J 0005/23 - Interpreting the EPC in the Rules, under the VCLT

Key points

•  What is a signature in the sense of Art.72 EPC? And who decides?
• The focus of this post is on the institutional considerations. In particular, is the President of the EPO and/or the Administrative Council competent to provide interpretations of the Articles of the EPC that are binding on the Boards of Appeal? That question was left unanswered by G 3/19, where the Enlarged Board did not comment on the legal status of Rule 28(2), which rule purports to give a binding interpretation of Art.53(b). 
• As G 3/19 was politically rather sensitive, leaving the institutional housekeeping to the Legal Board probably made sense. The present case, about such an obscure topic as the definition of signatures, is an excellent vehicle. The present decision will be cited or studied for many years, each time the EPO wishes to establish some "clarification" of the EPC Articles that binds the Boards of Appeal. 
• The Legal Board: "When interpreting the provisions of the EPC, the principles of interpretation laid down in Articles 31 and 32 of the Vienna Convention on the Law of Treaties 1969 (VCLT) must be applied (G 5/83 ... )."
• "According to the Enlarged Board of Appeal, the starting point of interpretation under Article 31 VCLT is the wording, i.e. the "objective" meaning of the term to be interpreted, regardless of the original "subjective" intention of the contracting parties "

Article 31  VCLT - General rule of interpretation

1. A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.

2. The context for the purpose of the interpretation of a treaty shall comprise, in addition to the text, including its preamble and annexes: (a) any agreement relating to the treaty which was made between all the parties in connection with the conclusion of the treaty; (b) any instrument which was made by one or more parties in connection with the conclusion of the treaty and accepted by the other parties as an instrument related to the treaty.

3. There shall be taken into account, together with the context: (a) any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions; (b) any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation; (c) any relevant rules of international law applicable in the relations between the parties.

4. A special meaning shall be given to a term if it is established that the parties so intended.

Article 32 Supplementary means of interpretation 

Recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, in order to confirm the meaning resulting from the application of article 31, or to determine the meaning when the interpretation according to article 31: (a) leaves the meaning ambiguous or obscure; or (b) leads to a result which is manifestly absurd or unreasonable.

