T 1261/21 - Selections from lists

Key points

• Claim 1 of auxiliary request 26 is based on claim 1 of the application as filed; with three features selected from three lists.
• "in claim 1, the deodorisation time and the deodorisation temperature are limited based on a disclosure of converging numerical ranges or converging elements of the same feature (also named "converging alternatives" in some board decisions) in claims 3 and 4 of the application as filed, and the triglyceride composition is limited based on a list of non-converging alternatives in claim 10 of the application as filed."
• "The "gold standard" is to be applied universally to assess whether amendments to a claim comply with Article 123(2) EPC (G 2/10). In this case, the criteria specified in T 1621/16 are helpful."
• "T 1621/16 contains the following ruling (see Catchword):
  "1) When fall-back positions for a feature are described in terms of a list of converging alternatives, the choice of a more or less preferred element from such a list should not be treated as an arbitrary selection, because this choice does not lead to a singling out of an invention from among a plurality of distinct options, but simply to a subject-matter based on a more or less restricted version of said feature.
  2) A claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if:
  - the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and
  - the application as filed includes a pointer to the combination of features resulting from the multiple selections."
• "The board concurs with the view expressed in T 1937/17 that the first criterion of point 2) of the Catchword of T 1621/16 ("the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution") should not be considered a criterion in establishing whether there is a direct and unambiguous disclosure for the combination of features resulting from a multiple selection"
• "Otherwise, the board shares the conclusion reached in T 1621/16 that the choice of a more or less preferred element from a list of converging elements (or alternatives) should not be treated as an arbitrary selection because this choice does not lead to a "singling out" (see point 1 of the Catchword of T 1621/16); and that in general a pointer to the combination of features resulting from multiple selections is necessary to meet the requirements of Article 123(2) EPC"
• "the assessment of situations like the one underlying T 1621/16 should not be treated in the same way as amendments resulting from selections from two or more lists of non-converging alternatives ""
• "the board prefers the term "converging elements" over "converging alternatives". To the board, "alternatives" seems to imply that there are real alternatives having no overlap with each other. However, where the broadest feature, such as a numerical range, simply converges towards the narrowest feature, fully lying within the broadest feature and not merely partly overlapping it or lying beside it, as in the case at hand, it seems misleading to use the term "alternatives". Thus, in the case at hand, the board prefers the term "converging elements"."
• "the mere fact that features are described in terms of lists of more or less converging elements (converging alternatives) does not give the proprietor carte blanche to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed and that any amendment is only allowable under Article 123(2) EPC if it complies with the gold standard. This is particularly relevant where an application as filed provides a large reservoir of options and alternatives to be selected and combined to create a vast number of embodiments as in the case underlying T 1133/21"
• "the assessment of compliance with Article 123(2) EPC in situations like the present one should be case specific, as also stated by the opposition division (see page 26, third paragraph of the decision under appeal). Factors playing a role in this assessment are, inter alia, the number of elements (alternatives) disclosed in the application; the length, convergence and any preference in the lists of enumerated features; and the presence of examples pointing to a combination of features (see point 2.16 of T 1133/21)." 
• "A pointer is an (implicit or explicit) indication or hint towards the combination of features in question. The pointer needs to be suited to demonstrate that the claimed combination of features is envisaged in the application as filed. Such information must be provided in the application as filed. Typically, it consists of an example or embodiment disclosed in the application which demonstrates that the combination of features was already envisaged in the application as filed, e.g. by the fact that the new combination of features falls within an example. The existence of a pointer must exclude that arbitrary new combinations of features are created which are merely conceptually comprised in the application as filed."
  
• Example 1 is a sufficient pointer in the case at hand.
• "The board does not take issue with the fact that these experiments of example 1 not only fall within the scope of claim 1 but also within an even further restricted scope of more preferred options."

EPO 

The link to the decision and (an extract of) the decision text are provided after the jump.

T 1654/22 - Counting to two with the Boards

Key points

• If a claim is novel by involving two selections from two lists, how many distinguishing features does it have?
• D2, claim 36 teaches a preparation method with as one component, "a local anaesthetic selected from the group consisting of amide and ester type local anaesthetics or a combination thereof
  
• The Board: "Mepivacaine is explicitly disclosed in the list of suitable anaesthetics recited in [the description of D2]. An embodiment of the method of claim 36 wherein the local anaesthetic is mepivacaine thus results from a single selection in D2 and is part of the direct and unambiguous disclosure of D2. " The Board refers to this embodiment as embodiment a).
• "The opposition division concluded that the subject-matter of the main request and auxiliary requests 1-8 was anticipated by the method of claim 36 of D2 as applied to mepivacaine, and thus clearly considered this embodiment a) to belong to the state of the art under Article 54(2) EPC. Nonetheless, the opposition division disregarded the same embodiment a) as starting point for the assessment of inventive step, for lack of an example or pointer to this embodiment. The appellant - proprietor also submits that embodiment a) is not a suitable starting point for the assessment of inventive step."
• "The Board does not concur with these positions.

  There is no requirement in the case law that an embodiment of the state of the art must be exemplified for it to be considered in the assessment of inventive step. There is likewise no requirement that the prior art contains any pointer, suggestion or incentive to select a particular embodiment for further development for this embodiment to qualify as a starting point in the problem solution approach."

• "The mere fact that the use of mepivacaine is not exemplified does not mean either that D2 is speculative or not enabled in this respect. This is because D2 discloses examples showing the successful use of other anaesthetics, namely bupivacaine, tetracaine and, especially, the closely related lidocaine, whose physicochemical and pharmaceutical properties are very similar to those of mepivacaine"

• "For these reasons, the above embodiment a), i.e. the method of claim 36 of D2 as applied to mepivacaine, is taken as starting point for the assessment of inventive step."

• The Board hence considers the embodiment a) to be disclosed and finds that claim 1 add two further distinguishing features. However, these features are deemed to be obvious.

• The answer to the question at the beginning of this post is, therefore, one distinguishing feature.

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0928/19 - Remitted for search in patent year 17

Key points

• Filed as a direct European application in 2007. Search report in 2008. First Communication in 2010. Refusal in 2018. Appeal decision issued in writing in 2024.
• "The Board therefore finds the claimed invention not to be obvious when starting from D1. "
• "The Board notes that document D1, relied upon by the Examining Division, is a document mainly directed to a localised load redistribution, which is conceptually the opposite of the claimed invention. Also, and perhaps more importantly, although front-end/back-end server architectures were well known in the art at the filing date of the application, the decision does not refer to any such document. More relevant prior art may therefore exist."
• "Under these circumstances the Board decides to remit the case to the Examining Division for further prosecution (Article 111(1) EPC), possibly including an additional search."

