Nexus: Boards of Appeal

Aftermath of the CRISPR hearing - Highlights from the blogosphere

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For the past couple of weeks, the patent news has been saturated with reports and commentaries on the Board of Appeal decision in the CRISPR hearing (T 844/18). Many readers may not have the time and/or enthusiasm to read all of these articles. However, what this Kat lacks in time she makes up for in enthusiasm, and provides your post-hearing highlights:

First, a case refresh...

The Broad Institute lost one of their fundamental CRISPR patents (EP2771468) in opposition because of a clear-cut case of invalid priority (IPKat: here). Article 87 EPC, based on Article 4(1) of the Paris Convention, specifies that any person who has filed a patent in a state party to the Paris Convention, or his successor in title, may claim priority from that application for the purposes of a subsequent EP application. The EPO interprets “any person” as meaning that all the applicants (or their successors in title) named on the priority application must be named on the subsequent EP application. The Broad Institute lost their CRISPR patent at opposition because an inventor of the US provisional application from which priority was claimed (or his successor in title) was not named on the PCT application.

News review

On appeal (T 844/18) the Broad Institute argued that the EPO's approach to priority was incorrect. The patentee’s arguments may be summarised as follows: (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 applicant” in Article 87 EPC when the priority application is a US provisional.

After hearing lengthy submissions on each of these arguments from the patentee and opponents, the Board of Appeal dismissed the Broad Institute's appeal. The Board of Appeal thus upheld the opposition decision that the priority claim was invalid, and that consequently the patent lacked novelty.

The patentee

Understandably, those on the winning side of the appeal have been most vocal with their opinions on the outcome. Conversely, law firms supporting the Broad Institute (including De Clerq, Bird & Bird and Brinkhof) have not provided any commentary. However, the Broad Institute itself issued a statementon the day of the decision. The Broad Institute echoed its previous statements that their patent had been dismissed by the Board of Appeal due to a “technical formality”. They were also eager to point out that “the majority of Broad’s CRISPR-Cas9 patents in Europe are not affected by this decision”. Licences for CRISPR technology in Europe are therefore likely to be largely unaffected by the Board of Appeal decision.

The Broad Institute further did not waste an opportunity to take a dig at University of California Berkeley (UCB), their main rival in the CRISPR patent dispute. The Broad mentioned that they have “for seven years…made many attempts to engage University of California-Berkeley, directly and through their exclusive licensee and through patent pools. These efforts began before UCB licensed its IP exclusively and entirely to commercial entities”. Whilst the revocation of the Broad Institute patent EP2771468 is not a knock out blow, it will undoubtedly strengthen the side of UCB in any future negotiations.

The opponents

The representative for Opponent 1, George Schlich, has published an in-depth review of the outcome of the hearing. From the point of view of many commentators, the simple take-home message from the hearing was that existing case law was followed. Schlich argues that the written decision of the Board will provide something more fundamental: “we will now get a more enunciated reasoning as to why the law and practice is correct and settled”.

Schlich notes that the argument from the Broad Institute that received the most attention was the that "any person" in Article 87(1) EPC and Article 4(1) of the Paris Convention should be interpreted as "any one of" the applicants of the priority application. The Broad Institute had submitted a declaration from no-less eminent a person than Lord Neuberger to support their interpretation of "any". According to Schlich, at the hearing the Broad Institute also referred to recent EPO law indicating that right to claim priority cannot be exhausted (T15/01). However, the Board of Appeal agreed with the Opponents that the right of priority is a single, indivisible right. Thus, the Board of Appeal concluded that the right cannot be divided or separated into multiple priority rights. Schlich makes the very pertinent point that the position of the EPO on this issue may henceforth be supported by the written rationale of Board of Appeal 3.3.08 (once we have the written decision), as opposed to a mere reliance on the argument that this just how it has always been done at the EPO.

