T 1535/23 - The return of the essentiality test (and the UPC)

Key points

• What is the test to determine if deleting a feature from claim 1 as filed violates Art. 123(2) ?
•  T 0085/16: "whether something is essential or not is not the same as whether subject-matter is directly and unambiguously derivable by a skilled person. ... Having ascertained this, it is of no relevance whether the sheets of the non-woven fibre type have been presented as being essential for the invention or whether they were indispensable for its function."
• T 1189/16: " Insbesondere ist der Wesentlichkeitstest kein Ersatz für die Anwendung des Goldstandards" 
• T 1462/14:  "The mere fact that the conditions defining the essentiality test, referred to in the Guidelines for examination are met, is not conclusive."
•  T 0437/17: The ‘essentially test’ was discussed by the Board. The Board concludes that it “[is] superfluous, unnecessary and misleading and shall not be applied”."
• "T 2095/12 r. 2.7: " The Board concurs with the findings in recent decisions, cf. for example T 1852/13 [], that the "essentiality test" of T 331/87 may not always be suitably applicable. This in particular holds true in case of intermediate generalisations, cf. T 2311/10. Generally, the "essentiality test" is an aid that can in certain circumstances be used to assess the allowability of amendments."
• The present Board, discussing a UPC decsion: "The UPC found that "the skilled person understood from the application as filed that the exact method of sealing did not contribute to, and was thus not relevant for, the technical teaching of the invention as disclosed in the application as filed (point 75 of the Grounds for the Order [UPC_CoA_382/2024]). The omission of the use of an elastomeric sealing member from claim 1 of the patent did therefore not extend beyond the content of the application as filed (point 80 of the Grounds for the Order)." 
• "as stated above, both the Court of Appeal and the board in this case, and the EPO in general, use the same principle in judging whether an amendment extends beyond the content of the application as filed"
• The present decision, in the headnote: "Omission of a feature from a claim in the context of added matter: same legal approach taken by the UPC Court of Appeal and the EPO Boards of Appeal"
• The Board, deciding on the patent in suit: "On the contrary, the parent application as filed discloses that the specific surface area of <= 2 m2/g is an essential feature of the invention disclosed in the parent application as filed.  ...  The parent application as filed thus comprises no teaching that the specific surface area referred to in independent claim 19 of the parent application as filed is not an essential feature of the invention disclosed which can be omitted to characterise Form A of the free base of palbociclib."
• The above finding is based inter alia on the following: "in example 7, the primary particle size, the powder X-ray diffraction and the specific surface area are inextricably linked. Therefore, example 7 of the parent application as filed does not disclose that Form A of the free base of palbociclib can be characterised without referring to the specific surface area. Consequently, it cannot be concluded that example 7 shows that the specific surface area is not an essential feature of the invention disclosed in the parent application as filed."
• As a comment, this post may not be the right place and time to comment publicly on the role of the UPC in shaping the case law of the EPO boards of appeal (yet). 
• Secondly, I'm not saying the essentiality test does not work in practice. What we need is a litmus test. It is the chemical reactivity of the dyes that makes the test informative. Precisely for that reason, I don't know of a use of gold as a (classical) chemical indicator - it's a noble metal. 
• It would have been useful if the Board had engaged with the line of EPO case law outlined above, in addition to their discussion of the UPC decision. 

EPO 

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

T 0098/23 - Retroactive assignments of priority rights are fine (Crispr-cas redux)

Key points

• This is one of the cases about CRISPR-Cas.
• " The issue here is, like in T 844/18, T 2360/19, T 2516/19 and T 2698/19, whether Mr Marraffini as one of the claimed inventors or The Rockefeller University as his successor in title gave their consent to the subsequent filing of the patent application in question (decision under appeal, item 50, with reference to T 844/18). "
• "According to G 1/22 (Reasons 107 and 125), the presumption of priority entitlement, by way of an implicit (implied/informal or tacit) agreement on the transfer of the right to claim priority "under almost any circumstances" (Reasons 99), applies to any case where the subsequent applicant is not identical with the priority applicant. Also ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application are valid (Reasons 100 and 114)."
• R.100: "if there are jurisdictions that allow an ex post ("nunc pro tunc") transfer of priority rights (see the extensive discussion of such transfers under US law in T 1201/14), the EPO should not apply higher standards."
• R.114: "it may be noted that the EPC explicitly foresees the ex tunc assignment of priority rights, at least in the context of disputes on the right to the patent before national courts: if a person other than the original applicant is found to be entitled to the grant of the European patent, this person may choose to file a new European patent application in respect of the same invention under Article 61(1)(b) EPC. To such new applications, Article 76(1) EPC "shall apply mutatis mutandis" according to Article 61(2) EPC. Under Article 76(1) EPC, "[t]he divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority". This means that the new application filed by the rightful applicant under Article 61(1)(b) EPC is deemed to have been filed on the date of filing of the earlier application and to have the benefit of any right of priority (G 3/92, OJ EPO 1994, 607, Reasons, point 5.4)."
• As a comment, I don't know if it is an assignment of the priority right in this case. I guess that language plays a role, but under Dutch law, assignment is seen as a species of the genus transfer. 
•  "The inventorship dispute between Mr Marraffini/The Rockefeller University and Mr Zhang/The Broad Institute Inc/Massachusetts Institute of Technology has been settled in 2018 by decision of an arbitrator (inter alia D256, The Broad Institute press release dated 15 January 2018, 1-3). Applying G 1/22, the settlement by arbitration contains (and confirms that there is), at least, an implicit agreement nunc pro tunc. Thus the presumption of entitlement to priority is on the earliest date on which priority was claimed, 12 December 2012 (US 61/736527, P1)." 
• " G 1/22 explicitly also states that "the presumption of entitlement exists on the date on which the priority is claimed and the rebuttal of the presumption must also relate to this date", and that "later developments cannot affect the rebuttable presumption" (Reasons 109). As being retroactive, the at least implicit transfer agreement by way of the settlement of the inventorship dispute relates to this date, and confirms the presumption on entitlement to exist on this date."
• 
  

