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 that "It serves to ensure legal peace 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.