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EPO Boards of Appeal Conference 2018

1)   Structural Reform of the Boards of Appeal

Carl Josefsson, the newly created President of the Boards of Appeal, explained that the Boards of Appeal were no longer a Directorate General of the European Patent Office but a separate organisational unit within the European Patent Office.

The Powers of the President of the European Patent Office in respect of the Boards of Appeal have been delegated (pursuant to Act of Delegation and new Rules 12a to 12d EPC) to the President of the Boards of Appeal and a Board of Appeal Committee consisting of national judges has been created as a new subsidiary body of the Administrative Council.

The reform is intended to complement the Revision of the Rules of Procedure of the Boards of Appeal (see below) and increase the procedural efficiency of the Boards of Appeal.

The President of the Boards of Appeal has a five year objective to settle 90% of cases within 30 months and to reduce the number of pending cases to below 7000 by 2023 (presently 9189 cases).  To this end, the Boards and its members were to be subject to specific and individual objectives and performance evaluation. More members were to be hired and improvements in internal workflows and business distribution across the Boards were planned.  The appeal fee structure was also to be reformed by an increase in the appeal fee and a new reimbursement policy.

Mr Josefsson indicated that the number of technical cases settled by the Boards had increased (by 20%) during 2018 and that the productivity of the Boards had increased (by 15%). However, the number of appeals had also increased (by 10%).

The Boards of Appeal are located in new premises at Richard-Reitzner-Allee 8 in Haar Munich and have a new section on the EPO website(see https://www.epo.org/law-practice/case-law-appeals.html).



2)   Revision of the Rules of Procedure of the Boards of Appeal

Mike Harrison, the chairman of the Technical Board of Appeal 3.2.06, gave an update on the revision of the Rules of the Procedure of the Boards of Appeal.

The second draft of the new Rules is now available to the public and a user conference is scheduled for 05 December 2019. The implementation of the new Rules is expected in early 2019.

The second draft can be found via the EPO website http://documents.epo.org/

Mr Harrison explained that the revision was aimed at efficiency, harmonisation and transparency.  The revision was intended to provide that an appeal was primarily to be a review of the decision of the first instance.  To that end, a convergent approach (increasingly difficult) to amendments was proposed with the parties being obliged to explain and or justify them.  The Boards were to use their discretion in order to ensure that the appeal proceedings were transparent and harmonised.

Mr Harrison mentioned the written consultation following the first draft of the new rules and indicated that the majority of users sought more flexibility to amend than proposed with higher emphasis on the quality of opinion and case management by the Boards and a longer transition period before implementation. He went on to point out the changes (or otherwise) made in the wording of the second draft whilst emphasising that the new Rules could not traverse the right to be heard.

  1. a) Amendment on filing an appeal

There has been essentially no change to the first draft of new Article 12 of the Rules so that an appeal was to be based primarily on the decision and minutes of the oral proceedings of the first instance rather than all previous party submissions.

Any part of a party’s appeal case which did not meet that provision was to be considered an amendment, unless the party demonstrated that this part was admissibly raised and maintained in the first instance proceedings. A party had also to say what was amended and why.  The amendment would only be admitted at the Board’s discretion. The Board’s discretion would be exercised having regard, inter alia, to the complexity of the appeal, the suitability of the amendment to address the issues which led to the decision and the need for procedural economy.  The Board would not admit facts and evidence which should have been submitted or was no longer maintained in the proceedings leading to the decision – unless the circumstances of the appeal case justify their admittance.  The Board’s discretion was, therefore, set “low but higher than today”.  There was to be no extension in the four month period set for a reply to an appeal.

  1. b) Amendment before summons or a communication setting a time limit

There has been a slight change (highlighted below) to the first draft of new Article 13(1) of the Rules.  An amendment to a party’s appeal has also to be justified by that party and can only be admitted by the discretion of the Board.  The Board’s discretion would be exercised having regard, inter alia, to the current state of the proceedings, the suitability of the amendments to resolve the issues which were admissibly raised by the parties to the appeal or the Board, whether the amendment is detrimental to procedural economy and, in the case of amendment to a patent application or patent, whether the party has demonstrated that any such amendment prima facie overcomes the issues raised by the other party to the appeal proceedings or the Board and does not give rise to new objections.

  1. c) Amendment after summons or a communication setting a time limit

There has been essentially no change to the first draft of new Article 13(2) of the Rules.  After the summons or the expiry of the time limit an amendment was not to be considered – unless there are exceptional circumstances which need to be justified with cogent reasons by the party concerned.

The new Rules are expected to apply to all appeal cases unless new Article 12 is not applicable to the grounds and/or reply filed before their entry into force, a summons has already been issued or the time limit of a communication setting a time limit has already expired. An advance notice of the implementation (6 months)is expected to give adequate time for parties to adapt their cases.

