J 0004/23 - Getting on the list without passing the EQE (not)

Key points

• "The requestor (the appellant) asked to be entered on the list of professional representatives before the EPO. He addressed the Vice-President in charge of the Directorate-General for Legal and International Affairs (VP5) and requested an exemption from the requirement of passing the European Qualifying Examination (EQE) as set out under Article 134(2)(c) EPC [i.e. the EQE]. For his request, he relied on the following information published on the EPO's website at the time of the request (emphasis added): "... in accordance with Article 134(7) EPC, the Vice-President in charge of DG5 is entitled to grant exemption from requirements (a) and (c) of Article 134(2) EPC (see Decision of the President of the EPO dated 1 December 2011 delegating his powers to decide on requests for exemption from requirements for entry on the list of professional representatives, OJ EPO 2012, 13)".

• IV. In reply, VP5 informed the requestor that the erroneous information on the website had been rectified but that the request for an exemption could not be granted since there was no possibility of being exempted from having to pass the EQE other than the so-called grandfather clause under Article 134(3) EPC, which was not applicable to the requestor's case."

• After some back and forth, the requester is at the Legal Board. T" The appellant further submitted that it was he who had found this "crack" in the system and that he should therefore be able to benefit from it. The "crack" had also been closed since as the EPO had removed the information from its website, so there was no danger for the EPO that anybody else could claim an exemption in the future. But in his case, he could rely on what had been stated on the website when he had filed his request for an exemption."

• The Board dismisses the appeal.

• "The facts of the case are not disputed. The appellant has not passed the European qualifying examination (EQE). He also confirmed during the oral proceedings that there was no legal basis in the EPC under which the EPO could grant an exemption from the requirement under Article 134(2)(c) EPC to pass the EQE for being entered on the list of professional representatives. Indeed, no such legal basis exists.

  The appellant also confirmed at the oral proceedings before the Board that he relied solely on the principle of legitimate expectations, also called the principle good faith, for his main request."

• "As set out above under point 2., the principle of legitimate expectation is not unrestricted, and it is inherent in the principle that a person can only successfully invoke an expectation on which they could, on an objective basis, legitimately rely. It must be established that, on an objective basis, it was reasonable for a requestor to have been misled by the information on which they relied, here the information of the EPO's website. The appellant has not sufficiently and convincingly demonstrated in his favour that this is the case."

As a comment, I'm not 100% sure if getting on the list without passing the EQE should not be ruled out a priori (except for cases of new contracting states acceding to the EPC under  Article 134(7) EPC). 

•  After some analysis: "Hence, even if the appellant had the expectation that an exemption for the requirement set out in lit. (c) of Article 134(2) EPC could be granted, this expectation was not legitimate."
  
  
• "The principle of the protection of legitimate expectations

• 2. The principle of the protection of legitimate expectations is well established in proceedings before the EPO. This is also made clear in the decisions referred to by the appellant (see above point VII., in particular the decisions of the Enlarged Board of Appeal G 2/97, G 5/88 and G 5/93). It is thus not necessary to invoke, as the appellant did, further legal principles, such as legal certainty or the rule of law, in support of the principle's existence.

  However, the principle of the protection of legitimate expectations does not give a carte blanche to the person relying on it. Rather, it is subject to several limitations (see in general Case Law of the Boards of Appeal, 10th edition 2022, III.A.2.2). First and foremost, not any expectation held by a person is automatically a legitimate one within the meaning of this principle. Whether an expectation is legitimate must be assessed by applying the principle to the facts of the case and, depending on the circumstances of the case, the relief sought may or may not be granted.

  It is therefore inherent in the principle of the protection of legitimate expectations that a person can only successfully invoke an expectation on which they could, on an objective basis, legitimately rely. As put by the Enlarged Board in G 2/97, the erroneous information from the EPO must objectively justify their conduct (G 2/97, Reasons 4.1, citing T 460/95). Therefore, it must be established that, on an objective basis, it was reasonable for the appellant to have been misled by the information on which he relied (see also J 27/92, Reasons 3.2; on the requirement to know the relevant legal provisions, see J 10/17, Reasons 3.3)."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1813/22 - The disappearing commercial device

Key points

• The preliminary opinion in G 1/23 proposes that commercially available products will be deemed to be enabled.
• The Board, on suficiency: "According to the last feature of claim 1 (M1.13), the formation value is to be determined according to a method set out in the description, notably in paragraph 43 of the patent. Accordingly, this method should make use of a specific apparatus ("Paper PerFect Formation Analyzer Code LPA07" manufactured by OPTEST Equipment Inc.) and of a specific test procedure outlined in section 10.0 of its operation manual ("LPA07_PPF_Operation_ManuaI_004.wpd 2009-05-20")."
• "As argued by the respondent, at the filing date of the patent this specific apparatus was seemingly available and so was presumably its manual of operation. The Board however cannot agree with the respondent's conclusion that for this reason the invention defined in claim 1 meets the requirement of sufficiency of disclosure (see point 8 of the respondent's reply to the appeal grounds). Such conclusion could only be confirmed if the apparatus mentioned in the cited paragraph as well as the manual were available over the entire lifespan of the patent (see for example Reasons 3.3 of T 1714/15)."
• "In the present case, the specific machine referred to in paragraph 43 of the patent as well as its operation manual containing the information necessary to perform the test according to its section 10.0, are undisputedly no longer available"
• The appeal decision was taken about 10 years after the filing date.
• Now, as a question, is this patent application enabling as prior art? Was it at the publication date of the patent application?
• How about the EP application as a prior right under Art.54(3) ? 
• "The Board therefore confirms its provisional opinion set out in its communication under Article 15(1) RPBA and concludes that the ground for opposition pursuant to Article 100(b) EPC prejudices maintenance of the patent."

EPO 

The link to the decision and an extract of it can be found after the jump.

Will we get an on sale bar in G 1/23?

Key points

• A few quotes from the observations of the President of the EPO, dated 15.10.2024:
• "Prior art should be understood broadly and Article 54(2) EPC does not make any distinction between products sold or otherwise available on the market, natural substances, documents, or any other disclosure."
• "Should the decision of the EBoA follow the preliminary opinion, the current practice would need to be revised, by differentiating the assessment of products and naturally occurring substances on the one hand, and documents, on the other."
  
  
• "Products available on the market or naturally occurring substances are part of the state of the art with all their properties, i.e. in the specific form in which they were put on the market and in which they are readily available."
• Compare recent decision T2510/18, which found a claim directed to a naturally occurring compound to be novel over a man-made plant extract containing that compound.
• Perhaps the EPO's analysis is to be read as: "Products available on the market or naturally occurring substances are part of the state of the art with all their properties, i.e. in the specific form in which they were put on the market respectively in which they are readily available [in nature]."
  
