G 0001/89 - Non-unity a posteriori - #34

Citation rank: 34
No. of citations: 115

G 1/89 and G 2/89, in consolidated proceedings, are concerned with the question of how non-unity should be assessed by the European Patent Office acting as International Search Authority (ISA) under the PCT. In particular, G 1/89 and G 2/89 were concerned with the question of whether the EPO as ISA may carry out a non-unity assessment "a posteriori", i.e., taking the prior art into account, or whether the EPO should rely on the subjective understanding of the applicant of his own invention, i.e., carry out the non-unity assessment "a priori". The findings of G 1/89 and G 2/89 regarding the assessment of non-unity are not confined to the PCT procedure, but are also applicable to non-unity under the EPC.

G 1/89 was the first Enlarged Board of Appeal case, in which the President of the EPO referred questions to the Enlarged Board under Art. 112(1)(b) EPC, i.e., where different Boards of Appeal have given different decisions on a particular question. Specifically, it was decision W 3/88, which found that that EPO acting as ISA should not - contrary to the PCT Guidelines and the common practice at that time - assess unity of invention in an a posteriori manner. The Board in W 3/88  found that this would amount to a substantive examination of novelty and/or inventive step during the search stage, which a search examiner was not competent to carry out.

The Enlarged Board firstly observed that the question of whether the EPO as ISA is competent to make an a posteriori assessment of the unity-of-invention requirement only came up, because under the EPC (as well as under the PCT) search and examination are two sequential and distinct steps in the procedure, and at the time of W 3/88 search and examination were carried out by different examiners at the EPO. A search examiner at the EPO at that time had (arguably) less experience or formal training in assessing novelty and inventive step. The Board in W 3/88 found that the assessment of non-unity should be carried out by the EPO/ISA taking the "general inventive concept" subjectively chosen by the applicant as a basis. [comment: At the time of W 3/88, search and examination was still carried out by different EPO examiners, one in The Hague (for search) and one in Munich (for examination). Since the implementation of the BEST program ("bring search and examination together"), search and substantive examination are carried out by the same person.]

The Enlarged Board did not agree to the notion that a search examiner was not competent to assess novelty and inventive step. They stated:

"[A]lthough the objective of the search is in principle limited to discover and report on relevant prior art for the purpose of assessing novelty and inventive step, which is finally the task of the examining authority (i.e. the IPEA and/or the designated Office under the PCT and the Examining Division under the EPC respectively), it is obvious that in many instances the search examiner needs to form a provisional opinion on these issues in order to carry out an effective search. Otherwise, he would simply be at a loss how to judge the relevance of the documents in the prior art and how to arrange the search report accordingly."

Hence, the Enlarged Board found that a search examiner was very well capable to carry out a provisional assessment of novelty or inventive step for the purposes of an a posteriori assessment of unity. The provisional assessment of novelty and inventive step would in any case only have procedural effect (namely determining the number of additional search fees to be paid, if any), such that the substantive assessment of novelty and inventive step would still be left to the examination divisions.

With reference to the then current PCT Guidelines, the Enlarged Board of Appeal decided that the EPO as ISA should carry out the non-unity assessment a posteriori.

The Enlarged Board then also commented on the manner in which the a posteriori assessment of non-unity was to be carried out. They found that it was to be carried out with caution. Specifically, they stated:

"It may be added that the consideration by an ISA of the requirement of unity of invention should, of course, always be made with a view to giving the applicant fair treatment and that the charging of additional fees under Article 17(3)(a) PCT should be made only in clear cases. In particular, in view of the fact that such consideration under the PCT is being made without the applicant having had an opportunity to comment, the ISA should exercise restraint in the assessment of novelty and inventive step and in border-line cases preferably refrain from considering an application as not complying with the requirement of unity of invention on the ground of lack of novelty or inventive step." (point 8.2 of the reasons)

This part (point 8.2) of G 1/89 is in fact the statement which is most often cited by other Boards of Appeal decisions, and hence the reason why G 1/89 made it to this list of the 100 most-cited Boards of Appeal decisions.

Remark: There is a dramatic drop in the yearly number of citations of G 1/89 at around 2010 (see small graph on the top right of this blog post). This, however, is not because decisions G 1/89 and G 2/89 lost their relevance in any way. The sudden drop is soley due to the fact that the EPO installed a new non-unity review procedure, in which a review panel consisting of three members of the first instance, normally the director of the search examiner who issued the invitation to pay additional fees, the search examiner himself, and an examiner with special expertise in unity of invention took over responsibility for review cases from the Boards of Appeal (see OJ 5/2010, p. 320). In other words, G 1/89 and G 2/89 continued to be relevant in review cases, but they are no longer cited by Boards of Appeal.

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Headnote:

The agreement between the European Patent Organisation and WIPO dated 7 October 1987, including the obligation under its Article 2 for the EPO to be guided by the PCT guidelines for international search, is binding upon the EPO when acting as an ISA and upon the Boards of Appeal of the EPO when deciding on protests against the charging of additional search fees under the provisions of Article 17(3)(a) PCT. Consequently, as foreseen in these guidelines, an international application may, under Article 17(3)(a) PCT, be considered not to comply with the requirement of unity of invention, not only "a priori" but also "a posteriori", i.e. after taking prior art into consideration. However, such consideration has only the procedural effect of initiating the special procedure laid down in Article 17 and Rule 40 PCT and is, therefore, not a "substantive examination" in the normal sense of that term.

The full text of the decision can be accessed here.

Quotes from decisions citing G 1/89 can be found here.

T 0666/89 - Whole content of a prior art document must be considered - #35

Citation rank: 35
No. of citations: 114

T 666/89 is concerned with the question of how to properly assess the disclosure of a prior art document. The decision is most often cited for holding that the whole content of a citation must be considered for deciding the question of novelty of a claim over that citation.

In the underlying opposition case, claim 7 related to a shampoo composition defined by its chemical components and their respective concentration ranges.

The Board considered a document "D3a" (which was prior art under Art. 54(3)) relevant for the question of novelty of claim 7.

The proprietor-respondent's argument with respect to novelty of claim 7 over D3a was that the examples of D3a lay outside the scope of Claim 7. The generic disclosure of the shampoo compositions of D3a could not be held to be an anticipation of this claim.The Board disagreed.

They stated:

"Insofar as the respondent submitted that generic information in connection with compositions has practically no meaning and that only the examples of a document should be regarded as state of the art in this respect, he had ignored the established jurisprudence of the Boards of Appeal, according to which it is necessary to consider the whole content of a citation when deciding the question of novelty (see e.g. T 4/83, OJ EPO 1983, 498, para. 4 of the reasons, T 198/84, OJ EPO 1985, 209 and T 124/87, OJ EPO 1989, 491, para. 3.2 of the reasons).

In applying this principle, the evaluation must therefore not be confined to a comparison of the claimed subject-matter with only the examples of a citation, but must extend to all the information contained in the earlier document (T 332/87, para. 2.2, of 23 November 1990, unpublished, confirming T 424/86, para. 4.2, of 11 August 1988, unpublished)." (point 5 of the reasons)

Applying these principles, the Board referred to different parts of the description of D3a, each disclosing certain elements of the claimed shampoo composition, and concentration ranges the end points of which could be combined to a composition falling under claim 7, and found that the sum of these parts anticipated claim 7. No additional disclosure would be required to draw the skilled person's attention to make the combination of the different parts of the disclosure, let alone to induce him to do so. In a case where overlapping numerical ranges of certain parameters exist between a claim and a prior art document, the prior art document would anticipate the claim, if the skilled person would "seriously contemplate" applying the technical teaching of the prior art document in the range of overlap (point 7 of reasons).

