A new hope

Biotech and IT are complex areas, not only on the technical standpoint, but also in terms of patent law.

Reading about U-turns on plant patents or about the tricky transposition of the EPO’s software concepts into French national practice, one could be tempted to once and for all switch DNA sequences and algorithms for braking mechanisms and meat mincers. But one might be wrong. It turns out that even the most difficult of topics are not hopeless.

Today, Aujain Eghbali tells us about a new hope for patent software applicants. All sci-fi geeks will agree that a new hope can be a great beginning. But in order to find out what today’s hope is really about, you may have to read through the entire post.

Aujain reports.

Decision T 1227/05 (Circuit simulation I/Infineon Technologies) of December 13, 2006 has become a major reference for EPO examiners who need to assess the inventive step of computer-implemented mathematical methods.

The invention in Infineon related to the simulation of a circuit subject to 1/f noise. After establishing the principle that, beyond its implementation, a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method, the Board chaired by Mr. Steinbrener considered that:

  • The simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose.
  • The metaspecification of an (undefined) technical purpose (simulation of a “technical system” as in original claim 4), on the other hand, could not be considered adequate, as the purpose of a claim in this context is not to quote the technical character requirement, but to identify clear features supported by the description which meet that requirement (Article 84 EPC).
  • A circuit with input channels, noise input channels and output channels the performance of which is described by differential equations does indeed constitute an adequately defined class of technical items, the simulation of which may be a functional technical feature.
  • Specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product.

Based upon these considerations, most EPO examiners seem to nowadays apply the following standard:

If claimed mathematical steps form a method functionally limited to an adequately defined technical purpose and related to an adequately defined class of technical items, then these mathematical steps can be taken into account in the assessment of inventive step, otherwise they cannot.

Obviously, this standard is not self-explanatory. Not only because it relies on the notion of “technical” items and purposes, and we know that the Boards of appeal are careful not to provide a generic definition of the term “technical”. But also because the standard refers to the unspecified notions of “functional limitations” of methods and of “adequate definitions” of purposes and classes of items.

A secret method for properly drafting software patent applications.

Probably without any such aim in mind, Board 3.4.01 has now expressed what could be construed as a liberal view on these notions, in decision T 0625/11 of January 19, 2017.

The decision was issued further to an appeal during examination by French nuclear power company AREVA NP. Areva

had filed European patent application No. 03775483.5 broadly relating to the use of a “transitional operation simulation” to calculate a “limit value of at least a first operating parameter of a nuclear reactor” in view of the subsequent safe operation of the nuclear reactor. Areva argued that limit values of operating parameters in the prior art were empirically determined without using a transitional operation simulation and the invention was therefore in total breach of normal practice and involved an inventive step. The application was however refused by the Examining division on the ground that the claims related to method steps without any technical character going beyond their normal interactions with a computer.

Claim 1 of the main request read:

A method for determining by a computer system at least one limit value of at least a first operating parameter of a nuclear reactor comprising a core in which fuel assemblies are charged, the fuel assemblies comprising fuel rods each having nuclear fuel pellets and a sheath surrounding the pellets,

characterized in that it comprises the steps of:

b) simulating at least one transitional operation of the nuclear reactor,

c) calculating the value reached by a physical quantity during the transitional operation in at least one sheath of a fuel rod,

d) determining, as a limit value, the value of the first operating parameter at the time when the value calculated in step c) corresponds to a value of the physical quantity characterizing a rupture of the sheath.

In its refusal decision, the Examining division held that the Infineon decision did not apply since Areva’s claim 1 was not limited to the simulation of a nuclear reactor.

The first instance examiners considered in particular that:

  • In Infineon, the invention related to a numerical simulation procedure to test an already designed circuit subject to noise.
  • Claim 1 did not have a concrete technical application of a computer-aided numerical simulation method.
  • Claim 1 did not relate to the use of a simulation step in a very specific and eminently practical and technical application.
  • Claim 1 did not define simulation steps, but a very general step of simulating a transitional operation in order to subsequently calculate values.
  • Transitional operation simulations were well known at the priority date of the application. And anyway claim 1 did not define specific characteristics of the transitional operation simulation, but a very general step of simulating a transitional operation in order to subsequently calculate values. Thus, there were no steps going beyond what was common practice for the person skilled in the art at the priority date.

