T 0681/21 - Synergy and G 2/21

Key points

• "The respondents [proprietors] argued that the distinguishing feature of claim 1 at issue would provide an unexpected advantage in terms of improved softness and in particular a synergy due to the combination of the silicone with a CPP."
• "The board notes that this formulation of the technical effect differs from that identified in the patent, and thus it is important to verify whether such a formulation is in accordance with the conclusion of the Enlarged Board of Appeal in G 0002/21 (reasons 94) that "A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would consider said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention".

• "In the present case it is not in dispute that the application as filed does not relate to a synergistic effect arising from the combination of a silicone with CPP or any other component. Also the fact that the application as filed (page 2, lines 7-8) indicates the CPP to be a preferred cationic polymer without explaining the reason for this preference cannot foreshadow that the claimed combination would provide any type of synergism. The respondents did also not file any evidence that it was common general knowledge that silicone and cationic polymers may provide a synergism in terms of improved softness."

• Note: If the application as filed mentioned improved softness as an advantage of the invention, requiring a specific mention of a synergy seems rather strict. 

• "Therefore, it follows from the above reasons that the alleged synergistic effect would not have been considered by the skilled person as being encompassed by the technical teaching of the application as filed and has to be disregarded."

• Turning to the evidence (obiter), it seems: " these data are not apt to show any possible improvement due to the choice of CPP as an additional softener and, in the absence of any other comparison against the closest prior art, it can only be concluded that improved softening has not been convincingly proven across the entire scope of claim 1."

•  In the board's view, it was thus obvious for the skilled person faced with the technical problem posed to try as an alternative to the composition of example E4, one comprising any combination of the softening agents suggested by the description such as one comprising the silicone of example E4 with any cationic polymer disclosed in the description [of E4], for example a CPP."" 

EPO 

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

T 2024/21 - The right to oral proceedings

Key points

• The ED refused the application. "The examining division noted as follows: "With respect to the so far missing summons to oral proceedings, as commented by the Applicant: Please note that it is the duty of the Applicant (not of three members of the European Patent Office) to fulfill the requirements of the EPC, to adapt the description appropriately and to provide an admissible and agreeable claim text which is adequate to provide remedy (with promise of success) and with which consensus can be achieved (Rule 137(3) EPC); a consensus (or at least an adequate approach) which is worth to spend the time and costs in oral proceedings. Please further note that oral proceedings increase the workload for three members of the Examining Division and not "reduce" it as supposed by the Applicant. Please further note that a proper amendment should be present as a first step for the Examining Division to do the next step, be it oral proceedings or to give consent. In such a case the Examining Division might be in the position to adequately and positively support the interests of the Applicant. Please further note that from the beginning, id est since the first amendments of the Applicant were submitted, the basic requirements of Article 123(2) were not met. Formulating an allowable claim text, also, is not the duty of an Examining Division." 
• The applicant then withdrew the request for oral proceedings.
• The Board 3.2.06: "According to established case law the right to an oral hearing is an extremely important procedural right which the EPO should take all reasonable steps to safeguard (T 668/89, T 808/94, T 556/95, T 996/09, T 740/15). If a request for oral proceedings has been made, such proceedings have to be appointed. This provision is mandatory and leaves no room for discretion (T 283/88, T 795/91, T 556/95, T 1048/00, T 740/15), i.e. parties have an absolute right to oral proceedings. Considerations such as the speedy conduct of the proceedings, equity or procedural economy cannot take precedence over this right (cf. Case Law of the Boards of Appeal, 10th edition, III.C.2.1)."
• Obviously, the Legal Board may disagree, in view of the remarkable (and concerning) decision J 6/22, and it will be for the Enlarged Board in the pending petition for review R 16/23 against J6/22 to settle the matter. 
• The present Board, politely it seems: "It should be noted in passing that a discussion of the recent decision J 6/22 does not appear necessary in the context of the present case, as this decision endorses, according to the understanding of the present Board, a restrictive interpretation of the right to oral proceedings for very specific procedural circumstances. However, a dynamic interpretation restricting explicitly regulated procedural rights of the parties does not seem to be considered in J 6/22 for the central area of the European grant procedure." 
• " The reasoning contained in the contested decision (by reference to the communication of 25 January 2021, see point IX. above) is thus based on a manifestly incorrect understanding of the right to oral proceedings as enshrined in the EPC. The fact that oral proceedings cause costs is anyway no reason not to comply with the appellant's repeatedly expressed wish to hold oral proceedings. The reminder in the contested decision of the applicant's duty to submit an EPC-compliant version of the application documents is also no reason not to comply with a request for oral proceedings."
• " Nor is the repeated indication in the examining division's communications that amendments would not be admitted to the proceedings or had not been admitted under Article 137(3) EPC, so that no version of the application documents approved by the applicant would exist in the proceedings, a sound reason for not holding oral proceedings. Even if the examining division considered the possibility of not admitting amended application documents into the proceedings, oral proceedings would still have had to be held in the present case in order to discuss (at least) the question of (non-)admittance of the amendments with the applicant, which would have also comprised the issue of whether the objections raised by the examining division had been overcome by the amendments (see below point 1.4)."
• "The Board thus considers that withdrawal of the request for oral proceedings under these particular circumstances did not therefore absolve the examining division from its duty to hold the originally requested oral proceedings. In this context, it must also be taken into account that the examination procedure had already lasted several years and it is immediately recognisable that the appellant was given no other way out in order to obtain an appealable decision. "
• "In view of the overall course of the examination proceedings it is to be noted that although the appellant ultimately withdrew its request for oral proceedings and requested a decision on the state of the file, it was deprived of its right to be heard in oral proceedings as enshrined in Articles 113(1) and 116(1) EPC. Due to this substantial procedural violation, the contested decision had to be set aside."
• The case is remitted. 