The patent press

The appeal hearing attracted considerable coverage from parties not directly involved in proceedings. Those unlucky enough not to be able to attend in person were able to follow the semi-live tweets from observers. However, followers of the live reports will have been reminded of the old adage “it is not over until its over”, as reports that the Board of Appeal had referred questions on priority to the EBA, later proved incorrect [Merpel was particularly amused by the backtracking of certain patent news-outlets with regards to the "EBA referral" incident. Those reporting that the Board of Appeal had decided to refer, were subsequently forced to report a "dramatic reversal" that the Board no longer intended to refer].

Kilburn & Strode LLP (K&S) were very active commentators. In their report of the proceedings, K&S argued that the decision of the Board of Appeal may not, in fact, be the end of the matter. During the hearing, the Broad Institute had objected that there had not been adequate discussion on the decision of the Board of Appeal not to refer the questions on priority to the EBA. K&S propose that the Broad Institute may file a petition for review, on the grounds that there has been a fundamental violation of the Patentees’ right to be heard. The Enlarged Board of Appeal rarely find Petitions of Review admissible. Even when admitted, the majority of Petitions are usually rejected.

JUVE patent summarises all of the parties involved in the European dispute. These included the experts called on to give their opinion of the case. In support of the Broad Institute, “Former UK Supreme Court judges David Neuberger and Leonard Hoffman, Matrix Chambers barrister Phillipe Sands, Joseph Straus, former chair of a EPO Board of Appeal Ursula Kinkeldey, and Swiss Federal Patent Court judge Tobias Bremi”, whilst on the side of the opponents “former German Supreme Court judge Klaus-Jürgen Melullis, former director of the United States Patent and Trademark Office David Kappos, and Rudolf Teschemacher, former chair of a Board of Appeal”.

Another welcome addition to the commentary is provided by Novagraaf, who take the opportunity to remind readers of the pitfalls that exist for US applicants of a European patent application. The US has less stringent priority requirements than the EPO. This is because the US understands priority as applying to inventions. Thus, a priority claim is valid in the US if the priority application and the application claiming priority has merely one inventor in common. Therefore, when a US provisional application is filed in the name of an inventor, in the US the inventor does not need to assign their rights to the applicant of the PCT application prior to the PCT filing date.

The Broad Institute is not alone in falling foul of the trap opened up by the differences in the US and European requirements for a valid priority claim. However, whilst not uncommon, the Broad Institute's error is remarkable for the magnitude of its commercial implications. In view of this, the decision of the Board of Appeal not to refer the issue of priority to the Enlarged Board of Appeal has been welcomed by many practitioners as a triumph of the rule of law over commercial interest and influence.

The EPO

The minutes of oral proceedings have now been published. The minutes are a summary, as opposed to a transcript of proceedings. The minutes confirm that at the start of Day 3, the Board stated that they were then of the view that certain question of law concerning priority should be referred to the EBA (IPKat: here). The minutes do not detail what changed the Board of Appeal's mind on the matter of the referral. The minutes merely mention that the referral was discussed with the parties. Unsubstantiated rumour has it that members of the EBA were seen lurking in the corridors of the EPO, perhaps keeping an eye on developments? The Board of Appeal came to their decision to dismiss the appeal on the fourth day (of the 5 days scheduled), following 2 hours 40 minutes of deliberation over lunch: (IPKat: here).

We now await the written decision of the Board of Appeal, which will provide their reasoning in full.

Further reading:

The opposition decision: EPO revokes CRISPR patent – a clear cut case of invalid priority?
The mysterious declaration: The Broad's CRISPR patent: The curious case of the missing declaration
The statement of grounds of appeal: "Should everyone else change, or just the Patentee?": Progress of the Broad's CRISPR appeal
The Board of Appeal's preliminary opinion: BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18)
Hearing, Day 1: The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage
Hearing, Day 2-3: CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA?
Hearing, Day 4: CRISPR hearing Day 4: Still a clear cut case of invalid priority, Broad Institute's appeal dismissed

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Taking the measure of the prior art (T 1943/15)

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A picture may speak a thousand words, but how many of those words are clear and unambiguous? In a recently published Board of Appeal decision (T 1943/15), the Board considered the circumstances under which a disclosure of a component's dimension may be derived solely from the patent drawings, either by eye or by measurement.

