T 0172/20 - Commerical product as prior art

Key points

• Quotes from machine translation. " The Respondent [opponent] asserts that the commercial PSU polymers Ultrason® S 3010 and Ultrason® S 6010 described in A5 would anticipate the novelty of claim 3"
• " The Board cannot agree with the Respondent's line of argument "
• "The burden of proving lack of novelty thus generally lies with the opponent (ie the respondent). An exception to this rule would be where the polymer of claim 3 was defined by an unusual parameter [] However, this is not the case since the polydispersity [as specified in the claim] is a very common parameter for characterizing polymers,"
• For inventive step: "the question of whether there is a technical effect compared to the PSU polymers of A5 is controversial."
• "The appellant [patentee] is of the opinion that the technical problem is to provide improved PSU polymers which have improved mechanical properties, particularly when processed into hollow fiber membranes. In particular, it is shown in A20 and A22 that PSU polymers according to claim 3 have higher epsilon breaking values ​​than the PSU polymers of comparative examples V12 and V15, which each represent the PSU polymers "Ultrason® S3010" and "Ultrason® S6010"
• "the first question is whether comparative examples V12 and V15 actually represent the polymers "Ultrason® S3010" and "Ultrason® S6010". a) In the present case, the parties did not provide a direct comparison with "Ultrason® S3010" or "Ultrason® S6010". Instead, the appellant submitted, inter alia, the comparative examples C12 and C15, which would make such a comparison possible. "
• "The [patentee] asserts that the commerical products Ultrason® S3010 and Ultrason® S6010 advertised in document A5 are manufactured using potassium carbonate with a volume-average particle size in the range of 28 to 50 µm (see A21, penultimate paragraph). The PSU polymers of comparative examples V12 and V15 were produced using potassium carbonate with a volume-average particle size of approx. 35 μm and are therefore directly comparable with Ultrason® S3010 and Ultrason® S6010. "
• "The board notes, however, that the PSU polymers Ultrason® S3010 and Ultrason® S6010 are commercial products of the appellant. Knowledge of how these products were manufactured is therefore solely subject to the complainant's power of disposal and knowledge. In particular, the respondent and the board have no way of knowing under which process conditions and in particular with which potassium carbonate (if potassium carbonate was used) these PSU polymers were produced. Thus, for answering the present question (whether the comparative examples C12 and C15 are representative for Ultrason® S3010 and Ultrason® S6010), all the evidence is in the sphere of the [ patentee]."
• "[] when all the evidence is within the control of a party, a strict standard of proof must be applied (see Case Law of the Boards of Appeal, supra, III.G.4.3.2 b)). The principle of "complete" proof ("with a probability bordering on certainty") applies. In the present case, proof of the manufacturing process for the PSU polymers Ultrason® S3010 and Ultrason® S6010 must be provided with a probability bordering on certainty."
• "The Board therefore does not have sufficient evidence that the process for producing the PSU polymers Ultrason® S3010 and Ultrason® S6010 corresponds to the production process for the comparative examples of A22."
• " In the absence of suitable comparative examples with the PSU polymers of A5, the board must come to the conclusion that a technical effect compared to the products Ultrason® S3010 and Ultrason® S6010 has not been made credible. The objective technical problem is therefore to provide an alternative PSU polymer."
• The claims are held to lack an inventive step.
• As a comment, G 1/92 held that: "The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person".
• Update 05.07.2023: this post was pre-scheduled and was not modified in view of G 1/23.

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

G 1/23 - Referral - Novelty of commercial products - Solar Cell ( T 0438/19)

