Hot numbers

Case law decisions are seldom an easy read. So today’s post will be relaxing, as it deals with some recently published stats. Numbers instead of letters for a change, in the form of the annual report of the Boards of appeal of the EPO, published in the OJ. This yearly publication is a nice source of general information on the activity of the Boards of appeal in the past year.

Here is my selection of subjective highlights from the report. I will focus only on the technical boards of appeal, which handle the vast majority of appeals at the EPO.

First, the total number of new cases, has increased to a record total of 2748. That’s a 15% increase relative to 2015, but only a 6% increase relative to 2012, since there was a drop in new cases in 2013 and 2014.

Second, the total number of settled cases is almost stable at 2229 (down by 3% relative to 2015). However, the number of settled cases after a decision on the merits (i.e. excluding cases in which the appeal was withdrawn, or the statement of grounds of appeal was not filed, etc.) was only 1243, down by 9% relative to 2015.

What I think this all means is that backlog is likely to increase – unless the proportion of withdrawn appeals and the like were to increase for some reason.

This seems to be confirmed by the comparison of the number of pending cases on December 31, 2016, relative to the number of pending cases on December 31, 2015: 8381 vs. 7862. That’s a 6.6% increase.

This also seems to be confirmed by the evolution of the number of cases pending over two years on December 31, 2016, which is 3979 (up by 5% relative to December 31, 2015). The oldest appeals still pending were filed in 2008.

The overall length of proceedings was 2 years and a half, or more precisely 37 months on average (40 months for ex parte appeals and 34 months for inter partes appeals), up by 1 month since 2015.

Hopefully measures will be taken to curtail the increasing backlog. At the very least, the positions in the Boards which are still vacant should be filled soon. In fact, based on the Supplementary publication No. 1 in the 2017 OJ (Information from the Boards of Appeal Presidium, business distribution and texts relating to the proceedings), there are still a number of missing Board of appeal members as of the beginning of 2017.

The most striking example is Board 3.3.02, with no chair and three positions of technical members out of four which are vacant. A helpful footnote indicates that “in view of the vacancy situation in Board 3.3.02, the provisions of Article 3, paragraph 3 will be followed for the composition of the board in particular cases“. Article 3(3) of the Business distribution scheme provides that “if the circumstances of the appeal make it necessary, the Chairman may designate a technically qualified member from another Board. In so doing he shall procure the consent of the Chairman of that Board“. But I am not sure how this can work since there is not even a chairman in this Board.

I would certainly be curious to get some updated information from knowledgeable readers about the vacancy situation – and especially, about what the heck is the matter with Board 3.3.02.

Anyway, back to the 2016 annual report, and let’s now look at the proportion of ex parte and inter partes cases.  Here, the trend seems to be an increase in the proportion of inter partes cases. These cases represent 66% of all new cases in 2016, up by 5.3% since 2014. Inter partes cases are generally more complex than ex parte cases. So this trend will not help reduce the backlog.

In terms of technical fields, appeal cases are traditionally distributed into four groups: mechanics cases (handled by Boards 3.2.01 to 3.2.08), chemistry cases (handled by Boards 3.3.01 to 3.3.10), physics cases (handled by Boards 3.4.01 to 3.4.03) and electricity cases (handled by Boards 3.5.01 to 3.5.05). Of course those are very rough categories.

Since 2014, there has been a marked increase in both the number and proportion of mechanical cases (36.8% of all new cases in 2016), an increase in the number of chemical cases, which only translates into a moderate increase in relative proportion (32.8% of all new cases in 2016), a stability in the number of physical cases (9.4% of all new cases in 2016) and actually a reduction in the number of electrical cases (21% of all new cases in 2016).

It is also quite interesting to look at the proportion of opposition cases relative to the total number of cases, depending on the technical field:

  • Mechanics: 86%.
  • Chemistry: 77%.
  • Physics: 37%.
  • Electricity: 27%.

I assume that the major explanation for this large discrepancy is that the refusal rate is very low in mechanics and chemistry, and that it is higher in physics and electricity, especially because those are the categories in which most computer-implemented inventions are classified. As far as I can tell based on the work my partners Aujain and Patrick do, prosecuting software-related applications at the EPO is an entirely different game from prosecuting other applications. Now, a higher refusal rate probably translates into a higher examination appeal rate.

The outcome of the appeals, further to a decision on the merits, differs depending on the nature of the cases (ex parte or inter partes). The majority of examination appeals are dismissed (54.7% in 2016), but the contrary is true for opposition appeals (only 39.3% in 2016).

In opposition cases, the actual outcome of a successful or partly successful appeal can of course vary greatly. In 4% of cases, the opposition is rejected. In 20.5% of cases, the patent is revoked. In 23.8% of cases, the patent is maintained in amended form, and in 12.4% of cases there is a remittal to first instance.