What do patent drawings disclose?

As with any disclosure, the disclosure of a drawing used in a novelty attack should be clearly and unambiguously derivable. In order to assess whether a measurement in a drawing is clear and unambiguous, it is necessary to assess what technical teaching a skilled person could be said to derive from the drawing (T 204/83). Consequently, dimensions derived solely by measuring a patent drawing (and not complemented by the description) are not considered part of the disclosure of a patent.

What about relative measurements? Are these disclosed by a patent drawing? In a previous decision of the Boards of Appeal, the relative size of two components deduced solely from the drawings in a patent were not considered part of the patent's disclosure (T 1664/06). Several other decisions, based on different facts, have reached the opposite conclusion. In one decision, the relative thickness of two drawing components were considered disclosed, as the relative thickness of the components was identified in the specification as an essential component of the invention (T 748/91). Practical technical teaching could thus be said to be derivable from measurement of the drawings. In other decisions, the drawing in a patent were considered “quite” precise (T 1200/05) or akin to construction drawings (T 422/95). Measurement of the drawings could therefore again be said to confer practical teaching.

Drawing

Of course, it is not always necessary to measure a drawing. It may also be possible to obtain information on the relative size of components just by looking closely at the drawing. The case law provides no general rules by which the disclosure of drawings deduced by eye should be assessed (T 204/83). This is instead determined on a case-by-case basis.

Measuring the threads

The patent in question (EP 2366075) in the most recent Board of Appeal decision on the issue of drawing measurements, related to oil extraction machinery. A novelty attack against the claims relied on dimensions derived from the drawings of the prior art. The granted claim related to a threaded connection between a first and second tube. The threads of the first tube increased in size towards the end of the tube, whilst the threads of the second tube correspondingly decreased in size towards the end of the tube. The relative max and min sizes of the threads on the two tubes were characterised as having a ratio of greater or equal to 0.2.

The Board of Appeal were satisfied that the lower limit of the range (0.2) could not be clearly and unambiguously derived merely by looking at the drawings of the prior art. Particularly, inferring by eye that one dimension was five times the size of a second dimension was said by the Board to verge on speculation. The Board contrasted the situation to one in which an open range was claimed (i.e. one dimension is greater than another). The Board acknowledged that it may sometimes be clear that one dimension is intended to be larger than another. However, this is different to determining the ratio of the dimensions, which would require mentally ascribing sizes to the dimensions. The skilled person would therefore have to measure the drawings of the prior art.

After reviewing the case law, the Board of Appeal (3.2.05) concluded that any patent drawing falling short of the standard of construction drawings could not considered part of the clear and unambiguous disclosure of the patent. Construction drawings, the Board reasoned, could generally be relied on to show dimensions and proportions of elements to scale. In the opinion of the Board, even patent drawings in the mechanical field could not be relied on to the same extent as construction drawings.

The drawings of the prior art in question were not considered by the Board to correspond to the standard of construction drawings. The Board was not even convinced that the drawings of the prior art were to scale. Multiple dimensions were also missing from the drawings which, in the Board’s opinion, meant that there was no way telling whether the figures actually showed the relevant part of the threads of the tubes. The claims were therefore found to be novel in view of the prior art.

Is this latest Board of Appeal decision in line with all those of the previous Boards? A 2007 decision cited by the Board itself considered a measurement from the drawings of a patent as prior art for the purposes of an inventive step attack. These drawings were considered "precise", but the quality of the drawings compared to construction drawings was not considered. However, as highlighted throughout the case law on this issue, establishing rules for assessing the disclosure of drawings is difficult. As a general principle however, relying on measurements from drawings either for basis or a novelty attack can be an uphill battle. A picture may speak a thousand words, but words are clearer.