EPO 

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

T 0867/23 - Post-published evidence for sufficiency of second medical use claim

Key points

• The case is about a second medical use claim. Can the proprietor rely on post-published evidence to show that the medical method works? 
• The Board: "The Enlarged Board of Appeal in decision G 2/21 did not extend the scope of the referred questions beyond the issues for assessing inventive step to the assessment of sufficiency of disclosure (see points 8-11 of the reasons). Nevertheless, the Enlarged Board of Appeal cited several Board of Appeal decisions addressing the issue of reliance on post-published evidence for a purported technical effect in the context of sufficiency of disclosure, and in particular in the case of second medical use claims (see points 73-76), from which the Enlarged Board concluded the following (see point 77):
• "The reasoned findings of the boards of appeal in the decisions referred to above make clear that the scope of reliance on post-published evidence is much narrower under sufficiency of disclosure (Article 83 EPC) compared to the situation under inventive step (Article 56 EPC). In order to meet the requirement that the disclosure of the invention be sufficiently clear and complete for it to be carried out by the person skilled in the art, the proof of a claimed therapeutic effect has to be provided in the application as filed, in particular if, in the absence of experimental data in the application as filed, it would not be credible to the skilled person that the therapeutic effect is achieved. A lack in this respect cannot be remedied by post-published evidence."
• In the [TBA's] Board's view, this statement, taken in its context, does not set a new standard for reliance on post-published evidence in the context of sufficiency of disclosure, i.e. a standard which would depart from the previously cited case law it summarises (as noted in T 979/23, see point 13 of the reasons). "
• "Following G 2/21, a reliance on post-published evidence is not ruled out generally in the context of sufficiency of disclosure for second medical use claims. The reliance on post-published evidence can also not be limited to situations where it serves no useful purpose, i.e. it is not limited to cases where the effect is already convincingly proven in the application to such a point that the use of post-published evidence as a superfluous confirmation of the already proven effect would be of no relevance. In other words, the scope of reliance on post-published evidence is not zero.
• "In the present case, the Board considers that the application as filed contains experimental data reflecting an effect on primary negative symptoms of schizophrenia, and thus discloses the suitability of cariprazine for the claimed therapeutic indication (see T 609/02, point 9 of the reasons). In these circumstances, the post-published evidence D13 may be taken into account to backup the findings in the application as filed ".
• The Enlarged Board in G 2/21, point 77 of the reasons, as cited by the TBA, with emphasis added: "In order to meet the requirement that the disclosure of the invention be sufficiently clear and complete for it to be carried out by the person skilled in the art, the proof of a claimed therapeutic effect has to be provided in the application as filed, in particular if, in the absence of experimental data in the application as filed, it would not be credible to the skilled person that the therapeutic effect is achieved. A lack in this respect cannot be remedied by post-published evidence." (emphasis added).
• T 979/23, cited above, the Board's conclusion was that "From the technical teaching of the application as filed, even taking into account the prior art, it was not credible that fenfluramine achieved a therapeutic effect in Dravet syndrome patients when given as a monotherapy. In line with decision G 2/21, the board has not taken the post-published data (document D3) into account".
• "13. The Enlarged Board of Appeal endorsed the conclusions in decision T 609/02 (see G 2/21, point 75 of the Reasons) and decisions T 754/11 and T 887/14 (see point 76 of the Reasons). The expression "proof of a claimed therapeutic effect" in point 77 of the Reasons cannot therefore be interpreted as a deviation from the established case law in the context of second medical uses: it does not apply a stricter requirement than the established case law prior to decision G 2/21."
• Indeed, the EBA seems to have confirmed T 609/02. I'm not sure if all TBAs considered T 609/02 to be correct in 2021. 
• 
  

