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.

Double cat

With regards to the unitary patent, a number of questions regarding dual protection arises. First, do the national provisions regarding double patenting under the EPC extend to unitary patents? In Germany, there is a controversial discusion in the doctrine, but a consensus seems to emerge that Article II § 8 IntPatGÜ does not apply to unitary patents, because unitary patents are not "European patents" in the sense of said article. In the UK, similar arguments would seemingly apply to Section 70(2) Patents Act, which also speaks of "European patent" - does this extend to a "European patent with unitary effect"?


Secondly, how should the relationship between "duplicate" unitary and national patents be regulated? The European legislator has not explicitly addressed the issue in Regulation 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, However, Recital 26 of Regulation 1257/2012 suggests that

Patent applicants should remain free to obtain either a national patent, a European patent with unitary effect, a European patent taking effect in one or more of the Contracting States to the EPC or a European patent with unitary effect validated in addition in one or more other Contracting States to the EPC which are not among the participating Member States.

While the language is not crystal clear, it seems evident that the legislator believes the unitary patent, the EPC "bundle" patent and national patent are alternatives ("either ... or"), i.e., they should not be obtained for the same invention. Recital 26 does not explain anything, but rather orders ("should") that the applicant should chose at the earliest possible time whether to obtain a European "bundle" patent, a European patent with unitary effect or a national patent. It has been argued that such Recitals should have binding effect on the Member States, which seems questionable to me (see also Chudziak in GRUR 2015, 839, 843).

In its proposal for the legislation implementing the Unified Patent Package in Germany, the German Ministry of Justice suggests a compromise: double patenting vis-a-vis unitary patents is not prohibited, but if an action regarding a unitary patent for the same invention is pending before the Unified Patent Court or is made pending during the national proceeding or has been finally adjudicated by the UPC, then the German court will dismiss the action brought based on the national patent insofar as the patents concern the same invention, provided that the defendant raises the objection before the beginning of the oral hearing (see proposed Article 18 Gesetz über internationale Patentübereinkommen, p. 6 of the linked PDF).

The IPKat commented a few days ago on a recent, as yet unpublished, decision of the EPO Board of Appeal, in which the Board considered that Article 60 EPC provided basis for prohibition of double patenting. This prompted a few comments, including one apparently made by Derk Visser, a name which will be well known at least to all EQE candidates. Derk's comment is worth reproducing, if only for the benefit of those who do not keep track via the IPKat's comment feed. He writes:

"The issue of double patenting was extensively discussed in the preparatory documents of the EPC 1973. Since double patenting was regarded as an issue relating to patents, not to patent applications, and the EPC did not relate to the maintenance of patents, it was left to the contracting states to permit or prohibit simultaneous protection (Travaux Préparatoires 1969, BR/7 e/69, p. 8 point 17). The Inter-Governmental Conference in 1972 endorsed this view, a large majority of the interested circles being in favour of this (BR/168/72). As a consequence, the EPC does intentionally not contain a prohibition on double patenting.

The board of the recent decision T307/03 was probably unaware of the above (see reason 2.3 of the decision). Hence, its attempt and probably any attempt, to base a prohibition of double patenting on the present EPC results a contortion of the law.
Use of Art.60 as a basis for prohibiting double patenting in the recent decision T307/03 is legally not sound, because the provision relates to who has the right to a patent, not to the constitution of the right, as already stated in the first comment of this blog. The same applies to Art.58, which relates to who may file.

Art.125 cannot be used to introduce a prohibition on double patenting in the EPC, because the text of the provision makes abundantly clear that it relates to procedural matters only, not to substantive issues such as double patenting (see also T587/98 r.3.6). The statement on double patenting in relation with Art.125 in the Munich Conference, cited by Erik in the above contribution, shows that the UK delegation could benefit from some training in the EPC.

Art.139(3) is not intended as a general prohibition on double patenting. Its purpose is to avoid that for a single invention both a European and a national patent is granted. It was intended as a first step towards abolition of national patents (Travaux Préparatoires 1962, 3076/IV/62-D, p. 114a).

The sections C-IV,7.4 and C-IV,9.1.6 of the Guidelines are no basis for refusing an application on the ground of double patenting (T587/98 r.3.5 and 3.6).
The statement in decision G1/05 r.13.4 regarding a refusal on the ground of double protection as being non-objectionable, appears to be an oversight on the part of the EBoA.

The legislator clearly missed the opportunity of the EPC2000 to introduce the prohibition in the law. In spite of the clear statements of the legislator that double protection should be dealt with at a national level, most national laws do not have a provision to this end. It is surprising that such a broadly supported principle has not been codified at both international and national level. Hence, we will probably have to put up with case law stretching provisions far beyond the intention of the legislator."

The IPKat thanks Derk for his contribution, and wonders what led this particular Board to arrive at their apparently unsound line of reasoning, particularly when they had nearly 2 years to consider it. Is there more to it than meets the eye, or is this simply another 'rogue' decision that will be quietly swept under the carpet (or, perhaps, overturned by the Enlarged Board) in due course?

It is generally thought at the EPO that it is a Bad Thing to have two patents granted to the same applicant to cover the same invention.  This is known as Double Patenting, and there are provisions under national law to prevent this from happening (section 18(5) of the UK Patents Act 1977, for example).  Unfortunately for the EPO (and as confirmed by T 587/98), there is no such provision in the EPC.  Or so the IPKat thought.