EPO 

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

T 0183/21 - Inventive training method for machine learning

Key points

• The application relates to a system for recommending content in a video-on-demand platform. The system is trained and retrained.
• The application states that "providing data from a huge number of users to retrain a recommender system presents challenges in that it takes up system resources." Moreover, "training activities have a high computational cost for the recommender system. Thus, the need to retrain must be balanced against the quality of recommendations being provided."
• The claim specifies, essentially, measuring the performance, comparing it to a desired performance level, and using the comparison result to set the amount of training data provided to the recommender system. Moreover, the recommender system is trained for each user separately.
• "[t]he recommender input controller 16 seeks to adapt the type and amount of usage data provided as training data to the recommender system 18 for each individual client device 22 to provide the minimum amount of data to drive the recommender system 18 towards the predetermined level of recommendation performance yref for each client device 22"
• " there is a positive correlation between the amount of training data specified by the control parameter and the measured performance metric received in the subsequent iteration"
•  "In the subsequent iteration, training data are derived from "usage data" from the client device associated with a user to which the recommendations are provided. The amount of training data derived from the usage data is based on the generated value or values of the control parameter"
• " The technical effect of the distinguishing features listed under point 8.1 is that the use of network bandwidth required to provide the training data to the recommender system is minimised, as is the amount of storage necessary for storing said training data in the communications system including the client device and the recommender system"
• "The board has come to the conclusion that this technical effect is achieved, on average, over substantially the whole scope of the claim (see, for example, G 0001/19, point 82)."
• " Since achieving a maximum performance metric of the recommender system is of paramount importance in the method of document D1, the skilled person would not use a "reference performance metric" which might be different from [i.e. lower than] a "maximum achievable performance metric", and would have no motivation to consider using a closed-loop control algorithm as claimed."
•   Starting from the disclosure of document D1, if the reference performance metric is exceeded, the skilled person would stop changing the amount of training data but would not decrease it, so that the measured performance metric oscillates towards the reference performance metric" [i.e. the possibility of decreasing the amount of training data results in oscillation of the performance].
• The board therefore considers the subject-matter of claim 10 and that of the corresponding claims 1 and 14 of the main request to be inventive (Article 56 EPC). It follows that the decision of the examining division is to be set aside.