EPO 

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

T 2178/22 - The weakest link and a remarkable remittal

Key points

•  This case concerns a patent with an independent claim 7 directed to a barly plant obtained by an essentially biological process. The patent has a filing date in 2011. In principle, claim 7 is therefore allowable, under G 3/19 but the opponents (which include some NGOs) still raise an objection under the clause of Art. 53(b) EPC about essentially biological processes for the production of plants or animals  (and requested a referral to the Enlarged Board for some questions). The OD found the claims allowable (also rejecting the inventive step objection).
• However, the Board does not tell us in the decision whether the OD was correct in this assessment under Article 53(b) because the Board perceives a substantial procedural violation in how the OD decided on inventive step (violation of the right to be heard of the opponent) and decides to remit the case on that ground - without deciding on the merits of the other grounds of opposition, which were independent and not affected by the procedural violation.
• I find this remarkable. Of course, some kinds of procedural violations vitiate the entire decision (wrong composition of the OD, partiality, and missing signatures in the decision). There may also be cases where the decision of the OD is based on only one ground (namely, if the patent is revoked on one ground). However, in the present case, the decision of the OD dealt with multiple separate grounds. I don't see why the Board cannot deal with the other grounds in the current decision. Procedural economy - or timeliness as an aspect of quality - requires the Boards to not unduly delay their appeal decision on the grounds not affected by the procedural violation.
• Incidentally, there was also an issue of the extent of opposition - were the independent claims 13-16 directed to a beverage (beer) opposed? This was discussed during the oral proceedings before the Board. The minutes indicated that thereafter, the Board asked if the OD's reasoning on inventive step was sufficient. It is not clear to me if any of the parties to the appeal had raised an issue under Rule 111(2) on that point, or if it was raised by the Board of its own motion.
• Furthermore, the deficiency of the OD's reasoning under inventive step concerns claim 1 for a process of making beer using barley. The OD had found that claim 7 directed to the (conventionally bred) barley plant was inventive. The Board does not identify a procedural defect on that reasoning (and does not arrive at the merits of the reasoning). The Board's problem is that the OD insufficienlty epxlained why claim 1 was also inventive. The reasoning of the OD was that claim 1 directed to a method of preparing a barlye based beverage specified "wherein the method involves reduced energy input, the method comprising the steps of: (i) providing a barley plant or part thereof, wherein said barley plant comprises: (a) a first mutation that results in a total loss of functional lipoxygenase (LOX)-1; and (b) a second mutation resulting in a total loss of functional LOX-2; and (c) a third mutation resulting in a total loss of functional S-adenosylmethionine:methionine S-methyltransferase (MMT); ... (iii) mashing said barley ... thereby obtaining a wort" and that features (a)-(c) defined the same plant as in claim 7. Hence, claim 1 specified the use of the inventive plant of claim 7. It is well-established that such a claim is then also inventive, even if all other features are routine (see GL G-VII,14: "Similarly, if the subject-matter of a product claim is new and non-obvious there is no need to investigate the novelty and non-obviousness of the subject-matter ... of any claims for a use of that product.") 
• Indeed, "the opposition division observed "that claim 1 relies on a method wherein plants with the same technical features as claim 7 are employed" (see point 20, last two lines)."
• The Board seems to see this differently: "since the method fails to limit the ingredients of the beverage to barley grains or specify their quantity or proportion, the board has doubts about the opposition division's implied conclusion that the properties of barley grains used necessarily impart a technical effect on the method of claim 1".
• The Board, in its preliminary opinion, refers to its earlier decision T 420/19 (post), where the issue under Article 53(b) was the same. 
• The patent was granted in 2016. The appeal was filed in 2022. 

EPO 

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

T 0204/23 - The OTP must be deducible from the application as filed

Key points

• The Board is not convinced that the problem of staining (or avoiding negative visual perception and gustatory perception of condensate) is known to the person skilled in the art of heat-not-burn cigarettes from their common general knowledge, because no proof of that knowledge was provided by the appellant. The appellant [opponent] submits in this respect that colourants of tobacco material may also be present in the aerosol of D15, a heat-not-burn device []  but provides no proof that the skilled person would commonly recognise this as causing a staining problem. The Board emphasizes that patent document D19 is no proof of the common general knowledge"
• The Board therefore comes to the intermediate conclusion that the appellant's formulation of the objective technical problem is not deducible by the skilled person from the contested patent considered in relation to [the closest prior art, document D15] and [using their] common general knowledge.
• "According to established case law, see CLBoA, I.D.4.1, the objective technical problem must be derived from [technical ]effects directly and causally related to the technical features of the claimed invention. This is understood by the Boards of Appeal as an effect which is derivable from the application as filed when considered in the light of the closest prior art, see CLBoA, I.D.4.4.2 and 4.4.3 b) and the decision T0386/89 cited therein."
• I think there are a few separate requirements: the technical effect must be actually achieved, and be caused by the distinguishing feature, and be deducible (and plausible/credible) based on the application as filed.
• This decision seems to illustrate that for the 'dedicible' question, the skilled person is given the CPA document and the application as filed, and may use their common general knowledge. The deducible requirement is only relevant if a party invokes an effect that is not explicitly mentioned in the application as filed, it seems to me.
• G 2/21 hn. II speaks of "a patent applicant or proprietor [who] may rely upon a technical effect for inventive step" if certain requirements are met, do these apply equally to the opponent invoking a technical effect in the context of inventive step?
• "neither the contested patent nor the English translation D15a mention staining of the filter, or gustatory perception of the condensate"
• "combination document D19 teaches that "the portion of the wrapper which surrounds the mouth end cavity generally reduces visibility of the downstream end of the first segment of filtration material so that any staining [] is less visible" ([]. The appellant [opponent] did not provide any reason why - in the present case - the objective technical problem may be formulated based on an effect that is only derivable from the combination document D19, and neither does the Board see such reason."
• "As the technical effect resulting from the distinguishing features must be deducible by the skilled person from the contested patent considered in relation to the closest prior art, see above, the Board considers paragraph [0034] of the contested patent as a basis for the formulation of the objective technical problem. That paragraph discloses that "The mouth end segment 111 provides the function of preventing any liquid condensate that accumulates at the exit of the filter segment 109 from coming into direct contact with a user". The Board therefore formulates the objective technical problem underlying the distinguishing features of claim 1 according to Auxiliary Request 1c over document D15 as preventing any liquid condensate that accumulates at the exit of the filter segment from coming into direct contact with a user."
• So, in the end, the Board follows the problem stated in the patent. Does this mean that the opponent tried to run a bonus effect argument in sophisticated form?

