T 0778/21 - When must a witness be heard?

Key points

• The decision includes a tutorial on proof of public prior use. 
• "a) First variant - If the opponent's evidence on file, for example documents and affidavits, do not confirm the alleged facts, or if doubts remain as regards their credibility, and the opponent, as the party bearing the burden of proof, requests an inspection or hearing of such affidavit writers as witnesses, such hearing and/or inspection should be granted (T 1363/14, reasons 2.2.4)."
•  "If, as a further variant, the opponent's evidence on file confirms the facts provided to substantiate the prior use with a sufficient degree of certainty (i.e. as such do not give cause to doubt their credibility) and the proprietor has contested the findings and offered counter evidence and/or requested to hear the authors of the affidavits as witnesses, it cannot be concluded at this stage that all the facts of the prior use have been proven. Rather, such a conclusion can only be drawn after taking and evaluating the entire available evidence offered by the parties, including (counter) evidence by the patent proprietor. Thus, if the opponent's evidence confirms the prior use, the (counter) evidence offered by the patent proprietor becomes relevant and needs to be considered. If assertions made in an affidavit or in any other witness declaration remain contested, a request from a party to hear the (available) witness must be granted before these assertions can be made the basis of a decision against the contesting party (Case Law of the Boards of Appeal, 10th edition, G.3.3.1)."
• "To conclude in such a case that the opponent proved its allegations without considering the counter evidence goes against the prohibition of prejudging the weight of evidence and violates the proprietor's right to be heard. It contradicts Articles 113(1) and 117(1) EPC which embody a basic procedural right generally recognised in the EPC contracting states, i.e. the right to give evidence in appropriate form and the right to have that evidence heard (G 2/21, OJ 2023, 85, reasons 41). This right applies not only to the party bearing the burden of proof but also to the other party with respect to counter evidence. Thus, to decide whether a fact can be regarded as proven, all the relevant evidence needs to be taken into consideration (G 2/21, OJ 2023, 85, reasons 42; T 474/04, reasons 6-10).  "
• "The principle of unfettered consideration and evaluation of the evidence does not apply until after an offer of evidence has been taken up and cannot be used to justify not taking offered evidence into account (G 2/21, point 44 of the reasons). Thus, if the evidence offered as proof of contested facts is potentially relevant, the body hearing the case must, as a rule, order that it be taken into account (G 2/21, point 42 of the Reasons; see T 474/04, reasons 8, 10) otherwise the party's right to be heard would be violated. "
• Note also the Guidelines, regarding affidavits: "If the alleged facts are contested by the other party, the opposition division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. The ensuing hearing of the witness allows the opposition division and the parties to put questions to the witness and thus enables the opposition division to establish the facts on the basis of that person's testimony. If that person is not offered as a witness, the opposition division will not pursue this evidence further."

EPO 

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

T 2149/21 - Commerical products as prior art

Key points

•  "The appellant [opponent] submits that the method of operative claim 1 lacks novelty over the polymerization method described in document D32 [Comar Chemicals (Pty) Ltd, Quality Operational Procedure, Polymerization of Butadiene with Neodymium Finished catalyst] when using the catalysts under the trade names COMCAT Nd-FC (NH), COMCAT Nd-FC/20 (NH) and COMCAT Nd-FC/SF of COMAR CHEMICALS (Pty) Ltd, whose commercial availability at the relevant date of the patent in suit is mentioned in paragraph [0075] of the patent in suit and in the priority documents."
• "Document D32 was allegedly conjointly delivered to customers of said catalysts. Accordingly, the prior use invoked by the appellant concerns the use of the catalysts under the trade names COMCAT Nd-FC (NH), COMCAT Nd-FC/20 (NH) and COMCAT Nd-FC/SF of COMAR CHEMICALS (Pty) Ltd in the method described in D32."
• Note, the Board does not speak of 'public prior use'. Probably, the actual use of the catalyst by the buyers inside their chemical plants was not public. 
• "The opposition division was of the opinion that the subject matter of claim 1 was novel over the alleged prior use. The only reason provided concerns steps (i), (ii) and (iii), none of which is in the opposition division's opinion unambiguously disclosed in D32"
• "The opposition division, however, only took position on what document D32 would describe, but not on all elements alleged to be constitutive of the prior use invoked. Whereas it seems that the appellant's submissions concerning step (iii), i.e. the way to add the alkylating agent are only based on D32, the appellant's submissions concerning steps (i) and (ii) relied on other documents, in particular documents D20 to D23 and D31, as well as information provided in paragraph [0075] of the specification. Those submissions were not analysed in the contested decision. "
• I think the case is about inherent features as anticipating, but the Board's decision is not explicit about that.
• "Concerning step (ii), it is the position of the appellant in view of point 6 of declaration D31 that due to storage and shipment the catalysts mentioned in paragraph [0075] are necessarily aged for more than 5 days. This argument was not dealt with in the contested decision, although this was not only addressed in D31, but stressed in the notice of opposition"
• "The appellant's submissions concerning the public availability of COMCAT Nd-FC (NH), COMCAT Nd-FC/20 (NH) and COMCAT Nd-FC/SF of COMAR CHEMICALS (Pty), [which are undisputedly catalyst according to step (i) of claim 1] which was addressed in point 5.2 of the notice of opposition, were not dealt with in the reasons for the contested decision. The opposition division only considered document D32, but not all submissions and evidence relative to the alleged prior use, namely the sale and delivery of these catalysts to which a document D32 describing their use in a polymerization procedure was allegedly attached.  
•  "the failure of the opposition division to give due consideration to facts, evidence and arguments, which from the appellant's submissions are central to the alleged lack of novelty of claim 1 over the invoked prior use, constitutes a violation of the right to be heard in contravention of Article 113(1) EPC."
  
