The Enlarged Board of Appeal (EBA) has released its written decision in G 2/21 on the question of post-published evidence. In G 2/21, the EBA consciously avoids the rabbit hole of plausibility, dismissing it as a generic catch word that does not amount to a distinctive legal concept. For the EBA, the substantive question at the heart of G 2/21 is a familiar one that needs no reference to plausibility. In order to understand whether a purported technical effect may be relied on for inventive step, the EBA concludes that the substantive question remains that of what the skilled person would understand from the application as filed.
The referring case: Moths, moths and more moths
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| Moths to the flame of plausibility |
The patent included data demonstrating the synergistic effect of example compounds falling under the scope of the claim against two different species of moth. At Opposition, the Opponent submitted contradictory data, showing that example compounds did not in fact have a synergistic effect against one of these moth species. In response, the Patentee submitted additional data showing a synergistic effect of the example compounds against a third species of moth. The Opponent argued that the synergistic effect of the compounds against the third moth species was not plausible from the application as filed, and so the post-published evidence should not be taken into account.
The post-published data submitted by the patentee were considered fundamental to deciding the question of inventive step. Without the additional data, the Board of Appeal found that the problem solved by the invention was the provision of a synergistic insecticide activity against the first two species of moth for which data were provided in the patent. Without the additional data, the Board of Appeal found that the claimed invention did not plausibly solve this problem, given that the data provided by the Opponent convincingly contradicted the data in the patent. Although notably, the Opponent's data was also post-published.
Conversely, if the patentee's additional data were taken into account, the Board of Appeal found that the objective technical problem to be solved in view of the prior art could be revised as the provision of an synergistic insecticide activity against the third moth species, i.e. the moth species to which the new data related. None of the data submitted by the Opponent contradicted the Patentee's post-published data relating to this moth species.
The Board of Appeal's questions to the EBA essentially asked a) if post-published evidence could be taken into account if an effect was plausible from the application as filed ("ab initio plausibility"), and b) if post-published evidence could be taken into account if there would have been no reason to consider an effect implausible from the application as filed ("lack of ab initio implausibility").
The decision in G 2/21: Is the technical effect embodied by the invention as originally disclosed
With regards to the referred questions, the EBA considered the important test to be what a skilled person, in view of common general knowledge, would understand from the application as filed. Thus, for inventive step, what matters is whether the purported technical effect "is encompassed by the teaching" of the application as filed. Therefore, on the question of whether a patentee may rely on post-published evidence to support a technical effect, the EBA concluded:
"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 derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention."
A question raised by the EBA decision is what it means for an effect to be "encompassed by the technical teaching" and to be "embodied by the same invention" as originally disclosed in the application as filed. The EBA does not provide any guidance on this, and even acknowledges that its decision has a certain degree of "abstractness". G 2/21 is therefore open to a certain degree of interpretation.
With these caveats, this Kat reads the EBA's conclusion as permitting inventive step based on a technical effect that is not explicitly described as the inventive contribution in the application as filed. However, it is also clear from G 2/21 that in order to rely on such an effect for inventive step, a skilled person must be free from doubt in view of the application as filed that the invention as claimed has the purported effect. If, for example, a claimed insecticide is purported to work against a species of moth, a skilled person must be able to understand that the invention as originally disclosed would have worked against the species of moth, once they are provided with the hindsight knowledge of the purported technical effect as the inventive contribution. As the EBA points out, the purported technical effect cannot and "does not change the nature of the invention" (r. 93).
This reading of the EBA is supported by the acknowledged structure of the problem-solution approach, by which the closest prior art, and therefore the objective technical problem to be solved and the inventions purported technical effect, can only be identified with hindsight (see T 0605/20, IPKat).
Once we are at the point of assessing whether an invention originally disclosed does or does not have a certain technical effect, the standard test for the standard of evidence can then be applied, namely whether there are substantiated doubts, supported by verifiable facts, that the invention embodies the technical effect (for more on why this is the appropriate test, see IPKat). In the insecticide example, we are left with the question of how much a skilled person would doubt that the insecticide compounds would have a synergistic effect against the third species of moth for which data was not provided in the application as filed.
It now remains for the Board of Appeal in the referring case to apply the EBA's reasoning to the case in question, and this interpretation will help clarify the issues.
What happened to plausibility?
The referring decision and the amicus curiae in G 2/21 discuss at length the concepts of "ab initio plausibility" and "ab initio implausibility". By contrast, the EBA refocuses the debate away from plausibility as a concept. G 2/21 refers to "plausibility", but only to dismiss it as not being useful to the legal question at issue. The EBA particularly finds plausibility to be a term that "does not amount to a distinctive legal concept or a specific patent law requirement under the EPC", whether under inventive step (Article 56 EPC) or sufficiency (Article 83 EPC). To the EBA, plausibility is nothing more than a "generic catchword" used by the Boards of Appeal, national courts and users of the European patent system (r.92).
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| Avoiding the plausibility rabbit hole |
The EBA reasoning in G 2/21, and its dismissal of plausibility, is aligned with this Kat's recent analysis of how the term plausibility is used by the EPO. The concept of plausibility is merely the way in which the Boards of Appeal have signalled cases for which more evidence is needed to overcome the standard sufficiency bar of lack of substantiated doubt. In some technical fields (such as therapeutic use), there is a higher level of underlying doubt about whether an invention has actually solved the problem it purports to solve. In order to overcome the higher level of underlying doubt, a patentee must provide enough evidence to render the invention or its technical effect plausible (IPKat). In some cases, plausibility will be relevant to whether a skilled person would derive that an technical effect is embodied by an invention as originally disclosed, in some cases it will not, depending on the technical field. At the EPO, plausibility was thus never a new or additional requirement for patentability. In G 2/21, the EBA supports and confirms this view.
