The IPKat EPO Enlarged Board of Appeal (EBA) Year in Review 2021

http://ipkitten.blogspot.com/2021/12/the-ipkat-epo-enlarged-board-of-appeal.html

2021 has been year brimmed full with juicy case law from the Enlarged Board of Appeal (EBA). The biggest (or at least the most controversial) story of the year was the referral to the EBA on the legality of mandatory ViCo oral proceedings (G 1/21). This year also saw release of the EBA decision on double-patenting and a new referral on the thorny issue of plausibility and post-published evidence. As the year draws to a close, we also have news of a new referral to the EBA on the EPO’s co-applicant approach to priority.    

🎄 Double-patenting (G 4/19)

Early in the year, the EBA issued its decision on the question of double patenting. The prohibition against double patenting prevents the grant of more than one European patent application having the same filing date and applicant, and directed to the same subject matter. 

Previous EBA decisions (G 1/05 and G 1/06) established the prohibition of double patenting in view of the fact that an applicant “had no legitimate interest in proceedings that gave rise to the grant of a second patent in respect of the same subject-matter for which he already held a patent“.  However, this reasoning could not be said to apply to all cases of double-patenting. Particularly, an applicant may be said to have legitimate interest in a second patent for the same subject matter if, for example, the second patent had a later expiry date than the first, as in cases of internal priority (i.e. a European patent that claims priority from another, earlier, European patent).  

The referral in G 4/19 asked whether a European patent application could be refused if the application claimed the same subject matter as a granted European patent (owned by the same applicant) that did not form part of the state of the art (IPKat). In their decision, the EBA found alternative legal basis for the prohibition against double patenting in Article 125 EPC, i.e. on the basis that the prohibition existed in the legislation of member states. The EBA concluded that the general prohibition against double patenting thus applied to cases of internal priority (IPKat).

Importantly, the decision in G 4/19 did not address the meaning of “same subject matter” for the purposes of determining cases of double patenting. What constitutes “the same subject matter”  thus remains relatively narrow in Europe, at least compared to a number of other jurisdictions. EP applicants may therefore still pursue subject-matter in divisional applications that is broader than the granted parent case. 

• New referral to the Enlarged Board of Appeal on double-patenting (2 Feb 2019)
• Double trouble: EBA finds legal justification for the prohibition of double  patenting (G4/19) (5 July 2021)

🎄 Mandatory ViCo oral proceedings (G1/21)

2021 saw continued use of ViCo oral proceedings at the EPO. Before the pandemic, all Opposition Division (OD) and Boards of Appeal oral proceedings required in-person attendance at the EPO by all parties. ViCo oral proceedings were reserved for a minority of Examining divisional oral proceedings, at the request of the applicant. However, in order to avoid a growing backlog of cases during the pandemic, the EPO began holding all Examining Division oral proceedings by ViCo (OJ EPO 2020, A39), launched a “pilot project” for OD oral proceedings by ViCo (OJ EPO 2020, 41) and introduced a new Rule of Procedure for the Boards of Appeal that permits Boards of Appeal to hold oral proceedings whenever “the Board considers it appropriate to do so”, i.e. even post-pandemic (IPKat).

The introduction of mandatory ViCo oral proceedings sparked a new referral to the EBA (G 1/21) (IPKat). The referral asked whether mandatory ViCo proceedings were compatible with the right to oral proceedings as enshrined in Article 116(1) EPC. Recognising the importance of the question for a large number of pending cases, the referring Board of Appeal continued with the referral even though the party requesting the referral withdrew their request (IPKat).

The referral in G1/21 was dogged with controversy from the get-go. Complaints were raised that both the Chairman and a number of the appointed EBA panel were at risk of perceived bias, given that they had been involved in the introduction of Article 15a RPBA (IPKat). In response, the EBA changed the composition of the panel (although this failed to satisfy all critics who continued to argue that some of the remaining members had already voiced their support for ViCo) (IPKat).

The EPO acted quickly in response to the legal uncertainty created by the referral. Oral proceedings for G1/21 were rapidly scheduled for May. However, the first oral proceedings in G 1/21 did not get very far, following an objection from the opponent that they had not been properly notified of the EPO President’s comments on the referral (IPKat). The oral proceedings were rescheduled for later in the year (IPKat).  

