Tuesday, 7 June 2016

G 1/15: The wait is nearly over

The EPO Isar building in Munich on a lovely sunny day. 
As I mentioned in an earlier post a couple of months ago, I arranged to get out of the office to attend the oral proceedings for the Enlarged Board (EB) case of G 1/15 on partial priority that were scheduled for 7 & 8 June 2016. As it turns out, the second day is not now going to be needed, because the EB concluded the proceedings at just before 3pm today, following just a few short hours of submissions and brief discussions from each side.

Although the EB did not give any clear indication of how they were going to decide the matter (unlike in lower board of appeal cases, where a decision is normally announced at the end of the proceedings), there were some clues as to how things might turns out. What follows is a brief, and necessarily biased, view of how the proceedings went. It is biased, not only because I have a clear opinion on how the issue should be settled, but because the respondent spoke only in German, with interpretation not being provided for attending members of the public (I even asked, and was bluntly refused, even though there were several spare headsets available), and my understanding of German was just not good enough to closely follow the respondent's speeches. Thanks to other attendees, however, I managed to get at least the gist of what the respondent's arguments were, and they did not seem to be much different to what had already been presented in written arguments and elsewhere. Following several years of discussing the various arguments regarding partial (and poisonous) priority, there was in any case unlikely to be anything that came up today that hadn't already been said somewhere.

The issue, just to remind those that haven't been following this for the past few years, is about whether a claim in a European patent (or application) that does not have a full right to priority can be knocked out by publication of the priority application as another European application. If the European application claims something more broadly than is disclosed in the priority application, can this narrow disclosure be Article 54(3) prior art for the later application? The issue was first set out in 2011, and has been discussed many times on this blog, so I won't say any more about it (you can in any case view all of the relevant posts here if you want to catch up).

Following submissions on the case that were provided by the appellant (Infineum), the opponent/respondent (Clariant) and on behalf of the EPO President, along with quite a few amicus briefs, all of which are summarised in my earlier post here, the EB invited all these parties to the hearing to set out their case. They did not, however, set out any preliminary opinion or agenda of things they wanted to discuss, which was fairly unusual for any Board of Appeal case. Whether this meant that they had already made up their mind and were just going through the motions is impossible to tell, but might I suspect be fairly close to the truth, given how things turned out on the day.

The EB was made up of seven members, with F. Blumer and I. Beckerdorf as legally qualified members, W. Sieber and H. Meinders as technically qualified members, P. Carlson as an external legally qualified member, C. Vallet as a further legally qualified member and rapporteur, and W. van der Eijk as chairman. The chairman kicked off proceedings just after 9am by reading the questions that had been referred to them in decision T 557/13 of 17 July last year (which I wrote about here). These are:
1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document? 
2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim? 
3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject- matters" to be interpreted and applied? 
4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim? 
5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?
The chairman noted the importance of the questions raised, which was emphasised by the submissions provided by the parties and the fact that there had also been 33 amicus briefs filed (which thankfully matches my last count of 36 in all). The EB had studied the submissions and taken note of them, so didn't want to hear all of the arguments again but wanted to hear anything that had not been already set out. This might have made the proceedings very brief indeed, as there really wasn't anything else to say that had not already made it to the file, but all sides had a go anyway, as you might expect.

An important point to note is that the Chairman made it clear the referral was considered to be admissible, because it related to a point of law of fundamental importance and on which there was a clear divergence in the case law. There was therefore no need to discuss the question of admissibility (unlike, for example, the case of G 3/08, which I was to a small extent involved with), and none of the parties raised this in their arguments.

The submissions started with Infineum, whose representative Richard Hart went through the various key points as he saw them relating to the questions. One of the more general points raised was that, from the industry context, it had to be recognised that inventing was difficult and did not stop with the first filing. It was therefore very common for an invention to change, and possibly broadening, during the priority year. Having an effective bar to being able to broaden the resulting claims in a patent would result in the patenting system being far too harsh on the applicant, who typically would have spent a lot of effort getting to the point of filing a patent application, and would have done much else that did not result in one. A strict approach to partial priority could therefore act against the interests of the system, as well as being unreasonable in allowing a patent to act against itself. There was a general principle that the scope of a patent should be commensurate with the contribution. If a broader contribution, backed up by further work in the later filed application, could not be protected, this pulled in the opposite direction.

