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

Key points

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

EPO 

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

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

Key points

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

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

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

Key points

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

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

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

Key points

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

EPO 

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

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

Key points

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

EPO 

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

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

Key points

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

EPO 

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

G 1/24 - Annotated

Key points

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

EPO 

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