More than just diapers

Rulings from the Enlarged Board of Appeal of the EPO are scarce – this is what makes them so eagerly awaited by the patent profession.

2019 may turn out to be an exceptional year in this respect though, with already three official referrals so far and an imminent fourth one which has not yet been officially issued as of today.

But sometimes I wonder whether these rulings are not in fact too scarce. Overall, the case law of the Boards of Appeal is consistent and contradictions between decisions are infrequent. But there is always room for improvement, right?

Case in point: sufficiency of disclosure and the issue of so-called unclear parameters.

If you read sections II.C.4.5 (“Parameters“) and II.C.7.2 (“Article 83 EPC and Clarity of Claims“) of the EPO case law book, and if you are able to summarize the standard to be applied regarding this question, you will deserve some kudos.

The issue is the following. Some claims contain parameter features, such as “Property X is more than threshold Y“. There are cases wherein the application or patent at stake does not explain in a satisfactory manner how to measure property X. As a result, property X may be close to impossible to measure for the skilled person; or the skilled person may be aware of different possible ways to proceed, leading to wholly different results.

There is little doubt that this can give rise to an objection of lack of clarity of the claims (art. 84 EPC). The real head-scratcher is whether it also gives rise to an objection of insufficiency of disclosure (art. 83 EPC), or can give rise to this objection in some special circumstances.

This is of course extremely important because insufficiency of disclosure is a ground for opposition (and nullity, for that matter), whereas lack of clarity is not. In other words, if the answer to the above question is no, then an ill-defined parameter already present in the granted claims cannot be challenged after grant, no matter how serious the problem is.

Let me just state, incidentally, that on a practical standpoint this can be a major concern for third parties, who can be at a complete loss as to whether they infringe or not, and what to do in order not to infringe.

A large number of Board decisions have addressed this question, in various ways. The question has however never been referred to the Enlarged Board of Appeal.

Only the Boards of Appeal or the President of the EPO can refer a question to the Enlarged Board “to ensure uniform application of the law, or if a point of law of fundamental importance arises” (art. 112 EPC). Parties can only request a referral but without any power whatsoever to force a referral.

Can the case law of the Boards on the relationship between art. 83 and art. 84, in particular as far as ill-defined parameters are concerned, be considered as uniform or not?

My personal impression is that there is some degree of divergence, although this is in fact denied in some decisions.

One approach in particular that has been applied is that the impossibility for the skilled person to know whether he/she is working within the scope of the claims (“forbidden area“) is tantamount to an impossibility of carrying out the invention. 

In T 1811/13 (November 8, 2016), Board 3.2.05 noted that this approach originates from decision T 256/87 and “appears to have gone unnoticed until 2003” (reasons 5.1); that it was adopted by four decisions issued by Board 3.2.06 between 2004 and 2007, including in particular T 464/05; and that on the other hand many other decisions have rejected this approach since 2003, because “the definition of the scope of a claim was related to Article 84 EPC rather than Article 83 EPC“.

Board 3.2.05 concluded (reasons 5.1) that:

It may, therefore, be said that today there is agreement or at least a clearly predominant opinion among the boards that the definition of the “forbidden area” of a claim should not be considered as a matter related to Article 83 EPC. The present board shares this opinion.

Decision T 647/15, issued by the same Board 3.2.05 almost contemporaneously (September 8, 2016), states pretty much the same.

So far so good. Except that Board 3.2.06 in fact stands by its earlier case law.

This was notably illustrated in T 1188/15 of November 24, 2016.

In T 626/14 of  May 24, 2018, Board 3.2.06 explicitly disagreed with the comments made by Board 3.2.05 in T 1811/13 and T 647/15 regarding the earlier 3.2.06 case law, embodied by T 464/05. Said the Board (reasons 1.4.1):

Yet, T1811/13 and T647/15 themselves concentrate only on an individual aspect in e.g. T464/05, namely ‘the area covered by the claim’ without addressing the actual findings in that decision regarding the issue of Article 83 EPC. In fact, T464/05 draws a distinction between the two objections under Articles 83 and 84 EPC respectively and explains the significance thereof. For example, T464/05 considers in Reasons 3.3.2 not the boundaries of the claimed subject-matter which was the subject of T1811/13 and T647/15, but the lack of indications in the patent concerning the measurement of a particular parameter. This is stated in T464/05 as resulting in ‘an undue burden for the skilled person trying to reproduce the invention’. Likewise, in Reasons 3.2, the crucial issue in respect of sufficiency of disclosure concerns the issue of whether a skilled person ‘is capable of reliably measuring (the) parameter’. Thus, T1811/13 and T647/15 do not cause the present Board to see anything which would undermine the reasoning in T464/05 concerning Article 83 EPC. In the sense that a parameter to be measured was at issue in T464/05 with regard to Article 83 EPC, the Board in the present case is faced with the same issue, i.e. the undue burden created by the lack of any information allowing the skilled person to reliably measure the defined thickness. This, as explained supra, results in the skilled person being unable to know whether he has arrived at the invention or not, such that the invention is not sufficiently clearly and completely disclosed.  