On the substantive legal points, Mr Hart set out the usual arguments starting from Article 88 EPC, which should be interpreted according to the travaux preparatoires, mentioning the now famous FICPI Memorandum, which set out the legislative intent behind Article 88(2), second sentence. Using the memorandum was one way of figuring out how to interpret the legislation, while another way was to consider indirect interpretations based on the Paris Convention, which the EPC was a special agreement within. Article 32 of the Vienna Convention specified supplementary means as a way of interpreting, which the memorandum certainly was. A key point relating to this is that the examples in the memorandum could only be reconciled with the conceptual approach to partial priority, whereas the strict approach could not. There was then a lot of discussion about Articles 4F and 4G of the Paris Convention and commentary by Professor Bodenhausen, during which the EB appeared to be getting a bit bored, and which I will not bore you further with.

The key points to Mr Hart's submissions appeared to be, as we have seen before, that the conceptual approach is the only one that can be made consistent with everything else, including the concept that the test for novelty is essentially the same as the test for priority. If the tests were to be different, which they would need to be if the more strict literal approach were to be taken, then the test applied for assessing priority would result in nonsensical results for novelty. The proper test was, as with that for novelty, to compare the disclosures and determine the boundary of the claim, then determine what falls within the scope of the claim. The decision in G 2/98 could be viewed, as the respondent had done, that a new more restrictive test was being laid out on partial priority, or that it wasn't. It was, in Mr Hart's view, more likely that the EB in that case were not trying to set out a new test, and that later decisions were simply a misunderstanding of what was meant by "a limited number of clearly defined alternative subject-matters" in point 6.7 of the reasons. The later decision of T 1222/11 was the first one to have properly considered how this should be aligned with the EPC, setting Article 88(2) in its proper context.

After a short break, the opponent/respondent, represented by Mr Mikulecky, was given his turn to set out his case. As I mentioned above, I was not able to follow his arguments very closely, but the gist of his case was that the more strict approach to partial priority should be followed because G 2/98 had set out a new test to be met. The fact that this could not be reconciled with at least some of the examples in the memorandum was, in Mr Mikulecky's submissions, a sign that, although the legislative intent was clear when the EPC was first drafted, times change and the intent changes with them. If I am understanding this correctly, this seems to me like a very strange argument, because if G 2/98 was trying to set out a new interpretation of Article 88(2) EPC it would have said so rather than just referring to the memorandum as expressing the legislative intent without making it clear that this was no longer the case.

Another point made by Mr Mikulecky related to the consequences of taking the strict literal approach. In his submission, these consequences were just a feature of the system, and had to be dealt with by better drafting. If the invention had been broadened out during the priority year, the applicant just had to take more care when preparing the later application to make sure that there was sufficient basis for all separable embodiments. In my view, this is a more sensible argument, although still wrong because it would inevitably lead to applicants having to include ever increasing amounts of what effectively amounts to boiler plate language to make sure that all embodiments were either claimed or disclaimed. This was surely not what the legislator intended, and is definitely contrary to the memorandum, which makes it quite clear that the main reason for allowing multiple priorities is to prevent this sort of thing being necessary.

The EB then gave the EPO President a chance to express his views. Unfortunately, whether out of time pressures or fears for his own safety, the President himself could not be there. He did, however, send a couple of representatives, who did the job for him. As with the written submissions, the President did not make it entirely clear which side of the fence he was on, although it seemed that he was more in favour of the conceptual view than the strict literal view. Apart from some comments about the EPO requiring an approach that was practical and not over complex, and that not allowing priority for a part of a claim that was not spelled out as such was contrary to common practice, the President did not have much further to say of substance. There was, however, a comment about the adverse consequences of following the literal approach, which would inevitably lead to increased complexity in applications and a consequential increase in legal uncertainty for third parties.