  
• The following observations of the President are likely restricted to the case of products available on the market or naturally occurring substances: 
• "“Enablement” or “reproducibility” in the sense as derivable from G 1/92, i.e. understood in the same way under Article 54 EPC as under Article 83 EPC, finds no legal basis in the EPC."
• "requiring “enablement” or “reproducibility” to confirm prior art status, finds support neither in the literal meaning of Article 54(2) EPC, nor in the system of the EPC, nor in the preparatory works for the Convention."
• "requiring prior art to be disclosed in an enabling manner would remove from the state of the art practically “anything under the sun”." 
• Cf. the US Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303 (1980) (about patenting a genetically engineered, i.e. human-made, bacteria]: "The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter [under 35 U.S.C. 101] to "include anything under the sun that is made by man.""
  
  
• "The purpose of the requirement of sufficiency of disclosure under Article 83 EPC is to exclude hypothetical or speculative applications, which cannot be put into practice."
• "For a product on the market this  requirement [i.e. Art.83] is of no relevance, because the product exists and therefore it cannot be hypothetical or speculative"
• I recall that the primary purpose of Article 83 EPC is to deal with cases where the inventor can carry out the invention but would like to keep it a secret and obtain a patent. In particular, Article 83 EPC prevents strategies of proprietors that attempt to provide that after the expiry of a patent (e.g. on a product), the proprietor can still have a de facto monopoly as the sole supplier of the invention on the market based on their trade secrets (e.g., the preparation method for that product; unless and until someone independently invents the same invention).
  
  
• "Accordingly, non-reproducible products which are available on the market (or in nature) belong to the state of the art, including all their analysable properties and features, e.g. their composition."
• "non-analysable features" are also possibly part of the prior art, according to the observations: "As regards non-analysable features of a prior art product, excluding them from prior art might lead to similarly problematic results as excluding readily available products from prior art by creating a legal fiction that features which were present in a readily available product do not belong to the state of the art because they could not be analysed at the relevant date. ... Such a legal fiction would ignore the fact that a product was available on the market with all its features and might open the possibility to patent products which have already been put on the market.
  
  
• Hence, G 1/23 could cause an upheaval of the case law on novelty and enablement, and prior art in general (also for Article 56 EPC). 

EPO 

The link to the document is after the jump.

T 2510/18 - Traditional knowledge, alleged biopiracy, and novelty of natural products

Key points

• Article 53 EPC
•  The Board, in translation: "in the early 2000s, the respondent [proprietor] conducted research on traditional anti-malarial remedies among the populations of French Guiana. As part of this project, a survey was conducted in 2001. 117 people from different communities in French Guiana responded to this questionnaire. The traditional remedies used for the treatment of malaria were collected. The project led to the identification of 45 curative recipes involving the use of 27 species of plants. The researchers studied these traditional remedies and subsequently focused their efforts on studying the plant Quassia amara. As a result, the researchers managed to identify an anti-malarial molecule, SkE."
• The molecule is now claimed: claim 1 is a compound claim directed to the molecule SkE.  
• "These observations [submitted by the appellants/opponents] were not contested by the respondent [proprietor] and can therefore be considered as facts."
•  "As indicated by the respondent [proprietors] , none of the appellants' allegations concern the commercial exploitation of the invention, a prerequisite for concluding that the invention would be excluded under Article 53 EPC."
• " the commercial exploitation of this molecule, of the drug containing it and of its isolation process is not contrary to morality, good customs or public order. On the contrary, there is a great need for drugs against malaria, and finding new antimalarial drugs is a mission whose aim is to treat populations at risk and save lives."
• "In the present case, the original development of the invention and the historical process by which the SkE molecule was discovered and isolated have no relevance to the commercial exploitation of the present claims, which require only the isolation of SkE from the plant Quassia amara and its administration to patients. The development of an invention is therefore distinct from its commercial exploitation once it has been achieved."
• "even if the respondent's conduct during the discovery and development of the invention as described by the appellants above were considered to be contrary to good morals and public policy, this does not concern the commercial exploitation of the invention, and therefore does not constitute a reason to exclude the claimed invention from patentability under Article 53(a) EPC."
• I refrain from adding comments on this point of the decision. 
• 
  
