In the second of IPKat's 2019 Patent Year in Reviews, we provide a break-down of some of the important Board of Appeal cases published this year . The end of 2019 comes too early for the most highly anticipated appeal case of the times (the Board Institute's CRISPR appeal), for which oral proceedings are being held in January. However, the discerning EPO case law enthusiast can still find plenty to interest them in the Boards of Appeal cases published this year. Highlights include a new approach from a Board of Appeal on the novelty of purity inventions (T 1085/13), a couple of cases on the burden of proof (T 2037/18, T 1299/15) and a foreshadowing of the type of arguments expected to become more common following introduction of the revised Rule of Procedure of the Boards of Appeal (RPBA) on 1 January 2020 (T0688/16). See also the IPKat 2019 Enlarged Board of Appeal Year in Review.

Celebrating the end of 2019

Priority

The European patent community is eagerly awaiting the outcome of oral proceedings in the high-profile CRISPR case. The exceedingly long written submissions (and occasional impassioned rhetoric) are a mark of the cases's importance: "Should everyone else change, or just the Patentee?": Progress of the Broad's CRISPR appeal. The Board of Appeal (3.3.08) has already issued its preliminary opinion: BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18). It is widely expected that the Board of Appeal will dismiss the appeal. In a straw poll of the audience of the recent 2019 CIPA life science conference delegates, not one hand was raised to indicate an expectation of a positive outcome for the patentee. A decision in favour of the patentee would send a shock-wave through the European patent community.

However, the issue at stake in the CRISPR case is not the only game in town when it comes to priority at the EPO. There is growing appreciation that another issue of the EPO's approach to priority needs consideration by the Boards of Appeal. The EPO's approach to co-applicants when assessing a priority claim is one that is growing in prominence. It is hoped that the Board of Appeals will soon consider this issue and provide some much needed clarity for applicants: Clarity is needed from the Boards of Appeal on the EPO's "co-applicant approach" to priority.

Another Board of Appeal case to consider priority this year was T 0725/14. This case was an interesting reversal of the norm in cases of invalid priority. We are used to situations in which the patentee is called on to prove an assignment of the right to priority before the filing date of an application claiming priority. In T 0725/14, the Opponent faced a different but related challenge. The priority application and the PCT application were filed in the name of the same applicant. The Opponent successfully argued that the rights to claim priority had in fact been transferred to another company before the PCT application was filed. The priority claim was therefore found invalid: Assigned or not assigned? - the tricky issue of priority right transfer (T 0725/14)

Novelty: Purity, prior use and undisclosed disclaimers

For many years the EPO considered an increase in the purity of a compound a special case with respect to novelty. The burden of proof was placed on the applicant to show that the claimed level of purity was never achieved in the prior art. However, in perhaps one of the most important Boards of Appeal decisions published last year (T 1085/13), a Board of Appeal (3.3.02) found that previous decision of the Boards of Appeal were contrary to the principle that novelty can only destroyed by a clear and unambiguous disclosure in the prior art: Purity can be unconventional, a new position for the EPO boards of appeal (T 1085/13).

The novelty of a claim may be destroyed by an accidental anticipation, i.e. your claim may, by accident, cover something entirely unrelated to your inventive concept. In such cases, the Enlarged Board of Appeal established in G 1/16 and G 1/03 that an undisclosed disclaimer may be introduced into the claims to restore novelty, but not inventive step. The Board of Appeal (3.3.02) in T 1218/14 provided an important nuance to the criteria under which an undisclosed disclaimer will be allowed. In particular, the test is not whether the previous disclosure may be considered for the purposes of inventive step. The test is a higher one than this. The disclosure must be so removed from the invention that it would never be considered for inventive step or even thought about at all in relation to the claimed invention: Nuances in the definition of accidental anticipation (T 1218/14).

Novelty may also be destroyed by the prior use of a claimed invention. Prior use was a topic considered by both the EPO Boards of Appeal and the UK court's this year: Mr Justice Nugee and the Superhose: The potentiality of disclosure. The case before the Boards of Appeal related to the prior use of a train carriage: Proving the existence of confidentiality agreements and the celestial teapot - T 2037/18. The Board of Appeal (3.2.01) considered the question of where the burden of proof should rest with regards to the existence (or not) or conditions of confidentiality.

Sufficiency of disclosure

Another case to consider burden of proof was T 1299/15. This case considered where the burden of proof should rest in cases of alleged insufficiency. An opponent arguing that an invention is insufficiently disclosed generally must provide evidence that, despite making all reasonable efforts, they were unable to put the invention into practice. However, as the Board of Appeal (3.2.05) in T 1299/15 confirmed, it is possible for the burden of proof to shift back to the patentee if "serious doubts" exist regarding whether a skilled person could carry out the invention: Burden of Proof was Shifting the burden of proof back to the patentee (T 1299/15).

