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CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA?

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Twitter was awash today with news that the Board of Appeal in the CRISPR appeal case had referred questions on priority to the Enlarged Board of Appeal (EBA). However, these reports proved premature. None-the-less, there seems no doubt that the Board of Appeal are leaning towards a referral. The European patent community is advised to adopt the brace position.

Today is the third day of the proceedings in the CRISPR appeal case (See IPKat's report on Day 1 for full background to the case: the Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage).

Image source: a Katfriend

In brief summary, the Broad Institute's CRISPR patent was revoked by the opposition division for lacking a valid priority claim under the well-established EPO approach to priority, based on mountains of Boards of Appeal case law. The Patentee's argument on appeal is that the EPO approach to priority is wrong because it is not in line with the Paris Convention or a proper interpretation of Article 87 EPC. There are three threads to the Patentee's argument: (I) Entitlement to priority should not be assessed by the EPO, (II) the EPO incorrectly interprets the phrase “any person” in Article 87 EPC and Article 4 Paris Convention, and (III) US law should govern the interpretation of “any person” in Article 87 EPC when the priority application is a US provisional.

In a dramatic development this morning, it seems that the Board of Appeal (3.3.08) were poised to seek clarification from the EBA on each of the three strands of the patentee's argument. The Board of Appeal indicated that the referral would be justified on the grounds that the points of law in question were of fundamental importance (Article 112 EPC). Thus, the Board of Appeal announced that it was their intention to refer questions on the issue of priority to the EBA. A break ensued to allow parties to consider their response. IP Magazine's twitter account reported that a referral had in fact been made. These reports turned out to be false [Merpel: Fake News!].

After the break, strong objections against a referral were raised by the Opponents. The Opponents argued that the questions should only be referred if the Board of Appeal believed the current EPO approach was incorrect. Particular, the referral could not even be contemplated unless the Board of Appeal intended to decide the case contrary to the established EPO case law on priority. As the Opponent's have pointed out, even a one off contradictory decision by a Board of Appeal does not necessarily justify a referral.

Following a heated debate, the Opponents succeeded in preventing a referral to the EBA today. The Board agreed that all three strands of the Patentee's arguments on priority should be discussed before a decision could be made on a referral. After lunch, discussion therefore moved on to the arguments concerning whether the EPO was competent to decide on the issue of entitlement to priority. The Board has also yet to consider the final strand of the argument, i.e. whether US law should govern priority entitlement in this case.

We are therefore holding our breath to see whether the Board will persist with their view that a referral to the EBA is necessary.

Can a referral to the EBA be justified?

The Board of Appeal has indicated that they would contemplate a referral on the ground that the issues at stake are of fundamental importance. The criteria for what constitutes an "issue of fundamental importance" was supplied by the EBA in G 1/12: "a point of law is...to be regarded as of fundamental importance if its impact extends beyond the case in hand. Such importance is established if it could be relevant to a large number of similar cases". As Opponent 1 pointed out, the "large number" of cases to which the issue could be said to be relevant in this case, are all cases of the Patentee that claim priority from the same US provisional...

If there were to be a referral from the Board of Appeal, this would arguably not seem to be keeping with the norms of EPO legal practice. It is hard to argue that there is not uniform application of the law of priority across the Boards. It is also difficult to see how their can be said to be an issue of fundamental importance (except to the Patentee). To refer the issue to the EBA would be extraordinary. In this Kat's view, if the technology to which the patent relates wasn't so valuable, and if the case wasn't so high profile, it seems highly unlikely that a Board of Appeal would even contemplate a referral.

Stay tuned to IPKat for Day 4 as the hearing continues.

Day 1: The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage

A Question of Priorities: 2019 Boards of Appeal Year in Review

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Proving the existence of confidentiality agreements and the celestial teapot - T 2037/18

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T 2037/18 is an EPO Boards of Appeal case that considers how much an opponent needs to prove in the Notice of Opposition itself. The case related to a dispute between Bombardierand Siemens regarding Bombardier’s EP patent (EP2619063) for a train carriage. Siemens cited a train (the TDR Series 460) as prior art against the patent, alleging prior use by Bombardier’s customer Transregio Deutsche Regionalbahn (TDR). The case centred around whether the transfer of the train from Bombardier to TDR could be considered to have taken place under conditions of confidentiality. Crucial questions in the case were a) on which party the burden of proof should be laid and b) whether this burden was on the opponent in the Notice of Opposition. Another key question was whether the burden of proof placed on Siemens in opposition had been the equivalent of asking them to prove a negative (or more philosophically speaking, had it been like asking the opponent to prove the existence of the philosophical "celestial teapot").

The Opposition Division (OD) did not consider the information provided by Siemens on the TDR 460 train to be enough to substantiate the opposition. The OD particularly considered that the process of transfer between Bombardier and TDR should be considered as having taken place under conditions of implied confidentiality. The OD thus found that the burden of proof had been on Siemens to demonstrate the lack of such conditions of confidentiality between Bombardier and TDR in the Notice of Opposition. In the absence of any such proof the opposition was considered inadmissible.