• Novelty of natural products
• Claim 1 recites the molecule. I understand that the molecule as such is present in the leaves or stems of a particular plant, Quassia amara. The claim does not recite 'isolated' or 'purified', only the structural formula of the molecule. Is it novel? 
• EPO Guidelines, G-II,3.1 "To find a previously unrecognised substance occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature can be shown to produce a technical effect, it may be patentable. An example of such a case is that of a substance occurring in nature which is found to have an antibiotic effect."
• Here, implicitly, "patentable" means not excluded by Article 52(2), novel and inventive, in combination. Hence, the Guidelines here kind of say that there are no novelty issues on the ground that the compound, as such (and as claimed), existed in nature before. In particular, "it", i.e. the substance, may be patentable, not only the method or use wherein the technical effect is achieved. 
• I'm looking for the EPO case law that supports the statement in the Guidelines.
• Of course, the German decision is BPatG 28.07.1977, 16 W (pat) 64/75, GRUR 1978, 238 Antamanid (no open access copy known to me): "Aber selbst wenn der beanspruchte Stoff Antamanid nachweisbar als solcher in der Natur vorkommen würde, stünde diese Tatsache einer Patentierung nicht entgegen." "Das beanspruchte Antamanid ist neu. Geht man von der Identität des beanspruchten Antamanids und dem im grünen Knollenblätterpilz enthaltenen Stoff als, so steht dieser Umstand der Neuheit der vorliegenden Erfindung nicht entgegen. Nach § 2 PatG gilt eine Erfindung nicht mehr als neu, wenn sie zur Zeit der Anmeldung in öffentlichen Druckschriften bereits derart beschrieben oder im Inland bereits so offenkundig benutzt ist, daß danach die Benutzung durch andere Sachverständige möglich erscheint. [this is the old German law] Am Anmeldetag war aber kein Sachverständiger in der Lage, das cyclische Dekapeptid Antaminid mit der in Anspruch 1 angegebenen Formel zu benutzen. Ihm war der Stoff als solcher und erst recht dessen wertvolle Eigenschaft, nämlich die Wirkung einer absolut tödlichen Dosis Phalloidin aufzuheben, unbekannt, Die Tatsache der Existenz dieses Stoffes in der Natur ist aber für sich genommen noch kein neuheitsschädlicher Umstand, sofern nicht die Kenntnis des Durchschnittsfachmanns von dieser Existenz hinzukommt. Nur ein öffentlich zugänglicher Naturstoff ist im Sinne des Gesetzes nicht mehr neu." . 
• I would be grateful to learn about the corresponding decision of the Technical Boards of Appeal.
• The court in the Antamanid case referred to the identical sentence in the first edition of the EPO Guidelines. 
• "Documents D2, D3 and D5 therefore do not explicitly disclose the SkE molecule or SkE in combination with other compounds. Rather, these documents disclose traditional antimalarial remedies, i.e. preparations derived from the leaves or stems of a particular plant, Quassia amara."
• 3.14: "even if one accepts the presence of SkE in the extracts of D2, D3 and D5, and even interpreting the scope of claim 1 in the broadest possible manner, as the applicants argue, for example to include the plant Quassia amara and its extracts disclosed in D2, D3 and D5, a direct and unambiguous disclosure of the technical features of claim 1, or even of the SkE molecule alone or in combination with other compounds, is still necessary to conclude a lack of novelty. 
•  See also point 4.4.2: " Although the scope of claim 1 may include preparations as set out above,"
• "There is no question of implicit disclosure of the SkE molecule or its combination with other compounds in these documents either. According to the consistent case law of the Boards of Appeal, a prior art document destroys the novelty of the claimed subject-matter if it follows directly and unambiguously from that document, including features implicit for the person skilled in the art. However, an alleged disclosure can only be considered "implicit" if the person skilled in the art immediately recognizes that nothing other than the alleged implicit feature is part of the disclosed subject-matter ... This situation does not apply to the SkE molecule and its combination with other compounds."
• "The fact that the SkE molecule may be contained in the extracts of D2, D3 and D5 does not amount to an implicit disclosure either. According to the decision of the Enlarged Board of Appeal in G 2/88 (points 10 and 10.1 of the Reasons), the question is what has been made available to the public, not what could be inherently contained in what has been made available to the public. Even if that decision concerned a use, the same applies in the present case: the presence of the SkE molecule in the leaves of Quassia amara or their decoction has not been made available to the public by the extracts of D2, D3 or D5."
• G 2/88 was about second non-medical uses. However, the remark is there in point 10.1 - imprecise in my view: "the Enlarged Board would emphasise that under Article 54(2) EPC the question to be decided is what has been "made available" to the public: the question is not what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example). Under the EPC, a hidden or secret use, because it has not been made available to the public, is not a ground of objection to validity of a European patent. In this respect, the provisions of the EPC may differ from the previous national laws of some Contracting States, and even from the current national laws of some non-Contracting States. Thus, the question of "inherency" does not arise as such under Article 54 EPC. Any vested right derived from prior use of an invention is a matter for national law (see, in this connection, e.g. Article 38 of the Community Patent Convention, not yet in force).". 
• Note, indeed 'secret prior use' is no prior art. That, however, is not very relevant to the issue of novelty of a second non-medical use claim over a public prior use of a method (with the same method steps) as at hand in G2/88, nor to the public prior use of the extracts for treating malaria in the case at hand. The EBA's term 'hidden prior use' is unclear to me, I'm unaware of a legal definition of it.
• In my view, at least for product claims and method claims, it is  relevant "what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example)."
• Thanks to the IP Kat comment: "Lord Hoffman's comments in Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1995] UKHL 14 (26 October 1995): 
  "There is an infinite variety of descriptions under which the same thing may be known. Things may be described according what they look like, how they are made, what they do and in many other ways. Under what description must it be known in order to justify the statement that one knows that it exists? This depends entirely upon the purpose for which the question is being asked. Let me elaborate upon an example which was mentioned in argument. The Amazonian Indians have known for centuries that cinchona bark can be used to treat malarial and other fevers. They used it in the form of powdered bark. In 1820, French scientists discovered that the active ingredient, an alkaloid called quinine, could be extracted and used more effectively in the form of sulphate of quinine. In 1944, the structure of the alkaloid molecule (C20H24N2O2) was discovered. This meant that the substance could be synthesised. 
  Imagine a scientist telling an Amazonian Indian about the discoveries of 1820 and 1944. He says: "We have found that the reason why the bark is good for fevers is that it contains an alkaloid with a rather complicated chemical structure which reacts with the red corpuscles in the bloodstream. It is called quinine." The Indian replies: "That is very interesting. In my tribe, we call it the magic spirit of the bark." Does the Indian know about quinine? My Lords, under the description of a quality of the bark which makes it useful for treating fevers, he obviously does. I do not think it matters that he chooses to label it in animistic rather than chemical terms. He knows that the bark has a quality which makes it good for fever and that is one description of quinine."
• Incidentally, I believe there were indeed some national laws in Europe that at one time considered even secret prior use to be part of the state, but I would have to find a source for more details.
• In my article in EPI Information 2020/4, I wrote that "it is established case law that the ‘falling within’ test for lack of novelty can be satisfied based on inherent features of the prior art subject-matter", footnote: "T 12/81 hn.1, see e.g. also T 680/00, r.3. The exceptions are, of course, the special rules for first and second medical uses of Art. 54(4) and (5) EPC 2000, and the special rule for second non-medical use claims of G 2/88; however, these exceptions could also be seen as special rules for claim interpretation (cf. T 308/17, r.7). The remark in G 2/88, r.10.1 that ‘the question of “inherency” does not arise as such under Article 54 EPC’ is probably restricted to use claims as considered therein."
• T12/81, point 6 of the reasons: "If inventions relating to chemical substances defined by claims of this kind are patented, it necessarily follows that the resulting patent documents, once they enter the state of the art, will be prejudicial to the novelty of applications claiming the same substance although in a different and perhaps more closely defined form. This is the case with the present application."
• The present Board does not seem to be of the view that  G 2/88, r.10.1  is limited to use claims.
• Note that the Board expressly states that the claim is novel even if understood as covering "the plant Quassia amara and its extracts" (such extracts undisputedly being known from D2, D3 and D5) (point 3.14; see also point 4.4.2. Hence, the claim covers extracts that were described in scientific articles, e.g. D2: M. Vigneron et al., Journal of Ethnopharmacology 98 (2005), 351-360. These extracts are now patented.
• "D2 is an article that describes a study of antimalarial remedies used in French Guiana. The study found that the most commonly used species was Quassia amara alone or in combination with other plant species [...]. D2 describes that this plant is used in the form of decoctions [i.e. extracts] in water". 
• Hence, D2 discloses technical teachings about the plant and the extract and how to use it in a practical manner. It does not seem that the inventor of the patent discovered the plant or found a practical, technical use for the plant or a use of the extract from it. 
• I believe that in the Antamanid case, there was no known technical use of the poisonous mushroom (death cap) from which it was isolated. 
• Also, the court in that case did not explicitly state that the claim (reciting the compound as such) covered the mushroom. The court held that it could leave open the question of whether "eine ausdrückliche Beschränkung des Stoffanspruchs [to synthetic compounds] unnötig ist, weil es sich von selbst verstehen könnte, daß unter den Schutz des Patents nie das Naturvorkommen als solches fällt, kann hier wegen der mangelnden Nachweisbarkeit der Identität beider Stoffe unentschieden bleiben. Die Regelung im britischen Patentgesetz in Art. 4 Abs. 7 deutet in die Richtung, daß chemische Stoffe, die in der Natur als solche vorkommen, nicht unter das Patent fallen."
• The Board: "SkE was not disclosed in Documents D2, D3 and D5, and the molecule was not made available to the public through the use of Quassia amara leaves to prepare remedies disclosed in those documents."
• 
  