  
• We will have to see if G 1/23 (not yet available at the time of writing) has any relevance for this case. 

EPO 

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

T 0205/22 - No power to disadmit admitted evidence

Key points

• "In view of the above considerations, the present board concludes that there is no basis for overruling a decision to admit late filed evidence by the first instance (cf. Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.4.4). Moreover, since there seems to be no divergence in the position of the different boards in this respect, the present board does not see any reason to refer a question to the Enlarged Board. "
• "While decision T 2049/16 formulates the question of whether there is a discretion to overrule a decision to admit late filed evidence (Reasons 3.2), it then points out that G 7/93 concerns the overruling of a decision not to admit documents, and that the EBA did not intend to make a general statement to be applied to other situations. Indeed, this decision also contradicts the respondent's position when it concludes that overruling the admission of documents would be inconsistent with the principle of examination by the EPO of its own motion under Article 114(1) EPC. Moreover, as also pointed out in Reasons 3.2 of T 2049/16, if a document is admitted on the basis that it is considered to be prima facie relevant but it turns out that it is in fact not relevant, admitting the document would be unlikely to negatively affect proprietor's position."
• It should be noted that not giving the other party a sufficient opportunity to comment on the admitted document can be a substantial procedural violation and a reason for setting aside the appealed decision.
  
  
• " the Board would like to stress that since the opposition was rejected, there was no need for the patentee to file auxiliary requests before the opposition division, and a request filed at the beginning of the appeal proceedings cannot be rejected solely on the ground that it should have been submitted earlier (cf. T 141/20, headnote; T 1758/21,
  Reasons 7.4 and T 2202/21, Reasons 2.2.6)." 

EPO 

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

T 0731/22 - The Guidelines under Art. 12(4) RPBA

Key points

• The Board, in translation: "Since the opposition division rejected the opposition, auxiliary request 2 [filed during the oral proceedings before the OD] does not form the basis of the contested decision. According to Article 12(4) RPBA, auxiliary request 2 is not to be regarded as an amendment of the respondent's case if it was admissibly raised and maintained in the proceedings before the opposition division."
• " In assessing this question, the board will refer to the version of the Guidelines for Examination in the European Patent Office applicable at the time of the contested decision. In view of the Guidelines in force in December [2021] (see Guidelines for Examination in the European Patent Office, March 2021, H-II.3.5. and E-VI.2.2.), according to which - if the division concludes at the oral proceedings that the patent must be revoked, contrary to its preliminary, non-binding opinion in the annex to the summons - a request by the patent proprietor for (further) amendments is generally admitted into the proceedings, and claim 1 of auxiliary request 2 is also based on granted claims 1 and 5, auxiliary request 2, which is not the subject of the contested decision, was admissibly raised and maintained in the opposition proceedings."
• The request was also sufficiently substantiated in appeal.  
• "In the present case, the grounds of appeal, particularly with regard to document D3, only cited lack of novelty as a ground for opposition. Lack of inventive step was only mentioned in passing. Against this background, it is self-explanatory that the changes made, namely the inclusion of granted claim 5 in claim 1 of auxiliary request 2, represent an attempt to structurally restrict the claimed device in order to establish the novelty of the subject matter of claim 1 of auxiliary request 2 compared to document D3 [JP 2009 056681 A]. The requirements of Article 12(3) RPBA are therefore met in the present case, so that the board has no discretion under Article 12(5) RPBA to disregard the respondent's arguments."
• The Board seems rather friendly to the proprietor: the amended claims must be novel and inventive over D3. Since the amended feature was not in claim 1 as granted held allowable by the OD, there was no need (?) for the appellant/opponent to comment on that feature in the Statement of grounds.
• The case is remitted.
• There is the remarkable issue that there is no trace of AR-2 in the minutes or decision of the OD, though the parties agreed it was filed during the oral proceedings.

EPO 

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

T 1220/22 - The uniform concept of disclosure

Key points

• The question is whether a certain feature is a distinguishing feature of the claim over D4. D4 is a patent application cited as pre-published prior art. 
•  The appellant argued that the subject-matter of claim 1 differed from D4 in the addition/use of an ABX3 mineral having perovskite structure. This constituted a "double feature", i.e. firstly the use of an inorganic additive/mineral - which was merely an optional component, d), in claim 1 of D4 - and secondly the mineral having perovskite structure. It was clear from the description and claims 1 and 8 that these additives under d) were merely optional components in D4. Hence, choosing the presence of such additives in the compositions of claim 1 of D4 constituted a first selection. A second selection, from the list of inorganic additives under d) in claim 8 was necessary in order to arrive at the presence of titanates (in the granules). This assessment was also in line with the reasoning of decision T 1137/21. Similarly, no disclosure of titanates as inorganic additives under d) was directly and unambiguously derivable from the description of D4."
• "The board does not agree. Claim 1 of D4 clearly points to a preferred range  ..."
• "a person skilled in the art will arrive at the specific choice of titanates after performing a single selection from the list of additives under d) as called for in claim 8."
• "This conclusion can be confirmed by the following hypothetical consideration: if an amendment to claim 1 of D4 had to be considered under Article 123(2) EPC, a limitation of this claim to such embodiments would not create added subject-matter; rather, it would be directly and unambiguously derivable from the teaching of D4."
• "The board agrees with the [proprietor ?]  that a uniform concept of disclosure should be applied for the assessment of disclosure under Article 123(2) EPC and of establishing the distinguishing feature over the prior art, and in view of the above the board's findings are fully in line with this uniform concept. The case underlying T 1137/21, as referred to by the appellant, relates to a different scenario involving numerous selections from different dependent claims as originally filed, including less preferred choices. The scenario underlying T 1137/21 is thus not comparable to the case at hand.