Since claim 7 lacked novelty, and all requests on file contained the same claim 7, the patent was revoked.

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Headnote:

1. Under the EPC patents are not granted for the sole reason that they are "selections", but only for new and inventive subject- matter of certain defined kinds. Accordingly, there is no fundamental difference between deciding novelty in situations of so-called "overlap" or "selection", and in doing so in other situations (see paragraphs 6 and 8 of the reasons).
2. Matter that is "hidden" in a prior art document, in the sense of being reconditely submerged rather than deliberately concealed, will not have been "made available" to the public (cf. G 2/88). In the case of overlapping numerical ranges of physical parameters between a claim and a prior art disclosure, one useful approach to determining what is "hidden" as opposed to what has been made available, is to consider whether or not a person skilled in the art would, in the light of all the technical facts at his disposal, seriously contemplate applying the technical teaching of the prior art document in the range of overlap (cf. T 26/85). Provided the information in the prior art document, in combination with the skilled person's common general knowledge, is sufficient to enable him to practise the technical teaching, and if it can reasonably be assumed that he would do so, then the claim in question will lack novelty (see paragraph 7 of the reasons).
3. The above concept of "seriously contemplating" moving from a broad to a narrow (overlapping) range, while seemingly akin to one of the concepts used by the Boards for assessing inventive step, namely, whether the notional addressee "would have tried, with reasonable expectation of success" to bridge the technical gap between a particular piece of prior art and a claim whose inventiveness is in question, is fundamentally different from this "inventive-step concept" because in order to establish anticipation, there cannot be a gap of the above kind (see paragraph 8 of the reasons).
4. Under the EPC novelty must be decided by reference to the total information content of a cited prior document, and in assessing the content for the purpose of deciding whether or not a claim is novel, the Board may employ legal concepts that are similar to those used by them in deciding issues of obviousness, without, however, thereby confusing or blurring the distinction between these separate statutory grounds of objection (see paragraph 8 of the reasons).

The full text of the decision is here.

Quotes from decisions citing T 666/89 can be found here.

G 0004/95 - Oral submissions by accompanying persons (inter partes proceedings) - #36

Citation rank: 36
No. of citations: 113


G 4/95 is concerned with the question of whether and under which circumstances an "accompanying person", i.e., a person other than the proprietor or its representative, may make oral submissions on either legal or technical issues during oral proceedings in inter partes opposition and opposition-appeal proceedings.

A corresponding request for allowing oral submissions of an accompanying person was made by a party in the underlying appeal case (T 803/93). The referring Board observed that the case law regarding the above question at that time was not consistent.

The Enlarged Board observed that previous case law had applied either a strict view on the issue, or they Boards and Opposition Divisions had allowed oral submissions by accompanying persons on a rather informal basis. The Enlarged Board also pointed out that the EPC distinguishes between the indication of "facts and evidence" and  submissions by way of "argument". The Enlarged Board noted that facts and evidence should normally be submitted at an early stage of the proceedings, whereas submission relating to arguments can be made at any stage of the proceedings, under the discretion of the EPO (point 4 of the reasons).

After considering various provisions of the EPC governing the presentation of facts and evidence and the EPC's system of representation (i.a., Arts. 114(2), 116, 117, 133, 134 EPC), the Enlarged Board came to the conclusion that it is generally possible that an accompanying person makes submissions on legal or technical issues in oral proceedings, however, only under the discretion of the EPO.

The discretion is to be exercised by the EPO using the following criteria:

• Oral submissions by accompanying persons should be requested by the professional representative and the request should include the qualifications of the accompanying persons and should specify the subject matter of the proposed submission (Headnote 2(b)(i)). 
• The request should be made well in advance (Headnote 2(b)(ii)). 
• A request made shortly before the oral proceedings should normally be refused, unless the other party (and the EPO) agrees to the submissions being made (Headnote 2(b)(iii)). 
• The oral submissions should be made under the constant responsibility and control of the professional representative (Headnote 2(b)(iv)). 
• No special conditions apply to qualified patent lawyers from countries other than EPC contracting states (Headnote 2(c).

Remark: See related decision G 2/94 on oral submissions by accompanying persons in ex parte proceedings.

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Headnote:

1. During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under Article 117 EPC, in addition to the complete presentation of the party's case by the professional representative.
2. (a) Such oral submissions cannot be made as a matter of right, but only with the permission of and under the discretion of the EPO.
(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:
(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.
(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.
(iii) A request which is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested.
(iv) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.
(c) No special criteria apply to the making of oral submissions by qualified patent lawyers of countries which are not contracting states to the EPC.

The full text of the decision can be found here.

Quotes from random appeal decisions citing G 4/95 can be found here.

T 0068/85 - Allowability of functional features ("Synergistic herbicides") - #37

Citation rank: 37
No. of citations: 112

T 68/85 is concerned with the conditions under which functional features are allowed in patent claims.

Claim 1 in the underlying examination case related to: "An agent for selective weed control based on a mixture of [a substance II with a substance Ia or Ib] in a quantity producing a synergistic herbicidal effect."

A synergistic effect of substance II with substances Ia or Ib was demonstrated in the application as filed, albeit only within relatively narrow concentration ranges.

The Examining Division had refused the patent application for lack of sufficient disclosure (Art. 83 EPC). They were of the opinion that the skilled person "could not prepare mixtures that were genuinely synergistic ... without knowing the range of ratios in which ingredients had to be mixed". And further, in the eyes of the Examining Division, it had "not been demonstrated that the synergistic effect ... occurred throughout the claimed range".

The applicant filed an appeal against the refusal.

The Board in T 68/85 did not find the Art. 83 objection justified. They stated that the patent application as a whole must contain sufficient information to make the claimed synergistic mixtures of substance II with substances Ia or Ib, and suitable weight ratios were disclosed in the description.

Regarding the presence of a functional feature in claim 1 (i.e., "... in a quantity producing a synergistic herbicidal effect"), the Board noted:

"However, the applicant cannot simply define a feature in a claim as he wishes; he must choose the form that is objectively more precise (T 14/83). This requirement is met in the present case as the Board does not see how the limits within which the two herbicide couples combine to give a synergistic effect could be defined more precisely than has been done without limiting the scope of the invention. Accepting the Examining Division's suggestion and including in Claim 1 [specific concentration ranges of substances II and Ia or Ib] so as to render the former more precise would mean limiting the scope of the invention unjustifiably to a particular range of weight ratios and thus unacceptably restricting protection to only part of the invention as disclosed." (point 8.4.2 of the reasons)

However, the Board also noted that a claim may not include a functional feature, if

"... it jeopardises the clarity of a claim as required by Article 84 EPC. That clarity demands not only that a skilled person be able to understand the teaching of the claim but also that he be able to implement it. In other words, the feature must provide instructions which are sufficiently clear for the expert to reduce them to practice without undue burden, if necessary with reasonable experiments."

The Board thus examined whether the application included sufficient information for the skilled person to make synergistic mixtures of substances II and Ia or Ib for the relevant combinations of crops to be protected and crops to be decimated. The Board noted in this regard that the application disclosed specific examples of synergistic concentration ranges, which the skilled person could use as guidance or starting points. The application also disclosed reproducible test methods to establish whether synergistic effects were present. The test methods even allowed to quantify the synergistic effect. The Board observed that the tests were cumbersome (because seeds had to first germinate, before an effect could be observed), but this would be reasonable; in fact usual in the field of herbicides. Therefore the use of a functional feature to functionally express the weight ratios of the synergistic compounds in the mixture was considered to be in accordance with Art. 84.