In summary, Board 3.2.06 in T 626/14 maintains its position, and insists that if the skilled person is unable to know whether he or she has arrived at the invention, due to a lack of information in the patent, this amounts to an insufficiency of disclosure.

How did the other Board 3.2.05 react? In case T 250/15 (July 20, 2018), one of the opponents requested that the Enlarged Board of Appeal be consulted regarding the question of sufficiency of disclosure in the case of an ill-defined parameter. The Board found the requirements of sufficiency of disclosure to be met in the case at hand, and rejected the request for a referral.

In particular, the Board had this to say regarding the latest comments by Board 3.2.06 (reasons 2.6, translated from French):

The present Board notes that decision T 626/14, just like case T 464/05, concerns a particular constellation in a certain technical field. The present case is however different in that the parameter of the number-average molecular weight Mn relates to a clearly defined property which is inherent to the material. Besides, it has not been challenged that the skilled person has a limited number of appropriate and generally known measurement methods. Therefore, T 626/14 cannot put into question the conclusions expressed above regarding the sufficiency of disclosure of the invention, and the request for a referral to the Enlarged Board of Appeal which was orally presented by respondent I must be rejected. 

In a nutshell, for Board 3.2.05, the facts of the case are different from those of T 626/14, and the parameter at stake here does not raise any difficulty for the skilled person.

Again, so far so good. But the comment on “a particular constellation in a certain technical field“, on the other hand, is puzzling.

The technical field of T 464/05 and T 626/14 is that of sanitary articles, such as diapers and the like.

What could be so special about this technical field? In T 464/05 the contested parameter was a “weighted average mass vapor transmission rate (MVTR)” and in T 626/14 it was simply a thickness which is nevertheless difficult to measure as it relates to a fibrous layer, so that a certain pressure needs to be applied in order to make the measurement.

Admittedly, these two parameters were very specific ones, but there is no doubt that other problematic examples can be found in many other technical fields. There is nothing unique about the diaper constellation.

Fish density on an absorbent article: an ill-defined parameter?

A divergence of approach between some Boards, each one consistently applying its own case law, is not unheard of.

For example, novelty of dosage regimen claims led to disagreements between Boards 3.3.02 and 3.3.04, before the Enlarged Board issued its decision G 2/08.

Is it fair to say that there is such a similar divergence nowadays between Board 3.2.06 and (at least) Board 3.2.05?

If so, would a referral to the Enlarged Board of appeal (in a case fit for this purpose of course) not be a much better solution than putting any divergence under the rug?

The legal standard to be applied to a patent should not depend on its IPC classification and the business distribution scheme of the Boards.

As a disclaimer, what is discussed above is not the full picture of ill-defined parameters. Yet further legal standards have been suggested and debated.

For example, in T 1845/14 of November 8, 2018, Board 3.3.03 analyzed another line of case law, embodied by T 593/09, T 608/07, T 815/07 and T 172/99, according to which “the criterion applied for assessing sufficiency of disclosure was whether the unclear parameter of the claim was so ill-defined that the skilled person would not have been able, on the basis of the disclosure as a whole and using their common general knowledge, to identify (without undue burden) the technical measures (e.g. selection of suitable compounds) necessary to solve the problem underlying the patent at issue“.

After a very thorough analysis, Board 3.3.03 came to the conclusion that this “is not a suitable criterion for assessing sufficiency of disclosure when the problem or an effect derivable from it are not explicitly or implicitly part of the definition of the claimed subject-matter” (reasons 9.8).

The Board then added (reasons 9.9):

The view expressed above could be perceived as a deviation from the above cited decisions or other decisions of the Boards of Appeal in which a criterion for assessing sufficiency of disclosure was whether the ambiguity of a parametric definition deprived the person skilled in the art of the promise of the invention. However, there is no need to refer a question to the Enlarged Board of Appeal as the diverging views arise from a different approach regarding the meaning of the term “invention” in relation to the issue of sufficiency of disclosure and the approach taken in the present decision is supported by the decisions of the Enlarged Board of Appeal G 2/98 (see above) and G 1/03 (see above).

Interestingly, the Board in this case did find the claimed invention to be insufficiently disclosed despite setting aside a legal standard which would have been more demanding for the patent in suit. Said the Board (reasons 11.3):

The ambiguous definition of a parameter in a claim may result in the scope of the claim to be broader than the patentee might have intended. In such a case the question arises whether the teaching of the patent in suit, which was directed to the claimed subject-matter having regard to a specific meaning of that parameter (which, however, was omitted), would nevertheless have enabled the skilled person to carry out the invention outside of the scope intended by the patentee, using common general knowledge and a reasonable amount of experimentation.

