Shooting gallery

We are all familiar with the quote “Football is a simple game. Twenty-two men chase a ball for 90 minutes and at the end, the Germans win. Turns out the quote has an author, by the way, if Wikipedia can be trusted on this one.

Well, the same could be said of public prior use as a patent invalidity defense. It is a simple game. The alleged infringer (or the opponent) collects bits and pieces of evidence for months, and at the end the court (or the EPO) says the patentee wins.

This is because no matter how how thorough and careful you are when documenting a public prior use story, it seems that you are almost never thorough and careful enough.

OK, this is oversimplified of course. But I have already reported on how severe judges can be with evidence of public prior use. And the Filmop decision that I talked about last week is another telling example of how a public prior use story can be wiped out, piece by piece, like in a shooting gallery.

This shooting gallery was patented in 1914 – a year sadly famous for many other shootings.

In my previous post, I explained that the FR’204 patent to Concept Microfibre was revoked for lack of inventive step on appeal. But before getting there, the court first discarded allegations of lack of novelty in view (among others) of two public prior uses.

The first public prior use was a so-called Puli-Srub washcloth, which was precisely the allegedly infringing product. According to the defendants, this product was already marketed by Korean companies B&H and Daego, starting from the end of 2006.

The second public prior use was a so-called MN Heavy washcloth, supposedly marketed by Swedish company MN Produkter Ab since 2006.

The FR’204 patent was filed in January 2008.

Regarding the Puli-Srub product, we can gather from the decision that the following evidence was offered:

  • one or more affidavits from the CEO of B&H, with a sample of washcloth attached, concerning sales to a company called Lilleborg in 2006;
  • an affidavit from the CEO of B&H, with a sample of washcloth attached, concerning sales to another (Danish) company called Stadsing, together with an affidavit from Stadsing itself;
  • screenshots from the 2006/2007 Stadsing catalogue;
  • invoices from Daego to Stadsing dated 2006-early 2007;
  • emails dated 2007 between B&H and Lilleborg;
  • emails dated 2005 between Daego and Filmop (one of the alleged infringers in the lawsuit);
  • invoices from Daego to Filmop as well as travel documents dated 2006;
  • affidavits from two employees of DME (the other alleged infringer in the lawsuit, a subsidiary of Filmop).

Quite an impressive list, right? Uh, no, in fact the court was not impressed at all.

First, the court remarked that the B&H affidavits, “drafted more than six years after the facts, are not confirmed by contemporaneous objective evidence”. Further down, they noted that some of the other affidavits were drafted by “employees of DME, a party to the present proceedings”.

I think the bottom-line is that the court does not really trust affidavits. Those signed by employees of a litigant are inherently suspect, while those signed by third parties are also deemed untrustworthy if they relate to facts which took place in the distant past. Such mistrust is understandable but, on the face of it, somewhat unfortunate. Testimonies should be given serious consideration – even though they should of course be carefully examined. Also, they are necessarily prepared only when litigation arises, as there is no need for them beforehand. But as will appear below, in this case there were probably a number of objective reasons for not simply trusting the affidavits.

So, it seems that affidavits are only really taken into account if they confirm non-testimonial evidence on the record.

Here, the non-testimonial evidence was deemed inconclusive.

For instance there was no clear evidence that the washcloth samples were the same as those marketed from 2006. Besides, the packing list which was provided regarding B&H’s sales to Lilliborg was only dated 2008.

The Stadsing affidavit was altogether ignored as it was in English and untranslated. The screenshots of the Stadsing catalogue were said to be less conclusive than an original version or even a photocopy, and were also said to be illegible – which certainly does not help.

The Daego invoices contained product references which could not be directly linked to the Puli Srub product. And the various emails on file concerned various projects, labeling or technical issues, but not actual sales.

