7 lacks an inventive step in the sense of Article 56 EPC."
• However, "The intervener confirmed that it had objections to the claimed subject-matter of auxiliary request 7 other than the appellant's objections. The intervener also requested that the case be remitted to the opposition division"
• The Board remits the case taking into account that the Board "concludes that new facts, evidence, arguments and objections filed with the intervention, in combination with the new auxiliary requests filed by the respondent cannot be decided without an undue burden for all parties and the Board, amount to special reasons in the meaning of Article 11 RPBA 2020 that, hence, justify a remittal to the opposition division for further prosecution."

EPO T 2904/19

The link to the decision is provided after the jump.

T 1667/15 - Crystalline forms inventive

Key points

• There is definitely a new trend that polymorphs and crystalline forms are nowadays frequently considered to be inventive by the Boards (Board 3.3.02 in the case at hand).
• “ The claims as granted comprise two independent claims directed to specific crystalline forms (i.e. polymorphs) of febuxostat. Claim 1 is directed to a crystalline form designated "Form F10", while claim 6 is directed to a crystalline form designated "Form F2".”
• “Claim 1 concerns Form F10 of febuxostat. It is undisputed that this form is different from Form A disclosed in D2 and Form CN700 disclosed in D3A. According to the contested patent, Form F10 is said to have advantageous properties, and a list of such properties is provided. In particular it is stated that form F10 "has better solubility in ethanol compared to other crystalline forms" (paragraph [0065]). The patent does not contain any working examples or experimental data demonstrating said solubility.”
• Plausibility is not discussed in the decision
• " The respondent [patentee] submitted inter alia Annexes 5, 6 and 7a and argued that the data therein demonstrated that Form F10, compared to Form A of D2, possessed advantages in terms of its dissolution rate." 
• "  the objective technical problem underlying the subject-matter of claim 1 vis à vis Form A of D2 is the provision of a crystalline form of febuxostat with an improved dissolution rate in aqueous solution." 
• As to obviousness, " [the opponent / appellant] argued that it was incorrect to assume that in the field of polymorph screening, it would be entirely unexpected to find a polymorph with an improved dissolution rate compared to Form A. Rather, the skilled person was in a "try and see" situation in which absolute certainty was not needed (citing in particular decision T 1396/06). Accordingly, the skilled person, in addition to being motivated by the knowledge that Form A of D2 was known to be metastable, would have had a clear incentive to continue routine polymorph screening in order to prepare new crystalline forms having the desired property, and thereby would have arrived at Form F10 of claim 1. " 
• " The board is not convinced by these arguments. The situation in the present case is not the same as that underlying case T 1396/06" 
• "[The] situation in the present case may be more appropriately contrasted with that underlying decision T 777/08 [Atorvastatin] in which inventive step was denied. In that case, the problem was the provision of atorvastatin in a form having improved filterability and drying characteristics compared to the amorphous form (reasons, 5.1). The solution was the provision of a specific polymorphic form IV. " 
• "  In contrast, in the present case, as stated above, there is no teaching in the prior art on the basis of which a crystalline form of febuxostat with an improved dissolution rate in aqueous solution could be expected to exist. Therefore, the skilled person would have had no reasonable expectation of success in attempting to provide a solution to the objective technical problem vis à vis Form A of D2 as set out above." 
• " Therefore, inventive step must be acknowledged for the subject-matter of claim 1 vis à vis the disclosure of Form CN700 in D3A."
• The interested reader can read the full inventive step analysis, also for Form F2, after the jump.

EPO T 1667/15

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

T 1371/16 - Applying G 1/19

Key points

•  “The application concerns [a] method for aiding a design of wiring paths of wire harnesses”
• “Claim 1 concerns an apparatus for computer aided design of a wire harness wiring path which outputs "data on corrected wiring path" as a final result. It thus relates to a design process which uses computer-implemented simulation to produce numerical data describing a wiring path.”
• As seems typical with this kind of software patent applications, there is no relevant difference between the apparatus claim and the method. In practical terms, the subject-matter can be seen as a method.
• In practical terms, a wire harness is an (electric) cable in a vehicle and the method is for designing a path for a cable in a vehicle. 
• “The claimed subject-matter is thus analogous to a computer-implemented simulation of a technical system. Its patentability is to be assessed taking into account the criteria established by the recent decision G 1/19 of the Enlarged Board of Appeal on the patentability of computer implemented simulations ”
• “ G 1/19 presents its conclusions for the application of the COMVIK approach to simulations. It explains that the underlying models of the simulation may contribute to technicality if, for example, they form the basis for a further technical use of the outcomes of the simulation (e.g. a use having an impact on physical reality). In order to avoid patent protection being granted to non-patentable subject-matter, such further use has to be at least implicitly specified in the claim [].”
• “The board is however not convinced that the distinguishing features contribute to a technical effect in accordance with the criteria established by decision G 1/19.”
• “The only purpose of the wire harness wiring path design aiding apparatus according to claim 1 is to output "data on corrected wiring path data", which is numerical data about the wiring path design. As explained above, the distinguishing features result in wiring path data being output by the apparatus which takes into account the force of the worker's hand.”
• Force of worker's hand: see [0030] of the A2: basically the maximum curvature that a worker placing a though cable in a car can impose on the cable by hand.
• The Board, applying G1/19: "“Claim 1 does not specify any further use of the output wiring path data, further properties or specific data format that could limit the possible uses of the data. In view of that, other relevant uses of the output data for non-technical purposes, for example informational, study or training purposes, are within the scope of the claim. Since the data can be output in any form or format, it cannot be considered to be specifically adapted for the purposes of an intended technical use. In particular, the output data is not specifically adapted to be used in controlling a technical device or manufacturing a wiring path. It can thus be concluded that the data produced by the apparatus of claim 1 is not limited to a further technical purpose and does not contribute to an "implied" technical effect that is to be taken into account in the assessment of 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 1051/20 - Substantial procedural violation, no OP Board necessary

Key points

•  The Board finds a substantial procedural violation in that the refusal decision does not discuss two auxiliary requests filed by the applicant during the oral proceedings before the ED.
• The Board decides to remit the case.
• “ The appellant requested oral proceedings before the board in the event that the board considers not to grant a patent based on the present main request.”
• Clearly, the Board does not order the grant of the patent, rather a remittal for further substantive examination. Are oral proceedings before the Board necessary under Art.116?
• “The board recalls that a request for oral proceedings under Article 116(1) EPC must be granted if it is envisaged that a final decision might be issued which is adverse to the party making that request (see e.g. T 47/94, Reasons 6). However, it is established jurisprudence that a remittal of an appeal case without any consideration of the substantive issues is not to be considered as being adverse to a party, so that no hearing before the board is deemed necessary or appropriate solely to discuss whether or not such case should be remitted (see e.g. T 42/90, Reasons 5; T 166/91, Reasons 7; T 315/92, Reasons 5; T 47/94, Reasons 6; T 1727/12, Reasons 3).”

