T 2149/22 - Offering to cancel independent claims

Key points

•  The OD revoked the patent. The proprietor appeals. In translation: "the patent proprietor as appellant requests [in the statement of grounds], in the alternative, that the patent be maintained to the extent of auxiliary request 1 [], or, further, in the alternative, "to the extent  the independent patent claims and the corresponding dependent claims are considered to be new and inventive" ("im Umfang der als neu und erfinderisch angesehenen unabhängigen Patentansprüchen und den davon abhängigen Unteransprüchen"). 
• The proprietor does not submit the written-out auxiliary requests with the statement of grounds.
• The Board; "The request for maintenance in the scope of the independent patent claims considered to be new and inventive and the dependent subclaims, which was filed with the statement of grounds of appeal [] comprises in the present case seven possible combinations of independent claims, namely (a) independent claims 1, 2 and 6 of auxiliary request 1, b) independent claims 1 and 2, c) independent claims 1 and 6, d) independent claims 2 and 6, e) only independent claim 1, f) only independent claim 2, or g) only independent claim 6."
• AR-2 was filed during the oral proceedings before the Board and directed to combination d) of the above list, i.e. original claims 2 and 6 which were independent claims in the patent as granted. 
• "The board considers it excessive formalism to require in the present case that fully worded auxiliary requests directed at the seven possible combinations mentioned above should have been filed with the statement of grounds of appeal."
• Note, this is the reason why the Board considers Art. 12(3) RPBA ("specify expressly all requests" to be complied with. 
• "Thankfully, in the present case the opposition division, after finding that claim 1 of auxiliary request 1 lacked novelty, also examined the requirements of novelty and inventive step for its other independent claims 2 and 6, see paragraphs 6-9 of the contested decision. Therefore, the subject matter of the appeal proceedings has already been fully dealt with by the opposition division and neither the parties nor the board have to deal with substantively new arguments that have not yet been dealt with in the previous proceedings. "
• Note, this is the reason why it is no case amendment in the sense of Art. 12(4). It is unclear to me if the OD considered claims 2 and 6 to be allowable and/or how the parties presented their arguments on those claims in appeal. 
• "Therefore, in the exercise of its discretion under Article 114(2) EPC and Article 13(1)RPBA, the board decided to admit auxiliary request 2". 

EPO 

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

T 2043/22 - Combinations of features

Key points

• "In the auxiliary requests, several amendments are made and differently combined. The individual amendments are:
  
  Amendment A1 concerns feature 1.2.2:
  
  "a leaflet assembly (102) mounted on and positioned within the frame (104), [...]" [the PDF file of the decision uses funderlining to show the amendments)
  
  Amendment A2 also concerns feature 1.2.2:
  
  "[...] a plurality of leaflets (106) that are connected to each other at commissure tabs to form commissures of the leaflet assembly (102);"
  
  Amendment A3 adds ...
  
  [...] Amendment A5' is based on corrected amendment A5 and also submitted as an alternative to A5. [...]
  
  Additionally claims 2, 3, 6 and 11 to 14 as granted are deleted.
• Auxiliary request 1 includes amendment A1.
  
  Auxiliary request 2 includes amendment A2.
  
  Auxiliary request 3 includes amendment A3.
  
  Auxiliary request 4 includes amendment A4.
  
  Auxiliary request 5 includes amendment A5.
  
  Auxiliary request 6 includes amendments A1 and A2.
  
  Auxiliary request 7 includes amendments A1 and A3.
  
  Auxiliary request 8 includes amendments A1 and A4.
  
  Auxiliary request 9 includes amendments A1 and A5.
  
  Auxiliary request 10 includes amendments A1, A2 and A3.
  
  Auxiliary request 11 includes amendments A1, A3 and A4.
  
  Auxiliary request 12 includes amendments A1, A2, A3 and A4.
  
  Auxiliary request 13 includes amendments A2 and A3.
  
  Auxiliary request 14 includes amendments A2 and A4.
  
  Auxiliary request 15 includes amendments A2, A3 and A4.
  
  Auxiliary request 16 includes amendments A2, A3, A4 and A5.
  
  Auxiliary request 17 includes amendments A3 and A4.
  
  Auxiliary request 18 includes amendments A3, A4 and A5.
  
  Auxiliary request 19 includes amendments A4 and A5.
  
  Auxiliary request 20 includes amendments A1, A2, A3, A4 and A5.
  