Mr Harrison concluded by suggesting that it would soon be necessary to substantiate the complete case in the first instance and that amendment of on-going cases should be undertaken before the new Rules entered into force.  A party to an appeal should not expect a Board to admit a change in its case unless it is adequately justified by thorough and reasoned arguments.  A change in the case after a summons to oral proceedings before a Board should be expected to be very difficult.

3)   Highlights of Boards of Appeal Case Law

Petra Schmitz, a legally qualified member of the Boards of Appeal, presented some decisions of the Boards of Appeal during 2018.

  1. a) T 282/12 Priority right

The European patent concerned a dosage form (an elongated tablet) comprising a core having a sub-coating, a first gelatinous coating over at least part of the sub-coating and a second gelatinous coating over at least part of the sub-coating … wherein said first and second gelatinous coatings form a gap through which the sub-coating is exposed, the gap being from 3% to 33% of the length of the elongated tablet.

The priority application was a US continuation-in-part (CIP) patent application which disclosed the same dosage form.  The earlier US patent application disclosed the same dosage form but with the gap being from 5% to 33%.

The European patent was challenged on the basis that the claimed gap range was not entitled to priority because the priority application was not the first such application and that consequently the European patent was anticipated by the published priority application.

The Board applied the approach explained in G 1/15 (see below). It followed that the gap range of the earlier US patent application was encompassed in the range of the priority application and that the invention of the priority application was conceptually divided into two parts with one being the same invention as that disclosed in the earlier US patent application.

The broadening of the invention of the earlier US patent application consisted of the addition of alternative dosage forms.  The addition did not modify the identity of the dosage forms which were already in the earlier US patent application.  The dosage forms of the priority application wherein the gap is between 5% and 33% are the same as those of the earlier US patent application.  It would be unjustified to grant a priority claim in respect of those dosage forms.

  1. b) T 969/14 Priority right

The European patent claimed the priority of an earlier national patent application which had belonged to another person.  That person had assigned its rights to the ownership of the national application to the applicant – provided that the European patent application was to exclude certain parts of the national application and that the applicant assigned back a right of priority in respect of those parts so that person could file a second European patent application relating to those parts and claim the priority of the earlier national patent application.

The question arose during opposition proceedings as to whether the second European patent application was prior art for the European patent and, in particular, whether the priority right had been transferred to the Applicant.

The Board considered that G 1/15 (see below) had ruled that a partial priority may not be refused for a claim encompassing alternative subject matter by reason of a generic expression provided that the alternative subject has been disclosed in the priority document.  It said that once the concept of partial priorities is accepted, then a partial priority right must be transferable separately from the application.  But that this limited the remaining priority right.  In denying the priority right of the European patent, the Board said that a patent proprietor can only claim a right which he owns and that the proprietor no longer owned the priority right in respect of the mentioned certain parts.  Note here that the patent claims did not exclude those parts and that the Board refused an auxiliary request containing a disclaimer in respect of them because the request could have been filed before the Opposition Division.

  1. c) T 797/14 Sufficiency

The European patent claimed a container sealed with a coating comprising ethylene-tetrafluoroethylene polymer. The only coating composition mentioned in the patent comprised Fluorotec™ – which had a composition and method of manufacture which the manufacture kept secret.  The disclosure of the patent was alleged to be insufficient. The patent and the proprietor did not provide any information concerning the structure and composition of the Fluorotec™ coating.

The Board held that there was no certainty as to availability and accessibility of Fluorotec™.  Although stoppers coated with Fluorotec™ were publicly available from 1992 to 2010, this did not mean that Fluorotec™ had a stable and constant composition before the filing date or that it would keep its composition stable and constant over time after the filing date.   The Board indicated that it was not clear whether Fluorotec™ remained available or accessible after 2010 since this was dependent on the manufacturer and on demand.  And that an accurate analysis was not feasible because the process of preparation of the product was unknown.

In finding an insufficient disclosure, the Board said that “[t]he counterpart of a monopoly by a patent is the disclosure of the invention, in particular of its essential elements, and not the provision or use of a commercial product [whose] structure and composition is unknown”.

  1. d) T 2101/12 Closest Prior Art

The European patent concerned a method for providing a document with an electronic signature in a system comprising a trusted party server, and a computer device comprising a display and being arranged for communication with the trusted party server via a network characterised in that the system further comprises a signature device for producing the electronic signature and being configured for communication with the trusted party server.

In denying inventive step, the Board rejected the closest written disclosure as not straightforward and indicated that the closest prior art was the non-technical process undertaken with a notary.  The Board said that the desire to automate human activities is a constant one.  It was obvious that at some point the skilled person will want to automate that activity and obvious that he would have used commonly available tools for that purpose.