  Consequently, the distinguishing feature of claim 1 is not the use of titanates but the use of a specific titanate, namely of one having perovskite crystal structure and the general formula ABX3."

EPO 

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

T 0924/22 - Applying the GL under Art.12(4) RPBA

Key points

• Should the Boards apply the Guidelines under the 'admissibly raised' clause of Art. 12(4) RPBA? 
• The Board:  "4. Admission of auxiliary requests 1 to 7 - The requests were filed early on in the opposition proceedings, with letters of 21 October 2019, 3 September 2020 and 5 August 2021 respectively, before the Rule 116(1) EPC deadline of 6 August 2021 mentioned in the summons of 25 November 2020."
• " Even if they did not converge, that criterion applies only if requests are late filed, after the Rule 116(2) deadline, see Examination Guidelines 2024, H-III, 3.3.2.2. ": 
• "As they were further substantiated to the required level in opposition, they are seen to have been admissibly raised in opposition. Though they were not examined there is no indication that these requests were not maintained. 
• "Finally, though their substantiation in appeal is very succinct, the Board considers it sufficient to allow all to understand the case the respondent proprietor is making for them. The Board therefore decided to admit these requests into the appeal proceedings in the exercise of its discretion under Art 12(4) and 12(5) RPBA."

EPO 

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

T 0342/22 - Unable to present its complete case

Key points

• The OD decided to maintain the patent in amended form on the basis of an auxiliary request filed late during the oral proceedings. The appellant/opponent presents new attacks in appeal. 
•  "The board is of the view that the appellant [opponent] could and should have raised all its objections before the opposition division. The auxiliary request, although late-filed, was a combination of the granted independent claim together with only complete dependent claims from the limited number of granted claims, and the appellant [opponent] did not request that the proceedings be postponed nor indicate in any way that it was unable to present its complete case at the oral proceedings before the opposition division."
• A possible procedural obligation to request postponement of the oral proceedings is a bit doubtful. The now-mentioned alternative course of action, indicating that you are unable to present a complete case, is, however, interesting. The question is, however, how can the OD properly respond to such a remark?

EPO 

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

T 0566/20 - Claim interpretation, unwarranted advantages, and requests that would not have been considered

Key points

• " This board endorses the view that a patent proprietor would be awarded an unwarranted advantage if it were allowed to restrict the claimed subject-matter by discarding at will technically reasonable interpretations in view of the description (see T 1127/16, point 2.6.1 of the Reasons and T 169/20, point 1.3.3 of the Reasons)."
• "Therefore, the fact that the description and drawings support one interpretation of an ambiguous feature is not sufficient for other interpretations of the ambiguous feature that are technically reasonable in the context of the claim to be discarded. "
• The OD maintained the patent as granted, i.e. rejected the opposition.
• The Board finds claim 1 as granted to lack basis in the application as filed.
• The proprietor filed AR-1 with its reply to the appeal.
• "In the board's view, auxiliary request 1 should have been submitted in the proceedings leading to the decision under appeal."
• As a comment: why? And how would it serve the appeal? The OD would never have considered the auxiliary request as the OD found the claims as granted to be allowable. Moreover, any debate between the parties about the amendments in the auxiliary request would have to be presented again in appeal (no simple referencing to the submissions before the OD).
• "A patent proprietor cannot permissibly postpone the filing of requests that should have been filed at first instance simply because it considered the opponent's objections to be unfounded. A patent proprietor should be aware that a board of appeal may agree with the objections raised by an opponent. The patent proprietor takes a risk in refraining from filing claim requests during the first-instance proceedings in the belief that the objections raised are unfounded, only to file those requests during the appeal proceedings."
• Again, how does this rule serve the purpose of the appeal procedure, namely the judicial review of a first-instance decision?
• 
  
• The Board does not admit the request.
• 
  

EPO 

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

Summertime reading - Servier decision (II) - Paper patents and dawn raids

• In the summer of 2020, I wrote about the Servier decision of the European Commission imposing a fine on patent proprietor Servier for certain agreements it concluded with generic companies. Servier appealed to the General Court. The GC judgement was issued in 2018. The further appeal to the Court of Justice of the patent proprietor Servier was (for the greater part) dismissed; the appeal of the European Commission was allowed. 
• I would like to cite one paragraph of the GC judgment (again).
• EU General Court, para. 243: “It must borne in mind that, in the absence of harmonisation at the European Union level of the patent law applicable in the present case, the extent of the patent protection conferred by a patent granted by a national patent office or by the EPO can only be determined in the light of non-European Union rules, that is to say, national law or the EPC (see ....). Consequently, where, in the context of an action for annulment brought against a Commission decision, the EU judicature is called upon to examine a settlement agreement in relation to a patent governed by rules other than those of EU law, it is not for it to define the scope of that patent or to rule on its validity.
  It should also be noted that, in the present case, in the contested decision, although the Commission referred, in recitals 113 to 123, to the applicants’ strategy of creating a ‘patent cluster’ and ‘paper patents’, [citing from internal documents of Servier; see the Commission Decision, p.31 ff. ] it did not, however, rule on the validity of the disputed patents at the time the agreements were concluded.”
• ECLI:EU:T:2018:922, para. 243, English translation, link below.
  