EPO 

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

T 0367/20 - Using the description to interpret the claims under Art. 123(2)

Key points

• Claim 1 as granted is unclear. Under one interpretation, the claim involves added subject-matter, under another interpretation, not.
• "A claim feature must, however, not be interpreted in isolation but in the context of the whole document it forms part of. The context to be considered for the interpretation of a feature in a claim does therefore not only include the other features in that claim and other claims but also the description and the drawings. The general principle that the claims of a patent, being a part of a document as a whole, need to be construed in their context was recognised early in the case law and has also been understood to underlie Article 69 EPC (see T 556/02, Reasons 5.3, fourth paragraph and, more recently, T 3097/19, Reasons 29.2)."
•  " Moreover, the principle that patent claims must be interpreted through the eyes of the person skilled in the art, who should try with synthetical propensity to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (established case law; see Case Law of the Boards of Appeal, 10th edition 2022, II.A.6.1, first paragraph) was formulated for the first time with reference to Article 69 EPC (see T 190/99, Reasons 2; see also T 396/99, Reasons 3.5, in which the same board examined the patentability of the claimed subject-matter with reference to Article 69 EPC)."
• " It was set out in T 1473/19 (Reasons 3.11.3 and 3.11.4) that the first step in determining the extent of protection in accordance with Article 69 EPC consists in determining the claimed subject-matter under the "general principles" of claim interpretation under Article 1 of the Protocol on the Interpretation of Article 69 EPC (without taking account of equivalents under Article 2 of the Protocol on the Interpretation of Article 69 EPC at this stage; if required at all, this is only done in infringement proceedings as a second step following claim interpretation).
• Note, I understand T 1473/19 to depart from the (then) established case law. 
• "It was further set out in T 1473/19 (Reasons 3.12, 3.12.1 and 3.19) that the interpretation and determination of the subject-matter of the same claim in the same opposition (appeal) proceedings before the EPO should be uniform and consistent, including for the purpose of Article 123(2) and (3) EPC (the application of Article 69 EPC being mandatory for the determination of the "technical subject-matter of the claims" under Article 123(3) EPC, in accordance with G 2/88, Reasons 4 and 4.1)."
• Note that Article 123(3) refers explicitly to the scope of protection, Art. 123(2) does not.
• "Moreover, it was stated in T 1473/19 (in Reasons 3.14 and 3.11.3, last sentence) that the EPO in opposition (appeal) proceedings and the national courts and the UPC in revocation proceedings have concurrent jurisdiction on (post-grant) patent validity and that national courts apply the rules for the interpretation of claims in Article 69 EPC also in revocation proceedings"
• The present Board then cites decisions from several contracting states (UK, DE, FR, NL, CH, ES, AT) that would show that the national courts apply Article 69 EPC also in the context of the validity of the patent.
• "For the above reasons, the present Board considers that the principles of claim interpretation as set out in Article 69 EPC and Article 1 of the Protocol on its interpretation should be applied when establishing the meaning of the claimed features and determining the claimed subject-matter in the present proceedings. Accordingly, the description and the drawings must be considered when interpreting the claims, taking due account of the primacy of the claims."
• "The claims to be interpreted for assessing compliance with Article 123(2) EPC are the claims as granted. These must be interpreted in the context of the whole document they form part of, i.e. the whole disclosure of the patent as granted. Accordingly, it is the description and the drawings of the patent as granted which must be used for the interpretation of the claims as granted (see T 450/20, Reasons 2.16"
• " if - as in the present case - an amended description was submitted for the set of claims which was then granted, only the description of the patent is part of the text of the "European patent" which may be examined pursuant to Article 113(2) EPC).
• Note that Article 113(2) EPC seems to imply that the Board should use any amended description filed during the opposition when determining the validity of the patent.
• "To assess whether an amended patent claim contains added subject matter under Article 123(2) EPC, the claimed subject-matter must first be determined by interpreting the claim (i.e. establishing the meaning of the claimed features) from the perspective of the person skilled in the art. In a second step, it must be assessed whether that subject-matter is disclosed in the application as filed. In other words, the claim interpretation adopted by the deciding body defines the subject-matter which must be disclosed in the application as filed."
• I fully agree with this part of the decision (see here).  
  
