There has been a ream of recent decisions from the EPO Boards of Appeal on whether the requirements in the Guidelines for Examination on description amendments has legal basis in the EPC (IPKat). The significance of the two decisions finding a lack of legal basis for the description amendment requirement (T 1989/18 and T 1444/20) has been questioned in light of the opposing case law. It has been particularly noted that the two Boards of Appeal in these cases (3.3.01 and 3.3.04) contained the same legal member (Lukas Bühler). Notably, the decisions also relate to patent applications from the same applicant (Roche). Will the EPO thus be happy to ignore the decisions in T 1989/18 and T 1444/20 as aberrations stemming from a rogue member of the Boards of Appeal?
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| Description amending |
A sign of the way the wind is blowing at the EPO might be found in the EPO's press release following "a user discussion" on the updates to the Guidelines for Examination 2023. On the controversial topic of description amendments, the press release briefly reports that:
the EPO understood the users' concerns as to the need of more certainty. The users were invited to join the online workshop on this topic organised by the EPO for 23 June 2022.
According to the online summary, attendees of the Adaptation of the description workshop will, for the price of € 140.00, be provided with insights "into some of the legal and practical aspects to be considered in relation to the adaptation of the description to the claims before the EPO [...] The speakers will also share their experience and views on this legal requirement against the backdrop of the recent case law of the Boards of Appeal". The speakers will apparently include "experienced EPO examiners and lawyers, members of the Boards of Appeals, national judges and user representatives".
This Kat wonders whether Mr Bühler is invited.
Reviewed by Rose Hughes
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Wednesday, May 25, 2022
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We have been here before. The SACEPO working party has heard feedback from applicants on adaptation of the description. Their response (ie the largely meaningless amendments to the Guidelines) amounted to a blanket refusal to cede any significant ground. What, pray tell, will the EPO be bringing to the party on this occasion? If past is prologue, I doubt it will be either a mind willing to understand applicant's concerns or a willingness to compromise.
ReplyDeleteThe EPO should read this blog - twice - to understand the harm it is doing to applicants, instead of trying to convince that it is right and the rest of the world is wrong.
ReplyDeleteThe problem with the EPO case law is that it often relies on the Guidelines, which in turn refer to the case law. However, neither the case law nor the guidelines are legally binding.
This happened also in G 4/19, where the double patenting practice (contrary to art. 52(1) EPC) of the guidelines has been cited in the case law, and vice versa.
If you believe that G 4/19 is based on the Guidelines, then I wonder if you have actually read the decision. Where does the EBA suggest that the Guidelines were relevant to their interpretation of the EPC?
DeleteCould you suggest any other BoA decision which bases its interpreation of substantive patent law on the Guidelines? (Obviously there are decisions that confirm the Guidelines. That is not the same.)
Dear Patent robot,
ReplyDeleteIf there is one thing that the BA are not bound by, it is the Guidelines. They have explained this point many times, and at times they haven even criticised them, like in T 1444/20.
Sometimes the Guidelines have been amended following a criticism by the BA, cf. the deletion of the purposive selection for N when selecting from a broader range. Sometimes the Guidelines have not been amended, cf. the former essentiality test, presently the three point test with an unchanged content.
When in G 4/19, the Guidelines are mentioned it is only for explanatory reasons in relation with Art 125 and to come to the result that Art 31/32 VCLT are not applicable, cf. Points 43 and 44 of the reasons. In Point 39 of the reasons, the Guidelines are quoted in relation with the president of the office.
Concluding that “the double patenting practice (contrary to art. 52(1) EPC) of the guidelines has been cited in the case law, and vice versa” is really far-fetched and rather biased.
The EBA has simply concluded that “it has never been argued that the practice of the Office is obviously nonsensical or unreasonable, but simply that it lacks a proper legal basis. It has never been argued either that the existing practice is in any way manifestly unjust.”
In some amicus curiae briefs it has been argued that the practice of the EPO violated art 52(1) EPC but the EBA simply ignored this argument, as well as the relevant TP.
ReplyDeleteUnfortunately, according to EBA everything which is not allowed by the EPC is forbidden, while according to the rule of law everything which is not forbidden should be allowed.
Robot, I would concur with anonymous on this occasion.
DeleteClose observation of the practice of EPO management regarding interpretation of the EPC reveals a trend of "any interpretation is permitted that is not explicitly contradicted by the wording of the EPC". This practice enables management to pick their preferred (not explicitly forbidden) interpretation of the EPC and to then ignore any arguments, no matter how well founded, in support of a different interpretation.
Sadly, as illustrated by G3/19 and G1/21, the EBA has so far declined to stand up for a principled and properly reasoned approach to interpretation of the EPC. I therefore doubt that the EPO's management will feel any reason to abandon an interpretation practice that has so far suited their (political) objectives so well.
Dear Patent Robot,
ReplyDeleteFor your information.
According to Art 10(1) RPEBA “any written statement concerning the points of law raised in such proceedings which is sent to the Board by a third party may be dealt with as the Board thinks fit”. The EBA is thus not obliged to take into account amicus curiae briefs.
The EBA is only obliged to take into account submissions of the parties. The president of the EPO may, in a referral under Art 112, file comments, either upon invitation of the EBA or after a corresponding request. The parties shall be entitled to submit their observations on the President's comments. See Art 9 RPEBA.
