The IPKat EPO Boards of Appeal Year in Review 2022

As a busy year comes, take the time to settle down with your favourite feline friend, a mince pie and the annual IPKat EPO Boards of Appeal roundup. The big stories of the year were, of course, the legality of mandatory ViCo oral proceedings and description amendments. IPKat has also sifted through the 100s of Boards of Appeal decisions published in 2022, to bring you the most eye-catching and relevant to ongoing EPO practice.  

Feel-ine christmassy

Last Christmas I gave you...Description amendments

Last Christmas, PatKat was just preparing to tuck into her turkey, satisfied that her job of reporting all the important EPO news had been successfully discharged for the year, when the last minute showstopper of T 1989/18 was published (IPKat). T 1989/18 set alight the description amendment debate with its finding that there was no legal basis for the EPO's onerous description amendment requirement. Following T 1989/18, the controversy over description amendments has continued to rage throughout 2022 (IPKat), culminating with the latest Board of Appeal on the issue, in which the deciding Board casually suggested that the description should really be amended every time claim amendments are filed (IPKat). This is a suggestion likely to put many an EPO user off their figgy pudding. 

It has become increasingly clear that a referral to the EBA is now needed on the issue of description amendments. Ironically, the EPO could probably have avoided this whole furore had they just been content to retain the minimal description amendment requirement that existed as a happy compromise for many years.  Despite the EPO's continued insistence that the issue is settled (IPKat), we can expect the issue to rumble on into 2023. 


I'll be home for...ViCo oral proceedings

At the end of 2021, we were left with the question of how the Boards of Appeal would choose to interpret and implement the EBA decision in G1/21 (IPKat). In G1/21 the EBA found that mandatory ViCo oral proceedings were legally permissible during a state of general emergency impairing parties ability to attend in-person proceedings. However, the EBA also found that in-person proceedings should remain the gold standard in the absence of such a state of general emergency. As the COVID-19 pandemic receded, how then would the Boards of Appeal interpret the EBA's mandate? 

Even now, at the end of 2022, we do not yet have an answer to this question. So far, Boards of Appeal have all continued to find that the state of general emergency justifying mandatory ViCo oral proceedings remains in place (IPKat). 

Separately from the Boards of Appeal, the use of ViCo oral proceedings in opposition proceedings has now been placed on a permanent footing by the EPO President (IPKat). A user survey conducted by the EPO reported a broadly positive user experience of ViCo but also revealed that there was still a significant minority of users who had poor or very poor experiences (IPKat). 
All AI wants for Christmas is to be an inventor

The AI inventor debate surrounding the DABUS applications has (thankfully) just about fizzled out. Whilst this year has seen some truly remarkable advances in machine learning technology (e.g. AlphaFold, ChatGPT), DABUS is not one of these. However, whilst the DABUS patent applications have come to the end of the road in most major jurisdictions, including at the EPO and in the US (IPKat) the UK Supreme Court has now accepted the appeal from Dr Thaler's team. IPKat readers can be assured that PatKat will continue to monitor these proceedings with an appropriately sardonic raised eyebrow.
ST.26 is coming to town 

The EPO hascome under fire this year over how it has chosen to implement the change to the new sequence listing format, ST.26 (IPKat). There are both positive and negative aspects to the new ST.26 format in general, which entered into force in July 2022. The stated aims of the switch to ST.26 was to harmonise sequence listing practice among different patent offices, and to render the sequence listing format compatible with international sequence databases. Whilst the new format and software renders some aspects of sequence listing preparation more efficient (e.g. with the ability to input multiple sequences at once), other aspects are more onerous than previously, particularly the definition of sequence features (IPKat). 

Of more concern is how the EPO has chosen to implement ST.26. The EPO is now requiring applicants of all divisional applications to file an ST.26 sequence listing, even if the parent case was filed with a ST.25 sequence listing (IPKat), raising the potential for unavoidable added matter in the divisional case. The EPO has been unsympathetic to user concerns on this issue (IPKat)


Keeping a list, checking it twice:  Following the Guidelines

The issue of description amendments focuses the attention on the EPO Guidelines for Examination. The Guidelines, as the name suggests, do not provide legal basis, but are merely a guide for Examiners to follow. However, in cases where there are isolated Board of Appeal decisions conflicting with the Guidelines, Examiners usually choose to follow the Guidelines instead of the Boards of Appeal. The Guidelines are, however, often out of step with current Boards of Appeal case law, and lag behind even the most uncontroversial of case law developments. This year a number of Board of Appeal decisions have highlighted both discrepancies between the current Guidelines and Boards of Appeal case law, and inconsistencies in the Guidelines themselves, for example on the novelty of purity inventions (IPKat), and interlocutory revision (IPKat).