Finally, the Board also regarded the claimed synergistic mixtures inventive over the prior art. The case was hence remitted to the Examining Division with the order to grant a patent.

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Headnote:

Functional features defining a technical result are permissible in a claim, if from an objective viewpoint, such features cannot otherwise be defined more precisely without restricting the scope of the invention, and if these features provide instructions which are sufficiently clear for the expert to reduce them to practice without undue burden, if necessary with reasonable experiments.

The full text of the decision can be found here.

Quotes from decisions citing T 68/85 can be found here.

T 0220/83 - Substantiation of grounds of appeal - #38

Citation rank: 38
No. of citations: 110

T 220/83 is concerned with the question as to what are the minimum requirements regarding substantiation of the statement of grounds (Art. 108, 3rd sentence EPC), so that the appeal is still admissible.

The Opposition Division revoked the patent for lack on inventive step over a prior art document disclosing a rather similar chemical process, and suggesting the sole difference, within the same document.

The patentee appealed against that decision. The patentee submitted the following statement of grounds:

"When assessing the inventive step required to arrive at the process of the invention the Opposition Division did not in our view consider the statements made in US Patent No. 3 507 891 [the closest prior art document], column 3, lines 40 to 53; column 6, Example IV, Table 4, and column 7, Example VI, Table 6, as laid down in the Guidelines for Examination in the European Patent Office, Part C, Chapter IV, 9.8, (C2) and (d), on pages 48 and 49."

The opponent submitted that the statement of grounds were so inadequate that the appeal should be dismissed as inadmissible. The patent proprietors replied that their grounds for appeal, although brief, were comprehensible.

The Board noted that the admissibility requirements of Arts. 106, 107, 108, first and second sentences, and Rule 64 EPC1973 were met. However, the Board found it questionable whether the above-quoted comments can be regarded a statement of grounds in the sense of Art. 106, third sentence, hence, whether the  time-limit set by Art. 106, 3rd sentence EPC for submitting the statement of grounds was met.

The Board noted that the brief comments submitted submitted by patentee consisted essentially of references to passages of the closest prior art document and of the Guidelines. The Board confirmed that references to these passages were as good as stating these passages in the statement of grounds directly. The Board also noted that the cited passages related to certain parameters of the claimed process, and the cited passages of the Guidelines related to advantageous effects as an indicator of inventive step. One could thus speculate that patentee-appellant wanted to rely on an unexpected advantageous effect brought forward by the process parameters discussed in the prior art document at the cited passages.

The Board, however, stated:

"[T]he appellants gave no explanation within the appeal period of the kind of technical selection criteria involved, of what were to be regarded as the unexpected effects or of the facts giving rise to the alleged prejudice. Nor in the Board's view are facts evidencing an inventive selection that involved overcoming a prejudice at all obvious; they may at most be conjectured. Consequently, it is left to the Board and the parties to the appeal to ascertain for themselves any facts substantiating the claim to inventive step. This, however, is just what the requirement that grounds for appeal be filed is designed to prevent."

The Board found that appellants, when arguing inventive step in view of a prior art document, are obliged to analyse the document in detail when setting out the grounds for their appeal . The appellant cannot merely assert that the contested decision is incorrect and request that the patentability of the subject-matter denied by the department of first instance be reconsidered. Instead the appellants must state in their grounds the legal or factual reasons why the contested decision should be set aside so as to ensure that the appeal may be assessed objectively. This was not done in the present case.

As a consequence, the brief comments submitted by appellants were not accepted as substantively adequate grounds within the meaning of Article 108, third sentence, EPC.

The appeal was therefore dismissed as inadmissible.

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Headnote:

Grounds for appeal may not be confined to an assertion that the contested decision is incorrect but should state the legal or factual reasons why the decision should be set aside. It is not sufficient for the appellants merely to refer in general terms to passages from the literature showing the state of the art and to the Guidelines for Examination in the European Patent Office without making their inferences adequately clear.

The full text of the decision can be found here.


Quotes from 10 random decisions citing T 220/83 can be found here.

See also blog posts T 213/85 and J 22/86 on related topics.

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T 0258/03 - Technical character of method claims / "HITACHI" - #39

Citation rank: 39

No. of citations: 109

T 258/03 ("Hitachi") re-defined the manner in which the technical character of method claims is evaluated. It marked the end of the so-called "contribution approach" to the assessment of technical character.

In the underlying examination case, claim 1 of the Main Request related to an "automatic auction method executed in a server computer" comprising steps (a) to (l). Steps (a) to (l) included technical features (e.g., relating to the transmission of data through a computer network) as well as non-technical features (defining the rules of the auction method). Claim 3 was directed to a "computerised auction apparatus for performing an automatic auction" according to claim 1.

The Board firstly observed that: 

"According to Article 52(1) EPC, European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. [...] There are thus four requirements which claimed subject-matter must fulfil: it should be an "invention", and this invention must be new, inventive, and industrially applicable. In accordance with the established case law of the boards of appeal, the term "invention" is to be construed as "subject-matter having technical character". (point 3.1 of the reasons, emphasis added)

The Board found that the presence of an "invention" in the sense of Art. 52 EPC is a prerequisite for the examination of novelty, inventive step and industrial application, since these latter requirements are defined only for inventions (cf. Articles 54(1), 56, and 57 EPC). They concluded that therefore it must in principle be possible to assess technicality on an invention without any knowledge of the state of the art (point 3.1 of the reasons).

The Board observed that the possibility for assessing technicality of an invention with no regard of the prior art is incompatible with "contribution approach". The contribution approach was based on the idea that the EPC only permitted patenting "in those cases in which the invention involves some contribution to the art in a field not excluded from patentability" (T 38/86). In other words, under the contribution approach, some prior art was taken into account when determining whether subject-matter was excluded under Article 52(2) and (3) EPC.

The Board in T 258/03 explicitly distanced itself from the contribution approach. They cited earlier decisions that had departed from the contribution approach, such as:

"Determining the technical contribution an invention achieves with respect to the prior art is therefore more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Article 52(2) and (3)" (T 1173/97, point 8); and

"There is no basis in the EPC for distinguishing between 'new features' of an invention and features of that invention which are known from the prior art when examining whether the invention concerned may be considered to be an invention within the meaning of Article 52(1) EPC. Thus there is no basis in the EPC for applying this so-called contribution approach for this purpose" (T 931/95, headnote IV).

This view was shared by the Board in T 258/03.

The Board also agreed with earlier case law, according to which a claim may contain a mix of technical and non-technical features and still be regarded an "invention" in the sense of Art. 52 EPC. They found that non-exclusion from patentability could not be destroyed by an additional feature which as such would itself be excluded (point 3.4 of the reasons).

For this reason, the Board firstly considered that apparatus claim 3 defined a technical invention. This finding was in agreement with earlier case law, in particular T 931/95.

The Board then also found that the conclusion regarding technical character of the apparatus claim would also apply to method claim 1. This was not in agreement with earlier case law, T 931/95. However, the Board in T 258/03 found that, upon strict non-application of the contribution approach, any technical feature recited in a method claim (even if it was trivial) lends technical character to the corresponding method.

