R 7/08 - The Enlarged Board Won’t Soliloquize

NB : As you might know, "R" decisions are decisions on petitions for review by the Enlarged Board of Appeal (EBA) under A 112a EPC.  

The contested decision (T 1375/06) was based on aspects of insufficiency of disclosure which were discussed for the first time during the oral proceedings. The Board refused the request to admit into the proceedings two documents allegedly establishing the general knowledge of the skilled person. According to the petitioner (proprietor), by doing so, the Board did not decide on a request relevant for the decision under R 104(b) and furthermore its decision was based on a fundamental procedural violation under A 113, as these documents were disregarded. The petitioner argued that if the Board had taken these documents into consideration it would have immediately realised the scope of the general knowledge of the skilled person and that the description disclosed the invention sufficiently within the meaning of A 83.

[…] Since the impact of R 106 was a question of fundamental importance within the meaning of A 112(1), the petitioner requests the Board to refer the following question to the EBA “For the application of the provisions concerning the admissibility under R 109(2)a, is it necessary to raise the procedural violation during the oral proceedings or to raise an objection against a ground for revocation which could constitute a substantial procedural violation if it was accepted ?” [VI]

The request to refer a question to the EBA can only mean a referral pursuant to A 112(1)(a). However, the present Board is not a “Board of Appeal” within the meaning of this provision (see A 21 EPC) and thus the request fails. [4]

In other words, the EBA, when deciding on a petition for review under A 112a, does not accept referrals to the EBA under A 112. The EBA won't refer a question to itself.

To read the whole decision, click here.

T 534/07 - Gladiators May Change Sides

Appellant III alleged the existence of a conflict of interest in the person of the representative having formerly represented appellant III (opponent 06) and formally still representing opponent 03 and now representing appellant I, the patent proprietor.

The board notes first of all that even though the representative has not formally withdrawn from representation as regards opponent 03, he has not acted for opponent 03 in the present appeal proceedings. Opponent 03 is only a party as of right and has not taken position in the appeal proceedings, i.e. after having acquired the patent proprietor, which appears perfectly normal in the circumstances. [6]

Appellant III did not indicate on which legal basis the board could be entitled to accede to its request and exclude the representatives of the office of C&R from further representing any of the parties, in particular appellant I, the patent proprietor, and the board also sees none. [7]

The existence of a conflict of interest, if any, concerns the relation between the representative and his client and may, depending on the circumstances of the case, entail disciplinary measures being taken against the representative under the Regulation on discipline. This would not be a matter for the board. [8]

By contrast, the validity of procedural acts undertaken by the representative for his client is not affected by the existence of a conflict of interest. Nor is there any legal basis for excluding a professional representative whose name appears on the list of professional representatives from representing a party in proceedings before the EPO (see also T 1009/97 [2 ff.]). On the contrary, A 134(5) EPC stipulates that persons whose names appear on the list of professional representatives shall be entitled to act in all proceedings established by the EPC. So are the representatives of the office of C&R. [9]

To read the whole decision, click here.

T 1870/07 - (H)IPER-Activity and the Risk of Slapdashiness

In the present case, an International Preliminary Examination Report (IPER) was sent, a communication of the examining division (ED) followed, and then the decision was taken. The single communication from the ED pursuant to A 96(2) EPC 1973 merely signalled agreement with the IPER, indicating lack of novelty with respect to D1, and further cited D2 and D3, merely referring to passages thereof cited in the European Search Report (ESR) without further explanation or amplification. No further objections were raised in that communication. [3.3]

The Board sees no objection to citing an IPER from an International Preliminary Examining Authority (IPEA) other than the EPO (in the present case the USPTO), provided that it constitutes a reasoned statement [i.e. a statement setting out which facts are considered to be established, on which basis, which legal provisions are applied, and the logical process according to which the facts are considered to fulfil the requirement of the applied provision]. The requirement that a communication should be sent as often as necessary does not mean that once a communication fulfils the criteria cited above it is necessary to give the applicant another opportunity to comment on the same reason. However, in the present case the IPER fails to meet the above cited requirements of a reasoned statement. In the case of a novelty objection this will require the analysis of the claims in order to establish their meaning, the analysis of one or more prior art documents and the explanation of the logical process according to which the content of the prior art is considered to disclose the claimed subject-matter in a way that leads to the application of the consequences of the provisions on novelty. The IPER does little more than identify a document and cite four passages from it, which are said to render all the subject-matter of the claims lacking in novelty without explaining the logical chain leading to this conclusion. Even by careful analysis on the part of the reader an argument to be answered cannot be constructed because, from the brief passages of D1 cited, it is apparent that D1 does not, in fact, disclose the claimed subject-matter. [3.4]

Since the IPER does not fulfil the requirements of a reasoned communication, it behoves the EPO to perform its own analysis of the prior art and present the legal and factual reasons as defined above, and give reasons why there are objections to the grant of a patent, instead of relying on the IPER. In the communication of the ED, there is no logical chain of reasoning which would have permitted the appellant to understand and deal with the novelty objection, either by amendment or counterargument.