EPO 

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

R 0012/22 - Why we must announce accompanying persons in advance

Key points

• The Enlarged Board (three member panel) in translation: "G 4/95 is aimed at the case where an accompanying person has special knowledge or experience in relation to the case and wishes to use this knowledge to present his case at the oral hearing. G 4/95 aims to prevent a party from gaining an advantage over opposing parties by bringing in such an accompanying person, who do not have such knowledge or experience and are therefore unable to respond adequately to such presentations at the oral hearing. 
• "For accompanying persons without such knowledge or experience [e.g. trainee patent attorneys], an announcement of their attendance and the topic on which they are to present their case would therefore not be necessary. "
•  "G 4/95 therefore aims to ensure equality of arms as a precautionary measure, even if this would be the case in individual cases without such an announcement, since [in the individual case, viz. the trainee patent attorney case] it is not intended that the accompanying person's presentation should go beyond the content of what would be expected from an authorised representative." ( "G 4/95 will also die Waffengleichheit vorsorglich sicherstellen, auch wenn diese in Einzelfällen ohne eine derartige Ankündigung gegeben wäre, da nicht beabsichtigt ist, dass der Vortrag der Begleitperson inhaltlich über den von einem zugelassen Vertreter zu erwartenden Vortrag hinausgeht.") 
• g 4/95, headnote 2 in part: ""(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:

  (i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

  (ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions

EPO 

You can find the link to the decision and an extract of it after the jump.

T 2124/21 - Refusal after 16 years

Key points

• "On appeal, the sole request subject of the appealed decision was abandoned, and amended requests were filed instead."
• The applicant then wished to return to the claims considered in the appealed decision. This is a case amendment, and these claims are not admitted.
• The appeal against the refusal of the application is dismissed.
• PCT application filed in 2008, request for entry in 2010. Start of the examination and first communication in 2017 (!). Next action: summons for oral proceedings in 2020. Refusal of the application in 2021 for lack of inventive step. Oral proceedings before the Board: January 2024. Decision in writing: March 2024. 

EPO 

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

T 0447/22 - Claim interpretation and reverse positions

Key points

• "The present case is one where the understanding of claim 1 as granted has given rise to a considerable discussion between the parties. Since the claim interpretation was of prime importance for the outcome of the case, as it formed the basis for the subsequent findings on added subject-matter and novelty, it seems appropriate to deal with this aspect before turning to any other matter. "
• " In view of above considerations, the steering device of feature c. is construed as an actual physical component of the machining device which is adapted for actively controlling the direction of the machining device in relation to the longitudinal axis of the pipe having a smaller diameter in the pipe system."
• " The patent proprietor argued that a dedicated steering device was not required, since various passages in the description of the patent indicated that the protruding parts, by maintaining the direction of the machining device, already acted as a steering device. The board disagrees for the following reasons."
• Note, typically proprietors advocate a narrower claim interpretation before the EPO. 
• "The board is well aware that the Regional Court of Düsseldorf [in an infringement case about the patent] arrived at a different conclusion in its judgment concerning infringement proceedings 4a O 40/19 based on the patent in suit"
• The Board finds claim 1 to meet Art. 123(2)
• " the board concludes that document D22 discloses all features of claim 1 as granted, the subject-matter of which thus lacks novelty."
• AR-2 is held to be allowable.
• The opponents had argued that: "the broader claim understanding of the Regional Court of Düsseldorf in the parallel infringement cases against the opponents, namely the assumption that the protruding parts could also act as a steering device, would likely result in a finding of infringement despite the fact that the patent had an embodiment which was anticipated by the prior uses "INTEC" and documents BR12 and BR12b. "
• "Whilst it is understandable that opponent 1 deplores that claim 1 of auxiliary request 2, in particular the steering device of feature c., if it were understood in a less restrictive manner, could have resulted in a different assessment of novelty and inventive step, which in turn might affect the way national courts of competent jurisdiction decide on questions of infringement, the board cannot accept the premise that it should re-open the debate and examine the objections of novelty and inventive step anew for a broader claim interpretation, which neither the board nor the opponents endorse, in order to thwart potential findings of infringement negatively affecting the opponents."
  

On claim interpretation

13.1 There is an extensive body of case law of the Boards of Appeal according to which, within certain limits, a claim may be interpreted with the help of the description and the drawings for understanding the subject-matter to be assessed under the requirements of the EPC.

It is a general principle applied throughout the EPC that a term of a claim can be interpreted only in context. The claims do not stand on their own, but together with the description and the drawings they are part of a unitary document, which must be read as a whole (see e.g. T 556/02, Reasons 5.3; T 1646/12, Reasons 2.1, T 1817/14, Reasons 7.3, and T 169/20, Reasons 1).

The extent to which description and drawings can provide an aid to interpret the claims is however subject to certain limitations.

A decision often cited in this context is T 190/99, which in point 2.4 of the Reasons states that the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent; the patent must be construed by a mind willing to understand not a mind desirous of misunderstanding.

The present board concurs with T 1408/04 (Reasons 1) that this statement must be understood to mean only that technically illogical interpretations should be excluded (see also T 1582/08, Reasons 16, and T 169/20, Reasons 1.3.3). A claim can thus be interpreted in the light of the description and the drawings to the extent that they contain logical and technical sensible information.

Furthermore, interpreting the claims in the light of the description and the drawings does not make it legitimate to read into the claim features appearing only in the description or the drawings and then relying on such features to provide a distinction over the prior art. This would not be to interpret claims but to rewrite them (see T 881/01, Reasons 2.1). In this context, it is important to differentiate between a claim consisting of terms with a clear technical meaning and an unclear claim wording. The preparatory material available on the discussions leading up to the European Patent Convention shows that even in the framework of Article 69 EPC and its Protocol on Interpretation (see for instance Armitage, "Die Auslegung europäischer Patente", in GRUR Int. 1983, 242; Decker in Stauder/Luginbühl, "Europäisches Patentübereinkommen", 9th edition, Art 69, marginal no. 22, with reference to Stauder, "Die Entstehungsgeschichte von Art 69(1) EPÜ und Art 8(3) StraßbÜ über den Schutzbereich des Patents", GRUR Int. 1990, 793, 799), it was never the scope to exclude what on the clear meaning was covered by the terms of the claims. Accordingly, many decisions of the Boards of Appeal have concluded that a discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently (see, for example, T 431/03, Reasons 2.2.2; T 1597/12, Reasons 3.2.1; T 1249/14, Reasons 1.5). The description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader (T 1018/02, Reasons 3.8; T 1391/15, Reasons 3.5). On a similar note, the board in T 197/10 (Reasons 2.3) held that, in the event of a discrepancy between the claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step.

EPO 

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

J 0001/23 - Entitled to a share

Key points

• "The appeal of the registered applicant Beamocular AB (Beamocular) lies against the decision of the Legal Division, dated 13 October 2022, providing that the previously stayed patent grant proceedings for European patent application No. 16 708 122.3 (the application) be resumed, with Beamocular and the third party within the meaning of Rule 14 EPC, C-Rad Imaging AB (C-Rad), as co-applicants. "
• "-Rad informed the EPO that it had instituted proceedings before the Stockholm District Court (in case No. PMT 6829-17) against Beamocular to seek a decision within the meaning of Article 61(1) EPC, and it requested that the patent grant proceedings based on the application be stayed under Rule 14(1) EPC. "
• Proceedings were stayed.
• The Swedish Court of Appeal held that: "[...] declares that C-RAD Imaging AB has a better title than Beamocular AB (in bankruptcy) to half of the or those inventions specified in the patent claims [...] in the European patent application with publication number EP 3265852 as worded after the amendment made when the application was pursued at the European Patent office [...]"
• Seems the procedure before the EPO was not interrupted despite the bankruptcy (note, interruption must be applied by the EPO ex officio if it sees grounds).
• Note also that the resumption was first communication with a  Communication. The party requested an appealable decision, which was then issued. It says 'will be resumed'. Note that the party can appeal it, which is one of the few permitted procedural acts during a stay, I think.
• "It is established case law that the EPO is not competent to examine the substance and merits of a national entitlement decision (Case Law of the Boards of Appeal, 10th edition, July 2022, III.M.3.1.2, fifth and sixth paragraphs; G 3/92, Reasons 3.3 and 3.4). The Swedish Court explicitly based its decision on, inter alia, Article 18(1) of the Swedish Patents Act, (page 5, fourth full paragraph, "Legal points of departure"), and the Board has no competence to review the correctness of this legal basis."
• 
  