Regarding the alleged sales to DME / Filmop, the court primarily relied on the patentee’s evidence, namely the infringement seizure dated July 2012. Based on the bailiff’s report and on the Filmop catalogues, the court held that the Puli Scrub was placed on the market only in 2010. DME and Filmop’s argument was that the same product was previously marketed under the name Micro Activa. But the court concluded that it was a different product, as it was still advertised in the catalogue in 2010 and 2011 beside Puli Scrub. Furthermore, based on the 2007 catalogue, it appeared that the Micro Activa washcloth was made of microfibers only – and therefore was not according to claim 1 of the patent (as reproduced in the previous post).

Next, regarding the MN Heavy prior use, we can gather from the decision that the following evidence was offered:

  • printouts of the MN Produkter website made by a bailiff in 2015;
  • a letter from the CEO of Decitex dated 2015, further to a judicial request made by the appellants, regarding the provision of a sample of MN Heavy from MN Produkter to Decitex;
  • emails dated 2008 and 2016 between the CEO of Decitex and MN Produkter’s commercial manager.

Starting with the website printouts made by the bailiff, the nullity claimants apparently relied on the mention “copyright 2006” on the website to argue that the content of the 2015 website was the same as that of the 2006 website. The court replied that this mention was no evidence at all. In addition, an interesting argument was made based on the photograph dates of the MN Heavy product on the website, which were apparently earlier than the patent filing date.

In this respect, the court relied on a counter-report filed by the patent proprietor, which showed that an online photograph date can easily be modified by editing the properties of the file. Therefore, the photograph dates found by the bailiff in 2015 were not necessarily the exact dates at which the photographs were taken. And, most importantly, what mattered was the date at which the photographs were posted online – which remained unknown anyhow.

Turning now to the CEO of Decitex, he stated that he received a sample of MN Heavy when he visited MN Produkter in the summer 2008. This was after the filing date of the patent, but he added that the product was on the market since at least January 2007. The court noted that the circumstances of the supply of the sample were unclear, and doubted how the CEO could possibly be certain that the 2008 sample corresponded to a product on the market since 2007. On a more formal (if not formalistic) note, this person did not testify as an individual but rather as the CEO of Decitex (since the judicial request to which he replied was addressed to the company itself). And he joined Decitex only in 2010, namely two years after the reported supply of sample by MN Produkter.

The 2008 emails between Decitex and MN Produkter were not persuasive as it can be derived from them that MN Produkter ordered washcloths from Decitex, and not the other way around.

Finally, the 2016 emails were also discarded. Although we do not know their detailed contents based on the decision, it seems that they made reference to an old page of the MN Produkter website, available on the web.archive.org website. The court stated that this is:

an archive service operated by a private entity without any legal authority and the operation conditions of which are unknown, which does not make it possible to consider that the date or content of the archived webpage are undeniably proven.

It is interesting to make a parallel with the EPO’s policy in this respect. Although the archive.org website was originally considered in some board of appeal decisions as an insufficiently reliable archive source (see e.g. T1134/06), more recent decisions seem to consider the website as trustworthy (see e.g. T286/10) – although this is also a matter of which standard of evidence the Board decides to apply in each case.

In section G-IV, 7.5.4 of the Guidelines for examination, it is now stated that the archives on this website “are admittedly incomplete, but this does not prejudice the reliability of the data that they contain”.

It is likely that the court, in the present case, was not fully briefed on how archive.org works and why it can be considered as a reliable source of information. If they had been, maybe their approach would have been more similar to the EPO’s.

Apart from that, the court’s way of dealing with public prior use allegations does not strike me as markedly different to the EPO’s. According to the latter, the date, subject-matter and circumstances of the public prior use are to be established in a precise manner (Guidelines for examination, G-IV, 7.1). Again, if there is any loophole, inconsistency, or lack of reliability in the evidential record, the conclusion is generally that the public prior use is not adequately proven.

This is harsh on opponents or litigants who happen to know (or believe) for a fact that the public prior use allegation is true and relevant but have a hard time collecting evidence. But this high standard is the price to pay to prevent patents from being revoked due to unreal or made up prior art.


CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 1, September 27, 2016, Filmop Srl & SASU Distribution de Matériel Européen v. SAS Concept Microfibre, RG No. 14/18000.