The appeal case explored the issue of whether the burden of proof really should be viewed as resting with the opponent in such a case.

Legal Background – Prior use and burden of proof

The public use of an invention prior to the priority date of a patent may be novelty destroying (Article 54(2) EPC). The approach of the UK courts to the issue of prior public use was considered by the High Court earlier this year (IPKat: Mr Justice Nugee and the Superhose: The potentiality of disclosure). The EPO and UK courts agree that an invention is judged to have been made available to the public even if only one member of the public was able to gain access to and understand the disclosure (T 0084/83). A rear-view mirror was considered by the EPO to have been disclosed, for example, because it was used in a public transport vehicle. However, a prior use disclosure is not considered public if it took place under conditions of confidentiality (T 1081/01).

In EPO proceedings, arguments such as an allegation of prior use must be supported by facts and evidence (as recently reviewed in another Boards of Appeal case, see IPKat: Shifting the burden of proof back to the patentee (T 1299/15)). In a case of alleged prior public use, the burden of proof is on the opponent to substantiate the when, what, and how of the public use (Case Law of the Boards of Appeal, I.C.3.2.4).

The burden of proof should not amount to proving a negative

So who had the burden of proof in Siemen’s opposition of Bombardier’s patent (T 2037/18)? The Board (3.2.01) noted the Boards of Appeal case law that, if prior use is alleged, the burden of proof first falls on the opponent to demonstrate that the sale took place (T 326/93, r. 4.1). In particular, the when, what and by whom of the alleged prior use must be outlined by the opponent. The Board noted that this evidence had been provided in the Notice of Opposition. The question of whether the prior use had been public (i.e. whether it had been confidential) was considered irrelevant for the admissibility of the appeal. Such a question should be left to the assessment of the substantive merits of the case. The Board therefore considered the opposition to have been admissible.

The celestial teapot

The Board further noted that, in general, if the patentee argues in their defence that a prior use was confidential, the burden of proof is on the patentee to prove that conditions of confidentiality were, in fact, in place (T 221/91, r. 2). The shift of the burden of proof to the patentee is considered appropriate given that a buyer can typically be expected to disclose an item they have bought. As Siemens argued, TDR would have had a strong interest in using the train. TDR would also have assumed Bombardier to have made the arrangements for patent protection if any were necessary. As the Board put it “[a] search of the entire body of the Board of Appeal has not revealed a case, in which a chamber from the delivery of a rail vehicle to an operating company would have concluded the existence of a tacit confidentiality agreement” (r. 17, machine translation).

The Board further considered this reasoning to follow the legal principle of “negative non sunt probanda”, i.e. you can’t prove a negative. This Kat is reminded of Bertrand’s Russell’s analogy of the “celestial teapot”. Russell argued that if a party was to allege the existence of a small teapot orbiting the earth (where the teapot is too small to be spotted by telescopes) it would be impossible for another party to disprove the claim. Russell used this analogy to argue that the burden of proof must lie on the party making the unfalsifiable claim.

In the case of prior use, the Board argued, an opponent cannot be expected to prove that the sale didn’t take place under conditions of confidentiality. Such a requirement would require the opponent to prove a negative. The burden of proof would thus amount to the same as would be required to disprove the existence of the celestial teapot.

Burden of proof may shift again in view of prima facie evidence. For example, if a patentee presents what appears to be prima facie evidence of conditions of confidentiality covering a prior use, the burden of proof shifts to the opponent to disprove this evidence (r.10). However, the Board noted that such a shift in the burden of proof could only be triggered after the Notice of Opposition had been filed, i.e. in view of the patentee’s response to the opposition. The Board (obviously a fan of a pertinent Latin phrase), summarised that a shift in the burden of proof with respect to the existence of a confidentiality agreement could only occur ex nunc.

The reasoning provided in this decision is welcome, especially in light of the upcoming changes to the Rules of Procedure of the Boards of Appeal (RPBA) (see IPKat here). Under the new regime it will become significantly harder to introduce new arguments and evidence into proceedings as proceedings progress. Commentators are predicting that opponents and patentees will front load their cases in response to the revised changes. T 2037/18 provides some salient reasoning why it should not be required of an opponent to introduce all possible arguments and counter-arguments in the Notice of Opposition. The Opponent must also be able to respond to the patentee's position as proceedings progress.

Clarity is needed from the Boards of Appeal on the EPO's "co-applicant approach" to priority

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The high-profile CRISPR patent dispute relates to the EPO interpretation of "any applicant" in Article 87(1) EPC (IPKat post here and here). According to the well-established case law of the Boards of Appeal, Article 87(1) EPC requires that if applicant X and Y are named on the priority application, applicants X and Y (or their successors in title) must also be named on the application claiming priority. However, this is not the only controversial aspect of the EPO’s approach to priority. A lesser known aspect of EPO priority is that the "any applicant" phrasing of Article 87(1) EPC permits additional applicants to be added to the subsequent application. In other words, if applicants X and Y are named on the priority application, applicants X, Y and Z may be named on the subsequent application claiming priority. This is called the “co-applicants approach” to priority (see Guidelines A-III, 6.1).

