T 0694/19 - Sale of the factory as prior art (?)

Key points

• The OD rejects the opposition. The opponent/appellant argues as follows: "The BAOCAL plant had been made available to the public by means of a sale. The respondent [proprietor] was the customer [buyer] having bought and received the BAOCAL plant from the legal predecessor of the appellant [opponent and was thus in a position to provide evidence on any non-disclosure agreement which might have prevented the public disclosure of the prior use BAOCAL. In the absence of this evidence, it had to be concluded that the prior use BAOCAL was rendered public by its sale to the respondent [proprietor]."
• The Board buys the argument. "According to well-established case law, a single sale is sufficient to render the article sold available to the public within the meaning of Article 54(2) EPC, provided that the buyer was not bound by an obligation to maintain secrecy, even if it is not proved that others also had knowledge of the relevant item (see Case Law of the Boards of Appeal, 10th edition, I.C.3.3.1). If the contracting parties had wanted to exclude the sale and delivery from public accessibility, they would have had to agree on a secrecy obligation."
• "In the present case, it was not shown that the parties to the contract were bound by any obligation to maintain secrecy. In particular, the respondent has not alleged, and there is no evidence on file, that the sales contract[]  comprised a non-disclosure agreement between the parties to the contract. In this context it is observed that the agreement terminating the above-mentioned contract (D1E) does not mention any obligation to keep the particulars of the BAOCAL plant secret in the future either - while several regulations and further obligations of the parties were agreed upon - after the contract had been explicitly terminated in 1993."
"Consequently, the acts of selling and delivering the plant rendered it available to the public. The mere assertion of the respondent that a production hall within which the calcining system is usually located is not open to the public is not sufficient to cast doubt on the public availability of the system sold from one company to the other. The fact that the respondent later decided to file a patent application cannot have an impact on whether or not the system was made public by the sale.
Consequently, in view of the available evidence, it must be concluded that the BAOCAL plant was made publicly available before the priority date and thus forms part of the prior art according to Article 54(2) EPC."
• Preliminary, I think a distinction can be made between the sale of a physical object as such and a business unit. A business unit includes both the tangible assets, the employees, and the IP, including the knowledge of how to operate the plant (with the note that in the absence of any contractual clause, both the seller and the buyer of a business unit would possess such trade secrets). Just as the way that the fact that inventor is free to talk about the invention constitutes no disclosure before he does so, the same principle could apply in the case of the sale of business units. 
• A different situation would be if plant equipment is sold (there is a company selling "second hand" chemical plants on a website, but that refers to a set of equipment, not to up-and-running plants, as I understand it). 
• Note, however, that the Board considers claim 1 to be inventive over the public prior use, so the analysis about the public availability of the plant is, strictly speaking, obiter.
• Comments are welcome!

EPO 

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

T 0898/21 - Harmless error rule

Key points

• "Harmless error is an error by a trial judge in the conduct of a trial that an appellate court finds was not damaging enough to the appealing party's right to a fair trial to justify reversing the judgment, or to warrant a new trial. Harmless errors include: technical errors that have no bearing on the outcome of the trial, ..." (https://www.law.cornell.edu/wex/harmless_error)
• The Board, in machine translation: "The board shares the appellant's [proprietor's] view that her right to be heard in accordance with Article 113(1) EPC was violated in the opposition proceedings. The opposition division stated in point 11 of the contested decision that the subject matter of claim 1 of [...]was not inventive, namely based  document  (Z1), in combination with the teaching of E4 []. The person skilled in the art would arrive at the subject matter of claim 1 without any inventive intervention."
• "The board agrees with the appellant that there is no record of the opposition division or the respondent having previously raised this objection in writing or orally. In their previous communications and in the discussion during the oral proceedings before the opposition division, only document E11 [] is mentioned as a starting point, while the question of inventive step is based on the technical knowledge or document Z1 in combination with the teaching of document E4 was not discussed according to the minutes."
• "The respondent [opponent] submitted that the outcome of the opposition division's deliberations would have been the same even if the appellant had had the opportunity to comment on this objection. [...] It is not immediately clear from the [proprietor's] arguments why the outcome of the decision would be different in the event of a remittance.  The board is not convinced by the respondent's arguments."
• "What is important is not whether the opposition division would have come to the same conclusion after hearing the parties involved on this objection, but whether the parties were given the opportunity to comment on this objection (Z1 as the closest prior art in combination with the teaching of E4). Such an opportunity was obviously not given, which was not disputed by the respondent. It should also be noted that an objection that took common general knowledge as a starting point was also not discussed in the opposition proceedings."
• The case is remitted, without a decision on the allowability of the claims. 
• Any reimbursement of the appeal fee is not discussed. 
• As a comment, I think the Board could have dealt with the allowability of the claims if the outcome had been clear. A remittal is discretionary, even in case of a substantial procedural violation.
• Whether or not indications of a different outcome are relevant for the question of reimbursement of the appeal fee in case of a remittal remains to be seen. If the Board had come to the conclusion that the claims were not allowable, the appeal would have been dismissed, and no reimbursement of the appeal fee would have been given.
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EPO 