• On inventive step: "Although the scope of claim 1 may include preparations as set out above, the technical features of the claim relate to a specific compound. Therefore, the objective technical problem must also include the provision of a compound. Furthermore, as stated by the respondent, and not disputed by the appellants, the SkE molecule has low toxicity"
• "The objective technical problem can therefore be formulated essentially as proposed by the respondent, namely to provide a specific compound, or a preparation comprising a specific compound having good antimalarial activity and low toxicity. "
• The Board's review of inventive step is then quite detailed and fact-specific.
• "Therefore, the subject-matter of claim 1 involves an inventive step."
• "The same conclusion applies to claims 2 to 6, which depend on claim 1 and relate to a medicament comprising the SkE molecule"
• Claim 3 is a second medical use claim, in translation: "Medicament according to claim 2, for its use in the prevention and/or treatment of malaria". Claim 2 specifies "Medicament comprising the molecule of formula I according to claim 1 and a pharmaceutically acceptable carrier."  Depending on the interpretation of the claim term  "a pharmaceutically acceptable carrier", claim 3 could possibly cover exactly the already known use of the aqueous extracts of the plant to treat malaria, as known e.g. from D2 - which describes the traditional knowledge.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1762/21 - On Art. 88(4) EPC

Key points

•  The proprietor argued that Paragraphs [0007], [0010], [0020] to [0023], [0026] to [0032], [0048], [0051], [0052], [0054], [0060], [0063] and [0064] of the priority application provided a basis for the subject-matter of claims 1 and 7 of the main request, so priority was valid.
• "Point 4 of the Reasons of G 2/98 referred to by the appellant [opponent] does not imply any different criterion in the assessment of added subject-matter and the validity of a priority claim [than the headnote of G2/98]. The relevant passage reads: "It follows that priority for a claim, i.e. an 'element of the invention' within the meaning of Article 4H of the Paris Convention, is to be acknowledged, if the subject-matter of the claim is specifically disclosed be it explicitly or implicitly in the application documents relating to the disclosure, in particular, in the form of a claim or in the form of an embodiment or example specified in the description of the application whose priority is claimed, and that priority for the claim can be refused, if there is no such disclosure."
• "This passage is in line with and does not go beyond the order of G 2/98, as it states that, in order for a priority claim to be valid, a specific disclosure, be it explicit or implicit, has to be present in the application from which the priority is claimed. The term "deutlich" in the German version of the decision [and in Art.88(4) EPC, see below], which is a translation of the term "specifically" in the English version, does not imply that only a clear claim may enjoy a priority claim. The term qualifies the disclosure in the application from which priority is claimed. This disclosure should be specific ("deutlich") in the sense that the subject-matter for which priority is claimed is to be derived from the disclosure in a direct and unambiguous way."
• "Whether this subject-matter as such is unclear is not decisive as long as the same (unclear) subject-matter is directly and unambiguously disclosed in the application from which priority is claimed. In view of Article 88(4) EPC, it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which priority is claimed. In the passage in point 4 of the Reasons of G 2/98, these items, as derived from the expression "in particular", are simply listed as exemplary parts of the application documents."
• Article 88(4) EPC reads: "If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted, provided that the documents of the previous application as a whole specifically disclose / deutlich offenbart / révèle d'une façon précise such elements. "

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1088/21 - Oppo rejected, ARs not admitted

Key points

• "The Opposition Division came to the conclusion that none of the grounds of opposition brought forward by the Opponent prejudiced maintenance of the patent, and rejected the opposition.

  IV. The opponent appealed, arguing, inter alia, that claim 1 of the patent lacked novelty in view of D1. They requested that the decision be set aside and the patent revoked."

• The Board: "Therefore claim 1 of the main request lacks an inventive step in view of D1 (Articles 52(1), 56 and 100(a) EPC)."

• "Auxiliary requests 1 to 6 were submitted for the first time with the reply to the grounds of appeal.  They are amendments in the sense of Article 12(4), first sentence, RPBA, and may be admitted only at the discretion of the Board, subject to the provisions of Article 12(4) to 12(6) RPBA. "

• "the question of inventive step, for claim 1 of the patent as granted in view of D1, was raised in the notice of opposition. Auxiliary requests representing fall-back positions in reaction to such an attack could and should have been filed with the reply to the opposition (Article 12(6), second sentence, RPBA). And indeed, some auxiliary requests were then filed, that were not pursued on appeal."

The qustion is: why should the proprietor have submitted them, vis-a-vis the judicial review in appeal? The OD would not have commented on them at any rate"

• "auxiliary requests 3 to 6 are furthermore clearly not suitable for addressing the issue of lack of an inventive step in view of D1, identified above with regard to the main request (Article 12(4), fifth sentence, RPBA), for the following reasons [giving one sentence reasons why the feature of each auxiliary request does not provide for an inventive step over D1]
• The patent is revoked.    

 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0967/22 - Decision after four months

Key points

• The decision was taken on 07.05.202 and issued in writing on 12.09.2024.
• No Communication under Art. 15(9) RPBA to the parties and the President of the Boards of Appeal is visible in the online file as of this blog post's writing.
• Obviously, some summer holidays may have been a cause for the delay, but the communication could still have been sent. 
• The communication may have been included in the non-public part of the file. 

EPO 

The link to the decision and an extract of it can be found after the jump.

D 0001/22 - A disciplinary case - and the UPC

Key points

•  This is an appeal by the President of the Council of epi against a decision of the Disciplinary Committee to dismiss an appeal against a professional representative. The alleged misconduct is that the professional representative "had failed to transfer a Belgian patent from a company owned by the complainants to them as individuals, resulting in the lapse of the patent."
• The DBA, in reasoning that could be important for the question of who - which (quasi) judicial body -  exercises disciplinary oversight over acts of professional representative in proceedings before the UPC: "the jurisdiction of the disciplinary bodies of epi and the EPO as established by the RDR does not cover any and all conduct or activities of a professional representative"
• "It is true that the preamble of the current version of the epi Code of Conduct (last amended on 11 November 2023, OJ EPO 2024, A35) no longer refers to activities related to the EPC ("This Code, adopted under Articles 4(c) and 9(3) of the Founding Regulation, contains the recommendations of Council as to the conduct and activities of Members in so far as related to Members' profession"). However, this does not alter the conclusion set out in the previous point. The Board agrees with the further reasons given in decision D 19/99 (Reasons 5.1) as to why the application of the European disciplinary rules (pursuant to Article 134(8) EPC 1973, corresponding to current Article 134a(1)(c) EPC) is restricted to acts by a European professional representative connected with a European patent and the EPC, as follows.

  - It follows from Article 134(1) and (5) EPC that professional representatives are, in principle, the only ones entitled to act in all proceedings instituted by the EPC. Therefore, the disciplinary power delegated by the contracting states in Article 134a(1)(c) EPC must necessarily be understood as relating to their activity as such.

  - It is a settled principle of law in the jurisdiction of the same contracting states that provisions enacting disciplinary sanctions that restrict the free exercise of a profession are, like those of criminal law, to be interpreted strictly, and therefore narrowly. Such an interpretation is also necessary to avoid conflicts of jurisdiction between the EPO and national disciplinary bodies. As a consequence of the narrow interpretation of the texts imposing disciplinary sanctions, it is not possible to have these same texts govern, by analogy, other ancillary activities that a professional representative might also engage in.