  Corrected auxiliary request 5 includes corrected amendment A5.
  
  Corrected auxiliary request 9 includes amendment A1 and corrected amendment A5.
  
  Corrected auxiliary request 16 includes amendments A2, A3, A4 and corrected amendment A5.
  
  Corrected auxiliary request 18 includes amendments A3, A4 and corrected amendment A5.
  
  Corrected auxiliary request 19 includes amendment A4 and corrected amendment A5.
  
  Corrected auxiliary request 20 includes amendments A1, A2, A3, A4 and corrected amendment A5.
  
  Auxiliary request 5' includes amendment A5'.
  
  Auxiliary request 9' includes amendments A1 and A5'.
  
  Auxiliary request 16' includes amendments A2, A3, A4 and A5'.
  
  Auxiliary request 18' includes amendments A3, A4 and A5'.
  
  Auxiliary request 19' includes amendments A4 and A5'.
  
  Auxiliary request 20' includes amendments A1, A2, A3, A4 and A5'."
  
  

• " Auxiliary request 20' does not meet the requirements of Article 54 EPC for the same reasons as auxiliary request 16'."

• " In claim 1 of all other requests (auxiliary requests 1 to 20, corrected auxiliary requests 5, 9, 16, 18 to 20 and auxiliary requests 5', 9', 18' and 19') the amendments A1 to A5 (alternatively corrected amendment A5 or amendment A5') are combined in various ways. The subject-matter of claim 1 of all of these auxiliary requests is broader than the subject-matter of claim 1 of auxiliary request 20'. As auxiliary request 20' does not meet the requirements of Article 54 EPC, also all other auxiliary requests are not allowable for the same reasons as set out in points 2 and 3 above."

• 
  

EPO 

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

T 2053/20 - A remedy for the opponent/appellant

Key points

• The opponent pays the appeal fee using automatic debit order...
• Question for EQE candidates: what goes wrong?
• AAD 3.2 excludes "all fees not payable by the applicant or patent proprietor", meaning "all fees payable by a party other than the applicant or patent proprietor".
• The fee payment is invalid.
• Another question for EQE candidates: what are the available remedies?
• The Board, in translation: "It is undisputed that the appellant expressed its intention to pay the appeal fee in the notice of appeal dated 18 December 2020 and the accompanying letter. The methods used to do so, namely the automatic debit order on the one hand and the direct debit from the current account, which was not issued in the correct electronic format, on the other hand, were not permitted under the provisions of the ADA and its annexes for payment of the appeal fee. This would certainly have been apparent to the appellant if she had studied the ADA carefully. However, the corresponding notification from the EPO regarding the non-execution of the payment request, as mentioned above and actually provided for in the ADA, was not sent. Such a notification might have led to the timely payment of the appeal fee, since the corresponding two-month period did not expire until 7 January 2021, 19 days after receipt of the notice of appeal."
• "Moreover, in previous cases the EPO has accepted without comment the payment of fees by the appellant by invoking the automatic debiting procedure and debited the appeal fee from the appellant's deposit account even in situations where the appellant acted as opponent, even though this was not in accordance with the applicable rules. The appellant was also not informed of any change in the EPO's practice in this regard."
• "The board therefore grants the opponent protection of legitimate expectations (EPO case law, 10th edition 2022, III.A). ["Die Kammer gewährt daher der Einsprechenden Vertrauensschutz"]
  In the absence of any communication to the contrary from the EPO, the appellant could assume under the circumstances that its payment instructions for debiting the appeal fee made on 18 December 2020 had been accepted and executed. It only became aware that this was not the case with the board's decision of 21 September 2023. The appeal fee was then paid within the time limit set by the board."
• As a comment, the Board here applies the rule that "In accordance with the principle of good faith, the EPO is obliged to warn users of the European patent system of omissions or errors which could lead to a final loss of rights. A warning would always be necessary when one could be expected in all good faith (G 2/97)" together with the rule that "The Legal Board held in J 13/90 (OJ 1994, 456) that if the applicant could expect to receive a communication warning him of an impending loss of rights, but that communication was not issued in due time, the EPO must set a new period allowing the applicant to remedy the deficiency and perform the omitted procedural act in due time (see also T 14/89)."
• The CLBA discusses these rules in III.A.4, part of chapter III.A "The principle of the protection of legitimate expectations": "The protection of the legitimate expectations of users of the European patent system has two main principles. [1] It requires that the user must not suffer a disadvantage as a result of having relied on erroneous information or a misleading communication received from the EPO (see in this chapter III.A.3.). [2] It also requires the EPO to warn the applicant of any loss of right if such a warning can be expected in good faith. This presupposes that the deficiency can be readily identified by the EPO (see in this chapter III.A.4.)." The requirements for both rules are quite different. 
• Furthermore, in the case at hand, the instruction "turning on" the automatic debiting was given in the Form accompanying the Notice of appeal. 
• In the case at hand, the opponent had paid the appeal fee after receipt of a Communication of the Board under Rule 100(2) EPC, which pointed out that the appeal fee had not been paid (the deposit account of the opponent was not charged by the EPO). The Board therein did not set a time limit for paying the appeal fee under J13/90, but the opponent/appellant paid the fee with a debit order in the period set for replying to the Communication. 