• A translation of the Swedish court decision can be found in the EPO file here.
• I omit a discussion of the headnote. It is a reply to the argument that "" the Swedish decision does not mention any ground, by agreement or law, for a transfer of rights from the inventors to C-Rad, i.e. that there is no reference to a legal situation or transaction which would have made C-Rad successor in title in compliance with Article 81, second sentence EPC in conjunction with Article 60(1) EPC". The interested reader could read the  Swedish decision to see how the court came to its conclusion. 
• The Legal Board explains that in "cases where a final sovereign decision of a national court  [of an EPC contracting state, it must be added!] has determined that a person other than the applicant is entitled to the grant of the European patent under Article 61(1) EPC. In such instances, the matter of by whom and how the right to the patent was acquired is deliberated and settled by the competent national court, and the EPO is bound by the court's conclusion without further requirement." 

EPO 

You can find the link to the decision after the jump. 

T 2202/21 - Admissibility, required substantiation for inventive step (and Habermas)

Key points

•  " The present auxiliary requests were submitted only with the written reply to the statement of grounds of appeal. Thus, they constitute an "amendment" which may be admitted only at the discretion of the board (cf. Article 12(4) RPBA)."
• The substantiation was that the amendments corresponded to claims as granted and that "None of the prior art addresses [the added features]."
• "The respondent's [proprietor's] case presented in its written reply with respect to the newly filed auxiliary requests is based on the presence of additional limitations which were never addressed by the opposition division, as can be seen from the annex to the summons, the minutes of the first-instance oral proceedings and the decision under appeal. The respondent merely asserted that "none of the prior art" - presumably the prior art cited in the opposition proceedings - addressed those additional limitations. It argued that, since the absence of features cannot be proved, this reasoning should suffice. And, at any rate, filing these claim requests before the opposition division would not have made any difference, because the opposition division's preliminary opinion had consistently been in favour of the rejection of the opposition."
• "The board explained its position in regard of insufficiently substantiated claim requests. Namely that the requirement of presenting a complete case stipulated by Article 12(3) and 12(4), third sentence, RPBA is not merely a rule of administrative convenience, but the expression of a fundamental principle of  court proceedings (see T 108/20, Reasons 4.1, addressing procedural justice in discourse-based court proceedings)." (citing Habermas, see below) (Mr. Heath is common to both panels, indeed).
• The Board makes two highly relevant practical points

No need for auxiliary requests before OD if the patent is maintained as granted

• " The board tends to agree with the respondent that a filing of auxiliary requests in opposition proceedings was not necessarily called for, as these requests would not have been dealt with during the first-instance oral proceedings or in the decision given that the patent was maintained as granted. "
• This seems to me to be established case law; see, e.g., T 3240/19, T1758/21, and T0141/20.

Substantiation claim amendments inventive step

• With the opponent's appeal, new arguments were put on the table, thus calling for counter-arguments by the respondent. Counter-arguments can also consist of the filing of new claim requests where these are accompanied by corresponding arguments addressing why the alleged shortcomings of the main request would be overcome by the newly filed claim requests (cf. Article 12(3) RPBA)."
•  "Where, as in the case at issue, lack of inventive step is argued, the patentee in filing new requests has not only to explain the further differences to prior art, but also why these differences are considered inventive (e.g. by applying the problem-solution approach, by arguing synergy between the additional features, etc.). It is not the task of the opponent to make the proprietor's case of inventive step in order to provide arguments against a case of (the presence of) inventive step that has not even been made, and neither is it the task of the board. "
• The proprietor's reasoning that there were even more "distinguishing features" may provide a complete case for novelty, because novelty requires no more than one distinguishing feature. But novelty was never a ground for opposition in these proceedings. Absent any explanations as to inventive step, the discourse thus cannot move forward because no argument in that regard has been provided. Consequently, no counter-argument can be expected and the board, as the deciding body, cannot be expected to deal with this issue. The board is therefore within its discretion not to admit the insufficiently substantiated auxiliary requests, and in the case at hand decided just so.
• The Board does not explain what additional substantiation should have been given. T 1220/21 recently reviewed the matter and found that "According to some Boards, where a claim request is filed to overcome an objection under Article 56 EPC, the proprietor should even substantiate it on the basis of a more detailed chain of logic (see for example T 420/14, reasons 9.5)"
• In view of G 2/21 r. 26, "According to the established case law of the boards of appeal [...] it rests with the patent applicant or proprietor to properly demonstrate that the purported advantages of the claimed invention have successfully been achieved." This may imply that the proprietor also has a duty to plead the advantages, i.e. to identify a technical effect of the amended feature (and make a prima facie case for it). 
• 
  
• T 108/20, Reasons 4.1, in translation: 4.1 Precisely because the judicial determination of justice is not accessible to absolute truth, it must draw its legitimacy from the proceedings aimed at this (Niklas Luhmann, Legitimation durch Verfahren, 6th edition Frankfurt 2001). Unlike scientific knowledge, there is no result in legal knowledge that can be proven to be correct. This applies all the more in a contentious procedure in which the facts relevant to the decision are determined by the parties' submissions. Justice can therefore only be defined through procedural justice, namely through the discourse aimed at finding justice: speech and counter-speech. Unlike the "domination-free" discourse postulated by Habermas and Alexy (Jürgen Habermas, Faktizität und Geltung. Beiträge zur Diskurstheorie des Rechts und des demokratischen Rechtsstaats, Frankfurt am Main, 1992; Robert Alexy, Theorie der juristischen Argumentation. 3. Aufl. Frankfurt, 1996), however, the discourse in court is not aimed at establishing a consensus between those involved about a result, but rather at enabling the court to make a decision as a result of this discourse. Due to the discursive nature of the procedure - speech and counter-speech - it follows that a party can only be expected to express itself if a statement has been made on its submission, be it by the Office, the Board or by the other party. It seems irrelevant at what point in time this occurs as far as it can be seen that the argument is still being maintained. This is important in the present case.
• The point of T 108/20 was that the appellant/opponent had referred, in its statement of grounds, to its objections against AR-3 as submitted before the OD; the OD had maintained the patent as granted. The Board found this to be sufficient substantiation (the Board also found AR-3 to be allowable). 
  
  
• To avoid any misunderstanding, I appreciate legal philosophy as the foundation of legal systems and as a framework for procedural justice. I also appreciate Boards not hiding their legal thinking. However, the decisions also illustrate doing this on a European level (i.e., avoiding too much focus on German legal literature) in patent procedures (patent attorneys are, typically, not lawyers). 

EPO 

The link to the decision and (an extract of) the decision text are provided after the jump.