  
• An article about the case was published by Andreas Heinemann in 2019. Heinemann writes: “For our context, it is important to note that the fact-finding of the European Commission reveals the strong presence of blocking strategies. In fact, the Servier decision contains an impressive description of the reality of blocking patents. Some quotations from internal documents as reported by the European Commission shall illustrate this aspect: Between 2000 and 2005, Servier applied for and obtained a number of process and crystalline form patents, which Servier internally referred to as ‘*blocking patent’ or ‘*paper patent’. According to Servier’s own assessment, some of them involved ‘zero inventive activity'.” (citing the Commission decision, link below). 
• Note how the term 'paper patent', originating from internal documents of Servier (perhaps obtained with the 'unannounced inspections of the premises of Servier'), is cited not only in the Commission decision but also in the GC judgment. 
• The Judges of the Court of Justice will therefore also have seen these terms originating from an internal document "ID9972" of  Servier that was obtained during the inspection (also known as 'dawn raid', see here) of the premises of Servier (see recital 276 in the Commission Decision).
• Heinemann 2019 “In spite of these findings, the European Commission did not apply a separate competition law analysis to the acquisition of blocking patents or to the filing of a patent which – also according to the conviction of the applicant – does not fulfil the patent requirements. The findings of the European Commission rather constitute the overall context which helps to understand the originator's strategies with respect to generic companies [*]. The Commission does not consider the originator's strategy of filing blocking patents a violation of competition law. ... ”
• * - i.e. the use of the term 'paper patent' by the proprietor provided the context for the proprietor's strategies with respect to the agreements it made with generic companies. These agreements were considered to be violations of EU competition law (in particular Article 101(1) TFEU; as confirmed by the CJEU in the partial dismissal of the appeal of Servier). 

The key patent at issue was revoked by the Board in decision T1753/06 in 2009.

https://competitionlawblog.kluwercompetitionlaw.com/2018/12/18/servier-v-commission-case-t-69114-5-crucial-points-of-the-second-pay-for-delay-decision-of-the-eu-general-court/

Heinemann 2019

Heinemann A. (2019) Blocking Patents and the Process of Innovation. In: Mathis K., Tor A. (eds) New Developments in Competition Law and Economics. Economic Analysis of Law in European Legal Scholarship, vol 7. Springer, 
https://doi.org/10.1007/978-3-030-11611-8_8 

https://www.ius.uzh.ch/dam/jcr:66f8a3a6-8876-4cd4-bf68-e09022a75930/Heinemann_Blocking_Patents.pdf 


Heinemann 2018
Heinemann, Andreas, Abusive Filing of IP Rights (September 18, 2018). Available at SSRN: https://ssrn.com/abstract=3251209 or http://dx.doi.org/10.2139/ssrn.3251209


General Court Judgment

ECLI:EU:T:2018:922 (Servier) English translation , case no T‑691/14,
http://curia.europa.eu/juris/document/document.jsf?docid=208901&mode=req&pageIndex=1&dir=&occ=first&part=1&text=&doclang=EN&cid=3924387

European Commission Decision

9.7.2014, Case AT.39612 (Servier)

https://ec.europa.eu/competition/elojade/isef/case_details.cfm?proc_code=1_39612

Court of Justice Appeals 

https://curia.europa.eu/juris/liste.jsf?num=C-176/19&language=en (appeal by Commission)

https://curia.europa.eu/juris/liste.jsf?num=C-201/19   (appeal by Servier)

T 1870/21 - Admitting a document is a substantial procedural violation (?)

Key points

• Can admitting a document be a substantial procedural violation?
• Note that current case law appears to be that the  Board can not review a decision to admit a submission.
• "According to the appealed decision (see §6.2), [D50, filed by the proprietor] [was] not relevant for the reasons of the decision, so that the appellant's [opponent's] request not to admit them was not discussed. This is however contradicted by the fact that the inventive step reasoning set out later in the decision relies on "E40", which corresponds in fact to D50 in the respondent's original numbering (see §8.4.3.1)."
• " The relevant question is thus whether the opposition division committed a substantial procedural violation justifying a reimbursement of the appeal fee under Rule 103(1)(a) EPC."
• "it remains that the opposition division took D50 into account in the appealed decision without first hearing the parties on the appellant's request not to admit D50. By deciding to reject the opposition without hearing the appellant on a request relevant to that decision, the opposition division infringed Article 113(1) EPC and committed a procedural violation. Considering that, during the oral proceedings before the opposition division, neither the admittance nor the content of D50 were discussed, and no decision as to its admittance was announced, it could not be expected from the appellant that they would present their arguments at the oral proceedings with regard to D50."
• Note, the problematic issue seems to be not so much the decision to admit D50, but the fact that the opponent had no fair or real opportunity to comment on D50 during the oral proceedings.
  
  
• "According to the respondent [proprietor], D50 is not the underlying reason for the opposition division's finding of non-obviousness, which was rather motivated by the case law (T385/07 and T715/03) acknowledging inventive step over prior art referencing ongoing clinical phase I and II trials. The opposition division's conclusion at the end of section 8.4.2 would already address the question of 8.4.3 regarding whether there was a reasonable expectation of success in view of the promising results, such that the same conclusion would have been reached even without section 8.4.3.1."
• The Board: "The section relying on D50 (i.e. §8.4.3.1) is the only passage of the decision explaining why, in the opposition division's view, and contrary to the appellant's position, there was no reasonable expectation of success despite these promising results disclosed in the prior art D2/D3."
• The Board does not go into the content of D50.
• "In section §8.4.4, the opposition division differentiates the case at hand from decisions T 2506/12, T 725/11 and T 239/16, and concludes that the knowledge that clinical trials were ongoing would not have given the skilled person a reasonable expectation of success. This passage does not address either the issue of expectations in view of the promising experimental in vitro and in vivo results reported in D2/D3, which the appellant had raised in the first instance proceedings (see the third paragraph on page 4 of the minutes)."
• "Accordingly, it cannot be concluded that the argumentation based on D50 is to be seen as a merely supererogatory and incidental argument in the appeal decision. The Board therefore concludes that the appealed decision is tainted by a substantial procedural violation."

