T 3048/19 - Suitable for killing P. salmonis

Key points

• Claim 1 is directed to "Propyl-methyl-phenol compound, or composition comprising a propyl-methyl-phenol compound for use in the treatment and/or prophylaxis of Salmonid rickettsial septicemia (SRS) and/or diseases caused by Piscirickettsia salmonis, and/or for the use in killing, combating or controlling Piscirickettsia salmonis."
• The Board: "Purpose limited product claims, formulated in accordance with Article 54(5) EPC, are limited by their reference to methods of Article 53(c) EPC. However, "killing, combating or controlling" is not restricted to methods for treatment of the animal (including human) body by therapy and includes disinfection of water, as also indicated in the description of the patent which states "said propyl-methyl-phenol compound is applied to a locus to be protected from said bacteria or virus" (see paragraph [0020] of the patent in suit). In this case, the killing, combating or controlling of PS/SRS or ISA/ISAv may occur outside the fish."
• "Consequently, the compounds and compositions comprising the compounds of the second alternative defined in claims 1 and 2 ("for the use in killing, combating or controlling") do not profit from the purpose limitation under Article 54(5) EPC but are to be construed as compounds and compositions merely "suitable for" the intended use"
• In D10, "Paragraphs [0043] to [0062] list a number of non-volatile or volatile bioactive compounds. Among the non-volatile compounds, phenols, including propyl-methyl-phenols such as thymol or carvacrol, are an option (see paragraph [0044])."
• "Based on the claim construction above (see point 2.1), any prior-art compound "suitable for" killing, combating or controlling PS/ISAv, i.e. inherently possessing the claimed physiological properties, will take away novelty of the claimed composition."
• "Document D10 discloses a composition comprising thymol or carvacrol (see paragraph [0044]), i.e. propyl-methyl-phenol compounds, suitable for killing, combating or controlling PS and ISAv. It is inherent that the composition has been manufactured. "
• "Thus, the second alternative "for the use in killing, combating or controlling" of claims 1, 2, 14 and 15 is anticipated by the disclosure of document D10 within the meaning of Article 54 EPC. The main request is not allowable."
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EPO 

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

G 2/21 - The Enlarged Board on evidence

Key points

•  The Enlarged Board provided a comprehensive analysis of the principle of the free evaluation of evidence in G 2/21.
• "In G 1/12 ... the Enlarged Board recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence."

• r.30: "Said principle can be defined in abstract and general terms as allowing and, by the same token, requiring a judicial body, like the boards of appeal, to decide [whether a contested factual assertion is to be regarded as true or false] according to its own discretion and its own conviction, by taking account of the entire content of the parties' submissions and, where appropriate, any evidence admissibly submitted or taken, without observing formal rules []"
• Admissibly submitted refers to evidence submitted by the parties. Evidence that is taken is e.g. the hearing of a witness by the EPO.
• r.31: "[This principle] does not mean that this evaluation of evidence may be arbitrary, rather the evidence must be assessed comprehensively and dutifully. The only decisive factor is whether the judge is personally convinced of the truth of the factual allegation, i.e. how credible the judge classifies a piece of evidence. To do this, the judge must put all the arguments for and against a factual statement in relation to the required standard of proof. In doing so, the judge remains bound by the laws of the logic and by probability based on experience. The reasons that led the judge to be convinced of the correctness or incorrectness of a contested allegation as to fact are to be set out in the decision."
• r.32: "The principle of free evaluation of evidence may not be used to disregard evidence per se insofar as [the evidence] is admissibly submitted and relied upon by a party in support of an inference which is challenged and is decisive for the final decision." 
• As I noted in my post about T 1418/17, the principle of free evaluation of evidence means that there are no strict rules for the evaluation of evidence, i.e. no such rules like a rule that the testimony of three witnesses is binding evidence, as was the case in medieval law (Roman-canonical law). “The [medieval] formal theory of evidence that grew out of this hierarchical evaluation [of evidence] left no option for the judge: [the judge] was required to be convinced after the designated number of witnesses had testified concordantly” (link). “The principle of free evaluation of the evidence by the judge generally dates from the French Revolution. The French introduced the concept of the judge’s conviction intime (inner, deep-seated conviction) in contrast to rules of formal evidence that prescribed exactly when the evidence amounted to proof” (link to https://www.britannica.com/topic/evidence-law).
• See also T 3120/19:  "The principle of free evaluation of evidence is only applicable after the evidence has been taken and cannot be used to justify not taking evidence that has been offered, cf. T 0474/04"; the Board here considers the types of evidence that are "taken", e.g. witness hearing, the inspection of samples, etc.
• 
  
• The Enlarged Board: "Disregarding [certain types of evidence] as a matter of principle would deprive the party submitting and relying on such evidence of a basic legal procedural right generally recognised in the EPC Contracting States and enshrined in Articles 113(1) and 117(1) EPC" (r.32)
• The Board then reviews the existing case law.  This parts includes a few general statements.
• "Parties can freely choose the evidence they wish to submit, whereby the kinds of evidence listed in Article 117(1) EPC are merely examples"
•  "Articles 113(1) and 117(1) EPC embody a basic procedural right generally recognised in the EPC contracting states, i.e. the right to give evidence in appropriate form and the right to have that evidence heard (see T 1110/03). A decision should discuss the facts, evidence and arguments which are essential to the decision in detail"
•  "If the evidence offered as proof of contested facts essential to the settlement of the dispute is decisive, the body hearing the case must, as a rule, order that it be taken into account (see T 474/04). All appropriate offers of evidence made by the parties should be taken up (see T 329/02)."
• Note, to "offer" a witness is actually a formal request of a party to hear a witness (as I understand it), with the particular feature that the witness is "on the side" of the party making the request (see here) To " offer" evidence is a term mostly used for jury trial where a party  needs permission from a judge to present evidence (a document, or a witness) to the jury. 
• Late-filed evidence can be held inadmissible, and late-filed evidential requests (e.g. to hear a witness) can probably be denied under Article 114 EPC.
• "If, however, post-published evidence is considered to lack prima facie relevance or is not required for the decision on the issue in question of the case at hand, there is no need for it to be taken into account by the competent board of appeal"
• This applies to any kind of evidence; I think the Board has to give reasons in the decision why a (timely filed and formally admitted) piece of evidence lacks relevance for the contested factual assertion at issue.
• A similar case is if a patent publication is filed as evidence of common general knowledge: the Board will briefly consider the evidence and normally reject the evidence on the merits as irrelevant. 
• In this sense, post-published evidence will often be of limited value for proving what "the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching" [at the filing date], cf. headnote 2 of G 2/21. However, there might be exceptions, e.g. a declaration of a technical expert as to what the skilled person would understand. 