During the appeal procedure, the Board first followed this reasoning but later changed its mind and admitted the main request. From a procedural point of view, it is worth noting that Areva asked in an auxiliary request introduced during the oral proceedings that two questions be referred to the Enlarged Board of Appeal. The Board actually did not consider this request lightly. They even suggested a rewording of the questions and did not reach a decision during the oral proceedings, such that the procedure was resumed in writing. But after all, the case was resolved without any referral.

The Board compared at length the Infineon liberal approach and the opposite approach which consists in ruling out method claims which do not incorporate the alleged technical goal (such as via a final step of operating a nuclear reactor). And the Board decided to follow Infineon. Furthermore, the Board considered that the fact the claimed method merely recited the calculation of a limit value did not prevent one from applying the Infineon approach to the present case.

The Board notably noted that the calculation of the value and the later use of this value were performed by different economic actors in different geographic locations, such that requiring the integration of said later use in the claim would reduce the efficiency of the patent, given the specificity of contributory infringement rules.

T 0625/11 thus constitutes a confirmation of Infineon’s principles and of its taking industrial evolution into account. But considering how Infineon is widely followed by EPO examiners, it is questionable whether such thoroughly reasoned confirmation was even needed in the first place.

But T 0625/11 is of particular interest for yet another reason.

As readers may have noted, claim 1 of the main request eventually granted by the Board is very broad. I bet drafters used to prosecuting software applications are counting the number of clarity-related objections they could raise.

The Board itself conceded:

The terminology used in claim 1 leads to the recognition of a very broad scope for the claimed process. This observation stems from the fact that a transitional operation of the nuclear reactor is reported without specifying its parameters. Similarly, the reference to the notion of “physical quantity” and “first operational parameter”, without specifying its nature, permits an in-depth interpretation of the claimed process.

But then:

The Board notes that the skilled person would have immediately recognized that the problem posed is in no way limited by the nature of the parameters chosen. Similarly, whatever the degree of sophistication of the transitional mode of operation selected, its modeling will only involve well-known operating principles, which finite element calculation algorithms can account for.

The fact that the principles we are discussing incorporate a complex set of laws relating to nuclear physics, to the resistance of materials, to thermal physics, to thermodynamics does not affect this observation. In this respect, the teaching of the initial application, combined with the general knowledge of a person skilled in the art, justifies the degree of generalization resulting from the formulation adopted for the application.

Regarding sufficiency of disclosure, the Board held:

With regard to the disclosure of the invention, the Board deems that the broad scope of the claims does not in any way impede the achievement of the invention over the entire area claimed. The laws of physics mentioned above are in fact able to account for the evolution of the relevant parameters, in spite of the complexity of the phenomena at hand, since the transitional operation and the operating conditions and parameters are sufficiently defined.

And regarding clarity issues when assessing inventive step:

In this case, the definition of the technical problem adopted by the applicant appears realistic. The invention aims at determining at least one limit value of an operating parameter of a nuclear reactor in order to allow better exploitation of the capacities of the latter.

Similarly, the nature of the parameters involved in the simulation (constraints, temperatures, heat capacity, pressures, dimensions, etc.) also confers a technical character to the claimed invention.

The bar on clarity at the EPO has always been high for software inventions in general and computer-implemented mathematical methods in particular, leading to a number of issues. It can of course be very costly for applicants in this field to ensure that all implementation details are included in the application in case there is a clarity objection. But there is also a specific issue related to the way Infineon is applied by examiners in practice: if a method claim is broad or unclear, it is easy for them to hold that the method is not “functionally limited” to a technical purpose or that said purpose is not “adequately defined”.

The generosity of Board 3.4.01 in decision T 0625/11 might constitute a source of hope for applicants who had become desperate because of this difficulty.

CASE REFERENCE: T 0625/11, Board 3.4.01, January 19, 2017, AREVA NP.