A 113(1) EPC 1973 is, therefore, not satisfied.

Thus, a substantial procedural violation has occurred. [3.5]

To read the whole decision, click here.

This decision has also been discussed here (in French).

Behold the Day of Judgement

A colleague recently analysed a bunch of 2200+ decisions of the Boards of Appeal (including the Enlarged Board of Appeal) as to their dates. Here is what he found with respect to the days of the week on which the Boards take their decisions. In almost all cases these dates correspond to the dates of oral proceedings (OPs) before the respective Boards.

Normally the OPs of each Board are held twice a week, i.e. on Tuesday and on Thursday, which explains the two ‘peaks’. On the day before, the members of the Boards often finish their preparation for the OPs. If the OPs were held on Mondays, the final preparation would have to take place on Sunday. Fridays have the drawback that the OPs have to come to an end in the evening. As a consequence, there have been OPs on Fridays ending at 8 p.m. (which is an almost unbearable thought for EPO staff).

As far as Saturdays and Sundays are concerned, no decisions are taken on these days. A Board member explained that he knew only one exception to weekend rest : the Enlarged Board sometimes deliberates on Saturdays. You will have noted that nevertheless 0.3 and 0.2 per cent of the decisions, respectively, were found to have been taken on Saturdays and Sundays. In fact, these are cases where there must be an error in the date.

T 990/06 - The Enigma of the Missing Lawyer

A 19(2) EPC contains clear instructions as to how an Opposition Division (OD) has to be composed. As a consequence, the parties know who deals with and decides on their case in oral proceedings (OPs) so that the fulfilment of the requirements of A 19(2) as well as the impartiality of the members of the panel according to G 5/91 can be checked. For this reason, it is mandatory that the composition of the OD be clear and verifiable at each essential moment during the opposition divisions. Moreover, it is mandatory that the procedure of enlarging the OD by adding a legally qualified member under A 19(2) be verifiable. The same holds true for the withdrawal of such a legally qualified member when there is no more reason for his/her presence. [2.1]

In the present case, there are contradictions between the documents that have been sent to the parties and internal form 2040, which is available by file inspection. The internal form 2040 for the preparation of OPs was signed by three technically qualified members. The summons to OPs under R 71(1) was issued in the name of the three examiners, completed by the name of a legally qualified member. The OPs took place before an OD consisting of three members. The interlocutory decision was in the name of three technically qualified members and the legally qualified member. Therefore, the Board cannot check whether the decision announced in the OPs was taken by a lawfully composed OD and whether the written decision was issued by the same panel. [2.3]

Moreover, the file does not contain any formal indication that the OD has been enlarged according to A 19(2), nor any hint whether and how the OD was reduced back to three legally qualified members. If the OD was indeed enlarged by addition of a legally qualified member, the file would have to contain a decision to this effect, signed by the three members of the OD. If it was afterwards reduced, the file would also have to contain a decision to this effect, signed by the four members of the OD. [2.4]

The lawful composition of the OD is of foremost importance for the opposition proceedings. If there is any doubt concerning its lawful composition, then the lawfulness of the decision is also doubtful. The Board therefore comes to the conclusion that a serious procedural error concerning the composition of the OD cannot be excluded. [2.5]

The case is remitted to the first instance so that the proceedings, including the decision, can be carried out by a lawfully composed OD. [4]

To read the whole decision (in German), click here.

T 223/07 - How LSD Can Boost Inventiveness

[…] The evaluation of the softening performance in the presence and absence of anionic carry over has been tested in the patent in suit by an expert panel of 4 people which followed a specific test protocol. Softness was assessed on an 8-point scale, the lowest numbers indicating better softening results, the softening scores having been calculated using an “Analysis of Variance” technique. The numerical differences between the softness scores of compositions according to claim 1 and the comparisons amount to at most 1.5 in table 2 and are less than 1 in tables 6 and 7.