After lunch, each of the parties were given an opportunity to respond to what the others had said earlier. Not much of interest was raised at that point, but there was an odd discussion about what would be the consequences of leaving out a chunk of the priority document in a later filing, on which priority depended. I suspect this is not going to be a key feature of the EB's reasoning, so I will leave it there.

Finally, after a short break while everybody went outside as a result of a fire alarm (pictured right; it turned out the EPO was not on fire, and the alarm was probably just some building work setting it off), the EB had a chance to ask some questions. Only five of the members asked any questions, and this took up the final 20 minutes or so of the proceedings. The impression I got from this was that the EB did not really need to know any more from the parties, and had therefore probably already made up their minds. The most interesting question, in my view, came from the Chairman, who asked the respondent how the intent of the legislation could have changed over the 40 or so years since it was prepared. What had made this intent change? The questions, along with the body language of the EB members, which seemed to express boredom with the appellant and annoyance at the respondent, gave me the general feeling that they were largely sceptical of the respondent's arguments.

At the end, the Chairman announced that a decision would be made "as soon as possible" (which raised a small ripple of laughter from the audience), but that this would be by November this year. This fits with the impression I have gathered previously from discussing the issue with people from the EPO, who think that this is an important issue that needs resolving soon. I might as well stick my neck out now and say that I think the decision will be in favour of the appellant, and the answer to question 1 is likely to be either a clear "no" or possibly a "no" with some very limited caveats. The answer to question 5, which I suspect the EB will deal with at least partly as a separate question and not necessarily dependent on question 1, will be a clear "no", regardless of how the answer is arrived at. We now only have a few months to wait. I will, of course, write about it as soon as I hear.

Any comments on the above would be gratefully received, particularly if they go over any points that were raised at the hearing but that I have not covered.

UPDATE 9/6/16: Here's a tweet from me asking for your opinion on what the answer to question 1 is going to be. Just a bit of fun, but it would be interesting to see what your view is. Please vote!

UPDATE 22 June 2016: The minutes of the oral proceedings have now appeared on the EP register here. They are a bit more brief than my report, and the only useful piece of information is the confirmation that the EB will be issuing their decision by November.

Wednesday, 25 May 2016

T 1785/15 - If you're reading this it's too late

The end of the examination procedure at the EPO starts with a communication under Rule 71(3) EPC, which informs the applicant that the examining division is prepared to grant the application on the basis of an accompanying version of the application text. The text intended for grant (a.k.a. the druckexemplar) is typically an assembly of the originally filed application, together with any amendments the applicant has made along the way, and usually with further amendments made by the examiner. Examiners often make amendments to tidy up the application so it complies with the EPC, such as inserting a characterising clause to comply with Rule 43(1)(b), mentioning a relevant document to comply with Rule 42(1)(b) or amending the description to conform with the claims (Article 84 EPC). Normally the examiner's amendments are fairly easy to identify and a decision on whether to approve them is straightforward. If any are not acceptable, for example if the examiner gets something wrong, it is always possible to respond with a request under Rule 71(6) to have them changed. If the changes are minor and unlikely to be a problem, the right to receive a further communication under Rule 71(3) can be waived, and the application can then go on to get granted without further ado.

All this is straightforward and well known, at least to European practitioners. An important point to note is that the communication under Rule 71(3) is the applicant's last chance to get things right before the application gets granted. Approving the text for grant is therefore not something to be taken lightly. Examiners, applicants and even patent attorneys can make mistakes and this is the opportunity to correct any that might have been made. An applicant that responds to a Rule 71(3) communication without first checking carefully that everything is how they want it to be is running the risk of not getting what they want and not being able to do anything about it afterwards. As the Enlarged Board decision of G 1/10 made clear, errors made by the applicant during prosecution cannot be corrected after grant, which can prove fatal to the resulting patent. Possibly more importantly, errors made by the examiner that have been approved by the applicant at the Rule 71(3) stage also cannot be corrected after grant. As stated in G 1/10, the responsibility for any errors remaining in the text after grant is the applicant's alone, whether the error was made by them or by the examining division.