EPO 

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

T 2463/22 - (III) Public prior use as CPA

Key points

• "The appellants [opponents] argued that product 5 was a suitable starting point for assessing inventive step of the subject-matter of claim 1 and referred to case law in which prior uses constituted the closest prior art, for instance, T 1464/05 (Reasons 5.2) and T 1054/18 (Reasons 4.2)."
• Product 5 is: "The prior uses referred to by appellant 1, in particular the prior use of product 5 (Pektin Classic CM 203, lot number 0 05 11 114, sold to Condio GmbH in January 2006) "
• "Product 5 concerns a sample from a lot of a powder mix of pectin and dextrose produced and marketed under the name "Pektin Classic CM 203" by appellant 1, Herbstreith & Fox GmbH & Co. KG (in the following, Herbstreith & Fox or the manufacturer). The lot number in question is 0 05 11 114."
• The Board: " There is sometimes reluctance in the case law of the EPO to treat an object of a prior use as the closest prior art in an assessment of obviousness. Often, neither the technical context of such an object nor how it was produced is disclosed. In such a situation, there is neither information on what the object does and what properties it has in the technical environment in which it is applied nor on how the process for its manufacture could be modified. These considerations indeed speak against regarding a prior use as a suitable starting point for assessing inventive step."
• As a comment, I think the remark about "neither the technical context of such an object nor how it was produced is disclosed" is mostly applicable to chemical substances, which could be seen as e.g. just a white powder on their own. It seems less relevant to a public prior use of an apparatus, e.g. of a bike or chair.
• The Board: "However, in the case in hand, the skilled person would face a different situation. They would know the property that the powder mix of product 5 is soluble in cold water and would also consider processing the powder mix further. The product specification of Pektin Classic CM 203 (D80) discloses that the product is used as a protein protective colloid in thermally treated sour milk drinks. Such a product is used during the manufacturing of drinks and is added while the drink is still cold. The pectin is used to protect the milk protein during the heating step that follows."
• Indeed, the powder was sold with a label, "Pektin Classic CM 203", and that provides additional information. 
• "The parties agree that there is no information in product 5 on the particle size of the pectin. Thus, the subject-matter of claim 1 differs from product 5 in the particle size of the pectin."
• Well, we don't know if the particle size in product 5 is outside the range (150 mym or less) defined in claim 1, i.e. if it "differs". On the other hand, the objective technical problem is not "reducing to practice" the teaching of a document which leaves the particle size open, either. 
• The Board finds the choice of the particle size to be obvious. The Board carefully establishes that "solubility in cold water is a known, observed property of product 5. In other words, the skilled person would be aware of what the powder mix does when put in the technical environment of its intended purpose: the powder is soluble in cold water."
• The Board finds that using a particle size in the claimed range was obvious to solve the objective technical problem of "to provide a powder mix comprising pectin that easily dissolves in cold water".

EPO 

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

G 1/24 - Annotated

Key points

• Decision G 1/24 was refreshingly short and analysed in many other social posts and blog posts already. I will add my comments to the text below. 
• The EBA held that: "The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC".
• The EBA did not specify in any way how the information derived from the description must be used when deciding on the scope of the claims. As of yet, the established caselaw seem unaltered that "when taking into account the description of the patent (see e.g. the headnote of G 1/24) - which is not necessarily, and indeed may rarely be, limiting for the claimed subject-matter due to the primacy of the claims which may be broader than particular limited examples and explanations given in the description" (T 161/24).
• Indeed, the EBA derived as the first principle for claim interpretation that "The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC." (and could have very well included this in the headnote as well).

EPO 

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

T 0591/23 - Sufficiency and the problem addressed by the patent

Key points

• " The appellant [opponent] referred to T 2284/15 [blog post], according to which an invention was only workable and sufficiently disclosed if it could be carried out such that it solved the technical problem posed in the patent (Reasons 19 to 26; confirmed in T 2729/18, Reasons 14.1).
• "The reasoning in T 2284/15 is based on the assertion that solving a technical problem is a fundamental characteristic of an "invention" and that Rule 42(1)(c) EPC therefore required that the description disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood.
• "The current Board doubts that this reasoning is in line with the established case law referred to under point 1.10.5 above and the understanding confirmed in G 1/19, Reasons 24 and 25, that an "invention" is defined by its technical character, whereas "non-inventions" lack such technical character. 
• "The question of whether the claimed subject-matter solves a technical problem is, on the other hand, part of the assessment whether an invention involves an inventive step. This requirement in Articles 52(1) and 56 EPC is not formulated as an inherent characteristic of an "invention" but as a separate requirement which must be met for an invention to be patentable. 
• "Furthermore, when inventive step is assessed, the objective technical problem is assessed (see G 1/19, Reasons 26, (iv)), which may be different from the subjective technical problem set out in the patent. Additionally, as explained in T 1473/19, Reasons 3.11.4, the "invention" referred to in Articles 54, 56 and 83 EPC (see T 92/21, Reasons 3.2, last sentence) and, with regard to claim amendments, the subject-matter under Article 123(2) EPC (see G 2/10, Reasons 4.5.2, last paragraph) refer to the claimed subject-matter only. "
• Note, Art. 53 is not included in the list, see also T 944/15. Note also that under Art. 56, the advantages demonstrated in the patent are relevant (G2/21). 
• "For these reasons, a technical problem which is - as in the case at hand - only set out in the patent specification is, as such, not part of the invention which must be sufficiently disclosed pursuant to Articles 83 and 100(b) EPC. 
• "It must also be stressed that Rule 42 EPC only governs the content of the description in a patent application. Hence, the requirement under Rule 42(1)(c) EPC that the description disclose the claimed invention in such terms that the technical problem and its solution can be understood cannot simply be subsumed under the requirement of sufficiency of disclosure under Articles 83 and 100(b) EPC."

EPO 

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

T 1558/23 - Deleting an alternative in a claim after the preliminary opinion

Key points

• The OD decided to maintain the patent in amended form based on the main request (which were not the same claims as the claims as granted).
• "In the impugned decision, the opposition division's conclusions included that claim 1 of the main request fulfilled the requirements of Article 123(2) EPC."
• Logically, the OD must also have found the claims to be novel and inventive. 
• "the board concludes that claim 1 of the main request does not meet the requirements of Article 123(2) EPC, meaning that the main request is not allowable."
• "The respondent [proprietor submitted the sets of claims of auxiliary requests 9 to 17 after notification of the communication under Article 15(1) RPBA and prior to oral proceedings before the board.