Key points

•  The Board refers the following question to the Enlarged Board: "1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?"
• I like to think of this issue as the Coca-Cola ® question, see my post about T 1833/14 (from 2018). In fact, p.20 of the reasons refer to Coca-Cola. 
• Two further questions are referred: "2. If the answer to question 1 is no [i.e. the product is prior art], is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?
• "3. If the answer to question 1 is yes [no prior art] or the answer to question 2 is no [brochure is only prior art if product can be reproduced], which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?"
• Claim 1 is directed to an ethylene/alpha-olefin copolymer, not to a solar cell also the title of the referral suggests. Unsurprisingly to readers of this weblog, the polymer is defined in terms of 6 parameters, being also results to be achieved. Incidentally, this is entirely conventional in this field because otherwise, basically, all ethylene/alpha-olefin copolymers are the same in terms of chemical composition. The Board carefully explains this aspect in point 13.1 of the reasons.
• The Board is of the view that "a decision as to whether the subject-matter of granted claim 1 involved an inventive step ultimately depended on the question of whether the (commercially available) product ENGAGE® 8400 had been made available to the public before the effective date of the present patent." D5 is a document "ENGAGE® 8400, Technical Information, Dow"; D5a is a Product Information sheet about the same polymer.  D1, Example 3, describes that ENGAGE® 8400 is suitable for the manufacture of solar cell modules.
• "According to the appellant [opponent] ENGAGE® 8400, an ethylene/1-octene copolymer having an MI of 30 g/10 min and a density of 0.870 g/cm**(3), fulfills all the requirements of claim 1, with the exception of the content of aluminium"
• "While the respondent [proprietor] does not dispute that ENGAGE® 8400 was commercially available and fulfilled all properties of claim 1 as granted, with the exception of the content of aluminium, it argued, relying on paragraph 1.4 of the Reasons for opinion G 1/92 and decision T 23/11, that the commercial product ENGAGE® 8400 had not been made available to the public within the meaning of Article 54(2) EPC."
• "diverging approaches by the Boards of Appeal exist with regard to the application of opinion G 1/92"
• G1 /92 r.1.4 reads as follows: "An essential purpose of any technical teaching is to enable the person skilled in the art to manufacture or use a given product by applying such teaching. Where such teaching results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art".
• A possible interpretation is that: "a product put on the market becomes state of the art and therefore available to the public only when the composition or internal structure of the product can be discovered and reproduced without undue burden"
• However, " the Enlarged Board stressed in decisions G 2/88 and G 6/88 that the word "available" within the meaning of Article 54(2) EPC carried with it the idea that, for lack of novelty to be found, all the technical features of the claimed invention in combination must have been communicated to the public, or laid open for inspection. The mere fact that a product was put on the market would therefore appear to result in that product being laid open for inspection (and therefore "available")".
• "[T206/83 and T 26/85] convey the idea that the enablement of a disclosure is a necessary condition for this disclosure to have been made available to the public within the meaning of Article 54(2) EPC. In other words, a disclosure which is not enabling would not be comprised in the state of the art defined in Article 54(2) EPC. This appears also to be the rationale underlying the reasoning of the Enlarged Board in point 1.4 of the Reasons for opinion G 1/92."
• The referral decision is detailed, also studying the Travaux and recent case law. The full text can be found below. 

EPO 

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

T 0617/18 - Holding request inadmissible in examination appeal

Key points

• In this appeal against a refusal decision, the applicant files new auxiliary requests in appeal.
• The Board summons for oral proceedings, giving no preliminary opinion (yet). The applicant withdraws the request for oral proceedings. Can the Board hold the auxiliary requests inadmissible, or must the Board first invite the applicant to comment on the admissibility objections?
• The Board: " In the present case, the appellant withdrew the request for oral proceedings after being summoned thereto by the board. The appellant also informed the board that they would not attend these oral proceedings, even though the board had not provided any provisional opinion on the issues of the present case. 
• "The appellant could well have expected that the board maintains the decision of the first instance as regards the main request and that, as regards auxiliary requests I and II, their admission into the appeal proceedings would have to be first assessed by the board before entering into a detailed examination of all the substantive issues of these requests. The criteria for such assessment are well established in the case law and based on both procedural as well as substantive considerations (cf. "Case Law", supra, V.A.5.1.2, V.A.5.2.2, V.A.5.3, and V.A.5.11.4.a)). The appellant however did not take the opportunity, as they would have had, to discuss admission of the auxiliary requests at the oral proceedings.
• "Thus, in view of the appellant's behaviour and requests on file, the board considers that the appellant's right to be heard is not breached or infringed by the board not admitting appellant's new auxiliary requests I and II into the appeal proceedings (Article 113(1) EPC)."