Identifying technicity

What does a patent-eligible invention have in common with obscenity? Some may be tempted to answer that, in both cases, I know it when I see it, as the famous phrase goes. 

But the EPO would certainly not share this view, as the Boards of appeal have consistently worked on framing elaborate eligibility / inventive step tests so as to exclude any intuitive approach to the issue – the prize to pay being that this body of case law makes for a difficult read.

In today’s post, Aujain Eghbali examines if and how said extensive case law can be applied to the examination of French patent applications as well.

The examination of applications related to software inventions in France has been known to yield unpredictable outcomes. This is because, while substantive grounds provided to the French patent office (INPI) to refuse applications include the manifest exclusion from the scope of patentability (ineligibility) and the manifest lack of novelty in view of the search report, they do not include the lack of inventive step (which is only a ground for nullity).

Now, readers familiar with EPO practice know that software inventions are nowadays almost systematically examined under the scope of inventive step at the EPO. The mere mention of the use of a computer in a method claim allows passing the eligibility bar.

In this context, it has not been clear whether INPI examiners can rely on the ineligibility ground to refuse applications, or whether on the contrary they have to comply with EPO case law and conclude that there is no ground for a refusal.

Recent French court decisions, some of which were commented on this blog (here, here, here and there), seem to favor the first solution. The Sesame decision in particular confirmed the refusal by the INPI of a computer-implemented business method on the ground of ineligibility.

While this increase in legal certainty is surely appreciated, these recent developments raise other issues. One may notably ask the following question:

To what extent could INPI examiners apply principles established by the EPO in relation with the inventive step analysis in order to assess the patentability of software inventions, when they can only raise another ground?

EPO board of appeal decision T1992/10 of September 8, 2016 may be a good basis for the beginning of an answer.

SAP had filed a European patent application related to a solution to check the integrity of a shipment. The solution consists in calculating an initial identifier of a set of objects of the shipment based on individual identifiers, before sending the shipment. When the shipment arrives, the same algorithm is used to compute a set identifier for all arrived objects and the result is compared to the initial identifier. A match indicates integrity of the shipment.

Claim 1 according to the auxiliary request read as follows:

A computer-implemented method for checking the integrity of a shipment that includes multiple products, the method comprising:

calculating, prior to shipping, a set identifier for the shipment, the calculating comprising:

– receiving (210), at a tag reader, a first identifier from a first identification tag (130a; 570a; 730a) associated with a first physical object (120a; 560a; 720a);

– receiving (220), at the tag reader, a second identifier from a second identification tag (130b; 570b; 730b) associated with a second physical object (120b; 560b; 720b);

– determining (230) the set identifier at the tag reader, the set identifier corresponding to a set (110) of physical objects that includes the first physical object (120a; 560a; 720a) and the second physical object (120b; 560b; 720b), based on the first identifier and the second identifier, wherein the determining further includes:

— sorting (440) the first identifier and the second identifier to produce sorted identifiers, such that, for all pairs of identifiers, a first identifier of a pair appearing before a second identifier of the pair indicates that the first identifier is less than the second identifier;

— combining (450) the sorted identifiers to produce a combined set identifier by concatenating the first identifier and the second identifier in sorted order; and

— applying (460) the SHA1 algorithm to the combined identifier to produce the set identifier;

– associating (240-270) the set identifier with a web page (180a) that corresponds to the set (110);

calculating a set identifier for the shipment after shipping to verify the integrity of the shipment;

when the set identifier calculated prior to shipping matches the set identifier calculated after shipping, determining that no products have been removed from or added to the shipment in the time between the calculation of the two set identifiers, and

when the set identifier calculated prior to shipping differs from the set identifier calculated after shipping, determining that at least one product has been removed from or added to the shipment in the time between the calculation of the two set identifiers.

According to SAP, both with and without the invention, it was necessary to scan all arriving objects; but with the invention, only one comparison subsequently needed to be made: the identifier calculated on arrival had to be compared with the identifier calculated before shipping. Without the invention, many individual comparisons would be needed. Furthermore, SAP argued that the specific algorithm used to produce the set identifier performed speedily. Also, the final comparison could be made fast, thanks to the format of the set identifier.