EPO  G 0002/21

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

G 2/21 - The Enlarged Board on sufficiency

Key points

• "[The] referred questions do not require an answer to the issue of sufficiency of disclosure and Article 83 EPC. However, as the terminological notion of plausibility relied upon by the referring board [] is mainly to be found in the case law of the boards of appeal with regard to the patentability requirement of sufficiency of disclosure, the Enlarged Board accepts the appropriateness of a comparative analysis and comparative considerations in this regard."
• "Indeed, a technical effect, which in the case of for example a second medical use claim is usually a therapeutic effect, is a feature of the claim, so that the issue of whether it has been shown that this effect is achieved is a question of sufficiency of disclosure under Article 83 EPC"
• To rephrase this statement slightly:  if technical effect ... is a feature of the claim, the issue of whether it has been shown that this effect is achieved is a question of sufficiency of disclosure under Article 83 EPC. This was also noted in G 2/03. 
• "Hence, because the subject-matter of second medical use claims is commonly limited to a known therapeutic agent for use in a new therapeutic application, it is necessary that the patent at the date of its filing renders it credible that the known therapeutic agent, i.e. the product, is suitable for the claimed therapeutic application.  The Enlarged Board explained the legal and historical background to the patentability of further medical uses in its decision G 2/08." [r.74.3]
• In other words, it is necessary under Art. 83 for second medical use claims that the patent (or patent application) at the filing date renders it credible that the known therapeutic agent, i.e. the product, is suitable for the claimed therapeutic application. 
• Note, the Enlarged Board does not say that the opponent must show that it was not credible on the basis of the patent application (as filed) on the filing date the recited therapeutic agent was suitable for the claimed therapeutic application.
• Clearly, it is the application as filed, as understood by the skilled person on the filing date in the light of common general knowledge of the skilled person on that date, that must render it credible that the recited therapeutic agent is suitable for the therapeutic application specified in the claim under examination. 
• Note, the Enlarged Board does not say that the application as filed must provide full proof that the recited therapeutic agent is suitable for the therapeutic application specified in the claim under examination. 
• Note, the Enlarged Board says, "renders it credible". A purely verbal statement that a compound is suitable for treating disease X may not always be sufficient to meed this requirement (in fact, may often be insufficient) even though (at least under currently prevailing case law) such a statement would be fine as disclosure under Art. 123(2) for a corresponding second medical use claim.
• Note, the Enlarged Board's requirement logically extends to allegedly novelty-destroying prior art for second medical use claims. 
• The requirement, probably, also extends to non-medical use claims ("use of compound X for purpose Z"), and to first medical use claims ("compound X for use as medicament"), for the latter the application as filed must render it credible that the recited compound is suitable for a therapeutic application.
• The Enlarged Board does not mention serious doubts substantiated by verifiable facts, i.e facts to be adduced by the opponent. Because the Enlarged Board specifically mentions that "it is necessary that the patent ... renders it credible", the Enlarged Board's holding appears to be directed not in the least to opposition proceedings. 
• The Enlarged Board's reasoning to arrive at this conclusion regarding sufficiency is remarkably brief, though building on the preceding extensive review of the case law on inventive step in the decision. The Enlarged Board observes that "the technical effect ... is a feature of the claim", and then the above-cited r.74.3 follows. This paragraph is followed by a summary of some decisions of Technical Boards of Appeal on sufficiency. 
• The precise function of the reference to G 2/08 is not entirely clear to me. It might be noted that G 2/08, r.5.3 mentioned that "the exclusion from patentability of [medical methods]  seemed actually to be based on socio-ethical and public health considerations."

EPO 

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

T 0088/21 - No undisclosed disclaimers for partial priority

Key points

• Claim 1 without the disclaimer enjoys partial priority from D0 because there is a still earlier application D1a, of the (same) applicant, which discloses (in the examples) an embodiment of the present claims without the disclaimer. The still earlier application D1a serves as the priority application for a PCT application D1 that was published in the priority year; the PCT application is also a Euro-PCT application which forms a prior right for the part of the claim for which the priority is valid. 
• I'm aware that the above paragraph is perhaps a bit concise summary. The Board sets out the relevant facts very clearly. 
• So, for the claims without the disclaimer, D1 is novelty destroying prior art under Article 54(2). For the claims with the disclaimer, D1 is a prior right under Art. 54(3) and not novelty-destroying because the overlapping subject-matter is disclaimed.
• An undisclosed disclaimer was accepted in such a case in T1872/14 which was, however, issued before G1/15 on partial priority.
• The Board:  "the criteria developed in G 1/03, together with G 1/16, are not fulfilled, and the disclaimer in claim 1 of the main request violates Article 123(2) EPC."
• " This line of argument [of the applicant] is based on the incorrect assumption that the claim with (i.e. after the inclusion of) the disclaimer was decisive in the given context. This is, however, not in accordance with the principles developed in G 1/03 and G 1/16."
• The Board agrees with the concise reasoning in T 0311/18: "The requirements of Article 123(2) EPC are not met for the following reasons: The disclaimer introduced in claim 1 is not allowable since, for the subject-matter disclaimed, D5 is not prior art under Article 54(3) EPC, but rather it is the first application within the meaning of Article 87(1)(b) (see T 282/12, Reasons 2). Consequently the patent in this case does not validly claim priority for said subject-matter and D5 is prior art under Article 54(2) EPC for the disclaimed subject-matter. The requirements for a disclaimer to be allowable, as set out in G 1/16, OJ EPO 2018, A70, in combination with G 1/03, OJ EPO 2004, 413, are therefore not met."
• The present Board: "The concept of G 1/15 that alternative subject-matter encompassed by a generic claim may enjoy partial priority is beneficial [for applicants] in some situations, namely when it is to be assessed whether a priority document relates to the same invention. But it may be disadvantageous in other situations, namely when the nature of a priority document as the first application is at stake in view of an even earlier application by the same applicant."
• "G 2/98 advocates a "narrow or strict interpretation" of the concept of the same invention and the right to priority (see Reasons 9 and T 1222/11, Reasons 9.1)."
• As a comment, G 2/98 only uses the phrase "narrow or strict interpretation" in relation to the concept of the same invention, not in relation to priority in general.
• "Moreover, the appellant already knew the content of their documents D1a/D1 at the time of filing the current application, and it was in their hands for the current situation not to occur. It rests with an applicant to manage their patent portfolio in line with the provisions of the EPC they want to avail themselves of, however large this portfolio may be, not least in the interest of legal certainty for third parties."
• This reasoning does not convince me. G 2/03 permits undisclosed disclaimers in case the prior right originates from the same applicant and is hence not based on reasons of culpability. On the other hand, in the present case of a priority gap, it is incidental that the cited document is a patent application of the same applicant. Even though a priority gap is always caused by a still earlier application or the same applicant, that still earlier publication does not need to be published, let alone in the priority year; it is also possible that the cited document is a publication of a third party in the priority year. 
• As a comment, I leave it as a question to the reader whether G2/03 expressly or implicitly says the list of cases permitting undisclosed disclaimers given therein is exhaustive and whether we should take it "as carved in stone" (cf. G 3/19). 
• I note that G 2/03 r.2.6.3 considered the case of "a lack-of-novelty objection raised under Article 54(3) EPC [which] becomes an anticipation under Article 54(2) EPC because the application-in-suit turns out not to enjoy the claimed right of priority, either because it was not valid from the outset, or because it was lost following a further amendment, additional to the disclaimer, not disclosed in the priority application."
• I note that G 2/03 seems to provide an equitable solution, at least refers to "unfairness" in r. 2.1.1 and 2.2.1. 
  
  
• Interestingly, the disclaimer was drafted by reference to D1: "with the proviso that the glass article (300) is not a glass article according to Examples 4A, 4B, 4C, 4D or 5A of EP 3 204 338 A2." The Board needs to comment on whether such a formulation meets Art.84.
   

EPO 

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

G 2/21 - Condensed version on plausibility only

Key points

•  For those readers who are in a hurry and are not specifically interested in the principle of the free evaluation of evidence, below the link is a condensed version of the decision with only the parts about "plausibility" and with the (extensive and important) citations of earlier case law and national law omitted, i.e. only the reasoning of the Enlarged Board. 
• The relevant headnote 2 of the decision is that:  "A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention."
• I note that the term "plausibility" is not used in the headnote. 
• This headnote requires some interpretation. The preliminary opinion contained a statement that is almost verbatim the same as the headnote (see my analysis of that statement here), though the remarks in the preliminary opinion about "significant doubts" did not make it to the final decision. 

EPO 

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

Note: the OJ version is here:  https://www.epo.org/en/legal/official-journal/2023/09/a85.html (English) and for the German version (not the language proceedings, but the decision reads better in German): https://www.epo.org/de/legal/official-journal/2023/09/a85.html 

T 2156/17 - Article 113 EPC does not entail the right

Key points

• The Board does not admit request 1a.
• "Auxiliary request 1a is an attempt to parry the Board's decision not to admit the new first and fourth auxiliary requests on the ground of lack of convergence, when compared to the new main request."
• "There is nothing exceptional in the board applying the criterion of convergence to question the admissibility of an auxiliary request freshly filed in appeal proceedings (Article 13(2) RPBA 2020). Although convergence, as stressed by the appellant, is not the sole criterion, there is also nothing surprising in the Board applying it to the new first and fourth auxiliary requests filed in response to the communication of the Board. "
•  " The right to be heard under Article 113 EPC does not entail the right to be given further possibilities to file new requests if earlier attempts fail. In the Board's judgment, the appellant's right to be heard is met under the circumstances, since they were aware of the objections to the admissibility of the earlier requests, and had the opportunity to contest this and present their arguments (T 732/21)."
• The Board does not specify any particular paragraph. To cite that decision: " the purpose of the rules of procedure before the Boards 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, and that, in view of the above, in the present case, consideration of this particular request [i.e. admitting it] does not impair these basic rights of either party"
  
  
• On inventive step:  "The claimed invention is a mixture of technical and non-technical features. The approach generally followed to assess inventive step of the subject-matter of a claim comprising a mixture of technical and non-technical features derives from T 641/00, Two identities/COMVIQ, OJ EPO 2003, 352. This approach was generally endorsed by the Enlarged Board of Appeal in G 1/19 Pedestrial simulation, OJ EPO 2021, A77, points 31-34, and points 35 and 36 with explicit reference to G 3/08, Programs for computers, OJ EPO 2011, point 10.13.2)."