If, however, we wanted to translate the EBA's decision in G 2/21 into the language of plausibility, it could be argued that the EBA has arrived at an ab initio lack of implausibility test. The requirement for a lack of ab initio implausibility is in line with the established standard of evidence for both sufficiency and inventive step, namly the lack of substantiated doubts, supported by verifiable facts, about the invention or its purported technical effect at the filing date. Importantly, as this Kat has previously argued, this is not a lowering of the bar for evidence, but is in-line with previous Boards of Appeal case law. Put another way, "lack of ab initio implausibility" is just another way of phrasing the standard sufficiency test for lack of substantiated doubt, potentially as applied to therapeutic use inventions and invention in other challenging technical fields.
Final thoughts
The decision in G 2/21 is a long one, and raises more topics for discussion than can be covered in a single blog post. This Kat also suspects that the "abstractness" of G 2/21 may lead to some differing views as to its interpretation. Stay-tuned to IPKat for more analysis of G 2/21 and its ramifications.
Further reading
- Enlarged Board of Appeal to tackle the "Humpty Dumpty-ish" plausibility question (G2/21) (25 Oct 2021)
- Reasons for an EBA referral on plausibility, post-published evidence and problem-solution (21 Sep 2021)
- New referral expected to the EBA on the use of post-published data to support inventive step (10 Aug 2021)
- EBA hints at accepting "lack of implausibility" standard for inventive step (G2/21)
- Plausibility demystified - a review of EPO case law before G 2/21 (24 Feb 2023)
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Friday, March 24, 2023
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Posts
In various threads about "conforming the description" under Art 84, EPC, I have suggested that retaining the originally filed disclosure in the B publication, that is to say, leaving it unbastardized, might be a better way to help the courts of infringement and validity do justice between the patent owner and the accused infringer than by following the EPO's current Guidelines on conforming the description. Rose's write up of G2/21, especially the text she extracts and flags up, gives me further encouragement, that on the issue of conforming the description, all the others of the world's Patent Offices are right and the EPO is wrong.
ReplyDelete@MaxDrei
DeleteI fully agree.
The EPO’s practice of adapting the description to claim amendments opens a Pandora box and creates legal uncertainty. If the description is amended, what is the meaning of the « description » referred to in Art 69 ?
A literal reading of Art 69 would suggest that it is the description of the patent i.e. the amended description. But this interpretation is not consistent with the principle stressed in G 2/21 which relates the skilled person and the common general knowledge to the filing date and the « technical teaching » to the content of the originally filed application.
If on the other hand, the « description » of Art 69 is interpreted as that of the originally filed application, its adaptation is at first glance irrelevant. Except perhaps to help a defendant in infringement proceedings arguing that a claim restriction is a prosecution estoppel.
Dear Max Drei,
ReplyDeleteWith due respect to your knowledge and experience, some words should not be used in comments. Leaving the description “unbastardized” is a good example of what should not be used.
Furthermore what does the adaptation of the description has to do with the topic discussed by the EBA?
Dear "anonymous" I am sorry if you have taken offence at my use of the b word. It is the misplaced zeal with which some EPO Examiners "conform" the description in preparation for issuing a 71(3) Commn which makes me emotional.
DeleteThe EBA has now told us to derive from the disclosure content of the application as filed, the original disclosure, the effects relevant to patentability. When the EPO "conforms" the description, it alters that disclosure. I should prefer it if the tribunal deciding on validity and infringement does so on the basis of one single disclosure document, namely the description originally filed.
The exercise of "conforming" the description is a minefield under Art 123(2) EPC despite protestations that for a competent attorney it is no such thing. And now, thanks to G2/21, it opens up a can of worms under Art 56 EPC. It consumes huge amounts of time. And all for what? Just because of pemetrexed and so that courts can be more firmly guided by the EPO on matters of the Doctrine of Equivalents? That seems to me presumptious and unnecessary. But then, I'm not within the privileged inner circle of persons guiding the necessarily strategic and political thinking of the tenant on the top floor, the EPO President for the time being.
I hope that my provocative remarks will stimulate further comment.
@MaxDrei
ReplyDeleteI fully agree.
The EPO’s practice of adapting the description to claim amendments opens a Pandora box and creates legal uncertainty. If the description is amended, what is the meaning of the « description » used in the interpretation of the claims according to Art 69 ?
A literal reading of Art 69 would suggest that it is the description of the patent i.e. the amended description. But this interpretation is not consistent with the principle stressed in G 2/21, as it would imply to relate the skilled person and the common knowledge to the date of the amendment, not to the filing date.
If on the other hand, the « description » of Art 69 is interpreted as that of the originally filed application, its adaptation is at first glance irrelevant. Except perhaps that it can be used by a defendant arguing that a claim restriction is a prosecution estoppel to strenghten their case.
