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 However, the number of settled cases after a decision on the merits (i.e. excluding cases in which the appeal was withdrawn, or the statement of grounds of appeal was not filed, etc.)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What I think this all means is that backlog is likely to increase – unless the proportion of withdrawn appeals and the like were to increase for some reason.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?

Clean sweep

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The claim at stake was the following:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Wishful blogging

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

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

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

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

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

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

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

The new guidelines are apparently divided into three parts:

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

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

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

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

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

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

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

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

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

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

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

Two paragraphs down, the following is added:

In such cases, the following formulations are accepted: 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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.

Orange on a new track

One of the first posts of this blog was dedicated to a prominent lawsuit between two telecom operators, Orange and Free. As was reported at the time, Orange claimed infringement of the French part of its European patent EP 2044797.

Orange lost in first instance, as the Paris Tribunal de grande instance (TGI) revoked the patent in a judgment dated June 18, 2015. Some of the claims were found to lack novelty, while others were found to be directed to computer programs as such, i.e. were found not to be directed to patent-eligible subject-matter.

Orange lodged an appeal against this decision on July 27, 2015 – which as far as I can tell is still pending. However, there was an interesting side development, which leads me to today’s discussion.

On August 26, 2015, Orange filed a request for limitation of the French part of the European patent at stake. This is now a classical move in patent litigation in this country: amending claims so as to render a nullity challenge moot. Since the confirmation rate at the appeal stage is relatively high, the limitation of a patent after a revocation in first instance is sometimes the only way to shake things up for the patentee.

On September 2, the Institut National de la Propriété Industrielle (INPI) accepted the request for limitation. This is only one week after the request was submitted. This is fast, isn’t it? As in light’s speed fast, actually. A centralized limitation of the patent at the European patent office (EPO) would certainly have taken much longer, at least several months. This is certainly a strong incentive for going the national way when considering the limitation of a patent.

Free, the alleged infringer and nullity claimant, that prevailed in first instance, lodged an appeal against the limitation decision. Appeals against decisions issued by the INPI are handled by the Paris Cour d’appel. In this case, the appeal gave rise to two judgments, both dated September 9, 2016.

Why two judgments? Well, part of the case made by Free was that several provisions of the Code de la propriété intellectuelle (CPI) are contrary to the French constitution. This what is called a QPC, which stands for “question prioritaire de constitutionnalité” (or priority constitutionality question). QPCs are referred to the Conseil constitutionnel – which is our supreme court for constitutional issues – but only after passing two filters. The first filter is that the court to which the QPC is submitted must accept to forward the QPC to the Cour de cassation or the Conseil d’Etat (respectively judicial supreme court and administrative supreme court). The second filter is that the Cour de cassation or the Conseil d’Etat must then accept to forward the QPC to the Conseil constitutionnel.

The QPC system is out of the scope of the present post. It will suffice to say that in the present litigation the QPC was handled separately from the rest of the case, hence the two judgments.

The constitution - beautiful as a pyramid. But wait - this is not the right constitution is it?
The constitution – beautiful as a pyramid. But wait – this is not the right constitution is it?

However, the outcome was similar as both Free’s appeal per se and its QPC were held inadmissible.

There are not many details in both judgments regarding Free’s arguments on the merits. It is simply stated that they claimed there was “an absence of clarity and concision of the limitation, which, in the absence of a corresponding description, is not a limitation“.

The court discarded these objections to the limitation with the following paragraph:

[…] The arguments made by Free and Freebox in favor of their request for cancellation of the decision of the INPI’s director can in fact be analyzed as arguments of nullity of the patent which is asserted against them in the context of the infringement suit […]. These arguments intend to call into question the limitation itself, namely the conformity of the amended claims to the applicable legal provisions. They pertain to the jurisdiction of the judge in charge of controlling patent validity, which in this case is actually already involved. This jurisdiction extends to arguments relating to an alleged extension as well as relating to a lack of clarity of the claims or their absence of support in the description. 

This finding will not come as a surprise to all those familiar with previous case law on limitation proceedings. It is consistent with a number of previous rulings. Courts are not keen on allowing appeals against national limitation decisions; they believe that whether the limitation complies with the requirements of the CPI should be handled in the context of a nullity action or claim.

However, to some extent this established case law is problematic, as many observers have long realized. Indeed, grounds for nullity (be it of a French patent or a French part of a European patent) include inter alia lack of novelty, lack of inventive step, insufficiency of disclosure, extension of subject-matter and extension of the scope of protection. This list of grounds for nullity is provided in article L. 613-25 CPI for French patents and article 138 EPC for European patents (to which article L. 614-12 CPI makes reference).