  Claim 1 of these auxiliary requests differs from claim 1 of the main request and auxiliary requests 1 to 8, respectively, in that the alternative of [a compound] that led to the above conclusion of added matter has been deleted."

• " Since auxiliary requests 9 to 17 were submitted after the issuance of the board's communication pursuant to Article 15(1) RPBA, their admittance is governed by the provisions of Article 13(2) RPBA."

• "It thus follows that, in the case in hand, deleting formula MxM**(Vi)yQ representing one alternative of the vinyl terminated polyorganosiloxane i) in claim 1 of any of auxiliary requests 9 to 17 represents an amendment to the respondent's appeal case under Article 13(2) RPBA."

• "The respondent submitted that auxiliary requests 9 to 17 had been filed as a direct response to the board's communication pursuant to Article 15(1) RPBA, by which the board had objected to claim 1 of the main request and auxiliary requests 1 to 8 under Article 123(2) EPC. This objection had come as a surprise to the respondent since the opposition division, in its decision, had not considered this objection convincing. The board's objection therefore represented an exceptional circumstance justifying the admittance of auxiliary requests 9 to 17 into the proceedings. The board disagrees. In its communication, the board had simply reiterated what the appellant had submitted in its statement of grounds of appeal. "

• "As regards the respondent's argument that the amendment in claim 1 clearly overcame the board's objection without raising any new issues, the board notes that this, if anything, may satisfy the requirements of Article 13(1) RPBA. However, the requirements of Article 13(2) RPBA are not the same as those of Article 13(1) RPBA. On the contrary, as set out in the Explanatory Remarks to the Rules of Procedure, the Rules of Procedure implement a "convergent approach" represented by Articles 12(4), 13(1) and 13(2) RPBA, with Article 13(2) introducing an additional and independent requirement for admittance. Therefore, compliance with Article 13(1) or Article 12(4) does not imply compliance with Article 13(2) RPBA."

• Since the OD had found the broader claim, with both alternatives to be novel and inventive, the amendment would not have caused a shift of the debate on patentability, it seems to me.

• On the other hand, it appears that the attack was clearly in the SoG (and the same as raised before the OD) and the possible solution - deleting the alternative - must have been clear to the proprietor. 
  

   

   

• The patent is revoked.

EPO 

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

T 2108/22 - On Rule 80 and unity

Key points

• The Board, in the headnote in translation: "The extent to which the replacement of a claim with a claim containing multiple alternatives is permissible under Rule 80 EPC must be examined on a case-by-case basis. After weighing the conflicting interests of the parties, it must be examined whether the multiplication of alternatives in the claim itself constitutes a relevant and necessary amendment"
• As a comment, the case-by-case analysis seems correct, although Rule 80 EPC is not the relevant provision for balancing interests because it is not a discretionary rule.
• "The preparatory work also confirms this (see CA/12/94 Rev 1, No. 6.2 of the Reasons: "The new Rule 57a proposes a lex specialis for amendments in opposition proceedings. It is a purely substantive regulation of the right to amend. No regulation is made here about the point in time up to which amendments are permissible [...]"). Whether the requirement of Rule 80 EPC is met can therefore - like other substantive rules - only be taken into account in decisions on the admission of claims in the context of the prima facie allowability of a claim set. " (T 0123/22, see also OJ 1995, p.416). 
• Hence, as explained in T 0256/19: “Rule 80 EPC represents a non-discretionary provision of the EPC that relates to the allowability of a patent as amended rather than to admissibility.”
• As explained in that case: "discretion to disregard an amended version of a patent in inter partes proceedings can only emanate from Article 123(1) EPC in conjunction with Rule 79(1) and/or 81(3) EPC and, in case of arranged oral proceedings, with Rule 116(2) EPC (see also T 966/17, Catchword 1; R 6/19, Reasons 6 and 7).”
• Rule 81(3) EPC: "the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings". This requirement also applies to the admissibility of amended claims filed by the proprietor of their own motion (see my post on T 406/86)
• As explained in T 0123/22: " the board agrees with decision T 431/22, point 1 of the Reasons, according to which Rule 80 EPC does not preclude such an amendment provided that the subject-matter of the new independent claims is restricted or modified compared to the subject-matter of the contested claim. As explained in T 431/22, it is in principle legitimate for a patent proprietor to try to cover parts of the contested independent claim in order to overcome a ground of opposition, possibly by means of two or more independent claims (see in this regard also T 2290/12, point 4.1 of the Reasons, third paragraph). As explained in T 99/04, point 13 of the Reasons, the purpose of Rule 80 EPC is not to prevent a patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds of opposition. "
•  Let's have a look at the "case-by-case" analysis in the case at hand: "The addition of even a single one of the two OR alternatives limiting the claimed subject-matter, e.g., alternative A, to granted independent claim 1 is to be considered a sufficient and conclusive response to a novelty objection. ... The addition of the features of second alternative B, which is substantively completely different from first alternative A, cannot help to overcome the novelty objection that led to the addition of first alternative A; i.e., the addition of the features of second alternative B is neither relevant nor necessary. The addition of alternative B to amended claim 1 containing alternative A cannot therefore be motivated by a ground for opposition (as required by Rule 80 EPC), but only by the patent proprietor's desire for "appropriately broadest possible protection" (P1, page 7, third paragraph). However, an amendment aimed at achieving the widest possible scope of protection is not in accordance with the requirement of Rule 80 EPC."
• This reasoning looks perfectly generic. I see no specific fact of the case in it.
• It would have been helpful if the Board had engaged with G1/91 (or had referred a question to the EBA, if the Board considers that dealing with multiple inventions (lacking unity of invention) in opposition appeal is too much work in the current tight timelines for appeals). 