A recent decision, T 1785/15, has emphasised the need to be careful when considering whether to approve the text for grant. The application, 09756869.5, entered the European regional phase in 2012 and the applicant made some amendments to the claims the following year in response to the international written opinion. The examining division then issued a communication under Rule 71(3) in February 2015 with a clean and marked-up version of the text. Substantial changes were made to the claims, together with a few formal changes to the description. The applicant then paid the grant fee and filed translations of the claims into French and German within the usual four month period. Only after a decision to grant was issued did the applicant point out to the examiner that the claims contained errors. By that point, however, it was too late to do anything about it. The applicant's attorney, who somehow got the impression from the examiner that the decision to grant could be appealed, filed an appeal against the decision to grant.

The Board first pointed out that appeals could be filed by any person adversely affected by a decision (Article 107 EPC). By approving the text for grant, the applicant had signalled its approval, leaving no room for the notion that they were adversely affected by the decision to grant. Rule 140 EPC allowed obvious mistakes in decisions to be corrected but, as G 1/10 set out, this was not available for correcting the text after approval by the applicant. The applicant's request for a correction was therefore inadmissible. Normally this would not mean that the appeal fee was refunded, since the applicant should have known that the appeal was hopeless. They had, however, been given the impression that an appeal could be validly filed after speaking with the examiner. The Board therefore decided that the appeal fee could be refunded, even though the appeal was rejected as inadmissible.

This case is another warning, as if it were needed, that the communication under Rule 71(3) should be taken very seriously and the text for grant should be carefully checked before it is approved. The responsibility for this is with the applicant, but applicants are often unaware of the importance of getting things right at this stage and may simply wave an application through, not wanting to spend any more time and money than necessary to get the application granted. The responsibility is then in practice down to the patent attorney, who should always carefully check the text for grant and point out anything that might be a problem, even if this means adding a bit more to the bill, or having to write off some time. Obvious errors or mistakes can then be spotted and corrected before it becomes too late.


Wednesday, 11 May 2016

G 1/15 (partial priority) - an update

My post on the G 1/15 amicus briefs, initially written on 3 March, has been amended extensively as the briefs kept on appearing on the EP register. The total, including comments from the EPO President, the patentee and the opponent, has now risen to 37 following a very late submission from Malcolm Lawrence, now of Concerto IP. The drawing on the right is taken from this submission, and is a fairly typical example of how clearly the issue is presented.

As you may recall, Mr Lawrence was in some ways responsible for the whole problem of poisonous divisionals and related issues, which he first raised as an issue in an article for epi information in June 2011, which I commented on here. At the time, no mention was made of Article 88(2) EPC being a solution to the problem, or even being related to it at all. I first raised it as a possible solution in a post in May 2013 here, which has since been given the name "Tufty's Law", although the same reasoning was arrived at a few months earlier in T 1222/11. His latest submissions, which do mention Article 88(2), are typically very wordy, running to a total of 39 pages, including drawings. Thankfully it is only necessary to read the first page to find out what he thinks the answer to question 1 should be, which is a qualified yes. I have not read the remaining 38 pages (as I value my sanity too much, what is left of it) but if anyone reading this has, and finds any interesting points, I would be grateful for any comments pointing them out.

Oral proceedings have been scheduled for 7-8 June 2016 at the EPO in Munich for the Enlarged Board to hear submissions from the parties in the proceedings. A final decision will presumably be arrived at a few months afterwards. Because this is an issue I have been keeping an eye on for several years, I have persuaded myself that it would be good idea to go to Munich to attend the oral proceedings so I can see for myself how the arguments are presented and maybe get an idea of the thinking of the Enlarged Board. A blog post or two will of course be written while I am there. If any readers are going to be there too, please get in touch with me and we can meet up. I can be contacted at tuftythecat at gmail dot com or via Twitter @tuftythecat. I also have a work email address, which is fairly easy to find.


Friday, 15 April 2016

Not a Clear Cut Case?