A non-computer implemented identification tag – therefore a technical one?

The Board considered that the contemplation of a set identifier in particular to perform a shipment integrity check did not involve any technical consideration as such. Furthermore, the Board was not persuaded that the effects argued by the appellant were actually obtained (speedy identifier calculation and fast comparison).

Also, the Board did not buy the argument related to only one set identifier comparison to be eventually made instead of many individual comparisons. On this topic, the Board not only noted that a database programmer would tend to send one composite query rather than a series of individual queries, but the Board also considered again that the alleged effect was not credible since no details about the comparison were provided in claim 1.

As a conclusion, the algorithm did not seek to overcome a limitation of a computer, but was imposed from the outside for the non-technical purpose of providing a set identifier.

Whether we agree with this reasoning or not, the part of the decision most interesting to me lies elsewhere, where the Board considered:

10. This is not a case in which a clearly non-technical method, consisting of non-technical steps, is performed by a computer, essentially by telling it to carry out the steps involved. Such cases normally fail under the approach in T 0641/00, Two identities/COMVIK, OJ 2003, 352, which, by placing the steps in the statement of the objective technical problem, in essence ensures they do not contribute to inventive step. With such a method, the novelty and obviousness of the steps themselves need not be assessed and the salient question for inventive step is often only whether the implementation of the steps using a computer would have been obvious. In most cases, it would have been.

11. This contrasts with the present invention, in which, although the steps are per se non-technical, a technical contribution cannot be immediately ruled out. The need to investigate the obviousness of these steps depends on such a contribution. The aim of the invention is a non-technical one: identify objects and sets of objects, and keep track of them. The present invention, however, starts from an existing technical method of identifying objects. It seeks to overcome shortcomings in that technical method, and raises rather more problems than the cases referred to above. Are the shortcomings themselves technical? Are technical means used to overcome them? In short: what is the technical effect on the prior art system?

12. That is a matter that requires care. On one side, the technology of the starting point, or its shortcomings, should not be trivialised. On another, circumventing a problem, rather than solving it, is no basis for an allowable claim.

As we can see, the Board introduced a distinction here between SAP’s invention and others which consist in performing a clearly non-technical method, consisting of non-technical steps, by a computer.

The Board considered that, in the shipment integrity check case, care should be taken before ruling out the technical contribution of a step apparently non-technical. The Board suggested performing a thorough analysis of effects alleged to be provided by the invention in view of the prior art, and then only searching for those effects which are technical and credibly achieved.

This decision therefore stresses that, when a computer-implemented invention does not relate to performing a clearly non-technical method by a computer, it is of the utmost importance to assess its patentability within the scope of inventive step, such that the prior art can be discussed. The Board thus reminded us that the approach developed by EPO case law is not merely cosmetic.

Now, once again, the ground provided to INPI examiners to refuse computer-implemented inventions is the manifest exclusion from the scope of patentability.

We know that although the INPI can refuse an application on the ground of a manifest lack of novelty, the lack of novelty has to be really blatant for the INPI to refuse the application. We also know that the INPI cannot refuse an application on the ground of a lack of inventive step. As mentioned in the Sesame post, when there is room for discussion on patentability the legislator probably wanted said discussion to occur within a trial rather than during examination.

I believe that this principle should fully apply to computer-implemented inventions: when there is room for discussion on the presence or not of a technical contribution, said discussion should not occur at the examination stage. In other words, there should be situations where the INPI admits that exclusion from the scope of patentability is not manifest.

Decision T1992/10 not only provides a reason why but also a criterion that the INPI could apply: is the computer-implemented method merely a clearly non-technical method implemented by a computer?

Thank you Aujain. Who knows, maybe we will get some clarification in the next version of the French guidelines for examination? Those may still have a long way to go before they can match the completeness and reliability of the EPO guidelines.

CASE REFERENCE: T1992/10, Board 3.5.01, September 8, 2016, Set Identifiers / SAP.