Exceptions to patentability

Perfect teeth

Methods of surgery are excluded from patentability under Article 53(c) EPC. T 2699/17 was an appeal from the Examining Division on the question of whether a method of restoring dental crowns was invasive and risky enough to fall under the exclusion (as interpreted by G 1/07). The Board of Appeal found that there were substantial health risks associated with crown restoration in general, including permanent damage to the gums and teeth. However, the applicant submitted evidence that the claimed method posed far less of a risk. The Board of Appeal agreed with the appellant that the claimed method was not invasive and posed a risk that could be equated to that of tattooing and piercing. The method was therefore of low substantial risk to health. The training required by a medical profession to perform the method was also found to be minimal. The claim was therefore found not to relate to an exception to patentability.

Following EPO procedure

There were also a number of Board of Appeal decisions this year dealing with some intricacies of EPO procedure. T0688/16 foreshadowed the type of argument  that may become more common following the introduction of the new Rules of Procedure of the Boards of Appeal (RPBA) in January: Event Report: CIPA seminar on the revised Rules of Procedure of the Board of Appeal. The Board of Appeal in T0688/16 particularly had to consider "arguments about arguments". The Board of Appeal found that the Opposition Division had inappropriately used their discretion under Rule 116 EPC in not allowing submissions from the patentee in opposition oral proceedings. This was because Rule 116 EPC only applies when there has been a negative preliminary opinion from the Opposition Division. In the case considered by T0688/16 there had been a positive preliminary opinion, and so Rule 116 EPC did not apply: An inappropriate use of discretion leads to ping-pong (T0688/16).

Appropriate EPO procedure was also at issue in T 0703/19. This case related to the topic of appeal fee payment (appeal fee payment was also the subject of the Enlarged Board of Appeal referral G 1/18: Enlarged Board of Appeal opinion on G 1/18). In T 0703/19, the Board of Appeal (3.2.08) considered the question of when a user of the EPO has a legitimate expectation to be informed of an underpayment of an appeal fee. The Board confirmed that to create such a legal expectation, the EPO must be able to recognise that the appeal fee should have been paid. The EPO should also have been able to recognise this in time for the failure to be rectified. A key fact of the case in T 0703/19 was that "legitimate expectations" had been created by the mention in the notice of appeal that the appeal fee was thereby paid: The three Rs of legitimate expectation: Recognizability, recoverability and responsibility (T 0703/19).

The prize for creative legal reasoning this year goes to the Board of Appeal in T 1003/19. This case was an appeal from the Examining Division (ED). The ED had granted an application based on a text-intended for grant in which all of the drawings showing the invention were missing. The Board of Appeal (3.3.05) found that the document provided by the ED as the text-intended for grant contained amendments that were neither requested by the applicant nor explicitly suggested by the ED. Thus, the Board of Appeal reasoned, the text provided as the text-intended for grant was not, in fact, intended for grant. The Board concluded that the applicant could therefore not be said to have approved the text for grant. The decision to grant the patent was therefore set aside: When is the “text-intended for grant” not intended for grant? (T 1003/19).

Moving on to the failure of an applicant (or their representative) to follow correct EPO procedure, the legal Board of Appeal (3.1.01) in J 05/18 considered the requirements for re-establishment (Article 122 EPC). The Board of Appeal concluded that even if a mistake results from an isolated error in a well-functioning system, the mistake may still demonstrate lack of all due care. The error in the case in question stemmed from a failure of the US attorneys to monitor a deadline for further processing (and arguably the failure of the EP representative to confirm with the US attorneys that the client did not wish to request further processing): Re-establishment: An isolated error in a well-functioning system may not be equivalent to all due care (J 05/18).

A welcome innovation of the new RPBA is that the upcoming cases of each of the Boards of Appeal are now available to view online: Annual list of cases.

Opposition and infringement

The Board of Appeal in T 0439/17 considered the circumstances under which a third party may intervene in opposition proceedings after the opposition period has expired. Article 105(1)(a) EPC provides that such an intervention may be made if infringement proceedings are brought against the third party. However, the meaning of "infringement proceedings" presents some difficulties, given the diversity of potential "patent infringement" related court proceedings in EPC member states. The Board of Appeal in T 0439/17 decided that pre-infringement evidence procurement procedures in Germany are not considered sufficient to allow a third party to intervene in opposition proceedings (even if an infringement action is subsequently brought): No benefit of hindsight: BA rejects ex tunc assessment of an intervention in opposition (T 0439/17).