Clean sweep

There are at least three interesting aspects in today’s decision, as well as a sort of infuriating one. The interesting points are limitation, public prior use and inventive step. The infuriating one is a mistake made by the court, which stumbled over dependent claims – despite vocal criticisms of this type of mistakes made by various commentators over the years.

But before I address these points in turn, a few words on the background. The claimant in this case is Concept Microfibre, a French company specialized in microfiber textiles, as its name suggests. They own two French patents filed on the same day, FR 2926204 (FR’204) and FR 2926205 (FR’205).

In 2012, Concept Microfibre sued another French company Distribution de Matériel Européen (DME) as well as its Italian mother company, Filmop, for infringement of the two French patents. Further to the classical nullity counter strikes, the Paris Tribunal de grande instance (TGI) revoked claims 1, 2 and 3 of FR’205 (which were relied upon by the patent proprietor) in its judgment dated July 3, 2014; but the other patent FR’204 was upheld, and the defendants were found liable for infringement.

They appealed, which leads us to the judgment of September 27, 2016 by the Paris Cour d’appel.

On appeal, the patentee did not fight the revocation of claims 1, 2 and 3 of FR’205 by the TGI. So, this was quite easy to deal with for the appeal judges, and this part of the TGI decision was confirmed. What was more challenging for the court was to handle the other patent FR’204.

The first challenge was that the FR’204 patent was limited during the appeal proceedings, or more precisely at the onset of the appeal proceedings. The appeal was lodged on August 27, 2014, and a request for limitation of FR’204 was filed less than 2 months later, on October 16, 2014, at the INPI (French patent and trademark office). The limitation was accepted by the INPI on January 9, 2015.

The limitation consisted in combining claim 1 with claims 2 and 4.

The alleged infringers claimed that this limitation was invalid, because the limitation was requested “in order to adapt the right so as to escape a looming revocation” (uh, yes, that’s kind of the whole point of limitation proceedings) “and so as to harmonize it with the features of the products that they market” (right, too bad the patentee did not add a feature clearly not present in the alleged infringing products).

The alleged legal basis for the invalidity of the limitation was the legal principle “fraus omnia corrumpit“.

As much as I like Latin phrases, especially when I happen to know what they mean, the argument was clearly a long shot. The court easily concluded that the limitation was neither fraudulent nor improper, and that the defendants had had enough time to challenge the validity of the limited claims.

What I do find puzzling in this limitation case, though, is why the claims were limited in the first place. Usually, claims are limited on appeal when the patent is revoked in first instance (see a recent example in the Orange v. Free litigation). But in this case the patent was upheld in first instance.

Did the appellants immediately file submissions together with their appeal of August 27, 2014, and did these submissions contain new arguments which appeared more serious and threatening to the patentee? It is possible, but we cannot know for sure as the file wrapper is not part of the public record.

As far as I can tell, no new prior art was cited on appeal.

On the other hand, it seems that the appellants developed a proper argumentation of lack of inventive step, which was not the case in first instance.

In first instance, it looks like the defendants were so confident with their lack of novelty attack that they did not really focus on inventive step. Thus, the TGI simply discarded the inventive step attack by noting that:

regarding the first part of the characterizing portion [of the claim], the defendants did not make any observation on its inventive character and on the approach that the skilled person would have to make this composition and its particular structure. 

So I can only speculate that a convincing argument of lack of inventive step was newly introduced very early on appeal, which led to the limitation – unless readers have other ideas?

Anyway, the proprietor may actually have underestimated the new argument in spite, as the main claim as limited was ultimately found not to be inventive by the court!