I respectfully disagree MaxDrei. G2/21 essentially give the Boards of Appeal free rein to proceed as they wish in accepting post-published evidence provided the spec reaches some sort of threshold level for defining the relevant technical effect (in this case a synergistic activity). Which technical effect we are talking about will be very important in the test for use of post-filing data. It is therefore essential for third parties that the relevant technical effect for inventive step, sufficiency, plausibility is reflected in the description of the patent as best as possible, i.e. subject matter outside that technical effect is either deleted or marked as not part of the invention. It is only correct that EPO case law is focusing more and more on the technical effect to resolve issues such as use of post-filing data, but that makes it more crucial that third parties can be helped to derive the correct technical effect by the amendments made to the description (and of course as I have argued in comments on the most recent IPKat post on description amendment, this is also necessary to help with determining infringement equivalence scope)
ReplyDeleteMax Drei and Mr Hagel are amongst the proponents of the line that the description should be left untouched. Proof of the pudding is another one.
ReplyDeleteTheir plea is understandable, but has two drawbacks. It is not supported by Art 84, second sentence, and the existence of a long line of case law insisting upon adaptation of the description.
One thing should however be clarified: it is whether Art 69 should be used or not when interpreting the claims during prosecution at the EPO. The dual use of Art 69 in Mr Hagel's comments shows that clarification is indeed needed. Does Art 69 apply indifferently to the description as filed or as granted is also an interesting question?
In my humble opinion, Art 69 and its protocol primarily come into play when it comes to a decision of a national court on infringement under the DoE.
In proceedings before the EPO, Art 69 should only play a role when assessing the scope of protection in opposition under Art 123(3).
Provided that the claims are clear, which is the primary requirement under Art 84, recourse to the description whether original or as granted, should remain exceptional.
After all, G 3/14 has set clear limits to the examination of clarity in opposition. If what has been granted is unclear, G 3/14 has made clear that we have to leave with it. That in such a situation it might be necessary to have a look at the description is unavoidable. It should however remain an exception.
The difficulty in interpretation of the claims should then not be compounded by leaving in the description original statements which are at odds with what has been granted. One difficulty is enough. This means that the description has to be amended in order for it to “support” the claims.
This is especially the case when the claims are amended by combining claims as filed or limited with features from the description or the drawings. In case of dependent claims, it is more than often that their subject-matter is designated in the original description as optional. When the independent claim is limited with optional features, those features are not any longer optional. That this has to be clarified before grant is manifest. That embodiments not falling any longer under the granted claims should as well be marked as such is also manifest. Last but not least, I still have not seen one patent revoked under Art 123(2) due to the adaptation of the description.
As far as Art 84 and support is concerned, we should stick to the fact that we have different, apparently irreconcilable, points of view.
But here we are quite far from G 2/21 and assessing IS (or sufficiency).
As I commented in another blog, that the two notions/criteria replacing “plausibility” ("encompassed by the technical teaching" and should be "embodied by the same invention") will give raise to “dynamic interpretations” is more than probable.
It is a euphemism when the EBA adds that it is aware of the abstractness of the new criteria.
Normally decisions of the EBA are meant to clarify a legally confuse situation. Strong doubts are permitted whether G 2/21 answers this fundamental requirement.
Dear Mr Thomas, I am still at a loss to understand why you do not see the inherent problem with making statements such as "The difficulty in interpretation of the claims should then not be compounded by leaving in the description original statements which are at odds with what has been granted".
DeleteI believe that we can both agree that the EPO does not (properly) determine the extent of protection conferred by the claims. It therefore logically follows that there is no way for the EPO to reliably determine whether a statement in the description is "at odds" with the claims.
It is also clear that any inadvertent mistakes made when adapting the description to the (not properly determined) scope of the claims can add unnecessary complications to the task of interpreting the scope of protection.
I know that we shall never agree on the correct interpretation of Article 84 EPC, but I am mystified as to why it is so difficult to reach agreement upon the practical effects and implications of our respective interpretations.
i was expecting a reply to my comment from your part.
DeleteWhat has to be said about the topic was said and there is nothing to add.
I clearly do not agree with your conclusion, and you know why.
We can at best agree that we disagree.
So we better leave it at this.
Mr Thomas, that is the entire point. I really do not know why.
DeleteI can agree to disagree upon the interpretation of Art 84 EPC. What I am struggling with is what seems to me to be your wilful blindness to inevitable, logical conclusions. However, if there are flaws in my logic, I would be happy to hear what those are.
Dear Proof of the pudding,
DeleteI have a simple question: original claim ABC. Original description ABC. D is declared optional in the description and is embodied in a dependent claim. Following examination, the allowable claim reads ABCD. Do you think that the description should remain unamended and D still mentioned as optional?
I have never received a compelling and convincing reply to this question by all the proponents of not amending the description.
To me, the inevitable logical conclusion is that the description cannot be left as filed and the optional character of D cannot remain. This reasoning can be applied applies mutatis mutandis to other cases in which the description has to be adapted.
If you consider that no amendment to the description in the sense I suggest is necessary, the inevitable logical conclusion is that when later in front of a national judge it comes to interpreting the description under Art 69(1) and the Protocol, you will actually wish to assert that the claim, although limited to ABCD, should not be looked at so narrowly as the description still says that D is optional.
The reason d’être of Art 84, second sentence, is to avoid this possibility. What is wrong with the requirement of adapting the description, when the actual contribution to the art is limited to ABCD?
Dear Mr Thomas, strictly speaking, I think that your response could be viewed as an example of whataboutism.
Deletehttps://en.wikipedia.org/wiki/Whataboutism
Nevertheless, you pose a fair counter-question. I shall therefore do my best to provide an answer.
In essence, it seems to me that what is at stake are the following questions.