EPO 

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

T 3257/19 - Internet publication on a public 3GPP server

Key points

• "during the examination proceedings, the examining division referred inter alia to the following prior-art document: D11: Qualcomm Europe: "Processing PCC in Release 8 - IP-CAN Type & RAT Type", S2-081161, 3GPP SA2 #63, Athens, Greece, February 2008."
• "The appellant submitted that the publication date of document D11 had not been reliably established by the examining division. '
• "he appellant seems to argue that the examining division failed to establish beyond reasonable doubt the exact earliest date of public availability of those documents. However, according to the established case law (see e.g. T 884/18, Reasons 6), this is no longer the applicable standard of proof required for assessing whether or not documents downloaded from the Internet or standard preparatory documents belong to the state of the art. In view of the available evidence and arguments, the board is sufficiently convinced that D11 was indeed made available by file upload to a public 3GPP server before the 3GPP TSG-SA2 Meeting #63 took place, i.e., at any rate, well before 14 March 2008."
• The applicant had also argued that:  it could not be determined that the document "could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document", with reference to case T 1553/06, Headnote 4."" 
• " The subject-matter of claim 1 does not involve an inventive step (Article 56 EPC) starting from D11 for the following reasons ..."
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EPO 

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

T 1041/21 - Need to substantiate carry over requests

Key points

• Art. 12(3) RPBA requires a party's appeal case to be substantiated. This also applies to carry-over auxiliary requests that can not be held inadmissible under Art. 12(4).
• Carry-over requests are requests that were admissibly filed and maintained in the first instance proceedings. Such requests are no case amendment under Art 12(4).
• The Explanatory Remarks are imprecise when they state that "they will not be considered an amendment and, therefore, will be part of the appeal proceedings".
• Self-evident amendments need not be explained according to established case law. The present decision does not touch on that rule.
• The references of the patentee to certain letters in the first instance proceedings are no valid substantiation, according to the Board.
• As a practical rule of thumb, imagine (when drafting your Statement of grounds or appeal reply) that the file wrapper of the first instance proceedings is burnt, except for the minutes and the decision (Art.12(1)) and except for the claim requests and evidence (Art. 12(3)(s.3)). Letters of parties in the first instance proceedings will, however, be considered for the purpose of assessing whether submissions were "admissibly raised and maintained in the proceedings leading to the decision under appeal" under Art. 12(4)(s.1) and the entire first instance file wrapper will be considered for holding submissions under inadmissible under Art. 12(6)(s.1) RPBA by showing that the party filing the submission in appeal had one or more reasonable opportunities to file them in the first instance proceedings and made no avail of them or (tacitly) abandoned the submissions.
• As a further practical rule, attorney arguments probably should be presented in the SoG proper, not in an annexe (same for the appeal reply brief) (see T 0974/20). 
• The Board in translation: "There is agreement that auxiliary requests 0, 0.1, 1 - 11 were filed in opposition proceedings and were not abandoned. However, this is not decisive in the present case, because the non-admission is not based on the provisions of Article 12(2), (4) RPBA, but on those of Article 12(3), (5) RPBA. The objections to the reference to documents and scarcity under Article 12(3) RPBA, as well as the requirement under Article 12(3)(b) RPBA to submit such documents, have already been addressed in Section 5.1.1 above and require no further comment."

EPO 

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

T 2685/19 - On the need to adapt the description

Key points

• Board 3.5.02, in machine translation: "Based on decision T 1989/18, Reasons No. 5, the appellant argues that if the claims do not have a problem of clarity, the description cannot give rise to an ambiguity of the claimed subject-matter."
• "The board does not agree"
• "According to the settled case law of the Boards of Appeal, the description must therefore be adapted to the amended claims, as has apparently already been requested in the present case by the opposition division with regard to the request on which the decision under appeal is based. This means, among other things, that embodiments no longer covered by the amended wording of the claim are to be identified as such in the description. This is not the case for the description submitted with auxiliary request IIIbis. ... Therefore, all embodiments that only have a two-part structure at the end area no longer fall under claim 1 and are to be marked accordingly. In the present case, as can already be gathered from the version on which the contested decision is based, only the embodiment according to FIG. 5 has a three-part structure at the end area."
• "Since the description submitted with auxiliary request IIIbis does not clarify that the claimed invention concerns only the embodiment corresponding to the subject-matter of the claims, there is a contradiction between the claims and the description, as a result of which the claims, contrary to the requirement of Article 84, second sentence, EPC, are not supported by the description."
• "The weighting of the criteria specified in Article 84, second sentence, EPC in favor of the clarity of the claims, which was the basis in decision T 1989/18, cannot be inferred from Article 84 EPC. Rather, the board follows the established case law of the boards of appeal in this regard, as recently found in decisions T 1516/20, reasons for decision no. 5, T 1024/18, reasons for decision no. 3.1, and T 2293/18, reasons for decision no. 3.3 has been confirmed. In the decisions mentioned, it has been shown very clearly and convincingly that the criterion for the claims being supported by the description in Article 84, second sentence, EPC is an independent criterion which is not subordinate to the clarity of the claims."

EPO 

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

T 0169/20 - Claim interpretation - using the description only exceptionally

Key points

•  Recently T 1473/19 challenged the prevailing view in the case law and proposed that Art.69 is to be used for claim interpretation, not only for Art. 123(3) (as is conventional) but also for Art. 123(2) and Art.54 etc. (see this post)
• That Board, in that case, held that "Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC"
• "The [present] board disagrees with the findings in the above decisions [i.e. T 1473/19 ] for the following reasons:"
• "The board does also not agree in that Article 69 EPC provides the only guideline for interpretation of the claims in the EPC and, as explained in the next paragraphs, considers that the provisions in Article 84 and Rules 42 and 43 EPC set out the structure of the information in the patent or patent application to elucidate the subject-matter of the invention and thus provide guidance on how to interpret the claims for the purpose of assessing patentability."
• "the provisions of Article 69(1) EPC do not apply to the interpretation of the claims for the purpose of assessing patentability but, in view of its explicit wording, to the determination of the "extent of the protection" of the patent or patent application, i.e. the object to be examined under Article 123(3) EPC or in infringement proceedings. By contrast, the wording of Articles 54 and 56 EPC expressly states that the object to be examined for assessing novelty or inventive step is the "invention"."
• This implies that the scope of the claims is different for validity and infringement.
• This also raises the question of what Art. 52, 54 and 56 mean with the "invention".
• "According to Article 84 EPC, the claims shall define the matter for which protection is sought, which in view of Rule 43(1) EPC corresponds to the technical features of the "invention". It is thus apparent that the object to be assessed under patentability corresponds to the technical features in the claims. "
• "as concluded in G 2/98 (Reasons 2 and 9), the term "invention" in the EPC should be narrowly construed as the combination of technical features in the claims. As stated in T 1845/14 (Reasons 9.6), this construction of the term "invention" implies that the subject-matter to be assessed under Articles 83, 87, 54 or 56 EPC should not be interpreted restrictively or differently from what a skilled person would understand when reading the claims on the basis of technical aspects wich are part of the description but not implicitly or explicitly defined in the claims."
• The Board, turning to the role of the description: "If the wording of a claim is unclear for a person skilled in the art, the description may fulfil its supporting function by illustrating the meaning of the unclear feature/s. Conversely, when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified. In addition, if the invention according to the description is narrower or different from that in the claim, the supporting role of the description under Article 84 EPC cannot be fulfilled, since an interpretation on this basis would not represent an illustration of the subject-matter of the claim with the aid or support of the description but a restriction or modification of the scope of the invention."
• "The board thus considers that the condition "supported by the description" in Article 84 EPC provides a legal basis for determining how and when claims should be interpreted in the light of the description. "
• "In particular, the wording of this provision explicitly limits the role of the description to an aid for understanding the subject-matter to be assessed under patentability, while implicitly confining this role to the exceptional cases where such support is both necessary and possible. The support of the description should be resorted to only in case of need, since it is the wording of the claims which defines the matter for which protection is sought (i.e. the invention) and it would not be justified to seek help in understanding a subject-matter which is in itself clear. Moreover, this support is only possible to the extent that there is a correspondence between the description and the subject matter of the claimed invention, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them."