T 0177/22 - Citing the UPCA CoA case law, claim interpretation

Key points

• "The Board holds that, in order to assess whether the claimed invention is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art or is novel or inventive, the claimed invention must - to the extent to which this is decisive for the outcome of the case - first be determined by interpreting the claim from the perspective of the person skilled in the art (see T 367/20, Reasons 1.3.8 for added subject-matter). "
• "When doing this, a Board of Appeal is not limited to the claim interpretations advanced by the parties but may also adopt a claim interpretation of its own (T 450/20, Reasons 3.4.2; T 1537/21, Reasons 1.3.5)."
• Note, in that case, the Board must give the parties an opportunity to comment on the claim interpretation under Article 113(1), it seems to me. Indeed, in this case, "In the present case, the Board informed the parties of its interpretation of feature 1.11 inter alia in point 17.3.1(e) of its communication under Article 15(1) RPBA and, having heard the parties on this, confirmed this claim interpretation in the oral proceedings."
• The Board, putting a treatise in brackets in a very long sentence - I added the bullets for legibility: 
• " feature 1.11 of claim 1 as granted is to be interpreted not only in the context of the other features in that claim but also in the context of the description as granted (for recent case law on this matter see [: ]
• T 367/20, Reasons 1.3.2 to 1.3.7, referring to the principles of claim interpretation as set out in Article 69 EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC 
• and T 447/22, Reasons 13.1, referring to the general principle under the EPC that claims can be interpreted only in context, which includes the description and the drawings; 
• see also T 1473/19, Reasons 3.3 to 3.16.2, referring to G 2/88, Reasons 4, applying Article 69 EPC and the Protocol for interpreting "the technical features of the claim" when assessing extension of the scope of protection under Article 123(3) EPC, 
• and further G 6/88 (taken on the same day as G 2/88), Reasons 4, last sentence, referring to the question before it as a question of law of general nature concerning novelty, and Reasons 3, first sentence, 6, 7, and 7.1, where the Enlarged Board (directly) applied Article 69 EPC and the Protocol "to construe the claim in order to determine its technical features" when assessing novelty under Article 54(1) EPC; 
•  compare also Court of Appeal of the Unified Patent Court, UPC_CoA_335/2023, Grounds 4.d)aa), referring to Article 69 EPC and the Protocol as well as to G 2/88, and stating that the principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent; 
• as to the harmonised approach on claim interpretation introduced by the EPC see further G 6/88, Reasons 3, referring to Article 69 EPC and the Protocol on its interpretation as "a mechanism for harmonisation" which provides a "method of interpretation of claims of European patents throughout their life"; 
• see further T 1473/19, Reasons 3.14, referring to the legitimate interests of the users of the European patent system in a common approach to claim interpretation, 
• T 367/20, Reasons 1.3.5, third paragraph and the following comparative analysis of national case law, 
• and T 438/22, Reasons 5.5.3, referring to the overarching objective under the EPC that authorities, courts and the public interpreting the claims should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on its patentability; 
• as to the primacy of the claims under Article 69 EPC and the Protocol see T 1473/19, Reasons 3.16 to 3.16.2; 
• in regard to the latter compare also Court of Appeal of the Unified Patent Court, UPC_CoA_335/2023, Grounds 4.d)aa), referring to the patent claim as not only the starting point, but the decisive basis for determining its subject-matter and scope of protection)."
• The Board does not finish the literature review with any explicit conclusion, although it comes back to it later when referring to the list as "the applicable principles of claim interpretation". Note, however, that the Board uses "compare also", not "see", a meaningful difference. 
• 
  
• "The respondent [opponent] submitted that a different, broader, claim interpretation had to be adopted for the assessment of novelty and inventive step than for the assessment of sufficiency of disclosure (in regard to which the respondent had argued in favour of a narrower claim interpretation)."
• "The Board disagrees. The "invention" within the meaning of Article 54(1) EPC, the "invention" within the meaning of Article 56 EPC and the "invention" within the meaning of Article 100(b) EPC (and Article 83 EPC) all refer to the claimed subject-matter (see T 1473/19, Reasons 3.11.4, and T 92/21, Reasons 3.2, last sentence), and a given patent claim's subject-matter must be interpreted and determined in a uniform and consistent manner (see T 1473/19, Reasons 3.12.1). This excludes interpreting the same claim differently when assessing sufficiency of disclosure on the one hand, and when assessing novelty and inventive step on the other hand. It also presupposes that the same principles of claim interpretation must be applied when assessing compliance with any of these requirements under the EPC (as to the applicable principles of claim interpretation see point 2.2.7 above)."

EPO 

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

T 0675/22 - Filing a divisional application during the break

Key points

• This case will probably be known for the representative losing his composure, but another question: can you file a divisional application on the day of the oral proceedings, and if yes, between the end of the oral proceedings and midnight? The "whole day" principle of the EPO speaks in favor of the latter approach, but that is no certainty as yet. 
• On a related note, under current R.126, can you file a divisional application on the date of the refusal decision issued in writing [*] (e.g. in case of receipt on the same date via the Mailbox) or only until the day before? (* - i.e. not the written reasons for a refusal decision pronounced during oral proceedings).
• "3.1 At the oral proceedings before the board, in particular during the discussion regarding the admittance of the auxiliary requests, the appellant's representative requested a break in order to file a divisional application. When asked for the legal basis of this rather unusual request, he lost his composure. He criticised the board for members for their "destructive approach", lack of an "open mind" and unwillingness to resolve the issues at hand. He complained that he had the impression that the board was in a "hurry" and asked the board whether the board members had another "appointment". He said that he felt himself as if he were in the "military", making the German "zum Kotzen" gesture with the index finger pointing towards his open mouth. He then grabbed his mobile phone to call his secretary to give instructions to file a divisional applications unless the board gave a break. The board warned the representative that this behaviour in the proceedings was totally disrespectful towards the members of the board and constituted a violation of Article 6 of the Code of Conduct of the Institute of Professional Representatives before the European Patent Office (Official Journal EPO, 2022, A61; "epi Code of Conduct")

3.2 After a break given for the board to deliberate on the admittance of the present auxiliary requests, the representative had regained his composure and stated that he had meanwhile filed a divisional application. The request for a break to file a divisional application was therefore moot.

• I guess divisional applications are more often filed the day before, without paying fees.

EPO 

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

T 0127/22 - Expert opinions

Key points

• Sufficiency of the patent is at issue.
• "The respondent [opponent] further submitted declaration D7, in which an expert working for the opponent gave the opinion, that the determination of the gas flow factor would not be a matter of simply measuring the pressure drop across the entire catalyst article and then applying Darcy's law"
• "Declaration D7, as opinion of an expert, is admissible evidence under Article 117(1)e) EPC. No circumstances have been presented that would question the credibility or qualification of the expert. The mere fact that the expert is an employee of the respondent does not in itself cast doubt on the value of the opinion. The statements of employees of parties to the proceedings are not objectionable per se"
• As a comment, Article 117(1) allows for any type of evidence to be filed. An opinion of an expert under Article 117(1)(e) EPC in the strict sense is, however, to be understood to refer specifically to reports of experts that are commissioned under Rule 121 EPC.

EPO 

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

T 2074/22 - Disclaiming medical uses

Key points

• "In claims 11 and 17, the expression "non-therapeutic" was introduced by way of an amendment as an undisclosed disclaimer in the sense of G 1/03." (the amendment was made before grant, I understand).

• Claims 11 and 17 "relate to the non-therapeutic use of an agent, or a food or drink, [having  a certain composition] for the prophylaxis or improvement of frailty in an elderly person,  wherein the frailty is at least one kind of symptom selected from the group consisting of  decrease in walking speed, decrease in the amount of physical activity and loss of motivation."

