A Question of Priorities: 2019 Boards of Appeal Year in Review

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In the second of IPKat’s 2019 Patent Year in Reviews, we provide a break-down of some of the important Board of Appeal cases published this year . The end of 2019 comes too early for the most highly anticipated appeal case of the times (the Board Institute’s CRISPR appeal), for which oral proceedings are being held in January. However, the discerning EPO case law enthusiast can still find plenty to interest them in the Boards of Appeal cases published this year. Highlights include a new approach from a Board of Appeal on the novelty of purity inventions (T 1085/13), a couple of cases on the burden of proof (T 2037/18, T 1299/15) and a foreshadowing of the type of arguments expected to become more common following introduction of the revised Rule of Procedure of the Boards of Appeal (RPBA) on 1 January 2020 (T0688/16). See also the IPKat 2019 Enlarged Board of Appeal Year in Review.

Priority

The European patent community is eagerly awaiting the outcome of oral proceedings in the high-profile CRISPR case. The exceedingly long written submissions (and occasional impassioned rhetoric) are a mark of the cases’s importance: “Should everyone else change, or just the Patentee?”: Progress of the Broad’s CRISPR appeal. The Board of Appeal (3.3.08) has already issued its preliminary opinion: BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18). It is widely expected that the Board of Appeal will dismiss the appeal. In a straw poll of the audience of the recent 2019 CIPA life science conference delegates, not one hand was raised to indicate an expectation of a positive outcome for the patentee. A decision in favour of the patentee would send a shock-wave through the European patent community.

However, the issue at stake in the CRISPR case is not the only game in town when it comes to priority at the EPO. There is growing appreciation that another issue of the EPO’s approach to priority needs consideration by the Boards of Appeal. The EPO’s approach to co-applicants when assessing a priority claim is one that is growing in prominence. It is hoped that the Board of Appeals will soon consider this issue and provide some much needed clarity for applicants: Clarity is needed from the Boards of Appeal on the EPO’s “co-applicant approach” to priority.

Another Board of Appeal case to consider priority this year was T 0725/14. This case was an interesting reversal of the norm in cases of invalid priority. We are used to situations in which the patentee is called on to prove an assignment of the right to priority before the filing date of an application claiming priority. In T 0725/14, the Opponent faced a different but related challenge. The priority application and the PCT application were filed in the name of the same applicant. The Opponent successfully argued that the rights to claim priority had in fact been transferred to another company before the PCT application was filed. The priority claim was therefore found invalid: Assigned or not assigned? – the tricky issue of priority right transfer (T 0725/14)

Novelty: Purity, prior use and undisclosed disclaimers

For many years the EPO considered an increase in the purity of a compound a special case with respect to novelty. The burden of proof was placed on the applicant to show that the claimed level of purity was never achieved in the prior art. However, in perhaps one of the most important Boards of Appeal decisions published last year (T 1085/13), a Board of Appeal (3.3.02) found that previous decision of the Boards of Appeal were contrary to the principle that novelty can only destroyed by a clear and unambiguous disclosure in the prior art: Purity can be unconventional, a new position for the EPO boards of appeal (T 1085/13).

The novelty of a claim may be destroyed by an accidental anticipation, i.e. your claim may, by accident, cover something entirely unrelated to your inventive concept. In such cases, the Enlarged Board of Appeal established in G 1/16 and G 1/03 that an undisclosed disclaimer may be introduced into the claims to restore novelty, but not inventive step. The Board of Appeal (3.3.02) in T 1218/14 provided an important nuance to the criteria under which an undisclosed disclaimer will be allowed. In particular, the test is not whether the previous disclosure may be considered for the purposes of inventive step. The test is a higher one than this. The disclosure must be so removed from the invention that it would never be considered for inventive step or even thought about at all in relation to the claimed invention: Nuances in the definition of accidental anticipation (T 1218/14).

Novelty may also be destroyed by the prior use of a claimed invention. Prior use was a topic considered by both the EPO Boards of Appeal and the UK court’s this year: Mr Justice Nugee and the Superhose: The potentiality of disclosure. The case before the Boards of Appeal related to the prior use of a train carriage: Proving the existence of confidentiality agreements and the celestial teapot – T 2037/18. The Board of Appeal (3.2.01) considered the question of where the burden of proof should rest with regards to the existence (or not) or conditions of confidentiality.

Sufficiency of disclosure

Another case to consider burden of proof was T 1299/15. This case considered where the burden of proof should rest in cases of alleged insufficiency. An opponent arguing that an invention is insufficiently disclosed generally must provide evidence that, despite making all reasonable efforts, they were unable to put the invention into practice. However, as the Board of Appeal (3.2.05) in T 1299/15 confirmed, it is possible for the burden of proof to shift back to the patentee if “serious doubts” exist regarding whether a skilled person could carry out the invention: Burden of Proof was Shifting the burden of proof back to the patentee (T 1299/15).

Exceptions to patentability

Methods of surgery are excluded from patentability under Article 53(c) EPC. T 2699/17 was an appeal from the Examining Division on the question of whether a method of restoring dental crowns was invasive and risky enough to fall under the exclusion (as interpreted by G 1/07). The Board of Appeal found that there were substantial health risks associated with crown restoration in general, including permanent damage to the gums and teeth. However, the applicant submitted evidence that the claimed method posed far less of a risk. The Board of Appeal agreed with the appellant that the claimed method was not invasive and posed a risk that could be equated to that of tattooing and piercing. The method was therefore of low substantial risk to health. The training required by a medical profession to perform the method was also found to be minimal. The claim was therefore found not to relate to an exception to patentability.