EPO  T 1051/20 -

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

T 1259/17 - Deleting dependent claim is case amendment

Key points

• The Board: “The new requests [under Art. 13(1) RPBA 2020, in effect] are distinguished from the previous ones by the deletion of the features of granted [dependent] claims 4, 5 and 12. ” The deleted dependent claims involved added subject-matter, according to the preliminary opinion of the Board.
• The Board: “This amounts to an "amendment of the party's appeal case" within the meaning of Article 13(1) RPBA 2020. Some boards have taken the position that the deletion of claims in a new claim request was not to be regarded as an "amendment to the party's appeal case" if the deletion does not change the factual and legal framework of the case (see for example T 1480/16, reasons 2.3; T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1).”
• “Other boards have taken the position that the deletion of claims was indeed to be regarded as an "amendment to the party's appeal case" and have applied Article 13 RPBA 2020 and assessed whether to admit the request in exercising their discretion in view of the criteria set out in Article 13 RPBA 2020, (T 2091/18, reasons 4; T 494/18 reasons 1.3-1.4; T 1597/16, reasons 4; T 1439/16, reasons 2; T 1224/15, reasons 5; T 908/18, reasons 1; see also T 682/16, reasons 5 to 8; and concerning Article 13(1) RPBA 2007 see T 168/16, reasons 2.1 and 2.2). ”
• “The board follows this [latter] approach as it is in line with the systematic context of Articles 12(3) and 13 RPBA (T 494/18, reasons 1.3-1.4). Article 12(3) RPBA 2020 provides that the statement of grounds of appeal and the reply shall contain a party's complete appeal case. Accordingly, all requests shall be specified expressly at this stage. It follows from this that only those requests that have been filed with a party's statement of grounds of appeal or the reply thereto form part of a party's appeal case.”
• I wonder if we will see a referral to the Enlarged Board.
• Hence, the Board needs to decide on admissibility. The Board turns to the question of whether the amendments are suitable to address the Art.123(2) objections. After a very extensive review in r.2.7 - 2.7.10, the Board finds that the amended claims still lack basis in the application as filed.
•  “Thus none of MR, AR1 to 5 and 7 to 10 is allowable under Article 123(2) EPC. Therefore, the board exercised its discretion not to admit these requests into the proceedings under Article 13(1) RPBA 2020.”
• The Board's assessment of Art. 123(2) under admissibility was extensive and in my view amounts to implicitly admitting the requests. For instance, see the remark in T 0847/20 r.4.1, addressed to an opposition division: “The opposition division has therefore not carried out a prima facie assessment but has fully considered the requests. By doing so, the opposition division has implicitly admitted the requests. Consequently, the Board takes the view that the opposition division wrongly exercised its discretion because, having implicitly admitted the requests, there was no discretion left not to admit them”."
  
  
• The decision also contains interesting points regarding the burden of proof for a technical effect.
• " In such a situation, in which the scope of the claimed composition, apart from the presence of the SRP, is much broader than that of the specific examples in the patent, the burden of proof that all the claimed compositions lead to the alleged advantageous effects mentioned in the patent rests upon the patent proprietor (T 97/00, reasons 3.1.6). In this respect, PP has also to give evidence that an improvement over the closest prior art is achieved over the whole breadth of the claim (T 653/07, reasons 5.1.7; T 1188/00, reasons 4.9)." 

EPO T 1259/17 - 

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

T 1367/19 - CPA for different purpose

Key points

• "3.1 The invention according to [method] claim 1 relates to a method for culturing animal cells. 
• 3.2 The appellant [opponent] based its inventive-step objection on the [public prior use] Ecover fermenter as closest prior art. The Ecover fermenter, including the whole control system, [] was used for microbial applications.
• 3.3 The problem to be solved is to provide a method for effectively culturing animal cells []
• 3.5 There is no reason to doubt that the problem is successfully solved.
• 3.6 The solution to the problem is not obvious. The Ecover fermenter was installed with the sole aim of culturing bacteria. While the vessel, which as such is part of the overall system installed, is suitable for culturing animal cells as set out above, there was no indication or pointer to the skilled person leading them to use that fermenter for culturing animal cells. Rather, the skilled person would have understood that the fermenter was specifically provided for bacterial applications, as is also evident from D18, which distinguishes between fermenters for microbial applications and fermenters for cell culture applications (page 7).
• The skilled person trying to solve the problem posed knows that both types of fermenter are available on the market. There is no reason why they would take a fermenter that is used to cultivate bacterial cells and convert it into a different system when there is no indication that the conversion would lead to a successful result. The skilled person would rather turn to the Biostat DC series described in D18 (which does not comprise the stirrer system of D24) when trying to cultivate animal cells.
• The argument [of the opponent] that the secondhand market would trigger broad usability of fermenters is based on speculation, for which no proof has been provided in relation to the specific fermenter.
• 3.7 The subject-matter of claim 1 is considered to be based on an inventive step."
  
  
• As a comment, I think that such a rejection of an inventive step attack is more satisfying than merely asserting that the prior use is not suitable as a starting point because it has a different purpose than the claim. 