  - Thus, the disciplinary powers of the bodies set up under Article 134a(1)(c) EPC clearly apply only to the activities of professional representatives in relation to their privilege of representation, i.e. those relating to the grant of a European patent. 

• " The case in hand is, however, exclusively concerned with a national patent. While this national patent served as a priority application for a European patent, the complaint is only about the omission of a transfer of said national patent under the applicable national law. The national parts of the European patent, which claim priority of the national application, are not at issue. The complaint is not related to any provision of the EPC either. The defendant's activities on which the complaint is based thus have no connection with a European patent and provisions of the EPC applicable to the national parts of any such patent (e.g. Articles 65 and 141 EPC). The fact that the defendant is a professional representative does not as such establish the link between the facts of the complaint and the EPC as required by the above case law."

• " the Disciplinary Committee rightly denied its jurisdiction and dismissed the complaint."

• Obiter: " The Board agrees [...] that a professional representative cannot hide behind the veil of a company to avoid the application of European disciplinary rules."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2173/22 - Public prior use in the Village Grocer in Petaling Jaya Malaysia

Key points

• I should mention firstly that the Village Grocer appears to be a nice supermarket in a suburb of Kuala Lumpur.
•   D30 is "Vanilla Mango Flavoured Formulated Milk for Pregnant Women", Mintel GNDP, Record ID: 2577737, July 2014. D30a is here. 
• "D30 is a record extracted from the Mintel GNPD database. It was not disputed that Mintel GNPD is generally acknowledged in the field of nutritional compositions to be a reliable database of commercially available products. D30 reproduces the information on the packaging of a product purchased in a public establishment. The record is also accompanied by images of the packaging, which were provided in colour and higher quality in D30a. An inspection of the images in D30a confirms that the product description and the ingredients disclosed in D30 truly reflect the information on the purchased product. In addition, D30 discloses that the product was purchased by one of Mintel's shoppers in a supermarket called "Village Grocer" in Petaling Jaya 47810, Malaysia."
• "Therefore, D30 is a valid piece of evidence of public prior use. The information it contains demonstrates beyond reasonable doubt that the product described therein was publicly available before the priority date of the patent."
• The Board finds claim 1 to be novel but obvious over D30

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2036/22 - Excluding admitted evidence

Key points

•  "The board has doubts as to whether, by way of criticising the opposition division's procedural handling of D41, a piece of documentary evidence which was admitted into the proceedings by the opposition division and taken into consideration in substance in the decision under appeal could actually be excluded from the proceedings by the board (for further considerations in this respect, see Article 114(1), Rule 81(1), Rule 84(2) EPC). The approach that on appeal, such an exclusion of evidence admitted or introduced into the proceedings by the opposition division is generally not possible implies that a patent proprietor's legal position in relation to such a new piece of evidence presented during opposition proceedings is that it is to be given, during opposition proceedings, an adequate opportunity to respond to that new evidence (see Article 113(1), Rule 81(3) EPC). "
• As a comment: and if not given by the OD, and that point is raised in appeal, the Board should give it, remitting the case where appropriate.
• Separately: "D41 had been filed before the opposition division prior to the date set according to Rule 116 EPC. Any reaction thereto, e.g. by means of experimental report A048, should have been filed with the statement of grounds of appeal at the latest. No justification has been provided as to why this was not done. The state of the proceedings at which A043 [A048 ?] was submitted thus spoke against admittance."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0160/22 - Swiss -type claims in 2024 / contraception

Key points

• Claim 1 of the patent reads: "Use of 20 myg of ethinyl estradiol and 3 mg of drospirenone for the manufacture of a medicament for female oral contraception comprising a flexible, extended regimen, the regimen comprising: ..."
• Question for trainees: what do you know about the filing date of this patent?
• Surprise: it's no divisional! PCT filed in 2005, PCT entry in 2006, first communication from the examining division: 2012 (!), second in 2014, third in 2015, summons in 2016, intention to grant in 2017, notice of opposition in 2018, decision in 2021, decision in appeal: 2024. Which is within the 20-year patent term.
• Second question: what's (allegedly) wrong with the claim?
•  "the question to be answered for determining whether the dosage regimen of claim 1 is limiting is whether the method of female oral contraception comprising the dosage regimen in claim 1 may be regarded as a method of treatment by therapy. This issue was controversial but can be left unanswered since, even if the dosage regimen was limiting, the subject-matter of claim 1 would not involve an inventive step, as outlined in point 2 below."
• "The prevention of pregnancy is not in general a therapy according to Art.53(c), because pregnancy is not an illness (T74/93 r.2.2.3). "
• I wonder if that case would be decided in the same way nowadays.

EPO 

The link to the decision can be found after the jump.

T 0250/20 - Four oral proceedings

Key points

• In translation: " European Patent No. 2,430,207 relates to a metal part obtained by deformation of a metal strip having an improved appearance. The metal parts thus obtained are more particularly intended, but not exclusively, for the manufacture of skin parts for land motor vehicles."
• "A first oral procedure [in appeal] took place on 21 December 2022, at the end of which an adjournment was decided. "
• A second oral procedure was held on 25 September 2023 at the end of which an adjournment was again decided. 
• A third oral proceeding was held on 11 March 2024, during which it was decided that the main request filed with the letter of 29 February 2024 was not admitted into the proceedings, that the new auxiliary request 1 filed during the oral proceedings (hereinafter "amended auxiliary request 1") in replacement of the previous auxiliary request 1 was admitted and that the subject-matters of its two claims 1 and 2 alone corresponded to the subject-matters of claims 10 and 11 of the patent as granted, respectively. At the end of the oral proceedings an adjournment was again decided.
• A final oral procedure took place on 23 August 2024 at the end of which the operative part of this decision was pronounced. 
  
  
• There is a lot in the decision (but less than could be expected, as the operative requests are significantly limited compared to the claims as granted).
• On the issue of cross-party reliance on arugments: "As stated by Applicants I and II [the opponents], there is no legal provision preventing a party, Applicant I in this case, from resuming in appeal proceedings an objection, line of attack or argument that was raised and maintained by another party in opposition proceedings, in this case Applicant II. The provisions of Articles 12(3) and (4) RPBA do not in any way prevent this way of proceeding. There is no specification therein of what the respondent seeks to allege through the interpretation of the indefinite or definite articles used, namely that only the party that raised and maintained the objection in opposition appeal proceedings would be entitled to pursue it in appeal proceedings. Such a restriction is not inferred from the wording of Articles 12(3) and (4) RPBA.

  This is supported by established case law according to which, for example, an opponent may rely on a ground of opposition invoked by other opponents either during the opposition proceedings or during any subsequent appeal proceedings, cf. JCR, IV.C.2.1.6, T 920/20, point 4.4 of the grounds."

EPO 

The link to the decision and an extract of it can be found after the jump.