Redemption is possible, Mr Scrooge: EPO decisions on inventive step, sufficiency and restoration

There have been a number of EPO Board of Appeal decisions clarifying EPO practise on novelty and inventive step. These included the decision in T 1349/19, finding against an inventive step attack based on a step-by-step path to a goal only known from hindsight (IPKat). This year the Boards of Appeal have also confirmed their more reasonable approach to sufficiency of biotechnology inventions as compared to the US. In contrast to the current approach in the US (IPKat), the EPO permits functional genus claiming (IPKatIPKat). Other decisions from the Boards of Appeal have highlighted the difficulty of establishing the novelty of a product-by-process claim (IPKat) (T 1869/19) or an invention defined by an unusual parameter (T 0555/18)  (IPKat). Another decision (J 14/21) yet again confirmed the strict restoration requirements at the EPO compared to other jurisdictions (IPKat).

Final thoughts - until next year

This Kat cannot sign-off for the year without mention of the EPO Season Greetings Video. Whilst popular films and TV may be forgiven for getting the basics of patents incorrect (IPKat), the same forgiveness can not be afforded to the European Patent Office. 

The EPO video tells the story of an enterprising young girl in Munich who invents her own snowshoes. While testing out her shoes on the icy streets of Munich, she notices a charming couple struggling on the ice and in need of her new shoes. The girl shows the couple her invention. The couple then helpfully suggest that the girl patent the invention and point her towards the EPO's Isar Building. Unfortunately (as the production team at the EPO should be well aware!) the girl is very unlikely to get a valid patent in view of her potentially novelty destroying prior use of the invention. 

Even if (as has been suggested by observers prepared to be forgiving to the EPO) the couple are patent attorneys, the girl has nonetheless disclosed her invention just by using it on the public streets of Munich. It is a shame the EPO's otherwise heart-warming story perpetuates a common misconception among independent inventors that testing your invention in public is fine from a patenting perspective. Prior public use with even the potentiality of disclosure is enough to destroy the novelty of an invention, whether it be a new hose pipe (IPKat), seed drill (IPKat) or snowshoe. This Kat hopes that when the EPO team are storyboarding next year's Christmas video, they, like the press and film industries do for libel risks, have patent lawyers "patent read" their vision. 

Happy holidays from the IPKat team!

IPKat past Years in Review:
The IPKat EPO Boards of Appeal Year in Review 2022 The IPKat EPO Boards of Appeal Year in Review 2022 Reviewed by Rose Hughes on Saturday, December 24, 2022 Rating: 5

13 comments:

  1. Actually, the girl in the EPO Christmas video has not made a novelty destroying disclosure if she files her application by the end of the same day. The real zinger in the video is that she goes directly to the EPO and not a patent attorney. What is she going to do there? Write an application in the lobby by herself and file it by midnight? Does she even get enough pocket money to afford the crazy EPO fees? Going to the EPO would be the worst thing because they would certainly catch the public disclosure on their CCTV, whereas the couple she spoke to may never come forward to say what they saw. Also, the EPO is not John Lewis. 🤦🏻‍♂️

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    1. As an ex-Examiner whose office was actually in the Isar Building, I can report that most of the video is shot in the grounds of the Isar Building (including the "walking through town" bits). Once upon a time a building full of Examiners and BoA members could have warned the film producers about the prior art disclosure issue. But of course, these days there aren't any Examiners or BoA members working on the 10 floors of the 4 wings of the Isar Building. Just an incredibly large number of management etc. staff, presumably.

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  2. Call me cynical, but is not this EPO video just one more example of that old saw, that "There is no bad publicity" or, alternatively "All publicity is good publicity"? I have lost count of the number of times (before I moved from the UK to Germany) that I had to endure a TV advert that was embarrassing. Pure cringe. To my question "Surely this would incline viewers against rather than in favour of the company's products" I got the answer "You just don't get it, do you? The whole point is to make the ad so ridiculous that it will become the leading conversation point around every water cooler (or coffee machine") in every office in the country. Mission accomplished, for the advertiser. Now to other things. Happy Christmas Day, Rose, and everybody.