EPO T 1367/19

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

T 2558/18 - Rule 71(6) not applicable under Art.164(2) EPC

Key points

• The Board, in the translated headnote: "The procedure under Rule 71(6) EPC does not apply [if the Board remits an application to the Examining Division with the order to grant a patent with specified claims, description and drawings] in view of the binding effect resulting from Article 111(2) EPC under Article 164(2) EPC"
• Article 164(2) EPC is the provision that states that the Articles prevail over the Rules, in case of conflict. It is applied rarely.
• The Board, in r.3.5: the Explanatory Remarks to Art. 11 RPBA 2020 are "at least misleading" on one point (original: “Die Passage in den Erläuterungen: "sei es mit oder ohne Anpassung der Beschreibung" ist zumindest irreführend.”).
• In the present case, the Board had remitted the application in decision T1891/12 with an order to grant a patent with a specified text. The applicant filed amended claims under Rule 71(6) EPC, these were not admitted by the Examining Division. This raises the question of the precise status of the order in the first appeal decision. The present Board finds that the remittal was based on the following green part of Art. 111(1), second sentence, not the blue part: “The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. ”
• The Board concludes this in r.3.5, first sentence and r.3.4.2, 2nd para, last sentence.
• So, even though Board in T1891/12 remitted the case, this was not according to the part of Art.111 that mentions "remit the case", according to the present Board, but according to the part of Art.111(1)(s.2) which does not mention a remittal.
• As to how the Board arrives at this conclusion, the reader is referred to the Board's full text, provided in translation below. It's too difficult to summarize fully.
• As to the Board applying Art.164(2), the headnote indicates that Rule 71(6) is declared non-applicable under Article 164(2) EPC. It seems that the Boards reasoning on this point consists of "The primacy of Article 111 EPC as interpreted above over Rule 71(6) EPC with regard to amendments follows from the EPC". After citing Art. 164(2) EPC, the Board continues with "It also follows that Rule 100(1) EPC, according to the wording of which Rule 71 (6) EPC on amendments would apply, is to be interpreted restrictively - and excluding this applicability - in accordance with Article 111 EPC". Here, the Board seems to declare Rule 100(1) EPC in part non-applicable under Art.164(2), which seems to be a distinct point.
• As a comment, I find the Board's reasoning difficult to follow. The Board's view that the Examining Division after the remittal by the Board should not apply Rule 71(6), seems unrelated to Rule 100(1) (to me) as Rule 100 EPC is about the applicable rules during the appeal proceedings.
• As a comment, the Examining Division had held the amended claims inadmissible under Rule 137(3) EPC. The Board could affirm on this ground but decides to arrive at essentially the same conclusion on a different (new) legal ground. However, T 0222/21 recently held that "what matters for the exercise of the discretion to admit or not to admit [amended claims under Rule 71(6) EPC], if the text was "extensively revised" (which was not the case in the present case).
• G 7/93,  headnote 1: “Following issue of such a communication under [Rule 51(6) EPC 1973, corresponding to the invitation for to pay the grant fee under Rule 71(3)] and until issue of a decision to grant the patent, the Examining Division has a discretion under [Rule 86(3) EPC 1973 = Rule 137(3)] whether or not to allow amendment of the application.”
• The present decision does not refer to G7/93.
• Rule 71a(5): "Until the decision to grant the European patent, the Examining Division may resume the examination proceedings at any time."  
• The present decision does refer to Rule 71a(5) but I assume that the Board would consider it non-applicable. In a way this seems to be the basic trade-off: neither the Examining Division nor the applicant can change the substance of patent to be granted in any way.
• A question is whether the Board in the previous appeal proceedings T1891/12 should have given the applicant a period of four months (cf. Rule 71(3)) to finally confirm the approval of the set of claims, before taking a decision making that set of claims res judicata (cf. point XII of the decision text below). Strictly speaking, this question is beyond the scope of the present appeal because any errors in those appeal proceedings can not alter the decision that was taken. The established practice of the Boards to not issue such a communication follows from J8/98, r.2.2, in particular r.2.2.2 (referenced in the present decision as well). An important remark in J8/98 for representatives seems to be this one: “If [the applicant] considers a further check of the documents necessary, eg because the discussions in the oral proceedings resulted in significant amendments, he may request to be given an opportunity to do so. In the absence of any reservation in this direction, he cannot expect a further opportunity to comment on the version submitted by himself or to amend it once more.”
• The phrase "may request" indicates that the Board should in principle grant the request for more time.
• As a final comment, a non-appealed decision of a first instance department is also res judicata; the principle in this sense is not based on the nature of appeal proceedings being an appeal, but on there being no way to contest the decision anymore. 

• Translation of the full decision text after the jump; I've spent quite some time on editing and formatting the text. 

EPO T 2558/18 

Headnote (machine translation)

If a Board of Appeal remits a matter for the grant of a patent in a specified text, i.e. with specified claims, description and drawings, to the Examining Division, the decision on the text of the patent is based on Article 111(1), second sentence, variant 1, EPC. This patent version is binding (res iudicata, rechtskräftig) for the examining division in application of the legal principle enshrined in Article 111(2) EPC, in application of which the remittal also takes place. The procedure under Rule 71(6) EPC does not apply in view of the binding effect resulting from Article 111(2) EPC under Article 164(2) EPC.

Link and machine translated text of the decision after the jump.

T 1101/20 - Appeal against refusal with allowable auxiliary request

Key points

• The Statement of grounds in this examination appeal was filed 09.03.2020. The facts of the case reflect a rather standard examination procedure and a rather standard review in appeal. The twist is the effect of the RPBA 2020, or in fact that Art. 12(6) RPBA is discussed by the Board though it appears to be a relevant provision for the case at hand.
• “At the examination oral proceedings the examining division informed the appellant that the main request did not meet the requirements of Articles 84 and 83 EPC and that it intended to grant a patent based on the auxiliary request 1 filed during the oral proceedings. In response to the communication under Rule 71(3) EPC the appellant did not approve the text intended for grant and explicitly requested to grant a patent based on the main request as filed on 21 January 2019 and discussed at the examination oral proceedings.”
• The refusal decision is then issued for the main request. 
• “The Board notes that the main request and the auxiliary request 1 filed with the grounds of appeal have been withdrawn during the oral proceedings [before the Board] and that the only request maintained by the appellant as new main request, namely the auxiliary request 2 filed with the grounds of appeal, corresponds to the auxiliary request 1 discussed at the examining oral proceedings and deemed to be allowable by the examining division.”
• “the Board does not see any reason for interfering with the assessment of the examining division leading to the communication according to Rule 71(3) EPC informing the appellant of its intention to grant an European patent on the basis of the auxiliary request 1 filed at the oral proceedings, and therefore considers it appropriate to remit the case to the first instance with the order to grant a patent in the form already considered allowable by the examining division.”
• As a comment,  note that said AR-2 was effectively withdrawn in response to the Rule 71(3) Communication. Thereby, the request falls under Art. 12(6) RPBA 2020, second sentence, second clause (“requests ... which were no longer maintained, in the proceedings leading to the decision under appeal”) so that the Board “shall not admit it ... unless the circumstances of the appeal case justify their admittance”. The Board in the present case does discuss Art. 12(6)(s.2).  
• Clearly, the result of the present decision is the only correct one, but it is not entirely straightforward to subsume it under the text of Art. 12(6)(s.2).

EPO  T 1101/20

Link to the decision after the jump, as well as an extract of the decision text.