Exams

To many trainee European patent attorneys, the European Qualifying Exams (EQEs) will be looking a lot closer this side of Christmas. As part of their preparation, they may wish to take note of the Disciplinary Board of Appeal's decision in D 11/18 [Warning: Paper B 2018 spoilers]. The Board of Appeal provides confirmation, if any were needed, that in the EQE candidates should take all of the information in the paper at face value. It is often necessary for candidates to ignore any specialist technical knowledge that they may have of the field of the invention. For this reason, it is often said that the EQE disadvantages candidates already familiar with the technical field to which an exam paper relates. These candidates will find it harder not to question the paper's assertions. Candidates are thus encouraged not to challenge what a EQE paper states as fact (an approach that may not come naturally to many patent attorneys...): EQEs - don't speculate beyond the content of the paper (D 11/18).
Proviso

The above review is, of course, not an exhaustive list of all the important Board of Appeal decisions published this year. On the contrary, the list merely represents this Kat's particular favourites. Readers will undoubtedly have their own preferred EPO decisions of 2019, and are invited to provide these in the comments below.

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Other decisions of interest:

T 1731/12 - Exclusions from patentability
A device that is defined by a feature that can only be produced by a surgical or therapeutic step is exempt from patenting under Article 53 (c) EPC

T 1845/14 - Unclear parameters
If a parameter in a claim is essential to solving the technical problem to be solved by the claim (according to the description), the ability of the skilled person to solve that problem is not a suitable criterion for assessing sufficiency of disclosure if the problem to be solved is not part of the claim.

T 0592/15 - Postponement of appeal decision
A request to postpone the taking of the decision on the allowability of an appeal until a divisional application was filed was refused. The Board of appeal reasoned that such a request would oblige the Board of Appeal to examine questions outside of the framework of the appeal concerned.

It has been a busy year for the Enlarged Board of Appeal. 2019 has seen four referrals from the Boards of Appeal and one decision. The more controversial of this year's referrals (namely Pepper and Computer simulated inventions) have attracted a large number of third party comments. Other referrals (i.e. "Double-patenting") seem to have dropped off the radar of even the EBA. Readers may therefore be forgiven for losing track. Fear not, IPKat is here with your 2019 Enlarged Board of Appeal Year in Review!

Appeal fee refund

Refund of appeal fee (G 1/18)

The outcome of the only referral to the EBA in 2018 was announced in July 2019: Enlarged Board of Appeal opinion on G 1/18, and published a month later: When will the appeal fee be refunded?: G 1/18, the decision. The referral was one of the last actions of outgoing EPO President Batistelli. The President asked for clarity on what should happen when an appeal fee is paid after expiry of the deadline for filing an appeal. Has the appeal been validly filed? Should the appeal fee be refunded?: The intractable question of "inadmissible" or "late filed" appeals - G1/18. In a clear and well-reasoned decision, the EBA sided with the majority of third party commentators, and concluded that the appeal fee should be refunded.

Computer simulated inventions (G 1/19)

The patentability of software (which takes the form of computer "simulated" or "implemented" inventions under the EPO's problem and solution approach) is a controversial topic. In the first of a couple of referrals in February, a Board of Appeal (3.5.07) sought clarity from the EBA on the patentability of computer-implemented simulations (T 0489/14): The patentability of computer simulated methods - another referral to the Enlarged Board of Appeal. The referral was followed by comments from the EPO president: Comments from the EPO President on the patentability of computer-implemented simulations (G 1/19). The President appears broadly in favour of the patentability of computer-simulated inventions. The referral particularly relates to claims having both a technical and non-technical character. The referral asks whether the non-technical features of such an invention and/or the technical purpose of the invention can be considered in the assessment of inventive step.

G 1/19 has received a large number of amicus curiae from third parties. A number of the amicus curiae are from large software companies, who are unsurprisingly in favour of the patentability of this kind of software invention (e.g. Siemens, Philips and IBM). CIPA and EPI have also all given their view, which are in favour of including the technical purpose of a claim in the assessment of inventive step.

Clarity in appeal and is Munich in Haar? (G 2/19)

The second referral in February related to appeals procedure. The referral sought an answer to whether a clarity objection can be discussed in appeal oral proceedings. Clarity can not be raised in opposition (accept in response to a Patentee's post-grant amendment). A clarity objection may be raised in examination by a third party (Article 115 EPC). In the case in question (T 831/17), in order to pursue a clarity objection after grant, a third party filed an appeal against the decision to grant the patent (EP2378735). The appeal was rejected as inadmissible. However, the Board of Appeal referred the question to the EBA of whether the appellant still has the right to oral proceedings even when an appeal is deemed inadmissible.