As regular readers will know, I have been keeping a watch on cases where a negative patent office opinion on validity has been issued since October 2014 when section 73 was amended to allow for revocation by the comptroller following an opinion under section 74A finding a patent to lack novelty or inventive step. So far, there has been only one opinion that has resulted in revocation, which I have written about here. Two others resulted in a decision not to revoke the patent, and at the time of writing there are six others that are at various stages awaiting a final decision, including one that in my opinion will inevitably be revoked. One of these six cases involved opinion 10/15, which related to whether the UK part of EP2124945B1 was valid over various documents filed by the requester. The examiner found that the patent was not valid because it lacked an inventive step.

In brief, the invention related to a method of treatment using pirfenidone to treat idiopathic pulmonary fibrosis, the treatment involving a specified escalating dosage regime [as an interesting aside, the very narrow scope of claim 1 of the patent defines the exact dosage regime described in the SPC information for Esbriet (pirfenidone)] . The examiner found that, since everything apart from the specific claimed escalating regime was already known and that there was no proof that the regime had any particular benefits or that there was any technical prejudice against it, the claimed regime was obvious. This finding applied to all of the claims in the patent (of which there were only four). In principle then, the patent stood to be revoked by the comptroller under section 73. The proprietor had, however, the opportunity to request a review of the opinion under section 74B before any action would be taken.

The patent was granted in the name of InterMune, Inc., which was acquired last year by Roche Products Limited in a deal worth apparently £5 billion, and relates to a drug that is a recommended treatment for idiopathic pulmonary fibrosis. It is not therefore surprising that the patent proprietor did not take the opinion lightly and decided to request a review rather than risking the patent being revoked. The result of the review was a decision that issued a couple of weeks ago, BL O/163/16. The proprietor argued that the examiner had got it wrong because he had misapplied the law on inventive step, and in particular by presuming that any new dosage regime would be obvious without there being a clear technical prejudice pointing away from it, referring to this paragraph of the 2008 Court of Appeal decision in Actavis v Merck, which stated that new dosage regimes would nearly always be obvious because it was standard practice to investigate appropriate dosage regimes, and that only in an unusual case, where there was a technical prejudice against the claimed dosage regime, could specifying a dosage regime confer validity on an otherwise invalid claim.

The hearing officer did think that the examiner was wrong in taking the presumption of invalidity as a starting point, but did not think that the opinion was clearly wrong because the examiner had correctly followed the multi-part Windsurfing/Pozzoli test and had carried out a multifactorial analysis based on the material before him. The opinion was therefore not set aside.

What happens now is the interesting question. Given how much money is at stake, the proprietor will presumably not give up and let the opinion stand. To do so would risk getting the automatic revocation process initiated. Instead, I expect they will appeal the decision, which will tie things up for a while. The appeal cannot itself result in revocation but only a final decision as to whether the opinion should be upheld or set aside. If it is upheld, the process could then start all over again, as the patent office will still have the option open to them of initiating revocation of the patent. I wonder though, whether the patent office would decide to do this, given that the patent is one that is clearly worth fighting over, even though it may be (and, I suspect, is) clearly invalid. I suspect the patent office will really not want to get involved in a dispute that could mean having to defend a decision and spend a lot of money doing so. Unfortunately, assuming an appeal is filed, they will be involved anyway. Someone at the patent office might now be thinking that automatic revocation was perhaps not such a good idea after all.

UPDATE 31 May 2016: The IPO has issued a decision stating that no action will be taken to initiate revocation proceedings under section 73(1A). Presumably this means that an appeal has not been filed against the decision to uphold the opinion, which is an interesting approach to take for a patent that is clearly worth a lot of money. Perhaps the patent proprietor managed to find out what the IPO's opinion was on whether action would be taken before they decided not to appeal. Although the patent might not be clearly invalid in the IPO's view, it is at the very least arguably invalid and the negative opinion is there for all to see. I wonder if anyone will now bother to file a proper revocation action?

Thursday, 31 March 2016

T 105/11 - A lesson in how not to do it right

A recent decision from the EPO Boards of Appeal, T 105/11, illustrates a couple of points that should serve as a warning to both patent attorneys and EPO examining divisions.