The claim at stake was the following:

Cleaning cloth, in particular for cleaning the floor, intended to be carried by a broom, said cloth having a cleaning surface intended to come into contact with the floor, said cleaning surface comprising a textile composition made of polyolefine, and a textile composition made of hydrophilic microfibers, characterized in that:

– each of said textile composition made of polyolefine and said textile composition made of hydrophilic microfibers comprises a thread extending towards the cleaning surface, 

– the titer of the thread of said textile composition made of polyolefine is greater than the titer of the thread of said textile composition made of hydrophilic microfibers, 

– the first textile composition defines scrubbing areas and the second textile composition defines absorption areas, and

– on the cleaning surface, the textile composition made of polyolefine is slightly below the textile composition made of hydrophilic microfibers.

Brooms are not just useful for scrubbing and absorbing fluids.
Brooms are not just useful for scrubbing and absorbing fluids.

The court relied on an EPO-like approach to assess inventive step, in particular with respect to the definition of the closest prior art:

the closest prior art which is selected must be relevant, that is it must correspond to a similar use and must require the fewest structural and functional modifications to arrive at the claimed invention; said closest prior art must therefore have the same purpose or effect as the invention or at least belong to the same technical field as the claimed invention or a closely related field. 

The court identified the technical problem addressed in the patent as improving the efficacy of cleaning cloths both for scrubbing dirt and for absorbing fluids, owing to the two textile compositions. Then, the court identified three relevant documents which could represent the closest prior art, without really singling out one among the three. They all belonged to the same technical field although their purpose was slightly different (namely, the prior art cloths were intended for sweeping, not scrubbing).

The court then held that all claimed features could be found in various prior art documents. As far as I understand:

  • Two Korean documents both taught two textile compositions, one made of hard polyolefine fibers (suitable for scrubbing) and one made of hydrophilic fibers (suitable for absorbing fluids), the titer of the former being greater than the titer of the latter.
  • A PCT application disclosed distinct areas, with fibers made of a single thread extending towards the cleaning surface.
  • Finally, a U.S. patent disclosed a cloth made of fabric comprising thread loops of different lengths depending on their purpose (absorption of dirt for the longer loops and absorption of liquid for the shorter ones).

The court did not explicitly state that all these documents could be combined due to a “partial problem” approach, but this is probably what they more or less had in mind. At any rate, they noted that the claimed invention:

does not contravene any prejudice, does not represent any breakthrough relative to the methods already taught, does not overcome any technical difficulty and does not provide any unexpected or surprising result. 

On the face of it, and with the important caveat that I have not examined the prior art nor the submissions of the parties (which are not public), this conclusion seems to make sense.

On the other hand, what makes absolutely no sense is that one of the dependent claims was then revoked for lack of novelty:

Claim 5 recites that the polyolefine is polypropylene, but this claim lacks novelty, since claim 1 of Korean patent 10-0718962 already discloses fibers areas made of polypropylene. 

It is unfortunately relatively common for our judges to get dependent claims wrong. Here, the court apparently focused only on the features contained in claim 5, without realizing that these features should be read in combination with those of claim 1. If claim 1 is novel, then claim 5 is also novel. It can at best lack inventive step, like claim 1.

By the way, the frequency of this type of error regarding dependent claims is probably a factor to be taken into account by patent proprietors when determining their litigation strategy. If you know that your main claim is weak, it is probably better to amend it by way of a limitation rather than assume that a stronger dependent claim will survive if the main claim is revoked. Of course, that can happen, but you’d better not count on it.

As mentioned at the beginning of the post, the way the court handled the public prior use defense was also interesting, I will try to address it in another post.


CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 1, September 27, 2016, Filmop Srl & SASU Distribution de Matériel Européen v. SAS Concept Microfibre, RG No. 14/18000.

Wishful blogging

It is that time of year again when wishes are made for the twelve months to come. Beyond the obvious but sincere wishes of peace, health and happiness which are hereby expressed to all readers of this blog, many of us certainly have a number of IP-oriented wishes as well.

One wish in particular was repeatedly uttered during the latest general assembly of the CNCPI (the French patent attorney bar), including by our newly elected chairwoman: that the relationship between the patent attorney profession and the INPI (the French patent and trademark office) should improve. A reasonable desire indeed.

There are many issues that come into play in this respect.

One which I guess should theoretically be quite easy to address is official communication from the INPI to patent attorneys – and all other stakeholders for that matter.

