R 0013/22 - Patent revoked, opponent unhappy & diagnostic method

Key points

• The opponent was "European Society of Human Reproduction & Embryology". The title of the patent is "IMAGING AND EVALUATING EMBRYOS, OOCYTES, AND STEM CELLS." 
• The OD has ex officio raised an objection based on Art.53(a) with R.28(c) EPC regarding the commercial use of human embryos.
• In the decision, the OD found that the ground of Art.53(a) did not apply because there is a distinction in the EU biotech directive between inventions for diagnostic purposes applied to human embryos and useful to it, the latter not excluded from patentability.
• O2 raised an objection regarding Art.53(c), diagnostic methods.
• The OD found the claim to be allowable under Art.53(c) because the "third step"  of G 1/04, of diagnosis stricto sensu is not recited in the claim (this is the step that is a " purely intellectual exercise" according to G 1/04, but if you omit it from the claim, there is no objection under the diagnostic method prong of Art.53(c).
• Hence, the OD concluded the claim is allowable under Art.53(a) because it is a diagnostic method and, at the same time, found that it is not a diagnostic method and therefore allowable under Art.53(c). I refrain from comments on this point. 
• Claim 1 as granted is directed to:  "A method for assessing good or poor developmental competence of a human embryo". I have not studied what the patent suggests doing in case of poor developmental competence (potential in the application as filed) of an embryo, though the embryo appears to be in vitro when it is subjected to the measurements. 
• The proprietor disapproves the text of the patent shortly before the hearing in appeal. There was no preliminary opinion of the Board on the issue of Art.53.
• The opponent/appellant expressly requests oral proceedings and a decision on the issue of Art.53
• The Board revokes the patent under Art.113(2)  without giving reasons on Art.53.
• The opponent files a petition for review.
• The Enlarged Board: "The Enlarged Board is thus of the view that the non-holding of the oral proceedings, the non-consideration of the Article 53 EPC objection, and the non-referral of questions to the Enlarged Board of Appeal cannot be considered to have resulted in any prejudice to the Petitioner that would lead to the Petitioner being adversely affected by the decision to revoke the patent within the meaning of Article 112a(1) EPC." 
• " For a board to refer questions to the Enlarged Board of Appeal under Article 112a EPC certain conditions need to be fulfilled. Amongst these conditions is that the referral questions must not have merely theoretical significance. An example of such theoretical questions would be if the board could reach the same decision regardless of the answer (see G 3/98, para 1, and T 547/08, para 4, last para). Some further conditions are that the questions must be relevant for deciding the case in question (see T 2136/16, para 8.1 to 8.3); and that the answer to the referred questions must be essential for the board to reach a decision on the appeal in question (see T 154/04, para 2). None of these conditions apply in the present case. The Board was able to revoke the patent without needing an answer to the referral questions submitted by the Petitioner."
• As a comment, should proprietors withdraw all claim requests that the Boards consider unallowable if such withdrawal is procedurally possible at the end of oral proceedings (and if a petition for reviews is not considered) to avoid the creation of unfavourable case law?

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/r220013eu1

1. Article 112a(1) EPC states that:

"Any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review?"

Article 107 EPC states:

"Any party to proceedings adversely affected by a decision may appeal?"

The Enlarged Board sees no reason to give "adversely affected" in Article 112a(1) EPC a different meaning from that given to it in Article 107 EPC. The case law on "adversely affected" and Article 107 EPC is thus of relevance to the interpretation of this term in Article 112a(1) EPC.

2. The Petitioner argues that it was adversely affected by the non-consideration in the Decision of its Article 53 EPC objection and the non-referral of questions to the Enlarged Board - see para 3 of the Petition.

3. Articles 112a(1) and 107 EPC both refer to the adverse effect being from a/the decision, not the reasoning set out in the decision. The Decision was to revoke the patent.

4. The Board's decision to revoke the patent was thus fully in line with the requests of the Petitioner during the appeal proceedings.

5. The patent has been revoked due to the patentee withdrawing its approval of the patent text. As stated in T 2434/18 at point 4 of the reasons:

"Furthermore, as clarified in decision T 186/84, the examination as to whether the grounds for opposition laid down in Article 100 EPC prejudice the maintenance of the patent becomes not merely superfluous but impossible since the absence of a valid text of the patent precludes any substantive examination of the alleged impediments to patentability."