T 2759/17 - The skilled person and the CPA

Key points

•  Board 3.3.02 on the selection of the closest prior art document: “With regard to the choice of the starting point, there are two different approaches in the case law.”
• “ In a first approach, it is the deciding body which selects the closest prior art (T 1241/18, point 2.1 of the reasons [of Board 3.5.02]; T 1450/16 point 2.1.4 of the reasons; T 855/15 point 8.2 of the reasons). Under this approach, the skilled person and their expectations, prejudices, knowledge and abilities do not play any role in this selection (T 1241/18, Ibid.). The skilled person does not come into play until later on when the closest teaching has been identified [...]  If parties have diverging views over the right springboard, the examination of inventive step under this approach should in principle be repeated for each of the technical teachings invoked since the invention has to be inventive over the entirety of the prior art.
• As a comment I personally see the merits of this first approach, but it is of course not the established EPO problem-solution approach.
• “In a second approach, the skilled person comes into play as early as when the closest prior-art disclosure is being selected.” (numerous references to case law omitted).
• “In the board's view, the first approach is not applicable at least in the present case. First of all, in line with the established case law [] it is the board's firm conviction that the skilled person is the relevant point of reference right from the start of any inventive-step assessment.  ... at least in the field of chemistry, with which the case in hand is concerned, the skilled person normally does not arbitrarily pick any existing prior-art disclosure and only then starts to think about the technical field in which it might be applied and what effect it could possibly achieve. This approach would be unrealistic and artificial.
• “Unlike the first approach, the second approach is based on a technically meaningful and thus realistic scenario. More specifically, the skilled person is normally confronted with a certain purpose or effect to be achieved in a certain technical field, e.g. as the goal formulated within a research project. With this in mind, the skilled person would then look for a prior-art disclosure that is in the same technical field and aims at the same or a similar purpose or effect. ”
• “ For the above reasons, the board follows the second approach. Hence, a disclosure within a prior-art document can only be considered to represent a suitable starting point for assessing inventive step if the skilled person would have realistically started from it.”
• As a comment, the question then is how to determine the relevant skilled person (technical field etc.).
• As a comment, where the Board writes that: “the skilled person normally does not ... starts to think about the technical field in which [the starting point document] might be applied and what effect it could possibly achieve. This approach would be unrealistic and artificial”, it seems that this could probably also be used as reasoning in the third stage (obviousness) of the PSA. Furthermore, the phrase "normally does not" implies that exceptions are possible depending on the facts of the case.

Headnote:

A disclosure within a prior art document can only be considered to represent a suitable starting point for assessing inventive step if the skilled person would have realistically started from it. An important consideration in this assessment generally is whether this disclosure aims at the same or a similar purpose or effect as that underlying the patent in question (see in particular 5.3 to 5.6 of the Reasons).

EPO T 2759/17

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

T 0319/19 - It would be inequitable

Key points

• “Article 12(4) RPBA 2007 applies [] when assessing whether the Board should exercise its discretion not to admit documents D13-D16.
• “According to established case law, documents filed with the statement of grounds of appeal should not be held inadmissible if they are an appropriate and immediate reaction to developments in the previous proceedings, for example where they give the losing party in the opposition proceedings an opportunity to fill in the gaps in its arguments by presenting further evidence on appeal.
• “In the case at hand, the filing of documents D13-D16 is a normal and legitimate reaction to the admission of the main request filed during oral proceedings in opposition. Indeed the main request [filed during the oral proceedings before the OD and] admitted by the opposition division comprises new features taken from the description which were not foreseeable by the appellant (opponent). The appellant could not have been reasonably expected to have presented D13-D16 during oral proceedings before the Opposition Division. It is therefore legitimate for the appellant to file documents D13-D16 at the earliest possible occasion that is with the statement of grounds of appeal. It would be inequitable not to allow the appellant to respond to such an unforeseeable new situation with new documents. Such a course of action would effectively tie the hands of the appellant in appeal to only base their arguments on previously cited documents, having first given the respondent a free hand to amend the claim based on the description at the last moment in opposition proceedings (see T 0113/12).
• A question is if this case law will also be applied under Art.12(4) RPBA 2020. On the one hand, Art.12(4) RPBA 2020 is intended to introduce a new first level of convergence. On the other hand, if “it would be inequitable not to allow the appellant to respond to such an unforeseeable new situation with new documents” under the RPBA 2007, this would be the same under the RPBA 2020, it seems.
• Some other Boards may consider as a factor whether the opponent requested a break during the oral proceedings before the OD after the new amended MR was admitted by the OD. It is not clear to me if the opponent could be expected by other Boards to request adjournment of the oral proceedings before the OD in order to have time to find and file D13-D16. The present Board implicitly seems to answer this question in the negative by finding that: “The appellant could not have been reasonably expected to have presented D13-D16 during oral proceedings before the Opposition Division.”

EPO - T 0319/19

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

T 0494/18 - Cancelling independent claim is case amendment

Key points

• This decision provides yet a further contribution to the debate between the Boards about the question of whether cancelling independent claims constitute a case amendment.
• Present Board 3.3.06: “A request in which some claims have been deleted compared to the requests that were filed previously with the grounds of appeal or the reply is, according to the systematic context of Article 12(3) RPBA 2020 and Article 13 RPBA 2020, a new request and thus usually amounts to an "amendment to the party's appeal case".”
  
• “Some boards have taken the position that the deletion of method claims, product claims, dependent claims or alternatives in a claim request was not to be regarded as an "amendment to the party's appeal case" if the deletion does not change the factual and legal framework of the case (see for example T 1480/16, reasons 2.3; T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1). The boards therefore concluded that the provisions of Article 13 RPBA 2020 were not to be applied at all ("non-applicability approach") if the deletion did not change the factual and legal framework of the case.”
• “Other boards have taken the position that the deletion of such claims or alternatives was indeed to be regarded as an "amendment to the party's appeal case".” [ with references]
• See also T 2091/18 (it is a case amendment) and  T 2713/17 (it is no case amendment).
• “[AR-8 is] directed now exclusively to method claims, was filed for the first time during the oral proceedings before the board and differs from auxiliary request 4 in that the product claims have been deleted”
• The question is whether Art.13(2) RPBA applies at all. “the question of what can be defined as an "amendment to a party's appeal case", and with that the question of whether Article 13 RPBA 2020 is applicable, can be answered in the systematic context of the provisions guiding appeal proceedings (see also J 14/19, reasons 1.4). In this context, Article 12(3) RPBA 2020 provides that the statement of grounds of appeal and the reply shall contain a party's complete appeal case. Accordingly, all requests shall be specified expressly at this stage. It follows from this that only those requests that have been filed with a party's statement of grounds of appeal or the reply form part of a party's appeal case”
• The request is admitted, inter alia because: “the respondent [patentee] had already indicated in its reply to the grounds of appeal that within its auxiliary requests 5 to 7 it was prepared to defend the method claims [comprised in said requests]. ” “ Moreover, the board considered that the deletion of the product claims of auxiliary request 4 prima facie overcame all the objections discussed during the oral proceedings. The board also considered that the method of this new request was prima facie clearly allowable under Articles 123(2) and 56 EPC for the reasons given infra.”
• 
  