  
• "In the case at hand, interpretation a) and interpretation b) of claim 1 as granted result in different claimed subject-matter and are mutually exclusive"
• "In this situation, the deciding body must not adopt two mutually exclusive claim interpretations simultaneously and must - if decisive for the outcome of the case - not leave the interpretation in that regard open either. Rather, the deciding body must consider which of the two claim interpretations is correct. As stated above, this interpretation defines the claimed subject-matter which must be disclosed in the application as filed."
• The Board finds the claim to have basis in the application as filed, noting that: "The description of the patent as granted, which must be taken into account for interpreting feature M5.1 of claim 1 as granted (see points 1.3.2 to 1.3.7 above), consistently discloses that the first switching pipe is "connected to the third heat exchanger in parallel"."
• The case is remitted.
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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 0728/21 - Obscure prior art for sufficiency ?

Key points

• Claim 1 of the patent is directed to a tablet comprising a specific concentration of ivacaftor as the active compound and with certain excipients "for use in combination with one or more other desired therapeutics in treatment of cystic fibrosis in a patient with a DeltaF508 mutation on both alleles".
• It is not entirely clear to me if the tablet composition as such is novel.
• The proprietor filed experimental results in the appeal procedure demonstrating that the specific combination of excipients provided for better dissolution properties.
• "According to G 2/21, a technical effect may be relied upon for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention. The application as originally filed (WO 2011/019413) explicitly addressed the dissolution of tablets comprising a solid dispersion as an aspect of the disclosed invention (see paragraph [0031]) and specifically described the claimed tablet composition as an embodiment of the disclosed invention. The effect of the optimization of the dissolution associated with the specific tablet composition defined in claim 1 of the main request may therefore in accordance with the principles established in G 2/21 be taken into account for the assessment of inventive step. "
• The Board considers claim 1 to be inventive based on the improved dissolution properties.
• The claim, however, also specifies the use of ivacaftor, in combination with a further therapeutic compound, "in treatment of cystic fibrosis in a patient with a DeltaF508 mutation on both alleles". As I understand it, the patent application contained no experimental/clinical results showing this.
• The Board recalls the requirement of G 2/21 r.74 for sufficiency of second medical use claims.
• The Board: "The patent specifically explains that the DeltaF508 mutation leads in patients with cystic fibrosis to impaired trafficking to the membrane and defective channel gating of the mutant CFTR (see paragraphs [0007]-[0008]). The patent also points out that ivacaftor is a potent and selective CFTR potentiator of wild-type and mutant forms of human CFTR, including DeltaF508 (see paragraph [0012]). The patent further teaches that ivacaftor can be effectively combined with other CFTR modulators and lists examples of such agents (see paragraph [0248]). The patent does thereby not describe the activity of ivacaftor as a CFTR potentiator in the form of a simple verbal statement, which might in line with the considerations in T 609/02(see section 9) be considered not to be sufficient, but rather as specific and verifiable technical information supporting the defined therapeutic indication. This information in the patent provides according to the Board a rational basis for the claimed invention, which rendered the utility of the claimed composition in the treatment of homozygous DeltaF508 patients credible at the date of its filing."
• The Board also refers to a prior art document D16A, that provides experimental results of the compound regarding the "activity in cultures of DeltaF508/DeltaF508 human bronchial epithelia". D16A is, however, a poster session abstract. Such documents are usually not evidence of common general knowledge.
• The Board: "In accordance with the jurisprudence exemplified by T 609/02 (see section 9), the suitability of the claimed composition for the defined use needs to be disclosed in the patent, "unless this is already known". This jurisprudence confirms in the Boards view that the disclosed utility of the claimed composition may also derive its credibility from the prior art, even if this prior art does not represent common general knowledge."
• To quote T 609/02 in relevant part: "Where a therapeutic application is claimed [...] in [a second medical use claim], attaining the claimed therapeutic effect is a functional technical feature of the claim []. As a consequence, under Article 83 EPC, unless this is already known to the skilled person at the priority date, the application must disclose the suitability of the product to be manufactured for the claimed therapeutic application. It is a well-known fact that proving the suitability of a given compound as an active ingredient in a pharmaceutical composition might require years and very high developmental costs which will only be borne by the industry if it has some form of protective rights. Nonetheless, variously formulated claims to pharmaceutical products have been granted under the EPC, all through the years. The patent system takes account of the intrinsic difficulties for a compound to be officially certified as a drug by not requiring absolute proof that the compound is approved as a drug before it may be claimed as such."
• As a comment, in the case of T 609/02, the alleged effect was clearly not "known" to the skilled person in any sense on the priority date, so I don't think that T 609/02 intentionally departed from the general principle that sufficiency of disclosure must be based on the application as filed and common general knowledge of the skilled person only. 
• See e.g. G 2/21 r.76 : "T 1599/06, points 6, 7.1, 7.2 and 8 of the Reasons [...]:"[...] if a therapeutic application is to be accepted as sufficiently disclosed, the application or the patent, respectively, and/or the common general knowledge has to provide some information rendering it technically plausible for the skilled person that the claimed compounds can be applied for the claimed therapeutic use (T 219/01 of 15 December 2004; T 609/02 of 27 October 2004)[...]" (emphasis added)
• As a further comment, does the rule proposed in the present decision apply equally to the 'enablement requirement' for prior art to be novelty-destroying? I.e., would the text of the present application have been novelty-destroying for the second medical claim if published a day before?
• As a further comment, G 2/21 does not indicate that the enablement requirement for the medical indication of a second medical use claim can be lower if novelty and inventive step can be based on other features of the claim. 
• 
  