It was decided that the teaching was insufficient in this respect.

Anyway, this was another example of a criterion previously applied in the EPO case law, now said to be erroneous by a Board, on the same topic of unclear parameters.

Time will tell whether T 1845/14 will be followed or not, and whether a unanimous frame of reasoning regarding ill-defined parameters will finally emerge from the case law, with or without the involvement of the Enlarged Board.

In the meantime, we may have to deal with a constellation of approaches.

For the sake of the argument

As I have already mentioned here, one reason why I do not often comment on decisions from the Boards of appeal of the EPO on this blog is that any interesting decision that comes out is instantly shot at by all good bloggers around the place before I even get a chance to draw my metaphorical gun.

So, sorry folks, no breaking news from me today, as Laurent Teyssèdre has already been here, as well as others.

But I could not let this one decision T 1914/12 go without a comment or two.

First, because it is highly interesting. Second, because it is in French (so, maybe some non-French speaking colleagues would benefit from further highlights). Third, because I was involved in the case at hand in the first instance proceedings, so this one brings back a number of memories.

The catchword of the decision can be translated as follows:

Boards of appeal do not have any appraisal power with respect to the admissibility of late arguments which are based on facts that are already part of the proceedings (decision diverging from T 1621/09).

A brief presentation of the facts of the case will probably suffice, before summarizing the very thorough legal discussion in the decision.

The patent at stake is entitled “Method of adhesively bonding a strip of flexible fabric to a substrate“. It was opposed after grant and revoked by the opposition division, for lack of inventive step (as well as extension of subject-matter as far as some of the auxiliary requests are concerned).

In the course of the appeal proceedings, the opposition was withdrawn, and the patent was transferred to the previous opponent. Not that this circumstance is really critical.

The key issue is that, for the first time on appeal, the new patent proprietor identified a further distinguishing feature relative to one of the main cited prior art references.

In a written communication, the Board expressed the preliminary opinion that this was a late argument and that its intention was not to admit it into the proceedings. But the Board, for once presided by the legal member, later changed its mind and came to the opposite conclusion. As a result, the first instance decision was set aside, and the case remitted to the first instance for further prosecution.

But before reaching this conclusion, the Board performed a very thorough analysis of the law pertaining to late facts and arguments.

A fancy EPO appeal clock.

The starting point for the discussion is article 13(1) of the Rules of procedure of the Boards of appeal (RPBA), per which:

Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. 

So the question is: does the discretionary power of the Board apply to a situation such as the one at hand, where a new distinguishing feature is identified by the proprietor at a late stage?

As a first step (section 7.1 of the reasons), the Board reviewed in great detail the notions of “facts” and “arguments” and their respective definitions, based on the common understanding of the terms, of the legal understanding of the terms, and on the specific use of the terms in the EPC and case law.

Clearly distinguishing between facts and arguments is not just a matter of hair-splitting. Depending on whether a late submission is viewed as a fact or an argument, the fate of the submission may differ – even in first instance.

As a side note, in one opposition I have handled, a new inventive step attack based on a timely filed document only later identified as a possible closest prior art document was considered by the opposition division as pertaining to a “new fact” and not merely a “new argument” and it was thus not admitted into the proceedings. The Board set aside the first instance decision – but I don’t know yet if this point will be discussed in the reasons or not.

Anyway, the definition offered by the present Board (reasons, 7.1.4) is the following (in my own translation as always):

A “fact” can be understood as a factual (or allegedly factual) element or a circumstance on which a party bases its case, whereas an “argument” designates a proposition that a party bases on one or more facts and which supports the case that it puts forward. 

The Board then gave the example of a lack of novelty attack:

  • The party’s case (“moyen” in French) is that the claimed subject-matter is comprised in the state of the art.
  • One argument is e.g. that the subject-matter is disclosed in paragraph [0017] of D1.
  • Another argument is e.g. that the skilled person understands the paragraph in a certain manner, in view of common general knowledge, and thus views a certain feature as implicitly disclosed.
  • The textual content of the paragraph is a fact.
  • The copy of the document or of its translation is a piece of evidence.

As a next step, the Board addressed the central issue of whether late arguments can be disregarded or not.

Here, the first interesting remark is that the text of the EPC is not the same in the three official languages.

The English version of article 114(1) reads:

In proceedings before it, the European Patent Office shall examine the facts of its own motion; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. 

Note the term “arguments” here. But the French version is in fact quite different, as it solely refers to “moyens invoqués” and “demandes présentées“. I would tend to translate the general term “moyens invoqués” by “the party’s case“. The German version does not specifically mention arguments either.

The Board noted that the English version seems to more accurately express the intentions of the drafters of the EPC (is that generally the case? the Frenchman asks), and therefore adhered to this English version in the rest of the reasoning.