EPO T 0494/18 -

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

T 0007/17 - Transfer of opposition and appellant in liquidation

Key points

•  A company requests that “the party status as opponent be transferred to it - and with it the opponent's procedural status as appellant in the appeal proceedings”. The Board rejects the request. 
• The Board first gives a concise but very useful review of established case law regarding the transfer of opposition.
• “The requirements for a transfer of party status as appellant-opponent [of G4/88] are not met since the board considers it not sufficiently proven that all relevant business assets in the interests of which the opposition had been filed had been transferred to Benuvia Therapeutics Inc., nor that the opposition was transferred.”
• “The board considers that it is on the opponent or the third party seeking the party status as opponent to prove that all assets had been transferred in the interest of which the opposition had been filed. ”
• “Schedule 5.8(a) [of the agreement] lists various patent filings made by the appellant-opponent or its affiliated companies and patents under which licence rights had been granted to them. According to D44, the transfer of any patent-related asset was dependent upon execution of the Patent Assignments. ... While the two Patent Assignments D46 and D47 show that all the listed patent filings had indeed been assigned to Fresh Cut Development, LLC or Benuvia Therapeutics Inc., respectively, no evidence was provided in relation to the licence rights.”
• “On the basis of the submissions and evidence filed, the board could not establish that the licence rights listed in Schedule 5.8(a) as part of the CBD business assets had indeed been transferred by the appellant-opponent, and it thus had to conclude that these business assets remained with the appellant-opponent, i.e. Insys Therapeutics, Inc. ... Where only part of the assets in the interests of which the opposition had been filed - here the CBD business assets - were transferred, the requirements set by the Enlarged Board of Appeal in its decision G 4/88 (cited above) cannot be considered to be met. In such a case, the original opponent remains party to the proceedings.”
• “the board likewise does not consider it proven that the opposition was transferred under the Agreement D44. ... The board does not agree with the main line of argument of Benuvia Therapeutics Inc. that the opposition, in case of a transfer of all business assets in the interest of which the opposition had been filed, is transferred with the transfer of these assets under all circumstances. The board takes the view that this does not occur automatically.”
• This may be an important point. The present Board 3.3.01 here follows T 0234/18 of Board 3.5.02.  
• The Board, explaining the point: “where a company contractually transfers the business assets in the interests of which an opposition had initially been filed, it is a matter of the parties' agreement whether or not the opposition - i.e. the party status as opponent - is transferred together with these business assets.”
  
• The Board, in further explanation: “To the contrary, the wording chosen by the Enlarged Board of Appeal [in G 4/88] ("may be transferred" and "transferable or assignable") makes it clear that the decision specifies the conditions under which a transfer of the opponent status is possible. Thus, decision G 4/88 does not envisage an "automatic" transfer of the opponent status in cases of a contractually agreed transfer of the business assets in the interests of which the opposition was filed (see also T 1911/09, Reasons 2.1.2 and T 1421/05, Reasons 3.2 ff).”
• The two referenced decisions deal with the point that in case of a transfer of an opposition with business assets, i.e. not by universal succession, the party status of opponent only changes after filing a request with the EPO and sufficient evidence. This is a different point than decided here (as the present Board seems to acknowledge in fact).
  
  
• “The oral proceedings took place in the absence of the appellant-opponent, Insys Therapeutics, Inc. Even though professional representatives attended the oral proceedings for the appellant-opponent, they were not entitled to act on behalf of the appellant-opponent because they had not submitted an authorisation, despite the board's earlier invitation to do so.”
• The professional representatives were allowed to argue that the invitation to submit an authorization was not proper under Article 1(1) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations (OJ EPO 2007, Special edition No. 3, 128. The Board rejects the arguments for the reason that the appellant-opponent was in liquidation so the Board had doubts. 
• “In the communication dated 6 July 2021, in the sections preceding the board's invitation to file an authorisation, the board explained its doubts that the appellant-opponent, being a company in the process of liquidation, was able to act without the involvement of the liquidator. The board therefore saw the need to ascertain that the professional representative was indeed empowered to act and thus invited the professional representative to file, within two months of notification of the communication, a signed authorisation in which, in particular, the capacity of the person signing should be stated.”
• Interruption of proceedings, Rule 142, does not apply to opponents of course.
• “ Regarding to whom notifications are to be addressed under Rule 130(1) EPC, the legal situation on the date of issuance of the communication is relevant (see J 19/92, Reasons 4 and T 247/98, Reasons 1). While Rule 152(6) EPC creates the legal fiction that if a required authorisation is not filed in due time, any procedural steps taken by the representative are, as a rule, deemed not to have been taken, this does not relate to the steps taken by the EPO.”
• “the appellant-opponent had to be considered as not being represented at the oral proceedings. In order to avoid any further procedural delays, the board decided, in accordance with Rule 115(2) EPC and Article 15(3) RPBA 2020, that the proceedings be continued in the appellant-opponent's absence, and the party was treated as relying on its written case”
• “The request of the appellant-opponent's representatives, submitted at the oral proceedings, that the proceedings be postponed so that the appellant-opponent could file an authorisation was rejected.”
• The appellant-opponent was in liquidation. 
• “The board takes the view that in the circumstances of the current case in which the board had to conclude that the appellant-opponent no longer has capacity to act in the appeal proceedings and where this issue had been a contentious one, albeit in the context of a transfer of party status, a decision is to be taken on the admissibility of the appeal (similar to in T 2136/11, Reasons 4 to 6). Thus, based on the findings above, the board holds that the appeal is to be rejected as inadmissible.”
  