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

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Today was Day 1 of the Board of Appeal hearing on the validity of one of the Broad Institute’s patents relating to fundamental aspects of CRISPR technology. The simple question at the heart of the dispute between the Broad Institute and the opponents was summarised with admirable succinctness by the Board of Appeal in their preliminary opinion:

“A and B are applicants for the priority application. A alone is the applicant of the subsequent application. Is this priority claim valid even without any assignment of priority right from B to A? The appellants say that the answer is ‘yes’ and the respondents that the answer is ‘no’”.

IPKat heard from one Katfriend that a crowd of interested parties turned up bright and early for the start of the hearing at 9am. However, it seems that the Hearing did not actually begin until after lunch, with proceedings commencing at 1pm. As expected, the afternoon was devoted to clarifying the requests of the various parties in attendance, before moving on to the arguments concerning linguistic analysis of "any applicant" according to Article 87 EPC.

Background: The CRISPR patent wars – simplified version

CRISPR-cas9 gene editing technology (“CRISPR”) provides a cheap, efficient and easy way to precisely modify genetic information. In the US, CRISPR technology is the subject of potentially the last great patent dispute of the first-to-invent era. The main players are the University of California Berkeley (UCB) and the Board Institute. The dispute in the US primarily relates to whether the Broad Institute’s invention of CRISPR in eukaryotic (e.g. human cells) was obvious in view of UCB’s invention of CRISPR in bacteria. The latest development in the US CRISPR patent dispute are covered over on IPwatchdog.

On the other side of the Atlantic, the legal facts of the European CRISPR dispute are very different. The Broad Institute lost one of their fundamental CRISPR patents (EP2771468) in opposition because of a clear-cut case of invalid priority (IPKat: EPO revokes CRISPR patent – a clear cut case of invalid priority?). Article 87 EPC, based on Article 4(1) of the Paris Convention, specifies that any person who has filed a patent in Paris Convention, or his successor in title, may claim priority from that application for the purposes of a subsequent EP application. The EPO, unlike the USPTO, interprets “any person” as meaning that all the applicants (or their successors in title) named on the priority application must be named on the subsequent EP application. In the US, a priority application and subsequent application need only have one inventor in common (MPEP § 213.02).

IPKat desk of appeal hearing news

The Broad Institute lost their CRISPR patent at opposition because of a missing assignment from one of the inventors (Luciano Marraffini) listed on one of the US provisional priority applications. There has been considerable intrigue as to how such a catastrophic (although admittedly not uncommon) mistake was made. These intrigues have been accompanied by occasional bizarre interventions, including third party observations by a noted Australian soap opera character and the curious case of the missing declaration.

By way of colourful background, whilst opposition proceedings where ongoing, the Broad Institute and the Rockefeller University were locked in a patent dispute over whether the missing inventor, Luciano Marraffini, should be included as an inventor on the Broad’s CRISPR patent. The dispute was settled just before the opposition hearing and a press release to this effect was submitted dramatically during opposition oral proceedings. However, the press release was rejected by the OD for being late filed (and arguably wouldn’t have been much use anyway, given that the “same applicant” test would still not have been satisfied). The patent was therefore revoked for lacking novelty in view of prior art published after the provisional application but before the PCT filing.

The Broad Institute’s arguments on appeal

Despite fighting what many would see as a losing battle against a wall of EPO case law, the Broad Institute did not accept defeat with the opposition division decision and swiftly filed an appeal (T0844/18). The Broad Institute’s Statement of Grounds of Appeal (and the Opponents' responses) are well worth a read: "Should everyone else change, or just the Patentee?": Progress of the Broad's CRISPR appeal. However, the patentee’s lengthy arguments may be boiled down to 3 main points: (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 applicant” in Article 87 EPC when the priority application is a US provisional.

The Broad Institute argued that entitlement to priority should not be assessed by the EPO because the EPO was never meant to deal with property entitlement issues. Additionally, in perhaps one of their more audacious arguments, the Broad Institute argued that the EPO’s “same applicant” approach was in fact in contravention of a patentee’s human right to property. It was argued that a patentee’s human rights were contravened when a technicality such as an invalid transfer of a property right (the right to claim priority) destroyed the very property (the patent) itself.