• The Board remits the case (and reimburses the appeal fee).

• I assume that the opponent can now comment on D50 in the procedure before the OD? (and that the OD has to decide formally on the admissibility of D50?) I also assume that the opponent made the relevant arguments already in the appeal (otherwise, there would be an issue of harmless error).

EPO 

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

T 0856/22 - Opponent must request postponement oral proceedings (?)

Key points

• The OD admitted D18, a document with experimental results filed by the proprietor in the procedure before the OD. The opponent appeals.
• " Document D18 was filed by the [proprietor] before the final date for making written submissions set by the opposition division under Rule 116 EPC. The opposition division therefore had discretion to admit and consider document D18, in particular if it was considered prima facie relevant, as is evident from point 14.1 of the decision under appeal. The opposition division thus applied the correct criterion of prima facie relevance (see also Case Law of the Boards of Appeal, 10th edition 2022 (Case Law), IV.C.4.5.3a)), [...] ."
• " Furthermore, the [opponent] did not request that the oral proceedings before the opposition division be postponed [i.e. adjourned] when document D18 was admitted, and no violation of the appellant's right to be heard - resulting from the admission of document D18 - is apparent. The opposition division therefore correctly admitted document D18 into the opposition proceedings."
• The opponent/appellant filed an experimental report D21 with the statement of grounds.
• The Board: "Furthermore, the appellant did not submit that the filing of document D21 was triggered by the admittance of document D18 during oral proceedings before the opposition division. In any case, had the appellant intended - in the opposition proceedings - to react to the admittance of that document by filing the experimental data now filed as document D21, it would have been their duty to request a postponement of the oral proceedings - either before or even during the oral proceedings - following the opposition division's decision to admit it. However, none of these measures was taken."
• Note, the 'in any case' observation is obiter.
• As a comment, in the case at hand, the appeal of the opponent is dismissed, but suppose the Board revoked the patent (i.e. found the patent to be invalid), any postponement of the oral proceedings before the OD would have added a few months to the lifetime of the patent. It can be seen that usually, the opponent has a legitimate interest in a swift decision of the OD in order to have an invalid patent finally revoked without undue delay. Assuming a procedural obligation of a party to request a postponement of the oral proceedings in opposition cases is, therefore, not without problems.

EPO 

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

T 0919/21 - Patent maintained as granted and auxiliary requests

Key points

• The opponent appeals the decision to reject the opposition. The OD found claim 1 as granted to be sufficiently disclosed.
• "Claim 1 of the main request (patent as granted) reads as follows: "1. A method for producing coagulation factor IX with an improved glycosylation pattern in a cell culture comprising: culturing mammalian cells that contain a gene encoding a coagulation factor IX in a cell culture medium comprising between 10 nM and 600 nM manganese under conditions and for a time sufficient to permit expression of coagulation factor IX, wherein the glycosylation pattern of the expressed coagulation factor IX is more extensive than the glycosylation pattern observed under otherwise identical conditions in otherwise identical medium that lacks the manganese, "
• The Board, after an extensive technical analysis, concludes that: "the patent does not contain any data that credibly demonstrate that a FIX with a more extended glycosylation pattern can be produced in a cell culture medium comprising between 10 nM and 600 nM manganese than in an otherwise identical medium that lacks the manganese."
• " Claim 1 of each of auxiliary requests 14 and 15 [filed by the patentee with the reply to the appeal] comprises the feature that the glycosylation pattern of the expressed FIX is at Ser-61"
• "Apart from being late filed, contrary to the obligation under Article 12(4) RPBA that a party should provide reasons when filing an amendment, the respondent's reasons are not persuasive. The objection that only the glycosylation at Ser-61 in FIX had been investigated in the patent although FIX contained multiple other glycosylation sites had been raised in the notice of opposition (page 17). Therefore, auxiliary requests responding to this objection could have been submitted in the opposition proceedings.
• As a comment, the Board uses "could". However, Art. 12(6) RPBA uses "should".
• Moreover, since the opposition division maintained the patent as granted, the OD would not have arrived at the requests even when filed before the OD. Hence, for the judicial review of the OD's decision, the filing or not of the auxiliary requests does not matter.
• However, it is not entirely clear to me if the amendment addresses the Board's reasons for finding claim 1 as granted to be insufficiently disclosed. In that case, the Board could have rejected the requests as unallowable.
• See also the consideration of the admissibility of Auxiliary Requests II - IV in case T 1673/22: "Similarly, the appellant (proprietor) chose not to file auxiliary requests II-IV, because claim 1 of these requests corresponds to claim 1 of auxiliary requests 2-4 which was considered unallowable [by the OD]".