  
• Also interesting: “Communication by the board dated 6 July 2021 indicating that the determination whether a legal entity existed or had ceased to exist and had capacity to act was a matter of national law and that in cases such as this where the answer was to be found in laws foreign to the EPC and its contracting states, it was for the parties to provide evidence of the legal provisions which they considered relevant. ”

EPO

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

T 0377/18 - Post-published evidence

Key points

• Inventive step is at issue in this pharma case. Claim 1 is directed to “ a composition comprising a solid dispersion comprising at least [regorafenib] in substantially amorphous form and a pharmaceutically acceptable matrix”.
• D5 is the closest prior art. “The compounds described under entries 42 and 49 [of D5] differ from regorafenib only in a substitution on one of the aryl rings (being hydrogen or chlorine instead of fluorine). ... Concerning the formulation of these actives, some general information is given on page 10, line 10 to page 12, line 29 [of D5]. Solid dispersions are not mentioned.”
• “either Formula (I) [a broad Markush formula] or any of the 103 compounds, in particular the closely-related compounds of entries 42 and 49 [of D5], can be taken as the starting point in the present case”
• Note that the c.p.a. is indeed an embodiment,  not a document as a whole.
• On to the plausibility issue (or closely related issue, in any case, see the G 2/21 referral): “Firstly, it will be discussed whether any surprising effect can be acknowledged to be linked to the difference in [molecule] structure”
• “The application as filed does not explicitly identify any surprising effects linked to the structure of the active agent.”
• “the respondent [patentee] presented data which according to it demonstrated the superiority in activity of regorafenib as compared with compound 49 (Tables 1 and 2). Having been submitted for the first time in the reply to the grounds of appeal, the data are clearly post-published. As they present data on an effect that cannot be derived from the application as filed, despite document (5) being discussed in the background section, the data are to be disregarded.”
• “No information is provided [note: in para. [0004] of the patent, as I understand] as to whether regorafenib is capable of inhibiting raf or any of the other three kinases in a way different from the cited background art (including document (5)) and/or whether such inhibition would lead to any improvement in the treatment. In fact, the application as filed contains no statement relating to and no data confirming the extent of the inhibition or indicating that this inhibition would lead to an improvement in the treatment of any hyper-proliferative disease. The appellant has furthermore pointed to the fact that there was no evidence that regorafenib inhibited these four kinases at all.”
• D5 is cited on page 2 at the top of the application as filed, in a section that merely lists a number of prior art references without much discussion or analysis.
• “The board thus comes to the conclusion that an improvement over the compounds of document (5) was neither foreshadowed, nor alleged, nor shown in the application as filed. Document (5) is not merely a document that could have been considered by the patent proprietor (or the then applicant) when drafting the application, but a document that actually was considered as can be seen by its being cited in the background section. Since, as a consequence, post-published evidence cannot be taken into account, none of the effects related to improved treatment (different pattern of inhibition, second-line treatment, higher levels of inhibition) can be considered when applying the problem-solution approach.”
• The feature of a solid dispersion does not provide for an inventive step either. The Board, as part of a detailed analysis, notes that “Document (6) thus clearly teaches that solid dispersions are a galenic form worth exploring when trying to provide a formulation of a poorly soluble drug.”
• The patent is revoked.
• The application was filed in 2005, the decision to grant was issued in 2015.
  
  
• Furthermore, non-anonymous third party observations filed after the summons for oral proceedings in appeal are not admitted: “ In addition, a third party is not an actual party to the proceedings, and as such should not be accorded more favourable treatment than an actual party.”

EPO T 0377/18

Link to the decision after the jump, as well as the text of the decision.

T 1365/18 - Inventive step of intermediate products

Key points

• Claim 1 is directed to a solvent-free polyisocyanate mixture. Claim 4 is directed to a method of preparing lightfast polyurethane compositions by reacting the polyisocyanate mixture of claim 1 with (slightly simplified) a polyol. Claim 9 is directed to the use of the lightfast polyurethane composition for producing transparent mouldings. The mouldings can be used as a lightweight glass substitute e.g. as optical lense (claims 10 and 11). 
• The Board, in translation: “2.1.4 In this context, the arguments put forward by the [opponent] Respondent against the applicable claim 1 in accordance with Section X a), last paragraph, must be viewed in the light of the case law relating to intermediate products (case law, supra: I.D.9.8.4, in particular T 65/82, OJ 1983, 327). In particular, in the present case, two different areas are to be considered as prior art with regard to the intermediates defined in claim 1 (namely the polyisocyanate mixtures A) which can be used for the production of polyurethane compositions, see e.g. claim 4 of the main request). On the one hand, the "intermediate product-related" state of the art has to be considered. These are all polyisocyanate mixtures whose chemical constitution comes close to the intermediate products and the task to be solved with the intermediate products. On the other hand, the "product-related" state of the art must also be taken into account. These are those compounds which, in their chemical constitution, come close to the products for further processing, namely the polyurethanes produced with them, and the problem to be solved with these products. From this prior art, it should first be determined which documents are relevant in view of the task set in the patent in suit. From these documents, the one that requires the fewest structural and functional changes should then be identified.”
• The parties debated about whether D9 was suitable as closest prior art. The Board: “Document D9, which is disputed between the parties, relates to two-component, solvent-free polyurethane adhesives for composite films with an excellent appearance and stable adhesive properties, even after a sterilization treatment carried out at high temperature. However, D9 does not relate to the "intermediate product" task mentioned in the patent in suit of providing solvent-free, low-monomer polyisocyanate mixtures containing a polyisocyanate based on highly viscous or solid araliphatic diisocyanates, nor the "product-related" task mentioned in the patent in suit of the solvent-free production of lightfast, weather-resistant polyurethane compositions which can be used for the production of transparent compact or foamed moldings.
• After some further detailed analysis, the Board finds that D9 is neither similar to the intermediate, nor similar to the end product. The Board concludes: “Since D9 does not represent a suitable state of the art for the subject matter of claim 1 of the main request, the objection of lack of inventive step based on D9 cannot be successful.”
• T 65/82 is not cited very frequently, perhaps precisely because it is settled case law. T65/82 is also instructive about obviousness and the technical effect of intermediate compounds.

EPO -  T 1365/18

Link to the decision after the jump, as well as an extract of the decision text.