R 0005/23 - No petition for review against interlocutory decisions

Key points

• The Enlarged Board (in three-member composition) clarifies that petitions for review cannot be filed against interlocutory decisions of a Board of Appeal.
• The Enlarged Board in headnote (translated): "An interlocutory decision by which a Board of Appeal, in its composition as a substitute Board, has rejected as inadmissible a motion for recusal directed against its three members on the grounds of suspicion of partiality is not a decision against which a petition for review within the meaning of Article 112a EPC can be filed."
• Point 6 of the reasons confirms this holds for any interlocutory decision.
• The Enlarged Board: "The legal consequence of a successful petition for review is, according to Article 112a(5) EPC, the annulment of the decision and the "resumption of the proceedings before the Boards of Appeal"."
• "Accordingly, the review procedure under Article 112a EPC, as the relevant provisions are worded, does not in any event concern decisions which do not terminate proceedings before a Board of Appeal as regards the person concerned."
• " the Enlarged Board of Appeal is of the opinion that the application of Article 106(2) EPC in the context of the review procedure is out of the question. " 
• As a comment, a petition for review filed after the final decision can then also be based (exclusively) on a procedural violation of an interlocutory decision, provided that the petitioner shows that the outcome of the final decision could have been different (and more favourable for it) without the procedural violation; cf. J37/89, r.4.2-4.3 for Art.106(2).

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2360/19 - Rebutting the presumption on priority entitlement

Key points

• In T 0844/18, the Board had decided - after an extensive debate between the parties - that the priority of one of the major patents for 'CRISPR/Cas' was invalid because the PCT application was filed by the company and the priority application (a US provisional application) was filed by the inventors and there was no assignment in place from one of the inventors to the PCT applicants at the PCT filing date.
• The Board applied the established case law at that time (in my view).
• The Enlarged Board, in G 1/22, where the question was whether an informal / oral assignment of the priority right was possible, added the remark in para. 128 that: "An agreement (regardless of its form) can only be held against parties who were involved in the facts establishing the agreement. Co-applicants for the priority application who were not involved in the subsequent application may not be deemed to have consented to the reliance on the priority right by the other co-applicants for the priority application (a situation underlying e.g. T 844/18). The subsequent applicant(s) may however still be entitled to claim priority since the rebuttable presumption of entitlement does not depend on whether the involved applicants acted as co-applicants at any stage."
• This is quite remarkable, given that a large number of divisional patent applications in the patent family of T 0844/18 were still pending. 
• The present case is about a divisional application originating from the same PCT application ('819) filed in 2013.
• "15. The opponents are thus arguing that the appellants [proprietors] have not provided evidence that they are entitled to the priority rights they claim. However, this is precisely what the presumption in G 1/22 states: that the appellants do not have to provide such evidence, but the opponents have to rebut the presumption. There is no evidence that rebuts this presumption in the present case."
• The Board then discusses a settlement between the inventor Mr. Marrafini and the proprietors of the present patent, concluded in 2018. "However, it is common ground between the parties that the inventorship dispute between Marraffini/Rockefeller University and the appellants has been settled in 2018. The entire purpose of the inventorship dispute was to have Marraffini named as inventor, and the Rockefeller University as proprietor, of PCT 819 (and some other PCT applications). "
• " Such settlement of the dispute was, by definition, "retroactive", as putting an end to a dispute that arose in the past, and thus relates to the (earliest) date on which priority was claimed (see G 1/22, reasons 100, 109)."
• G 1/22 r.100: "Even the requirement that the transfer of the right of priority needs to be concluded before the filing of the subsequent European patent application (above point 68) is questionable in the Enlarged Board's view. If there are jurisdictions that allow an ex post ("nunc pro tunc") transfer of priority rights (see the extensive discussion of such transfers under US law in T 1201/14), the EPO should not apply higher standards."
• "However, for clarification, it is recalled that even in the absence of any evidence regarding the settlement of the inventorship dispute, the result would have been the same, based on the presumption of a valid priority claim, which has neither been rebutted by this nor any other evidence on file (see again G 1/22, reasons 100). As also reiterated in G 1/22, reasons 114: There is always a party who is entitled to claim priority, even if this party has to be determined in national proceedings (with this being the same if the dispute is settled outside the courts, by way of amicable settlement or arbitration, as is the case here). Not the least, the present case clearly shows that only the rebuttable presumption of a priority right guarantees that there is a party being entitled to claim priority, and that this right is not "lost" somewhere in an inventorship dispute. Hence the entitlement to priority was validly claimed."
• Im unsure about how this paragraphs should be understood.
• "G 1/22 brings legal certainty to all involved, in particular for the parties that the system was designed to protect."
• The priority is considered to be valid.
• After the clear 'instruction' of the Enlarged Board in para. 128, this is perhaps not a surprising outcome. 
• However, generally, the substantiation of the rebuttal of the presumption of G 1/22 by the opponents should not be a burden to prove a negative. 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0964/21 - Appeal against cost apportionment

Key points

• "The patent proprietor and opponents 2 and 3 (appellants) each filed an appeal against the interlocutory decision of the opposition division, in which the opposition division found that European patent No. 2 879 636 in an amended form [namely Auxiliary Request 12] met the requirements of the EPC. The appellant-proprietor's appeal lies also against the o.pposition division's decision to apportion costs against it."
• AR-12 before the OD is the current main request: "The appellant-proprietor requested as a main request that the decision under appeal be set aside and the patent be maintained on the basis of auxiliary request 12 underlying the impugned decision, or as an auxiliary measure that the appeals of appellant-opponents 2 and 3 be dismissed (i.e. maintenance of the patent in the version found to be allowable by the opposition division). Furthermore, it requested that the opposition division's decision as regards the apportionment of costs be set aside."
• Which is interesting, because then the proprietor no longer contests the decision of the OD on the higher ranking sets of claims. Is the appeal against the cost apportionment still admissible? (Rule 97(1)).
• Rule 97(1): "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal. "
• "The Board therefore concludes that the subject-matter of claim 1 of the main request extends beyond the content of the application as filed, contrary to the requirement of Article 123(2) EPC."
• "Since the further amendments in claim 1 of the auxiliary request, relating to the provision of an additional transmission layer, do not affect the above finding, as also acknowledged by the appellant proprietor, the patent may not be maintained on the basis of this request, also for non-compliance with the requirement of Article 123(2) EPC."
• "The appellant-proprietor requested that the opposition division's decision as to the apportionment of costs be set aside.

  The formulation of that decision is set out in the reasons of the impugned decision (cf. page 35) as follows:

  ".. the Opposition Division apportions to the Proprietor the costs of the remuneration of the representatives of the parties in respect to oral proceedings and for the undue delaying of the procedure in respect of late filing." 

• " the Board wishes to emphasise that an order on the apportionment of costs under Article 104 EPC must clearly state (at least) the kind of costs to be borne by the burdened party. The order referred to above does not in any way comply with this requirement. In this context, it should be noted that the order is so vague that it is not possible to clearly determine in particular,

  (a) whether the costs for the representatives in preparing for the oral proceedings are included, and

  (b) whether the costs for the representatives for both oral proceedings are included."