EPO 

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

T 1865/23 - Intervention and remittal

Key points

• Yesterday's post demonstrated that Article 123(3) does not apply by analogy to the set of claims that the Board considers possibly allowable and which set of claims forms the basis for the Board's decision to remit the case. In other words, the claims can be broadened during the procedure before the OD after the remittal, compared to the set of claims on which the Board based its decision to remit.
• In today's decision about solar cells, a notice of intervention was filed in appeal (hi G 2/24) by "Commissariat à l'énergie atomique et aux énergies alternatives (CEA)". I checked the file, and apparently, this French public institute was sued for patent infringement by the proprietor, though the details are redacted in the file wrapper.
• Opponent 1 filed the appeal against the decision of the OD to maintain the patent in amended form. The proprietor withdrew their appeal during the oral proceedings before the Board. The main request is therefore the set of claims held allowable by the OD.
• The Board finds the main request to be unallowable (Article 123(2), intermediate generalisation)
• The Board admits AR-10 and finds it complies with Article 123(2)).
• The Board remits the case.
•   In the present case, in its statement of grounds for intervention [filed during the appeal hortly after the appeal proceedings began by the Notice of appeal Opponent 1 and the proprietor], Opponent 2 questioned the priority of the patent in suit, referred to further documents (D32 to D51) and also to documents D29 to D31, which the Opposition Division had not admitted, and raised further objections with reference to these documents. In its reply to the patent proprietor's statement of grounds of appeal, it also submitted the additional documents D52 to D57."
• "Since Opponent 2/Intervenor is entitled to challenge the patent in suit "by all available means", documents D32 to D51 and documents D29 to D31, which were not admitted by the Opposition Division, must be taken into account."
• It is unclear to me if Opponent 1 had objections of novelty and inventive step against AR-10 in appeal. 
• It is also not entirely clear to me if the proprietor may now shift the subject-matter compared to the claims held allowable by the OD in the first decision of the OD. I mean that set of claims contained an added feature, which had to be narrowed in appeal to address the Article 123(2) issues of intermediate generalisation. Apparently, the proprietor had defended broader claims in its own appeal, but there is no written decision of the Board on those requests because the proprietor withdrew its appeal.

EPO 

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

T 2194/22 - On res judicata and the binding effect of ratio decidendi

Key points

• This is a lengthy decision, and the second appeal in this opposition. The Board in the first decision held an auxiliary request to be inadmissible. The higher-ranking request was held to violate Art. 76(1) EPC. The auxiliary request at issue was filed during the oral proceedings before the Board.
• The issue was that the range of at least 50 % but less than 100%, as recited in the claim, was held to be not disclosed in the application as filed, wich mentioned "at least 50%" (this did not exclude 100% as in the claim) and "a majority" (which excluded 50%, as permitted by the claim). 
• In AR-I, a number of features were extracted from a table, omitting two parameters from the table. This was held to violate Art. 123(2).
• AR-2 new added a feature to AR-1, namely the missing features from the table. The Board did not admit this request, as it was filed during the oral proceedings only. 
• AR-2 old added features to claim 1 as granted, but did not address the feature of the range of 50 - < 100%. Hence, this request was not allowable.
• AR-III amended the range in AR-2 into "at least 75-95%"
• Clearly, there is a clarity issue with the amended range "at least 75-95 %" instead of 75-95% as recited in dependent claim 3. That same issue causes a problem under Art. 76 EPC. 
•  The case was remitted for AR-3.
• "Auxiliary request III is neither discussed nor substantively evaluated in the contested decision, since auxiliary request I was found to be allowable by the opposition division. Moreover, none of the parties provided arguments on this request in their written submissions, and none of the parties objected to the remittal of the case to the opposition division."
• The minutes state that the parties agreed with the Board's intention to remit. Still, it protracted the procedure by almost 4 years. The Board could have dealt with at least the formal requirements (Art. 123(2), Art. 84) before remitting.
• After the remittal, auxiliary III became the main request, and a new auxiliary request 1 was filed that was in substance the same as the request AR-2 new previously held inadmissible by the Board. The Main Request was held not allowable under Art. 76 because of the change of the original range 75-95% to "at least 75-95 %", which was taken to mean "at least 75%".
• The proprietor then essentially re-filed AR-2 new, with some minor amendments. This request was admitted by the OD and found to be allowable.
• The Board: "The current main request (identical to auxiliary request 1 filed on 11 February 2022) is not inadmissible for procedural reasons even though it corresponds (see 2.1.1) to auxiliary request II "new", which was filed during the oral proceedings before the Board in T 2371/18 and not admitted in the earlier decision of the Board for procedural reasons."
• "The Board does not share the appellant's view that a Board's decision not to admit a request is in any case absolutely binding in post-remittal proceedings as res judicata even if the facts underlying the decision are not the same."
• After an extensive analysis: "the Board's "decision" not to admit auxiliary request II "new" filed on 28 April 2021 in the earlier appeal proceedings which was only based on procedural reasons is not an absolute bar for reconsideration of an identical or equivalent request in proceedings subsequent to remittal."
• " The fact that in the case on file the Board's decision in T 2371/18 not to admit auxiliary request II "new" filed before the Board on 28 April 2021 is not an absolute bar for reconsidering an identical or equivalent request in post-remittal proceedings does not exclude the applicability of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC. The latter allows reconsidering the Board's findings in as far as the facts the previous decision is based upon are not the same. The binding effect under Article 111(2) EPC is not, therefore, detrimental the flexibility needed to respond to a change of the relevant factual and procedural circumstances of the case and to guarantee fair proceedings."
• "Thus, a party's submission, such as a claim request that was not admitted for procedural reasons in the appeal proceedings, in particular for being late filed, is inadmissible under Article 111(2) EPC in post-remittal proceedings if the relevant facts for non-admittance remain the same."
•  "in the opposition proceedings subsequent to remittal, the procedural and factual circumstances within the meaning of Article 111(2) EPC indeed changed in so far as the opposition division issued a preliminary opinion on 15 October 2021 in which it presented a new objection under Article 123(2) EPC against the then pending auxiliary request III. This request had previously been filed on 28 November 2018 with the proprietor's statement of grounds of appeal in T 2371/18. Auxiliary request III filed on 28 November 2018 was not assessed in the Board's decision T 2371/18 but formed the basis for the remittal. In pursuing this request when re-entering opposition proceedings, the proprietor did indeed follow on from the situation that existed at the end of the first appeal proceedings."
• "The Board finds that the opposition division's decision to admit auxiliary request 1 (filed on 11 February 2022) was justified because it does not impinge on the relevant procedural principles. Rather, that request was a legitimate response to the new objection raised for the first time by the opposition division (see above 2.4.8), and it does not prejudice procedural economy."
  