Moreover, the Board remarks that the specific technique of analysis used has not been described in detail in the patent in suit and the softness scores reported in the tables do not contain an indication of the least significant difference (LSD) for each reported value. Even though the indication of the LSD is certainly not required by the EPC and such an indication would be indeed superfluous under certain circumstances, for example in the case of a large numerical difference between two scores, the Board finds that in the case of comparative tests reporting technical values which are calculated by means of an analysis of variance, the indication of the LSD for each reported value is essential for the evaluation of the reported values in a case, like the present one, wherein the numerical differences between the values to be compared cannot be considered to be large. The Board remarks, in fact, that the experimental report submitted with the statement of the grounds of appeal, wherein the softness scores had been calculated also by an analysis of variance as in the patent in suit, reports LSD values varying considerably from 1.18 to 1.46. […]

Therefore, in the Board’s judgement, in the absence of the indication of the LSD for each reported value it is not possible to draw from the tests reported in tables 2, 6 and 7 any reasonable conclusion as to the superiority or not of any tested composition. […]

The alleged technical effect has to be disregarded in the evaluation of inventive step. [3.3] 

Unsurprisingly, the Board then formulates a less ambitious problem (here, the provision of an alternative softening composition) and concludes on lack of inventive step.

To read the whole decision, click here.

T 355/07 - Dura Lex Sed Lex

[...] The patent validly claims the priority date of 27 November 1998.

Document D2 is a German utility model having 26 November 1998 as its date of entry in the register of utility models of the German Patent and Trademark Office (DPMA), i.e. the day before the date of filing of the EP application. The date of entry corresponds to the date on which a list (typically containing several hundred entries and indicating the IPC class and the DPMA file number of German utility models for each entry) is laid open for inspection at the premises of the DPMA. A member of the public is allowed to inspect any file from that list as of said date.

[NB : The patentee argued that it was practically impossible for a member of the public to get knowledge of the content of document D2 on said day, because (i) the list contained several hundred entries, (ii) the list merely indicated the IPC class and the DPMA file number of German utility models, and (iii) the files itself could only be inspected upon request at another branch office of the DPMA at Cincinattistr. 64 in Munich. Moreover, it was not proved that a member of the public actually inspected the file corresponding to document D2 on that very day. According to the patentee, D2 was not therefore state of the art for the patent in suit.]

The theoretical possibility of having access on 26 November 1998 to the information contained in document D2 renders it available to the public as of said date, it is not relevant whether on that date a member of the public actually inspected the file. Consequently, document D2 is prior art within the meaning of A 54(2). [2]

To read the whole decision, click here. 

This is one of those cases where the application of the legal fiction (if one may properly so say) underlying A 54(2) may appear harsh. Although very unlikely, there was a theoretical possibility that a member of the public might have had access to the document. And that is all that is needed to make the document “available” to the public.

Please note the dates involved. I am always amazed when reality looks very much like paper D.  8-)

NB : I just discovered that this decision has also been discussed here.

T 5/06 - Inventive step - Insufficiency : 0-1

The Examining Division (ED) refused the application on the grounds of lack of inventive step based on the fact that “the underlying problem is not solved over the whole scope of the claimed subject matter” because it encompassed non-working embodiments. [3]

In that respect, the board observes that A 56 requires that “an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”. Thus, when it comes to inventive step, the ED remains obliged by A 56 to issue a decision presenting all the legal and factual reasons for refusing the application having regard to the prior art and to the assessment of obviousness vis-à-vis the said prior art. In the present case, the ED’s decision is totally silent on these issues, so that the rejection under A 56 is not reasoned, contrary to the requirements of R 111(2). [4]

For the further prosecution of the application attention should be paid to G 1/03 [2.5] which stipulates that “if a claim comprises non-working embodiments, this may have different consequences, depending on the circumstances. [...] If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step.”

In the present case, as the effect is part of the claim, it appears from the above that only an objection for insufficiency can be raised under certain circumstances; these circumstances being that the application as filed would not contain sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. [7]

This decision is also discussed here.

To read the whole decision, click here.

T 69/07 - On the Courteousness of epi-Members

A summons to oral proceedings (OPs) was issued by the Board on 7 November 2008, not long after the request for OPs by the respondent. [1.1]

The respondent did not appear at the OPs at the appointed time. After waiting some time to allow for a small delay in the arrival of the representative of the respondent the registrar of the Board telephoned this representative. The representative indicated in the telephone conversation that it had been decided the day before the OPs that the respondent should not be represented at the OPs. [1.2]

The Board notes that in accordance with Article 6 of the code of conduct of members of the EPI, of which the representative is obligatorily a member, the members are required to act courteously in their dealings with the EPO. [1.3]

The representative of the respondent had sufficient time to inform the Board of its intended non-appearance at the OPs, i.e. by informing the Board by telephone immediately after the decision not to attend was taken. This would have avoided that the other party and the Board first of all courteously waited for the representative of the respondent in case he had unintentionally been delayed, and then that the registrar of the Board had to carry out enquiries to establish if it was intended that the representative would attend the OPs. [1.4]

The facts of the case dealt with in decision T 954/93 were similar to those of the present case in that a party did not appear at the OPs without informing the Board beforehand, causing telephone calls and a delay in the start of the OPs. In that case the deciding board considered that the actions of the representative were “reprehensible”. The present Board agrees with that decision and considers that the views of that Board also apply in the present case. [1.5]

To read the whole decision, click here.