European patent application 05771127.7, in the name of LG Electronics Inc., reached the end of the line as far as the examining division (ED) was concerned, with oral proceedings held on 30 June 2010. The outcome was that the application was refused for lack of inventive step. The ED issued their decision on 29 July 2010, supported by their grounds for the decision. The applicant's attorney wrote back the next month to indicate an error in the decision, noting that the grounds made reference to an auxiliary request that did not exist. The ED then issued what appeared to be a replacement decision on 6 September 2010, with the grounds amended to correct the error. At this point, the question that might immediately come to mind (at least with the benefit of hindsight) is: what was the correct date to take into account for calculating the periods for filing a notice of appeal and the supporting grounds of appeal? Was it the original date of 29 July 2010 or the later date of 6 September 2010 for the corrected version? The patent attorney responsible for the appeal apparently thought it was the latter. Although a notice of appeal was filed on 23 September 2010, which was in due time for both of the dates, the grounds of appeal were not filed until 7 January 2011, which could only be in time for the later date. The EPO initially processed the appeal to indicate that the notice, fee and grounds had been filed in due time, presumably taking the second date as the one to work from. The Board of Appeal, however, took a different view, at least initially. One they got round to finally looking at the case, in a preliminary opinion issued on 27 November 2015 the Board indicated that the ED did not have the power to withdraw a decision and take a new decision, meaning that the second issued decision could not take the place of the first, but could only correct it retrospectively. The appeal therefore appeared to be inadmissible because the statement of grounds was filed late.

In the subsequent appeal decision, the Board cited various decisions (T 1176/00, T 1081/02, T 830/03T 993/06 and T 130/07) where a second decision had been issued incorrectly and had been relied on the the detriment of the parties. In each case the Board had decided that the appeal should be found admissible in view of the principle of the protection of legitimate expectations, given that the parties had in each case been misled into thinking that the date of the decision was different from what it actually was. The Board distinguished this case over the previous cases though, because the appellant had explicitly requested that the written decision be corrected. In the Board's view, "the professionally represented appellant should have been aware that the second decision intended to correct as requested by the appellant itself, the first written decision under Rule 140 EPC" (point 1.8 of the reasons). In other words, the attorney should have known that the second decision was not a replacement decision and did not change the original date. Although it could be argued that the apparent confusion was the result of a legal misunderstanding, it was clear that the second decision was not issued correctly and it was this that the appellant had relied on to count the periods for filing the notice and grounds of appeal. The Board then decided that the grounds were deemed to have been filed in time, although "not entirely without hesitation" (point 1.10).

The reason for the Board deciding in favour of the appellant probably also had something to do with the ED being responsible not only for an incorrectly issued decision but also for a number of errors in the decision itself. Firstly, the ED referred to claims that had been filed on 30 July 2009. The applicant had, however, filed different claims on 25 May 2010 before the oral proceedings. The ED's decision was therefore based on claims that were no longer approved by the applicant. The ED also did not annex a copy of the claims to the decision, as advised in the Guidelines for Examination (E-IX, 5). The ED also did not follow the problem-solution approach in their reasons for finding the application to lack inventive step, contrary to the Guidelines (G-VII, 5), making the decision being insufficiently reasoned in violation of Rule 111(2) EPC. The decision was also, the Board's view, unconvincing in other respects, in particular where they had indicated doubt as to whether the technical problem argued by the applicant actually existed. As the Board noted, it is irrelevant whether or not a problem actually exists in the prior art, as the problem is defined as one given to the skilled person as part of the problem-solution approach. Given the numerous flaws in the ED's reasoning, the Board decided to remit the application to the ED and reimbursed the appeal fee.

Other than spotting that the apparently reissued decision was not the one to be relied on, it is not clear to me what the appellant could have done differently in this case, given the catalogue of errors on the part of the examining division. It looks like this is just one of those cases that will have been very frustrating for the applicant, and one that will probably not be settled for a while yet. Let's hope that the examining division have learned some lessons and do better next time.

Thursday, 17 March 2016

T 1727/12 - Biogen sufficiency at the EPO?