  
• The Board, in a rather abstract analysis: "the binding effect following from the principle of res judicata is not always clearly distinguished from the binding effect of the ratio decidendi pursuant to Article 111(2) EPC in the case law of the Boards of Appeal, and the decisions are sometimes not consistent as to which principle applies in specific circumstances (see, for example, T 1545/08, Reasons 11 and 12 compared to T 308/14, Reasons 1.2 and 1.3). The differences between the binding effect of these principles are examined in the following (see points 2.2.4 and 2.2.5 below) for the case at hand." ...
•  " the principle of res judicata implies that the conclusive decision on a specific request is an absolute bar for reconsideration, i.e. irrespective of whether the facts are the same " ...
  
•   "The effect of res judicata has to be distinguished from the binding effect of the ratio decidendi"
• "The binding effect of the ratio decidendi is on the one hand narrower as it is limited to proceedings on the same application or patent following a remittal of the case and as it only applies in so far as the facts are the same. However, on the other hand, it is broader in so far as it is related to matters not covered by the res judicata but encompassed by the underlying reasoning (ratio decidendi) in the remittal decision. This means that only matter which is not covered by the res judicata, i.e. which is not finally settled, is open for reconsideration in post-remittal proceedings in as far as the facts are not the same (T 689/19, Reasons 4.5; T 449/15, Reasons 2.5). In contrast, matter which is finally settled is absolutely binding also in post-remittal proceedings, i.e. irrespective as to whether the facts are the same."
• As a comment, the above may be an accurate summary of the current case law, it also shows how complex the case law has become on this point. 
• It is remarkable that one of the two closely related principles is codified in the EPC, and the other one, in a sense, the stronger one, can not be found in the text of the EPC.
  
  
•  Separately: "the case law of the Boards of Appeal is not uniform on whether a Board is indeed competent to review such a (positive) decision of admittance in the same manner as a (negative) decision not to admit, i.e. whether the correct principles for exercising the discretion were applied in a reasonable way (G 7/93, Reasons 2.6). A review on the correct exercise was carried out in some decisions (T 960/15, Reasons 4 to 7; T 2197/11, Reasons 3.2.2 to 3.2.3; T 858/17, Reasons 2.4 to 2.6; T 572/14, Reasons 2.4 to 2.5; T 1209/05, Reasons 2.2 to 2.4), while others disregarded a review per se (T 617/16, Reasons 1.1.1; T 2049/16, Reasons 3.2; open in: T 467/15, Reasons 3.1; see also Case Law of the Boards of Appeal of the EPO, 10th edition, V.A.3.4.4). However, this discrepancy does not become relevant if - as in this case (see point 2.5.4 below) - the admittance of the request was justified when applying the correct principles."
  
  
• The patent was granted on a divisional application filed in 2012, with filing date in 2005. 