• It is established case law that a disclaimer "non-therapeutic" allows for the exclusion of therapeutic uses from a claim encompassing both therapeutic and non-therapeutic uses in such a way that they are substantively separable, so that the remaining subject-matter is no longer covered by the exception to patentability under Article 53(c) EPC. However, such a disclaimer cannot be employed to define as non-therapeutic a use which necessarily includes one or more therapeutic steps.

• The Board decides that in the case at hand, the recited claims are directed to a use which necessarily includes one or more therapeutic steps, see further below.

• "Since present claims 11 and 17 concern a use which is necessarily therapeutic (i.e. at least prophylactic), the exclusion from patentability of methods for treatment of the human or animal body by therapy under Article 53(c) EPC also applies to the subject-matter of claims 11 and 17, despite the introduction of the disclaimer "non-therapeutic"."

• So, the claims are not allowable under Art.53(c) EPC even if reciting "non-therapeutic".

• "Additionally, in both T 1635/09 (see point 5 of the reasons, last paragraph) and in T 767/12 (see point 2.), a disclaimer intended to restrict the claim to "non-therapeutic" methods was in analogous situations considered unallowable for lack of clarity under Article 84 EPC since it rendered the scope of the claim void. This [i.e. clarify of the claim] is however a condition for allowing undisclosed disclaimers according to G 1/03 (see Headnote, point 2.4). " 
• Headnote 2.4 of G 1/03 only says that : "A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.". I wonder if a disclaimer that is present in the claims as granted can be examined for clarity (G 3/14) under headnote 2.4 of G 1/03. 
• "Considering also that, in the present case, the undisclosed disclaimer "non-therapeutic" contradicts the original disclosure according to which the prophylaxis or improvement of frailty aims at maintaining health (see 1.3 above), this undisclosed disclaimer is also considered to infringe Article 123(2) EPC."
• I'm not exactly sure what requirement of G 1/03 the Board is applying here. Headnote II.4 reads: "A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC". It does not refer to the third requirement of Art. 84 (support) and does not indicate that lack of clarity becomes an issue under Article 123(2) under this headnote. 

• The Board considers "the prophylaxis or improvement of frailty in an elderly person" to be inherently therapeutical because it is directed to maintaining health.
• "Considering that the prophylaxis or improvement of frailty leads at least to the maintenance of health in the elderly patient according to the patent itself, no distinction can be drawn between a therapeutic use and a non-therapeutic use, even in the context of the further limitation to the symptoms defined in claims 11-18. Even if these symptoms (decrease in walking speed, decrease in the amount of physical activity and loss of motivation) may not necessarily be as such constitutive of an illness, the prophylaxis or improvement of these manifestations of frailty necessarily aims at maintaining health."
• " it is not possible to carry out the method of present claim 11 on a subject which is neither in a pathological state nor likely to develop one, because claim 11 precisely defines the subject as an elderly suffering from or likely to develop symptoms of frailty."
• "even if the symptoms of frailty in elderly people are not necessarily considered an illness as such (see paragraph [0036] of the patent), the prevention of these symptoms necessarily aims at least at maintaining health in the patient. The description makes clear that the prophylaxis of frailty is [] prevention of its symptoms from being developed, and the improvement of frailty includes bringing these symptoms to fall within a normal range, as well as preventing the progression or exacerbation of the disease (see paragraph [0039]). It is also explained that the prophylaxis of frailty leads to the prevention or delaying of a transfer to a condition in need of nursing care and increases health expectancy (see paragraph [0003]). 
  
  
• "The Board additionally notes that the appellant - proprietor's argumentation on novelty and inventive step of claim 1 of the main request ["composition for use in the prophylaxis or improvement of frailty in an elderly person"] rather contradicts their position regarding the non-therapeutic nature of the use of claim 11. The appellant - proprietor submitted that claim 1 relates to the prophylaxis or improvement of frailty, and that the present invention is aimed at preventing and alleviating the ill effects that would otherwise arise in elderly populations, so as to maintain health, such that claim 1 should be considered to be a use limited product claim in accordance with Article 54(5) EPC "

 

 

EPO 

You can find the link to the decision and an extract of it after the jump.

T 1311/22 - Result to be achieved (vacuum cleaner quality factor)

Key points

•  Claim 1 of the patent as granted is directed to a vacuum cleaner and specifies, in translation, "a vacuum cleaner with an average power consumption of less than 1200 W and a filter bag with a separation efficiency of the filter bag material greater than 60%, the device for vacuuming having a quality factor for an unfilled filter bag Q(w)un defined by ... which is greater than 25"
• The Board, on sufficiency, in translation: "Claim 1 defines the device by functional characteristics, namely in relation to a result to be achieved, which in turn is expressed by values ​​of the newly defined parameter "quality factor""
• " The peculiarity of the functional definition of a technical feature is that it is defined by its effect. Such a definition refers quite abstractly to an indefinite number of possible alternatives and is permissible as long as all alternatives are available to the person skilled in the art and deliver the desired result; Therefore, it must be checked whether the patent discloses a generalizable technical teaching that makes the entire spectrum of variants that fall under the functional definition accessible to the person skilled in the art."
• " Claim 1 itself only contains minimum values ​​for the two quality factors, but no information as to which structural features of the vacuum cleaner and/or filter bag must be set and adjusted so that these minimum values ​​can be achieved in contrast to the comparative examples. In other words, the scope of protection of the granted claim 1 includes all vacuum-cleaning devices with filter bags and the claimed parameters, completely regardless of the way in which a vacuum loss is reduced in such a way that correspondingly high quality factors are achieved (the only thing excluded is their achievement via a low degree of separation, see above). As explained below, the person skilled in the art cannot deduce from the description how this can basically be accomplished without unreasonable effort, possibly based on a specific exemplary embodiment."
• "These very specific exemplary embodiments also do not give the person skilled in the art any clues as to which of the numerous features and measures - whether all or only certain of them - are crucial for achieving the claimed quality factors, so that he can also determine the subject matter of the claim through a targeted selection of other suitable pairings of filter bags and vacuum cleaner devices "
• "The scope of protection of claim 1 therefore includes any device of the generic type in terms of power consumption, negative pressure in the floor nozzle and degree of separation with an at least slightly better quality factor/efficiency than devices from the prior art, including those with as yet unknown, future components such as new filter bag materials. In contrast, only very specific exemplary embodiments are disclosed, which enable a rather limited improvement in the quality factors to values ​​of up to just over 30% or 25%."
• "the patent does not disclose the invention so clearly and completely that a person skilled in the art can carry it out, Article 100(b) EPC."
• As a comment, T0595/90 permitted a claim to a steel sheet having an "iron loss of less than 0.90 W/kg" (i.e. down to 0.00 W/kg), low iron loss values being the desired feature (but not an unusual parameter as such).  Whether the cases can be distinguished from each other or whether the case law is developing remains to be seen. 