1. Does amendment of a claim to incorporate a feature (D) previously presented as being optional change the scope of protection afforded by those claims?
2. If, after such an amendment to the claims, the description is not "adapted" accordingly, is it possible that a national court would interpret the claims so as to afford protection for embodiments (or equivalents) that do not incorporate feature D?
My answer to both questions is: it depends upon the facts of the case.
Regarding question 1, there will be many cases where it is easy to conclude that the answer is "yes". However, there will be others where the answer can only be determined after careful consideration of how the (amended and unamended) claim language should be interpreted. For example, there may be cases where the unamended claim language is interpreted as inherently incorporating feature D. Alternatively, there may be cases where embodiments excluding feature D represent "immaterial variants" of the invention according to a strict, literal interpretation of the claims. Each case needs to be decided on its own merits, considering all of the relevant facts.
In the light of the above explanation, I think you will understand why the answer to question 2, is also "It depends". However, I will add the following.
Firstly, Article 69 EPC makes it clear that the extent of the protection conferred shall be determined by the claims. By way of contrast, that Article indicates that the description and drawings shall (only) be used to interpret the claims.
This means that the description only has secondary importance with regard to determining the scope of protection. There is nothing in Article 69 EPC or its Protocol that requires a national court to interpret the claims by ignoring (the meaning of) their wording and determining the scope of protection solely by reference to the "invention" as set out in the (unamended) description. Indeed, Article 1 of the Protocol states that this is precisely what must a national court must not do.
Secondly, despite rather more lenient EPO description adaptation practice being in place for decades, I have yet to see evidence of a national court reaching the "wrong" decision due to an "improper" adaptation of the description enabling an over-broad interpretation of the claims. Regarding their ability to properly determine the scope of amended claims (regardless of whether the description has been "strictly" adapted to the claims as amended), my confidence in the national courts therefore seems to be justified.
So that is my answer. Whether you will find it "compelling and convincing" is doubtful. However, I hope that you will at least agree that it is internally consistent, logical and (with regard to national court decisions) at least arguably supported by the evidence.
Perhaps you would now care to provide your response to the point that I made in my 29 March comment?
Daniel, I write in support of Proof's arguments on the issue what is the scope of protection under Art 69 EPC and whether the requirements of Art 84 EPC can be satisfied without amendment to state in explicit terms that this or that device in Fig 6 of the drawings is NOT an embodiment of "the invention". The enquiry into the scope of protection is an enquiry into what is "equivalent" to that which is claimed. It is not so dimple as to assert baldly that "What is not claimed is disclaimed" yet you seem to think it is indeed that simple.
DeleteFor the court's enquiry into what is "equivalent", the full disclosure of the application as filed is helpful. Formstein helps us to see that a prior art device cannot be equivalent to the claimed device. But that doesn't apply to devices that are NOT in the state of the art but are in the application as filed.
Dear Proof of the pudding,
DeleteBy replying “it depends upon the facts of the case” you actually refuse to take position. This attitude does not bring matters forward. My position is clear: it cannot primarily depend on the facts of the case.
A feature incorporated in an independent claim has by destination to be considered essential. I cannot follow your logic that when in the description mentions D as optional, the description does not have to be adapted or that “it depends on the facts of the case”, once D ends up the independent claim in order to restore N or IS in view of the prior art.
In the independent claim ABC, feature D, mentioned as optional in the description of the invention as devised by the inventor, can be considered as “inherently” incorporating feature D. There will thus not just be many cases where it is easy to conclude that the answer is "yes". The answer should be yes is all the cases.
Following your argumentation the direct consequence is that D would not need to be added in the claim ABC in order to restore N or IS, should the claim ABC be interpreted as “inherently” incorporating feature D. This is going a trifle too far and boils down to hair splitting.
If one would follow you, it would mean that every claim has to be systematically interpreted under Art 69. I personally do not think this is necessary. It would have for consequence that all the clear cut line of case law under the heading “directly and unambiguously disclosed” could be thrown overboard. You might wish it as applicant/proprietor. I doubt you may wish it as third party. A detailed, not to say “clinical”, assessment of the claims and their scope on the basis of the description is for national courts to decide in the event of litigation.
I cannot agree that the EPO does not properly determine the extent of protection conferred by the claims. In opposition, it is the duty of the OD or of a board to check that the scope of protection has not been extended when claims are amended. Ever heard of the inescapable trap or G 1/93?
You appear to refuse adapting the description as inadvertent mistakes can be made when adapting the description or that in certain cases everything has to be very carefully weighed to see if something could not be “inherently” covered by the claim as filed. One the one hand, I would remind you that the responsibility for drafting the application/patent lies with the applicant/proprietor. On the other hand, the EPO has the role to keep every user of the system on a par and not to allow monopolies which are neither justified by the law nor by the facts.
That, according to you, there is no evidence of a national court reaching the "wrong" decision due to an "improper" adaptation is as well not an acceptable reply. National courts have only a very relative influence on the case law of the boards and vice-versa. Every national court can adopt the DoE it thinks fit.
You might be “mystified as to why it is so difficult to reach agreement upon the practical effects and implications of our respective interpretations”. I am not. I explained my line of thoughts many times, but it does not seem to help.
Basing your refusal of adapting the description on rather exceptional circumstances, does neither render your plea convincing nor compelling.
Last but not least, it is time to stop exchanging on the adaptation of the description. We are turning in circles. As far as I am concerned the topic is exhausted.