Now the key part of the reasoning is that the English version of the second paragraph of article 114, on which the discretionary power of the EPO to disregard late submissions is based, does not refer to arguments:

The European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned. 

This is in contrast to the first paragraph mentioned above, which deals with examination of the EPO’s own motion.

Based on the difference between the two paragraphs, the Board concluded that the discretionary power of the EPO is strictly limited to facts and evidence and does not extend to arguments.

Now going back to article 13(1) RBPA, there is a reference here to an “amendment to a party’s case“, which is not very explicit. But the notion of a party’s case is further defined in article 12(2):

The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. […]

So, on the face of it, it can be surmised that article 13(1) RPBA, via its implicit reference to article 12(2), empowers the Board with the right not to admit a late modification of the arguments of a party on appeal.

But, reviewing the Travaux préparatoires for the current version of the RPBA, the Board found that a proposed article 13(1) containing an explicit reference to arguments was rejected in the drafting process.

Thus, the Board held, the intent seems to have been in fact not to encompass arguments within the purview of article 13(1). See section 7.2.1 of the reasons.

Then, the Board reviewed the relevant case law in detail (section 7.2.2 of the reasons), and found a number of decisions pursuant to which arguments are not subjected to the Boards’ discretionary power.

But then there are T 1069/08 and above all T 1621/09, which decided otherwise. Especially in T 1621/09, an analysis of the travaux préparatoires was performed but the deletion of the word “arguments” in the drafting process of new article 13(1) was not noted.

In the wake of these two decisions, the Board counted 17 later decisions which relied on the principles set out in T 1069/08 and T 1621/09 without questioning them. A couple of recent decisions have however decided the other way around.

As a conclusion, the Board expressed its disagreement with the approach of T 1069/08 and T 1621/09 (section 7.2.3 of the reasons).

The final reason put forward by the Board for such disagreement is that the RPBA should not “lead to a situation which would be incompatible with the spirit and purpose of the Convention” (article 23), which would precisely be the case if article 13(1) RPBA were to be interpreted as encompassing arguments, although article 114(2) EPC, which prevails, does explicitly not refer to arguments, among the late submissions which may be disregarded.

One first question immediately comes to mind: is this question ripe for a referral to the Enlarged board of appeal?

After all, there are a number of diverging decisions, it seems. I guess the answer may depend on whether the Boards which issued T 1069/08 and T 1621/09 will stand their ground or change course.

The second question that I have is: what about the upcoming revised version of the RPBA?

A few months ago, there was a public consultation at the EPO on a draft. I do not know where this project stands right now. But, for what it is worth, there was a new paragraph 2 in article 12 in this proposal, which reads:

In view of the primary object of the appeal proceedings to judicially review the decision under appeal, a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.

Beside the fact that there is a new concept here (namely “objections“), this provision seems to introduce a limitation to what kind of arguments a party is allowed to file on appeal – namely, those on which the decision under appeal was based.

If one follows the reasoning of T 1914/12, wouldn’t this proposed provision breach article 114 EPC?


CASE REFERENCE: T 1914/12, Board 3.2.05, June 13, 2018, Gaztransport et Technigaz.

Not sailing to victory

Thanks to Jérôme Tassi, I was made aware of a new French decision revoking a patent due to extension of subject-matter.

As I mentioned no earlier than in last week’s post, this is a ground for nullity that needs to be taken very seriously nowadays. There may previously have been a perception that added matter objections were deemed to fail in front of a court of law, and that painstaking dissections of the exact wording originally used in patent applications should be reserved for hearings taking place at Erhardtstrasse. But if so, this perception is no longer accurate.

The patent at stake is EP 2179917 to the Swiss company Createx SA.

This patent (EP’917) was filed as a divisional application stemming from EP 1531979, itself originally filed as a PCT application published under No. WO 2004/005009.

The technical field is the manufacture of fabric for sails. Yes, as in sailing boats. This is about as exotic as you can get when dealing with patent case law.

On December 31, 2015, Createx and its licensee, the U.S. company North Sails Group LLC, filed a patent infringement complaint against the French companies Incidences La Rochelle and Incidences Technologies.

On August 22, 2016, Createx filed a request for limitation of the French part of EP’917 with the INPI. It can be assumed that this was a reaction to some invalidity arguments brought forward by the defendants. The limitation was granted by the INPI on September 27, 2016.

The defendants counterclaimed for nullity of the EP’917 patent and as announced at the beginning of this post, the Paris Tribunal de grande instance (TGI) did in fact hold the patent invalid for extension of subject-matter beyond the content of the parent application as filed.