Poisonous thoughts

It has already been more than a week since the latest Enlarged Board of Appeal’s decision G 1/15 has been published. It has therefore already been reported and commented on in all good blogs, so that there is probably no need for me to repeat what other have already explained very well.

It will be sufficient to remind readers that the decision provides important guidance on the issue of partial priority (especially with respect to so-called “OR-claims“) and puts an end to the doctrine of “poisonous divisional applications“.

Basically, if a claim in an application or patent encompasses subject-matter which was disclosed in the application to which priority is claimed, but is broader than said disclosed subject-matter, the priority is not fully invalid. The part of the claim which was disclosed in the priority document benefits from the priority, and the other, new, part of the claim does not. G 1/15 makes it clear that no conditions or limitations apply in this respect.

With that in mind, I do have a couple of thoughts on this topic that I might as well share in this post. Actually, both thoughts are not so much about what the decision says as about what it does not say.

The first remark relates to the Enlarged Board’s reasoning. The theory of poisonous divisional applications was originally adopted in a number of decisions from the Boards of appeal. These decisions relied on the following sentence in the founding decision G 2/98 on the assessment of priority claims:

The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject matters.

This sentence was interpreted by a number of boards as imposing a limitation to the possibility to divide a claimed subject-matter into different parts having different effective dates. This was also the respondent’s position in the referral. The argument was well summarized in the submission of the president of the EPO. And in item 3 of the reasons of G 1/15, it is acknowledged that “the divergence that has emerged in the case law has been caused by the proviso in point 6.7 of the Reasons of G 2/98“.

Therefore, I am somewhat disappointed that the Enlarged Board did not really address the question of what was meant by this sentence in G 2/98. In the core of G 1/15, the Enlarged Board analyzed the EPC, the Paris Convention, the Travaux préparatoires and some authors’ opinions, and came to the conclusion that there can be no condition or limitation restricting partial priority. This is all fine and well, but the sentence in G 2/98 was simply left out of the picture. So, does G 1/15 represent a change in case law relative to point 6.7 of the reasons of G 2/98? Or was the Enlarged Board unable to figure out what was originally meant in G 2/98? After all the sentence explicitly mentioned a proviso, which does strongly suggest a condition or limitation.

So, it seems to me that there is a little bit of a lack of transparency here.

The second remark is more practical than theoretical – and therefore probably more interesting than the first one.

In one of my previous posts, I reviewed decision T 1222/11 in detail. This was the first decision which extensively discussed the theory of poisonous divisional applications and came to the conclusion that the theory was incorrect. The reasoning was that partial priority can always be acknowledged if a claim is broader than the disclosure of the priority document. This is the so-called “conceptual approach” which has now been endorsed by the Enlarged Board in G 1/15.

In this previous post, I noted that the line of thought of T 1222/11 may also have side effects which go beyond the issue of partial priority. More particularly, the issue is related with the question of what is a first application, for the purpose of assessing priority. So, now seems like a good time to revisit this question again.

Quite remarkably, in T 1222/11 the refusal of the patent application at stake was confirmed due to an invalidity of the priority claim. This has always striken me as paradoxical, since this decision was widely acclaimed in the patent profession as being an antidote to the nefarious theory of poisonous divisional applications adopted in earlier decisions (as well as in several national court rulings).

G 1/15 basically states that the principles set out in T 1222/11 were the right ones. Although it does not address the particulars of this earlier case, there is every reason to assume that T 1222/11 was also correct in that it concluded that the priority claim at stake was invalid.

One last sip of poison for the road?

In T 1222/11, the claimed subject-matter was properly disclosed in the priority document. But part of it was also disclosed in an even earlier application by the same applicant, called D4b. In other terms, the teaching of the priority document (and of the claimed subject-matter) corresponded to a generalization relative to document D4b. In particular, some examples of D4b were found by the Board to fall within the claimed subject-matter. Although the claim at stake mentioned a property (namely a buffering capacity) which was not recited in D4b, the Board concluded that the same property was necessarily achieved in D4b. Also, the fact that D4b was limited to the use of a combination of two components (malic acid and lactic acid), whereas the priority document and the claimed invention were not, was found to be irrelevant.