When you claim that “according to EBA everything which is not allowed by the EPC is forbidden, while according to the rule of law everything which is not forbidden should be allowed” you might have overlooked G 1/21.
OP by ViCo are nowhere mentioned in the EPC and in the Implementing Regulations, and yet the EBA has decided that under certain conditions, they can even be imposed to the parties.
Although it was not part of the referral G 1/21, where is it possible according to the EPC that the deciding body, be it a first instance division or a BA, is not obliged to sit together when deciding the fate of an application or of an opposition? i doubt that Art 125 would be a suitable justification of this way of acting at the EPO.
In G 1/21 the EBA did not request amendment of Art 15a RPBA20, although it should be the logical consequence of the reasons in the decision.
It appears thus not correct to claim that “according to EBA everything which is not allowed by the EPC is forbidden”.
A bit more nuanced statements would do well.
Ok, you convinced me that the EBA in G 1/21 was correct, since nowhere in the EPC it is stated that OP "shall" be held in person.
DeleteHowever, could you please also convince me that the EBA in G 4/19 has not overlooked the word "shall" of art 52(1) EPC?
"Although it was not part of the referral G 1/21, where is it possible according to the EPC that the deciding body, be it a first instance division or a BA, is not obliged to sit together when deciding the fate of an application or of an opposition?"
DeleteThis is a misguided argument.
There has never, ever been an obligation for the deciding body to "sit together" when taking a decision. There is no obligation to take the decision at the end of the oral proceedings. Even if the decision is taken during oral proceedings, there is no obligation for the members of the deciding body to do that "while sitting together". They could go to their offices and agree over email. Not very practical perhaps, but totally legal.
@Patent Robot:
So your are arguing that a patent "shall" be granted even if the claims are unclear, the invention is insufficiently disclosed, no fees were ever paid, no translation was filed, etc. After all, Art. 52(1) states a patent "shall" be granted.
The EBA has better things to do than take such arguments seriously.
Vlad, I was referring to G 4/19, not G 1/21
DeletePatent Robot, I understood that you were referring to the double patenting decision.
DeleteYour argument is that, since Art. 52(1) says "shall" and does not mention double patenting, therefore double patenting is no ground for refusal. But, as I explained, if that argument were valid it would also mean that a patent "shall" be granted even if the invention is insufficiently disclosed, no fees were ever paid, etc. etc. That would be ridiculous, so clearly something about your argument is wrong.
You might reply "yes, but if the invention is insufficiently disclosed, then the application can be refused for not complying with Art. 83. There is no such provision in the EPC against double patenting."
Good, then you would have formulated the correct argument: no legal basis for the prohibition of double patenting. And this is exactly the argument that the EBA in G 4/19 treated at length.
So the EBA treated the real argument and ignored the frivolous argument, as it should.
Dear Patent Robot,
ReplyDeleteFor your information.
According to Art 10(1) RPEBA “any written statement concerning the points of law raised in such proceedings which is sent to the Board by a third party may be dealt with as the Board thinks fit”. The EBA is thus not obliged to take into account amicus curiae briefs.
The EBA is only obliged to take into account submissions of the parties. The president of the EPO may, in a referral under Art 112, file comments, either upon invitation of the EBA or after a corresponding request. The parties shall be entitled to submit their observations on the President's comments. See Art 9 RPEBA.
When you claim that “according to EBA everything which is not allowed by the EPC is forbidden, while according to the rule of law everything which is not forbidden should be allowed” you might have overlooked G 1/21.
OP by ViCo are nowhere mentioned in the EPC and in the Implementing Regulations, and yet the EBA has decided that under certain conditions, they can even be imposed to the parties.
Although it was not part of the referral G 1/21, where is it possible according to the EPC that the deciding body, be it a first instance division or a BA, is not obliged to sit together when deciding the fate of an application or of an opposition? i doubt that Art 125 would be a suitable justification of this way of acting at the EPO.
In G 1/21 the EBA did not request amendment of Art 15a RPBA20, although it should be the logical consequence of the reasons in the decision.
It appears thus not correct to claim that “according to EBA everything which is not allowed by the EPC is forbidden”.
A bit more nuanced statements would do well.
The EPC does not support this new EPO practice. In particular, in A.84, the wording "supported by" covers "of the same scope as" or "in accordance with". However, there is absolutely nothing to require these limited constructions and they are not how one normally construes the wording "supported by".
ReplyDeleteAs T1989/18 explained, no other part of the EPC is apparent that can be leveraged into supporting the practice - all the likely candidates clearly address other aspects.
The EPO will adapt its practice as it sees fit to make patent assessment easier. That does not however mean the EPO should be supported when it makes up what the EPC requires.
I really don't know what all the fuss is about description amendments at the EPO. You amend the claims, and then you amend the description in the same way. We've been doing this for decades and it's never been a problem - the recent changes to the Guidelines just confirm this well-established practice because people had started to get lazy in the last 10 years or so, just adding the word "disclosure" all over the place, like it had some established meaning at the EPO and national courts (when it doesn't). If you are worried about losing valuable scope when you amend the description, then you shouldn't amend the claims in the first place. I know people like to bash the EPO on this Blog, but they are right on this. All these hypothetical worries about description amendments making it harder for parties to rely on the doctrine of equivalents (or whatever the concern is meant to be) is something for the national courts to worry about, not the EPO, especially when national practice on claim interpretation and non-literal infringement is so poorly harmonised.
ReplyDelete