The patent as limited contains two independent claims, namely claim 1 directed to a fabric and claim 13 directed to a sail. Let’s focus on claim 1 only:

A fabric comprising:

a plurality of strips, each of the strips being formed from a plurality of substantially parallel reinforcing elements formed of threads arranged in a unidirectional manner, the threads being made of thousands of filaments distributed over the width of each strip, each of the substantially parallel reinforcing elements comprising said substantially parallel filaments; and an activated resin encasing the filaments to form a fabric;

wherein part of each strip is disposed on the juxtaposed strips; 

wherein at least some of the plurality of strips partially overlap adjacent strips, at least some of the strips substantially overlap over a length of each strip, at least some of the strips are arranged in parallel, so that a first end of a strip substantially overlap with a first end of another strip. 

Some sails look more threatening than others.

The key issue here is that the parent application as filed did not contain any claim directed to such a fabric or to a sail as recited in claim 13. All original claims related to a method of manufacturing a fabric, using a particular system.

Here is original claim 1 by way of comparison with the limited claim in the divisional patent:

A method of manufacturing shaped and reinforced fabrics, characterized in that it consists in making a fabric made of a membrane which encases continuous alternated reinforcing elements in a press which comprises an upper vessel the lower part of which is made of a supple element and a lower vessel the upper part of which is made of a supple element, the upper vessel comprising a shaping lath the shape of which can be adjusted by setting rods and the adjusting shape of which causes the three-dimensional elastic deformation of the supple elements and thus of the membrane and reinforcing elements within the press, into an active position in which the lath has a shape and an inactive position in which the shaping lath is inactive and does not cause any deformation of the membrane and reinforcing elements which are pressed flat, in that the portions of the membrane and of reinforcing elements are prepared before pressing on a conveyor belt which is disposed on a preparation table which then places these portions under the press with pressure and heat, and in that the portions of membrane and reinforcing elements overlap during the preparation so that they make a homogeneous fabric at the outlet of the press, which comprises flat portions and three-dimensional-shaped portions according to multiple shapes determined by the setting of the shaping lath upon pressing each membrane portion and reinforcing elements, the length of which is determined by the width of the press and preparation table. 

Here is the court’s take on this:

Through this rule [of the prohibition of extension of added matter], it is to be ensured that the patent proprietor cannot improve its position by adding elements that are not disclosed in the application as filed, which would be such as to confer an undue advantage by obtaining a different monopoly from the one initially claimed, which may harm legal certainty for third parties who rely on the content of the initial application.

In this case, the [parent] application as filed […] is exclusively directed to an invention which relates to a manufacturing method […]. It thus clearly derives from this initial application that the subject-matter of the protection does not relate to the product “fabric”. The EP’917 patent […] is no longer directed to a manufacturing method but expressly to products, and more particularly a “fabric” […] and a sail […]. 

[…] By altering the subject-matter of the patent […], the patent proprietor may now have a protection on any identical product independently of its manufacturing method. 

Thus, the patent proprietor necessarily increased the scope of protection initially requested, since this patent makes it possible to include within the scope of the patent products why may be obtained by different methods than the one claimed in the initial application. It is further noted that this modification also led the proprietor to encompass within the scope of protection of the patent […] a product which was not explicitly mentioned in the initial application, namely a “sail”, which cannot be entirely assimilated to [a fabric] and which was not within the subject-matter of the initial invention except through a mere reference to the prior art, which is not sufficient to include it within the perimeter of protection. 

The content of the (parent) application as filed has to be considered as a whole, including the claims, description and drawings. Due to some of the words used by the court in the above quote, there could be a suspicion that the court really focused on the claims only and confused extension of subject-matter with extension of scope of protection. But I doubt that this suspicion would be well-founded.

Indeed, not only did the original set of claims not contain any claim to a fabric or a sail, but also the original description did not recite a fabric or a sail as such as subject-matter of the invention.

Thus, it was considered that the shift in scope of protection could not be expected by third parties relying on the original application documents, which offended legal certainty. This is reminiscent of a Nestec decision already discussed on this blog.

In this earlier case, a claim to a device for the extraction of a capsule plus the capsule itself, in combination, was found to offend article 123(2) EPC because this category of product was not originally claimed, and could only be indirectly derived from the application based on how the capsule interacted with the device in operation.

I must say that, upon reading the claims of EP’917 (even before the French national limitation) and comparing them with the parent PCT as filed, I was curious about the examination process. Indeed, it seems that the divisional claims were completely drafted from scratch, combining pieces of wording from several passages of the original disclosure. This is not to say that such thorough redrafting necessarily adds matter. It may be allowable in some cases. But in my experience the EPO almost always at least requires detailed justifications that the skilled person would indeed directly and unambiguously derive the new claims from the original disclosure, which must not be treated as a reservoir from which you are allowed to pick and choose any combination of features.

To my surprise, it seems that the applicant did not submit any indication of a support for the claimed features when filing the divisional application, and that the examiner did not ask any questions and directly agreed to grant a patent.