EPO 

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

J 0001/24 - Appeal against grant and divisional

Key points

• If a patent is granted, what is the last day for filing a divisional application? The day before the publication of the mention of the grant in the Bulletin (G 1/09).
• For any trainees reading this post: the Bulletin can be found here: https://www.epo.org/en/searching-for-patents/legal/bulletin/download 
• However, what if the mention of the grant is deleted by a later notice in the Bulletin? This may happen e.g. in case of a stay of proceedings under R.14?
• * Note that the Bulletin is (supposed to be) inalterable. Hence, a new notice is published in a later issue of the Bulletin that states that the publication of the mention of the grant is deleted.
• Then, no divisional application can be filed during the stay, but if there is some time between the resumption of proceedings and the new mention of the grant in the Bulletin, a divisional application could be filed.
• In this case, the proprietor filed an appeal against the decision to grant the patent. The EPO then, as a matter of fact, rescinded the publication of the mention of the grant (after receipt of the Notice and payment of the appeal fee but before receipt of the Statement of grounds). 
• You can find the deletion of the mention of the grant here: https://archive.epo.org/epo/pubs/bulletin/2021/bulletin2121.pdf#page=2822 .
• The mention of the grant itself can still be found here: https://archive.epo.org/epo/pubs/bulletin/2021/bulletin2111.pdf  on page 1163.
• Small detail: the Bulletin contains three instances of the mention of the grant: sorted by publication number, by applicant name and by patent classification. Question to readers: why? (experienced patent attorneys, feel free to tell stories in the comments about how the Bulletins were used by patent attorney firms and in-house departments in the past).
• The proprietor (then applicant again) filed the statement of grounds, subsequently two divisional applications, and then withdrew the appeal.
• The Receiving Section decided that the division application "will not be treated as a divisional application".  The applicant appealed, leading to this decision of the Legal Board. 
• As the divisional application was not yet published (in 204) (even though it was filed in 2021), the publication of the decision is anonymised. However, the "datasheet" part of the published decision includes the title of the application, "ELECTRONIC DEVICE WITH METAL FRAME ANTENNA", which easily leads to EP 19209269.0 being the parent application. Because the Legal Board allows the appeal and, therefore, the divisional application should be published soon, I feel free to mention the parent application number here. 
• As a small detail, the decision indicates that the Receiving Section issued an interlocutory decision to that effect (which allowed a separate appeal). However, I wonder what would have happened if no appeal had been filed? As it is an interlocutory decision, the proceedings are supposed to continue - with search and examination perhaps on the basis of the application being a normal patent application (which then has invalid priority and lack of novelty over the already published parent case).
• Turning to the appeal at hand, J 28/03 had held that an appeal against a decision to grant does not allow the filing of a divisional application during the appeal. 
• However, as the present Board observed, in J 28/03, the publication of the mention of the grant was not deleted. 
• The current practice of the EPO of deleting the mention of the grant in case of an appeal by the proprietor against a grant decision, is a reason for the Legal Board to consider that the application is pending in the sense of Rule 36 during such an appeal. 
• Note, the Legal Board does not make this effect dependent on whether the mention of the grant is deleted or not.
• +"The current practice of the EPO treats appeals against the grant of a patent as appeals validly filed, with the consequence that the date of the mention of the grant is deleted in such a case. If later the appeal is withdrawn or turns out to fail, there will be a new date of publication of the grant. This is a requirement for the effectiveness of the grant of a patent (Article 64(1) EPC). The present Board considers that it is inconsistent to consider an appeal in two different ways: first for the mention of the grant to be deleted, the appeal only needs to be admissible [*] and second for the suspensive effect to apply is dependent on the outcome of the appeal.
• The Legal Board appears to point out that the "first instance" acts inconsistent by, on the one hand, considering the appeal against the grant to be validly filed (and therefore deleting the mention of the grant) and, on the other hand, considering the appeal to be insufficient to make the application pending again in the meaning of Rule 36.
• Note that the decision to delete the mention of the grant seems to be taken "for" the Examining Division (see here).
• * - Since the mention of the grant was deleted before the filing of the Statement of grounds, admissibility of the appeal is not a strict requirement, but rather something similar to "deemed to have been filed" (i.e., a timely filed notice of appeal of the proprietor and payment of the appeal fee) (note, an appeal by a third party will be inadmissible, not deemed to not have been filed, but is likely insufficient to trigger the deleting of the mention of the grant).
  
  
• "There is no basis in Article 106(1) EPC for such an approach. In the established case law of the Boards of Appeal [], an example of a clearly inadmissible appeal that should have no suspensive effect, is an appeal without basis in the EPC, e.g. filed by a third party. [*] The EPC has no provision restricting appeals of the applicant against the grant of a patent. Such an appeal cannot therefore be seen as clearly inadmissible. As a consequence such an appeal has suspensive effect according to Article 106(1), second sentence, EPC. That means for the present case that the parent patent application was still pending when the divisional application was filed."

• I am  not sure if this also applies to appeals of the applicant filed well after the expiry of the appeal period, but for sure we will find out that in a future decision.
• * - see G 2/19 about an appeal by a third party against the grant of a patent based on clarity objections. In such a case, no oral proceedings are to be held either. 
• Note, under G 1/09, pendency in the sense of Rule 36  does not depend on the suspensive effect of an appeal (such that an appeal can be filed in the appeal period after a decision to refuse a patent application. ). 
  
  
• Note that it seems that under the present decision, filing a Statement of grounds is not necessary. Hence, a divisional application can be filed during the appeal period by filing a Notice of Appeal and paying the appeal fee. If the appeal is subsequently withdrawn before the expiry of the period for filing the Statement of grounds, the appeal fee is refunded (Rule 103(1)(b)). 
  
  
• Finally, the appeal in the parent case is interesting in itself, see the statement of grounds. The applicant wished to amend the description to delete the statement that Figure 24 was not according to the claims; this statement was added by the Examining Division in the Intention to grant (properly marked). All the currently hot issues of claim interpretation and adapting the description to the claims are at play already. Whether the applicant would have met the "adversely affected" requirement of Art. 107 for admissibility of the appeal in view of Rule 71(5) remains an open question as the appeal was withdrawn before the Board gave a preliminary opinion.

EPO  J 1/24 - J1/24 - J 0001/24

You can find the link to the decision and an extract of it after the jump.

T 1203/20 - Using the description to broaden the claim - for validity

Key points

•  This is an appeal against a refusal. The application is about a system for post (physical posts) with compartments, e.g. lockers.
• "  According to the appellant, the definition "the recognition means provided at one or more compartments (8) and adapted to recognise if a package is deposited in a compartment" in the claim indicated that the recognition means of the claimed system were able to determine whether a package was actually deposited inside the compartment."
• "In contrast to that, the system of D1 used a sensor to determine when the door of the compartment was opened and closed in order to determine whether there was anything deposited inside the compartment. This determination, however, was based only on an assumption about the deposit of a package inside the compartment. It was possible for example that a user opened and closed the door of the compartment without depositing anything inside."
• The Board: "according to paragraph [0019] of the published application, the recognition means is not particularly limited to any specific component or software configuration. As described in this paragraph, the recognition means can be a sensor adapted to detect the opening of the door to the compartment, or the actuation of actuation means controlling the door. The recognition means may alternatively include a light sensor located in the compartment such that, when a light beam is broken by the presence of a package, the recognition means detects that a package is deposited therein. "
• "as the above-cited paragraph describes, the application does not limit the recognition means to any specific implementation. On the contrary, it is also envisaged that the recognition means can be a compartment door sensor as in the system of D1."
• The claim has some other differences with D1. Turning to inventive step: "the claimed system does not bill the users for their reservation(s) [as in D1] and thus it sets time limits to the reservation of the compartments so that users reserve them only for as long as they need them. The system monitors the time and when the reservation time (period) ends, it renders the compartments available for reservation (unless a package is detected inside the compartment)."
• "the claimed system differs from D1 only in the way the compartments and their reservations are managed. This is an administrative/business scheme defined by the manager of the post (locker) system."
• The claim is held to be obvious. 