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

T1435/20 - Art.83 and secret antibody

Key points

• The patent application is directed to a second medical use. 
• "Claim 1 is formulated in a further-medical-use format in which the binding of the recited antibody to C5 is the mechanistic explanation for the therapeutic effect, i.e. the suitability thereof in the medical use. In its decision G 2/21, the Enlarged Board of Appeal recently held that the proof of a claimed therapeutic effect has to be provided in the application as filed" (note, the decision was taken on 21.09.2023 and issued in writing on 20.02.2024).
• "The parts of the application as filed which purportedly provide experimental data in support of the further-medical-use format of the claim, the so-called "TRIUMPH trial" on pages 27 to 40, were conducted with an antibody designated "eculizumab". Throughout the appeal, the appellant has maintained that this "eculizumab" antibody used in the TRIUMPH trial was not the antibody as it is now defined in the claim,"
• Note, this has to do with an alleged clerical error in SEQ ID NO:4 of the patent application. However, it seems to me that the intention was to specify eculizumab in the claim.
• "The sole indication in the application as filed of the origin and identity of "eculizumab" used in the TRIUMPH trial is on page 28, lines 7 to 9 of the application as filed, where it is disclosed that "Patients were randomly assigned on a one-on-one basis to receive either placebo or eculizumab (Soliris**(TM), Alexion Pharmaceuticals, Inc.) within 10 days of the qualifying transfusion."
• " substantial part of the appellant's case in appeal (e.g. inventive step) has been based on arguments to the effect that the structure of the antibody designated "eculizumab" was not derivable from any of the disclosures in the state of the art and that all scientists working with eculizumab prior to the filing date were in fact bound by confidentiality with regard to the structure of eculizumab. However, and without having to go into any detail on these arguments, which were based on various items of documentary evidence and declarations, by the same token accepting the appellant's argument means that without the identification of the structure of eculizumab in the form of Soliris**(TM) obtainable from Alexion Pharmaceuticals, Inc. in the application as filed, the structural particularities of the antibody designated eculizumab used in the TRIUMPH trial and reported on in the application were equally not available to the skilled person at the filing date. In fact, this conclusion of non-availability based on confidentiality seems, indeed, to find corroboration in the appellant's press release, one day after the filing date of the application, announcing that the company had received marketing approval from the U.S. Food and Drug Administration (FDA) for Soliris**(TM) (eculizumab), the first therapy approved for PNH"
• "52. As a consequence of these considerations based on the appellant's arguments, it must be concluded that the structure of the antibody used in the TRIUMPH trial was not known to the skilled person (at all) when the application was filed. It however follows from this fact that the disclosed results of this TRIUMPH trial cannot be verified to apply equally to the C5-binding antibody now referred to in the claim which comprises a heavy chain consisting of SEQ ID NO: 2 and a light chain consisting of SEQ ID NO: 4. The TRIUMPH trial can therefore not serve as evidence for the C5-binding activity of this antibody and the resulting therapeutic effect as required by the claim.

  53. Accordingly, and in the absence of any indications that the unusual antibody defined in the claim has the required therapeutic effect, the patent application fails to sufficiently disclose the claimed invention of auxiliary request 4 (Article 83 EPC)." 
  
  

• As a comment, the antibody was hence not actually commercially available at the priority date and, of course, the actual statement  'eculizumab (Soliris**(TM), Alexion Pharmaceuticals, Inc.) ' does not say "commercially available from Alexion Pharmaceuticals, Inc.".