The Board admitted that its approach to the assessment of technicality was very broad. They realised that the exclusion from patentability for non-technical methods could easily be circumvented by inclusion of (trivial) technical features in the claim. However, they found this approach is nevertheless justified, because method claims, which take the hurdle of technicality by inclusion of potentially trivial technical features are not automatically patentable. The claims must still be new inventive. Therefore method claims with only trivial technical contributions will normally not proceed to grant (point 4.6 of the reasons).

The Board concluded that, in general, a method involving technical means is an invention within the meaning of Article 52(1) EPC.

The invention defined by claim 1 and 3, however, was considered to lack inventive step, because the technical features of the claims were trivial.

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Headnote:

I. A method involving technical means is an invention within the meaning of Article 52(1) EPC (as distinguished from decision T 931/95-Controlling pension benefits system/PBS PARTNERSHIP)(see points 4.1 to 4.4 of the reasons).

II. Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed (see point 5.7 of the reasons).

The full text of the decision can be found here.

Quotes from random decisions citing T 258/03 can be found here.

G 0001/95 - Fresh grounds for opposition - #40

Citation rank: 40
No. of citations: 109

G 1/95 (and the related G 7/95) investigated what is to be understood under the expression "fresh grounds for opposition", as used in Headnote 3 of the earlier decision G 10/91,  which - according to the earlier G 10/91 - cannot be examined in opposition-appeal proceedings without the consent of the proprietor (G 10/91, Headnote 3).

In the opposition case underlying G 1/95, the referring Technical Board of Appeals noted that the patent had been opposed on the basis of Art. 100(a), but the opposition had been substantiated on the grounds of lack of novelty and inventive step (Art. 54, 56) only. The Technical Board, however, was of the opinion that the claims related to unpatentable subject matter in the sense of Art. 52(2), which is also mentioned as ground for opposition in Art. 100(a) EPC.

The question now arose, whether unpatentable subject matter is the same ground for opposition as lack of novelty and lack of inventive step (namely, "the ground for opposition of Art. 100(a) EPC"), or whether "unpatentable subject matter" must be seen as being an independent ground for opposition, which, according to G 10/91, could not be examined by an Appeal Board without the consent of the proprietor. Previously, the Technical Boards had taken different views on this question.

The Technical Board thus referred the following question to the Enlarged Board:

"In a case where a patent has been opposed on the basis of Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and inventive step pursuant to Articles 54 and 56 EPC, can a board of appeal introduce the ground that the subject-matter of the claims does not meet the conditions of Article 52(2) EPC of its own motion into the proceedings?"

The Enlarged Board noted in point 3.1 of the reasons that, according to established case law, the expression "grounds of appeal" is to be interpreted as including both the legal reasons, i.e., the legal basis, and the factual reasons, i.e., the facts, arguments and evidence relied upon to give to the board all the elements needed to decide whether or not the appealed decision has to be set aside.

Regarding Art. 100(a) EPC the Enlarged Board stated:

"Indeed, Article 100(a) EPC simply refers, apart from the general definition of patentable inventions according to Article 52(1) EPC, and the exceptions to patentability according to Article 53 EPC, to a number of definitions according to Articles 52(2) to (4) and 54 to 57 EPC, which specify "invention", "novelty", "inventive step" and "industrial application" which, when used together with Article 52(1) EPC, define specific requirements and therefore form separate grounds for opposition in the sense of separate legal objections or bases for opposition." (point 4.3 of the reasons)

They concluded that Art. 100(a) EPC contains a collection of different legal objections, or different grounds for opposition, and is thus not directed to a single ground for oppostion (point 4.6 of the reasons).

Therefore, in accordance with Headnote 3 of G 10/91, the ground for opposition of "unpatentable subject matter" was a fresh ground for opposition, which could not be examined by a Technical Board of Appeal, if the opposition had been substantiated only with respect to lack of novelty and lack of inventive step, unless the patentee agrees.

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Headnote:

In a case where a patent has been opposed on the grounds set out in Article 100(a) EPC, but the opposition has only been substantiated on the grounds of lack of novelty and lack of inventive step, the ground of unpatentable subject-matter based upon Articles 52(1) and (2) EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee.

The full text of the decision can be found here.

Quotes from 10 random decisions citing G 1/95 can be found here.

T 0190/99 - Claims read by a "mind willing to understand" - #41

Citation rank: 41
No. of citations: 109

T 190/99 is famous for its statement that a patent claim must be "construed by a mind willing to understand not a mind desirous of misunderstanding" (cf. Headnote).

In the underlying appeal case the proprietor has amended claim 1 such that, if the original wording of claim 1 was interpreted literally, the amendment could be seen as extending the protection conferred over the one of the granted patent (Art. 123(3) EPC).

The invention related to a woven slide fastener, which included, i.a., "a plurality of binding warp threads (17, 18)", and "a plurality of tensioning warp threads (19)".

Original claim 1 required i.a.:

"the plurality of tensioning warp threads (19) extending parallel with and between said upper and lower binding warp threads (17, 18)".

When looking at the figures and the description (in particular Fig. 2 of the patent), it was immediately apparent that the tensioning warp threads 19 did not extend strictly parallel with (and between) the upper and lower binding warp threads 17, 18, as claimed. Instead, the tensioning warp threads 19 were arranged in some sort of a zig-zag pattern between parallel upper and lower binding warp threads 17 and 18.

Fig.2 of the patent (ref. numeral 19 added)

The patentee had filed an amendment by which the above claim feature was replaced by the following:

"each said tensioning warp thread (19) extending between adjacent upper binding warp threads (17,17) and between adjacent lower binding warp threads (18,18) in a plane parallel to planes in which the upper and lower binding warp threads (17,18) are disposed"

The appellant-opponent argued that the original claim feature unequivocally required parallel tensioning warp threads 19. The amended claim feature, however, now included embodiments in which the tensioning warp threads 19 were not strictly parallel to the upper and lower binding warp threads 17, 18, e.g., the feature now also covered the zig-zag pattern of the tensioning warp threads shown in Fig. 2. Art. 123(3) EPC would thus be infringed.

The Board, however, took a different stance. They considered that the literal interpretation of the original claim feature made little sense. They stated:

"2.2.3. It is of course part of the most basic knowledge of the skilled person that, in order to weave a fabric, the warp threads are arranged parallel to each other prior to inserting the weft thread. However in the finished fabric, e.g. a conventional plain weave fabric, each warp thread goes over one weft thread and under the next weft thread and so on. While the warp threads still appear to be parallel when the fabric is seen in plan, in cross section the warp threads can be seen to be running approximately sinusoidally in order to lock the warp and weft threads together. Thus the warp threads are not parallel in the strict sense of being equidistant straight lines.

2.2.4. Thus the skilled person, reading in claim 1 as granted that the tensioning [...] threads 19 [...] extend parallel with the upper and lower binding warp threads 17 and 18, would not unreservedly assume that "parallel" meant "parallel" in the strict geometrical sense of the word."

The skilled person would bear the description and drawings of the patent in mind when deciding what claim 1 as granted means. He would not adhere to the strict literal wording of the claim. Instead, he would would interpret the claim wording so that it makes sense:

"2.4. The board adds that the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Article 69 EPC). The patent must be construed by a mind willing to understand not a mind desirous of misunderstanding."

Applying these principles of interpretation, the amendment requested by the patentee was found not to infringe Art. 123(3) EPC.

The appeal was dismissed.