Has anyone ever had a feeling that getting your appeal in a proper success percentile was a matter of roulette game?

All of this is fine and well, and we are grateful for this report. But there is also a lot that the report does not say. I will take three examples.

First, the report does not address discrepancies from one board to the other in terms of duration of the proceedings.

In the past I sometimes performed a quick and empirical analysis of the length of appeal proceedings in front of a particular board, based on a representative sample of recent decisions, when my client was interested in predicting how long it would take until a final decision for a particular case.

It turns out that the variation from one board to the other is huge, probably from less than 2 years in front of some boards to more than 5 years in front of other boards. This is a major problem which I think would deserve to be better documented – and addressed.

Second, the report does not address board-to-board discrepancies in terms of practice and outcome which, again, I suspect, can be significant.

From time to time, some law firms publish studies focusing on certain aspects.

For instance, JA Kemp recently published a review of software patent decisions in 2016. The review in particular shows a high refusal / revocation rate, which again is to be expected in this specific technical field.

Also, a very informative article by Maarten Nollen can be found in epi Information 1/2015, which focuses on revocation decisions issued in 2014. The article again illustrates interesting differences depending on the technical field at stake.

Third, the annual report does not contain any global evaluation of the outcome of opposition proceedings when taking into account first instance and appeal. Everyone has in mind a rule of thumb of the “three thirds” (i.e. one third of oppositions rejected, one third of patents revoked, and one third of patents maintained in amended form). However, interestingly, the rule may not be accurate when one looks at oppositions under appeal. In the abovementioned article, Maarten Nollen claims that the overall revocation rate for such cases is actually more than 50%.

So, too bad that the annual report is somewhat limited and that no comprehensive statistical analysis of the activities of the Boards of appeal has been made available. On the other hand, this is not completely surprising. Statistics are almost by nature political. Therefore, is it not a natural tendency for all institutions to make a selection of numbers according to their agendas?

Request not found

It is always much more difficult to get what you want from the patent office when you do not know exactly what you want. Or even worse, when the patent office does not know exactly what you want.

Looking at a recent batch of EPO case law decisions issued in French, I came across one example which illustrates this harsh principle. I realized a little bit late that the decision had already been discussed on the Blog européen des brevets, but here it goes anyway.

European patent No. EP 1265983 assigned to the Swiss company Danstar Ferment AG was opposed by Lesaffre International. Back in 2011, the patent was revoked by the opposition division. The patent proprietor appealed, and sadly for all users of the patent system, it is only five years later that the Board of appeal issued its decision, which is… that the appeal was inadmissible! Unfortunate that a case such as this one could not be disposed of earlier.

The reason for the inadmissibility of the appeal was that “the request which defines the object of the appeal is unclear (article 108 EPC in combination with Rules 99(1) and 99(2) EPC) (reasons, 6).

The board summarized the legal framework leading them to this conclusion in section 2 of the reasons for the decision:

According to established case law of the Boards of appeal, the appellant’s case must be presented in a consistent, clear and substantiated manner in the statement of the grounds of appeal, not only in relation with the appellant’s arguments, but also in relation with its requests (see, inter alia, decisions T 760/08 of January 19, 2010, reasons 5, and T 446/00 of July 3, 2003, reasons 2.1.1). Indeed, the purpose of the statement of the grounds of appeal as well as of the notice of appeal is to define the extent of the appeal. This definition is solely and exclusively made by the appellant (see, inter alia decision T 2532/11 of October 14, 2013, reasons 2.5.1). It is important to emphasize that, according to established case law, it is also the parties’ duty to state their requests and decide on the order of these requests (see, inter alia, decision T 148/06 of January 8, 2008, reasons 2). 

Point well taken. So, what happened in this case? First, the notice of appeal itself did not expressly state any request except that the decision under appeal should be set aside. Second, the statement of the grounds of appeal contained a discussion on claim 1 as granted and then on four auxiliary requests (referred to as “propositions of auxiliary requests” at some point in the brief).

The problem is that Danstar’s main request in first instance was not the maintenance of the patent as granted (rejection of the opposition), but rather the maintenance of the patent in an amended form.

The Board stated that it was thus unclear whether the appellant’s intention was to replace the main request filed in first instance with a new main request according to which the opposition should be rejected.

Also, the Board claimed that the so-called “propositions of auxiliary requests” could be meant to replace the previously filed auxiliary requests but could also be additional auxiliary requests.

Therefore, said the Board,

The appellant did not refer one or more clear, precise and converging requests to the Board, which would make it possible to unambiguously define the object of the appeal. 

As a side note, I wonder why the Board mentioned “converging” requests in this sentence. Surely, the converging nature of the requests is only of relevance for the admissibility of the requests themselves, and not for the admissibility of the appeal as a whole. Or is it not?