EPO 

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

T 1348/21 - Inadmissible requests and cost apportionment

Key points

• The Board held some requests inadmissible. The opponent requests a different apportionment of costs. 
• "The opponent requested a different apportionment of costs in its favour due to the patent proprietor's alleged abusive behaviour in regard to the submission of five new claim requests four days before the oral proceedings."
• "For abusive behaviour to be acknowledged, the patent proprietor would have had to have filed these claim requests not in pursuit of a legitimate aim, such as that the patent be maintained on the basis of one of these requests, but rather primarily to cause damage to the opponent. The burden of proof for an abuse of rights is on the person claiming it and such an abuse must be established without doubt (see J 14/19, Reasons 13.1). Persistently pursuing own interests in proceedings before the EPO does not as such amount to an abuse of procedure (T 2892/19, Reasons 5). Moreover, preparations for discussing the admittance and substance of late-filed submissions are part of the normal work that can be expected of any party and its representative (see T 1848/12, Reasons 2.1)."
• "In the case at hand, the opponent did not provide any proof as to the patent proprietor's possible intention to cause harm, nor is the Board aware of any such indication. The mere fact that the claim requests concerned were not admitted or allowed by the Board, or were possibly unlikely to be admitted or allowed, does not constitute any such indication. The Board also points out that it admitted auxiliary request 7-1, i.e. one of the claim requests concerned, into the appeal proceedings, as it considered its filing a legitimate reaction to the Board's observations in its preliminary opinion (see point 6.1 above)."
• "The Board therefore sees no reasons of equity which could justify diverging from the principle of Article 104(1) EPC whereby each party should bear the costs it has incurred."

EPO 

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

On oral proceedings

Key points

• Can a Board of Appeal reject an appeal without holding oral proceedings where these are timely requested by the appellant, in a case where the appellant maintains the request and intends to attend the oral proceedings, and where the appeal was filed by the applicant and is not an appeal against an earlier decision of a Board of Appeal (e.g. unlike the unusual cases of G 1/97 respectively G2/19)?

To quote Romuald Singer, Das Neue Europäische Patentsystem, 1979, page 54:

"Besondere Bedeutung wird der mündlichen Verhandlung beigemessen (Art. 116). Sie kann in jedem Stadium des Verfahrens durchgeführt werden und findet nicht nur dann statt, wenn das Europäische Patentamt sie für sachdienlich erachtet, sondern anders als nach deutschem Patentrecht auch auf bloßen Antrag eines Beteiligten. "

Singer, EPÜ, first edition, 1989, p.497:

Anders als in manchen nationalen Patenterteilungsverfahren gibt das EPU den Beteiligten grundsätzlich einen Rechtsanspruch, eine mündliche Verhandlung im Prufungs, Einspruchs- und Beschwerdeverfahren zu verlangen; im Verfahren vor der Eingangsstelle ist dieser Anspruch beschränkt.

Aus der Fassung dieses Satzes [=Article 116(1), first sentence] in allen drei Amtssprachen ergibt sich klar, daß das EPA, falls ein Beteiligter eine mündliche Verhandlung beantragt, nicht zu prüfen hat, ob die Verhandlung sachdienlich ist. 

Mathely, Le Droit européen des brevets d'invention, 1978:

2. Le recours à la procédure orale peut encore être ordonné pendant l'ins à la requête de l'une des parties, c'est-à-dire du demandeur. rocédure, dan ou du breveté, d'un opposant ou d'un intervenant.

En principe, la procédure orale est obligatoirement orga- nisée, dès que l'une des parties le demande.

A ce principe, deux exceptions sont prévues: (...)

 

See also Eskil Waage, Principles of Procedure in European Patent Law, 2002, page 95:

This provision is one of the "Common provisions governing procedure" which apply to all the administrative departments and judicial bodies of the EPO. It sets out "an almost unqualified right to require oral proceedings to take place".7 Once a party has filed an appropriate request, a hearing must take place before the competent department. The party does not have to justify his request, and the EPO may not refuse the request even if it considers that the hearing is superfluous. A party has no obligation to present new material - facts, evidence, arguments or amendments at the hearing, and the EPO must not sanction financially a party who has requested a hearing and does nothing more than repeating orally what he has already submitted in writing.9 No considerations of procedural economy, not even a suspicion of an abuse of procedure, may stand in the way of the right of a party to be heard during oral proceedings. 10

7. Singer / Lunzer EPC, Article 113.04, p. 592, and Article 116.01, p. 612: "a legal right"; Schachenmann, in Singer / Stauder EPÜ, Artikel 116, n° 5, p. 634: "ein grundlegendes, absolutes und zwingendes Verfahrensrecht". See also Davis / Cole, EIPR 1999, 609; Schmitz, Mitt. 1993, 165 (at 169); and Guidelines E-III, 2. In the 1962 Preliminary Draft (CEE IV/8221/61, Commentary to Article 75a, p. 7), it is stated that oral proceedings, once requested, become "an essential pre-condition for the decision".
8. See, e.g., T 209/88 "ROBERT BOSCH", 20.12.1989, Reasons 3.3.
9 See Kockläuner, Mitt. 1989, 30 (at 32, n° II); Schachenmann, in Singer / Stauder EPÜ, Artikel 116, n° 68, p. 644; and Schmitz, Mitt. 1993, 165 (at 168, n° 4). See also T 125/89 "SCOTT PAPER", 10.1.1991, [1992] EPOR 41, Reasons 7: "a right even to repeat known arguments or to stress arguments already brought forward".
10 See T 556/95 "CHAUM", 8.8.1996, OJ EPO 1997, 205, Reasons 4.3; T 598/88 "SCHERING",7.8.1989, Reasons 2; T 194/96 "CONOR", 10.10.1996, Reasons 2; and T 685/98 "GPT", 21.9.1998, OJ EPO 1999, 346, Reasons 6.2; see also Singer / Lunzer EPC, Article 116.02, p. 613; and Case Law, 3rd ed., p. 261.

Of course, G 1/97 and G2/19 identified cases where the holding of oral proceedings was not necessary (note: I use the term cases; G1/97 does not explicitly say that the request at issue in that case was a proper appeal under Article 106 EPC). 