Remark: T 190/99 is sometimes used by applicants in response to clarity objections; the argument being that a "mind willing to understand" would be able to make sense of the claim wording, thus Art. 84 would not be infringed. I find that a distinction must be made between opposition cases (in which the possibilities of amending a claim are restricted Art. 123(3) EPC and cannot be contested under clarity, and examination proceedings (in which the claim language can be changed more freely). The Headnote of T 190/90 should not be over-streched and used as a justification for unclear or inconsistent claims upon examination.

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Headnote:

The skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Article 69 EPC). The patent must be construed by a mind willing to understand not a mind desirous of misunderstanding. 

The full text of the decision can be accessed here.

Quotes from 10 random decisions citing T 190/99 can be found here.

T 0186/84 - Request for revocation by proprietor - #42

Citation rank: 42
No. of citations: 104

T 186/84 is concerned with the question of how a request by the patent proprietor for revocation of his patent is to be handled in opposition proceedings.

In the underlying case, the opponents appealed against a decision of the Opposition Division to reject the opposition. They requested that the patent be revoked. With letter of 5 June 1985 the patent proprietor then likewise requested revocation of the patent.

The Board first considered, whether a request of the proprietor for revocation of his own patent is admissible. In this regard, the Board noted:

"In the course of opposition proceedings before the EPO the need arose for the proprietors to have their patent set aside with retroactive effect. The European Patent Office accordingly sought a legal means whereby the proprietors could be divested retroactively of their European patent in opposition proceedings and adopted that set out in Legal Advice No. 11/82 (OJ EPO 2/1982, p. 57), whereby a European patent is revoked, without any further examination as to patentability, if the proprietor states that he no longer approves the text in which the patent was granted and does not submit an amended text." (point 2 of the reasons)

In other words, disapproving of the text in which the patent was granted is the appropriate way of "divesting retroactively" of one's own patent. No further examination as to patentability of the claimed invention is to take place in such cases.

In the present case, however, the proprietor did not withdraw its approval to the granted text, but instead requested revocation of his patent directly. Revocation of a patent was not foreseen in Art. 102 EPC1973 (now Art. 101(2) EPC). Therefore, the Board had to interpret the proprietor's request. The Board stated:

"In the present case the proprietors have applied for the patent to be revoked. It is beyond doubt that in so doing they are seeking revocation within the meaning of Article 102(1) [EPC1973, now Art. 101(2) EPC] and with the consequences specified in Article 68 EPC, namely the cancelling of the effects of the European patent application and the resulting patent as from the outset. Although the request for revocation differs as to form, it is in substance the same as stating disapproval of a given text of the claims, since it has the same aim; the present request may therefore be regarded as a withdrawal of agreement to the text of the patent as granted." (point 4 of the reasons)

The Board hence considered that the proprietor's request for revocation of the patent must be interpreted/handled in the same manner as a withdrawal of the approval of the granted text. Without an agreed-upon (by proprietor) text of the patent being available, a substantive examination of the patentability requirements for the claims at issue was not only superfluous, but in fact impossible.

The patent was thus revoked.

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Headword:

If in opposition proceedings the proprietor of a patent requests that his patent be revoked, it is to be revoked without substantive examination of the impediments to patentability. This principle is consonant with Legal Advice from the EPO No. 11/82, OJ EPO 2/1982, p. 57 and Decision T 73/84, OJ EPO 8/1985, p. 241.

The full text of the decision can be found here.

See T 73/84 for the same issue in appeal proceedings.

T 0181/82 - Comparative tests must be with the closest prior art ("Spiro compounds") - #43

Citation rank: 43
No. of citations: 103

T 181/82 is generally concerned with the question of whether and which type of evidence is required when the inventive character of an invention is based on an alleged advantage over the prior art.

In such cases, T 181/82 generally held that the alleged advantages cannot be taken into account unless sufficient evidence is provided of that alleged advantage in form of a comparison of the invention with the closest prior art.

In the case at hand claim 1 related to a UV absorbing compound (a UV stabiliser), which was defined by a generic chemical formula. The Examining Division had refused the application for lack of inventive step over structurally rather similar UV stabilisers known from D1.

The applicant appealed against the refusal. In order to prove inventive step, the appellant provided experimental data on a technically useful effect, namely the "resistance to extraction" of an exemplary compound of the invention with a structurally quite similar UV stabiliser disclosed in document D1.

The Board did not accept the evidence. They were of the opinion that the the compound chosen from D1 for comparison was not the most similar compound to the compound of the invention chosen for comparison.

For the chemists: the applicant chose 8-allyl-2,2,4,4-tetramethyl-7-oxa-3,20-diaza- 21-oxo-dispiro-(5,1,11,2)-heneicosane of the invention for comparison, and compared its "resistance to extraction" with that of 2,2,4,4-tetramethyl-7-oxa-3,20-diaza-21-oxo-dispiro-(5,1,11,2)-heneicosane of D1. The Board was of the opinion that the 8-unsubstituted 2,2,4,4-tetramethyl-7-oxa-3,20-diaza- 21-oxo-dispiro-(5,1,11,2)-heneicosane of D1 was not the closest analogue to the 8-allyl-2,2,4,4-tetramethyl-7-oxa-3,20-diaza- 21-oxo-dispiro-(5,1,11,2)-heneicosane of the invention. Instead, the applicant should have compared the "resistance to extraction" of 8-methyl-2,2,4,4-tetramethyl-7-oxa-3,20-diaza- 21-oxo-dispiro-(5,1,11,2)-heneicosane, which was also disclosed in D1, with that of the 8-allyl-2,2,4,4-tetramethyl-7-oxa-3,20-diaza- 21-oxo-dispiro-(5,1,11,2)-heneicosane of the invention.

Since the comparison of the alleged technical effect was not carried out with the respect to the closest prior art, the Board refused the applicant's inventive step argument, which was  based on that technical effect. If a meaningful statement is to be made in order to render an inventive step plausible, compounds having a maximum structural resemblance must be compared with one another.

Therefore, the appeal was dismissed.

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Headnote:

I. An effect which may be said to be unexpected can be regarded as an indication of inventive step; where comparative tests are sub submitted as evidence of this, there must be the closest possible structural approximation - in a comparable type of use - to the subject-matter of the invention.
II. Only known substances - not notionally described ones - qualify for use in comparisons of compounds. Such substances include those which are the inevitable result of the starting materials and the process applied thereto, even if one of the two reactants manifests itself as a chemical entity (C1 alkyl bromide) from a group of generically defined compounds (C1 - C4 alkyl bromides) (see "Diastereomers" T 12/81, OJ EPO 1982,296).

The full text of the decision can be found here.

See also T 20/81 on a related issue.

T 0169/83 - Features taken from the drawings - #44

Citation rank: 44
No. of citations: 102

T 169/83 is concerned with the question of whether features of an invention, which are originally only disclosed in the drawings, can be included in the claims to distinguish the claimed invention from the prior art.

In the underlying opposition case, the proprietor had restricted the claim by features, which were originally disclosed only in the drawings. The opponents did not argue that the structure or function of those features could not be deduced from the application as-filed, but they simply argued that the features did not emerge from the description and claims.