Down to the future.
Down to the future for celebrating 2004.

By way of example, I have recently come across a new version of the INPI patent guidelines by chance. Unless I missed something – which of course is very possible – I am not sure any communication has been made on this topic. As far as I know, the previous version of the guidelines was dated 2012.

As it seems to me that the issuance of new guidelines can be of interest to readers, here is a brief report on what I have found out.

The new guidelines are apparently divided into three parts:

The first part and the second part correspond to the previous guidelines which used to be in a single part. As for the third part, it seems to be entirely new.

The first part encompasses the filing, examination, publication, refusal, withdrawal or grant of patent applications. The second part addresses renewal fees, fee reductions, validity opinions, supplementary protection certificates (SPCs) and public inspection of files.

As the INPI did not issue any comment as to which modifications were made in the guidelines, I performed a quick side-by-side comparison on my own. The underwhelming conclusion is that extremely little has changed, except the layout.

The main change that I have identified relates to filing practices: in-person filing must be made in Paris only (and no longer in regional offices), the sole fax number that applicants are supposed to use has changed, and e-filing possibilities have been extended further to the implementation of the INPI’s own web-based system next to the EPO-originating filing system, which is still active.

Other than that, the content of parts one and two looks almost identical to the content of the 2012 guidelines. In particular, the section on limitation proceedings is still marked as “to be published” – although it has now been eight and a half years since limitation proceedings were introduced into French law.

One of my favorite clichés is the Sherlock Holmes one of the dog that did not bark.

And, to some extent, what has not changed in the guidelines is quite interesting.

For instance, in section C-VII-1.6 on patentability of computer programs, it is first recalled that computer programs “as such” are not patentable inventions. But then come the two following paragraphs:

If a computer program is capable of producing, when it is implemented on a computer, a supplementary technical effect which goes beyond […] normal technical effects which consist in making the computer work, it is not excluded from patentability. 

Such a technical effect which may impart technical character to a computer program can reside, for instance, in the command of an industrial process, in the processing of data representing physical entities or in the internal functioning of the computer itself or of its interfaces under the influence of the program. It can, for instance, impact the efficiency or security of a process, or the management of necessary computer resources, or else the rate of data transfer in a communication link making it possible to solve a technical problem. 

This was likely adapted from what has now become section G-II, 3.6 of the EPO guidelines for examination.

Two paragraphs down, the following is added:

In such cases, the following formulations are accepted: 

– A computer program comprising portions / means / program code instructions for implementing the steps of the process according to claim X when the program is implemented on a computer. 

– A computer program product comprising portions / means / program code instructions stored on a support usable in a computer, comprising: computer-readable programming means for performing step A, computer-readable programming means for performing step B, computer-readable programming means for performing step C, when the program runs on a computer. 

Again, nothing out of the ordinary here for most European practitioners.

What can be surprising though, is the confrontation of these rules contained in the May 2016 guidelines and some statements contained in the 2015 ruling by the Paris Tribunal de grande instance in the Orange v. Free litigation.

It is my understanding that the court’s position in Orange was that all software claims are unpatentable, regardless of how technical or non-technical the software is. The court even openly criticized the grant of software patents by the EPO in the following terms:

It cannot be validly argued, as the sole defense to deny nullity of these two claims, that the practice of the EPO is to admit claims to programs for computers by calling them ‘program-products’.

In fact, it cannot be accepted that a mere trick of language would make it possible to grant patents contra legem. Indeed, the grant of patents to computer programs, even if they are called program products, is not supported by any statute or by any difficulty of interpretation of the EPC, and on the contrary those are clearly excluded as such from patentability.

Therefore, one is led to believe that the Orange v. Free case law has not been endorsed by the INPI and that the patent office’s practice regarding computer-implemented inventions remains the same. Good news for software applicants!

By the way, an appeal is still pending in Orange v. Free, but the computer program claims have now been deleted from the patent in suit, as reported in a previous post. Therefore, the Cour d’appel is very unlikely to revisit this issue in its future decision.