T 1937/17 - Technical contribution, G1/93, and multiple selections

Key points

• The Board, in the headnote: “Other than for the purposes envisaged in G 1/93, "technical contribution" is of no relevance when deciding on the allowability of amendments under Article 123(2) EPC. Instead, the gold standard set out in G 2/10 is the only criterion that has to be applied.”
• The headnote can be found in the PDF file of the decision (at the time of writing the present post).
• In the present decision, Board 3.2.06 takes issue with headnote 2 of T 1621/16 of Board 3.3.06 which stated that: “A claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if: the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and the application as filed includes a pointer to the combination of features resulting from the multiple selections.” (emphasis added).
• G 1/93, hn.2 stated that “A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC.”
• This headnote of G1/93 is somewhat problematic as was recently analyzed by T 0768/20 ("It is not entirely clear what kind of feature the Enlarged Board had in mind [in G 1/93]"). Possibly the headnote concerns undisclosed disclaimers only and was superseded by G2/03. However, T0768/20 stopped short of saying so.
• The present Board: “This is confirmed in G 2/10 with the following unequivocal statement (following an extensive analysis of G 1/93): "It is, however, evident ... that by introducing the "technical contribution" criterion the Enlarged Board [in G1/93] did not intend to amend the definition concerning when an amendment is allowable under Article 123(2) EPC generally, but that it only sought a way of avoiding the potentially fatal consequences of the patentee being caught in the "inescapable trap" between the requirements of paragraphs (2) and (3) of Article 123 EPC". ”
• The present Board: “Paraphrasing the Enlarged Board [in G 2/10], one would then inevitably conclude that the aspect of "technical contribution" is not something to be taken into account when assessing whether the requirement of Article 123(2) EPC was fulfilled.”
• The rest of the case is illustrative but fact-specific (as always with the gold standard test). The gist is as follows: “Thus, regardless of the fact that both solutions [presented in the application as filed] seem to reduce the usage of materials, and in that sense can be seen to have a common disclosed effect (arguably even a common disclosed "technical contribution", in the sense of T 1621/16, Reasons 1.7.3 and 1.8.6), when applying the gold standard of G 2/10 the Board concludes that there is no direct and unambiguous disclosure of a core with the specific structure defined on page 24 in combination with the remaining features (particularly with the combination of parameter values defined in originally filed claims 1, 4 and 7) as defined in claim 1 of the main request.” “since each of these lists of [parameter ] values [corresponding to claims 1, 4 and 7] contains values applicable only "in various embodiments" (i.e. as opposed to all embodiments), the absorbent inserts of the invention do not necessarily have an absorbent capacity, a unitized insert absorbent capacity or an absorbent mass falling within the values described therein”
• So the application did not say that all embodiments had the absorbent mass of claim 4, and also did not say for the specific embodiment of page 24 that said embodiment had an absorbent mass in the range of claim 4; finally, the core structure of page 24 was not the only core structure being discussed.

EPO T 1937/17 - 

Link to the decision after the jump, as well as an extract of the decision.

T 0664/17 - Cogent reasons under Art.13(2) RPBA 2020

Key points

•  The Board, in machine translation: “According to Article 13(2) RPBA 2020, it is incumbent on the party wishing to change his or her appeal case to point out exceptional circumstances with cogent reasons. In the opinion of the Board, this means that it is not itself obliged to actively check whether exceptional circumstances have existed. However, the regulation does not go so far as to restrict the Board's exercise of discretion in such a way that it can only be based on the reasons put forward by the party concerned.”
• The OD rejected the opposition The patentee as respondent defended the claims as granted in its Appeal Reply Brief. With a letter of 08.12.2020 (after the summons), it filed a new Main Request. With a letter of 31.03.2021, after the summons for oral proceedings, it reverted to the claims as granted Main Request (with a new professional representative).
• Reverting to the claims as granted is a case amendment. Admissibility is subject to Art.13(2) RPBA. The change of representative is no exceptional circumstance. 
• Nevertheless, “In the present circumstances, the board sees undue hardship for the respondent if the main request - namely the maintenance of the patent as granted - were not allowed to enter the proceedings again.”
• “it would not have been objectionable if the Respondent, instead of replacing the original main request with a new one, had supplemented the original main request with auxiliary requests. Then the board and the appellant should have discussed the main request in the matter and at least the admissibility of the auxiliary requests at the oral hearing. By allowing the reintroduction of the main request into the proceedings, the board and the appellant would be confronted with the same procedural situation. ”
• Moreover, admitting the request did not increase procedural complexity.
• The claims as granted are found to be not novel.
• Auxiliary Requests 1-3, submitted after the summons, are not admitted into the proceedings.  
• Somewhat remarkably, the Board had stated at the end of the oral proceedings that: “Die Berücksichtigung von neuem Vorbringen im Verfahren geschieht nach Maßgabe der Artikel 12 und 13 VOBK 2020 (Amtsblatt EPA 2019, A63). Die Übergangsbestimmungen für die Verfahrensordnung sind in Artikel 25 VOBK 2020 geregelt. Zusätzlich zu den dort genannten Erfordernissen muss weiteres Vorbringen spätestens einen Monat vor der mündlichen Verhandlung vorliegen.” emhpahsis added.
• I suppose that the Boards in principle can add further rules regarding admissibility beyond Art.13(2). 
• 
  

EPO T 0664/17

Link to the decision after the jump, as well as an extract of the text of the decision.

G 1/22 - Entitlement to priority

Key points

• Technical Board 3.3.04 referred questions to the Enlarged Board regarding the entitlement to priority.
• There is a single decision to refer question,  taken in consolidated proceedings T2719/19 and T1513/17 (see Art.10(2) RPBA 2020), such that referral is assigned the references G1/22 and G2/22 *. Case T2719/19 is about the pending application  EP3056218 (16160321.2), T1513/17 is about granted patent EP1755674 (05779924.9), being the parent of EP'218. 
• * = for the case numbers, see https://www.epo.org/law-practice/case-law-appeals/communications/2022/20220201.html
• 
  
  The case at hand
• “The priority application was filed [in 2004, as a US provisional application] in the name of R.P. Rother, H. Wang and Z. Zhong, the inventors. The PCT application names R.P. Rother, H. Wang and Z. Zhong as inventors and as applicants with designation for the United States of America (US) only. It also names as applicants Alexion Pharmaceuticals, Inc. and the University of Western Ontario as applicants for all designated States except the US.”
• “The opposition division held, as far as presently relevant, the following. ... An assignment of the priority rights of the inventors Wang and Zhong to the appellant or the University of Western Ontario had not taken place prior to the filing of the PCT application.” The priority was held invalid and the claims were held thus to lack novelty over publication D20.
• The Board considers the request for correction under Rule 139 of the PCT request form, because “the board agrees with the respondents [opponents] that the form correctly expresses what was actually intended at the time of filing of the PCT application, namely that the applicants for all Designated States other than the United States of America were the appellant and the University of Western Ontario.”
  