The appeal Board found nothing objectionable in the fact that features were originally disclosed only in the drawings. The Board stated:

"Since under Article 78 a European application must, where reference is made to them in the description or claims, contain drawings in addition to a request for grant, description, claims and abstract, there is no doubt that where drawings exist they are to be regarded as an integral part of the documents disclosing the invention." (point 3.2 of the reasons)

The Board also noted that nowhere in the EPC was a statement according to which the disclosure in drawings was in any manner "subordinate" to the disclosure in the description and the claims. The only statement in the EPC regarding subordinancy of parts of the application was with respect to the abstract. Here the EPC states that it serves merely as technical information and may not be taken into account for any other purpose (Art. 85).

The Board found that amendments based on drawings are allowable, if the respective features are "clearly, unmistakably and fully derivable from the drawings in terms of structure and function by a person skilled in the art". It must also be clear from the context that the features are indeed part of the invention.

After concluding that the amendments taken the drawings were not infringing Art. 123(2) EPC, the Board decided that the amended claims were new and inventive over the prior art. They remitted the case back to first instance with the oder to maintain the patent in the amended form.

Remark: The EPO Guidelines discuss the possibility of making amendments based on features taken from the drawings, but they promote a cautions approach (Guidelines H-V, 6).

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Headnote:

The European Patent Convention does not exclude the possibility that in the course of opposition proceedings followed by an appeal the claims of a European Patent which in accordance with Article 123(3) do not extend the protection conferred may be limited by the fact that specific features referred to in the claims are clearly shown in the drawings originally filed and are clearly, unmistakably and fully derivable from the drawings in terms of structure and function by a person skilled in the art and so relatable by him to the content of the description as a whole as to be manifestly part of the invention.

The full text of the decision can be found here.

T 0019/90 - The "Onco mouse" - #45

Citation rank: 45
No. of citations: 101

The case underlying T 19/90 was one of the most controversial patent cases that the instances of the EPO ever had to deal with. It concerned the so-called "onco mouse", a genetically modified laboratory mouse, which was genetically modified to have a predisposition to develop cancer. The onco mouse could be used as a test subject for testing anti-cancer drugs.

The application contained a claim 1 directed to a method of producing a "transgenic non-human mammalian animal", and independent product claim 17 directed to the genetically modified "non-human mammalian animal" itself.

The patent application was refused by the Examination Division. The grounds given for refusal were that the application did not meet the requirements of Articles 53(b) EPC (exclusion from patentability of "plant and animal varieties") and 83 EPC (insufficiency of disclosure).

Regarding insufficiency of disclosure, the Examining Division found it unlikely that the invention (which was demonstrated to work only in a single species, namely in mice) would work over the entire claimed scope, i.e., also in species having a very different "genetic make-up", such as apes and elephants. The Examining Division concluded that the requirements of Art. 83 EPC were not fulfilled.

Regarding the exclusion from patentability of "plant and animal varieties" under Art. 53(b) EPC, the Examining Division considered that it must have been the legislators intent not only to exclude "animal varieties" from patentability, but to exclude "animals" in general. The Examining Division therefore decided that Art. 53(b) EPC was infringed.

The Board of Appeals took a different view.

Regarding insufficiency of disclosure, the Board conceded that the claims were significantly broader than what was demonstrated to work in the examples. They stated:

"However, the mere fact that a claim is broad is not in itself a ground for considering the application as not complying with the requirement for sufficient disclosure under Article 83 EPC. Only if there are serious doubts, substantiated by verifiable facts, may an application be objected to for lack of sufficient disclosure.

Although the Examining Division was right in saying that certain non-human mammals other than mice have very different numbers of genes and different immune systems, it does not necessarily follow that the invention cannot be carried out on such animals. On the contrary, at least one source (Palmiter & Brinster, Ann. Rev. Genet. 1986, 20; 465-499) suggests that those skilled in the art might very well be able to carry out the invention on non- human mammals other than mice. Nor is the Board itself aware of any verifiable facts which could cast serious doubt on the possibility for a skilled person to carry out the invention as claimed." (point 3.3 of the reasons)

The Board concluded that - in the absence of substantiated, verifiable facts to the contrary - the invention was sufficiently disclosed.

Regarding the exclusion from patentablity of plant and animal varieties under Art. 53(b), the Board also did not agree with the Examining Division. The Board pointed out that Art. 53(b) EPC was an exception, and exceptions should generally be "narrowly construed" (point 4.5 of the reasons). They argued that Art. 53(b) clearly referred to "animal varieties", "races animales" and "Tierarten", and nothing suggests that in reality "animals" (in general) were meant to be excluded.

As a consequence, the Board concluded that Article 53(b) EPC was not infringed and the case was remitted to the Examining Division for further prosecusion.

Remark: When the patent proceeded to grant, seventeen (17) parties filed an opposition against it. The oppositions were i.a. based on Art. 53(a) (exclusion of inventions contrary to "ordre public" or morality). The patent was maintained in amended form by the Opposition Division. That decision was again appealed (T 315/03). The Appeal Board remitted the case back to the Oppostion Division with an order to maintain the patent in further amended form. At that stage, however, the proprietor decided not to file translations of the amended claims and not to pay the required fees under Rule 58 EPC1973. The patent was revoked, more than 20 years after its filing date.

Further remark: While the controversial nature of this case clearly lies in its aspect regarding the exclusions from patentability (Art. 53(a)/(b)), that aspect is not the reason why T 19/90 made it to the present top-100 list. Interestingly, the vast majority of citations of T 19/90 concern other aspects of the decision, namely its statement that insufficiency-objections must be based on "serious doubts, substantiated by verifiable facts".

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Headnote:

1. The exception to patentability under Article 53(b) EPC applies to certain categories of animals but not to animals as such.
2. In particular in the case of genetic manipulation of animals involving, as in this case, the insertion of an activated oncogene, there are compelling reasons to consider the provisions of Article 53(a) EPC in relation to the question of patentability.

G 0001/92 - Availability to the public (through public prior use) - #46

Citation rank: 46
No. of citations: 100

G 1/92 is concerned with the question of what is actually being "made available" to the public when a product is made available to the public through public prior use.

In this case the President of the EPO referred the following question to the Enlarged Board of Appeals (Art. 112(1)(b)):

"(1) Is the chemical composition of a product made available to the public by virtue of the availability to the public of that product, irrespective of whether particular reasons can be identified to cause the skilled person to analyse the composition?" and, if the answer to this first question is positive,

"(2) Does the principle extend to the more general case whereby all information which can be obtained from a product is made available to the public by virtue of the availability of that product, irrespective of whether particular reasons exist to cause the skilled person to search for that information?"

The referral was based on "diverging case law" (Art. 112(1)(b)), namely on T 93/89 and T 406/86. T 93/89 held that making available to the public a product does not automatically make available its internal structure or composition. The Board in T 93/89 held that a particular reason (ausreichender Anlaß) must be identified why the skilled person would have analysed the product. T 406/86, on the other hand, found that no such particular reason to analyse the product is needed in order to make the structure or composition available to the public.

The Enlarged approached the questions by considering the wording of Art. 54(2), which reads:

"The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use or in any other way, before the date of filing of the European patent application."

Regarding the question what is made available by public prior use, they stated:

"[where a technical teaching] results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art." (point 1.4 of the reasons)

The Board also remarked that the EPC provides no basis for requiring that a particular reason must exist to analyse a product. They found, however, that such a requirement could remove commercially available and reproducible products from the public domain. This would amount to an "unfounded deviation from the principles applied in respect of the other sources of the state of the art as defined in Article 54(2) EPC". It would also introduce an element of subjectivity leading to uncertainty in applying the concept of novelty.