The Broad Institute also argued that the opposition division incorrectly interpreted “any person” in Article 87 EPC (and Article 4(1) of the Paris Convention). “Any person”, according to the normal dictionary definition means “one, some or all indiscriminately”. Such a definition, the Broad Institute argued, does not require everyone of the applicants of the priority application to be named on the application claiming priority. The Broad Institute argument was supported by a declaration from no less eminent person than Lord Neuberger himself. However, the Board noted in its preliminary opinion that “the term ‘any person’ is ambiguous, rending attempts to elucidate the meaning of these provisions upon a purely linguistic basis difficult and most unlikely to succeed”.

In the third thread of their argument, the Broad Institute argued that “any person” and priority entitlements were not something that should be determined according to EPO law, but according to national law - in this case, US law. In their preliminary opinion, however, the Board of Appeal posited that the EPC provides a complete system for determining whether a priority right has been correctly claimed, and that issues may be resolved by the EPO without reference to national law.

A Katfriend at the hearing today reports that, after clarifying the parties submissions, proceedings began in earnest with a discussion of the meaning of "any person" from a linguistic perspective. Further discussion on this issue is expected tomorrow.

Keeping an eye on the tweeters

The stage is therefore set for one of the most exciting Board of Appeal hearings of recent times. If the Opposition Division hearing is anything to go by, we can expect an interesting series of days to come. As a mark of the interest in the case, today's hearing included complaints of tweeting amongst the audience, something it seems the Board is keen to prevent.

It is widely expected that the Board of Appeal will dismiss the appeal in view of the mountain of Board of Appeal case law in support of the current EPO approach. None-the-less, the Broad Institute have thrown a considerable amount into this fight, despite what many see as the limited chance of success. Will the EPO be swayed?

Stay tuned to IPKat as the hearings continue.

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

Image source: Desk of news - Breaking cat news

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Do we need a referral to the Enlarged Board of Appeal on the novelty of selection inventions?

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Attentive readers will be aware that today is the first day of the CRISPR Board of Appeal hearing at the EPO on the issue of priority. For readers unlucky enough not to be in attendance (and who also do not want to spend the day glued to twitter), IPKat will be providing a handy summary of any significant developments. To keep readers entertained in the meantime, IPKat considers another controversial aspect of EPO case law, selection inventions.

As even only occasional readers of IPKat will be aware, last year saw a flurry of referrals to the Enlarged Board of Appeal (EBA) (see: The Year of the Pepper: 2019 Enlarged Board of Appeal Year in Review). Over on DeltaPatents, there was also a report on "the EBA referral that never happened". The issue in question was selection inventions. Selection inventions are those directed to a sub-division of the known art. Examples of selection inventions include a sub-range of a known range, or the use of a known therapeutic to treat a sub-category of disease. Roel van Woudenberg of DeltaPatents reported that, despite what some see as the ongoing lack of clarity regarding how the novelty of selection inventions should be assessed, the President of the EPO refused a requestfrom the European Patent Institute (EPI) (the Institute of Professional Representatives before the EPO) to refer this issue to the EBA.

Legal Background: Selection inventions

European patent law considers a selection from the prior art as being novel if: a) the end points of a claimed sub-range or any point falling within the claimed sub-range are not disclosed in the prior art and b) the end-points of the claimed range are "sufficiently removed" from the individual elements disclosed in the prior art. For many years, the EPO Guidelines for Examination (the “guidelines”) stated an additional requirement that the selection must also be non-arbitrary or “purposive” (T 0198/84). Similarly, the guidelines state that a range overlapping with a range disclosed in prior art is only novel if the overlapping range would not be “seriously contemplated” by a skilled person. The “purposive selection” and "seriously contemplated" criteria may be particularly influential in cases of novelty-only prior art on the basis of which an inventive step attack cannot be raised.