  1. e) T 2563/11 Double Patenting

A divisional application was filed with independent claims identical to those of the granted parent application.  The description differed significantly from that of the parent.  The Examining division refused the divisional application because of the “prohibition against double patenting”.  The applicant appealed saying that for determining whether the prohibition of double patenting is violated, it is decisive wither the scope of the protection in the divisional is the same as the one in the parent.  And that the different description meant that a feature of the claims had a different meaning as between the parent and the divisional application.

In rejecting the appeal, the Board indicated that although the EPC does not contain an express prohibition of double patenting, it was established practice (confirmed by G 1/05 and G 1/06) for the EPO to refuse the application in such a situation for lack of legitimate interest in the proceedings (Article 125 EPC).  The Board held that the subject-matter was that of the claims – and that the description was not to be considered because Article 69 became relevant only after the grant of a patent.

  1. f) J 13/16 Restoration of priority right

A Euro-PCT application was filed with the United States Patent and Trademark Office as the Receiving Office.  The applicant also filed a request for restoration of priority right because the period for claiming priority had not been met.  The Receiving Office had granted the request because it found that the failure to meet the time limit had been “unintentional”.

After entry of the application into the European regional phase, the Receiving Section of the European Patent Office informed the applicant that the application did not enjoy a priority right (because the European Patent Office did not recognize that “due care” had been taken with respect to priority right).  The applicant subsequently sought a re-establishment of rights (Article 122 EPC) and submitted reasons for all due care.

The Board pointed out that according to the Patent Co-operation Treaty (PCT) the restoration of the right of priority can be granted under either a “due care” criterion or an “unintentional” criterion (depending on the Receiving Office).

If a Receiving Office restored a priority right under the due care criterion, this had to be effective for each designated state (Rule 40ter.1 PCT).  But that if a Receiving Office had restored a priority right under the unintentional criterion, the applicant had to file a new request with the European Patent Office within one month of entering the European regional phase (Rule 40ter.2 PCT).

In refusing the applicant, the Board reasoned that Article 48(2)(a) PCT required a Contracting State to excuse, for reasons admitted under its national law, any delay in meeting any time limit under the PCT.  And that this requirement was met in the European patent procedure by re-establishment of rights (Article 122) in the priority period. But if the 2 month time limit for requesting re-establishment of rights (Article 122) was missed, then re-establishment in this time limit was ruled out.  The Board concluded that the same must apply to the period (of one month) provided by the PCT (Rule 40ter.2 PCT).

  1. g) T 611/15 Withdrawal of requests

A European patent was maintained in amended form by an Opposition Division.  During the oral proceedings the main request of the Proprietor was for maintenance of the patent as granted.  However, the Opposition Division considered that request to lack novelty and several auxiliary requests were subsequently discussed. At the end of the oral proceedings, the proprietor withdrew the main request making an auxiliary request his sole request.  In the written decision, the Opposition discussed the patent as granted at length stating that the granted patent could not be maintained.  The proprietor subsequently filed an appeal requesting the patent as granted.

The question which the Board had to consider was whether the appeal was admissible and, in particular, whether the proprietor was a party who was adversely affected by the decision.

In finding the appeal to be inadmissible, the Board said that the minutes made it clear that the main request had been withdrawn.  In the absence of a request for correction of the minutes, the Board had to assume that the minutes accurately reflected the proprietor’s requests.  Although the Opposition had discussed the main request at length in the written decision, this had only been to set the scene for the reasoning given in the final and sole request.

4)   Undisclosed disclaimers G1/16

Albert Lindner, the chairman of the Technical Board of Appeal 3.3.01, outlined the decision of G 1/16 relating to the introduction of disclaimers to a European patent application.

He explained the apparent contradiction between G 1/03 allowing undisclosed disclaimers for accidental anticipation, anticipation by a conflicting application, or exclusion of subject matter relating to exceptions to patentability and G 2/10 which held that an amendment to a claim by the introduction of a disclaimer disclaiming from its subject matter disclosed in the application as filed infringes Article 123(2) EPC (viz. adds subject matter) if the subject matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

He went on to refer to three groups of decisions wherein the “gold standard” test for added subject matter relied upon by G 2/10 was either not applied (T 74/11), applied (T 748/09) or applied in modified form (T 2464/10, T 1176/09, T 1872/14, T 2018/08 and T 1870/08).

Mr Lindner referred to the reasoning (at point 46.4) of G 1/16 which allowed the introduction of disclaimers.  The question to be asked in this context is not whether an undisclosed disclaimer quantitatively reduces the original technical teaching … but rather whether it qualitatively changes it in the sense that the applicant’s or proprietor’s position with regard to other requirements for patentability is improved.  If that is the case, then the original technical teaching has been changed by the introduction of the disclaimer in an unallowable way.  And as a consequence, the technical teaching based on the amended claim, i.e. on the remaining subject matter without the disclaimer, can no longer be considered as belonging to the invention as presented in the application as originally filed.