In response to the referral, the EBA decided that following an inadmissible appeal, a third party is not entitled to oral proceedings in order to discuss the third party's clarity objections. The EBA therefore closed the door on the possibility that clarity may be discussed as a ground of opposition in appeal proceedings: Enlarged Board of Appeal releases full reasoning in G2/19. The opposition period for the granted patent has now expired.

The final question in the referral raised a collective sigh from many in the patent community. The question related to whether Haar could really be said to be situated in Munich: Where is Haar and how did it get there? Observations on Geography while Waiting for G2/19. In particular, did the location of oral proceedings in Haar contravene a party's right to be heard? Rather unsurprisingly, the EBA decided that Haar was in Munich. [Merpel: Whilst relocation of the Boards of Appeal was undoubtedly an unpopular move, was it really necessary to expend EBA time on such a question?]

Pepper (G 3/19)

Of the four referrals to the Enlarged Board of Appeal in 2019, the most controversial was the EPO President's (Antonio Campinos) referral following the Board of Appeals decision on the patentablity of Syngenta's application for a pepper plant. The referral related to the old chestnut of whether products produced by essentially biological processes (i.e. natural processes) are patentable. Some had thought that new Rule 28(2) EPC, which was amended by the Administrative Council to explicitly state that plants produced by natural processes are not patentable, had laid the matter to rest (OJ EPO 2017, A56). However, at the end of last year, the Board of Appeal (3.3.04) in T 1063/18 found that Rule 28(2) EPC was void because it contradicted the interpretation of Article 53(b) EPC in 2015 by the EBA in G 2/12 (Broccoli/Tomato II): BREAKING: TBA decides that Rule 28(2) EPC, excluding plant products produced by essentially biological processes from patentability, is void.

News first came of the referral at the end of March 2019 following an Administrative Council meeting: BREAKING: President to refer the patentability of plants produced by essentially biological processes to the EBA. Part of the controversy surrounding the EPO President's referral, published in April, is that it appears prima facie inadmissible: Pepper gets spicy: The EPO President's Referral to the EBA.

Waiting for the outcome of Pepper

Whilst not wishing to make everything about Brexit, it is possible that Brexit will have an impact on the eventual outcome of the stand-off between the EU/EPO President/AC and the EPO Boards of Appeal. The AC amended Rule 28 EPC to specify that products produced by essentially biological processes are not patentable following a opinion from the European Commission on the Biotech Directive (Directive 98/44/EC): EPO's Administrative Council powerless to amend the EPC: The latest on T 1063/18. The UK has in the past been one of the strong proponents for the patentability of plant products produced essentially by biological processes. However, whilst G 3/19 has attracted 41 amicus curiae from interested parties, including the German, Austrian, Polish and Danish Governments; the Portuguese, Czech Republic and Spanish patent offices; the EU itself and CIPA, there have been no comment from the UK Government. [Merpel: Perhaps they have been too busy?]

It is hoped that 2020 will see the Enlarged Board of Appeal's response to the President's referral. If, as is widely expected, the EBA refuses the referral as inadmissible, all eyes will be on the President's response. If the EBA dismisses the appeal, or agrees with the Board of Appeal in T 1063/18, this will keep the EPO case law at odds with the potential position of the CJEU (should the CJEU follow the EC opinion). In the meantime, proceedings in examination and opposition cases relating to products produced by essential biological processes have been stayed.

Seeing double

Double patenting (G 4/19?)

This referral does not appear to be high on the EBA's priority list. The referral from a Board of Appeal (3.3.01) occurred in February: Breaking: New referral to the Enlarged Board of Appeal on double-patenting. However, details of the referral and its appeal number have not yet appeared on the EBA website. The referral relates the issue of double-patenting, particularly whether an applicant may have legitimate interest in double-patenting in a case of internal priority. In another sign that the referral is not high on the EPO's priority list, the written decision from Board of Appeal has only just been published (T 0318/14).

The EBA therefore has a busy year to come. The questions asked of the EBA this year, in both Computer Simulated Inventions and Pepper are particularly thorny, relating as they do to the fundamental question of what should be patentable. It is hoped that the EBA will provide some clarity on these issues in 2020. However, as we have seen with the Tomato/Broccoli and Pepper saga, it is always worth remembering that an EBA decision is not always the end of the matter.