However, a lack of clarity or concision of the claims, or a lack of support of the claims by the description, are not grounds for nullity. All European practitioners know very well that lack of clarity or support by the description are not grounds for opposition at the EPO – well the same is true of grounds for nullity.

On the other hand, clarity, conciseness and support by the description are requirements which are to be taken into account in examination proceedings but are not supposed to be reviewed in a nullity suit.

Importantly, these requirements are also taken into account during limitation proceedings – which may be viewed as a partial reopening of examination. This is true of centralized limitation at the EPO, but also of national limitation. See in particular article L. 613-45 CPI, which sets a number of conditions to be examined by the INPI when a request for limitation is filed:

[…] If, when the limitation is requested, the amended claims are not a limitation with respect to the previous claims of the patent, or if they do not meet the requirements of article L. 612-6, this is notified in a substantiated manner to the petitioner. A time limit is set to regularize the request or file observations. If there are no regularization and no observations overcoming the objection, the request is rejected by a decision of the director of the INPI. […]

As for article L. 612-6 referred to above, it reads:

The claims define the subject-matter of the protection which is requested. They must be clear and concise and be supported by the description. 

Therefore, it seems that clarity, conciseness, and support by the description are legal requirements that the INPI must check when examining a request for limitation. And those are not grounds for nullity. Thus, if amended claims that are unclear, lack conciseness, or are unsupported by the description (which is not the same as covering subject-matter extending beyond the contents of the application as filed) are nevertheless accepted by the INPI, it would make sense to be able to challenge the work done by the INPI in the context of an appeal against the limitation decision.

But the Cour d’appel, in this case like in previous ones, said this was the job of the judges in charge of the nullity complaint. Therefore, we can only hope that, for reasons of consistency, those judges will actually and seriously review compliance of the amended claims with article L. 612-6 CPI – even if it is not part of the official list of grounds of nullity…

Another argument made by Free was that a number of provisions of the CPI contravene non only our constitution, but also article 6 of the European Convention on Human Rights (ECHR) on fair trial. The court noted that the objection based on article 6 ECHR was actually the same as the objection which gave rise to the QPC. Thus:

First, the INPI is an administrative public institution which cannot be subjected to all rules on fair trial. Second, it was already stated that this [QPC] is the subject-matter of a distinct procedure registered under number RG 15/24934 and is dealt with in another judgment also issued today. Free and Freebox can therefore not ask the court to decide on a question which they request should be examined first by the Conseil constitutionnel. 

If I understand the first sentence in this paragraph, I cannot help wondering about the second part. If my law school memories are correct, the Conseil constitutionnel does not control compliance of French laws with the ECHR or any other international treaty. This task is left to judicial and administrative judges. It seems that Free’s objections to the law were basically the same from the viewpoint of the ECHR and of the French constitution. But there were apparently two distinct legal bases for the objections, and I wonder whether it was correct to lump them together.

So, let’s move on with the second judgment on the QPC. The legal provisions which were challenged in the QPC were articles L. 613-24, L. 613-25 and L. 614-12 CPI. The first one is the main legal provision allowing a patentee to request a limitation of its patent. The second one contains the grounds for nullity of a French patent and specifies that the patent may be limited in the course of a nullity action. The third one provides that the grounds for nullity of a European patent are set forth in article 138 EPC and that it is possible to limit the patent in the course of a nullity action. According to Free, these articles breach fundamental rights enshrined in the constitution, including the right to a fair trial.

What was the court’s reaction? Well it simply dismissed the QPC by noting that

the admissibility of the [QPC] which is raised in the course of the appeal against the decision of the INPI of September 2, 2015 depends on the admissibility of said appeal.

Since the appeal was dismissed as inadmissible, as noted above, the QPC was therefore also held inadmissible.

This is a little bit of a vicious circle. According to this reasoning, how can one possibly challenge the constitutionality of a legal provision which makes an appeal inadmissible?

We will see what happens in case Free raises the QPC again in the course of the appeal proceedings in the merits.

As a last word, it may be interesting to look at the claims as limited, which can be found here on the online register. Claims 1, 4, 9 and 11 were modified by the insertion of a number of additional features.

Also, claims 12 to 15 directed to a software product and to a support for the software were deleted. Those were the claims which were found in first instance to relate to excluded subject-matter.

The deletion of these claims looks like a good move, strategically speaking. But it is too bad that we will not get the Cour d’appel’s take on the patentability of claims directed to “software products” as well as software supports.

CASE REFERENCES: Cour d’appel de Paris, Pôle 5 chambre 2, September 9, 2016, Free & Freebox v. Directeur général de l’INPI & Orange, RG No. 15/21319; and Cour d’appel de Paris, Pôle 5 chambre 2, September 9, 2016, Free & Freebox v. Directeur général de l’INPI & Orange, RG No. 15/24934.