Dear Mr Thomas, I must say that I find your response to be very disappointing. I have paid you the courtesy of responding to your question, at least by addressing the crucial legal and practical points underpinning that question. I am saddened that you do not feel able to respond in kind.
DeleteAt least I now have an idea of why we struggle to find any common ground. Except by dismissing or minimising them, you simply never deal head-on with any facts that clash with your view on this matter. Also, it seems to me that you believe that there should be an extremely simple, "one size fits all" approach that can be applied to all cases. Whilst a desire for a simple solution is understandable, this does not mean that imposing such a solution is warranted (or justifiable).
I would also add the following.
Even if there is no adaptation of the description, the results of prosecution history are captured in the wording of the claims (which, as previously discussed, is the most important factor for determining the scope of protection). Thus, even with no adaptation of the description, the national courts are presented with a starting point for determining the scope of protection that encapsulates all of the amendments made during prosecution. Where they go from there is up to them, based upon the facts and evidence at hand.
However, with a "strict" adaptation of the description, the national courts will be confronted with statements indicating that certain embodiments of the description are "not the claimed invention". To my mind, it is difficult to envisage a national court interpreting such statements as being anything other than an effective disclaimer (of protection for the relevant embodiment). This means that, with regard to the relevant embodiments, the "strict" adaptation of the description presents the national court with a (forced) conclusion on the scope of protection. This leaves the national courts with no room for reaching their own conclusions on scope of protection (likely even by way of equivalence).
The conclusion forced upon the national courts by the amendments to the description may well turn out to be correct. The EPO Examining Division may well have done a very thorough job and the applicant may well not have made any inadvertent errors when adapting the description. Indeed, the case may be so simple and straightforward as to make all of this very easy. The trouble is, this will not always be the case. Indeed, for cases in the technical area of my own expertise, I believe that it will very rarely be the case.
Dear Proof of the pudding,
DeleteI did not intend to further reply to you, but you force me to.
You have no reason to be disappointed or saddened by my replies. I replied to you in all honesty, whether you realise it or not.
When looking at national decisions, my conclusion is that national courts are not keen on looking at the file history and hardly ever do. Beside the decision of the district court of The Hague in the famous pemetrexed case, I do not remember a national court taking into account the actual file history in deciding the scope of protection. It is thus only very indirectly that the results of prosecution history are captured in the wording of the claims.
I have been too long in the patent business not to realise that every word in a claim has a meaning and a function. It is neither black nor white: there are lots of shades of grey and/or white in between. I neither dismiss nor minimise what you are saying, but you cannot make a general rule in view of some very specific situations in your field of expertise.
It is a rule, reminded in lots of decisions of the boards, that exceptions should only be applied with parsimony and never generalised. I worked for a long time in the field of medical physics and this is an area in which exceptions should be handled with precaution and never be generalised. I am thus very much aware in the situation in neighbouring areas like pharmaceuticals and biotech. As I do not know your field of expertise, I cannot say much more.
What you are actually trying to establish is a general rule which boils down not to adapt the description at all. However, a general rule cannot be based on cases in a specific technical area, be if of your own expertise or not.
Do not tell me that national courts have blinkers and are not capable of distilling what is the substance of the invention translated in the technical terms in the claim. It is not giving any credit to national courts in considering them so narrow minded as you make out.
What I am discussing here is what should generally be done, but not to generalise what might be possible in exceptional situations. If you have good arguments, I do not see why your specific situation should not be taken into account by divisions of first instance and, more important, by boards of appeal. The general view of the boards of appeal is well known. It is furthermore clear that you do not agree with this view.
Your stance actually reminds me of the attitude of British representatives, which in the early days of the EPO, systematically removed reference signs in the claims at grant for fear of a narrow interpretation of said reference signs. They had no objections to them during prosecution. T 237/84 put an end to this nonsense. See also Guidelines F-IV, 4.18.
The discussion between you and Daniel Thomas, together with my discussions with him on his own blog, IP.Appify, reveal the fundamental difference of opinion between us and M. Thomas. It lies in the second sentence of Art 84, EPC. What does "support" mean?
DeleteDoes it mean "substantiate" or does it mean "corroborate". In the dictionaries, both are reasonable. How about Art 84, 2nd sentence, in French and German though, I wonder.
If I understand the debate correctly, we (in English) think the former, M. Thomas the latter. Say if you see it differently.
Dear Proof of the pudding,
DeleteI did not intend to further reply to you, but you force me to.
You have no reason to be disappointed or saddened by my replies. I replied to you in all honesty, whether you realise it or not.
When looking at national decisions, and following statements by national judges, my conclusion is that national courts are not keen on looking at the file history and hardly ever do. Beside the decision of the district court of The Hague in the famous pemetrexed case, I do not remember a national court taking into account the actual file history in deciding the scope of protection. It is thus only very indirectly that the results of prosecution history are captured in the wording of the claims.
I have been too long in the patent business not to realise that every word in a claim has a meaning and a function. It is neither black nor white: There are lots of shades of grey and/or white in between. I neither dismiss nor minimise what you are saying, but you cannot make a general rule in view of some very specific situations in your field of expertise.
It is a rule, reminded in lots of decisions of the boards, that exceptions should only be applied with parsimony and never generalised. I worked for a long time in the field of medical physics and this is an area in which exceptions should be handled with precaution and never be generalised. I am thus very much aware in the situation in neighbouring areas like pharmaceuticals and biotech. As I do not know your field of expertise, I cannot say much more.