The overall conclusion was that D4b was the actual first application for the claimed subject-matter, and not the priority document. As a result, the priority was invalid, and the claimed subject-matter lacked novelty over D4b. No disclaimer was allowable because D4b became full prior art due to the invalidity of the priority claim.

Therefore, G 1/15 has fully disarmed opponents or nullity claimants. Although poisonous divisional applications may no longer be a legal weapon, what we coud call “poisonous prior applications” (of the D4b sort in T 1222/11) have perhaps become more powerful weapons.

Let’s simplify the question one step further. Let’s assume a first application A1, a subsequent application A2 and an even later application A3 by the same applicant.

A3 claims subject-matter S, which is properly disclosed in A2. On the other hand, A1 does not disclose S but only part of S, which we can call s.

For instance, s can be a process involving a certain temperature range, and S can be a similar process involving a broader temperature range. Or s can be a composition comprising components A, B and C, while S can be a similar composition comprising components A and B.

If you had asked me the question a few years ago, I would probably have taken the view that, in such instances, the first application for subject-matter S is A2 and not A1. Just like, for consistency reasons, and under the EPO’s “gold standard“, the disclosure of s cannot be a proper support for claiming S (for the purpose of the assessment of Art. 123(2)).

This view is actually consistent with what is stated in the EPO case law bible (Case Law of the Boards of Appeal of the European Patent Office, 8th edition, II.D.4.1, 1st paragraph).

However, a side effect of the generous view of partial priority adopted in T 1222/11 and now endorsed in G 1/15, seems to be that this view is not correct, and that the first application is such a case is in fact… A1.

Applicants will therefore need to be careful about this, especially if they file successive applications containing the same examples but claiming different aspects of the same technology. Or else, some form of poisoning will come back to haunt them. 

Now, here is a challenging idea: could some form of partial priority be acknowledged in the context of a “not-the-first-application” argument? In other terms, if A1 discloses S1, A2 discloses S2, and A3 claims S1 or S2 (while claiming the priority of A2 only), is the priority claim fully invalid, because A2 is not the first application at all? Or does the priority claim remain valid as far as S2 is concerned?

Based on T 1222/11, I would tend to answer that the priority is fully invalid. Unless some supplementary condition needs to be examined, such as the fact that a limited number of clearly defined alternative subject-matters are claimed? Just kidding.

CASE REFERENCE: Enlarged Board of Appeal, November 29, 2016, G 1/15, Clariant Produkte (Deutschland) GmbH v. Infineum USA L.P.

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.

The sofosbuvir conundrum

Few patents get famous enough to make it to the headlines of the general press. Some Apple patents are among them, such as those nicknamed “slide-to-unlock” or “rubber-banding” – especially thanks to the world war waged against Samsung. Other patent celebs include those on blockbuster pharmaceutical drugs.

In this latter category, one patent family in particular has attracted some fuss over the past few years. It is the one which covers the drug sofosbuvir, marketed under the name Sovaldi.

Blockbuster drug patents can beat even patents on blockbusters.
Blockbuster drug patents can even beat patents on blockbusters.

Sofosbuvir has markedly improved the treatment of hepatitis C virus (HCV) infection. But in many countries, in the absence of any generic version of the drug, the price of HCV treatment has skyrocketed as a result. This has aroused vocal protests by a number of NGOs (see e.g. here).

In Europe, the sofosbuvir patent (or at least one sofosbuvir patent) is EP 2203462, owned by Gilead. It was opposed after grant by ten different parties, including the NGO Médecins du monde, a number of generic manufacturers, and a number of straw men. Oral proceedings took place on October 4-5 in Munich. The only public information available as of today on the online register is that the patent was maintained in amended form. The minutes of the oral proceedings and the written decision of the opposition division have not been issued yet.

Tufty the Cat has recently made assumptions on his blog regarding the claims which were uphed by the opposition division. I have now received a confirmation by someone who attended the oral proceedings that Tufty got the claim amendment right.

But there seems to be some confusion, to say the least, after these oral proceedings. Indeed, Gilead and its opponents seem to have different views as to whether the amended patent still covers sofosbuvir or not.