T609/02

Where a therapeutic application is claimed in the form allowed by the Enlarged Board of Appeal in its decision G 5/83 (OJ EPO 1985, 64), ie in the form of the use of a substance or composition for the manufacture of a medicament for a defined therapeutic application, attaining the claimed therapeutic effect is a functional technical feature of the claim (see G 2/88 and G 6/88, OJ EPO 1993, 93 and 114, Headnote III. and point 9 of the reasons, for non-medical applications, see also T 158/96 of 28 October 1998, point 3.1 of the reasons). As a consequence, under Article 83 EPC, unless this is already known to the skilled person at the priority date, the application must disclose the suitability of the product to be manufactured for the claimed therapeutic application. It is a well-known fact that proving the suitability of a given compound as an active ingredient in a pharmaceutical composition might require years and very high developmental costs which will only be borne by the industry if it has some form of protective rights. Nonetheless, variously formulated claims to pharmaceutical products have been granted under the EPC, all through the years. The patent system takes account of the intrinsic difficulties for a compound to be officially certified as a drug by not requiring an absolute proof that the compound is approved as a drug before it may be claimed as such. The boards of appeal have accepted that for a sufficient disclosure of a therapeutic application, it is not always necessary that results of applying the claimed composition in clinical trials, or at least to animals are reported. Yet, this does not mean that a simple verbal statement in a patent specification that compound X may be used to treat disease Y is enough to ensure sufficiency of disclosure in relation to a claim to a pharmaceutical. It is required that the patent provides some information in the form of, for example, experimental tests, to the avail that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the patent per se. Showing a pharmaceutical effect in vitro may be sufficient if for the skilled person this observed effect directly and unambiguously reflects such a therapeutic application (T 241/95, OJ EPO 2001, 103, point 4.1.2 of the reasons, see also T 158/96 of 28 October 1998, point 3.5.2 of the reasons) or, as decision T 158/96 also put it, if there is a "clear and accepted established relationship" between the shown physiological activities and the disease (loc. cit.). Once this evidence is available from the patent application, then post-published (so-called) expert evidence (if any) may be taken into account, but only to back-up the findings in the patent application in relation to the use of the ingredient as a pharmaceutical, and not to establish sufficiency of disclosure on their own.