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  3. May I venture a few thoughts on the description adaptation issue during the truce of Christmas ?

    The recent decision T 3097/19 reported by Rose on this blog has a disruptive potential which should not be understated.
    This decisison increases the confusion resulting from earlier conflicting decisions to a level which should be considered embarrassing by the EPO. In essence, it shifts the rationale for the requirement to adapt the description from the initial reliance on the support in the description condition to a creative interpretation of the 1st sentence of Article 84, calling for a « precise determination » of the scope of protection.
    This seems to reflect a view of the Board that the reliance on the support in the description in previous BOA decisions is a weak argument and indeed, it undermines this argument.
    It is also surprising that the decision (esp. Reason 28.1) ignores the established case law regarding the interpretation of the 1st sentence of Article 84. According to GL F-IV 4.3 (ii), the 1st sentence is to be interpreted as requiring for the claim to mention all essential features. This makes sense. That it is established case law is clear from the reference to
    T 32/82 (see Reason 15) of 1984, and T 977/94 restates this interpretation. This is a requirement for the claims, not for the description.
    Another remark is that the required « precise determination » of the scope of protection is meaningless when expressed in abstract, out of a specific context. The interpretation or « construction » of claims by national courts in infringement proceedings or other litigation is focused on the specific term(s) of the claim over which the parties disagree as to their meaning. What terms will be disputed before a court cannot be predicted by the EPO, and this is no EPO business. The argument of improving « legal security » for stakeholders is thus writ and large illusory.
    As to the likelihood of a referral to the EBA, some people more knowledgeable than I am regarding routes to the EBA doubt it will ever happen. And if it happened, this would likely leave the EPO isolated vis-à-vis national patent offices on this issue, to the detriment of European patent applicants.
    I am aware this may reflect incurable optimism, but in my view, the present level of confusion calls for a reckoning and exploration of alternative solutions to find a reasonable evolution of the current EPO practice, which in itself generates significant burden and legal uncertainty for nebulous benefits, let alone the risk of new matter potentially raised by amendments to the description.
    The EPO’s 2023 objectives include work towards convergence with European patent offices on a number of topics (« Convergence of Practice programme »). It would be desirable to look at the topic of description adaptation within this programme, with the goal of defining a common practice within the EPO and national patent offices.
    In this respect, a valuable source of inspiration is the PCT ISPE Guidelines, section 5.29, which requires adaptation of the description only when inconsistencies cause doubt as to the meaning of the terms of the claims (not just if inconsistencies could cause doubt), and implies that the onus is on the Examining Division to justify an amendment. It is of note that the PCT Guidelines are binding on EPO examiners during the PCT phase of euro-PCT applications.

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    1. Francis, I agree with you that it is dangerous to assume (or to even hope) that the EBA might restore sanity with regard to the topic of description amendments. However, can I ask why there is such pessimism amongst well-informed individuals regarding the possibility of a referral to the EBA?

      I would have thought that any Board asked to decide upon a case involving a dispute over description amendments could, in the light of the divergent case law of other Boards, simply decide to make a referral. Whilst those siding with the "majority" view may be unlikely to do so, why on earth would the "rebel" Boards hesitate to make a referral?

      Reading between the lines, it seems that there is a prejudice amongst members of the Boards against the idea of forensically (and objectively) analysing whether the current EPO practice on description amendments has adequate legal basis. Indeed, looking at the rather strained reasoning in T 3097/19 (and the either thin or implausible reasoning of the case law based upon the second sentence of Art 84 EPC), it seems that supporters of the "majority" view have good reason to fear the outcome of a meticulous interpretation of the EPC.

      If this reading is correct, then it seems that we can conclude that, in practice, the role played by Art 23(3) EPC in ensuring adherence to the rule of law is at best patchy and at worst entirely illusory.

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    2. When I was a youth, patents were not "political". Now though, they are. In asking ourselves why Board members are so reluctant to contemplate a referral to the Enlarged Board, we should look for an explanation in the politics of the issue, for politics trumps everything else.