However, the “purposive selection” criteria for novelty has recently lost favour with some (but apparently not all) of the Boards of Appeal. In T 1233/05, for example, the Board of Appeal was of the opinion that the purposive selection requirement was more akin to an assessment of inventive step as opposed to novelty. The 2019 EPO guidelines were subsequently updated to remove the “purposive selection” criteria (G-VI-8, and G-VII-12) (IPKat: 2019 updates to the EPO Guidelines for Examination - the highlights). However, notably, the criteria that an overlapping range should not be “seriously contemplated” has not been similarly updated (G-VI-9 iii). As pointed out in a recent article by Roel van Woudenberg, this apparently puts the guidelines for assessing the novelty of sub-ranges at odds with the guidelines for assessing the novelty of overlapping sub-ranges.

Interestingly, the UK courts have also previous expressed dissatisfaction with the EPO’s approach to the novelty of sub-ranges with regards to the purposive selection criteria. On the other hand, UK judges do seem willing to apply the criteria that a novel overlapping sub-range must not be “seriously contemplated” (IPKat: Court of Appeal grapples with novelty of overlapping ranges in Jushi v OCV).

EPI requests a referral from the EPO President

According to the European Patent Institute (EPI), the law on the novelty of selection inventions is unclear, given the diverging opinions of the Boards of Appeal. In view of this purported lack of clarity, the EPI president (Francis Leyder) wrote a letter to the President of the EPO requesting the President to refer the issue to the EBA. The President of EPI cited a number of recent Boards of Appeal decisions that did not apply the “purposive selection" criteria (including T 1233/05, T 1131/06, T 230/07, T 1130/09, T 2041/09, T 378/12 and T 1404/14) and a two recent decisions that did (T 66/12 and T 673/12). In the view of EPI “[i]t is clear from the above that there are clearly two incompatible lines of Board of Appeal decision as to what are the criteria to be used in deciding whether a sub-range is novel”. The President of EPI therefore suggested a referral from the EPO President to the EBA, that might ask the following question:

“What are the criteria to be used in assessing the novelty of a claim where the allegedly distinguishing feature of the claim relative to a prior art document is a sub-range of a broader range disclosed in that prior art document”.

The response of the EPO president

EPO Director and lawyer Heli Pihlajamaaresponded to EPI on behalf of the EPO President. The EPO President agreed that the decisions of the Boards of Appeal “currently go in two directions”. However, in the EPO President’s view, there is a “clear trend towards abandoning the assessment of the third criterion as part of the novelty assessment”. The EPO President views this trend as a development as opposed to a contradiction in the case law. The EPO President also believed clarity has now been provided by the update to the guidelines.

However, the guidelines do not have the same legal force as boards of appeal case law. The guidelines (as the name suggest) are guidelines for first instance departments. Furthermore, Boards of Appeal decisions are only part of the picture. It is this Kat’s understanding that there are diverging approaches within the Examining and Opposition Divisions on this issue. Does this chime with readers’ experiences?

Slicing up the prior art

Despite the EPO President’s refusal to contemplate a referral in the case of selection inventions, he cannot be accused of being shy with respect to referrals under Article 112(2) EPC in general. Last year, following pressure from the Administrative Council, the EPO President controversially referred the question of whether plant products produced by natural processes should be patentable. The opinion of the majority of practitioners is that the President’s referral is clearly inadmissible, and resulted more from the political pressure than legal necessity (IPKat: Pepper gets spicy: The EPO President's Referral to the EBA).

It seems that proponents of a referral with respect to selection inventions can now only hope for a referral by a Board of Appeal (Article 112(1) EPC). Indeed, EPI urges parties in appeal proceedings who find themselves involved in a case where the use or not of the “purposive selection” criteria is influential to the case, to request the Board to refer the issue to the EBA. The opposing view is that a referral is not necessary, as the Boards of Appeal do seem to be following the approach now set out by the guidelines. Indeed, Roel van Woudenberg could be said to be pushing the issue merely because he disagrees with the removal of the purposive selection criteria (as argued his article cited by EPI).

Selection inventions have always been a hotly debated issue. In another articlecited by EPI, authored by Derk Visser, it is argued that all three criteria listed in the guidelines are inconsistent with recent case law on novelty. As with second medical use inventions (another form of selection invention), critics are keen that an inventor should not “get something for nothing” by salami slicing (or as some-would have it, “sashimi slicing”) the prior art. The boarder question surrounding the EPI recent request for a referral on sub-ranges is whether the EPO is currently striking the right balance on selection inventions. What do readers think?