What you are actually trying to establish is a general rule which boils down not to adapt the description at all. However, a general rule cannot be based on cases in a specific technical area, be if of your own expertise or not.
Do not tell me that national courts have blinkers and are not capable of distilling what is the bone and marrow of the invention translated in technical terms in the granted claim when looking at those under Art 69 and the protocol to it. It is not giving much credit to national courts in considering them so narrow minded as to feel forced to abide by what the EPO will have decided. Unless in opposition, the EPO does not decide what the scope of protection might be and certainly not which equivalents might fall under the claims.
That you actually would like to be able to get more out of the claims and that you fear the courts would be limiting the scope protection is understandable, but it cannot go against the concept enshrined in Art 84, 2d sentence.
I explained to Max Drei in another blog, that nothing withholds the proprietor to submit the originally filed documents to a national court should he fear a misinterpretation. When the discussion is about added-matter, recourse to the originally filed documents is necessary. Why it should not be the case when discussing IS or what might be "inherently" falling under the original claims.
What I am discussing here, is what should generally be done. This cannot end in generalising what could be done in exceptional situations. If you have good arguments, I do not see why your specific situation should not be taken into account by divisions of first instance and, more important, by boards of appeal. The general view of the boards of appeal is well known. It is clear that you do not agree with their view and rather would see that they act like in the three decisions going against the general view.
Your fears might be real, but I can only repeat that I have not seen one case in which a national court has misinterpreted the claims in view of what was in the description amended before grant. National courts are perfectly able to make up their own mind and they do so.
Dear Mr Thomas, I am afraid that you are entirely missing the point that I am trying to make. To be clear, what I am asking is whether it is ever OK for the EPO to require applicants to make amendments to the description that could force national courts to interpret the wording of the claims in the same way as the EPO examiner.
DeleteThis is not a matter of frequency of errors or exceptions vs. the rule. It is a point of principle.
You are quite correct that national courts do not like to review prosecution history. However, they do take the direct result of that history (namely, the wording of the claims) and then interpret that wording in the manner prescribed by Article 69 EPC and its Protocol.
For some reason you seem to believe that the wording of the claims as granted only "indirectly" reflects "the results of prosecution history". I must say that is a very strange position to take, as it can only mean that you believe that, when determining the scope of protection, national courts should pay more attention to the reasons why the claims were amended than to (the meaning of) the wording of the claims.
The reason that is a strange position is that the file history will not always enable a clear and unambiguous determination of the reasons for prosecution amendments. Think, for example, of unprompted amendments made by the applicant, or amendments that could serve multiple purposes. This is no doubt why the courts prefer to save the file history for exceptional cases. In any event, the reasons behind prosecution amendments are not a factor that either Article 69 EPC or its Protocol indicates should be taken into account for determining the scope of protection.
By way of contrast, however, both Article 69 EPC and its Protocol indicate that the description should be used to interpret the scope of protection afforded claims. This is why amendments to the description that effectively disclaim certain subject matter will be taken into account by the national courts for the purpose of determining the scope of protection.
You seem to think that this is not an issue. Can you explain why? Do you think that the national courts would always ignore such an effective disclaimer, even if an applicant has consented to its inclusion in the description of the granted patent? If so, why? That is, on what grounds would the national court ignore a statement labelling an embodiment as "not the claimed invention"?
Dear Proof of the pudding,
DeleteMy reply will be very short: the day national courts will be forced to take into account what has been said or decided by the EPO and its boards of appeal, pigs will fly. The same applies in the other direction.
National courts can adopt the views of the boards or they cannot agree with them and leave them aside. There are even national courts claiming that they apply the case law of the EBA, but do exactly the opposite in the same breath!
I am still awaiting to see one decision of a national court which corresponds to the fears you refer to.
The analogy with the fears of British representatives about the limitations induced by reference signs in the claims is flagrant.
Art 84, second sentence, requires consistency between the claims as granted and/or maintained. What is there wrong with this?
We are really turning in circles. It does not bring anything to continue discussing this topic. The topic was already exhausted when discussing T 3097/19 in the present and in another blog.
Mr Thomas, thank you for your reply.
DeleteTo summarise, you believe that it is important for the description to be adapted to the claims as allowed because this helps to prevent national courts affording patentees an "over-broad" scope of protection (ie a scope that does not adequately reflect the reasons why the claims were amended during prosecution).
On the other hand, you believe that even a very "strict" adaptation of the description will leave the national courts with a completely free hand regarding their determination of the scope of protection provided by the claims.
I doubt that I will be alone in finding it impossible to reconcile these two positions. Either adaptation of the description affects determination (by the national courts) of the scope of protection or it does not.
If it is the latter, then isn't the EPO's "strict" practice rather a pointless waste of time (and applicant's money)?
A final, pedantic point: I am not saying that the national courts will follow the decisions (or logic) of the EPO's Boards of Appeal with regard to the interpretation of Article 84 EPC. I simply believe the national courts will take into account the description of the patent (as amended by the applicant) when determining the scope of protection. These are two very different issues.
Mr Thomas:
DeleteReading your comments in this thread, I cannot help but feel some of the same frustration that occasionally spills over in comments from other participants here.
Every time this topic comes up for debate you simply repeat your mantra about Article 84, second sentence. But nobody, absolutely nobody, here is advocating for the abolition of that sentence, or for it to be ignored. They are simply advocating a different interpretation of it.
Simply repeating your mantra is not helping to further the debate. What we want to understand better is why you feel that your interpretation of Article 84 is the right one. Simply repeating that, in effect, "it is right because I say so, and I declare that there is nothing more to say" is not conducive to moving the debate forwards.