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

T 3122/19 - Functional compositions for second medical uses

Key points

• Claim 1 reads: "1. A compound having FGFR inhibitory activity or a pharmaceutically acceptable salt thereof for use in a method of treating or preventing cancer
  - in a patient who has been identified to express a fusion polypeptide comprising an FGFR3 polypeptide and a BAIAP2L1 polypeptide or to carry a polynucleotide encoding the fusion polypeptide, [wherein the polypeptide expressed in the patient has a certain sequence]
  - wherein the compound or a pharmaceutically acceptable salt thereof is capable of inhibiting a growth of a cancer cell expressing the fusion polypeptide or having a nucleotide encoding the fusion polypeptide."
• The compound is hence only defined in functional terms. 
• The Board: "Claim 1 (see section I.) is a purpose-restricted product claim directed to a compound having "FGFR inhibitory activity" for use in a method of treating or preventing cancer in a patient who has been identified as expressing a particular biomarker or as carrying a polynucleotide encoding it. This biomarker is a fusion polypeptide comprising an FGFR3 polypeptide and a BAIAP2L1 polypeptide, each polypeptide being defined by particular sequences. The claim further specifies that the claimed compound is capable of inhibiting the growth of a cancer cell expressing this fusion polypeptide or having a nucleotide encoding it."
• The Board, under sufficiency: "[the question is]  (1) whether the skilled person would have been able, based on the disclosure in the application as filed and/or on their common general knowledge, to obtain compounds as defined in claim 1 without undue burden. These compounds are defined by two functional features, namely that (i) they have FGFR inhibitory activity and that (ii) they are capable of inhibiting the growth of a cancer cell expressing the fusion polypeptide comprising an FGFR3 polypeptide and a BAIAP2L1 polypeptide."
• "in addressing issue (1), [the opponent] referred to the approach developed in particular in decision T 1063/06 (OJ EPO 2009, 516) in the context of so-called "reach-through" claims. The appellant [opponent] argued that the patent did not enable the skilled person to identify all compounds falling within the broad dual-function definition of the claim without undue burden and, accordingly, such alternatives were not available to the skilled person.

• " The board is of the opinion that the situation underlying decision T 1063/06 is not the same as that in the case at hand. The invention at stake in T 1063/06 was based on the discovery that a known illness (in this case cardiovascular disease) could be treated by compounds having the capability of stimulating the soluble guanylate cyclase enzyme independently of the heme group in the enzyme, i.e. the compounds stimulated both the heme-containing soluble guanylate cyclase enzyme and the heme-free soluble guanylate cyclase enzyme. No compounds having this capability were known in the art and such compounds could only be identified by means of a newly disclosed screening method as a new research tool. The claim under consideration in that decision was thus for the use of (hitherto unidentified and thus unknown) compounds, which were defined solely in terms of the specific new capability (function), for the manufacture of a medicament to treat a known illness.

• " By contrast, the invention underlying the case at hand relates to the identification of a subgroup of cancer patients which is susceptible to treatment with FGFR inhibitors. The inventors found that a known human cancer cell line (SW780), which was known to be susceptible to the antiproliferative effect of known FGFR inhibitors, expresses a fusion polypeptide of the FGFR3 polypeptide and the BAIAP2L1 polypeptide which was also identified in various other types of human-derived cancer cells. The claim under consideration is for FGFR inhibitors which have the capability of inhibiting the growth of cancer cells expressing a FGFR3-BAIAP2L1 fusion polypeptide for use in a method of treating cancer in patients who express a FGFR3-BAIAP2L1 fusion polypeptide. This is not the same situation as in T 1063/06, in which any kind of compound (without guidance in terms of chemical structure or other selection rules) would have to be screened for the desired enzyme-stimulating activity."