• "the Board provides the following dictionary extracts by way of example only, as a first approximation for establishing the most common usage of the term "signature" in the context in which this term is used in Article 72 EPC, i.e. in the context of signing a contract."
• "When applying the "general rule of interpretation" pursuant to Article 31 VCLT, account must be taken of the object and purpose of the treaty to be interpreted. This includes taking account of the underlying purpose of the specific provision to be interpreted"
• " According to the "general rule of interpretation" pursuant to Article 31 VCLT, legal terms must be interpreted in their context. The immediate context of the term "signature" in Article 72 EPC, i.e. the other terms contained in this legal provision - which provide the context of the document on which the "signature" must be provided (i.e. the assignment contract) - was already taken into account in the above analysis and interpretation. The material to be taken into account for a systematic interpretation is, however, not limited to this immediate context. For the following reasons, it in fact includes the entirety of the articles of the EPC, as well as the Implementing Regulations to it."
• "At the Munich diplomatic conference 1973, not only the articles but also the Implementing Regulations to the EPC 1973 were directly concluded between the contracting states"
• " Article 164(1) EPC (1973) states that the Implementing Regulations "shall be integral parts of this Convention". Through this definition, the contracting states made the Implementing Regulations to the EPC 1973 part of the "text" of the treaty to be taken into account as context within the meaning of Article 31(2) VCLT. Even if this were not the case, the context to be taken into account under Article 31(2) VCLT includes not only the text of the treaty but also, according to point (a), "any agreement relating to the treaty which was made between all the parties in connection with the conclusion of the treaty". At the very least, the Implementing Regulations to the EPC 1973 must be deemed such an agreement."
• "The legal situation is less clear with regard to subsequent amendments to the Implementing Regulations. In Article 33(1)(c) EPC, the contracting states to the EPC empowered the Administrative Council, as an organ of the international organisation created by the EPC, to amend the Implementing Regulations. Accordingly, none of the subsequent amendments to the original Implementing Regulations were concluded between the contracting states to the EPC themselves but were adopted by the Administrative Council."
• "the question arises whether the current Implementing Regulations are also to be regarded as part of the "text" of the treaty within the meaning of Article 31(2) VCLT. In favour of this view is the fact that Article 164(1) EPC - the content of which was reconfirmed by the contracting states at the Munich diplomatic conference 2000 - does not contain any qualification to the effect that only the original Implementing Regulations to the EPC 1973 constituted integral parts of the EPC "
• "The Enlarged Board of Appeal confirmed that subsequent amendments to the Implementing Regulations are to be taken into account when interpreting an article of the EPC (see G 2/12, VII.4(1))"
• This deals with the Biotech Directive provisions in the Implementing Regulation, where the AC began codifying interpretations of Art.53 EPC in the Implementing Regulations. Those provisions are considered binding for the Boards in some case law, but this raises the question of the competence of the AC to lay down interpretations of the EPC articles, in a manner that binds the  Boards, is unfettered, or what the restrictions are (e.g. the AC can lay down any interpretation that is not directly contradicting the EPC wording, to 
• "In G 2/12, Reasons VII.4(1), the Enlarged Board of Appeal referred to the interpretative means under Article 31(3) VCLT concerning, in point (a), any subsequent agreement between the parties regarding the interpretation of the treaty or its application and, in point (b), any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation. The present Board notes that the mandatory interpretative means to be taken into account for interpretation under Article 31(3)(a) and (b) VCLT "together with the context" have the same interpretative weight as the "context" under Article 31(2) VCLT. Hence, regardless of whether subsequent amendments to the Implementing Regulations are subsumed under Article 31(2) VCLT or under Article 31(3)(a) and (b) VCLT, they are to be taken into account in a systematic interpretation of an article of the EPC."
• The point about "regardless" is the following: " the question arises whether the current Implementing Regulations are also to be regarded as part of the "text" of the treaty within the meaning of Article 31(2) VCLT. In favour of this view is the fact that Article 164(1) EPC - the content of which was reconfirmed by the contracting states at the Munich diplomatic conference 2000 - does not contain any qualification to the effect that only the original Implementing Regulations to the EPC 1973 constituted integral parts of the EPC (i.e. the "treaty" under Article 31(2) VCLT). Rather, the statement in said Article is applicable to the current Implementing Regulations as well. Articles 33(1)(c) and 164(1) EPC could accordingly be understood as provisions by which the contracting states empowered the Administrative Council of the European Patent Organisation ("EPOrg") to implement the articles of the EPC in the Implementing Regulations such that they can also change the context in which the articles themselves have to be interpreted."
• "While under the present legal framework the term "signature" must be understood as referring to handwritten signatures only, Article 72 EPC does, as such, not prohibit the legislator of the Implementing Regulations to the EPC, i.e. the Administrative Council, from specifying the meaning of the term "signature" in the Implementing Regulations (see G 3/19, Reasons XXVI.4)
• Note, G 3/19 point XXVI.4 does not say so. The introductory signal see here is probably used in a rather specific Bluebook meaning ("See indicates that the source clearly, though indirectly, supports a proposition. That is, the source does not directly state your proposition, but if a reader checked the source, it would be immediately clear to her that it supports your proposition." (link))
• "Taking due account of the rationale underlying Article 72 EPC (see points 2.4.2 and 2.4.3 above), such a definition could include a reference to some form of electronic signature and still respect the boundaries set by Articles 72 and 164(2) EPC. Providing such a definition in the Implementing Regulations would then change the context in which the term "signature" in Article 72 EPC is interpreted pursuant to Article 31 VCLT (see points 2.5 to 2.5.6 above), both by the departments of the EPO and by national courts.'"
• Note, the legal status of the Rules can differ: 1) an original Rule adopted at the 1973 Munich Conference, being "contemporary" context under Art.31(2)(a), 2) a provision that implements a delegation of legislative power in an Article (e.g. all formal requirements under Art.78(1) EPC), or 3) interpretative provisions that are subsequent agreement under Art.31(3) VCLT. 
• Note, the envisaged Rule would not be binding. It would be 'context' under the VCLT. Hence, it would be one factor under the general rule of Art. 31 VCLT: "The "general rule of interpretation" is a single rule of interpretation. It requires several methods of interpretation - in particular the grammatical, systematic and teleological methods - to be applied in a holistic manner. The "ordinary meaning" of a certain term is not to be determined in the abstract, but only emerges in the specific context in which it is used, taking account of the rationale underlying the legal provision to be interpreted."
• "The appellant also referred to the "Notice from the European Patent Office dated 22 October 2021 concerning electronic signatures on documents submitted as evidence to support requests for registration of a transfer of rights under Rules 22 and 85 EPC and requests for registration of a licence or other rights under Rule 23 EPC" (OJ EPO 2021, A86; hereinafter referred to as the "Notice"). The Notice provides inter alia "information about the practice of the Legal Division" in respect of electronic signatures attached to documents submitted as evidence to support requests for registration of a transfer of rights. For the following reasons, [the Notice] is not to be taken into account for the interpretation of Article 72 EPC either."
• "the Notice on which the Legal Division based its decision does indeed deviate from a provision of the EPC, namely from Article 72 EPC as interpreted by the Board as per the above analysis (and as understood by the Legal Division until the publication of the Notice). The Notice's aim of "facilitat[ing] communication by electronic means" with users is commendable. In the context of Article 72 EPC, however, a notice from the EPO is the wrong means to achieve this. While a notice from the EPO may be a source of legitimate expectations (see J 10/20, Reasons 1.15), it is, as such, only a document providing information. In particular, the Notice is not a legal instrument passed by a competent legislative body, so it can neither implement nor specify any articles of the EPC (or, for that matter, of the Implementing Regulations to it). It is not part of the material referred to in Article 31(2) and (3) VCLT, and therefore is not to be taken into account for a systematic interpretation of Article 72 EPC. Hence, the contents of the Notice have no bearing on the interpretation of the term "signature" in Article 72 EPC."