So I wonder what happened here, and why the applicant was not even asked for any clarification by the EPO. This took place in 2009-2010, which is not that long ago.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 2ème section, February 9, 2018, Createx & North Sails Group LLC v. Incidences Technologies & Incidences SailsRG No. 16/00023.

Follow-up on priority and on SPCs

Dear readers, this is just a brief follow-up post on two topics previously addressed on this blog: partial priority at the EPO and vaccine SPCs.

First, partial priority at the EPO. This was already addressed in the past here and especially there, where I talked about the decision of the Enlarged Board of Appeal G 1/15.

Since then, another decision T 282/12 has been issued and has swiftly been presented on all good blogs (here, here and there).

In this decision, it was ruled that the priority of a claim was partially invalid because the alleged priority document was partially not the first application for the invention at stake.

As I have previously observed, although G 1/15 was almost unanimously welcome by the patent profession as a cure to the toxic divisional plague, the relatively flexible and generous approach of partial priority adopted in this ruling can also turn against patent proprietors when they file successive similar applications.

In this respect, T 282/12 is not really groundbreaking. The same already happened in T 1222/11, the decision which was the first one to theorize the “generous approach” later endorsed by G 1/15. In this earlier decision, the refusal of the patent application at stake was confirmed by the Board due to the invalidity of a priority claim in view of an earlier application (by the same applicant) which contained the same examples as the alleged priority document. I always thought that it was somewhat paradoxical that this decision considered as life-saving by many in fact killed the patent application at stake.

There is one remaining issue which may give rise to additional discussions, though.

T 282/12 states that the priority is only partially, and not fully, invalid if part of the claimed subject-matter was disclosed by the same applicant in an earlier application than the priority document. T 1222/11 was in my opinion not so clear in this respect. However, is it really certain that this is consistent with the Paris convention and the EPC? After all, these treaties do not expressly contain the notion of a “partial first application“.

So, it remains to be seen whether future decisions will be fully in line with this aspect of T 282/12 or not. It also remains to be seen what national courts will make of all this, as they are not bound by the Enlarged Board’s findings – least of all French courts if I may say so.

In the meantime, extreme caution should be exerted when filing successive applications on similar subject-matter, especially when the supporting examples are the same. 

Second topic, totally unrelated to the first one: vaccine SPCs.

Almost two years ago, Lionel Vial reported on this blog on the refusal of an SPC application filed by GlaxoSmithKline Biologicals (GSK) for the Cervarix vaccine by the INPI, and on the confirmation of this refusal by the Paris Cour d’appel.

Interestingly, another French SPC application was filed by a different applicant, namely the Loyola University of Chicago, still for the Cervarix vaccine, and based on the same marketing authorization as the GSK application.

The same causes often produce the same effects. Thus, this second SPC application was also refused by the INPI, and the appeal filed by Loyola was dismissed by the Paris Cour d’appel.

As explained by Lionel in the earlier post, the Cour d’appel considered that the active substance in the Cervarix vaccine was in fact the same product as the active substance in the earlier Gardasil vaccine, for which an SPC had already been granted to GSK.

The Cour d’appel did not change its mind in the Loyola case and reminded that only one SPC can be granted per product. The fact that the patent mentioned in the SPC application as well as the applicant were different did not change anything.

To Loyola’s credit, whether both active substances are actually the same is not straightforward here. This is because one critical protein in the Cervarix vaccine is obtained differently (via insect cells rather than yeast cells), and is truncated, relative to the same protein in the Gardasil vaccine. Therefore, it was probably worth giving it another try despite the previous negative decision.

An interesting variation of the insect pictured in the earlier Cervarix post.

Loyola made ample reference to its own patent and to a later scientific publication as evidence that the difference in protein structure had an impact on biological properties.

But the court said:

[…] The INPI rightly states that this change is minor […]. Even though the appellant claims a different structure and different properties, they do not show that these modifications are anything but minor, as the active substance remains the same and the preventive purpose remains the same. The INPI rightly states that an increase in the capacity to form VLPs, a higher yield, a higher purity level, a more regular shape, a reduction in the risk of cellular DNA encapsidation or even a better stability, are changes which do not alter the nature of the active substance or its preventive purpose; they do not make it possible to conclude that the products are different. 

So, once again, insects and yeast – same difference.


CASE REFERENCE: T 282/12, (Coated tablets / JOHNSON & JOHNSON), Board of Appeal 3.3.07, November 9, 2017, Pfizer Inc. v. Johnson & Johnson Consumer Inc.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, December 19, 2017, Loyola University of Chicago v. Directeur Général de l’INPI, RG No. 2016/17848.

The problem with the problem

Over the years, the Boards of appeal of the EPO have developed a number of rules which are now set in stone. The so-called “gold standard“, used for appraising whether any extension of subject-matter has occurred and whether priority is valid, is a famous one. An even more famous one is the “problem and solution approach” for appraising inventive step.