EPO 

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

T 1632/22 - Starting from some undefined method

Key points

• The applicant, in the first communication after the start of examination, amends the preamble of claim 1 from the original "a method of determining whether a target in a target image is a true image" by adding "thus detecting liveness of the target". The method, incidentally, is done using a neural network. The added feature is based on page 6, lines 11-12 of the description.
• "Example embodiments provide technology of accurately detecting a target using a different convolutional neural network based on a quality type of a target image regardless of various factors that affect the quality type of the target image. Here, detecting the target may be understood to determine whether the target is a true target, for example, to determine whether a target in the target image is a biometric target. For example, if the target included in the target image is a biometric face, the target may be recognized as a true target. If the target included in the target image is a non-biometric face, for example, a photograph and an image, the target may be recognized as a false target. Hereinafter, the target detection method may be understood as a method of detecting liveness of a target."
• The Examining Division refused the application for lack of inventive step over D1.
• "in the Board's judgement, the person skilled in the art in liveness detection would have regard to D1 and would have reason to adapt its solution to liveness detection in a way leading to the invention according to claim 1 of the main request before the Examining Division."
• "The current request differs from that request by defining the quality parameter as a combination of photographic and attribute parameters."
• The amendment was made in reply to some clarity objections raised by the Board. 
• "D1 discusses "attribute" parameters in the sense of the claim, [but] it does not discuss "photographic" parameters."
• The Board remits the case: " The Board notes that during examination a relatively large number of documents were cited, some of them concerned with liveness detection, but were not discussed in the decision. A positive decision on inventive step cannot be issued before at least these documents have been discussed."
• The Board, however, agrees with the Examining Division that claim 1 without the additional features is obvious over D1.
• "Document D1 is concerned with face authentication. It explains that when users try to authenticate themselves in conditions different to the ones where the registration took place, the accuracy may suffer (paragraph 8). To address this problem, D1 proposes the use of different classifiers for different condi­tions. Conditions include face orientation, accessories worn by user (e.g. glasses), but also illumination conditions and "image quality" (paragraphs 20 and 21). A condition-deriving unit detects the current condi­tions (paragraph 71) and a corresponding classifier is selected for authentication. The classifiers may be, inter alia, neural networks (paragraph 79)."
• The difference is "its use, i.e. (face) liveness detection instead of face authentication". Hence, the claim under examination defines the same concept of having different neural networks used for different image properties, but for "liveness detection" instead of "face authentication"
• "In the present case, the Board assumes a person skilled in liveness detection methods. The Board considers that such a person is, generally, interested in improving, or finding alternatives to, known liveness detection methods, based on the knowledge that known methods have known pitfalls"
• "Liveness detection for authentication and authentica­tion are closely related technical areas; the Appellant did not contest this. Therefore, a person skilled in liveness detection will naturally also have regard to prior art from the field of authentication for develop­ments relevant to liveness detection. This includes D1."
• "This skilled person will recognize that the conditions mentioned in D1, e.g. face orientation, accessories worn by user, and in particular illumination conditions (D1, paragraphs 20 and 21) have an influence on liveness detection methods as well."
• As a comment, the Board seems to assume some existing liveness method as the starting point for the inventive step assessment. The Board does not explain the precise nature of the existing liveness detection method to be developed. Apparently, the existing method is affected by light illumination, and this was known. Given that the Board also notes that the Examining Division had cited prior art about liveness detection, a specific reference would have been useful to just make clear (and certain) what existing method is the starting point. From my own experience: sometimes the prior art that should exist just does not want to be found during a search.
•  "The skilled person will also recognize that the solution proposed in D1, i.e classifiers specialized for different conditions can be applied in a straightforward manner for liveness detection, simply by, as the Examining Division stated, "do[ing] the same" for liveness detection."
• Again, without having a well-defined pre-existing liveness detection method, this is easy but risky to assume.
•   The Board notes in passing that it is a rather typical method of research to try adapting developments in neighbouring fields to the own area of interest. It is certainly common practice in image processing, in particular when the images are of the same type."
• As a comment, it is also not unusual for research to result in patentable inventions.
• "in the Board's judgement, the person skilled in the art in liveness detection would have regard to D1 and would have reason to adapt its solution to liveness detection in a way leading to the invention according to claim 1 of the main request before the Examining Division."
• Note again that the Board assumes existing "liveness detection" without telling us the details or citing a specific prior art document disclosing that liveness detection method.
• The priority date is in 2016. I suppose the awareness of deepfakes among the general public postdates the paradigm shift of the ChatGPT demo (30 November 2022). 
• The term "liveness detection" gives plenty of results in Google, but all after 2022 (except in the context of fingerprints). In fact, Ngram gives zero results for the usage up to 2022 in the Google Books corpus. 
• The Board includes a headnote and some general reasoning on the PSA. However, as of yet, it seems a one-off decision to me. 

EPO 

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

T 0122/23 - Patentability over clinical trial protocol (no)

Key points

• "Document D7d describes a protocol for a phase III randomized controlled trial for the use of rifaximin in preventing hepatic encephalopathy. According to the protocol the trial was to evaluate the efficacy and safety of rifaximin given 550 mg twice daily as compared to placebo, optionally with concomitant use of lactulose, during a period of 6 months in subjects who are in remission from demonstrated hepatic encephalopathy."
• "The phase III clinical trial disclosed in document D7d only differs from the subject-matter of claim 1 of the main request in that document D7d does not report the actual effectiveness of the described treatment in decreasing the hepatic encephalopathy breakthrough episodes." (emphasis added throughout)
• Of course, claim 1 does not recite results reporting the actual effectiveness of the treatment. That is the "legal magic" of second medical use claims.
• Regarding obviousness: "The Board considers that the mere fact that document D7d reports the protocol for the evaluation of the efficacy and safety of rifaximin with optionally lactulose in a phase III clinical trial does not by itself provide the skilled person with a reasonable expectation of success of the trial."
• "The assessment of inventive step starting from document D7d therefore crucially depends on the question whether the skilled person had in view of the prior art, in particular having regard to the available information on the nature of the products under investigation and the condition to be treated, a reasonable expectation that the use of rifaximin with concomitant lactulose therapy would be effective in decreasing the risk of hepatic encephalopathy breakthrough episodes."
  
  
• "The Board considers that the tolerability, the clinical efficacy in treatment of hepatic encephalopathy and the efficacy in reducing ammonia-producing bacterial flora of the treatment with rifaximin combined with lactulose described in document D9 provided the skilled person with a reasonable expectation of success regarding the prevention of breakthrough episodes of hepatic encephalopathy under investigation in the trial of document D7d."
• "Document D9 reports the results from an open-label study indicating clinical efficacy and tolerability of the administration of rifaximin at a dose of 1200 mg/day in combination with lactulose during 15 consecutive days in the treatment of hepatic encephalopathy. "
• " The patent proprietor's argument, that due to its open-label set-up and taking account of the significant placebo effect in the treatment of hepatic encephalopathy the study in document D9 did not convincingly demonstrate the efficacy of the described treatment, is not considered persuasive." (follows some detailed reasoning)
•  "The results reported in document D9 are in line with the reports and reviews in documents D4, D5, D8, D14, D23, D4, D30, D31 and D52 regarding the practical utility of lactulose and rifaximin. The Board does therefore not consider that the lack of placebo-controlled evidence of the efficacy of rifaximin and lactulose in document D9 affects the reasonable expectation of success of the long-term treatment under investigation in document D7d based on document D9."
• "The Board has therefore concluded that the subject-matter of claim 1 of the main request does not involve an inventive step (Article 56 EPC)."
  
  
   

EPO 

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