• "Numerous FGFR inhibitors were known from and made available in the art, and are also identified by their chemical names or structures in the application as filed. These constitute a large pool of candidates. Together with the general structural and functional requirements mentioned in the application as filed, this information would, moreover, have provided some orientation to the person skilled in the art for identifying further FGFR inhibitors, if required"

• "Testing for the second level activity against cancer cells (as described in the application as filed) would not have had to be carried out by trial and error on randomly selected compounds, but only on a limited selection of compounds, i.e. compounds chosen from the class of FGFR inhibitors. No evidence was provided to show that a large proportion of FGFR inhibitors would fail this test (in which case identifying active compounds would be an undue burden on the skilled person). "

• Regarding another decision:" In the case underlying T 1959/15, the invention resided in providing a further class of compounds for treating the disease; in the present case, the invention resides in the identification of the specific genetic make-up of a subgroup of patients who are particularly susceptible to treatment with a known class of compounds. For this reason alone, the findings in decision T 1959/15 do not directly apply to the facts and circumstances of the case at hand."

• In a way, we are patenting a diagnostic method, it seems.

• "unlike the conclusion in T 1959/15 for the claim at stake therein, for the reasons already set out in point 57. above this board takes the view that under the circumstances of the case at hand, the mere fact that claim 1 also covers compounds beyond those shown to be suitable for the therapeutic use does not automatically equate to an undue burden of screening arbitrary compounds. Moreover, this does not result in the claim being able to be classified as a "reach-through" claim."

• There are more interesting issues in the case, e.g. making the claim novel and inventive by adding "wherein said patient is a human patient"

EPO 

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

T 1563/22 - The prevailing proprietor

Key points

• The Board, in translation: "6. Auxiliary request 4 - Admission
• "6.1 Auxiliary request 4 was filed for the first time with the reply to the appeal and thus represents a change in the respondent's case, the admissibility of which is subject to the discretion of the Board, Article 12(2), (4) RPBA."
• "6.2 Since the opposition division found the existence of novelty and inventive step in its summons supplement and confirmed this in the decision, the patent proprietor had no reason to file auxiliary requests restricted in this regard in the opposition proceedings, contrary to the appellant's view. Therefore, auxiliary request 4 cannot be refused as inadmissible under Article 12(6) RPBA."
• " In this context, the appellant [opponent] cited three decisions (T847/20, T825/20, T1326/21) in the oral proceedings, which it found in chapters VA4.3.7.d) and VA4.3.7.f) of the case law of the boards of appeal. It did not provide any substantive arguments on the relevance of these decisions (in fact, the opposition division appears to have affirmed the existence of a ground for opposition in each case, unlike in the present case), and the board does not consider itself obliged to carry out an independent examination of their relevance. On the contrary, this would be a violation of the principle of impartiality."
• "6.3 Since the Board considers the filing of auxiliary request 4 together with the reply to the appeal to be a timely and appropriate response by the patent proprietor to the opponent's appeal, it has admitted it into the proceedings in the exercise of its discretion under Article 12(4) RPBA.
• AR-4 contains additionally the feature of original claim 2. The opponent/appellant commented on that feature in the Statement of grounds.
• "the process of claim 1 according to auxiliary request 4 involves an inventive step within the meaning of Article 56 EPC in the light of the prior art cited."

EPO 

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

T 1132/20 - A cloud-computing provider's non-technical business decision

Key points

• As for difference (a), although document D3 does not disclose any other "middleware function" such as firewall or encryption/decryption functionality, these types of functionality are well known in the art. In the context of document D3, a cloud-computing provider's decision to provide such functionality on an optional basis and configured in accordance with the tenants' individual preferences (as negotiated in per-tenant policy agreements or "contracts") is a non-technical business decision.
• It's been a while since we saw the CardinalCommerce business person on this blog. Apparently, he/she/they moved on from insurance, gambling and tax advice to cloud computing services. 
• "the problem-and-solution approach as developed in the case law of the board of appeal is not a mechanistic tool for assessing inventive step but should rather be seen as a useful framework which can help answering in an objective manner the question whether, having regard to the state of the art, the skilled per son could and would have arrived at the invention. The problem-and-solution approach must be applied having in mind the purpose of Article 56 EPC, which is to prevent a patent from being granted on routine or otherwise obvious modifications of what, at the effective filing date, had been available to the public. "