The problem and solution approach is a very clear reasoning framework which has two fantastic advantages:

  • avoiding an ex post finding artificially ignoring the actual contribution of the invention to the art; and
  • enhancing the predictability of the inventive step assessment, and thus improving legal certainty for all stakeholders, patent applicants and third parties alike.

Make no mistake: I love the problem and solution approach. Especially when I compare it with the Russian roulette of the obviousness rejections that you tend to randomly get at the USPTO.

However, one downside of a clear reasoning framework is that everyone learns how to make the best of it.

Clever patent drafting and sophisticated argumentation can thus sometimes make up for the relatively low inventive merit of some inventions. Correlatively, a number of patent professionals have noted that, for better or worse, the inventive step threshold et the EPO is generally rather low.

In fact, more often than not, whether an application or patent passes the article 56 test mostly depends on the selection of the closest prior art, and on what kind of technical problem you can possibly come up with – and these considerations may sometimes be remote from technical reality.

In such a context, I think it is a good thing when the Boards of appeal remind us that the problem and solution approach should be followed with some flexibility, in order to avoid any artificial outcome which would be unfair to third parties.

The problem and solution game.

I will take two examples of how things can get somewhat skewed in the problem and solution approach; and how some Board decisions can nevertheless offer a way to achieve a right balance.

The first example is taken from T 2123/14, already discussed on Laurent’s blog.

The initial step of the approach is the selection of the closest prior art. As summarized in section G-VII, 5.1 of the Guidelines, “in selecting the closest prior art, the first consideration is that it should be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention“.

It is therefore a classical strategy to insert a number of goals or purposes in the description of the application, and then argue that any prior art reference which does not address one of these goals or purposes is unsuitable for being selected as the closest prior art. This is especially helpful when it is indeed difficult to establish the existence of an inventive step starting from a reference sought to be discarded.

Now, such a strategy may be curtailed by following the reasoning used in T 2123/14. As a disclaimer, please note that I have formed no personal opinion as to whether the claims at stake were actually inventive or not, I will just focus on the principles established by the Board, which seem quite relevant.

In this case, the examining division had refused the application, relating to a cosmetic composition for the hair, for lack of inventive step based on D3 as the closest prior art. But the appellant argued that the closest prior art was not D3 but rather D8, so that inventive step should be assessed only based on D8 as a starting point.

The appellant’s argument, as summarized by the Board, was that:

D8 indeed mentioned as a technical purpose, beside the improvement of untangling, volume, lightness, softness, flexibility and tidiness, also the improvement of smoothing while avoiding a greasy feel […], unlike D3 which did not mention the problem of the hair’s greasy feel or heaviness, and which merely focused on a conditioning effect, on making hair soft and flexible, improving volume, brightness and smoothness of wet and dry hair […].  (Reasons, 1.2.1, translated from the French language).

The Board did not accept this and noted the following:

[…] The claimed subject-matter must involve an inventive step relative to each prior art document. Nothing prevents the relevance relative to D3 from being examined first. If, on the face of it, the skilled person can choose between several prior art documents as reasonable starting points, inventive step can thus be effectively acknowledged only after applying the problem and solution approach to each of the options (T967/97, T21/08). If one of the options reveals obviousness, then there is no inventive step. The problem and solution approach may therefore need to be repeated for each of these options (T710/97). (Reasons, 1.2.2.1).

This is a helpful reminder. A relevant document cannot be swept under the rug by pointing to an allegedly better document. All “reasonable” starting points may have to be investigated. Of course what is “reasonable” and what is not is a matter of case by case analysis.

The decision then goes on by recalling the criterion of the “similar purpose or effect” for the closest prior art. But the Board then adds:

This does however not mean that, when an invention purports to solve a list of specific problems, said closest prior art must necessarily specifically disclose or mention all of these specific problems or more particularly only one of these problems taken in isolation. This is in particular the case for the objective technical problem, which is only established in the second step of the problem and solution approach […]. This is also the case for a technical problem which is solved in an implicit and inherent manner by the closest prior art, although this is not expressly stated in said prior art. 

Thus, simply inserting a purpose or even more so a list/series of specific purposes in the description does not allow the applicant to oppose any objection of lack of inventive step raised in view of a document which does not mention one of the abovementioned specific purposes, if this document was concerned with a similar use(Reasons 1.2.2.3).

In other terms, in order to qualify as a closest prior art (possibly among others), a reference needs to relate to a similar use. But it is not necessary for the document to explicitly address all the purposes that the drafter included in the description of the application or patent.

To me, this is a significant clarification, as the strategy consisting in inflating the number of purposes set out in the description in order to discard possible closest prior arts has certainly been quite effective for a number of applicants / patent proprietors to date.