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

T 0196/22 - Goldschmidt and Habermas

Key points

• "The question is then whether the Board should give a party time to formulate questions for a potential referral in regard of points that have already been discussed and decided. The Board takes the view that it should not, for the following reason: 
• Oral proceedings, and court proceedings, for that matter, are not a domination-free discourse in the sense of Habermas where issues are discussed in whatever order until a solution agreeable to everyone has been reached. Rather, proceedings are meant to put the deciding body, in this case the Board, in a position to decide about the issues in dispute. In order to do so, procedure is structured by different stages, and once a certain stage has been concluded, a party may no longer be able or allowed to undertake certain procedural acts: Once the time limit for filing an appeal has passed, an appeal can no longer be filed; once a party has presented its complete case with the grounds of appeal or the reply thereto, any amendments may, but do not have to be allowed, Art. 13(1) Rules of Procedure of the Boards of Appeal. This is good law and has a recognised doctrinal basis in academic writings, e.g. James Goldschmidt, Der Prozeß als Rechtslage, Berlin 1925.
• I don't know the book, but it is described as "a classic monograph on German procedural law".  See also T 0360/13.
• I'm not up to speed with Habermas and would appreciate suggestions from readers for a good explanation of "a domination-free discourse in the sense of Habermas".
• The legal member in T0360/13 and in the present case is Mr. Heath. 
• Where in oral proceedings an issue has been discussed, the Board closes the debate on this issue, deliberates thereupon and announces its conclusions. The Board may of course reopen the discussion on this issue. During the oral hearing on this case, the issue of synergy was addressed. While the Board was under the impression that a discussion on synergy was all the respondent had to say on inventive step, it transpired that the respondent had been under the impression that they should address issues other than synergy at a later stage. Due to this misunderstanding, the Board then reopened the discussion on inventive step which was then continued to hear the respondent's further submissions. Reopening the discussion was thus a necessity for guaranteeing the respondent's right to be heard. A Board can also reopen the discussion of its own motion if during its deliberation further issues of relevance come to light. However, the Board is unlikely to reopen the discussion once the parties have been properly heard and the Board feels in a position to form an opinion. It may do so, but it does not have to.  
• In the case at issue, the respondent's request for time in order to formulate questions to the Enlarged Board could have had no other purpose but to reopen a debate that already been concluded. Its only aim could have been for the Board to review its conclusions of its own motion, or to request guidance from the Enlarged Board and review its conclusions in light of such guidance. As the Board had already reached its conclusions, a reopening of the discussion was at the discretion of the Board, and the Board decided that no such reopening was opportune or necessary."
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• The application was filed as a PCT application in 2007. EP Entry in 2009, examination started in 2015 (!) Grant in 2019. 

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

Visser 2024 edition now shipping

Key points

• This year's new edition of Visser's Annotated EPC  is now shipping.
• You can order the book here:
• https://law-store.wolterskluwer.com/s/product/vissers-annotated-european-patent-convention-2024-edition/01t4R00000PHPtmQAH 
• The new edition is also available online at Kluwer IP Law: https://www.kluweriplaw.com/document/TOC_Visser_AEPC

T 0808/19 - 12 years of opposition and appeal(s)

Key points

• The patent was granted in 2011. The first decision of the OD was in 2013. The decision in the first appeal was in 2018: a remittal. The second decision of the OD was in 2019. New decision Board was issued in writing in  February 2024. PCT filing date in November 2006.
• The decision itself seems run of the mill.
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• EPO 

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

T 2548/19 - The opportunity of cutting down the claims

Key points

• "3. According to the established case law, the skilled person should try, in a constructive way, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Case Law of the Boards of Appeal, 10th edition, 2022, II.A.6.1)."
• "6. It has to be noted, however, that whereas in the embodiment the control units are embodied as control "cards", there is no such limitation in claim 1. Also, whereas in the embodiment there is a control card for each pair of independent capstans 14, there is no such limitation in claim 1. According to established case law, for the purposes of judging novelty and inventive step, Article 69 EPC and its Protocol cannot be relied on to read into a claim an implicit restrictive feature that is not suggested by the explicit wording of the claim. In proceedings before the EPO, where the patentee has the opportunity of cutting down the claims to accord with stricter limits given in the description, the scope of a claim should not be cut down by implying into it features which appear only in the description, as this would deprive claims of their intended function (Case Law, II.A.6.3.4)."
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• EPO 

The link to the decision is provided after the jump.