EPO 

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

T 0795/21 - Deleting alternative from Markush formula

Key points

• Claim 1 is directed to a class of compounds ("A chemical compound having formula I"). The Board finds that claim 1 of the main requests lacks an inventive step over D36 (after an extensive analysis).
• Claim 1 specifies as one of the features "X is independently selected from the group H, F, Cl, Br, I, OH and methyl (-CH3)" and "Y is F".  The embodiment wherein X is H is found to be obvious because of structural similarity with D36 (with further reasons).
• The Board turns to Auxiliary Request 4. Herein, H is deleted from the list of alternatives for X. 
• In the application as filed, the definition was: "X and Y are independently selected from the group comprising H, F, Cl, Br, I, OH and methyl (-CH3)". Hence, in AR-4, H is deleted from the list for X and Y is limited to F.
• The Board recalls that according to established case law, for this type of amendment, Article 123(2) requires that "the amendment may not lead to a particular combination which is not derivable from the original application and is therefore potentially suitable to provide a technical contribution to the originally disclosed subject-matter as opposed to a mere restriction of the required protection which does not result in the definition of a new sub-class of compounds and is therefore not potentially suitable to provide a technical contribution to the original subject-matter." (T 615/95, T 859/94, T 50/97, T 783/09, T 948/02 and T 801/02) 
• As the amendment is made to restore inventive step, the proprietor argues that this case law no longer applies after G 2/10: the proprietor argues that "with reference to G 2/10 and T 1937/17 that the notion of a technical contribution should actually not be taken into account at all"
• The Board:  "amendments by the deletion of options from multiple lists of separate characteristics inherently include an aspect of combination and potentially involve an aspect of arbitrariness, which may complicate the assessment of whether such amendments remain within the limits of what the skilled person would directly and unambiguously derive from the original disclosure."
• The Board recalls that G 2/10 referred to the "body of jurisprudence ... with respect to cases in which the limitation could lead to the singling out of compounds or sub-classes of compounds or other so-called intermediate generalisations not specifically mentioned nor implicitly disclosed in the application as filed" and indicated that this body of case law was to be applied (r.4.5.4). 
• Therefore, the notions used in the existing case law, namely "mere restriction of the required protection" versus "generating another invention" or "suitable to provide a technical contribution to the originally disclosed subject-matter" are to be applied as considerations which may arise from the application of [the gold standard test] when assessing amendments by deletion of options from multiple lists and which may affirm the result of such assessment.
• "the Board considers that the observation that the deletion of options for X and Y in accordance with claim 1 of auxiliary request 4 is suitable to provide a technical contribution to the originally disclosed subject-matter supports the assessment that this amendment is not in compliance with the "gold standard".
• The technical contribution is provided by the amendment omitting the alternative that overlapped substantially with D36 and was held to be obvious. 
• "The Board therefore concludes that auxiliary requests 4 does not comply with the requirement of Article 76(1) EPC."
• As a comment, I wonder whether the allowability of the amendment here depended on the content of D36 as prior art. 
• The decision was taken 24.03.2023. On that day, the stock price of the proprietor decreased from 1.24 USD to 0.80 USD. The patent is EP2955190, also at issue in [2023] EWHC 611 (Pat) of 21 March 2023. That decision states that Sofosbuvir falls in the Markush group of the claims of the patent (at 11).

EPO 

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

T 2391/18 - No need to tidy up the description in opposition

Key points

•  "The allegedly required amendment to paragraph [0017] does not relate to any amendment to the claims during opposition proceedings. Instead, as set out above, this amendment relates to an alleged inconsistency that already existed in respect of a feature present in the granted claims."
• " Such an amendment to the description is not appropriate in opposition proceedings or opposition appeal proceedings. (....) [T]here is no reason for the Board (or the Opposition Division) to come to the conclusion that the requirements of the Convention (in particular the requirements of Article 84 EPC) within the meaning of Article 101(3)(a) EPC are not fulfilled. The reason for this is the conclusion of the Enlarged Board in G 3/14: in considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC."
•  "Since in a case such as the present one the amendment to the claims did not introduce an issue of non-compliance with Article 84 EPC, an opposition division or a board of appeal cannot examine the claims of the patent for compliance with the requirements of Article 84 EPC, including the requirement of "support by the description" in the second sentence of this provision. There is thus no reason for the Board to object to the wording of paragraph [0017] of the amended description as filed during the oral proceedings before the Board."