I must also express my frustration that, rather than engaging in good faith with any of the points raised by others, virtually every one of your comments engages in evasion by seeking to change the subject, going off on a tangent, imputing bad motives to people who disagree with you, turning into a finger-wagging lecture, or resorting to a pronouncement ex officio that the debate is closed.
Perhaps this passes for an acceptable standard of debate in political circles, and maybe even within the upper circles of the EPO, but I personally had hoped that higher standards might prevail here.
Anon Y Mouse, the debating style that you describe is certainly one that will be familiar to those who have attempted to explain to the EPO why certain of their practices lack adequate legal support and are actively harmful to users. Recent examples include the more insane excesses of description adaptation requirements, as well as ST.26 conversion requirements for divisionals of pre-"big bang" applications.
DeleteSomehow the EPO manages to listen to all of the arguments presented to them but yet never (outwardly) show any signs of ever having understood those arguments. Common responses to criticisms from users include dismissing / minimising the concerns upon which those criticisms are based, as well as careful avoidance of any head-on discussion of the crucial issues underlying those concerns. At least the latter strategy suggests that the EPO is perfectly aware of the weaknesses of its position.
This all begs the question: why would the EPO not want to discuss / negotiate with users in good faith? The EPO's inexplicable intransigence is infuriating for users, so why can the EPO not be honest about the real reasons for them standing their ground? The longer this goes on, and the more issues it affects, the less likely that there is an innocent explanation for all of this. My suspicion is that the intransigence can be explained by fragile egos (of decision-makers within the in EPO) and/or policies implemented in response to "political" pressure upon the EPO.
G2/21 is a very mysterious decision in that multiple lines of case law are acknowledged and yet Boards of Appeal are going to be allowed the freedom to do as they wish in respect of the relevant issues. My speculation is that the Enlarged Board has realised its powers are going to be usurped by the UPC (and appeals from there to the CJEU), and so has taken the decision to set the EPO Boards of Appeal free in the hope they will remain independent of the UPC and CJEU. It is an attempted codification in EPO case law of freedom of the Boards of Appeal which extends to developing Board-specific case law, something which previously was assumed not to be possible. This means the Enlarged Board is very aware of the challenges to its authority that the UPC will inevitably bring.
ReplyDeleteAt a legal level, it is refreshing to see acknowledgement in the last para of G2/21 that case law needs to be technology specific. Again another idol is being broken on this very important and practical issue
That the UPC will assert primacy in the European patent arena is very likely. But the EPO has no solid reason to worry, putting egos aside. The UPC is not going to reinvent the wheel. It will drap massively on the case law of the EPO. This is what surfaced from the recent meeting of the juges in Budapest.
ReplyDeleteThank you Francis Hagel. The UPC is an EU project, and EU projects always keep expanding to encompass more and more of the relevant activity in Europe. However, in this case my guess is that the EB has also noticed that its own existence has hampered proper development of the Boards of Appeal as they did not have the confidence to essentially create the equivalent of new law within case law. Maybe even the EB has noticed how the US Federal Circuit was unable to develop case law properly after the Alice, Mayo and Myriad US Supreme Court decisions, i.e. develop new tests as needed, and therefore appreciated that it is possible for a superior court to prevent the proper and 'full' functioning of a lower appeal court. With a 'possible' threat now looming in the form of a UPC with allegiance to the EU, the EB is taking very late steps in G2/21 to bring the Boards of Appeal up to the required 'independence', and essentially confidence, to cope in the new patent landscape that is emerging.
ReplyDeleteDear Santa,
ReplyDeleteI do not know on what you base your speculation, but I do not think, like Mr Hagel, that the powers of the EBA will be curtailed in any form by the UPC in matters of validity. That the UPC wants to become the leading court in Europe is manifest. It might become it in matters of infringement, but I have doubts in matters of validity. In matters of validity, the UPC might simply add a layer of case and I do not think that it will be helpful.
Your reference to appeals from the UPC to the CJEU is puzzling. The only possibility foreseen in the UPCA is not to appeal to the CJEU, but to file requests for preliminary rulings when it comes to the interpretation of Union law, cf. Art 21 UPCA. For instance, this is presently done by national courts when it comes to SPC, although there is not even yet a “European SPC”.
The EPC is anything but not Union law. The drafters of the UPCA were very careful not to allow the CJEU to deal with substantial patent law. This does however not mean that the CJEU will not attempt to bring in its opinion on substantial patent law when deciding on preliminary rulings from the UPC. Wait and see.
That the UPC might adopt a more patentee-friendly attitude towards proprietors, like the German Federal Court, is possible. That the boards of appeal of the EPO shall be bound by decisions of the UPC in matters of validity, is nowhere to be found in the UPCA or in the EPC. There is not even an agreement on the exchange of information between the two institutions. That the EPO has an agreement with the UPC is a different matter, as the boards are “independent” from the EPO. By the way, there is an agreement on exchange of information between the CJEU and the EFTA court.
The only possibility for the boards of appeal of the EPO to be bound by decisions of the UPC will only occur should the EBA gives way to political pressure and comes up with decisions like G 3/19 and its “dynamic interpretation”.