EPO 

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

T 3277/19 - Video oral proceedings

Key points

• The Board held the oral proceedings on premises despite the request for vico oral proceeding in this opposition appeal.
•  "The Board found that the subject-matter of the proceedings involved complex explanations of the duct's geometry in relation to the visualisation of several virtual planes and intersections, which made in-person proceedings the appropriate format to be used in the present case. This was already explained in item 9 of the Board's communication pursuant to Article 15(1) RPBA 2020 and the parties did not further comment on this at the oral proceedings."
• " Notably, in the oral proceedings itself flipchart drawings (see the minutes) using various colours and simultaneous explanations while developing the drawings on several occasions were made by the appellant, which the Board considers merely confirms why in-person oral proceedings was the appropriate format for these proceedings, despite both parties requesting oral proceedings by videoconference. Whilst drawings or sketches supporting or helping to illustrate oral submissions could also be made at oral proceedings held by videoconference in a different way, e.g. by sharing the screen or by using the whiteboard, the Board considered in-person oral proceedings the more appropriate and efficient format in the circumstances of the present case, not least since it expected lengthy discussions on issues for which such visual aids might be referred to often and extensively."
• As a comment, the Board clearly articulates case-specific reasons for holding oral proceedings in person against the wishes of the parties. 

EPO 

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

T 1090/21 - Breadth of claim and closest prior art

Key points

•  "On the question of whether only one piece of prior art should be selected for the purpose of assessing inventive step, it is settled case law that there are often several reasonable starting points, each offering a different route that might lead to the invention without the need of hindsight (see Case Law, I.D.3.1). In that case, the rationale of the problem and solution approach requires that the invention be assessed relative to all these possible routes, before an inventive step can be acknowledged, even if in some cases the number of routes might be substantial."

• "For example, the number of suitable prior art documents may depend on the breadth of a claim, so that a broad claim may lead to a situation where several documents are equally valid starting points. The same is true in a highly competitive technical field where many closely related prior art documents have been published. However, as mentioned above, the fact that several documents are proposed as the closest prior art is not incompatible with the problem-solution approach."

•  "For these reasons, the Board considers that D19, and in particular its example 4, is a reasonable starting point for assessing inventive step."

• The claimed subject matter of the request is found to be obvious. Turning to an auxiliary request, the Board notes the following: "the Board cannot follow the respondent's argument that, given the large number of possible starting points, it could not be required to provide evidence of effect in each case. As noted previously (see point 1.1.5), the number of suitable prior art documents may, for example, depend on the breadth of a claim, so that a broad claim may lead to a situation where several documents are equally valid starting points. The same applies in a highly competitive technical field where many closely related prior art documents have been published. In such a situation, the Board considers that it would be an unjustified advantage to exempt an applicant or proprietor from providing evidence of a technical effect merely because the claims are broad and/or the number of possible starting points is relatively high."

• Turning to a further auxiliary request: "According to established case law, the objective technical problem must be derived from effects directly and causally related to the distinguishing features of the claimed invention. In particular the comparison with the closest prior art has to show convincingly that the effect is attributable to the feature distinguishing the invention. The aim of such a comparison is to demonstrate that the technical effect has its exclusive origin in the feature characterising the invention in the claims" 

• "the question to be answered is whether a technical effect can be inferred from the available experimental evidence that is related to distinguishing feature (iii), i.e. the presence of a fast-reacting crosslinker and a slow-reacting as defined in claim 1 (instead of the fast-reacting crosslinker as disclosed in D19)."

• "In order to provide evidence of an effect over the closest prior art, the parties do not necessarily have to reproduce embodiments of the closest prior art. It is true that, according to the boards' established case law, tests comparing the invention with the prior art have to be conducted in such a way that any effect can be attributed to the distinguishing feature. However, it is also permitted - and might even be necessary - to modify prior-art embodiments in line with the invention to such a degree that the only remaining difference was the feature distinguishing the claim"

• This claim request is held to be inventive.

EPO 

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