What is the co-applicants approach?

The co-applicants approach derives support from T 1933/12. This Boards of Appeal (3.2.08) decision reasoned that Article 87(1) EPC does not prevent an applicant for a first application (P1) sharing their right to priority with a co-applicant for a subsequent application (A1) claiming priority from P1 (r. 2.4). Article 87(1) EPC merely requires that all of the applicants of P1 are also applicants of A1 (or their successor in title). Thus, an applicant may be named on the subsequent application that was not an applicant (or a successor in title of the applicants) of the priority application.

And then there were three

Notably, Derk Visser is not a supporter of the Board's reasoning in T 1933/12, describing their justification of the co-applicant approach as "poor" (The Annotated European Patent Convention, Article 87(1)). Mr Visser further argues that the co-applicant approach of T 1933/12 is inconsistent with the EPO's reasoning that all applicants (X and Y) of the priority application (or their successor(s) in title) are named on the subsequent application claiming priority (as in the CRISPR case). The latter is based on the understanding that X and Y are a legal unity that cannot be divided, whilst the co-applicant approach permits a change of the legal unity of X+Y into X+Y+Z.

The co-applicant approach and PCT applications

A recent opposition decision considered the applicability of the co-applicant approach to a more complex situation. In this case, the PCT application claiming priority specified different applicants for different designated states. One of the applicants for the PCT application was not named on the application from which priority was claimed. So was the "extra" applicant entitled to priority?

The case related to GSK’s European patent EP 1965823, which was opposed by Sanofi, Novo Nordisk, Generics Ltd and Eli Lilly. The patent relates to GLP-1 for use in a method of treating diabetes. All four opponents argued that the patent was not entitled to priority from the US provisionals P1 and P2. The opponents argued that GSK had failed to provide evidence that, on the filing date of the PCT, the right to claim priority had been transferred from the inventor-applicants of P1 and P2 (Mr O’Neill and Mr Bush) to Smithkline Beecham Corporation (SBC) (for more on assignment of priority rights, see IPKat: Assigned or not assigned).

During oral proceedings, GSK relied on the “co-applicants approach”. The PCT application had been filed in the names of SBC and the inventor-applicants of P1 and P2. SBC was listed as the applicant for all designated states apart from the US. Messrs O’Neil and Bush were listed as the applicants of the PCT for the US designation only.

The Opposition Division noted that in the case of different applicants for different designations of a PCT application, the applicants are still considered co-applicants (Article 118 EPC). Legal basis for this position was provided in the form of J2/04, which relates to the legal status of co-applicants in general. According to J2/04, two persons who file an application in common cannot acquire a procedural status different from a single applicant, because otherwise each of them could perform different and contradictory procedural acts (e.g. filing a divisional).

The Opposition Division further noted that there was no PCT provision preventing the application of the “co-applicants approach" to the international phase of a PCT application. On the contrary the PCT refers to the existence of “one single and common international application” (Article 3 PCT). The Opposition Division concluded that:

"the PCT provisions of Forms do not appear to allow distinguishing the priority claims to different designated States…This shows that the PCT application is not simply a mechanism for the central filing of multiple separate national/regional patent applications, but rather gives rise during the international phase to a genuine international application with effects for all applicants and in relation to which joint applicants have to act in common."

Clarity is needed from the Boards of Appeal

The GSK patent was revoked on grounds other than invalid priority. GSK has appealed the decision. In reply to the appeal, Eli Lilly has argued that it was incorrect for the EPO to apply the co-applicant to the patent. Lilly particularly cites T 205/14 and T 517/14 in which the Board (3.3.01) required, in a situation analogous to that in the case in EP 1965823 (GSK), evidence of a transfer of the right to priority to the additional applicant (Z) of the PCT application from the applicants (X+Y) of the priority applications. None-the-less, the position of the Opposition Division in EP 1965823 is broadly in line with a number of opposition division decisions, e.g. EP2940044, and the Guidelines for Examination.

There is another pending appeal challenging the co-applicant approach. The case relates to one of AbbVie’s Humria patents (T 1837/19). In this case, Abbott Laboratories was listed as the applicant for the PCT application for all designated states apart from the US. The applicant-inventors of the US provisional applications from which priority was claimed were listed as the applicants for the US designation. The opponent has argued in their Statement of Grounds of appeal that the EP application is just one of the bundle of applications making up the PCT application, and that the EP application is different from and therefore does not include the applicants of the US provisional.

Unlike the issue at stake in the CRISPR appeal, the case law supporting the co-applicant approach is flaky at best. However, it seems likely that we will soon receive clarity on the legality of the co-applicants approach from the Boards of Appeal. Will the Boards of Appeal follow the more lenient approach to priority represented by the co-applicant approach followed by the opposition division, or will we see a tightening up of the requirements?