• The Board also notes that: "While [Article 84 EPC, 2nd sentence]  is primarily applied to require that the claims be brought in line with the technical teachings of the description (i.e. due to an essential feature missing from the claim), or that the description be adapted to disclose the same invention as the claims, these issues ultimately seek to eliminate inconsistencies in order to enable the supporting function of the description as an aid for understanding the claims."

EPO 

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

T 0649/20 - Exact publication date unnecessary

Key points

•  " The patent in suit claims priority from a US patent application filed on 25 May 2006. Document D1 is a scientific article which was published in 2006 in volume 102 of the journal Anesthesia & Analgesia. The exact publication date of D1 is not available in the document itself. As evidence for its publication date being before the priority date of the patent, the respondent provided the following documents during the opposition proceedings: D1a, D14, D15 and D16."
• The board reviews the submitted evidence.
• "the board concludes that, although D1 does not feature any publication date other than the year of 2006, there is evidence on file indicating that the issue to which D1 belongs has the date of 1 May 2006 (D1a) and that it had been published on 21 April 2006 (D15 and D16). Moreover, there is evidence that the printed edition of the journal issue was publicly available on 19 May 2022, as this was the date of receipt at one public library (D14). There is no evidence on file contradicting this evidence."
• " The board is not persuaded by the appellant's arguments that the evidence on file is contradictory and does not make it possible to clearly establish when D1 was published. The fact that both a senior managing editor and a senior publisher of the journal independently indicate the same date as the date of publication for the issue in question makes it possible to conclude with a high degree of certainty that this is the correct publication date. The board fails to see any good reason to doubt the credibility of Ms [L] and Mr [B] , and the appellant has not provided any evidence to support such allegations. Moreover, it is sufficient to establish that the document was available to the public before the priority date in order to conclude that it is prior art. D14 is already considered to provide sufficient evidence that D1 was in fact publicly available before the priority date. Contrary to the appellant's arguments, it is not relevant whether or not a member of the public indeed had access to it; the librarian that received the issue and registered it in the database from which D14 has been obtained is a member of the public in any case for the purposes of Article 54(2) EPC (see e.g. T 834/09, points 5.1 to 6.3 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 2565/19 - Functionally defined receptor

Key points

•  This is an examination appeal.
• "The claim is for an isolated TRH receptor, i.e. a product. The claimed receptor is defined only by locational and functional features, i.e. the tissue from which it can be isolated: "from human CNS tissue" and its ability to bind the compounds defined in the claim"
• Claim 1 at issue: "An isolated TRH receptor subtype from human CNS tissue, the receptor displaying selective binding to a compound having the structure:- Glp-W-Pro-X [with further definition of X and W] wherein the compound having the structure Glp-W-Pro-X binds to the TRH receptor sub-type in human CNS tissues but does not bind to the TRH receptor sub-type in human pituitary tissue".
  

• "Neither of these features conveys any structural information about the claimed product. In other words, the language of the claim does not include or imply anything about the structure of the claimed chemical entity, for instance whether it is a protein or not, or if it were a protein, what its sequence might be."

• "28. In the absence of any structural features, the claim cannot be considered as clear because it fails to "enable the protection conferred by the patent (or patent application) to be determined" (Id.) and it does not define the claimed subject-matter in a manner which allows a meaningful comparison with the state of the art to be made.Neither of these features conveys any structural information about the claimed product. In other words, the language of the claim does not include or imply anything about the structure of the claimed chemical entity, for instance whether it is a protein or not, or if it were a protein, what its sequence might be."

• As a comment, see also recent decision T 1708/18 in an opposition case, where a patent was granted with a claim directed to: "An isolated antibody that binds specifically to the isolated polypeptide of SEQ ID NO:2 or SEQ ID NO:4". The patent in that case was granted in 2015.

• 
  

EPO 

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

T 1214/21 - Only one further request

Key points

•  "it is evident from the minutes of the oral proceedings before the opposition division (point 26) that the chair had indicated that, after having discussed three main requests in the proceedings, only one further request would be allowed without any consideration being given to (the) others, which is a further substantial procedural violation (see also T 756/18, Reasons 3)."
• The headnote of T 756/18 in translation: "The Opposition Division exceeds the appropriate limits of its discretion when it declares that it admits only one auxiliary request and immediately rejects additional requests without apparent valid reasons and without even having examined whether the amendments would have made it possible to set aside all the objections validly raised until then without giving rise to new ones, thus making them potentially admissible."

EPO 

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

T 0411/19 - Plausibility for novelty and for priority

Key points

• Claim 1 is a second medical use claim directed to:  "A composition comprising at least one peptide that inhibits plasma kallikrein for the use in the treatment of ophthalmic disorders in a patient in need thereof, ..."
•  Patentee "had several lines of argument as to why document D2 did not disclose subject matter anticipating that of claim 1. They were i) that document D2 was not enabling for the medical treatment as defined in claim 1, because the experiments reported in document D2 did not constitute an actual treatment of any ophthalmic disorder, ..."
• "The appellant's first line of argument is based on the observation that "the experiments of D2 do not constitute an actual treatment of any ophthalmic disorder at all". This, however is not the right test for deciding whether a document discloses a medical use in such a way that it can be carried out by a person skilled in the art. Instead, the document should disclose the suitability of the product for the particular therapeutic application"
• "In view of [the experimental results in] document D2 [a PCT application establishes at least an initial plausibility that the compounds mentioned in claim 1 (of document D2), i.e inhibitors of the pathway set out in Fig. 6 of document D2, are suitable for achieving the therapeutic aim."
• " To counter this initial plausibility, evidence in the form of verifiable facts would be required to show that serious doubts exist about the claimed peptides' suitability for achieving the therapeutic effect. No such evidence has been put forward by [the patentee].
  
  
• "[The opponent] was of the view that subject-matter of this claim request is not entitled to the earliest priority date, 16 February 2006 because the application [P1] from which priority is claimed (EP 06360008) does not sufficiently disclose the suitability of the claimed compounds for the claimed therapeutic use"
• "According the established case law of the boards, a claimed second medical use meets the requirements of Article 83 EPC if the patent discloses the suitability of the product for the claimed therapeutic application, if this was not known to the skilled person at the relevant date []. This standard applies to priority documents equally, because the priority document must disclose the invention claimed in the subsequent application in such a way that it can be carried out by a person skilled in the art "
• " document P1 contains no experimental data or other evidence of any kind that goes beyond a mere allegation that the peptides defined in that document are indeed suitable for treatment of any of the ophthalmic disorders listed. That the peptides mentioned are suitable is not at all self-evident because it is the essence of the contribution to the art of the invention purportedly made in document P1. In the absence of such evidence, it cannot be concluded that document P1 provides even an initial plausibility that the claimed compounds are suitable for treating the disorders in question. "
• As a comment, it seems that a sentence stating verbatim "compound X is suitable for treating disease Y", is not a disclosure that compound X is suitable for treating disease Y in this context. Perhaps the term "disclose" is not entirely precise in the sense that what is required is something different from the gold standard test of G 2/10. See also T 2842/18. 
• "the passages cited by [the patentee] on page 6 [of P1] are not evidenc/e but mere allegations of suitability. In conclusion, document P1 does not disclose the invention of claim 1 in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The invention claimed in claim 1 of the main request is therefore not the "same invention" in the sense of Article 87(1) EPC* as the invention disclosed in document P1. Thus, the invention claimed in claim 1 of the main request cannot validly claim priority from document P1."
• * = Note, it might have been the same invention in the sense of G 2/98; at least this aspect of the disclosure in P1 is not disputed. 
• As a comment, the Board apparently saw no need to wait for G 2/21 even though one of the proposed answers in that referral is "no plausibility requirement at all" (in the context of inventive step, admittedly). 