As in the well-known decision T 930/92, the Board could have ordered apportionment of costs under A 104, but apparently it did not do so, perhaps simply because the patentee/appellant did not request it.

J 15/08 - Some Like It Hot

This decision on a request for reestablishment is interesting above all because of the unusual auxiliary requests:

The appellant requests:

(1) Reestablishment and immediate examination of the application;

(2) Replacement of claim 1 by claim 1C

(3) Reimbursement of all costs that have arisen to the appellant (Appeal fee, annuities as from the third year and compensation amounts as well as training lessons in technical mechanics and EP patent rules) by the first examiner;

(4) Replacement of the first examiner by another examiner; [XII]

(5) Summary dismissal of the first examiner and compensation for neglect of due care and supervision;

(6) Verification of all examination reports established by the first examiner during his 19 years of activity, with respect to abuse and mistakes;

(7) Verification whether a new application with similar features has been filed in any patent office in Europe after the filing date of the application of the appellant. [XV]

The request for reestablishment was not successful, nor were the other requests. To our best knowledge, the first examiner was not fired. ;-)

Sometimes inventors might be better off if they chose to be represented by a professional representative.

To read the whole decision (in German), click here.

T 700/05 - Post-grant Correction of an Erroneous Translation of a Japanese PCT

Taking into account that Euro-PCT applications are deemed by A 153(2) to be European applications and the principle that they thus must be treated as favourably as applications made in a Contracting State, a PCT application originally filed in Japanese must be treated in the same way as an application filed in the language of a Contracting State which language is not an official language of the EPC. A 14(2) EPC 1973 must thus be applied by analogy to allow also the translation into English of an original PCT application in Japanese to be brought into conformity with the original Japanese text of the application throughout the proceedings before the EPO, i.e. also including opposition and appeal proceedings. [4.1.1]

In the present case, the original text of the application did not disclose “a light transmittance of at least 50%”, but in view of the certified English translation provided by the patent proprietors only “a linear light transmittance of at least 50%”. The opponents did not dispute that the original application had been mistranslated and that the expression “a light transmittance of at least 50%” in claim 1 and elsewhere should be replaced by “a linear light transmittance of at least 50%”, in line with the provisions of A 14(2) EPC 1973. The Board has no reason to take a different view. [4.2]

A 70(1) EPC 2000 provides that the text of a European patent in the language of the proceedings shall be the authentic text in any proceedings before the EPO. A 70(2) EPC 2000 provides that if the European application has been filed in a language which is not an official language of the EPO that text shall be the application as filed within the meaning of the Convention. This means that a post-grant change to the granted text of a European patent amounts to an amendment of text of the patent as granted, even where, as in the present case, the change is justified as a correction necessary to bring the text into conformity with the originally filed Japanese language PCT application. [5]

Specifically for this case, the correction in the claims and description of the granted text of the patent to read "linear light transmittance" is an amendment which under A 101(3) EPC 2000 needs to be checked for conformity with the requirements of the convention, and in particular for conformity with A 84 EPC 1973 (whose wording is unchanged in the EPC 2000) and A 123(2) and (3) EPC 2000. [5.1]

To read the whole decision, click here.

A 70(1)(2) EPC 2000 has a very unfortunate wording. In particular, the reference to “that text” in A 70(2) is somewhat unclear. Is “the text” of A 70(1) referred to ? The present decision takes this for granted. Things are less clear in the German version of A 70 where A 70(1) mentions no text but a “Wortlaut” (wording) whereas A 70(2) also refers to “that text” (dieser Text). This might be understood to indicate that the text referred to in A 70(2) is the text in the original language. For the sake of completeness, I should add that the French version is analogous to the English version (A 70(1) : Le texte … ; A 70(2) : … ce texte …) When the EPC 2000 was published, I contacted a member of the Legal Division in order to have this point clarified. Unfortunately, my question has remained without an answer. I expect the interpretation used in the present decision to become mainstream because both the English and the French version appear to favour it. The German version might be due to careless translation.