He concluded by indicating that the Boards of Appeal had applied G 1/16 (in T 660/14) when refusing to admit a late filed auxiliary request because the amended claim (which included undisclosed disclaimers) prima facie added subject matter.

5)   Partial Priority Right G 1/15

David Rogers, a legally qualified member of the Boards of the Appeal, outlined the problem of poisonous priority and self-collision between a European patent application and its priority or divisional application.

He explained that G 1/15 had resolved the problem of the interpretation of G 2/98 amongst the Boards of Appeal which held that when a generic term such as a chemical formula or numerical range was broadened with respect to a narrow range from which priority was claimed, priority was lost entirely.

G 1/15 had affirmed that a claim could enjoy a partial priority right. A simple test to determine whether a claim enjoyed such a right was 1) to determine the relevant subject matter that is disclosed in the priority application and 2) check if this subject matter is covered by the claim.

Mr Rogers concluded by indicating two cases in which the Boards of Appeal had applied G 1/15 (T 2466/13 and T 1519/15) adding that the dividing line between ranges may not always be clear and that it should be kept in mind that the priority application can still be prior art for that part of a claim that is not entitled to the priority right.

6)   Inventive Step

A panel discussion involving Klaus Grabinski of the Federal Supreme Court of Germany, Rian Kalden of the Court of Appeal, the Hague, the Netherlands, Lord David Kitchen of the Supreme Court, United Kingdom and Marcus Müller, the chairman of the Technical Board of Appeal 3.3.02, highlighted and contrasted the various approaches to the question of inventive step between the EPO and the national courts.

The discussion made clear that the UK approach differed from those of the other authorities in the reliance on expert witness testimony.  The EPO rarely relied upon such testimony not least because of the number of cases that it had to deal with.

Mr Müller outlined the problem-and-solution approach of the European Patent Office and pointed out the case law relating to the selection of the closest prior art saying that whilst such a selection was expedient it was not necessarily obligatory.

The designation of the subject matter of the invention, the formulation of the original problem, the intended use and the effects to be obtained should generally be given more weight than the maximum number of identical technical features (T 870/96).

A statement of purpose in the description does not disqualify a document not related to this purpose from being the closest prior art when the achievement of that purpose is not plausible from the disclosure (T 2255/10).

If the skilled person has a choice of several workable routes (viz. routes starting from different documents) which might lead to the invention, then inventive step must be assessed relative to all of these possible routes (T 967/97, T 1437/09 and T 1742/12).  This includes a route starting from a document with a similar purpose (T 1841/97) rather than the same purpose, remote prior art (855/15 and T 2057/02) and prior art which does not disclose all problems solved by the claimed invention and, in particular, the objective technical problem (T 698/10).

He added that whilst the definition of the technical problem should normally start from the technical problem described by the patent or patent application it can be reformulated only when it turns out that an incorrect state of the art has been used or that the technical problem is not in fact disclosed (T 881/92 and T 39/93).  The technical problem must be defined in such a way that it does not contain part of the solution (T 99/85).

An attack on the inventive step of a claim must not merely state that the technical problem is not solved (because the technical effect is not achieved) but requires reformulating the technical problem in a less ambitious way and assessing obviousness in the light of the cited prior art (T 87/08).

If an applicant or proprietor reformulates the problem in a more ambitious way, then that person has the burden of proof to show that the reformulated problem is solved (T 1188/00). In any case, the reformulated problem must be with the spirit of the invention disclosed in the application as filed (T 1397/08).

Mr Müller went on to say that post-published evidence could not serve to establish that an application solves the problem it purports to solve (T 1329/04 and T 488/16) and that comparative tests required that the embodiment of the prior art which is closest to the claimed subject matter is chosen (T 716/08). An absolute proof of the achievement of a technical effect is not required for that effect to be considered plausible (T 716/08).

He concluded by saying that a prejudice against a claimed solution required expression in standard works or a textbook and that it was not enough that a limited number of persons or a prevalent view within a given firm (however large) held that prejudice (T 1989/08).

TLIP Ltd observe that US applicants should note the decision of J 13/16 (see 3f) above) because the European patent attorney will not necessarily be aware of a request for restoration of priority right before the United States Patent and Trademark Office.  We also observe that the decision T 797/14 (see 3c) above) means that a European patent application will not be granted for an invention relying on a proprietary composition unless that composition is publicly known or disclosed in the application.

If you have any questions relating to any of the above, please do not hesitate to contact us at mail@tlip.co.uk.