As every European patent attorney knows, clarity is not a valid ground of opposition. This does not, however, stop oppositions being filed using sufficiency (Article 100(b) EPC) as a disguise for what would otherwise be a clarity objection. The usual outcome of such an attempt is to cause a bit of trouble for the patent proprietor, but for the opposition division to then dismiss the argument as being unallowable. It is, however, sometimes difficult to separate sufficiency from clarity, as they are to some extent linked together. While clarity relates to the claims being clear and concise and supported by the description (Article 84), sufficiency relates to the application disclosing the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 83). If the claims are not clear, and the application does not help to clarify them, then an argument could be made that the skilled person could not reproduce the invention.

In the UK, following the case of Biogen v Medeva in 1996, the law regarding sufficiency is further entwined with clarity, resulting in two types of insufficiency. The first 'classical' type of sufficiency relates to the skilled person being able to reproduce the invention, given the teaching of the application as a whole and the skilled person's common general knowledge. This corresponds most closely with Article 83 EPC. The second type of sufficiency, which is known from the case as Biogen sufficiency, relates to the skilled person being able to reproduce the invention over the whole scope of the claim. Biogen sufficiency is really then about support in the description, which in UK case law relates closely to whether a priority claim is valid. In the disputed patent in the Biogen case, which related to a DNA sequence for causing a cell to make antigens of the hepatitis B virus, the scope of the claim covered the invention as applied to prokaryotic and eukaryotic cells. The priority application, however, only disclosed the invention as applied to bacterial (i.e. prokaryotic) cells. The House of Lords, following Lord Hoffmann's opinion, found that this resulted in the application not being entitled to priority. As a result, the patent was found to be obvious over an intervening disclosure.

It should now be reasonably clear that Biogen sufficiency does not translate well to opposition proceedings at the EPO, because it is tied up with other issues such as clarity and priority. If arguments of the type raised in Biogen v Medeva were raised during opposition, a counter argument would be that these relate to clarity rather than sufficiency and should therefore be dismissed. This did not, however, stop the opposition division in the case of proceedings relating to EP1767375 from raising Biogen sufficiency as a ground for revoking the patent.

The invention in question related to a tape drive for a transfer printer (like the one shown here from Videojet), in which tension on the tape was monitored and maintained between predetermined limits by controlling motors driving a pair of spools. Claim 1 did not specify how the tension was measured, but claim 3 provided means to monitor power supplied to the motors, and claims 4 and 5 provided further detail on how the power was measured. If all this seems vaguely familiar, this is because the case related to a patent that was revoked in the UK in the case of Zipher v Markem in 2008, which was only one of a number of cases involving these parties. The opposition proceedings against Zipher's European patent (since transferred to Videojet Technologies, Inc.), which were initiated around the same time as the court proceedings in the UK, have taken a whopping seven years to complete, with the final appeal decision in T 1727/12 issuing last month.

At the conclusion of the opposition in July 2012, the opposition division's sole ground for revocation was sufficiency, as summarised by the following paragraph in the grounds for the decision:


The patent proprietor appealed against the decision, arguing that it was not clear what the OD meant by 'Biogen sufficiency' (although their representative, being a UK based patent attorney, would obviously know what it meant under English law). More importantly though, they argued that the objection was without  foundation on the facts of the case. Although claim 1 was broader than the specific description, the skilled person would, the proprietor argued, easily be able to realise the invention using the specification and common general knowledge.

As the Board of Appeal put it, the OD had distinguished between 'classical insufficiency' and 'Biogen sufficiency'. They had found the invention to be disclosed sufficiently clearly and completely for the skilled person to carry it out, thereby fulfilling the classical sufficiency requirement under Article 83. What they had considered the invention to lack though was sufficiency in the sense that the skilled person would not be able to carry out the invention over the whole scope of the claim, since the patent did not disclose other ways of carrying out the invention than those defined in the dependent claims. The Board considered, however, that Biogen sufficiency, as defined by the UK House of Lords, related to Article 84 EPC and not to Article 83, given that the underlying purpose was the requirement for support by the description to ensure that the patent monopoly was justified by the actual technical contribution to the art. The Board was not convinced that the OD had justified the use of Biogen sufficiency in relation to Article 83, and concluded that they had not shown that the patent failed to comply with Article 100(b). Since there were other issues that were left open, including novelty and inventive step, the Board remitted the case to the OD to take a look at these.