EPO 

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

T 1654/19 - The CPA should ideally

Key points

•  The Board, on the selection of the closest prior art: "t is established case law that the closest prior art should ideally be a document which mentions the purpose or objective indicated in the [patent under examination] as a goal worth achieving (Case Law, supra, I.D.3.2). The aim thereof is that the assessment process should be based on a situation that is as close as possible to that faced in reality by the inventor, avoiding ex post facto considerations."
  
  
• On the procedure: two opponents appealed. One later withdrew the appeal. The other opponent relies on the former appellant's earlier arguments in the appeal. 
• The Board: "The appellant and the other party [the other opponent] submitted that the claimed composition lacks an inventive step over D1, which was contested by the respondent.  From a procedural point of view, the respondent submitted during the oral proceedings that only opponent 1, as a former appellant and now other party, filed a reasoned objection starting from D1 as the closest prior art. Opponent 2, as the only remaining appellant, would have merely referred in the said letter ... to the submissions made in the statements of grounds of appeal of opponent 1, i.e. to the submissions of the former appellant and now other party. The respondent [patentee] considers that the objection of inventive step based on document D1 as the closest prior art is therefore no longer part of the appeal proceedings. This is not convincing. As recalled in decision T 1820/18 (point 4 of the Reasons), it is not possible to split the appeal proceedings into different procedures, each dealing separately with the grounds for opposition and the facts, evidence and arguments presented by the individual opponents concerned (T 790/03, point 2.1 of the Reasons). Therefore, each opponent can rely on any grounds, facts, evidence and arguments duly submitted by other opponents (see also T 620/99, point 1 of the Reasons; T 1657/14, point 2.4.3 of the Reasons)."

EPO 

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

T 0933/18 - (II) Poisonous priority

Key points

•  The appellants [opponents] argued that the method of claim 1 lacked novelty over the disclosure of the parent application (document D3) and document D5a.
• "because the method of claim 1 of the patent was not entitled to priority contrary to the disclosure of Example 3 of the parent application, the latter anticipated the claimed method due to a "poisonous priority"."
• It is however contested, whether or not decision G 1/15, [] applies to the present case at all,
• claim 1 as granted relates to a method for preparing a biosensor. This method comprises as an embodiment the use of GLD or variants thereof that lack any galactose, glucose, mannose and arabinose since the content of these sugars is defined as "10 myg or less per myg of protein", which includes 0 myg/myg GLD, i.e. a "sugar-free" GLD.
• I understand that the values for these sugars are not given in the example and that this feature is added compared to the priority document.
• " [if] the disclosure of a sugar-free GLD in Example 3 of the parent application (D3) falls necessarily within the subject-matter of claim 1, then this applies likewise to the sugar-free GLD of Example 3 of the patent application too. Moreover, since both Examples 3 are identical to Example 2 of the priority document (D4/D4a), claim 1's embodiment of a sugar-free GLD is present in the priority document too."
• "In light of these considerations, the embodiment of claim 1 using a sugar-free GLD for the preparation of a biosensor must be regarded as an "OR" claim as defined in G 1/15 (Reasons 5.2.1), since sugar-free GLD is an implicitly disclosed feature in Examples 2 and 3 of the priority document and the patent application, respectively. Consequently, this embodiment of claim 1 is entitled to partial priority (see decision G 1/15, Reasons 6.4). Therefore, the parent application (D3) cannot anticipate the claimed method."
• "A skilled person reading Example 2 of the priority application (and Examples 3 in the parent application and the patent application) [...] immediately understands that the GLD recombinantly produced in E. coli is sugar-free (i.e. not glycosylated) although this is not explicitly mentioned. The production of sugar-free GLD in E. coli is thus the clear and unambiguous consequence of the explicit disclosure of this working example in view of E. coli's generally known inability to produce glycosylated proteins. It is established case law that such a feature is implicit[ly disclosed]".
• This implies that the feature could be added to the example without violating Article 123(2) EPC.
• "It is uncontested that proteins recombinantly produced in E. coli are not glycosylated ("sugar-free", i.e. lack any galactose, glucose, mannose and arabinose residues as referred to in claim 1), because E. coli does not contain the enzymes required for glycosylation, i.e. for adding sugar residues to a protein. This belongs to the common general knowledge of the skilled person. Furthermore, the absence or presence of sugar residues on a protein are a structural feature of this protein."
  
  
• The decision also contains an extensive analysis of novelty over D5a, which is found to be a non-enabling document, and of inventive step over D5a. 

EPO 

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