Following EPO procedure

There were also a number of Board of Appeal decisions this year dealing with some intricacies of EPO procedure. T0688/16 foreshadowed the type of argument  that may become more common following the introduction of the new Rules of Procedure of the Boards of Appeal (RPBA) in January: Event Report: CIPA seminar on the revised Rules of Procedure of the Board of Appeal. The Board of Appeal in T0688/16 particularly had to consider “arguments about arguments”. The Board of Appeal found that the Opposition Division had inappropriately used their discretion under Rule 116 EPC in not allowing submissions from the patentee in opposition oral proceedings. This was because Rule 116 EPC only applies when there has been a negative preliminary opinion from the Opposition Division. In the case considered by T0688/16 there had been a positive preliminary opinion, and so Rule 116 EPC did not apply: An inappropriate use of discretion leads to ping-pong (T0688/16).

Appropriate EPO procedure was also at issue in T 0703/19. This case related to the topic of appeal fee payment (appeal fee payment was also the subject of the Enlarged Board of Appeal referral G 1/18: Enlarged Board of Appeal opinion on G 1/18). In T 0703/19, the Board of Appeal (3.2.08) considered the question of when a user of the EPO has a legitimate expectation to be informed of an underpayment of an appeal fee. The Board confirmed that to create such a legal expectation, the EPO must be able to recognise that the appeal fee should have been paid. The EPO should also have been able to recognise this in time for the failure to be rectified. A key fact of the case in T 0703/19 was that “legitimate expectations” had been created by the mention in the notice of appeal that the appeal fee was thereby paid: The three Rs of legitimate expectation: Recognizability, recoverability and responsibility (T 0703/19).

The prize for creative legal reasoning this year goes to the Board of Appeal in T 1003/19. This case was an appeal from the Examining Division (ED). The ED had granted an application based on a text-intended for grant in which all of the drawings showing the invention were missing. The Board of Appeal (3.3.05) found that the document provided by the ED as the text-intended for grant contained amendments that were neither requested by the applicant nor explicitly suggested by the ED. Thus, the Board of Appeal reasoned, the text provided as the text-intended for grant was not, in fact, intended for grant. The Board concluded that the applicant could therefore not be said to have approved the text for grant. The decision to grant the patent was therefore set aside: When is the “text-intended for grant” not intended for grant? (T 1003/19).

Moving on to the failure of an applicant (or their representative) to follow correct EPO procedure, the legal Board of Appeal (3.1.01) in J 05/18 considered the requirements for re-establishment (Article 122 EPC). The Board of Appeal concluded that even if a mistake results from an isolated error in a well-functioning system, the mistake may still demonstrate lack of all due care. The error in the case in question stemmed from a failure of the US attorneys to monitor a deadline for further processing (and arguably the failure of the EP representative to confirm with the US attorneys that the client did not wish to request further processing): Re-establishment: An isolated error in a well-functioning system may not be equivalent to all due care (J 05/18).

A welcome innovation of the new RPBA is that the upcoming cases of each of the Boards of Appeal are now available to view online: Annual list of cases.

Opposition and infringement

The Board of Appeal in T 0439/17 considered the circumstances under which a third party may intervene in opposition proceedings after the opposition period has expired. Article 105(1)(a) EPC provides that such an intervention may be made if infringement proceedings are brought against the third party. However, the meaning of “infringement proceedings” presents some difficulties, given the diversity of potential “patent infringement” related court proceedings in EPC member states. The Board of Appeal in T 0439/17 decided that pre-infringement evidence procurement procedures in Germany are not considered sufficient to allow a third party to intervene in opposition proceedings (even if an infringement action is subsequently brought): No benefit of hindsight: BA rejects ex tunc assessment of an intervention in opposition (T 0439/17).

Exams

To many trainee European patent attorneys, the European Qualifying Exams (EQEs) will be looking a lot closer this side of Christmas. As part of their preparation, they may wish to take note of the Disciplinary Board of Appeal’s decision in D 11/18 [Warning: Paper B 2018 spoilers]. The Board of Appeal provides confirmation, if any were needed, that in the EQE candidates should take all of the information in the paper at face value. It is often necessary for candidates to ignore any specialist technical knowledge that they may have of the field of the invention. For this reason, it is often said that the EQE disadvantages candidates already familiar with the technical field to which an exam paper relates. These candidates will find it harder not to question the paper’s assertions. Candidates are thus encouraged not to challenge what a EQE paper states as fact (an approach that may not come naturally to many patent attorneys…): EQEs – don’t speculate beyond the content of the paper (D 11/18).

Proviso

The above review is, of course, not an exhaustive list of all the important Board of Appeal decisions published this year. On the contrary, the list merely represents this Kat’s particular favourites. Readers will undoubtedly have their own preferred EPO decisions of 2019, and are invited to provide these in the comments below.

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Other decisions of interest:

T 1731/12 – Exclusions from patentability
A device that is defined by a feature that can only be produced by a surgical or therapeutic step is exempt from patenting under Article 53 (c) EPC

T 1845/14 – Unclear parameters
If a parameter in a claim is essential to solving the technical problem to be solved by the claim (according to the description), the ability of the skilled person to solve that problem is not a suitable criterion for assessing sufficiency of disclosure if the problem to be solved is not part of the claim.

T 0592/15 – Postponement of appeal decision
A request to postpone the taking of the decision on the allowability of an appeal until a divisional application was filed was refused. The Board of appeal reasoned that such a request would oblige the Board of Appeal to examine questions outside of the framework of the appeal concerned.
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