EPO 

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

T 2319/18 - The opponent suddenly agrees with the patentee

Key points

•  Quotes in machine translation. Sufficiency of disclosure is at issue.
• " In a communication pursuant to Article 15(1) RPBA 2020, the parties were informed of the Board's preliminary opinion. Subsequently, the patent proprietor put forward further arguments regarding the feasibility of the method according to claim 12. .... The patent proprietor once again expressly pointed out that the process according to FIG. 6 could be carried out. Contrary to the earlier comments in the reply (page 2, the last two paragraphs), the opponent itself agreed."
• " The opponent acknowledged that the flow chart of Figure 6 shows an embodiment of the claimed method and that it can be carried out. However, the claim wording is much broader than what is shown by this embodiment and the timings of Figures 5b and 5c. In its breadth, the method of claim 12 would not be feasible. "
• "Apart from the fact that the board is not bound by the interpretation of the claims by the parties (T 1513/12, point 4.2.2), the opponent's view that the wording of claim 12 is too broad [broader than?]  with regard to the teaching of FIG. 6 is not convincing for the reason that it is based on the assumption that FIG. 6 corresponds to an exemplary embodiment of the invention. That's not the case. ... contrary to what the opponents claim, the method of Figure 6 in no way corresponds to the definition in claim 12."
• Interestingly, the post on T 1513/12 ( "Agreement parties does not bind Board")
  is the most popular post on my weblog, though mostly with views n 2018.
• ". The features of claim 12, which are clear in themselves, result in a meaningless and thus vague definition of the claimed method (Article 83 EPC). An interpretation of claim 12 in the sense of the embodiment of Figure 6 is excluded under the present circumstances. "
• The wording of the claim does not provide a meaningful interpretation of the claim. The method of claim 12 is not executable within the meaning of Article 100(b) EPC because of the existence of mutually exclusive conditions.

EPO 

The link to the decision is provided after the jump.

Message to all EQE candidates

Key points

• To all EQE candidates: I hope you did well if you sat Paper D on Tuesday. Though if you are a regular reader of this weblog, you were probably well prepared.
• Good luck to all candidates sitting the Pre Exam next week. 
• Incidentally, suggestions for improving the Visser book are always welcome. You can reach me at p.delange@vo.eu. 

T 2643/16 - Sofosbuvir

Key points

• This decision is about a blockbuster medicament and involves plausibility, transfer of priority, and diastereomers. What's not to like about it? Perhaps that the Board stays the procedure until the Enlarged Board decides on the pending referrals.
• 
  
• "The objection [under Art. 123(2)] was primarily raised against [dependent] claims 2 and 3, which single out the diastereomers of the compound in claim 1 having (S)- or (R)-configuration at the phosphorous atom."
• "The basis for claims 2 and 3 in the application as filed given by the appellant-patent proprietor []  is the following: (i) compound IX-25-2 (page 254) in light of the explanation of Tables II-1 to XXXII-50 given on page 99, line 17 to page 100, line 5 and the passage on page 20, lines 8 to 16; (ii) Example 25 (page 683) [!] in light of the passage on page 20, lines 8 to 16"
• The PCT application is 751 pages. The file is slightly above 19k pages now.
• "Regarding (i), compound IX-25-2 is disclosed in Table IX-25. It has the chemical structure of the compounds of claims 2 and 3 but does not specify the configuration of two chiral centres, namely the phosphorous atom and the chiral carbon atom of the amino acid moiety."
• "As to the configuration of the phosphorous atom, the passage on page 20, lines 8 to 12 discloses that the claimed compounds "are racemic because of the chirality at phosphorous", the phosphorous atom being "R" or "S", and that "the use of the racemate and/or the resolved enantiomers" is contemplated."
• "The board agrees with the appellant-opponents and respondent-opponents that these general statements on pages 20, 99 and 100 are merely a conceptual description of the diastereomers encompassed by structures II to XXXII owing to the chirality at the phosphorous atom. The reference to the generic structures rather than the specific compounds renders it ambiguous whether the general statements apply to each table and compound disclosed below structures II to XXXII. But more importantly, the general description of the chirality at the phosphorous atom does not constitute a direct and unambiguous individualisation of each of the two diastereomers of each of the thousands of compounds disclosed in Tables II-1 to XXXII-50 having the preferred (S)-configuration at the amino acid moiety."
• The claims are found to lack basis in the application as filed.
  
  
• Turning to AR-1, being the AR held allowable by the OD, claims 2 and 3 are cancelled.
• Some but not all of the opponents appealed. " Therefore, the principle of prohibition of reformatio in peius precludes the consideration by the board of any objection against this request raised exclusively by the parties as of right (respondent-opponents). "
• By way of comment, see T 0920/20: "The Board cannot derive any restriction from Article 12(4) RPBA that each party may only refer to those matters of the preliminary proceedings in the appeal which it itself has introduced there in a permissible manner. It therefore seems legitimate for the appellant to also refer to lines of attack introduced by other opponents in the opposition proceedings." 
• Reformatio in peius deals with subject-matter, not with individual attacks or objections.
• However, perhaps a principle of estoppel can be identified.  
  
  
• "It was a matter of dispute between the parties whether the applicant, when filing the application on which the patent is based, was entitled to claim priority from the earlier applications D1 and D2 and, in this context, whether the applicant was the successor in title of the applicants that filed priority applications D1 and D2."
• "The outcome of referral cases G 1/22 and G 2/22 is therefore relevant for the board's decision on the validity of the priorities claimed in the case in hand. For this reason, in line with the appellant-patent proprietor's request and in the absence of any objection against a possible stay of the proceedings, the board decided not to take a decision on the issue of entitlement to priority but to await the outcome of these referral cases."
• "The appellant-opponents cited documents D33, D35, D12, D10, D9, D8, D7, D6 and D4 as starting points for the assessment of inventive step."
• "The patent (paragraph [0001]) is concerned with the preparation of nucleoside prodrugs that inhibit [hepatitis C virus (HCV)] replication and their use for treating HCV infection."
• "The appellant-patent proprietor argued that this starting point was not the closest prior art and that its choice involved hindsight. However, in accordance with the established case law of the boards, a conclusion that the subject-matter claimed is inventive can only be reached after assessing this requirement starting from all the possible pieces of closest prior art. Therefore, the appellant cannot argue against assessing inventive step starting from [compound] RO2433 [in D33]."
• "The compound of claim 1 differs from RO2433 by its phosphoramidate moiety."
• "According to document D10, cited in paragraph [0018] of the patent in suit, RO2433 is not active against HCV []. In contrast, the patent shows in Example 82 (Table, Example 25) that the compound of claim 1 inhibits in-cell HCV replication at sub-micromolar concentrations"
• "Based on this technical effect, the objective technical problem is the provision of an effective compound for the treatment of HCV infection."
• "Starting from compound RO2433 in D33 and faced with the problem of finding an effective compound for treating HCV infection, the skilled person had no motivation to turn to D7 because they did not know that RO2433 was inactive against HCV. The skilled person was even less likely to know that the reasons for the lack of activity of RO2433 were those intended to be overcome by the authors of D7, namely poor membrane permeation and/or a poor phosphorylation rate by cell enzymes. Therefore, the combination of D33 with D7 is based on hindsight."
• The Board then als considers  D12 as the closest prior art, as well as D10, and D7 (there were multiple opponents-appellants). None of the attacks is successful.
• " For the above reasons, the board concludes that the compound of claim 1 is inventive over the cited prior art available to the public before the earliest priority date."
• "The issue of whether post-published evidence may be taken into account may become relevant for assessing the inventive-step objections involving [remaining documents] D6, D8 and D9. Therefore, the outcome of the presently pending referral case G 2/21 on plausibility may also be relevant."
  
  "The case has come to a point at which a stay of proceedings is considered required. At the date of the oral proceedings, no information existed on when a decision would be handed down in the three pending referral cases G 2/21, G 1/22 and G 2/22. This, together with the fact that one of the five board members will retire on 1 March 2023, led the board to decide, as announced at the oral proceedings, to issue an interlocutory decision on the issues for which the parties could provide their comments at the oral proceedings and for which the board closed the debate."
   