In order to understand how there can be such a controversy, it is necessary to go back to some basic notions of stereochemistry.

There are many examples of chemical compounds having different 3D atom configurations although they share the same 2D chemical formula. These different configurations are referred to as stereochemical forms, or diastereomers, of a given compound.

In the pharmaceutical field, identifying the different stereochemical forms of a compound is of prime importance, as diastereomers often have different pharmacological effects. By way of example, the so-called (S) stereochemical form of ibuprofen is a hundred times more active than the so-called (R) stereochemical form.

Besides, such chemical compounds are generally not synthesized as stereochemically pure compounds, but as a mixture of diastereomers. It is often necessary to further purify this mixture in order to isolate the most active diastereomer.

Gilead’s patent as granted contains six claims, including three independent claims 1 to 3. For once, let’s start with claim 2.

Claim 2 is directed to a compound of the following formula:


This is sofosbuvir.

Then claim 3 is directed to another compound of the following formula:


This other compound looks very much like sofosbuvir, since it is its diastereomer. The difference between the two compounds is highlighted in yellow. In the sofosbuvir formula, the P-O bond is shaded in black and the P-N bond is hatched, which means that, in 3D, the oxygen atom is in front of the phosphorus atom, while the nitrogen atom is behind. It is exactly the opposite in the diastereomer of claim 3.

Now, here is the formula of the compound of claim 1:


In this formula, the relevant P-N and P-O bonds are depicted as simple lines, which means that the 3D configuration is not specified.

Claims 4-6 simply recite a composition comprising the compound of one of respective claims 1-3 and a pharmaceutically acceptable medium.

According to my source, claims 2, 3, 5 and 6 were found by the opposition division to extend beyond the contents of the application as filed. As a result, the patent proprietor filed an auxiliary request in which these claims were deleted, and only granted claims 1 and 4 remained. The opposition division came to the conclusion that this auxiliary request meets all the requirements of the EPC, and made the interlocutory decision of maintaining the patent in this amended form.

The decision should soon be issued in writing, and will be open to appeal by all parties.

And now, here comes the conundrum.

The patent as amended during first instance opposition proceedings no longer contains claims 2 and 5 which were specifically directed to the sofosbuvir compound and the sofosbuvir-containing medicament. The question is whether the remaining claims 1 and 4 still protect sofosbuvir and sofosbuvir-based drugs.

One possible interpretation is that claim 1 is a generic claim which protects both diastereomers. It is broader than claim 2, and therefore the scope of the patent remains completely intact. Quite frankly, I think this is the interpretation that most patent attorneys would consider as the most logical one.

However, another possible interpretation is that claim 1 is directed to a diastereomeric mixture, i.e. a mixture of the compounds of claims 2 and 3 as granted. Arguments in favor of this interpretation could be that: claim 1 does show a 3D configuration in other parts of the molecule; thus, the absence of 3D information around the phosphorous atom means that such information cannot be provided, because both forms are present in the compound; furthermore, granted claims 2 and 3 are independent claims and do not depend on claim 1 which confirms that they are not particular embodiments of claim 1.

According to this second interpretation, a generic sofosbuvir drug would arguably no longer infringe the patent – as the drug would not contain a diastereomeric mixture.

It seems that the description of the patent does not fully clearly support one interpretation over the other.

I could very well see a French court coming to the conclusion that since the claim specifically directed to sofosbuvir was deleted, the patent may not possibly protect this molecule any longer. Maybe the written decision of the opposition division will contain a position as to what claim 1 means. But then, maybe not. And anyway, any position that they may have taken is not binding on national courts.

With that in mind, I would certainly not bet my life on either interpretation. Would readers be keen on taking a vote?

I would like to thank my source for this hot information. I have also been told that a number of interesting topics were discussed during the opposition proceedings, in connection with extension of subject-matter, priority and inventive step. So we should watch for the written decision of the opposition division when it is issued.

CASE REFERENCE: ongoing opposition proceedings against EP 2203462 to Gilead Pharmasset LLC.