A second striking example of what has not changed in the guidelines is the section on SPCs. SPCs are probably one of the most challenging and moving areas of patent law. Almost every year, there are several rulings by the CJEU which have practical repercussions on SPC practice. Yet, no new reference to CJEU case law has been added to the guidelines, so that the most recent CJEU case referred to in the guidelines is still C‑482/07 (AHP Manufacturing) of September 3, 2009.

By way of anecdote, it is also mentioned in this section that there are 27 member states in the EU. Too bad for Croatia, which became the 28th member state in 2013. Well, maybe that part does not need to be amended after all, as there will soon be 27 member states again anyway.

On the other hand, the part of the guidelines which is definitely up to date is the third one, as it is entirely new. It deals with all registers, that is not only the patent national register but also the trademark and design registers, as well as less commonly used registers, such as the software register or the semi-conductor product topography register.

In fact the award for the most exotic (and, I must admit as far as I am concerned, unheard of) register goes to… the register for industrial and commercial awards, which was set up by a law dated August 8, 1912.

Anyway, this new part is a valuable addition to the previous guidelines. It is certainly useful for all users of the system to have a single document handy where all relevant legal bases are quoted and summarized.

As a side note, the legal bases mentioned in the third part of the guidelines include those on the once controversial SVA-SVR law. SVA stands for “silence vaut acceptation” (“silence means acceptation“) and SVR stands for “silence vaut rejet” (“silence means refusal“). This recent law gave rise to a number of practical concerns, which finally led to its partial cancellation by the Conseil d’Etat (the administrative supreme court). However, some SVA-SVR principles remain applicable to the INPI.

Until those are properly taken into account in the first and second parts of the guidelines, I think the notice issued by the INPI in April 2016 should still be useful.

Again, best wishes to all for 2017, including the INPI! 

Stay ordered in a rush

Today’s post will remain delightedly short – for once – as I would just like to update readers on the currently hot topic of “biological patents” (this expression being a shortcut of course). 

At the end of a recent post co-penned with Lionel Vial, I briefly mentioned a notice by the European Commission regarding the so-called biotech Directive 98/44/EC. The Commission took the view in this notice that the EU legislator’s intention in the Directive was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes.

This view by the Commission is contrary to the position recently taken by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13 of the Tomato and Broccoli sagas. The final words in the post were that patentability of biological materials in Europe is currently on moving grounds, and that more episodes of this developing story were to be expected.

No, this is not an illustration of a EU commissioner. I was just wondering whether this creature was obtained through an essentially biological process.
No, this is not a picture of a EU commissioner. I was just wondering whether this creature was obtained through an essentially biological process.

However, what Lionel and I did not expect is that the new developments would be so quick.

According to a notice from the EPO dated November 24, 2016 (but actually published only on December 12), “follow-up measures” further to the Commission’s notice are under discussion with representatives of the member states of the European Patent Organisation.

In the meantime, the president of the EPO has decided that all proceedings before examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process will be stayed ex officio.

This notice from the EPO does come as a surprise.

Clearly, the notice from the European Commission has no binding effect on the EPO. The EPC is a non-EU international agreement. Rule 26 EPC specifies that the biotech Directive shall be used “as a supplementary means of interpretation” when it comes to European patent applications and patents concerning biotechnological inventions. But there is no organic link between EU institutions and the EPO. Thus, the EPO or the Enlarged Board of Appeal may very well have a different interpretation of the biotech directive than the EU institutions.

On the other hand, since the majority of the EPC contracting states are members of the EU (and this is supposed to remain the case in the future, Brexit notwithstanding), some consistency between the approaches taken by the various institutions involved would be highly desirable.

Gossip has it that the president of the EPO is looking for any opportunity to throw tomatoes (or broccoli) at the Enlarged Board of Appeal – things between them being what they are. Now, gossip is seldom reliable; but is it conceivable that the EPO management might currently show less deference to the Enlarged Board’s views on a number of topics than in the past?