  No legal basis for the PCT Request approach?
• The applicant/patentee argues that priority is valid based on the argument that: “it is sufficient that all the inventors, named as applicants of the priority application, are among the applicants of the later PCT application, even if for the designation US only. ”
• The Board calls this the "PCT joint applicants approach" but acknowledges that the terminology is tricky. If the inventors are joint applicants, then probably the argument has some force, but as can be seen below, the Board considers that the inventors are not joint applicants in any relevant sense.
• “The board is further aware that the approach has been followed in a number of cases before opposition divisions, whether or not referring to the Notice from the European Patent Office concerning the requirements to be observed when filing an international application with the EPO as a PCT receiving Office, OJ 2014, A33, III, 9 ” [ case numbers can be found in the decision]
• I could add that I recall an EPO lawyer participating in a panel session of the AIPPI  Congress 2021 also indicating that this was the practice of the first instance departments yet to be considered by the Boards of Appeal. 
• The Board: “The issue therefore concerns a point of law of fundamental importance relevant to a number of cases at present pending before opposition divisions and boards of appeal. Although legal requirements for patent applications in the US have changed, thus leading to a reduction in the number of cases in which the facts are similar to those in the present case in the future, the issue will remain of major importance for many years to come. In addition, the answer to the question of whether the PCT joint applicants approach can be accepted as suggested by the appellant is not clear cut.”
• The Board does not see legal basis for the PCT joint applicant's approach per see: “Neither Article 11(3) PCT nor Article 153(2) EPC provide that PCT applicants for a different territory - in the present case the inventors as applicants for the United States - shall be regarded as applicants for all other designated territories as well. On the contrary, the possibility of designating different applicants for different designated States (see PCT Regulation Article 4.5(d)) must necessarily mean that the status as an applicant is limited to the designated territories. Article 118 EPC can therefore in the opinion of the board not be applied to the present situation.”
• “[It was] argued that a PCT joint applicants approach can be based on the unitary character of the priority right in the PCT and thus on the operation of the PCT alone. The board cannot see merit in this argument either.  The PCT does not create rules of its own regarding the effect of a priority claim but refers to Article 4 of the Paris Convention (Article 8(2)(a) PCT).”
  
  Transfer by implicit agreement
• The patentee also submits a different legal basis, which I briefly summarize as that the manner of filing the PCT application at hand is a presumption of a tacit transfer of the priority right from the inventors to the relevant PCT applicant, with the additional argument that such a tacit transfer is permitted under the applicable law, the applicable law being the EPC itself. For the latter point, the patentee refers to the judgement of the Court of Appeal (CoA) of The Hague in the case Biogen/Genentech v. Celltrion (Gerechtshof Den Haag 30 July 2019; informal translation in my earlier post here. 
• The Board, after summarizing the reasoning of the CoA The Hague: “This approach seems appealing as it provides for a harmonised and well-founded assessment of an alleged transfer of the priority right. However, an issue with this approach lies in the uncertainty regarding the legal system that is applicable to the assessment of the transfer of the priority right: in several decisions of the boards of appeal, the legal requirements for the transfer of the priority right by agreement have been assessed applying national law. In spite of this, it is far from clear that this is correct, as the EPC does not contain any conflict of laws-rules and this issue has so far not been addressed by the EBA. A separate question relating to conflict of laws-rules to be applied to a transfer of the priority right is nonetheless not necessary because it is inherently contained in the questions posed and it will be addressed in the considerations of the EBA, as needed.”
• The Board: “Were the EBA to share the view of the CoA [The Hague] that the legal system to be applied to assess the priority right is solely the EPC, then it seems that the EPC does not, in Article 87 EPC or elsewhere, impose any formal requirements for the transfer of the priority right by agreement []. In that case it could be argued that the mutual filing of a PCT application [...] demonstrates - absent indications to the contrary - the existence of an implicit agreement between party A and party B, conferring on party B the right to benefit from the priority for the EPC territory. This implicit agreement could possibly be sufficient to bring about the transfer of the priority right to party B for the EPC territory.”
  
  The jurisdiction issue (first question)
• The Board then adds for good measure as a preliminary question essentially whether the EPO is competent to examine the entitlement to priority at all because, even though T844/18 Crispr said "yes", the Board is receptive to the argument of the parties that, if questions regarding priority are to be referred to the EBA on a related matter, this is a convenient opportunity to have a final decision on the "jurisdiction issue" as well.
  
  Second question
• Turning to the second question, the Board essentially presents the relevant facts and then asks if the priority is valid. 

"The following questions are referred to the Enlarged Board of Appeal:

I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?

II. If question I is answered in the affirmative

Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC

in the case where

1) a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and
2) the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
3) the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?"

EPO G 2/22 ; G1/22; T2719/19

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

T 2056/17 - Co-marketing as 2nd medical use?

Key points

• Claim 1 is, arguably, a second medical use claim and reads: “"1. A pharmaceutical combination for use in the prevention, alleviation or/and treatment of epileptic seizures, which comprises a separate dosage form comprising (a) a first composition comprising lacosamide and (b) a second composition comprising levetiracetam, wherein the compositions (a) and (b) are provided in distinct preparations (separate dosage forms), which are administered simultaneously and/or subsequently, wherein said separate dosage forms are co-presented in separate packaging, or are separately packaged and available for sale independently of one another, but are co-marketed or co-promoted for simultaneous and/or subsequent administration."
• “D2 discloses a pharmaceutical combination for use in the treatment of epileptic seizures which comprises a separate dosage form comprising (a) a first composition comprising LCM and (b) a second composition comprising LVT, where the compositions (a) and (b) are provided in distinct preparations, i.e. packaged separately, and administered simultaneously and/or subsequently.”
• “Regarding the feature in claim 1 that the actives are available for sale independently of one another but are co-marketed or co-promoted for simultaneous and/or subsequent administration, the board notes the following. The effective treatment of epileptic seizures according to both claim 1 and D2 is achieved by the simultaneous and/or subsequent administration of the separate dosage forms of LCM and LVT. The fact that these dosage forms are available for sale independently of one another but co-marketed or co-promoted for simultaneous or subsequent administration does not render the therapeutic treatment in claim 1 different from that in D2. In both cases, the therapeutic effect is the same, it is achieved on patients having the same physiologic and pathologic state, using the same combination of active ingredients, administered by the same route and with the same dosage regime. In other words, claim 1 and D2 relate to an identical clinical situation which is treated with the same therapeutic measures. Therefore, claim 1 does not define a new specific use within the meaning of Article 54(5) EPC.”
• As a comment, one may ask if “are co-marketed or co-promoted for simultaneous and/or subsequent administration” is a technical feature at all. 

EPO - T 2056/17 -

Link to the decision after the jump, as well as an extract of the decision text.