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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.

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Shifting the burden of proof back to the patentee (T 1299/15)

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In disputes of insufficiency before the EPO, the burden of proof is initially on the side of the party alleging that the patent or application is insufficient. 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 (see T 30/15, 1.4.1) (Article 83 EPC). However, as a recent Board of Appeal decision confirms (T 1299/15), 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.

Legal background: Burden of proof

The established case law of the Boards of Appeal is that each party bears the burden of proof for the facts it alleges. During prosecution, the burden of proof lies initially with the Examiner. An Examiner may not, for example, simply recite common general knowledge against a claim if the common general knowledge (CGK) is disputed. The Examiner must instead provide documentary evidence of the CGK. Similarly, for an insufficiency, novelty or inventive step objection, the burden of proof is initially on the Examiner (T 578/06, r. 13). Notably, a recent Board of Appeal also removed the burden of proof from the applicant to demonstrate the novelty of purity inventions (T 1085/13, IPKat post here).

During opposition, the burden of proof very clearly rests with the opponent, at least initially. This applies to all forms of objection, from novelty to insufficiency. However, it is also possible for the burden of proof to shift back to the patentee in certain circumstances. In T 570/08, for example, the opponent and patentee had both submitted data relating to whether the objective problem had been solved. The opponent's data contradicted that of the patentee. The Board of Appeal was convinced that the opponent's data created sufficient doubt so as to place the burden of proof on to the patentee.

Shifting the burden of proof - T 1299/15

The patent (EP 2191187) at issue in T 1299/15 related to a device and method for renewing buried pipes. The claimed device coats the inside of the pipes with resin and then cures the resin using LEDs. The granted patent claimed a pipe renewer comprising a spiral shaped carrier on which LEDs are arranged in a specified pattern. The pipe renewer also comprises an “adjusting device”, with which the circumference of the spiral-shaped carrier may be adjusted. The claim of insufficiency was directed at the design of the adjusting device.

Spiral

The opponent (Aarsleff, a Danish construction company) argued that the specification did not provide any embodiments of the “adjusting device”. The adjusting device is not shown in the Figures and is mentioned only once in the specification. Furthermore, the opponent argued that there were doubts as to the feasibility of the adjustment device. In particular, how may the adjusting device be attached to the carrier? The specification suggested that pneumatic arms may be used but did not indicate how these arms may be designed so as to be compatible with a spiral carrier varying in width and length.

The Board of Appeal (3.2.05) considered the question of whether the patent (together with common general knowledge) sufficiently disclosed the adjusting device. A key problem faced by the skilled person, the Board reasoned, was how to design the adjusting device so that it could accommodate the complex 3D movements of the spiral windings. The skilled person would also have to design the adjusting device so that the arrangement of the LEDs was maintained.

Importantly, as well as not providing an embodiment in the specification, the patentee did not submit or prove that adjustment devices, such as the claimed device, were already known. The Board accepted that an expert may be able to find solutions for the problems associated with designing the adjustment device. However, the Board doubted whether such solutions could be found without inventive skill.

Therefore, the Board concluded that there were doubts as to whether the invention had been sufficiently disclosed. Furthermore, the Board reasoned, the burden of proof had shifted from the opponent to the patentee. This was because the patentee had failed to provide even one example of an adjustment device as claimed. The patent was therefore revoked for insufficiency.

The legal reasoning in this decision is similar to that of T 63/06, in which the opponent was able to shift the burden of proof with regards to the sufficiency to the patentee. In T 63/06 the Board found that the patentee was relying on only a weak presumption that the invention was sufficiently disclosed. The opponent was successfully able to shift the burden of proof by arguing that the skilled person would have difficult in putting the invention into practice.