What will happen next is anyone’s guess – though of course the stay of proceedings does not bode well for biological product patents or applications.

  • Will the EPO align its practice on the Commission’s notice? If so, how? Will an amendment of the Implementing Regulations be proposed?
  • Shouldn’t the EPO wait first for the Court of justice of the EU to have its say on the matter, one way or another? After all the Luxembourg judges may not necessarily share the same interpretation of the Directive as the Commission.

The bottom-line is that the fate of products obtained by essentially biological products is becoming again very much a matter of public policy.

In this respect, it is quite interesting to note that France, sometimes mocked by its neighbors for its handling of patent matters, was first to act before the Commission’s notice, as reported in the earlier post.

Finally, as explained by Lionel in the post, most interesting is the definition of which processes are essentially biological and which processes are not. Various stakeholders have vastly different views in this respect. Is it possible that, on this issue as well, the Boards of Appeal’s position could at some point of time be at odds with that of member states or EU institutions?

Partial opposition

Generally, opposition proceedings are an all-out war, and only the death of the patent can fully satisfy the opponent. But in rare occasions, one may come across an opponent who turns out to be less bloodthirsty, as in the recent case T 1264/12.

On the one hand, this decision is quite underwhelming, as the “reasons” section is remarkably short. But on the other hand, it seems interesting to have a closer look at the case, as it provides a rare example of a partial opposition.

The patent at stake is EP 1625093, owned by Bluestar Silicones France. In its granted version, the patent contains 21 claims.

Claim 1 is directed to a method of draining a flexible container containing a viscous product. Claims 2 to 10 depend on claim 1. Claim 11 is directed to a kit for carrying out the method according to any one of Claims 1 to 10. And claims 12 to 21 depend on claim 11.

The patent was opposed by a Finnish company named Oy Fluid-Bag Ab.

Rather unusually, the opposition only concerned claims 1-3, 8-13 and 21. As a side note, the opposition was filed in 2008, for a final decision issued 8 years later. This means that a partial opposition does not mean a speedy one…

Looking more closely at the claim structure in the patent, the following can be noted:

  • Method claims 4-6, which were unopposed, depend on claims 1-3 and form a group in which use is made of a draining device which notably comprises a pressure member having a piston, and a drainage vessel.
  • Method claim 7, which was likewise unopposed, also depends on claims 1-3 and forms another group of its own, in which use is made of a draining device which notably comprises at least one pressurizable drainage vessel, which is pressurized by means of a pressure fluid.
  • Method claim 8, which was opposed, also depends on claims 1-3 and forms another group of its own, in which use is made of a draining device comprising a pressure member having at least one roller and one counter-roller element.
  • Method claims 9-10, which were opposed, depend on claims 2-8 and are therefore relevant for the various groups mentioned above.
  • A similar structure applies to the kit claims. In particular, claims 14-16 (unopposed) depend on claims 11-13 and calls for a piston and a drainage vessel; claim 17 (unopposed) recites a pressurizable drainage vessel; and claim 21 (opposed) depends on claims 11-13 and notably recites a roller and a counter-roller element.

In summary, the patent seems to relate to three mutually exclusive embodiments, which I would call the piston embodiment, the pressurizable vessel embodiment, and the roller embodiment. Some claims apply to all three embodiments, while others apply specifically to one of those. It seems that only those claims which are relevant for the roller embodiment were opposed.

A roller (coaster) embodiment.
A roller (coaster) embodiment.

This is in fact confirmed by a helpful indication in the statement of facts and arguments of the opposition: “the opponent reserves the right to raise an objection against the claims if amended, on the basis of the description, to any such form that the draining of the container using roller(s) (corresponding to Figure 3 of the opposed patent) is readable from the claims“.

It seems that the opponent was not prepared to spend time and resources to challenge other embodiments than the one which obviously was of interest to them – which makes perfect sense. As a side note, in some cases it may even be beneficial for an opponent if a patent partially survives and lies in the way of third party competitors who may be interested in further technical solutions.

