Nexus: referral to the EBA

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?