EPO 

The link to the decision is provided after the jump

T 2024/20 - Appeal against cost apportionment

Key points

•  This is an appeal regarding the apportionment of costs. Well, more precisely, against a decision of the OD under Rule 88(3) EPC to fix the costs.
• The representative of the patentee had forgotten the oral proceedings (or at least said so) and did not attend them (they were held in The Hague). The patent was revoked, with an apportionment of costs against the opponent, for the costs of the 4 opponents for the oral proceedings. The patentee did not appeal that decision.
• The formalities officer of the OD then fixed the costs under Rule 88(2) with an order of 14.02.2020 That order is, however, not visible in the online file.
• The patentee then requested a decision of the OD. The OD essentially maintained the order.
• The patentee filed an appeal against the OD's decision. The appeal is admissible; the amount of costs exceeded the appeal fee - by far, the total is about 24k EUR (Rule 97(2)).
•  The Board:  "there is no reason to doubt that the other costs listed (22.5 hours of preparation) were necessary to prepare for the oral proceedings in view of the number of opponents and documents and filings forming part of the proceedings opposition. Even if some of these documents and writings had probably already been studied at an earlier stage of the procedure, it is well known that good preparation for oral proceedings requires an in-depth study of the case, which implies time significant preparation. The board therefore accepts that opponent 2's preparation costs amount to EUR 6251.77." 
• " Opponent 2 indicated a preparation time of 22.5 hours and the Opponent 3 of 20.5 hours, which is certainly different from the number of hours indicated by Opponent 4, but still considerably higher than the day of preparation argued by the applicant. However, it is well known that depending on the importance of the same case for one or the other party, the time invested in preparing for oral proceedings may vary. The board has no concrete indications to cast doubt on the accuracy of the figures provided by opponent 4. Therefore, taking into account opponent 4's travel expenses, the appellant must reimburse ( 1299.27 + 9306)= 10605.27 EUR to opponent 4." 
• 
  

EPO 

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

T 2474/19 - Whose error and what errors, for R.139?

Key points

• In this decision about a request for correction under R.139 of a withdrawal of an appeal, the Board gives some important considerations about what kind of errors can be corrected and whose errors are involved. 
  
  
• "By letter dated 17 October 2022, received by the EPO on the same day and published in the European Patent Register on the following day, the appellant declared that it was withdrawing the appeal."
• As a comment, letters are not published in the Register in the sense of Art. 127 EPC, but are part of the file that is public under Art. 128 once the application is published.
• "By letter dated 19 October 2022, received by the EPO on the same day and published in the European Patent Register on the following day, the appellant declared that it was retracting its "request" to withdraw the appeal.  It requested a correction under Rule 139 EPC because the "request" to withdraw the appeal had been filed erroneously.".
• The Board: "By letter dated 17 October 2022, the appellant unambiguously and unconditionally withdrew the appeal. This withdrawal was not a "request", as per the wording of the appellant, but a binding procedural declaration with the immediate effect of terminating the appeal proceedings. At the same time, the substantive issues settled by the contested decision at first instance became final (see G 8/91, OJ EPO 1993, 346, Reasons 11.2 and 12). As a further consequence, the appeal proceedings were closed without a substantive decision."
• By reference to successful petition for review R3/22, the Board must decide on the request for correction. 
• " it can be left open whether Rule 139, first sentence, EPC is applicable to a withdrawal of the appeal (see the case in T 695/18 [R 3/22] where the board, in its communication under Article 15(1) RPBA 2020 of 4 January 2023, answered this question in the negative because there was no pending case in these circumstances)."
• The Board recalls that R.139 "deals with cases in which an error of expression in a declaration has occurred, or in which a mistake in a document is the consequence of (such) an error. Such concrete errors can only occur when the declaration is actually being made"
• "errors in the run-up to the declaration being made, such as errors relating to the general motivation for the declaration, the decision-making process or the assumptions on which the declaration is based, are irrelevant"
• "it is not sufficient to prove that a divergence occurred between the true intention of the party and the declaration filed by its professional representative; rather, it is additionally required that this divergence was caused by an error on the part of the person who was competent to make the decision on the procedural act before the EPO. Therefore, as a rule, in cases where the party is represented by a professional representative, the error pursuant to Rule 139 EPC must be an error of the professional representative in expressing the professional representative's own intentions"
• "This result is corroborated by the determination of the relevant errors within the meaning of Rule 139, first sentence, EPC. Indeed, if it is only the errors that occur when the declaration is actually being made (see section 2.4.1 above) that matter, then it is clear that it is the acting person's error which must be considered, i.e. the error of the person who actually filed the document to be corrected."
• "to determine the original intention of the acting person, it is precisely the relevant errors within the meaning of Rule 139, first sentence, EPC that must be taken into account, and not an overriding general motivation such as "filing an admissible appeal" '
• "It is the professional representative's original intention when making the declaration at issue that matters. In this context, the appellant submitted that its professional representative instructed the draft of a submission to withdraw the appeal and then signed the withdrawal letter and filed it with the EPO. The board is unable to see in this declaration any error within the meaning of Rule 139, first sentence, EPC. When signing and filing the document, the professional representative actually intended to make a declaration of exactly this content and did not commit any errors relating to the declaration, its content or its transmission."
• The client had actually gave the following instructions:  "Our client's decision has been made on the abandonment of the above-identified case that will lead to the nonappearance to the oral proceedings and non-submission of the response to the oral hearing. Instead, they have also decided the filing a new patent application divided from the above-identified case."
• 
  
• "it is not relevant that the professional representative originally intended to carry out the appellant's instructions but erroneously failed to do so. This error was committed by the professional representative in the run-up to the declaration, apparently because they no longer had the appellant's instruction in mind before proceeding to declare the withdrawal of the appeal. The alleged original intention to carry out the appellant's instructions is thus tantamount to an irrelevant overriding motivation, comparable to the general intention to meet all of the requirements of the law and/or the case law to achieve a certain legal consequence."
• " typical cases where a correction request under Rule 139, first sentence, EPC may be allowed concern scenarios where the professional representative intends to take a certain procedural step (for example paying a certain fee via a payment form) but commits a formal error that is visible in the document to be corrected when taking this step (for example erroneously selecting the wrong fee amount in the payment form, or indicating or omitting the wrong payment method in the payment form"
• "in the case in hand a correction would have theoretically been conceivable if, for example, the professional representative had used a template containing two alternative declarations to be ticked (i.e. the withdrawal of the appeal on the one hand and the information that the appellant did not intend to attend the oral proceedings on the other) and had accidentally ticked the wrong alternative (i.e. the former one). Of course, in this scenario the requester's burden of proof that the latter alternative constituted the original intention would be heavy, if the original intention were not immediately apparent"
• 
  

EPO 

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

T 1303/18 - Disclosure of a compound, inherency for Art.54 and Art.123(2)