In first instance, the patent was maintained in amended form. But the amendment was apparently not good enough for Oy Fluid-Bag, who filed an appeal.

According to the appeal decision, the sole request of the patentee on file contained four independent claims:

  • One method claim corresponding to the combination of claims 1, 2, 4 and 9 as granted.
  • Another method claim corresponding to the combination of claims 1, 2, 7 and 9 as granted.
  • One kit claim corresponding to the combination of claims 11 and 14 as granted.
  • Another kit claim corresponding to the combination of claims 11 and 17 as granted.

In other terms, the patent was restricted to the piston embodiment and the pressurizable vessel embodiment. The roller embodiment was no longer covered.

The appeal decision, which as I said is very short, does not explain why these amendments were introduced. In order to understand what happened, we need to review the minutes of the oral proceedings.

It turns out that the main request of the patentee was originally that the appeal should be rejected and thus that the patent be maintained in the same form as in first instance. However, the Board found that kit claim 9 of this main request lacked inventive step.

An auxiliary request No.2 was then discussed, but kit claim 9 of this request was also found to lack inventive step.

At this point, the patentee had to fall back on auxiliary request No.3, restricted to the piston and pressurizable vessel embodiments. The appellant objected that one of the product claims was not fully clearly restricted to these embodiments, and the patentee thus filed an amended request on the spot to overcome the issue. This new request was admitted into the proceedings.

Then, the patentee withdrew all the other requests, presumably so as to avoid any negative statement from the Board in the written decision on some of the granted claims. This is why the decision is so short and focuses on the roller embodiment-only request.

Now, here (finally) comes the Board’s assessment of this final request, in my own unofficial translation:

Since the extent of the opposition is limited to claims 1-3, 8-13 and 21 of the patent as granted, the claim combinations mentioned above result in claimed subject-matter which was not challenged by the opposition (rule 76(2)(c) EPC). 

The subject-matter of the above-mentioned claims are not the subject of the opposition (see in this respect G 9/91 (OJ 1993, 408), item 10 of the reasons) and there is no procedure under articles 114 and 115 EPC relating to these non-challenged elements. Therefore, the Board has absolutely no power to rule on them, which also necessarily applies to claims which include their subject-matter.

The appellant confirmed this position of the Board during the oral proceedings. The Board can only maintain the patent with these claims (volenti non fit injuria). 

For the benefit of continental Europeans like me, the latter phrase seems to be not only a fancy display of Latin but also an actual legal concept under common law (albeit within a quite different context).

I do not doubt that the Board reached the correct decision in not reviewing the new main request.

That said, the founding decision G 9/91 quoted above does leave some room for examining claims other than those which were opposed.

The first sentence of the Enlarged Board’s headnote is the following:

The power of an Opposition Division or a Board of Appeal to examine and decide on the maintenance of a European patent under Articles 101 and 102 EPC depends upon the extent to which the patent is opposed in the notice of opposition pursuant to Rule 55(c) EPC.

But then the second sentence goes like:

However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information.

For instance, in T 525/96, only two process claims 13 and 14 were opposed. In an auxiliary request, these process claims were deleted, but a product-by-process claim, referring to the same process, remained. The Board examined whether this unopposed product-by-process claim was allowable, based on the above principles set forth in G 9/91, and came to a negative conclusion, leading to the rejection of the corresponding auxiliary request.

Therefore, the Board in T 1264/12 probably theoretically had the power to examine the unopposed piston embodiment and pressurizable vessel embodiment claims, if their validity was prima facie in doubt.

We can safely assume that this was not the case. In particular, the opponent had probably not submitted any prior art relevant with respect to other embodiments than the roller one which they were concerned with. Besides, the opponent apparently did not object to the third-auxiliary-turned-main request.

But strictly speaking, the absence of prima facie invalidity might be a missing step in the Board’s reasoning.


CASE REFERENCE: T 1264/12, Board of Appel 3.2.07, September 22, 2016, Oy Fluid-Bag Ab v. Bluestar Silicones France.