The Board made reference to some decisions, in particular T 1554/12 and T 1538/09, in which the appeal was held admissible although the appellant’s requests were contradictory or imprecise. The difference between the present case and these earlier ones was, according to the Board, that in the earlier cases the intent of the appellant was clear (despite the imprecise wording), whereas it the present case it was not.

I wanted to see for myself and thus had a look at Danstar’s statement of grounds of appeal. One can only concur with the Board that no main request was set forth in the brief. Since claim 1 of the patent as granted was discussed, it could be argued that the appellant’s intent was to go back to this original version (as opposed to the main request cited in the first instance decision, which is not cited in the brief).

On the other hand, no corresponding set of claims was attached, and the brief was silent on the dependent claims. Therefore, the Board could also have noted that the appellant’s intent with respect to the dependent claims was not clear – although, again, it may be logical to surmise that the dependent claims were also maintained unamended, just like in the auxiliary requests.

Speaking of auxiliary requests, the Board’s view on those may be considered somewhat strict. The four sets of claims were indeed attached to the statement of grounds of appeal, and the unfortunate expression “propositions of auxiliary requests” used at some point in the brief probably did not introduce a fatal ambiguity. Indeed, it was stated at the beginning of the letter: “we attach four auxiliary requests” (not four “propositions“).

In short, it seems relatively clear that the four sets of claims attached to and commented on in the statement of grounds of appeal were those that the appellant intended to rely on in the course of the appeal proceedings.

An interesting question is whether this makes any difference though. Possible answer 1 is: no, if the Board believes that the main request cannot be properly understood, the appeal cannot be decided upon at all, and it has to be held inadmissible. Possible answer 2 is: yes, the Board could disregard an unclear main request and then directly examine the auxiliary requests.

Practically speaking, the appellant did not really fight, which may partly explain the decision. They did not reply to a communication from the Board containing a preliminary opinion which was negative for them both on the admissibility of the appeal as well as on the merits of the case, and both parties renounced their right to oral proceedings.

Anyway, the take home message for us European patent professionals is that we should be crystal clear when we state our requests, and preferably use the keywords that the EPO departments expect from us (“main request“, “auxiliary request No.X“, etc.), as they are not huge fans of guesswork.

There is always a way to know what an appellant's requests are.
There is always a way to know what an appellant’s requests are.

CASE REFERENCE: T 1435/11, Board of Appeal 3.3.08, May 20, 2016, Danstar Ferment AG v. Lesaffre International.

A fishy appeal?

It is not an easy task to report on case law from the EPO Boards of Appeal, as there are so many commentators in the blogosphere (and elsewhere) poised to jump on any fresh decision that being original is tricky, unless you do high frequency posting. Nevertheless, I am wondering whether decisions drafted in French might as a general rule fly a little bit more under the radar, since French is certainly the official language of the EPO which is the least spoken by the European patent profession.

With that in mind, here is a report on one of these low flying decisions, which I find noteworthy for two reasons. The first reason is that the main claim of the patent in suit was directed to a container containing precooked tuna fish, which opens up an ocean of possible aquatic puns for this blogger. And the second reason is that the decision deals with an interesting point of law regarding the burden of proof in appeal proceedings.

The patent owned by Brittany-based Etablissements Paul Paulet had been revoked by an opposition division due to insufficiency of disclosure.

Claim 1 as granted was the following:

A rigid container containing foodstuff, the container comprising a receptacle and a cover and being made of a material selected from aluminum, steel, glass, or a plastics material that is oxygen-proof, the foodstuff being constituted by pre-cooked fish that is in solid form, eventually comprising an additive, a preservative, or a small amount of water or oil, characterized in that

– the closed container presents substantially no liquid after sterilization, such that the liquid content is less than 10% of the total weight of the content, and

– the container contains only the foodstuff and a gas, wherein the volume content of dioxygen in the gas is less than 15%, the gas being nitrogen.

Both features of the characterizing part of the claim were viewed by the opposition division as raising implementation issues.

If we focus on the liquid content feature, the opposition division noted that the patent taught to place the precooked fish into the container, add liquid nitrogen which will be turned into gaseous nitrogen, then close the container and sterilize the product. Based on various statements made by the patent proprietor during the opposition proceedings and information contained in the patent itself, as well as in an experimental report referenced as T4 (filed – unfortunately – by the patent proprietor), it could be concluded that, during the sterilization step, the liquid content in the container can change, and in particular can increase or decrease. Many factors may influence this change in the liquid content, including the type of fish, the precooking procedure, the shape of the fish, the additives and the conditions of sterilization. The opposition division deemed that the patent did not teach how to control these various parameters.