In G 2/19, the Enlarged Board held: 

"Artikel 116 (1) Satz 1 EPÜ ist vielmehr dahin einschränkend auszulegen, dass die bloße formale Position als faktischer Beteiligter am Beschwerdeverfahren nicht ausreicht, um die Durchführung einer mündlichen Verhandlung verlangen zu können, wenn der Petent [i.e. the party requesting the oral proceedings], wie hier, nicht zur Beschwerdeeinlegung befugt ist, weil er im Rechtssinne nicht am vorangegangenen Verfahren beteiligt war oder wenn er - was hier zugleich vorliegt - einen der Beschwerde nicht zugänglichen Gegenstand verfolgt. Vielmehr kann die angerufene Kammer ein solches Begehren umgehend schriftlich und, wie die Große Beschwerdekammer es in G 1/97 formuliert hat (vgl. Entscheidungsgründe Nr. 6 letzter Absatz), ohne Einhaltung weiterer prozessualer Formalitäten als unzulässig verwerfen."

G1/97 and G2/19, however, concerned exceptional cases where a procedure could hardly be called an appeal, at most because a document titled 'Notice of appeal' had been filed (and a fee paid and a letter with grounds filed); however, in both cases with a purport going well beyond the system of the appeals as set up in part VI of the EPC.

Travaux préparatoires EPC 1973

In the 1970 first preliminary draft for the EPC (established by the Intergovernmental Conference), Art.84, oral proceedings were to be held "on its own initiative or at [the applicant's] request, where it considers this to be expedient; however, the examining division "must give a hearing to the applicant on his request if it proposed to give a decision refusing the application wholly or in part".

In the 1971 second preliminary draft, Article 140, oral proceedings are held upon request (before the Examining Division, only upon request if refusal is envisaged). 

Document Br/12 e/69, minutes of Working Party I of 24  to 28 November 1969, p.25, states that the Working Party "thought it was enough to provide that a hearing [in appeal] should take place whenever any party requested it".

Thus, the Working Party modified the proposal in the (older) first preliminary draft of 1965 of the Working Group, which specified that appeal hearings were to be held at the request of a party only when the board found it expedient. 

EPC 2000

The legislator kept Article 116 the same as part of the EPC 2000 revision. I'm unaware of any debate about the right to oral proceedings in the context of preparing EPC 2000. This relatively recent consensus could be seen, perhaps, as an indication that there was no subsequent legal agreement or practice changing the interpretation of Article 116 EPC in the sense of Article 31(3) VCLT.

The minutes of the Diplomatic Conference of November 2000 do not seem to contain any discussion of Article 116 (link). 

Dynamic interpretaton

Linderfalk, in his extensive treatise on treaty interpretation, proposes on p.182 that what matters in the context of 'dynamic interpretation' is whether the term is to be interpreted as "a generic referring expression with a referent assumed by the parties to be alterable." Linder­falk, On the Interpretation of Treaties (2007), see also here.

Summertime reading - Patent classification and how searches were done in a paper world

Why do we have patent "classes" and why don't we use tags? Why do the classes have hierarchical numbering? 

How were searches done when the prior art was on paper (mostly older patents)? 

There is a very nice photo on the internet of the EPO search archive in the days of  paper prior art and cupboards: 

https://images.app.goo.gl/JZURa3iaKqakR2WY6 

(it is from the EPO facebook account - https://www.facebook.com/photo.php?fbid=536859276388679&id=436896529718288&set=a.440468462694428&locale=en-GB 

(I don't embed it here to avoid any copyright issues)

There is also a very interesting photo, "Employees in the patent office file room ca. 1940"

https://www.alamy.com/employees-in-the-patent-office-file-room-ca-1940-image243103165.html

J Ferrel, Should I have a patent search performed? (no date)

"The other reliability problem associated with searching is that the available search tools are not perfect. Until very recently, patent searches were performed largely by professional searchers in tennis shoes who would race through the millions of shelved patents in the Patent Office, searching through stacks of documents for specific related art. Trained searchers could proficiently scan quickly through boxes of patents, rapidly checking titles, abstracts and figures for hints of a specific invention. These traditional searches, although time consuming, produced surprisingly good results. The problem with these manual searches, however, was that if specific patents were missing from the shelves being searched, significant searching errors could occur. Keeping the patent stacks in pristine condition for searching has always been a losing battle for the Patent Office."

    https://www.carrferrell.com/should-i-have-a-patent-search-performed

History of the United States Patent Office - The Patent Office Pony - A History of the Early Patent Office - Chapter 31 -- The End of the First Century of the Patent Office

Printing patents had an interesting and lasting effect on the furniture which was required by the Patent Office. Before patent drawings were printed, examiners, while searching patents, had to look at the original drawings in the draftsman's office in large portfolio cases, such as those shown in the illustration from 1869 on page 173. There were 777 folio cases of original drawings which were safely removed from the draftsman's office in the fire of 1877. But when the drawings, and especially the entire patents, were printed, they were available for search in the examiners' rooms and soon in the new public search room. The necessary new filing system was provided by the shoe cases still in use in today's Patent and Trademark Office. The origin of the term shoe is lost, although every patent examiner knows where his shoes are. Some have attributed the term to Thomas Jefferson, suggesting that he stored his patents in shoe boxes. But we know that the drawings kept in the Patent Office in the preprinting days were of varying sizes and were kept in portfolios from the earliest days. Shoes, as we know them, could only have arisen after all patents were available in small, uniform sizes and could be kept in small, uniform boxes. A complete inventory of the moveable property in the Patent Office was made in 1870, [footnote 1] including numerous portfolio cases, portfolio racks, portfolio drawers, and cases for models, 22,000 volumes of books and 300 spittoons, but no shoes. Augustus Burgdorf, livery stable operator, undertaker and cabinet-maker of Washington, sold portfolios and cases to the Patent Office in 1878. [footnote 2] The first known mention of shoes was on March 28, 1879, when he sold shoe drawers to the Patent Office for $115. [footnote 3] What were called shoe drawers would now be called shoes. Among the many possible origins of the term is that preferred by your guide. Perhaps file cabinets suitable for holding bundles of patents while allowing easy access to search through them were already available before they were needed. Perhaps shoe shops of the day kept their supply of ready-made shoes in wood cabinets containing numerous drawers of just the right size to hold patents, and when the Patent Office wanted to order its first drawers, it ordered shoe drawers from Augustus Burgdorf. Or maybe not.