When proceedings in G1/21 eventually went ahead, the final order of the EBA announced by the EPO was that mandatory ViCo proceedings before the Boards of Appeal were permitted during a time of “general emergency impairing the parties’ possibility to attend in-person oral proceedings“. This of course left open the question of how a time of “general emergency impairing the parties’ possibility to attend in-person oral proceedings” should be interpreted (IPKat). The decision also did not provide a decision on mandatory oral proceedings in first instance (such as before the OD), or after the state of general emergency had ended (IPKat). Nonetheless, the written decision, when this finally became available, included reasoning on how in-person proceedings should be preferred, and went so far to say that in-person proceedings were the gold-standard (IPKat). 

🎄 Plausibility, inventive step and post-published data (G 2/21)

The new referral to the EBA in G 2/21 seeks to clarify the law on the use of post-filed evidence to establish plausibility for an invention. A referral on this topic may have come as a surprise to some, given the established case law of the Board of Appeal on plausibility and post-filed evidence (Case Law of the Boards of Appeal, I-D-4.6). However, as highlighted in the preliminary decision of the Board of Appeal in the case (T 116/18), the Boards of Appeal are not fully harmonious on the plausibility requirement (IPKat).  

In its referring decision, the Board of Appeal identified 3 diverging lines of case law on the admissibility of post-published evidence for inventive step: 1) Ab initio plausibility, 2) Ab initio implausibility, and 3) No plausibility (IPKat). 

According to the ab initio plausibility case law, plausibility must be established in the application as filed, i.e. in the form of direct evidence for the technical effect relied on for inventive step. By contrast, in the ab initio implausibility line of case law, post-published evidence can only be disregarded if the skilled person had reasons to doubt (e.g. from common general knowledge) that the purported technical effect had in fact been achieved at the filing date. The final line of case law on plausibility, is that according to which no plausibility is required. According to the “no plausibility” case law, the requirement for plausibility of a technical effect at the filing date is incompatible with the problem solution approach (IPKat). Examination and opposition division proceedings for which the decision in G 2/21 will be decisive have been stayed. 

The outcome of a referral could have important implications. Crucially, the questions referred to the EBA appear to only permit a relaxation or maintenance of the current position, as established by the majority of the case law. However, the EBA can reformulate the questions referred to it as it sees fit, and will often narrow the scope of the referral by doing so (as in G 1/21). This referral will be closely watched by many, although we may not get a decision from the EBA for 1-2 years. 

• New referral expected to the EBA on the use of post-published data to support inventive step (10 Aug 2021)
• Reasons for an EBA referral on plausibility, post-published evidence and problem-solution (21 Sep 2021)
• Enlarged Board of Appeal to tackle the “Humpty Dumpty-ish” plausibility question (G2/21) (25 Oct 2021)

🎄 Looking forward: G3/21 on the co-applicants approach to priority

As the year comes to a close, we have received reports of another referral to the EBA, on the question of priority from the consolidated appeal cases T 1513/17 and T 2719/19. 

The EPO interprets Article 87 EPC, based on Article 4(1) of the Paris Convention, as requiring “any person” as meaning that all the applicants (or their successors in title) named on the priority application must be named on the subsequent EP application. The Broad Institute lost one of their critical CRISPR patents at opposition (upheld on appeal) because an inventor of the US provisional application from which priority was claimed (or his successor in title) was not named on the PCT application (IPKat). 

Conversely, current EPO practice on priority allows new applicants to be added to the PCT application, a topic that was discussed on IPKat back in 2019 (IPKat) (Guidelines for Examination, A-III-6.1). In other words, if applicants X and Y are named on the priority application, applicants X, Y and Z may be named on the subsequent application claiming priority. This is called the “co-applicants approach” to priority.

The EPO’s approach to priority raises the question of whether priority has been validly claimed in the situation where the joint or co-applicants of a PCT application are split between different designated states. For example, take a situation where applicant X is the applicant of the priority application, and the PCT is filed with applicants X and Y as co-applicants. X is provided as the sole-applicant for the US designation, whilst applicant Y is provided as the applicant for Europe. The question becomes whether a transfer of priority is needed from X to Y for the Euro-PCT application, or whether X and Y should be considered a legal unit, acting together, for the purposes of the PCT application.  

We await confirmation of the referral when the minutes of oral proceedings in the appeal cases are published. 

• Clarity is needed from the Boards of Appeal on the EPO’s “co-applicant approach” to priority (28 Nov 2019)

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