Key points

• The question is whether the priority is valid.
• "The appellant [proprietor] argued that there was no doubt that the claims as granted and the whole disclosure of [priority application] D49 concerned the same invention within the meaning of Article 87(1) EPC and opinion G 2/98, namely, polymorphic form II of rotigotine."
• "In claim 1 as granted (point II above), the claimed compound is said to be polymorphic form II of rotigotine and is defined by at least one of four properties, namely: (a) a certain X-ray powder diffraction spectrum comprising four peaks with an error margin of ± 0.2, said to be measured with Cu-Kalpha irradiation (1.54060 Å); (b) a Raman spectrum comprising specific peaks with an error margin of ± 3 cm**(-1); (c) a DSC peak with a certain Tonset with an error margin of ± 2°C; (d) [a melting point of 97°C ± 2°C]."
• The Board: "Comparing the definition in terms of property (a) given in claim 1 as granted with the above disclosures in D49 reveals the following differences. - The set of peaks defined for the X-ray powder diffraction spectrum in claim 1 as granted is a set of four peaks, while that in the above disclosures of D49 is a set of 14 peaks. 
• The Board also considers property (b) (Raman spectrum), finding differences; the same applies for properties (c) and (d).
• As to the melting point:  "The melting point is not disclosed [in D49]" ... "no basis exists in D49 for  a melting point of 97°C ± 2°C as defined in claim 1 as granted"
• " in the current case, it is the subject-matter of claim 1 as granted that has to be directly and unambiguously derivable from D49. The appellant [proprietor] pointed out that the patent and D49 disclosed the same methods for characterising the mentioned polymorphic form and that the same figures resulted from this characterisation, thus demonstrating identity of the invention. However, the fact that the same characterisation methods like X-ray diffraction, Raman spectrum and DSC calorimetry are used to describe the disclosed compound in both the patent and D49 plays no role when assessing the above requirement. Also the fact that the patent and D49 share the same figures is irrelevant; what is decisive is whether or not, using common general knowledge, a compound as defined in claim 1 of the patent is directly and unambiguously disclosed in D49 as a whole."
• " The appellant argued that identity between the claimed compound and the compound disclosed in D49 was already evident from the fact that the polymorphic form of rotigotine was designated as form II in both claim 1 as granted and D49. While alleged discrepancies in the definition of form II were merely due to the different sets of analytical data used for defining form II, this did not change the fact that the same compound was disclosed. A polymorphic form of a given compound remained the same regardless of the method used for characterising it."
• "Contrary to the appellant's view, it is the set of analytical data chosen to characterise the compound that gives the skilled person the information necessary to identify the compound referred to. For the reasons set out above, the set of analytical data used in claim 1 as granted is not directly and unambiguously disclosed in D49. Therefore, it cannot be concluded that the compound defined in claim 1 as granted is the same compound as disclosed in D49."
• "the appellant submitted that structural properties allegedly lacking in D49 were implicitly disclosed to the skilled person since they were inherent to polymorphic form II and accessible by using the disclosed analytical methods. "
• As a comment, this argument may run foul of the rule that amendments may not add technical information (G2/10 r.4.5.1). Even if a compound inherently exhibits a  melting point of 97°C, adding a statement to that effect to a patent text may still violate Art. 123(2). However, this position may be controversial. A possible counter-argument could be that there is no change of subject-matter because there is only a single compound "rotigotine form II". This raises, in turn, the epistemological question of what is a compound? And what is the scope of a patent claim directed to a particular polymorphic form of a compound, and how this scope depends on the definition of the polymorphic form? 
• "This argument is not convincing either. Priority has been claimed from a written disclosure (D49) and it is from this disclosure that the skilled person should have been able, at the relevant date, to derive directly and unambiguously, using common general knowledge, the subject-matter of claim 1 as granted. However, as set out above, D49 does not disclose the same compound as that defined in claim 1 as granted."
• "Moreover, even assuming that the skilled person could have been in a position to analyse a sample of the rotigotine form II disclosed in D49, the skilled person would have obtained, inter alia, the whole X-ray powder diffraction spectrum and Raman spectrum (which are in fact represented in figures 1 and 5 of D49). However, for the reasons given above, these whole spectra do not constitute an adequate basis for the definition of the polymorphic form of rotigotine as given in claim 1 as granted. "
• "the board sees no inconsistency in the way the opposition division assessed the validity of priority on one hand and the novelty of the claimed subject-matter on the other. In fact, in terms of novelty (see corresponding point below), the relevant prior art is a sample of a polymorphic form of rotigotine, which could have been analysed by the skilled person so as to obtain, inter alia, its whole X-ray powder diffraction spectrum and Raman spectrum. These whole spectra were found by the opposition division to anticipate the definition of the polymorphic form of rotigotine as given in claim 1 as granted."
• "The application of one and the same standard for Articles 54 and 87 EPC does not, however, mean that the conclusions for novelty and validity of priority must necessarily be the same. More specifically, [] a priority application can directly and unambiguously disclose something falling within the scope of a claim of a subsequent application and thus anticipate the subject-matter of this claim while at the same time the latter still includes subject-matter not disclosed in the priority application, such that the priority is invalid."
• In the case at hand, the priority application was not published and not cited as novelty-destroying, so the Board is considering a hypothetical novelty objection if D49 was prior art. Indeed, the compound disclosed in D49 would inherently have the melting point specified in claim  1 (leaving aside that claim 1 specifies four alternative features) and hence inherently fall within the scope of the claim even if D49 does not disclose the melting point.
• The OD had found that: "The subject-matter of claim 1 of the main request and claim 1 of auxiliary requests 1 and 2 was not novel over the public prior use of rotigotine form II in commercial Neupro**(®) patches which occurred between the earliest and the subsequent priority date."

Partial priority / admissibility

• The Board did not admit the argument based on partial priority:  "In its letter dated 21 August 2020 (point 1.2.1.3 on pages 11 to 14), i.e. after the filing of the grounds of appeal and replies and before the summons to oral proceedings was issued (6 December 2021), the appellant argued for the first time that, should the priority from D49 be considered invalid, the subject-matter of claim 1 as granted should at least be entitled to a partial priority from D49 in accordance with decision G 1/15." The Board: "Decision G 1/15 was published in the Official Journal of the EPO in 2017, i.e. before the oral proceedings held on 15 February 2018 before the opposition division. Therefore, the appellant's defence claiming a right to partial priority could and should have been presented before the opposition division or included at the latest in the statement of grounds of appeal, so as to comply with the requirement to present the complete case at the outset of the appeal proceedings."
• " In its letter dated 21 August 2020, the appellant did not indicate any reason why the defence asserting a right to partial priority was only filed after its statement of grounds of appeal."
•  "The appellant [proprietor] argued that this defence did not constitute an amendment of its appeal case. It only concerned interpretation of law by means of an argument based on a decision of the Enlarged Board of Appeal. Therefore, the appellant was allowed to make this defence at any point during the proceedings. "
• " Contrary to the appellant's view, the defence by which a right to partial priority was invoked was not merely a presentation of a new argument pertaining to the interpretation of law but comprised a new allegation of fact. The appellant namely asserted that priority application D49 directly and unambiguously disclosed in an enabling manner part of the subject-matter of claim 1 as granted, and specifically that claim 1 as granted encompassed this part as an alternative subject-matter by virtue of a "generic "OR"-claim" within the meaning of decision G 1/15 (order). Therefore, the submitted defence would have involved a new factual assessment of the subject-matter of claim 1 as granted and of priority application D49, namely as to precisely which part of claim 1 it was that allegedly enjoyed partial priority and where it was disclosed in D49."
• " As pointed out by the respondents, this new factual assessment would have been complex. This was evident from the fact that in some aspects the subject-matter of claim 1 as granted had been restricted as compared with the disclosure in D49 by inserting characteristics of the claimed compound such as a melting point and further Raman peaks which were not disclosed in D49. 
• As a comment, as the public prior use is full prior art (Art.54(2)) for those parts of the claim for which the priority is invalid, the prima facie relevance of the arguments is not entirely clear. 

EPO 

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

T 2852/19 - Reselling tickets

Key points

• "The invention relates to optimised occupancy of an event. The aim is to avoid seats remaining empty if visitors cannot reach the event location in time (see introduction of the description).
• The invention proposes to automatically determine whether visitors to an event are in a defined area at a certain distance from the venue. GPS data from visitors' cell phones is used for this purpose. If ticket buyers are not in said area shortly before the start of the event, an alert is sent to them and their ticket is resold in case of cancellation."
• " D1 discloses GPS tracking of event visitors within a specific radius, but D1 does not mention reselling a ticket. D1 is considered closest prior art."
• "D1 therefore does not explicitly disclose: (a) dynamically adapting the distance/area with time; (b) requesting a visitor to cancel a seat reservation; (c) offer the seat for resale."
• The Board identifies two effects: effect (i) of features (a) and (b) is optimising the seat occupancy; effect (ii) of features (b) and (c) is to increase the profit by reselling seats shortly prior to the event in case a visitor has cancelled its venue.
• As a comment, possibly cancelling reservations leads the ticket being offered to people on the waiting list thereby increasing seating capacity.
• " The effect (i) is technical. The effect (ii) is non-technical."
• The Board does not comment on the relation between the feature "(b) requesting a visitor to cancel a seat reservation" and the broken technical chain fallacy (T1670/07).
• The Board, after a review of the Comvik approach: "Therefore, the problem may be formulated as [how to] "optimising the seat occupancy and implementing features (J) and (K), i. e. prompting the user to indicate whether they plan to attend the event and offer the seat for sale"."
• Features J and K are: "(J) sending an alert to the user prompting the user to indicate whether they plan to attend the event; (K) offer the seat for sale to another user based on the user indicating that they will not attend the event.."
• "it is obvious in view of the disclosure of D1 that the size of the area is reduced (e.g. from a 5-mile radius at 7:30 PM to a 2-mile radius at 7:45 PM) as an event start time approaches"
• "Feature (b) relates to an economical model, i.e. reselling a ticket by encouraging a visitor to cancel its reservation if it cannot meet the appointment time. The system of D1 reveals that a visitor is reminded of its reservation ("remind a user of a reservation"). D1 further discloses the option to "cancel a reservation if the user cannot meet the appointment time" by mobile phone. It would be obvious that the reminder contains a link or a request to cancel the reservation if the appointment time cannot be met."
• As a comment, it is interesting to see the Board analysing the obviousness of a feature relating to an economic model.
• "Feature (c) is per se obvious, because it relates to a business method, i.e. reselling a ticket (reservation) in the case a visitor cannot arrive in time."
• The Board also finds feature (c) to be suggested by D1.
• "Features (F), (I), (J) and (K) are therefore obvious in view of the disclosure and teachings of D1."
• Note that features J and K were also included in the objective technical problem. 