The Enlarged Board concluded that the composition or structure of a product is state of the art when the product as such is available to the public and can be analysed and reproduced, irrespective of whether or not particular reasons exists for analysing the product.

The Board, however, pointed out that public prior use of a product only makes available to the public its composition and/or structure. Further properties of the product, which can only be determined through interaction of the product with other products or substances, or through other forms of experimentation, are not automatically made available to the public (point 3 of the reasons). Prominent examples are the first and further medical indications of a chemical compound.

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Headnote:

1. The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.
2. The same principle applies mutatis mutandis to any other product.

The full text of the decision (in three languages) can be accessed here.

T 0056/87 - Technical teaching of a document must be interpreted as a whole - #47

Citation rank: 47
No. of citations: 95

The invention in the underlying opposition case related to a method of controlling a divergent beam of rays, in which method two sets of flat electrodes were placed at certain locations relative to the beam. One set of electrodes was placed in the centre of the beam (such that the entire electrode surface is hit my the beam), the other set of electrodes was placed such that a part of the electrode surface is hit by the beam, another part of the beam being "in the shadow of the collimator".

The opponent alleged lack of novelty over D1, which also disclosed a method of controlling a divergent beam of rays with two sets of flat electrodes. Figure 1 of D1 was a schematic drawing of an apparatus for carrying out the method of D1. It was almost identical to a Figure in the patent in dispute. The schematic drawing in D1 was such that the features, according to which one set of electrodes is fully hit by the beam and the other set of electrodes is only partially hit, could be said to be deducible from the drawings. The Opposition Division had revoked the patent on the basis of what was shown in Figure 1 of D1.

The Technical Board of Appeals took a different standpoint. They conceded that the relevant features indeed appeared to be deducible from Figure 1 of D1, however, only if it had stood on its own. When the description of the invention of D1 was properly taken into account, it was apparent that the second set of electrodes could not have been arranged such that they are partially hit by the beam of rays. Instead, it was deducible from the description of D1 that these second electrodes must be entirely within the radiation field of the beam to fulfil their function according to D1.

The Board stated:

"It is generally accepted that for deciding on the novelty of a feature claimed in a patent or in a patent application it is necessary to determine whether this feature may be derived directly and unmistakenly from a prior art document by a person skilled in the art (see point 4 of decision T 204/83 already mentioned). In the Board's opinion, the skilled person who studies a document does not consider individually the various single items described therein but looks at their technical interrelation in order to try to understand the functioning of the disclosed apparatus or process. The skilled person is thus used to seeing all the detailed information contained in a document in their technical context. Therefore, the technical disclosure in a prior art document should be considered in its entirety, as it would be done by a person skilled in the art. It is not justified arbitrarily to isolate parts of such document from their context in order to derive therefrom a technical information, which would be distinct from or even in contradiction with the integral teaching of the document." (point 3.1 of the reasons)

The Board concluded that Figure 1 of the D1 should not be interpreted in isolation from the remainder of the document, and - in view of the express teaching of the description - the skilled person would interpret D1 such that the second set of electrodes is not partially, but fully, hit by the beam of rays.

For this reason, D1 was considered not novelty destroying for the claimed invention.

The opposition was rejected.

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Headnote:

The technical teaching in a prior art document should be considered in its entirety, as it would be done by a person skilled in the art. It is not justified to arbitrarily isolate parts of such document from their context in order to derive therefrom a technical information, which would be distinct from or even in contradiction with the integral teaching of the document. Thus, a technical feature which is derived from or based on dimensions obtained from a diagrammatic representation and which technically contradicts the teaching of the description, does not form part of the disclosure of this document.

The text of the decision can be found here.

G 0006/88 - Plant growth regulating agent / Second non-medical indication - #48

Citation rank: 48
No. of citations: 95

G 6/88 ("Plant growth regulating agent") is one of two related landmark decisions, which looked at the question to which extent an intended purpose stated in a "use claim" must be considered a limiting technical feature of that claim. This is clearly an important legal question. The present decision's twin (G 2/88, "Friction reducing additive") ranks 3rd(!) in the list of the EPO's most-cited Boards of Appeals decisions of all times.

In the underlying appeal case, claim 1 was directed to the "use of pyrimidine butanol derivatives of the formula X to regulate plant growth." The prior art (D1) disclosed the use pyrimidine butanol derivatives of formula X to control fungi on plants. Both effects (i.e., regulation of plant growth and control of fungi) occurred concurrently, whenever X was applied to plants. However, the plant-growth-regulating effect previously was previously unnoticed. The question then arose whether under such circumstances the stated purpose of claim 1 (regulate plant growth) could establish novelty over the known use of the same compound, despite the fact that the now claimed effect (regulation of plant growth) had in fact previously occurred when the pyrimidine butanol derivatives of formula X were used to control fungi on plants according to D1. In other words, the "technical means" to achieve the two technical effects (regulation of plant growth and fungi control) were the same.

The Board in the underlying appeal case therefore referred the following question of law to the Enlarged Board of Appeal:

"Is a claim to the use of a chemical compound or class of compounds for a particular non-medical purpose novel within the meaning of Article 54 EPC, having regard to prior art which discloses the use of that compound (class of compounds) for a different non-medical purpose, if the two teachings are carried out by identical technical means and the only novel feature in the claim is the use itself?"

The Enlarged Board approached the question in a general manner by investigating how patent claims were traditionally interpreted in the contracting states to the EPC. They observed that different "schools" seemed to exist. In some contries (in particular Germany) the patent claims were broadly interpreted and the protection conferred by it depended more upon what was perceived to be the inventor's contribution to the art, rather than strictly following the wording of the claims. In other countries, in particular in the United Kingdom, the exact wording of the claims was regarded crucial to determine the scope of protection. The EPC sought to minimise the effect of the different traditional approaches to claim interpretation by Art. 69(1) and the corresponding "Protocol on the Interpretation of Article 69 EPC". The Protocol essentially states that the proper way of interpreting claims under the EPC lies between the extremes traditionally practised in Germany and the UK.

With respect to use claims (e.g., of the form:"use of a compound X for a particular purpose"), the Enlarged Board stated that: 

"The recognition or discovery of a previously unknown property of a known compound, such property providing a new technical effect, can clearly involve a valuable and inventive contribution to the art." 

Hence, they were of the opinion that the possibility of protecting inventions covered by use claims was generally regarded desirable.

The Enlarged Board also noted that the issue of "use claims" had already been dealt with in G 1/83 - G 7/83. These decisions were all concerned with the patentability of a further medical use of a compound where a first medical use is already known. The Enlarged Board in G 6/88 pointed out that G 1/83 - G 7/83 had to deal with an additional complication, namely the exclusion of therapeutic methods from patentability. However, the Enlarged Board endorsed the general view taken in G 5/83 that a second non-medical new and non-obvious use of a product is clearly patentable (G 6/88, point 4 of the reasons).

Regarding the interpretation of use claims, the Enlarged Board stated:

"In relation to a claim whose wording clearly defines a new use of a known compound, depending upon its particular wording in the context of the remainder of the patent, the proper interpretation of the claim will normally be such that the attaining of a new technical effect which underlies the new use is a technical feature of the claimed invention." (point 7 of the reasons)

This would be the correct way of interpreting use claims, taking Art. 69(1) EPC and the Protocol on its interpretation into account. Since use claims are to be interpreted such that the desired technical effect is a functional feature of the claim, the stated technical effect can establish novelty over prior art, which does not mention that particular technical effect. An effect which was not noticed or described in a prior art document cannot be regarded as having been "made availlable" by publication of such a document in the sense of Art. 54(2) EPC.