EPO 

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

T 1760/21 - Formed; deleting alternative is not admitted

Key points

• The opponents appeal the decision to reject the opposition. 
•  "The wording of claim 1 of the patent is as follows: "1. Method of obtaining a two- or three-dimensional formed structure of an AlMg alloy plate product, comprising the steps of: ...  shaping or forming said alloy plate at a temperature in a range of 200°C to 400°C". 
• "The point of debate is whether forming at a temperature in a range of 200°C to 400°C is directly and unambiguously derivable from the application as originally filed. Claim 1 of the application as originally filed relates to a forming method which includes shaping the alloy plate at a temperature in a range of 200°C to 400°C. "
• "The skilled person understands in that context that the meaning of the word "forming" is apparently broader than the expression "shaping". The forming process comprises the shaping step as part of it."
• "In view of the incoherent use of the terms "forming" "being formed" and "formed product" in the application as originally filed, there is ambiguity as to the intended meaning of "forming". Therefore it is not unambiguous that forming is supposed to be a synonym of shaping. Consequently the temperature range of 200°C to 400°C cannot be unambiguously associated with the forming step."
• "The step of "forming said alloy plate at a temperature in a range of 200°C to 400°C" is thus not directly and unambiguously derivable from the application as originally filed."
• In Auxiliary Request 10, "forming" is deleted as an alternative.
• "The request was submitted after the board's communication pursuant to Article 15(1) RPBA 2020, which indicated that Article 100(c) EPC, in combination with Article 123(2) EPC, appeared to prejudice the maintenance of the patent as granted."
• " In the communication pursuant to Article 15(1) RPBA 2020 the board argued why it regarded the objection under Article 100(c) EPC as persuasive. This was based only on arguments which had been part of the proceedings since the filing of the opposition. There were no new facts which would have triggered the filing of a new request at such a late stage of the proceedings. However, the fact that the appellants [opponents] did not repeat their arguments in the rejoinder, as argued by the respondent [proprietor], is irrelevant since the objection under Article 100(c) EPC had not been withdrawn and Article 100(c) EPC was part of the appeal proceedings. "
• The request is not admitted.
• The patent is revoked. 

EPO 

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

T 1886/21 - Formed; permits other elements

Key points

• "the appellant-opponent 1 has argued that the patent does not [sufficiently] disclose [under Art.100(b) EPC] an embodiment of the invention that implements the secondary drive mechanism in the way required by the penultimate claim feature, namely it being: formed by a stationary secondary guide track associated with the periphery of the rotatable carousel, and a follower wheel being kept in a lifted position by the secondary guide track"
•  "Before looking in detail at the embodiments, the Board notes that the usual meaning of the word form (see Oxford English dictionary on-line (OED)) is: To construct, frame; to make, bring into existence, produce. Const. from, of, out of (the material or elements). Thus the word form and its cognate formed used in this claim feature define elements of which the secondary drive mechanism is made or constructed but implies no exclusivity to those elements. In other words, contrary to how the appellant-opponent 1 has argued, the claim does not exclude that the secondary drive mechanism comprises more elements than a stationary secondary guide track and a follower wheel."
• " Bearing in mind that the claim does not require the secondary drive mechanism to be exclusively comprised of a secondary guide track and a follower wheel, the fact that the embodiment also includes a torsion spring does not mean that the skilled person cannot carry out the invention as the appellant-opponent has suggested. "
• "For these reasons, the Board considers that the invention according to claim 1 is sufficiently disclosed, Article 83 EPC. "

EPO 

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

T 1255/21 - Close reading of the clinical trial document

Key points

• A clinical trial registration document kills the patent.
• Note, I understand clinical trial pre-registration is mandatory and is public.  Whether and how that will benefit or negatively affect medical research is beyond the scope of this blog post. 
• Document D25 is a print-out from the website "International Clinical Trials Registry Platform" maintained by the WHO. It refers to a clinical trial with the title "A Phase I/II Trial of TG01 and Gemcitabine as adjuvant therapy for treating patients with pancreatic cancer" registered with EUCTR, the EU Clinical Trials Register. The proposed trial aims to "assess the potential for interference of Gemcitabine on immune responses to TG01 [...] in patients receiving TG01 and GM-CSF after primary resection of pancreatic adenocarcinoma", to "assess the safety of Gemcitabine given concomitantly with TG01/GM-CSF vaccination" and to "assess the efficacy of TG01 and GM-CSF in patients with resected pancreatic cancer" (see under "Primary Outcome(s)"). The exploratory objective is to "assess the relationship between KRAS status and recurrence".
  
  Mulitiple starting points for inventive step
• The OD analyzed inventive step starting only from another document, D23, as the closest prior art. The Board: "according to the established case law of the boards, the assessment of inventive step should be done from all documents that could represent alternative workable routes to the invention (see Case Law of the Boards of Appeal, 10th edition 2022, I.D.3.1). Moreover, if a piece of prior art is "too remote" from an invention, it should be possible to show that the invention would not have been obvious to a skilled person starting from this piece of prior art (ibid.).'
• "The product code "TG01" is not commonly known. It is followed by a list of seven components, each of which has a "Current sponsor code" ("12A", "12C" etc.), an "Other descriptive name" (e.g. "12-A-p21 RAS(5-21)","12-C-p21 RAS(5-21)"), a "Concentration unit" ("mg milligram(s)") and a "Concentration number" ("0.1-")."
• "It was disputed between the parties whether the skilled person would have been able to determine what the composition identified as "TG01" actually consisted of, in particular, whether they would have known that it referred to a peptide vaccine with a specific composition.  "
• " In a fast-moving field such as medical research, and in particular the field of oncology, review articles can be considered to reflect the skilled person's common general knowledge (see e.g. decision T 1110/03, point 2.3 of the Reasons). Document D15 is such a review article and it discloses that the seven most common KRAS mutations in codons 12 and 13 were "p.G12D","p.G12V", "p.G12C", "p.G12A", "p.G12S", "p.G12R", "p.G13D" (see document D15, Abstract and Figure 2). In the light of their common general knowledge, the skilled person at the relevant date of the patent would therefore have recognised that the seven one-letter-code amino acid designations in the descriptive names and in the sponsor codes of the p21 Ras peptide components of TG01 used in document D25 corresponded exactly to the seven most common KRAS mutations in positions 12 and 13. The skilled person would also have recognised that the designations "12" (six times) and "13" (once) in the descriptive names and in the sponsor codes corresponded to the positions of the mutations in the RAS peptide ("12-A-p21 RAS(5-21)", "13-D-p21 RAS(5-21)" etc.). " 
• " In conclusion the skilled person having common general knowledge in mind would have recognised that the "TG01" composition referred to in document D25 contained seven peptides consisting of residues 5 to 21 of the p21 RAS oncoprotein and carrying each one of the seven most frequent mutations at positions 12 and 13."
• "The full sequence of the 17 amino acid long peptides is disclosed on lines 1 to 3, left-hand column of page 1123 of document D6. Because of the reference to "K-ras 5-21" and the identical amino acid abbreviations at positions 12 and 13, the skilled person would understand that the peptides disclosed in document D6 are identical to the seven components of TG01 in D25 named "12-A-p21 RAS(5-21)", "12-C-p21 RAS(5-21)", "12-D-p21 RAS(5-21)", "12-R-p21 RAS(5-21)", "12-S-p21 RAS(5-21)", "12-V-p21 RAS(5-21)" and "13-D-p21 RAS(5-21)". "
• " In conclusion, the use of the code-name "TG01" in document D25 does not affect the status of this document as a realistic starting point for assessing inventive step because the skilled person would have been able to determine what the composition identified as "TG01" consisted of."
• Turnging to the distinguishing feature: "Document D25 discloses a proposal for a clinical trial for "TG01 and Gemcitabine as adjuvant therapy for treating patients with pancreatic cancer" (see "Public title"), i.e. of a composition falling under the definition in the claim. The only difference between the disclosure in the patent and the disclosure in document D25 is that the former [=the patent] discloses that the therapeutic effect which the trial is set up to test, is actually obtained. The evidence in the patent that said effect is obtained comes from the results of the DTH skin tests disclosed in the examples. It is common ground that this test is a suitable indicator for the existence of the relevant therapeutic effect."
• I.e., even if D25 explicitly discloses the claim, the claim is still novel, because for a second medical use claim, "it works" is an implicit feature that can provide for novelty (and inventive step, possibly).
• "the objective technical problem can be seen as providing an effective treatment for (pancreatic) cancer."
• "In view of these positive reports of gemcitabine in combination with peptide or nucleic acid vaccines, the board cannot conclude that there was any prejudice or teaching away from combining peptide vaccines with gemcitabine in the art, which would have dissuaded the skilled person to put the clinical trial proposal of document D25 into practice. Rather, based on the teaching in the prior art and their common general knowledge, the skilled person is judged to have had a reasonable expectation of success when putting the proposal of document D25 into practice."
• Therefore, the subject-matter of claim 1 is not inventive.
• 
  

