The IPKat EPO Boards of Appeal Year in Review 2022

http://ipkitten.blogspot.com/2022/12/the-ipkat-epo-boards-of-appeal-year-in.html

As a busy year comes, take the time to settle down with your favourite feline friend, a mince pie and the annual IPKat EPO Boards of Appeal roundup. The big stories of the year were, of course, the legality of mandatory ViCo oral proceedings and description amendments. IPKat has also sifted through the 100s of Boards of Appeal decisions published in 2022, to bring you the most eye-catching and relevant to ongoing EPO practice.  

Feel-ine christmassy

Last Christmas I gave you...Description amendments

Last Christmas, PatKat was just preparing to tuck into her turkey, satisfied that her job of reporting all the important EPO news had been successfully discharged for the year, when the last minute showstopper of T 1989/18 was published (IPKat). T 1989/18 set alight the description amendment debate with its finding that there was no legal basis for the EPO’s onerous description amendment requirement. Following T 1989/18, the controversy over description amendments has continued to rage throughout 2022 (IPKat), culminating with the latest Board of Appeal on the issue, in which the deciding Board casually suggested that the description should really be amended every time claim amendments are filed (IPKat). This is a suggestion likely to put many an EPO user off their figgy pudding. 

It has become increasingly clear that a referral to the EBA is now needed on the issue of description amendments. Ironically, the EPO could probably have avoided this whole furore had they just been content to retain the minimal description amendment requirement that existed as a happy compromise for many years.  Despite the EPO’s continued insistence that the issue is settled (IPKat), we can expect the issue to rumble on into 2023. 

I’ll be home for…ViCo oral proceedings
At the end of 2021, we were left with the question of how the Boards of Appeal would choose to interpret and implement the EBA decision in G1/21 (IPKat). In G1/21 the EBA found that mandatory ViCo oral proceedings were legally permissible during a state of general emergency impairing parties ability to attend in-person proceedings. However, the EBA also found that in-person proceedings should remain the gold standard in the absence of such a state of general emergency. As the COVID-19 pandemic receded, how then would the Boards of Appeal interpret the EBA’s mandate? 
Even now, at the end of 2022, we do not yet have an answer to this question. So far, Boards of Appeal have all continued to find that the state of general emergency justifying mandatory ViCo oral proceedings remains in place (IPKat). 
Separately from the Boards of Appeal, the use of ViCo oral proceedings in opposition proceedings has now been placed on a permanent footing by the EPO President (IPKat). A user survey conducted by the EPO reported a broadly positive user experience of ViCo but also revealed that there was still a significant minority of users who had poor or very poor experiences (IPKat). 
All AI wants for Christmas is to be an inventor
The AI inventor debate surrounding the DABUS applications has (thankfully) just about fizzled out. Whilst this year has seen some truly remarkable advances in machine learning technology (e.g. AlphaFold, ChatGPT), DABUS is not one these. However, whilst the DABUS patent applications have come to the end of the road in most major jurisdictions, including at the EPO and in the US (IPKat) the UK Supreme Court has now accepted the appeal from Dr Thaler’s team. IPKat readers can be assured that PatKat will continue to monitor these proceedings with an appropriately sardonic raised eyebrow.
ST.26 is coming to town 

The EPO hascome under fire this year over how it has chosen to implement the change to the new sequence listing format, ST.26 (IPKat). There are both positive and negative aspects to the new ST.26 format in general, which entered into force in July 2022. The stated aims of the switch to ST.26 was to harmonise sequence listing practice among different patent offices, and to render the sequence listing format compatible with international sequence databases. Whilst the new format and software renders some aspects of sequence listing preparation more efficient (e.g. with the ability to input multiple sequences at once), other aspects are more onerous than previously, particularly the definition of sequence features (IPKat). 
Of more concern is how the EPO has chosen to implement ST.26. The EPO is now requiring applicants of all divisional applications to file an ST.26 sequence listing, even if the parent case was filed with a ST.25 sequence listing (IPKat), raising the potential for unavoidable added matter in the divisional case. The EPO has been unsympathetic to user concerns on this issue (IPKat)

Keeping a list, checking it twice:  Following the Guidelines

The issue of description amendments focuses the attention on the EPO Guidelines for Examination. The Guidelines, as the name suggests, do not provide legal basis, but are merely a guide for Examiners to follow. However, in cases where there are isolated Board of Appeal decisions conflicting with the Guidelines, Examiners usually choose to follow the Guidelines instead of the Boards of Appeal. The Guidelines are, however, often out of step with current Boards of Appeal case law, and lag behind even the most uncontroversial of case law developments. This year a number of Board of Appeal decisions have highlighted both discrepancies between the current Guidelines and Boards of Appeal case law, and inconsistencies in the Guidelines themselves, for example on the novelty of purity inventions (IPKat), and interlocutory revision (IPKat).

Redemption is possible, Mr Scrooge: EPO decisions on inventive step, sufficiency and restoration
There have been a number of EPO Board of Appeal decision clarifying EPO practise on novelty and inventive step. These included the decision in T 1349/19, finding against an inventive step attack based on a step-by-step path to a goal only known from hindsight (IPKat). This year the Boards of Appeal have also confirmed their more reasonable approach to sufficiency of biotechnology inventions as compared to the US. In contrast to the current approach in the US (IPKat), the EPO permits functional genus claiming (IPKat, IPKat). Other decisions from the Boards of Appeal have highlighted the difficulty of establishing the novelty of a product-by-process claim (IPKat) (T 1869/19) or an invention defined by an unusual parameter (T 0555/18)  (IPKat). Another decision (J 14/21) yet again confirmed the strict restoration requirements at the EPO compared to other jurisdictions (IPKat).

Final thoughts – until next year

This Kat cannot sign-off for the year without mention of the EPO Season Greetings Video. Whilst popular films and TV may be forgiven for getting the basics of patents incorrect (IPKat), the same forgiveness can not be afforded to the European Patent Office. 
The EPO video tells the story of an enterprising young girl in Munich who invents her own snowshoes. While testing out her shoes on the icy streets of Munich, she notices a charming couple struggling on the ice and in need of her new shoes. The girl shows the couple her invention. The couple then helpfully suggest that the girl patent the invention and point her towards the EPO’s Isar Building. Unfortunately (as the production team at the EPO should be well aware!) the girl is very unlikely to get a valid patent in view of her potentially novelty destroying prior use of the invention. 
Even if (as has been suggested by observers prepared to be forgiving to the EPO) the couple are patent attorneys, the girl has nonetheless disclosed her invention just by using it on the public streets of Munich. It is a shame the EPO’s otherwise heart-warming story perpetuates a common misconception among independent inventors that testing your invention in public is fine from a patenting perspective. Prior public use with even the potentiality of disclose is enough to destroy the novelty of an invention, whether it be a new hose pipe (IPKat), seed drill (IPKat) or snowshoe. This Kat hopes that when the EPO team are storyboarding next year’s Christmas video, they, like the press and film industries do for libel risks, have patent lawyers “patent read” their vision. 

Happy holidays from the IPKat team!
IPKat past Years in Review:

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