The recent case T 1299/15 is similarly a reminder that insufficiency attacks may be applicable even to the mechanical field. As is often the case with insufficiency disputes, the issue of how much work would need to be done by the skilled person (and whether inventive endeavour would be required) was a key issue. Following on from this, if the patentee has not provided an embodiment of the claimed invention, the burden of proof is shifted to the patentee if there is serious doubt that a skilled person could perform the invention without inventive skill.

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When is the “text-intended for grant” not intended for grant? (T 1003/19)

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Recent Board of Appeal decision T 1003/19 poses a riddle: when is it not the intention of the EPO to grant the "text-intended for grant? Before the Examining Division (ED) grants a patent application, they send the applicant a copy of the text-intended for grant (“Druckexemplar”) (Rule 71(3) EPC). The text-intended for grant is normally considered to be, as the name suggests, the text that the ED plans on granting. In response to the Rule 71(3) communication, the applicant approves the text-intended for grant by filing translations of the claims and paying the appropriate fees. If the applicant approves the text-intended for grant, the patent is granted.

T 1003/19 related to an appeal from a decision of the ED to grant an application based on a text-intended for grant in which all but one of the drawings pages were missing. The applicant had approved the text-intended to grant. In most circumstances, it is difficult for a patentee to correct mistakes in a granted patent based on a text-intended for grant that they have approved. As stated in the Guidelines for Examination: “Since the final responsibility for the text of the patent lies with the applicant or patentee, it is his duty to properly check all the documents making up the communication under Rule 71(3)” (H-VI-3.1). It is difficult to argue, for example, that it was not the intention of the ED to grant a patent containing a mistake introduced and approved by the applicant themselves (G 1/10, IPKat post here).

The ED may, on its own initiative, suggest minor amendments to the text it sends to the applicant for approval. However, the Examiner should indicate any amendments they make to the applicant.

Case background

The application (EP 11846831) in T 1003/19 related to a method for recovering gold or silver. The international application on which the EP application was based (WO 2012/076981) contained 7 pages of drawings showing Figures 1-7. Figure 1 on page 1 showed a method of the prior art, whilst the remaining Figures on pages 2-7 related to the method of the invention.

Silver and gold

The applicant did not amend the drawings during prosecution. However, during examination, the ED began referring to only one page of drawings (i.e. page 1/1). The text-intended for grant provided with the Rule 71(3) communication similarly contained only one page of drawings. The applicant only noticed that pages 2-7 of the drawings were missing after the application had been granted. The applicant filed an appeal against the decision of the ED to grant the patent without these drawings.

Unintentional intention

The BA considered that, in the case in question, there was enough evidence demonstrating that it was not the true intention of the ED to grant the text referred to in the Rule 71(3) communication as the “text-intended for grant”.

First, the applicant had not submitted amended drawings. According to Article 113(2) EPC, the EPO must decide on an application based only on text submitted by the applicant.

Second, removing all the Figures relating to the invention, could not be said to be a minor amendment by the ED. The BA considered the missing drawings to be important for determining the scope of the claims (Article 69 EPC) and for providing a method by which the invention could be performed (Rule 42(1)(e) EPC). Why then would the ED have wanted to remove them? The BA also noted that the Rule 71(3) communication (or any previous communication from the ED) did not explicitly indicate that any of the drawing pages had been deleted.

The BA concluded that the document provided as the text-intended for grant did not correspond to any amendments either requested by the applicant or explicitly suggested by the ED. The BA argued that it was therefore clear that the text provided as the text-intended for grant was not, in fact, intended for grant by the ED (r. 2.4.4). In a nice bit of legal reasoning, the applicant could therefore not be said to have approved the text for grant (by paying the fees and filing translations of the claims), because no text-intended for grant had been provided.

The BA concluded that the applicant had not approved a text-intended for grant. The BA therefore set aside the decision to grant the patent.

So, in answer to the riddle, when is the text-intended for grant not intended for grant: when the document provided as the "text-intended for grant" contains significant amendment that 1) potentially render the claims non-compatible with the EPC, 2) were not submitted by the applicant and 3) are never explicitly described to the applicant by the Examining Division.

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