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

T 1993/21 - Support under Art. 84 and the subjective technical problem

Key points

• Suppose claim 1 of the application is novel, inventive, clear, the same as claim 1 as originally filed, and can be carried out by the skilled person without any difficulties. Can the claim then be rejected under the support requirement of Art. 84?
• "The appellant [applicant] argued that the invention claimed in the main request was fully supported by the description, because the fact that the detailed embodiment included a plurality of magnetic detection devices related to further improvements of the claimed invention, not to the invention actually claimed in claim 1 according to the main request. The board does not agree with the appellant. The application as originally filed defines in paragraph [0015] as its technical problem: "to provide ... a vehicle ... able to detect a rotational position of a rotor with an improved detection accuracy"."
• "Therefore, the subject-matter of claim 1 does not include the technical features necessary for solving the technical problem defined in the application."
• As a comment, what if claim 1 solves some other technical problem, that the applicant could validly rely on under G 2/21?
• "In contrast thereto, the described embodiment, for example according to paragraph [0077], includes such technical features as the use of four magnetic detection devices wherein the magnetic flux input surfaces of the first to third magnetic detection devices are arranged [in some configuration]"
• "The specification does not comprise any other embodiment which would provide the described detection accuracy while using a single magnetic detector whose position relative to the rotor is undefined, as it is in claim 1. "
• "The questions of whether it is evident for the person skilled in the art how to carry out the invention with a different number of magnetic detection devices, as suggested by the appellant, or whether the device according to document D6 requires only a single magnetic detection device, are irrelevant for the question of support under Article 84 EPC because they relate to the requirement of Article 83 EPC, which is not part of the reasoning in the contested decision and is thus not part of the appeal proceedings "
• The auxiliary request addressing the issue is not admitted under Art. 13(2).
• " the objection that claim 1 according to both the main request and the auxiliary request did not include a definition of where the magnetic detection device is positioned had consistently been part of the proceedings since the oral proceedings before the examining division. The fact that the appellant reacted to this objection for the first time during the oral proceedings before the board can thus not be regarded as exceptional circumstances in the sense of Article 13(2) RPBA, justifying admittance of the present auxiliary request."

EPO 

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

T 0763/20 - Baking ovens and steam ovens

Key points

• A decision on novelty and inventive step in opposition with a certain EQE Paper C vibe:  "E1 and E4 both disclose a steam cooking oven. A steam cooking oven is not the same as a baking oven as defined in claim 1 of the patent. Steam cooking is limited to 100°C (normal pressure) and does not result in browning of the food but leaves the surface of the cooked food with a moist, soft surface. In contrast to this, baking achieves browning and results in the formation of a crust on the surface of the baked food. Hence, a baking oven has to be suitable for achieving a Maillard reaction on the surface of the food, which typically proceeds from around 140 to 165°C. This is not the case for a steam cooking oven. E1 and E4 do not disclose that the steam cooking oven can be heated to such an extent that the oven is suitable as a baking oven, i.e. is suitable for achieving a temperature required for a baking process."
• "It is true that E4 discloses, in column 4, lines 7 to 11, that the side walls and the bottom wall of the steam cooking oven can be heated to minimise condensation: ... However, heating elements which are adapted to avoid condensation are neither foreseen nor suitable for heating the oven to the temperatures required for baking. This is also confirmed by the low power (120 W, 50 W) disclosed in E4 in this context, which is far lower than the power usually consumed by a baking oven (more than 1 kW). Hence, E4 also does not contain any additional disclosure which could imply that the steam cooking oven could be used at temperatures higher than 100°C, contrary to the conventional understanding that the skilled person has of a steam cooking oven."
• The claim is novel over E4.
• Inventive step, starting from E2: "E2 discloses a baking oven with a water evaporation system."
• "the subject-matter of claim 1 differs from the disclosure in E2 in that the baking oven comprises