• "It should also be noted that the addition in the above-mentioned formulation "and for the undue delaying of the procedure in respect of late filing" does not provide a definition of any kind of associated costs and can only be seen as a hint to the reasoning for the decision, which seemingly was based on the principle of procedural economy. 

• " Furthermore, the opposition division's decision also fails in terms of substance. Irrespective of the question of whether a decision under Article 104 EPC constitutes a discretionary decision, it should first be noted in view of the submissions of appellant-opponent 2 that discretionary decisions can also be reviewed by the Boards in terms of their merits. ... A substantive review of a discretionary decision is therefore not excluded according to established case law. [i.e. G7/93]"

• "the fact that the patent proprietor did not contest the validity of one of the priorities of D22 [a prior right under Article 54(3) EPC] until the first oral proceedings before the opposition division cannot justify a different apportionment of costs in the present case."

• " it is noted that the Board also considers the appellant-proprietor's argument that the late filing of amended requests was also due to the late filing of the objections based on D22 to be convincing. "

• "there are no reasons that would justify a different apportionment of costs. Thus, the Board finds it appropriate that each party shall bear its own costs. Consequently, the decision of the opposition division as to the apportionment of costs is set aside."

• 
  

EPO 

The link to the decision can be found after the jump.

T 1423/22 - Calculating new medical data

Key points

• Claim 1 of the main request reads as follows:

  "1. A method for estimating glomerular filtration (GFR) rate in an animal subject, the method comprising:

  (i) measuring the concentration of free symmetrical dimethylarginine (SDMA) in a blood sample from the subject;

  (ii) measuring the concentration of creatinine in a blood sample from the subject; and

  (iii) comparing a value resulting from an equation comprising the product of the concentration of creatinine and the concentration of free SDMA to one or more standard values that correlate to glomerular filtration rate in the animal subject."

• Patent, para. [0002]:  " It is important to be able to measure renal function quickly and accurately. For example, the dosing of drugs must be adapted for patients with renal insufficiency. Thus, making an accurate assessment of renal function is a requirement in clinical medicine."

• " The claimed method differs from that proposed in document D1 in step (iii) (see point 11. above), i.e. in that a value resulting from an equation comprising the product of the sCr and SDMA concentration values is compared to one or more standard values that correlate to the GFR in the animal subject. This was not contested."

• "The claimed method has a technical character as it solves the technical problem of estimating the GFR, a clinical parameter relevant in renal diseases, based on measuring the blood concentrations of two markers (SDMA and sCr). Step (iii), which is non-technical, contributes to solving this technical problem, together with measurement steps (i) and (ii), because the GFR estimated for an animal subject is determined by the recited calculation of a product of measured SDMA and sCr concentration values and a comparison of this product to one or more standard values that correlate to the GFR in the animal subject."

• " the skilled person immediately understands from the wording of the claim that the comparison to standard values, which correlate to a particular GFR, directly and necessarily leads to the estimation of the GFR in the animal subject for which the blood markers were measured. The missing explicit link of how the steps of the claimed method result in the estimation of the GFR can thus be implicitly understood from the method steps. "

• " none of the appellant's arguments as to why the claimed method was obvious when selecting document D1 as the starting point for the assessment of inventive step are persuasive."
• As a comment step (iii) can be a mental step. It could also be computer-implemented, with implicitly a step of displaying the resulting calculating information, perhaps.
• As a further comment, the result of step (iii) is not used to improve step (i) and (ii).
• Cf. T 1741/22 (yesterday's post) for a different approach (it seems).

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1741/22 - Displaying medical data