The Enlarged Board also commented on difficulties in infringement proceedings arising from the fact that a potential infringer practising a known use of a compound (e.g., use of compound X to control fungi on plants) could be found infringing a later patent directed to the use of that compound to regulate plant growth. The Enlarged Board, however, found that this could be solved by so-called "vested rights", based on the prior use by the potential infringer. In any event the same problems resulted from allowing patenting the second medical use G 1/83 - G 7/83.

In summary, G 6/88 found that a claim to the use of a compound for a particular purpose, where the purpose relies on a technical effect described in the patent, includes that technical effect as a limiting functional feature. The claim is thus new over prior art disclosing other uses of the same compound, even if the technical means for carrying out the use are identical, as long as the particular technical effect underlying the invention is not disclosed in the prior art.

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Headword:

A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public.

The full text of the decision can be found here.

T 0270/90 - Public prior use / Ballance of propabilities - #49

Citation rank: 49
No. of citations: 94

T 270/90 is a further decision within the 100 most-cited EPO Board of Appeals decsions, which deals with the required level of proof in public prior use cases.

The instant case T 270/90 is earlier than T 472/92 (which was recently commentated in this blog here) and the latter makes reference to the present case. The underlying cases, however, are slightly different, and therefore the later T 472/92 comes to a different conclusion regarding the required level of proof. The two decisions, however, do not contradict each other.

In the present case T 270/90 the appellant/proprietor argued strongly that, as a matter of law, the issue of public prior use needed to be proved more strictly than any of the other grounds of objection available under Article 100 EPC.

The Board disagreed. Regarding the principles of law that apply to appeal proceedings under the EPC, the Board stated:

"When arriving at their decisions, the Boards, in addition to exercising their inquisitorial powers (should this be necessary), decide the issues before them on the basis of the evidence adduced by the parties. Their decision need not, and indeed in most cases could not, be based on absolute conviction, but has, instead, to be arrived at on the basis of the overall balance of probability, in other words, on the footing that one set of facts is more likely to be true than the other (see decision T 182/89 of 14 December 1989, Extent of opposition/SUMITOMO, OJ EPO 1991, 391).

These principles clearly apply to all facts and matters alleged in relation to all grounds of opposition, including public prior use. Accordingly, the appellant's submission that the evidential test or burden of proof for prior public use needs to be stricter than that for other grounds of objection under the EPC is rejected." (point 2.1 of the reasons)

In the case at hand, the decisive question was whether certain products - which were delivered from the patent proprietor to the opponent before the date of filing of the patent in dispute - were delivered under a (tacit) confidentiality agreement or whether the delivery was under the terms of "general commercial use". This question was answered by the Board using the general ballance-of-propability standard, i.e., the Board simply considered, which set of facts presented by the parties was more likely to be true.

The Board decided that it was indeed more likely that the delivered products were already freely available on the market, and therefore the public-prior-use attack succeeded.

Comment: The above situation, i.e., a situation in which both parties have more or less the same access to the relevant evidence regarding an alleged public prior use, is rather unusual. Normally, the party alleging the prior use has power over most or all relevant evidence, whereas the proprietor is left to point to gaps or inconsistencies in the argumentation of the opponent. Under such (normal) circumstances T 472/92 decided that the more strict standard "up to the hilt" must be applied. See: here.

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Headnote:

In opposition proceedings decisions of the Boards on the evidence adduced by the parties must be arrived at on the basis of the overall balance of probability, as distinct from "beyond all reasonable doubt" or "absolute conviction". Each of the parties must therefore seek to prove facts alleged by it to that degree of proof.

The full text of the decision can be found here. 

T 0198/84 - Selection of sub-ranges - #50

Citation rank: 50
No. of citations: 93

T 198/84 relates to selection inventions. More specifically, the decision deals with selection inventions in which a narrow numerical range is selected from a broader numerical range.

In the underlying opposition/appeal case claim 1 related to a process for the preparation of thiochloroformates from mercaptans with phosgene in which a catalyst was present in an amount of from 0.02 to 0.2 mol%, relative to a starting material.

The prior art (D1) disclosed a process which did not differ with regard to starting materials and end products. The prior art process also used the same catalyst, but specified only that the catalyst was to be used in "substoichiometric amounts". This was interpreted by the Board to mean that less catalyst than starting material is used (on a molar basis) The catalyst is thus present at an amount from >0 to <100 mol% relative to 1 mole of a reactant.

The Board looked at the broad numerical range of catalyst concentrations disclosed in D1 and stated:

"Such an extensive numerical range does not necessarily represent a disclosure, ruling out a selection from it, of all the numerical values between these minimum and maximum values if, as in this case, the sub-range selected is narrow and sufficiently far removed from the known range illustrated by means of examples. The claimed range of 0.02 to 0.2 mol% relative to the mercaptan, which has been specifically singled out, does indeed represent only a small specimen from the known range extending from >0 to <100 mol%. Moreover the essential portion of the known teaching according to D1 (cf. the 22 examples) specifies the use of catalyst concentrations of between 2 and 13 mol% relative to the mercaptan, a range removed by at least a power of ten from the selected range claimed." (point 5 of the reasons)

The Board concluded that the singled-out subrange represents a quantitative range which has not yet been individualised and whose application in the production of thiochloroformates by the process according to the contested patent was new.

The Board drew an analogy to selection inventions in in which chemical compounds were singled out from a generically defined group of compounds (T 181/84). The Board remarked that there was a difference between the selection of compounds from the generic group of compounds in T 181/82 and the selection of a narrower numerical range in the present case, because in the former case, there was only a discrete number of chemical compounds in the broader group, whereas the numerical range in the instant case was continuous, thus contained an unlimited number of values between its end points. Neverthelesss, the Board found that the principle of selection inventions should also apply to the selection from numerical ranges (point 6 of the reasons).

The Board pointed out that, for a selected range to be new over a broader range disclosed in the prior art, the selected range must not be arbitrary, but it must be a "purposive selection". They stated:

"To prevent misunderstanding, it should be expressly emphasised that when examining so-called selection inventions as to novelty the Board adheres to the principle that the sub-range singled out of a larger range is new not by virtue of a newly discovered effect occurring within it, but must be new per se (cf. T 12/81 "Diastereomers/BAYER", OJ of the EPO 8/1982, 296, 303). An effect of this kind is not therefore a prerequisite for novelty; in view of the technical disparity, however, it permits the inference that what is involved is not an arbitrarily chosen specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection)." (point 7 of the reasons)

The Board considered that in the underlying case the selected range of the catalyst was not arbitrarily chosen, but - due to the observed increased yields obtained with catalyst concentrations in the caimed range - concluded that it was a "purposive selection".

Claim 1 was considered new and inventive and the patent thus upheld.

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Headword:

A fairly broad range of numbers delimited by minimum and maximum values (in this case, >0 and <100 mol%) does not necessarily represent a disclosure, ruling out the selection of a subrange, of all the numerical values between these minimum and maximum values if the sub-range selected is narrow (in this case, 0.02 - 0.2 mol%) and sufficiently far removed from the known range illustrated by means of examples (in this case, 2 - 13 mol%). The sub-range is novel not by virtue of an effect which occurs only within it; but this effect permits the inference that what is involved is not an arbitrarily chosen specimen from the prior art but another invention (purposive selection).

The full text of the decision can be found here.