The Year of the Pepper: 2019 Enlarged Board of Appeal Year in Review

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It has been a busy year for the Enlarged Board of Appeal. 2019 has seen four referrals from the Boards of Appeal and one decision. The more controversial of this year’s referrals (namely Pepper and Computer simulated inventions) have attracted a large number of third party comments. Other referrals (i.e. “Double-patenting”) seem to have dropped off the radar of even the EBA. Readers may therefore be forgiven for losing track. Fear not, IPKat is here with your 2019 Enlarged Board of Appeal Year in Review!

Refund of appeal fee (G 1/18)

The outcome of the only referral to the EBA in 2018 was announced in July 2019: Enlarged Board of Appeal opinion on G 1/18, and published a month later: When will the appeal fee be refunded?: G 1/18, the decision. The referral was one of the last actions of outgoing EPO President Batistelli. The President asked for clarity on what should happen when an appeal fee is paid after expiry of the deadline for filing an appeal. Has the appeal been validly filed? Should the appeal fee be refunded?: The intractable question of “inadmissible” or “late filed” appeals – G1/18. In a clear and well-reasoned decision, the EBA sided with the majority of third party commentators, and concluded that the appeal fee should be refunded.

Computer simulated inventions (G 1/19)

The patentability of software (which takes the form of computer “simulated” or “implemented” inventions under the EPO’s problem and solution approach) is a controversial topic. In the first of a couple of referrals in February, a Board of Appeal (3.5.07) sought clarity from the EBA on the patentability of computer-implemented simulations (T 0489/14): The patentability of computer simulated methods – another referral to the Enlarged Board of Appeal. The referral was followed by comments from the EPO president: Comments from the EPO President on the patentability of computer-implemented simulations (G 1/19). The President appears broadly in favour of the patentability of computer-simulated inventions. The referral particularly relates to claims having both a technical and non-technical character. The referral asks whether the non-technical features of such an invention and/or the technical purpose of the invention can be considered in the assessment of inventive step.

G 1/19 has received a large number of amicus curiae from third parties. A number of the amicus curiae are from large software companies, who are unsurprisingly in favour of the patentability of this kind of software invention (e.g. Siemens, Philips and IBM). CIPA and EPI have also all given their view, which are in favour of including the technical purpose of a claim in the assessment of inventive step.

Clarity in appeal and is Munich in Haar? (G 2/19)

The second referral in February related to appeals procedure. The referral sought an answer to whether a clarity objection can be discussed in appeal oral proceedings. Clarity can not be raised in opposition (accept in response to a Patentee’s post-grant amendment). A clarity objection may be raised in examination by a third party (Article 115 EPC). In the case in question (T 831/17), in order to pursue a clarity objection after grant, a third party filed an appeal against the decision to grant the patent (EP2378735). The appeal was rejected as inadmissible. However, the Board of Appeal referred the question to the EBA of whether the appellant still has the right to oral proceedings even when an appeal is deemed inadmissible.

In response to the referral, the EBA decided that following an inadmissible appeal, a third party is not entitled to oral proceedings in order to discuss the third party’s clarity objections. The EBA therefore closed the door on the possibility that clarity may be discussed as a ground of opposition in appeal proceedings: Enlarged Board of Appeal releases full reasoning in G2/19. The opposition period for the granted patent has now expired.

The final question in the referral raised a collective sigh from many in the patent community. The question related to whether Haar could really be said to be situated in Munich: Where is Haar and how did it get there? Observations on Geography while Waiting for G2/19. In particular, did the location of oral proceedings in Haar contravene a party’s right to be heard? Rather unsurprisingly, the EBA decided that Haar was in Munich. [Merpel: Whilst relocation of the Boards of Appeal was undoubtedly an unpopular move, was it really necessary to expend EBA time on such a question?]

Pepper (G 3/19)

Of the four referrals to the Enlarged Board of Appeal in 2019, the most controversial was the EPO President’s (Antonio Campinos) referral following the Board of Appeals decision on the patentablity of Syngenta’s application for a pepper plant. The referral related to the old chestnut of whether products produced by essentially biological processes (i.e. natural processes) are patentable. Some had thought that new Rule 28(2) EPC, which was amended by the Administrative Council to explicitly state that plants produced by natural processes are not patentable, had laid the matter to rest (OJ EPO 2017, A56). However, at the end of last year, the Board of Appeal (3.3.04) in T 1063/18 found that Rule 28(2) EPC was void because it contradicted the interpretation of Article 53(b) EPC in 2015 by the EBA in G 2/12 (Broccoli/Tomato II): BREAKING: TBA decides that Rule 28(2) EPC, excluding plant products produced by essentially biological processes from patentability, is void.

News first came of the referral at the end of March 2019 following an Administrative Council meeting: BREAKING: President to refer the patentability of plants produced by essentially biological processes to the EBA. Part of the controversy surrounding the EPO President’s referral, published in April, is that it appears prima facie inadmissible: Pepper gets spicy: The EPO President’s Referral to the EBA.

Whilst not wishing to make everything about Brexit, it is possible that Brexit will have an impact on the eventual outcome of the stand-off between the EU/EPO President/AC and the EPO Boards of Appeal. The AC amended Rule 28 EPC to specify that products produced by essentially biological processes are not patentable following a opinion from the European Commission on the Biotech Directive (Directive 98/44/EC): EPO’s Administrative Council powerless to amend the EPC: The latest on T 1063/18. The UK has in the past been one of the strong proponents for the patentability of plant products produced essentially by biological processes. However, whilst G 3/19 has attracted 41 amicus curiae from interested parties, including the German, Austrian, Polish and Danish Governments; the Portuguese, Czech Republic and Spanish patent offices; the EU itself and CIPA, there have been no comment from the UK Government. [Merpel: Perhaps they have been too busy?]

It is hoped that 2020 will see the Enlarged Board of Appeal’s response to the President’s referral. If, as is widely expected, the EBA refuses the referral as inadmissible, all eyes will be on the President’s response. If the EBA dismisses the appeal, or agrees with the Board of Appeal in T 1063/18, this will keep the EPO case law at odds with the potential position of the CJEU (should the CJEU follow the EC opinion). In the meantime, proceedings in examination and opposition cases relating to products produced by essential biological processes have been stayed.

Double patenting (G 4/19?)

This referral does not appear to be high on the EBA’s priority list. The referral from a Board of Appeal (3.3.01) occurred in February: Breaking: New referral to the Enlarged Board of Appeal on double-patenting. However, details of the referral and its appeal number have not yet appeared on the EBA website. The referral relates the issue of double-patenting, particularly whether an applicant may have legitimate interest in double-patenting in a case of internal priority. In another sign that the referral is not high on the EPO’s priority list, the written decision from Board of Appeal has only just been published (T 0318/14).

The EBA therefore has a busy year to come. The questions asked of the EBA this year, in both Computer Simulated Inventions and Pepper are particularly thorny, relating as they do to the fundamental question of what should be patentable. It is hoped that the EBA will provide some clarity on these issues in 2020. However, as we have seen with the Tomato/Broccoli and Pepper saga, it is always worth remembering that an EBA decision is not always the end of the matter.
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