The Enlarged Board considers this to be a correct statement of the law on this subject. The Board was no longer in a position to consider the Petitioner's Article 53 EPC objections in the absence of a valid text.

6. For a board to refer questions to the Enlarged Board of Appeal under Article 112a EPC certain conditions need to be fulfilled. Amongst these conditions is that the referral questions must not have merely theoretical significance. An example of such theoretical questions would be if the board could reach the same decision regardless of the answer (see G 3/98, para 1, and T 547/08, para 4, last para). Some further conditions are that the questions must be relevant for deciding the case in question (see T 2136/16, para 8.1 to 8.3); and that the answer to the referred questions must be essential for the board to reach a decision on the appeal in question (see T 154/04, para 2).

7. None of these conditions apply in the present case. The Board was able to revoke the patent without needing an answer to the referral questions submitted by the Petitioner.

8. Also pertinent to the present case are T 520/01, T 193/07 and T 1569/11. In T 520/01, para 4.1, the board, referring to G 3/98, para 1, did not maintain the patent on grounds other than those to which the question related, and thus refused the party's referral request.

9. In T 193/07, an issue was whether the opponent 2- appellant II could be an appellant when the decision it was appealing against had revoked the patent. The opponent 2-appellant II objected to the non-treatment of its novelty objection by the opposition division, which had revoked the patent on other grounds. Opponent 2-appellant II sought a wide interpretation of the term "adversely affected" in Article 107 EPC, one that was not limited to a loss of rights but "open for case law to take care of the specific circumstances of each case" ? see para XIV of T 193/07.

10. In T 193/07, the board noted that the opposition division had revoked the patent, which fully complied with the request of opponent 2. The board considered that a party is only adversely affected if the order of the appealed decision does not comply with its request. Hence, in T 193/07, the opponent 2-appellant II was not adversely affected ? see para 2.1.2. In reaching this conclusion, the board was following the case law of the boards, according to which, in cases where the order of the decision of the opposition division is the revocation of the patent, an opponent who requested revocation of the patent in its entirety is not "adversely affected by" said decision within the meaning of Article 107 EPC, irrespective of the reasons given in the decision ? see para 2.3 of T 193/07.

11. In T 1569/11, the opposition division revoked the patent. This was fully consistent with the request of the opponents in the opposition procedure that the patent be revoked in its entirety. Opponents I and III were thus not adversely affected, and their appeals were inadmissible ? see T 1569/11, para 1.1. The patent was revoked under the ground of opposition of Article 100(b) EPC, whereas the opponents wished to see it revoked under the ground of opposition of Article 100(c) EPC, a ground of opposition that the opposition division found not to prejudice the maintenance of the patent. The board in T 1569/11 considered that the opponents' appeals demonstrated a misunderstanding of the nature and purpose of opposition appeal proceedings, which are not to re-examine a patent but to decide whether or not a first instance decision is correct ? see T 1569/11, para 1.2.

12. Therefore even if the oral proceedings had been held, there would have been no possibility of discussing the Article 53 EPC objections, or a need to refer questions to the Enlarged Board of Appeal.

13. Turning now to the Petitioner's adversely affected argument based upon Article 113(2) EPC, that was presented for the first time at the oral proceedings before the Enlarged Board. This is a further refinement of the Petitioner's arguments that an opponent can be adversely affected by the revocation of a patent if the revocation decision does not deal with its actual objections to the patent. This argument has already been dealt with above. Even if the Enlarged Board were to accept the Petitioner's interpretation of Article 113(2) EPC, the Petitioner would be suggesting that an opponent can be adversely affected by an erroneous interpretation of the EPC that leads to the revocation of the patent. The Enlarged Board disagrees, such a situation would not adversely affect an opponent, if the consistent approach to "adversely affected", set out in the case law discussed above, is followed. The Enlarged Board thus finds this new argument of the Petitioner unconvincing.

14. The Enlarged Board is thus of the view that the non-holding of the oral proceedings, the non-consideration of the Article 53 EPC objection, and the non-referral of questions to the Enlarged Board of Appeal cannot be considered to have resulted in any prejudice to the Petitioner that would lead to the Petitioner being adversely affected by the decision to revoke the patent within the meaning of Article 112a(1) EPC.

Order



For these reasons it is decided that:

The petition for review is unanimously rejected as being clearly inadmissible.