Key points

• The case was publication code [B] by the Board, i.e. of general interest.
"Claim 1 of auxiliary request 10 contains the following limiting features (board's labelling):
(a) A system for analysing glucose monitoring data indicative of a glucose level in a bodily fluid, comprising: an input device, a data processing device, an output device, a display device, and machine-readable instructions that are executed by the data processing device,
(b) [wherein the machine-readable instructions cause the data processing device to] receive continuous glucose monitoring data via the input device, the continuous glucose monitoring data indicating a glucose level sampled for a person in a bodily fluid at a plurality of sample times over a measurement time period in a continuous glucose level measurement, and comprising a plurality of continuous glucose profiles, each of the glucose profiles comprising a plurality of glucose values with a glucose value for each of the plurality of sample times over the measurement period, wherein the plurality of glucose profiles is determined on different days by sampling the glucose level on each day over the measurement period, wherein the measurement period is 24 hours;
(c) [wherein the machine-readable instructions cause the data processing device to] for the plurality of continuous glucose profiles, determine a plurality of minimum glucose values and/or a plurality of maximum glucose values for a selected group or each of the plurality of respective sample times
(d) [wherein the machine-readable instructions cause the data processing device to] provide first display signals representing the plurality of minimum glucose values and/or the plurality of maximum glucose values for the selected group or each of the plurality of respective sample times;
(e) [wherein the machine-readable instructions cause the data processing device to] output the first display signals via the output device to the display device; and display a first graphical representation according to the first display signals on the display device."
• Essentially, the system has a display to display minimum and maximum values from 24 hours of received "continuous glucose monitoring data" (from a wearable glucose measurement device,  I guess). The system itself is not a continuous glucose monitor.
• "The appellants [proprietors] argued that the distinguishing features of claim 1 of auxiliary request 10 over D1 were features (c) and (d), i.e. determining and displaying minimum/maximum glucose values. [D1 shows percentiles]. [The proprietors] stated that the technical effect of the distinguishing features was to provide an "improved analysis of glucose monitoring data". In particular, "the plurality of minimum/maximum glucose values may correspond to medically relevant outlier values", which "would otherwise be averaged out in the context of known methods employing percentiles as in D1". "
• The question is whether these features provide for an inventive step. The Board approaches it from the question of whether the features provide a technical contribution ("contribute to the technical character of the invention").
• As an aside, a test of the Board's reasoning is if it makes sense if the distinguishing feature was "calculating the third harmonic eigenvalue" (instead of minimum/maximum, just making up a fancy term here) and the clear and convincing evidence is that this value, hidden in what was considered random noise before the invention, turns out to be life-saving information. That helps to distinguish between 'this is obvious for any scientist in the field but I don't have the right prior art at hand' and 'it is very smart but not technical'.
• The Board: "if the mere generation of "new data" were sufficient to contribute to the technical character of the invention, Article 52(2) and (3) EPC would contain meaningless limitations of patentable subject-matter, as e.g. mathematical methods are supposed to constantly generate "new data"."
• The Board then sets out that steps C and D are not actual measurement steps and are not, for that reason, technical.
• Note that even including a technical measurement step may not necessarily mean that the further steps of processing the resulting data are automatically technical in the sense of G1/19 (T 0489/14, r.7.4). 
• "The appellants [proprietors] referred to T 2681/16 and to the Guidelines for Examination in the EPO in support of their view. "
• Dealing with the argument based on the GL first in this post: "the Guidelines for Examination in the EPO (in its applicable version of March 2022 and also in its current version of March 2024), section G-II, 3.3, which relates to the technical contribution of mathematical methods, lists "providing a medical diagnosis by an automated system processing physiological measurements" among "examples of technical contributions of a mathematical method". As providing a "medical diagnosis" - whether done by a physician or by an automated system - is devoid of any technical character (see e.g. G 1/04, Reasons 5.3 and 6.3), this example is clearly erroneous. As there is no further explanation, let alone a reference to any case law, the board sees no reason to speculate on how the Guidelines came up with this example (cf. Article 20(2) RPBA)."
• I will quote the relevant parts in G1/04 in full. It would have been helpful if the TBA had identified the relevant sentences - especially because G 1/04 was about Art. 52(4) EPC 1973, i.e. about industrial applicability, not about non-inventions of Art. 52(2) EPC 1973. 
• I will highlight below some parts of G1/04, cited paragraphs, that are at first sight a bit at odds with the TBA's reasoning based on the same paragraphs of G1/04, to the extent I can understand the TBA's reasoning in all its brevity. 
• G 1/04: "5.3 Since diagnostic methods referred to in Article 52(4) EPC are inventions within the meaning of Article 52(1) EPC (cf. point 4 above), it follows that, in a situation where the deductive medical or veterinary decision phase is a purely intellectual exercise, i.e. a step of a non-technical nature, such a method must necessarily further include preceding steps (cf. point 5 above) of a technical nature, in order to satisfy the requirements of Article 52(1) EPC. The subject-matter of a claim including technical and non-technical features may satisfy the requirements of Article 52(1) EPC if the non-technical features interact with the technical features in order to bring about a technical effect (cf. T 603/89 (OJ EPO 1992, 230), point 2.5 of the Reasons). 
• "6.3 In the judgment of the Enlarged Board of Appeal, the qualification of an activity as having a diagnostic character may not depend on who is involved. The wording of Article 52(4) EPC is unequivocal in that the exclusion relates only to the method, and not to the person carrying out the method. Furthermore, no indication can be found in the preparatory documents to the EPC which would restrict the exclusion of diagnostic methods from patentability to a certain group of persons such as medical or veterinary practitioners. Also, as already mentioned under point 6.1 above, defining the medical or veterinary practitioner on a European level within the framework of the EPC is difficult if not altogether impossible. To allow the grant of a European patent to depend on the involvement of such a person would therefore introduce legal uncertainty into the patent granting procedure. Thus, whether or not a method is a diagnostic method within the meaning of Article 52(4) EPC should neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medicinal or non-medicinal support staff, the patient himself or herself or an automated system. This also reflects the well-known fact that technological advances penetrate human and veterinary medicine and the medical and veterinary profession. Today, and more than at any time before, technology is about to fundamentally alter how and by whom health care is administered, with the result that human and veterinary medicine is gradually being reshaped by technology. In a changing medical or veterinary environment brought about by technological progress, the need for reconsidering the relationship between medical or veterinary practitioners and non-medicinal support staff will become more pressing than ever before. This will have implications for the non-medicinal support staff in terms of profile and expansion in that a great variety of diagnostic and other information will have to be procured and gathered by these persons. Moreover, no distinction should be made in this context between essential method steps having diagnostic character and non-essential method steps lacking it. The reason for this judgment lies in the fact that, again contrary to the requirement of legal certainty, the assessment of the factual and legal situation in connection with these issues could change considerably in time. As has been mentioned under point 6.1 above, consideration might be given to exploring the possibility of protecting the activities of medical and veterinary practitioners by other means on the national level."
• The Board also " disagrees with the finding in T 2681/16 that providing an overall "measure" of the glucose variability and a prediction of glycemic events amounts to a technical effect.". "In the present case and in the case underlying T 2681/16, where the "physical reality" is typically the "patient's blood", the interaction with the physical reality ends once blood glucose measurements are carried out, directly on the relevant physical entity "blood", or indirectly e.g. on another bodily fluid [note; and these physical steps are not claimed in the patents] The [note: actually claimed steps of the ] provision of overall glucose variability and a prediction of glycemic events are mathematical steps or intellectual activities which take place in the absence of this interaction with the physical reality and are therefore not "measurements" in this sense."
• "generating (and displaying) further data by an evaluation or interpretation of these measurements (as done according to features (c) and (d) here) amounts to "measurements" generated merely by a cognitive or mathematical exercise that is inherently non-technical. "
• G 1/19 r.98: "Calculated status information or physical properties concerning a physical object are information which may reflect properties possibly occurring in the real world. However, first and foremost, they are mere data which can be used in many different ways. There may exist exceptional cases in which such information has an implied technical use that can be the basis for an implied technical effect. Still, in general, data about a calculated technical effect is just data, which may be used, for example, to gain scientific knowledge about a technical or natural system, to take informed decisions on protective measures or even to achieve a technical effect. The broad scope of a claim concerning the calculation of technical information with no limitation to specific technical uses would therefore routinely raise concerns with respect to the principle that the claimed subject-matter has to be a technical invention over substantially the whole scope of the claims"
• G 1/19, r.128 mutatis mutandis: " In the Enlarged Board's view, calculated numerical data reflecting the physical behaviour of a system [from measurements] usually cannot establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflects the behaviour of a real system underlying the [measurement]. Only in exceptional cases may such calculated effects be considered implied technical effects (for example, if the potential use of such data is limited to technical purposes"
• See also r.98: "calculated status information or physical properties concerning a physical object are information which may reflect properties possibly occurring in the real world. However, first and foremost, they are mere data which can be used in many different ways. There may exist exceptional cases in which such information has an implied technical use that can be the basis for an implied technical effect. Still, in general, data about a calculated technical effect [?] is just data, which may be used, for example, to gain scientific knowledge about a technical or natural system, to take informed decisions on protective measures or even to achieve a technical effect. The broad scope of a claim concerning the calculation of technical information with no limitation to specific technical uses would therefore routinely raise concerns with respect to the principle that the claimed subject-matter has to be a technical invention over substantially the whole scope of the claims (see point E.I.b above, referring to T 939/92)."
• See also the broken technical chain fallacy as reviewed in T 1670/07: "the Board sees something of a well known argument that could be termed the "broken technical chain fallacy" after decision T 1741/08 - GUI layout/SAP. This decision dealt with the fairly common situation that arises in connection with graphic user interfaces (GUIs) where a technical effect might result from the user's reaction to information. The decision essentially concluded (see point 2.1.6) that a chain of effects from providing information to its use in a technical process is broken by the intervention of a user. In other words, the possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user. This applies to the present case because any possible technical effect depends on the user's reaction to the itinerary."
• These observations are without prejudice to the question of whether claims involving the display of medical diagnostic data should benefit from the exception of G1/19 r.98 and r.128 of an implied technical use and effect of the calculated or displayed data, the possible argument being the potential use of the data is (practically, realistically) limited to medical purposes (methods of treatment of patients) and that medical purposes are technical purposes.

EPO 

The link to the decision and an extract of it can be found after the jump.