What made the OD in this case pull Biogen sufficiency out of the hat to justify revoking a European patent is a mystery to me. Even if it was relevant to the case, using a principle of a national court in proceedings at the EPO is to say the least a bit unconventional. It also looks as if the OD did not even understand what the principle was about. As well as establishing that Biogen sufficiency is not something that should be used in EPO oppositions, the case demonstrates that sufficiency arguments at the EPO, whether raised by the opponent or the opposition division, should be a bit more substantive than simply arguing that the skilled person would not be able to do the invention in another undefined way. Such arguments should rightly be dismissed as being invalid grounds of opposition.

Tuesday, 15 March 2016

A Clear Cut Case

I have mentioned a few times in previous posts the UK IPO's statement that they will only revoke a patent under s73(1A) in "clear-cut cases where the patent clearly lacks novelty or an inventive step". What this actually means is not yet itself clear, as we have only had one revocation so far since the new section came into force in October 2014. Apparently, even if a patent examiner considers that a patent lacks novelty, the IPO will not proceed with revocation if the cited document is a Chinese utility model or if the patent proprietor responds with some arguments about how the examiner got it wrong (see here and here for the examples I have in mind). There must, however, be some cases where the issue is so blindingly clear that there can be absolutely no argument about the examiner's finding of a lack of novelty.

What about a case where a patent is granted and the very same invention is then found to have been disclosed in an earlier published application by the same inventor that was not found by the examiner during prosecution? Such cases must be very unusual indeed, as doing this would be a very silly thing to do for any applicant, and a patent examiner would surely be able to easily find any previous published application by the same inventor when doing a routine search. This does, however, appear to have happened, and has resulted in patent office opinion 02/16, issued on 23 February 2016.

European application 08252964.5, in the name of Shane Kelly as inventor and applicant, was filed on 5 September 2008 without any claim to priority. The application related to a piece of agricultural equipment generally known as a harrow. The main embodiment from figure 1 of the application is shown here. The application was then searched by the EPO examiner, who found some documents and objected on grounds of lack of inventive step, but pointed out that the application could be allowed based on one of the dependent claims. After a couple of rounds of examination, the applicant relented and got the application allowed based on the examiner's suggestion. The application was then granted in January 2012 as EP2160936B1, and has been kept in force in a few EP countries, including the UK, for the past four years.

A request for a patent office opinion on validity was filed on 11 January 2016, which identified a published Australian application AU2007216912A1, having a publication date of 10 April 2008 (i.e. five months before the filing date of the patent). The request is fairly simply written, and alleges that claim 1 of the patent would be obvious because it is a combination of claims 1 and 8 of the previous publication (suggesting that the request was not prepared professionally). The examiner, however, was quick to point out that the patent was actually not new because it was virtually identical to the previous publication. Figure 1 of the patent (above), which is the main embodiment, is actually the same as figure 6 of the previous publication (below), and the examiner found there was a direct correspondence between every claim of the patent and either a claim or a part of the description in the previous publication. Unsurprisingly, the invention in the patent was found to be not new.

The proprietor now has until 23 May 2016 to request a review of the opinion, but I think it is very unlikely they will do so. The patent will then stand to be revoked by the comptroller under section 73(1A), which in my opinion is certain to happen.

This case seems to me to be a good example of why the new section 73(1A) is a good thing, because it enables clearly invalid patents to be removed from the register, at least in the UK. Examiners do sometimes miss documents that would be very easy to find (for example in this case with a search for the inventor's name in the same classification), but the result can be a patent sitting on the register providing a deterrent to others that would otherwise be potentially expensive for anyone else to get rid of. Although initiating revocation proceedings at the IPO is very cheap, doing so will expose the requester to costs if they do not win. Even in cases where the case is a clear win, the possibility of adverse costs alone can be a strong deterrent to anyone considering getting a patent out of the way. What the opinions service does is remove this deterrent, and allows such patents to be got out of the way with as little fuss as possible, and with no potential for adverse costs.