  - an outlet section of the tubular conduit that is external to the volume generated by a translation of the opening of the reservoir along the physical vertical; - means for conveying the water from said outlet section of the tubular conduit to the reservoir; - a portion of the delimiting walls that comprises the means for conveying the water; - said conveying means being exterior to said volume."

• "the objective technical problem could be formulated as that of providing a baking oven which is easier to clean after use."
• "El and E4 are documents which would not be considered by the skilled person because they do not relate to the same type of device as that in E2, i.e. a baking oven. Even if the skilled person considered the disclosure in relation to a steam cooking oven according to E1 or E4 for modifying the baking oven in E2, neither E1 nor E4 would prompt them to make the necessary structural changes in order to solve the underlying problem."
• Inventive step starting from E4: "E1 and E4 relate to steam cooking devices, and therefore, do not have the same purpose as the patent, which can be considered to be providing a baking oven. Hence, E1 and E4 do not represent an appropriate starting point for the assessment of inventive step, since the skilled person would not consider them when seeking to provide a baking oven.

  Even if the skilled person started from either E1 or E4, they would not completely change the nature of the cooking device and redesign it to be suitable as a baking oven, as the cited prior art gives them no motivation or incentive to do so.

  Therefore, in line with the finding in point II.3.2.3 of the contested decision, the Board concludes that the subject-matter of claim 1 is not obvious when starting from E1 or E4."

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• EPO 

The link to the decision is provided after the jump. 

T 1362/20 - The request filed at 19:41 before the OD

Key points

•  The OD decided to maintain the patent in amended form based on the auxiliary request filed on 19:41. The opponent appeals and presents new clarity objections, which are not inadmissible under G 3/14. The Board has to decide whether to admit them under Art. 12(4) RPBA. The patentee argues that the objections could have been submitted during the oral proceedings before the OD.
• The Board in translation: "During the oral proceedings before the opposition division, the patent proprietor did not defend any of the auxiliary requests filed in the written procedure. After the main request - as already explained in the preliminary opinion of the opposition division - had fallen because of an inadmissible intermediate generalization, the patent proprietor filed new auxiliary requests. Auxiliary requests 1a, 1b and 2a and the auxiliary request (19:41) [which contained, for the first time, the amendment objected to as rendering the claims unclear] were not filed before the opposition division until the afternoon of the oral proceedings and each contained features taken from the description. The complainant had about half an hour to deal with the newly submitted applications."
• "The Board is of the opinion that it would have been possible to identify a lack of clarity within this time frame. The [opponent] could therefore have raised the objection. However, in view of the tight time frame, this could not be demanded of her, so that the objection should not have been raised within the meaning of Article 12(6), second sentence, RPBA 2020 [i.e. the opponent was not obliged to raise the objection]. Since the amendments were taken from the description and were admitted into the opposition proceedings at a very late point in time, it is fair to allow new objections to the amended claims if these objections are raised at the first opportunity in the appeal proceedings."
• Moreover, the objection is highly relevant (note: the Board does not say prima facie highly relevant, which seems important and is consistent with the wording of Art.12(4). The objection is admitted.
• The claim is found to be unclear.
• All other auxiliary requests contain the feature.
• The patent is revoked. 

EPO 

The link to the decision is provided after the jump,

Ninth edition Singer/Stauder/Luginbühl EPÜ

The new ninth edition (2023) of Singer/Stauder/Luginbühl EPÜ  is now available through Kluwer IP Law if  your organisation has a subscription:

https://www.kluweriplaw.com/document/KLI-KIPL-Singer-2023-a001

T 0558/20 - Compound for surgical method

Key points

• The patentee appeals. Claim 1 of Auxiliary Request 2 reads as follows: 
  " A bone regenerative material comprising calcium sulfate [or some other compounds] for use in a method of treating a patient suffering from a degenerative bone condition that can be characterized by a loss of bone mineral density (BMD), the method comprising: forming a channel into the interior of a localized area of intact bone, using the channel as access, forming a void of dimensions greater than the channel in the localized area of intact bone by clearing degenerated bone material and optionally removing a portion of the degenerated bone material, at least partially filling the formed void with a bone regenerative material that facilitates formation of new, non-degenerated bone material in the void." 
• The feature in italics is added compared to the main request.
• As a comment, I note that the claim specifies " the method comprising ... filling the formed void with a bone regenerative material", not "the bone regenerative material" . 
• The OD found that "The method defined in the claim did not involve a new technical teaching, as required by decision G 02/08, and was thus not novel. Therefore the claim had to be read as defining compositions suitable for this method. Since the materials defined in the claim are well-known ... the claim was then held to lack novelty" 
• In connection with the Main Request, the Board notes that "it was uncontested that the material used in D3 is according to the claim. It was likewise uncontested that the method used in D3 is according to the claim."
• " D3 states clinical trials to be under way, however, no results of any such trial are on file." 
•  "  The appellant [proprietor] defended novelty of the claim arguing that D3 failed to disclose the formation of "non-degenerated bone material" as required by the claim." This argument fails. 
• "The description of the patent does not support the interpretation of "non-degenerated bone material" as exclusively referring to bone material corresponding to a 30-year old healthy subject, or bone material having certain physical characteristics relating to the BMD or T-score. The feature "new, non-degenerated bone material" may as well be interpreted as relating to newly formed bone material not yet affected by degenerative processes, as brought forward by the respondent [opponent]. In that sense the respondent's argument that newly formed bone material is, by definition, non-degenerated, has some merit."
• On the general interpretation of second medical use claims:   After assuring that the method defined in the claim falls under the exclusion of Article 53(c) EPC, the use and the method steps are considered as limiting features of the claim. Following this approach it then has to be examined whether the specific use of the substance or composition defined in the claim is novel or not. If this specific use is already known, the claim is not novel over the document disclosing the specific use of the substance or composition defined in the claim."
• "The approach proposed by the appellant, i. e. reading the claim as it is drafted, assuring that the method falls under Article 53(c) EPC, then considering the use and method features as limiting and assessing whether the specific use defined by them is already known from the prior art is, in the Board's view, aligned with the wording of Article 54(5) EPC and follows its logic. ... This approach is also the one generally used by EPO departments when assessing patentability of second medical use claims, and the Board will adhere to it in the present decision."
• Turning to AR-2: "D3 does not disclose forming a channel and using this channel as an access to form a void greater than the the channel in the bone. In D3 a hole is drilled, and nothing more, see figure 3."
• "Requiring additional surgical steps clearly provides a new technical teaching compared to the disclosure of D3 already because additional physical actions must be undertaken. The method defined in the claim is thus not just verbally different from the method disclosed in D3, but differs in tangible, physical method steps."
• On inventive step: "A skilled person, reading D3, would have had no reason to create a bigger void inside the bone, using the channel as an access. There is no indication anywhere in D3 that the drill hole alone could not accommodate the bone graft material injected into the bone, or that the amount of injected material was considered insufficient. "
• "The least ambitious technical problem that can be formulated starting from D3 is the provision of an alternative treatment of bone degenerative diseases."
• The Board does not expressly reject the more ambitious problem.
• The claim is considered to be inventive.
• By way of brief comment: a claim for a device for a surgical method does not benefit from Art.54(5) as a device is not a substance; and some other decisions reject claims for a gel for a medical use because the gel had no therapeutic activity in the method. This claim escapes all traps. 

EPO 

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

T 2407/19 - Sole substantive condition priority

Key points

•  "As established by the Enlarged Board of Appeal in its opinion G 2/98 (OJ EPO 2001, 413) and confirmed in its decision G 1/15 (OJ EPO 2017, 82), the sole substantive condition laid down by the EPC (and the Paris Convention) for the right of priority to be validly claimed is that the priority document and the subsequent filing are directed to the same invention (Article 87(1) EPC). Article 4C(4) of the Paris Convention mentions "the same subject". However, the meaning is identical (see G 1/15, point 4.2 of the Reasons)."
• "The requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98, Conclusion of the Opinion).

  Moreover, the "same invention" must be disclosed in an enabling manner in the priority document (see G 1/15, Order of the decision)."

• As a first comment, an open question is how this case law relates to the plausibility/technical teaching requirement of G2/21.

• A second question is whether this means, under T1482/21, that the Opposition Division is not competent to review the decision of the Examining Division that the priority claim of the granted application is valid as far as the formal issue of entitlement is concerned (G 1/22).

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• EPO 

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