      Why do those on the "top floor" of the EPO, the consiglieres to the President, let it be known to the Boards of Appeal that a referral to the EBA would not be welcome? Is it something to do with the UPC and its supporters and proponents? Is it something to do with EPO reluctance to take a step back, to renege from an established and deeply invested position, lest the EPO, in being seen to crumble, lose its reputation (built over decades) for being the over-arching, reliable and solid, always consistent interpreter of the EPC. The EPO, going forward though, should keep in mind Denis Healey's "First Law of Holes". When in one, stop digging.

      Or does the age-old maxim apply, that we must, above all, Follow the Money, to find the explanation? How though can the EPO make more money out of the present obsession with conforming the description than it can if it were to fall into line with every other Patent Office in the western world and drop its peculiar obsession?

      Meanwhile, I'm as baffled as everybody else.

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    3. I fear a referral to the EBoA, since decisions G 2/19, 3/19 and 4/19 seem to be based on a political agenda, not on the EPC, so the same could happen with the description amendments.

      On the "Follow the Money" question, let's not forget that the EPO earns more with the renewal fees for pending applications rather than granted patents (what a conflict of interests!), especially unitary patents, so that a delay due to description amendments might involve a higher income for the EPO (and compensate the loss due to "early certainty") .

      However, I think that there is some sort of hidden agenda behind the EPO practice.

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    4. As the story of the description adaptation unfolds, we can see it intermingles several issues : interpretation of the components of Article 84 (1st sentence, clarity, support), influence of other EPC provisions on the relative weights of the claims and the description, relevance of Article 69.
      In addition to the initial area of divergence regarding the interpretation of the support condition, another divergence has emerged in T 3079/17 regarding the 1st sentence of Article 84. Moreover, the case law of the EPO admits that there is no clear consensus between BOAs as to the weight to be acknowledged to the description in the interpretation of claims – this has not triggered calls for a referrral to the EBA though, probably because the applicability of Article 69 by the EPO was seen as very limited. Recent decision T 1473/19 adds to the confusion by extending the applicability of Article 69 and making it the underlying rationale for Article 84.
      My feeling is that such a complex situation would not lend itself to an EBA referral. What would be the question(s) ?
      I also note that the current practice of Article 84 tends to ban as unclear such terms in the claims as « substantially » (e.g. in « substantially vertical ») or « approximately » even though they make sense for a skilled person.This is beyond the description adaptation issue but goes in the same direction.
      This is why I would like to see the EPO look at these issues in a coordinated effort with national patent offices within the « Convergence of practice programme ».
      I also think the EPO, which is very strict in the assessment of new matter, should be wary of the risk of new matter when it requires amendments to the description, particularly so when the Examining Division itself makes substantial amendments to the description and the claims as part of the 71(3) notification. It is not acceptable indeed that amendments made by the Examining Division can be held new matter under EPO rules – which the Division is supposed to know better than the applicant - and lead to the loss of the patent in opposition proceedings.
      As to the discussion of the motives for the EPO practice, I do not find the money trail credible. I rather tend to think that the « hidden agenda » is aimed at gaining influence over the interpretation of claims by national courts. Here, the UPC looms large, as it will potentially threaten the primacy of the EPO in the European patent arena. Another clue could be linked to the current definition of "quality" at the EPO.

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    5. Mr Hagel, I think you have your finger on the point, that the EPO, looking over its shoulder at the emerging UPC, is striving to establish and maintain its position as ultimate arbiter of patentability in Europe. It is infected by a "caveat emptor" thinking, that it is a privilege to be given a patent by the EPO, so Applicant had better be ultra-careful what it asks the EPO for. If it asks, with a description that includes added matter, then it has only itself to blame when an OD (or a TBA on appeal from an OD), revokes the patent granted by the EPO. Not the fault of the ED. Recall all that EPO finger wagging at Applicant, that Applicant, exclusively Applicant, is solely responsible for the text going to grant.

      As you say, the EPO sees description adaptation as a "quality" issue. Patents granted by the EPO shall exhibit the highest levels of "quality", self-policed by Applicants, so that duly granted patents are never revoked (except by prior art unbeknown to either Applicant or EPO prior to grant). WYSIWYG. What you see, in the B publication, is what you (the patent owner) shall get from the courts. No more, and no less.