A container for fish hopefully containing more than 10% of liquid
A container for fish hopefully containing more than 10% of liquid

With its statement of grounds of appeal, the patent proprietor filed a modified version of claim 1 as a main request (corresponding to one of the auxiliary requests discussed in first instance). In this modified version of claim 1, the material of the container was somewhat restricted, and the nature of the fish was further specified to be “pre-cooked tuna fish in solid form“.

With the summons to oral proceedings, the Board expressed the preliminary opinion that there was an issue of sufficiency of disclosure with the liquid content feature, although it did not share the view of the opposition division regarding the other feature of the nitrogen / oxygen content.

One month before the oral proceedings, the patent proprietor submitted a new document T18, which was an experimental report focusing on the processing of tuna fish. The admissibility of document T18 at this late stage of the proceedings was debated in front of the Board, in view of R. 13(3) of the Rules of Procedure of the Boards of Appeal.

The patent proprietor’s argument was that:

  • the first instance decision relied on experimental report T4, in which experiments were conducted on billfish product;
  • the main claim was now restricted to tuna fish, so that the first instance decision was no longer applicable;
  • the Board raised a new objection in the preliminary opinion by stating that even with precooked tuna fish the variations in liquid content were unpredictable;
  • therefore the patent proprietor had reacted in a timely manner by filing the new experimental report T18 focusing on tuna fish.

The Board rejected the argument by analyzing the first instance decision, which mentioned a number of ill-controlled parameters influencing the liquid content and not just the type of fish; and by noting that the main request in the appeal was the third auxiliary request in first instance and had thus also been rejected by the opposition division.

The most interesting part of the discussion relates to whether the admission of T18 into the proceedings would violate the opponents / respondents’ right to be heard – in view of the lateness of the filing. The appellant said no, because the respondents had failed to provided detailed justifications and evidence in their response to the statement of grounds of appeal; on the other hand, the appellant did not have to file additional evidence with its statement of grounds of appeal since:

the burden of proof of insufficiency of disclosure lies exclusively with the opponents, in all circumstances. This also applies on appeal further to a decision revoking the patent for insufficiency of disclosure, notably when the grounds of the decision at stake no longer adversely affect the appellant due to a modification of the claimed subject-matter (reasons, 1.4.1).

The Board rejected the argument in view of the very nature of the appeal proceedings.

The respondents brought forward elements during the opposition proceedings which were apparently sufficiently credible as to the impossibility to carry out the invention in a systematic and reproducible manner by relying on the information contained in the patent; moreover, this information would be too limited and contradictory. This led the opposition division to hand down the decision at stake, which was duly reasoned. This decision not only brings an end to the opposition proceedings, but also as a consequence assigns different roles to the parties for the appeal stage. Once the patent has been revoked, it is up to the patent proprietor as the appellant to take a more active part and present, firstly, a detailed argumentation in its statement of grounds of appeal, even if by filing a new set of claims the grounds for the challenged decision seem to be overcome. The appellant cannot simply wait for the respondents to demonstrate the invalidity of the patent.

The patent proprietor, as the appellant, must therefore act against the challenged decision, that is, must, in the present case, demonstrate that common general knowledge does make it possible to carry out the invention based on the patent. This demonstration must be complete and not selective, without waiting for the Board or the parties to invite it to develop it more. In this respect, the appeal proceedings are not a continuation of the opposition proceedings but a new procedure instituted by the appellant. Therefore, the principles which initially governed the opposition proceedings are no longer necessarily applicable at the appeal stage, and those stated in the Rules of Procedure of the Boards of Appeal replace them, notably the duty to provide the complete means in view of which the decision cannot be maintained. A patent proprietor who thinks that they can discard the basis for the challenged decision owing to grounds of appeal limited to only one aspect of said decision runs the risk of later being in a situation where the filing of additional grounds or evidence during the appeal proceedings may be considered late under articles 13(1) and/or 13(3) RPBA (reasons 1.4.2).

I think it is fair to say that the burden of proof of insufficiency of disclosure on the opponents is a very heavy one in opposition proceedings.

However, according to the present decision, the onus shifts on appeal, if the patent is revoked by the opposition division. More generally, it can be derived from the Board’s comments that the first instance decision is presumed valid until the contrary is proven – although I am not sure that this has often been stated in this way in the case law.

On the merits, the Board reached a similar conclusion as the opposition division regarding the unpredictability of the liquid content in the container after sterilization, and therefore dismissed the appeal.

The parties will have the opportunity to continue the discussion and fish for further arguments on the liquid content feature, since there are opposition proceedings pending in connection with the divisional patent, and since the same feature is present in the independent claims. My guess is it will be an uphill battle for the patent proprietor but at least they can hope to be able to rely on the additional evidence that the Board has refused to take into account in this case.


CASE REFERENCE: Board of Appeal 3.2.07, T 30/15, Etablissements Paul Paulet v. Princes Limited & Bolton Alimentari S.P.A, January 20, 2016.