 

EPO 

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

T 0956/19 - (II) PhD thesis at library

Key points

•  D35 is : "an inaugural dissertation to obtain a doctorate in medicine from the Johannes Gutenberg University in Mainz, presented to the Faculty of Medicine by [Mr. S] (date of the doctorate February 22, 2005)". The filing date of the patent is 26.04.2005, without priority.
• Quotes in machine translation.
• " Appellants II and III claim, inter alia, that the dissertation D35 was publicly accessible at the DNB locations in Frankfurt am Main and Leipzig before the date of the patent application."
• " In the decision under appeal, the opposition division took the view that document D79 did not prove that document D35 was publicly available because, among other things, it was unclear whether the entry in DNB's central catalog of 29 March 2005 referred to the receipt of a physical copy of the document or whether it was merely based on metadata that the University of Mainz had transmitted to the DNB."
• "In declarations D91 and D99, with reference to the data set reproduced above, it is explained that:

  ...  the field with the reference number 7900 records the date (April 6, 2005) on which a physical copy of the dissertation D35 was placed in the DNB's stacks at the locations in Frankfurt am Main and Leipzig;"

• "Declarations D79, D91 and D99 were made by Mr [K] (D79, D91 and D99), ...). The explanations explain the processes in the DNB and the above data set from the central catalog of the DNB. The declarants themselves were not involved in the inclusion of the dissertation D35 in the central catalog and in the holdings of the DNB. Consequently, these declarations were not made by witnesses in the true sense of the word, since the declarants do not testify on the basis of their own perception. Rather, the statements are statements made as representatives of the DNB. Mr. [K]  made his statements in his function as legal adviser (member of the legal adviser) and thus official representative of the DNB in ​​legal matters."

• "There is no reason to doubt the credibility of the declarants or the credibility of their statements, in particular the correctness of the explanations of the central catalog of the DNB and the receipt, recording and public availability of [the] dissertation at the DNB, to doubt."

• "​​The statement in document D52 that copies of dissertation D35 were placed in the DNB magazines in Frankfurt am Main and Leipzig "circa June 2005" and could be ordered via the catalogue, so that they could be viewed by registered users on request and in extracts could be copied does not justify any doubts as to the credibility of the facts documented by Statements D79, D91 and D99, but rather confirms them. The approximate period of public viewing of physical specimens at the Frankfurt am Main and Leipzig locations mentioned in Document D52 not only remains vague and undetermined, but is ultimately left open. Document D52 therefore does not raise any justified doubts about the corresponding declarations D79, D91 and D99,"

• "After a detailed assessment of the evidence, the Chamber has no doubts that a printed copy of [] Document D35 was sent no later than April 7, 2005 at the DNB locations in Frankfurt am Main and Leipzig via the central catalogue, and could be viewed by users and excerpts copied. In view of the Board's lack of even remote doubts about the above evidence, the standard of proof can be left open."

    As a comment, I note that the Board does not expressly discuss whether the librarian is a member of the public (T 834/09) (" the person in charge of the reception and date stamping of an incoming document at a public library is without any doubt a member of the public – just like the residents of a Copenhagen suburb or the crew working in a ship’s engine room – as this staff member is in no way bound by any obligation to maintain secrecy about the publications he/she handles and the content thereof, and after all, his/her very function as a staff member of a public library is to make information available to the public.") 

• Turning to the substantive issues, an interesting question can be left open: "since Appellant I [patentee]  has not submitted any timely and substantiated submissions regarding the disclosure in relation to the clinical usefulness of document D35, a fundamental prerequisite for a discussion of the case law of the Boards of Appeal on the novelty-damaging nature of uncompleted clinical studies, which include a technical and a legal assessment of established facts and not just an abstract legal question. The opponents have therefore rightly objected that the assertion that document D35 is not detrimental to the novelty of the claimed subject-matter since no clinical benefit is disclosed constitutes a substantial change in Appellant I's submissions. The justification for this change - the claim that document D35 clearly did not destroy novelty - cannot be accepted if only because this view could have been put forward at any stage of the proceedings before the opposition division and during the written appeal proceedings."

•  " Consequently, the subject-matter of claim 1 of auxiliary request 1 is not new within the meaning of Article 54 EPC."

• The examination of the other auxiliary requests (see point IX.) could not be completed, which is why the procedure after a decision on the above partial aspects has to be continued for the points that have not yet been decided."

The Board issues the present interlocutory decision, in five member composition. 

EPO 

The link to the decision is provided after the jump.

T 1017/20 - Prima facie

Key points

• 'Prima facie' - the Boards (and opposition division) use the term often when deciding on the admissibility of submissions, but what does it mean exactly?
• " The appellant [patentee] submitted that the opposition division erred when deciding on the prima facie allowability of amended claim 1. It submitted extensive substantive arguments." 
• " The board holds that the appellant's objections do not relate to any incorrect exercise of discretion by the opposition division in its prima facie assessment of the allowability of claim 1 but to the complete substantive analysis of compliance with Articles 84 and 123(3) EPC." 
• " As regards the prima facie assessment, it is not unreasonable to come to the conclusion that the amendment to claim 1 leads to issues with Articles 84 and 123(3) EPC. In particular, the amended wording of claim 1 can, prima facie, reasonably be interpreted according to the two interpretations a) and b) mentioned in the minutes of the first-instance oral proceedings and in the decision under appeal. The fact that a complete examination, taking into consideration the teaching of the description and the common general knowledge of the skilled person, might lead to a different outcome does not make the prima facie analysis unreasonable. Consequently, the decision of the opposition division not to admit the main request was not affected by an error in the use of discretion." 
  
  
• The Board is considering whether to admit the request under Art. 12(6) RPBA, first sentence. The Board has determined that the OD's decision to not admit the request did not suffer from an error. The other exception is that requests can be admitted if "the circumstances of the appeal case justify their admittance".
• " According to the minutes, sections 4.1 to 4.5, 5 and 6, the compliance of the then main request with the requirements of Article 100 b) EPC was discussed. Subsequently, the opposition division formed the opinion that these requirements were not met. Thereupon, the appellant submitted an amended main request, which essentially corresponds to the current main request."
• "In this particular situation, the board holds that the prima facie compliance of the main request with the provisions of Article 100 b) EPC forms part of the circumstances of the appeal case that are to be considered for the purpose of applying Article 12(6) RPBA."
• The Board examines the appellant's arguments.
• "For these reasons, the invention as set out in claim 1 does not, prima facie, meet the requirements of Article 100 b) EPC."
• As a comment, I am not sure if this approach of bringing developments before the OD (discussion regarding Art.83) under the term "circumstances of the appeal case" will become common. 
• "the mere fact that the parties submitted in writing substantive arguments regarding the requirements of Article 100 b) EPC does not justify the admittance of the main request. Otherwise, a party could force a board to admit a request not admitted by the department of first instance by submitting substantive arguments on appeal. This would not be in accordance with the main provision of Article 12(6), first sentence, RPBA - namely that a board is not to admit requests which were not admitted in the proceedings that led to the decision under appeal."
• "To sum up, the main request in the appeal was not admitted by the opposition division and, prima facie, does not resolve [i.e. fails to address] an issue which was raised in the notice of opposition and on which the opposition division presented a negative opinion before and during the first-instance oral proceedings. In this situation the board holds that the circumstances of the appeal case do not justify the admittance of the main request."

EPO 

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