EPO 

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

R 0008/19 - Objective technical problem, length of review procedure

Key points

• "In the present case, a cornerstone of the Board's inventive step reasoning [in T1537/16]  with respect to claim 1 of auxiliary request 1 was the construction of the objective problem solved by the claimed subject-matter. In line with its reasoning concerning the main request, the Board did not follow the proprietor's view that the objective problem consisted of the provision of an improved pharmaceutical formulation with reduced variability in its pharmacokinetic parameters, since it considered that a corresponding effect had not been demonstrated. But it also did not follow the petitioner's view that the problem was merely the provision of an alternative tablet. Instead, it considered that the objective problem solved was the provision of a pharmaceutical formulation with a zero order release profile."
• The TBA on the main request: The TBA could not follow the argument of the proprietor that "the eroding matrix of claim 1 of the main request necessarily provides a zero order release profile, which is not the case of D1". "An eroding matrix is not necessarily a matrix with a zero order release. Said term is not necessarily connected with specific release properties, it only defines a way of releasing by slow dissolution". The Technical Board also found that the dosage form of example 16 of D1, with a matrix system and a water-insoluble rate-controlling polymer, inherently provided an eroding matrix.
• The TBA on auxiliary request 1: "contrary to claim 1 of the main request which referred generally to a "rate-controlling agent" [of the erosion matrix, I understand], claim 1 of auxiliary request 1 has been restricted to a water-soluble rate-controlling polymer". "it is clear that the distinct nature of the rate-controlling agent shows an effect on the release of the fumaric acid ester from the core tablet. Accordingly, the technical problem is the provision of a pharmaceutical formulation showing a zero order release."
• The Enlarged Board: "The question arises, whether the Board's reliance on an objective problem that was never mentioned to the petitioner amounts to a fundamental violation of the right to be heard. In the Enlarged Board's view, this question cannot generally be answered in the affirmative. The application of the problem-solution approach can be viewed as a method of determining and reasoning whether a claimed invention fulfils the requirement of inventive step (Articles 52 and 56 EPC). "
• "For the reasons given below, the Enlarged Board comes to the conclusion that the Board based its decision only on grounds that were objectively foreseeable by the parties, in view of their submissions and the Board's statements during the appeal proceedings. During the entire proceedings leading to the decision under review, the zero order release profile - the provision of which was eventually adopted by the Board as the objective technical problem - was discussed, either as a quality of the erosion matrix or as a feature that was desirable per see."
• Follows a detailed analysis of the facts of the specific case in points 19 - 27.
• "Under these circumstances, it could not be surprising that the Board connected the additional limiting feature of claim 1 of auxiliary request 1 ("wherein the rate-controlling agent is a water-soluble polymer") with the generally acknowledged advantages of a zero-release profile, which profile was also set out for examples 18 and 22 in Figure 1 of the patent."
• The Enlarged Board also includes a general remark: "In the context of the problem-solution approach, there should normally have been a discussion on the relevant prior art, the differences between the prior art and the claimed invention, and the technical relevance of these differences. Within the framework of what has been addressed in the course of these discussions, the deciding organ should be free to apply the problem-solution approach as it sees fit, and even identify an objective problem that has not been explicitly spelled out as such during the proceedings. In any case, the objective problem eventually used in the reasoning has to be based on technical effects (or the lack of any) and the features of the invention causally linked to such effects, upon which the parties had an opportunity to comment."
  
  
• The decision in case R 8/19 was issued in writing on 20.09.2024. The decision was taken on 12.04.2024. The petition for review was filed on 25.09.2019, so the Enlarged Board took five years (minus a few days) to decide on the case. The decision was taken by a five-member panel.  
• The Enlarged Board also needed more than three months to issue the decision, but Art. 15(9) RPBA has no counterpart in the RPEBA.
• At the time of writing, R12/20 is still awaiting the written decision, and three petitions that were filed in 2021 are still pending. It seems the Enlarged Board is clearing up a (corona-induced?) backlog. 
• The application was filed as a PCT application in 2010. The overall length of the procedure was 14 years. 
• No interruption of the procedure is visible in the Register (Rule 143(1)(t) EPC).

EPO 

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