In the case at hand, the Board found that D3 was indeed a possible closest prior art to take into consideration:

[…] Even if D3 does not explicitly mention the purposes of the claimed subject-matter, it cannot be denied that both documents D3 and D8 show compositions designed for the same goal and belong to the exact same technical field as the present application, namely conditioning shampoos, and therefore have a similar use and the same actions and effects on the hair, in particular in terms of smoothing. 

It can thus be legitimately expected that the type of cosmetic composition disclosed in D3 and D8 generally involves the same technical problems, or technical problems necessarily deriving from the similar use. Besides, even if the properties relating to the absence of a greasy feel or heavy hair are not explicitly recited in D3, it remains that example 5 of D3 does contain said non-silicone fatty components responsible for a possible greasy feel and possible heavy hair. In the absence of any specific indication or remark in example 5 of D3 regarding these properties, it is immediately apparent and obvious for the skilled person that the properties and abilities of the compositions disclosed in D3 are prima facie satisfactory, including regarding a greasy feel or heavy hair. (Reasons 1.2.2.3).

To summarize this latter point: even if a very specific technical problem is not expressly addressed in a reference, the skilled person can sometimes derive from the context that this technical problem is indeed taken into account in the document.

Here is now a second example of a possible flaw in the problem and solution approach favoring the applicant / patentee, and a possible remedy taught in T 2456/13 (decision initially reported on Peter de Lange’s blog).

The issue here is the second step of the problem and solution approach, namely the formulation of the objective technical problem. Sometimes, several technical effects relative to the closest prior art can be possibly contemplated. Depending on which technical effect(s) is/are retained, the solution may or may not be obvious for the skilled person.

The usual strategy for the applicant / patentee is to focus on one or more very specific technical effects, seldom addressed in the art, so as to more easily arrive at a finding of non-obviousness. But in some instances, this may be considered as artificial (and, if I may add, ex post) if, already based on another, less sophisticated technical effect, it would be obvious for the skilled person to arrive at the claimed invention.

The way the EPO may deal with this situation is addressed in section I.D.10.8 of what is commonly referred to as the Case law book. It is called the “bonus effect“:

[…] If, having regard to the state of the art, it would already have been obvious for a skilled person to arrive at something falling within the terms of a claim, because an advantageous effect could be expected to result from the combination of the teachings of the prior art documents, such claim lacked inventive step, irrespective of the circumstance that an extra effect (possibly unforeseen) was obtained. […] An unexpected bonus effect does not confer inventiveness on an obvious solution.

However, my subjective impression is that the bonus effect objection is seldom effective in practice.

One difficulty is how to distinguish a technical effect which is merely a bonus effect from one which absolutely must be taken into account in the formulation of the objective technical problem.

In some decisions, reference was made to “one-way street” situations, in which there is a lack of alternatives for the skilled person, as opposed to situations wherein “the use of means leading to some expected improvements might well be patentable in relying on an additional effect, provided this involved a choice from a multiplicity of possibilities” (see the above section of the Case law book). Clearly, this is a restrictive approach, as I do not think that there are generally many one-way streets in technology.

In T 2456/13, the patent proprietor argued that a secondary reference D3 would not be taken into account by the skilled person as it did not address a certain technical effect, namely the reduction in the tendency to caking.

But the Board considered this effect as a mere bonus effect. The Board did not hold that this was a one-way street situation but adopted another approach:

D3 discloses a generic process for the preparation of sodium percarbonate particles which are coated by spraying on a solution of sodium sulfate and sodium carbonate. […] According to D3, the coating improves storage stability […]. In view of the partial task of improving storage stability, the skilled person would, in the opinion of the board, refer to the relevant document D3, even if no improvement in the tendency to caking is explicitly shown. The person skilled in the art is in fact taught by D3 that, with a coating in the composition range between 82:18 and 69:31 parts by weight of sodium sulfate to sodium carbonate, particularly stable percarbonate particles can be obtained. […] He would try to adjust the advantageous ratio indicated in D3 and thus reach the claimed article.

A (slight) improvement in the tendency to caking is necessarily also obtained. In the opinion of the board, it constitutes an additional or bonus effect, which cannot justify an inventive step. The board takes into account that the improvement in the tendency to caking is only slight […] and possibly for this reason not mentioned in D3. (Reasons 4.9, translated from the German language).

This decision thus provides a possible criterion for establishing that a technical effect is merely a bonus effect, namely the relative low magnitude of the effect.

Of course, we should bear in mind that this is only one factor among others that may have to be taken into account.

All in all, these two decisions may helpfully contribute to containing some of the possible abuses of the problem and solution approach leading to artificial non-obviousness findings.


CASE REFERENCES:

T 2123/14, Board 3.3.07, October 27, 2016, L’Oréal.

T 2456/13, Board 3.3.05, March 7, 2017, Evonik Treibacher v. Kemira Oyj.