To assert that case law needs to be technology specific is somehow surprising. I fail to see in the EPC legal rules which are specific to different areas of technology. It is the same EPC for all areas of technology. That depending on the technical area, the weight given to the common general concepts might slightly differ is correct, but this is no more than a truism. For instance, that in chemistry, pharmacy and biotech at large, you might have more problems of sufficiency is well-known and not surprising. But the criteria for novelty, added matter and IS are the same as in other technical areas.
As far as procedural aspects are concerned there are however clear developments which show that the boards develop their own “private” procedural case law. See for instance the diverging interpretation of G 1/21, the deletion of claims or grouping of claims. There does not seem one a predictable way on how the discretion is applied
Even in matters of substance, notable differences are emerging. Some boards consider that the claims have always to be interpreted with taking into account the description under Art 69. Other boards consider that recourse to the description shall be limited to exceptional circumstances.
Those different approaches are not really helpful for parties which are always in quest of reliability and predictability. The boards of appeal are only bound by the EPC and there is no need to codify their freedom of devising case law. That they inform themselves on developments of case at national level is nothing surprising, but they are by no means bound those. Look at the long analysis of national case law in G 2/21.
Thank you DXThomas. I apologise for not having the time to respond to every one of your excellent points. I will only pick up on the point about criteria for patentability being the same for all technology areas. Here is the last para of G2/21. Please note that sentence about the technical field influencing the outcome:
ReplyDelete"The Enlarged Board is aware of the abstractness of some of the aforementioned criteria. However, apart from the fact that the Enlarged Board, in its function assigned to it under Article 112(1) EPC, is not called to decide on a specific case, it is the pertinent circumstances of each case which provide the basis on which a board of appeal or other deciding body is required to judge, and the actual outcome may well to some extent be influenced by the technical field of the claimed invention. Irrespective of the actual circumstances of a particular case, the guiding principles set out above should allow the competent board of appeal or other deciding body to take a decision on whether or not post-published evidence may or may not be relied upon in support of an asserted technical effect when assessing whether or not the claimed subject-matter involves an inventive step."
I think those that practice in the pharma area know that they have always had a distinct set of rules at the EPO for patentability. Essentially if you bring a new molecule into the world (perhaps universe) you get a a lot of leniency at the EPO for it being useful for something, and you can use post-filing data to greatly assist in this. Their distinct 'deal' with the EPO has been called into questions as 'plausibility' has spread across tech areas, and I believe the EB is reassuring them in this decision that the rules have not changed for them. You can still cover billions of compounds with a product claim if you show (for example) 11 of them have an activity in some sort of relevant assay. That is deemed fair in the pharma field. Thank you again for your response which really is a blog post in itself
Dear Santa,
DeleteI do agree with you that the pharma filed has specific constraints/peculiarities.
You might indeed be able to cover billions of compounds with a product claim if you show (for example) 11 of them have an activity in some sort of relevant assay, but this depends really on what you have originally disclosed. You need to have at least materialised an essay or the like at the time of filing. Anything else would be purely speculative. It would simply be equivalent to reach through claims.
In T 488/16 (Dasatinib 1), the application as filed disclosed 580 compounds falling within the scope of general formula, including dasatinib (example 455) with a subgroup. The Board held that there was no evidence on file showing that, at the date of filing, the skilled person was in the possession of common general knowledge which, even in the absence of data, made it plausible that the compounds of the invention, in particular dasatinib, could be expected to show PTK inhibitory activity= no ab initio plausibility. Hence, post-published evidence in support of the claimed subject-matter was not admitted in the procedure.
In T 950/13 (Dasatinib 2), the application as filed, was directed to the use of generically defined compounds in the treatment of specific types of cancer, including CML, based on the activity of said compounds to inhibit certain protein tyrosine kinases such as SRC, BRC-ABL and c-KIT associated with these types of cancer. Dasatinib was identified as a preferred compound. The application as filed did not contain experimental evidence for dasatinib's BRC-ABL kinase inhibitory activity. The Board was satisfied that the application disclosed at least a plausible technical concept, namely that dasatinib based on its functional equivalence to imatinib as a BRC-ABL kinase inhibitor is suitable in the treatment of CML. For the board, there were no reasons apparent as to why a skilled person would a priori regard this teaching as incredible or implausible= ab initio implausibility. Hence post-published evidence was thus admitted by the board.
Dasatinib is a good illustration of what can happen to one and the same compound.
That the EBA has decided that post-published evidence cannot be dismissed merely because it is late is no surprise.
Free evaluation of evidence is a necessity, especially when all other formalities have been respected. I am however not sure that the EBA has clarified the situation in matters of “no ab initio plausibility” or “no ab initio implausibility” with the admittedly rather abstract considerations it provided in reply to the referral.
DXThomas thank you. Again apologies for not doing justice to your reply. Your points are all excellent, but I am going to predict “no ab initio plausibility” and “no ab initio implausibility” are never going to crystallise into firm case law rules. My 'thesis' is that the EB has decided that plausibility will remain an 'abstract' concept to be decided by the relevant Board of Appeal 'as it wishes' to do justice to the parties and to reflect the general approach taken in that field. This essentially also happened in different ways in the decisions of 'basis (added matter) for disclaimers' and 'computer simulations' where no firm rules were put forward by the EB. Everything you have said is true. What I am suggesting is another level of consideration by the EB as to the general direction it wants the case law to go into for that issue, which could broadly be called 'policy'. It needs to be appreciated that this level of consideration exists (but is not talked about publically apart from occasionally in obscure conference meetings). The trick is how to spot it when the relevant decision is never going to mention what was 'really happening' in the minds of the EB. Thank you again for your very detailed response
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