http://www.myoutbox.net/popch31.htm

J. Rolnicki, Outline Of The U.S. Patent Office Patent Examination Process, 22 May 2017 

I was a Primary Examiner with the U.S. Patent and Trademark Office many years ago. Much has changed at the Patent Office since I served as an Examiner. For example, when I was an Examiner, prior art searching or patentability searching was done manually. After reviewing a patent application that I was examining, I would then go to the appropriate file room or search room for the subject matter or technology of the patent application. In the search room, there were rows of file cabinets. Each file cabinet had a stack of small drawers called shoes. I think because they resembled small shoe boxes. Each shoe was dimensioned to hold a small stack of patents. There were no U.S. published patent applications back then. Each shoe contained a chronologically ordered stack of U.S. Patents that pertained to the technology I was searching. The same shoes also contained foreign patents and published foreign patent applications. I would pull up a chair in front of the file cabinet, and then pull out the first shoe and manually thumb through the stack of patents in the shoe. This was continued until all of the patents in the file cabinet shoes pertaining to the technology that I was searching were reviewed.

https://theblogforbusinesslaw.com/outline-of-the-u-s-patent-office-patent-examination-process/

Photo of the US Patent Offices with stacks of files: 

 

https://www.reddit.com/r/patentexaminer/comments/u4r2dn/us_patent_office_in_1924_now_the_the_national/#lightbox

I assume the CPC patent classes started as the numbering of the physical boxes holding the patents about a specific topic. But perhaps one of the valued readers of this blog still remembers?

T 0989/22 - Seriously contemplate and overlapping ranges (alloy case)

Key points

• Claim 1 specifies an alloy composition. 
• The Board, in translation: "It appears [...]  that there is no direct and unequivocal disclosure in D10 of an alloy having a composition as defined in claim 1 of the contested patent. To arrive at such an alloy the skilled person must make several choices among the specific ranges and values ​​disclosed in D10, which is not considered a direct and unequivocal disclosure. The combination of different limit values ​​from different value ranges is not considered disclosed (see T 900/18, Reasons 4.1 citing T 1634/13, Reasons 3.2). Furthermore, the ranges of values ​​should not be compared separately but together (see T 2623/19, Reasons 3.2 citing T 261/15, Reasons 2.3.1)."
• This is just the established case law for alloys, as far as I know. It is a bit of a specialized field (requirement to use "consisting of", etc.).
• "The criterion to be applied to assess the novelty of ranges of values ​​is direct and unequivocal disclosure (see T 1688/20, Reasons 3.4 and Reasons 3.3.1 citing G 1/03 and G 2/10)."
• " The concept of "seriously considering" cited by the appellant was initially described in decision T 26/85 (Reasons 9) and taken up again in decision T 666/89 (Reasons 7 and 8) and used in many other decisions concerning the overlapping of domains (Case law of the boards of appeal, 10**(th) edition, 2022, IC6.3.2). In T 666/89 the board held that the concept of "serious consideration" was a concept of novelty (Reasons 8).
• 
  
• "The board is of the opinion that the concept of "seriously considering" implies that the skilled person must assess whether the technical teaching of the earlier document is to be applied within the common range of values ​​(see T 26/85, Reasons 9 and T 666/89, Reasons 7) which is, in the opinion of this board, directly linked to the desired effect.
• "" However,[...]  in the meantime it is well established that direct and unequivocal disclosure is the indisputable criterion for assessing novelty. ""
• " This is why the concept of "seriously considering" is difficult to reconcile with the overarching criterion of direct and unequivocal disclosure in the case of multiple ranges of values."
• "It should also be noted that in T 26/85 the board concluded that novelty was given because the state of the art clearly dissuaded the skilled person from working within the claimed range of values. In the present case, even if the "seriously consider" criterion was accepted contrary to what was written above, it would be noted that all the alloys according to the invention of D10 given as examples have concentrations of Mg > 0.7 and Li > 1 in wt%. It seems unlikely that anyone in the trade would then seriously consider working at lower concentrations. "
• Note, the remark that " the concept of "seriously considering" is difficult to reconcile with the overarching criterion of direct and unequivocal disclosure" hence is obiter.

• See also T 1132/22: "The criterion to be applied when evaluating the novelty of ranges is the gold standard of whether there is direct and unambiguous disclosure (see T 1688/20, Reasons 3.4). In the case of multiple ranges, the concept of "seriously contemplating" as described in T 26/85 is not really in line with direct and unambiguous disclosure. In such a case, "seriously contemplating" is instead linked to the desired effect, which implies considerations known for inventive step (T 989/22, Reasons 1)."
• "To arrive at the claimed composition, the skilled person would have to choose specific end points from the different ranges disclosed. However, this is not considered to be direct and unambiguous disclosure (see T 900/18, Reasons 4.1 citing T 1634/13, Reasons 3.2). Furthermore, the ranges cannot be regarded individually but only in combination (see T 2623/19, Reasons 3.2 citing T 261/15, Reasons 2.3.1). Also, an example is a specific embodiment that cannot be combined with the description (see T 210/05, Reasons 2.3)."

EPO 

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