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  4. Dear MaxDrei,
    Thank you for your followup on my comment.
    I think it would be risky for the EPO to rely on a « caveat emptor » principle where a patent is revoked for new matter and the new matter was introduced by an Examining Division as part of a 71(3) notification, by amendment to the description and/or the claims. Amendments raising a new matter issue can be additions or deletions, and may be quite diverse.
    First, such a situation is a very serious quality issue for the EPO, and the EPO should ensure it does not happen. I have suggested that the guidelines relating to Article 84 carry a robust warning to this effect, so as to raise the examiners’ awareness of the risk.
    Second, it would be damaging for the EPO if the owner of the revoked patent sued the EPO as liable for the loss of their patent. Article 9(2) EPC defines jurisdiction for court action alleging liability of the EPO. The court would likely dismiss the claim based on the EPO’s argument that the applicant did not challenge the amendment. But the mere initiation of such an action would entail very bad publicity for the EPO. In addition, the argument could be challenged by the patent owner on the basis of the disproportion of knowledge as to the risk of new matter between the Examining Division and the applicant.

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    1. Francis, I am amazed that the EPO has not already been sued in a national court under the provisions of Art 9(2) EPC. The farce that was the EBA's decision in G3/19 has left the door particularly wide open on this count. This is because it will not be long before a Board of Appeal issues a final decision on a matter that is covered by a provision of EU law (Article 4(1)(b) of the Biotech Directive), and where the correct interpretation of that provision that is neither acte clair nor acte éclairé. As the Boards cannot make preliminary references to the CJEU, the EPO will therefore have breached the right under EU law of a party, in such circumstances, to obtain an opinion from the CJEU under Art 267 TFEU.

      Especially given the responsibilities that it has been afforded to administer an EU law-based right (unitary patents), it is not exactly a good look for the EPO to be routinely breaching a fundamental provision of EU law. (And this does not even consider the EPO's terrible record with respect to rights, such as the right to collective bargaining, enshrined in the EU Charter of Fundamental Rights.) But that it exactly what it will soon be doing ... and indeed may already have done.

      Against this background, I would agree with Max that the EPO's senior management will not be losing any sleep about the potential fall-out from the description adaptation debacle.

      Regarding T 1473/19, I am fascinated by the Board's conclusion that Article 69 (and Article 1 of the Protocol to that Article) should always be used when interpreting the claims of a patent or patent application. I cannot say that I am inclined to disagree - though I do question the basis for the Board's assertion that "As the "invention" in Articles 54, 56 and 83 EPC (see T 92/21, Reasons 3.2, last sentence) and, with regard to claim amendments, also the "subject-matter" under Article 123(2) EPC (see G 2/10, Reasons 4.5.2, last paragraph) refer to the claimed subject-matter only". It is just that I am not quite clear on the full implications of the Board's conclusion.

      For example, if the description provides context for the interpretation of a claim, then it seems to me that making amendments to the description runs the risk of changing that context, and hence adding subject matter (by changing the interpretation of the wording of the claims). With this in mind then surely the only "safe" approach (from an added matter perspective) is to make no amendments to the description whatsoever.

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    2. @Proof of the pudding

      Sorry for the tardy followup on your comment of Dec 31.

      I agree that T 1473/19 is fascinating. The posit of T 1473/19 that Art 69 must be used in all circumstances is at first glance simplistic, it ignores essential differences between the contexts of examination and litigation.
      While US rules are not applicable, I find them interesting in general to shed light on the difference between the contexts of examination and infringement proceedings. See excerpt from MPEP 2111 :
      “Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. In contrast, an examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. Thus, the Office does not interpret claims when examining patent applications in the same manner as the courts [...].
      Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.”
      As to the risk of new matter entailed by amendments which alter the interpretation of the claims by a court, I fully agree. We must act to make the EPO more aware of the risk.

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  5. Mr Hagel, it is all well and good, what you write about "bad publicity" for the EPO but I suspect that the management on the top floor of the EPO couldn't care less. With large scale Applicants having no reasonable alternative to the EPO, for their patent filings in Europe, the EPO's managers can continue delivering "value" to its shareholders regardless of how much any particular customer grumbles about the fate of any single patent application of theirs. The cash cow will continue to be milked for all it's worth. In business circles, this sort of management is called "sweating the assets" isn't it? And in business circles it is admired, isn't it? seen as "best practice" isn't it?

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