EPO 

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

T 2703/18 - Search fee refund

Key points

• This is an appeal against a decision of an Examining Division refusing the application and refusing the refund of an additionally paid search fee under Rule 64.
• "The examining division refused the application on the basis that the main request and auxiliary requests 1 and 2 did not meet the requirement of an inventive step, Article 56 EPC, and because auxiliary request 3 was not admitted under Rule 137(3) EPC. It rejected the request to refund a further search fee because it confirmed the search division's non-unity objection against the original set of claims."
• An amended set of claims was filed in appeal after the Board cited new prior art of own motion and in reply to clarity objections of the Board. The Board considers those claims to be allowable. 
• The invention is interesting but too advanced software technology for me. 
• D1 was the master thesis of one of the inventors on the same topic.
• "The first two authors of D8 are the inventors of the present application. D8 is reference [137] in the later-published PhD thesis of the second author, to which the appellant drew the attention of the board in the grounds of appeal (page 26, fifth complete paragraph)."
• "The board noted that it was not convinced by the examining division's inventive step lines of argument starting from either D1 or D2. However, claim 1 of the main request and auxiliary requests 1 and 2 did not appear to involve an inventive step starting from D2 combined with common general knowledge as illustrated by D8."
• Turning to the requested refund of the additionally paid search fee: "As the appellant's refund request concerned only the further search fee paid for original claims 10 and 11, the examining division had to assess whether the communication under Rule 64(1) EPC was "justified" - within the meaning of Rule 64(2) EPC - to the extent that it required a further search fee to be paid for original claims 10 and 11."
• "In a number of board of appeal decisions, it has been considered that the scope of the review under Rule 64(2) EPC (previously Rule 46(1) EPC 1973) to be carried out by the examining division is limited to the consideration of certain facts and/or arguments."
• " it was considered in T 188/00 that "a review of the finding of lack of unity of invention has to be carried out having regard only to the facts presented by the search division in its communication under Rule 46(1) EPC [1973]" and that "the examining division has to base its review solely on the documents cited in the partial search report and on the specification of the different inventions drawn up by the search division, while taking into account argu­ments which the applicant may have submitted in support of his request for a refund"
• "The limitation to the facts presented by the search division, in particular the cited documents, postulated in T 188/00, has been followed, for instance, in T 1476/09, reasons 3, T 2285/17, reasons 4.2, and T 2873/19, reasons 9.1. In T 188/00 and in T 1476/09, the board found that the examining division's reasoning why the communication under Rule 64(1) EPC had been justified was incorrect because it relied on prior art that had not been cited in the partial search report (see T 188/00, reasons 4.6, and T 1476/09, reasons 3)."
• "The present board agrees with T 188/00 to the extent that the examining division may only find that the communication pursuant to Rule 64(1) EPC was justified within the meaning of Rule 64(2) EPC on the basis of the facts regarding the prior art presented by the search division with that communication, in particular the documents cited in the partial search report including sheet B.

  On the other hand, the present board considers that a finding that the communication was not justified may well be based on further facts (for instance in the circumstances of the case in T 755/14)."

• "the present board considers that, in the context of Rule 64(2) EPC, the examining division may, in order to find the communication under Rule 64(1) EPC to have been justified, complete a reasoning outlined by the search division with the communication but may not replace it by an entirely different reasoning, even if based on the same prior art."

• "This position takes account of the fact that the applicant has to decide whether or not to pay further search fees only on the basis of the information provided with the communication under Rule 64(1) EPC. Where the search division decides to provide arguments with the communication as to why a further search fee would have to be paid, this is to enable the applicant to understand at this stage why the invitation is justified. The applicant would inevitably rely on these arguments to assess whether it is actually entitled to a complete search for a single search fee and, if so, would pay the further search fee with the expectation that it will be refunded upon review. In the board's view, it would be undesirable as a matter of fairness that such a refund may later be refused by the examining division because the communication is considered to have been "justified" based on an entirely different reasoning than that contained in the communication."

• "When assessing whether the application documents on file comply with the requirement of Article 82 EPC, as a requirement for the grant of a patent, the examining division is not bound by the search division's opinion on unity of invention "

• "for the reasons given at points 16.3 and 18.1 above, the board is not convinced by the reasons given by the examining division on why claim 1 of the then main request lacked an inventive step over D1 or D2 combined with D7. It follows that the board is also not convinced by the reasons given by the examining division in the context of Rule 64(2) EPC (and a fortiori by the search division) on why original claim 1 lacked an inventive step."

• "The additional search fee was paid for claim 10. ": The reasoning of the examining division, like that of the search division, ignores at this stage the depen­den­cies of these claims [i.e. claim 10] (apart from their dependency on claim 1) and appears to have only considered the additional features defined in each of the claims."

• "Original claim 10 was directed to a "method according to one of the preceding claims 3 to 9" and original claim 11 to a "method according to one of the preceding claims 3 to 10". Hence, at least the subject-matter of original claim 3 (itself being dependent on original claim 1) was common to the first and the second "search subjects".  They may only be non-unitary if original claim 3 was not inventive, but this has neither been alleged nor established by the examining division in its reasoning on Rule 64(2) EPC.

• " The board therefore concludes that the communication pursuant to Rule 64(1) EPC was not justified and the further search fee paid for original claims 10 and 11 is thus to be refunded, Rule 64(2) EPC."

• The decision also contains interesting remarks on Art.82. 

EPO 

You can find the link to the decision and an extract of it after the jump.