T 387/05 - An ‘Exotic’ Feature is Considered Non Distinguishing

The question arises whether the resistance that the blank mould opposes to high energy DUV radiation – which is expressed in claim 1 by the condition that the reduction of transmission under the specified test conditions is at most 0.1 % per cm of thickness – can be used to distinguish the claimed subject-matter from the prior art. The appellant has answered this question in the negative and submitted that this feature only states the technical problem. The patentee has asserted that this criterion corresponds to a quantitative statement on an essential material property that is suitable to distinguish the claimed blank mould from the prior art. He admitted that the test conditions specified in claim 1 differ from usual methods by a higher number of laser shots together with a lower energy density, but according to him, this difference is necessary in order to have reliable indications with respect to the long term behaviour of the blank mould. [4.7]

The Board considers the explanations of the patentee to be plausible. However the question remains whether they are sufficient to distinguish the claimed blank mould from the prior art. Indeed the test conditions according to claim 1 (i.e. a number of laser shots of 1.1·10^9 and an energy density of 10 mJ/cm² at a wavelength of 248 nm and a laser shot frequency of 300 Hz …) differ so strongly from the usual conditions used in the prior art (D2 has a number of laser shots of 1.1·10^6 and an energy density of 400 mJ/cm² at a wavelength of 248 nm …) that no reasonable and meaningful comparison of the test results is possible. Therefore, it is not possible to establish whether the blank mould according to claim 1 has higher resistance to high energy DUV radiation – or a lower reduction of transmission, respectively – than the blank moulds of the prior art, and in particular the blank moulds of D2. The patentee, who in this case carries the burden of proof, has not produced any appropriate evidence. Therefore, the Board comes to the conclusion that in the present case the reduction of transmission cannot be considered as a distinguishing feature. [4.7.1]

To read the whole decision (in German), click here.

J 5/08 - Pending or Not Pending - That is the Question

The decision deals with an appeal filed against the decision of the Receiving Section that a divisional would not be treated as such because the parent application was not pending any more.

Here is a simplified (!) timeline summarizing the major events:

The Examining Division (ED) simultaneously issued (a) a decision pursuant to R 89 EPC 1973 and (b) an interlocutory revision decision pursuant to A 109(1) EPC 1973, both decisions relating to the decision to grant. [10]

The question is then, what was the effect of these actions with respect to the issue of whether the (parent) application remained pending within the meaning of R 25(1) EPC 1973 ? As regards the meaning of “pending application” in R 25(1) EPC 1973, one interpretation is given in the Information from the EPO (OJ EPO 2002, 112). There it is stated as follows: “An application is pending up to (but not including) the date that the European Patent Bulletin mentions the grant of the European patent, or until the date that the application is refused, withdrawn or deemed withdrawn; if notice of appeal is filed against the decision to refuse, a divisional application may still be filed while appeal proceedings are under way (see Guidelines A-IV, 1.1.4)” However, this official information contains only the statement that the cited procedural situations determine the end of the pendency of a EP application but the statement does not state specific criteria which can be used to define the pendency/nonpendency of an application in other procedural situations, for example as in the present case where an appeal was filed against the decision to grant. [11] […]

The Receiving Section stated that a decision to correct the decision to grant does not “re-open” the grant procedure and does not “re-open” the possibility to file a divisional application. However, in the present case this conclusion is only correct with regard to a decision to correct the grant decision pursuant to R 89, since such a decision does not involve a substantive amendment to the decision. It was not correct with regard to a revision decision under A 109, which has the effect that the appealed decision is set aside. [21] […]

As such, a revision decision pursuant to A 109 opens up the possibility that the patentability of the claimed subject matter will be completely re-assessed, independently of whether or not the cancellation of the appealed decision is expressly ordered or the written reasons are restricted to a specific legal question. Such a decision cannot be limited to a single legal question or issue as e.g. the question whether or not a decision to grant can be corrected. This is the decisive difference from a decision under R 89, which does not affect the date and legal existence of the decision to be corrected. [23]

In the present case, the revision decision under A 109 was restricted to the correction of the decision to grant. However, the lack of any exhaustive statement in respect of the patentability of the subject matter did not limit the appeal proceedings to the allowed correction, because the decision to grant was replaced by the revision decision on 12 June 2006 and the grant proceedings were not terminated before this date. The grant proceedings having been terminated by the revision decision on 12 June 2006 were still pending up to this date of the revision decision. [24]

As the present divisional application was filed […] before the revision decision was taken by the ED in the parent application, the parent application was pending at the filing date of the divisional application. [25]

This decision is well worth reading because it deals with an incredibly complicated situation resulting from an accumulation of errors.

The decision also deals with what can be considered as a decision under R 89 EPC 1973 (R 140 EPC 2000) [in point 5 of the Reasons] and contains interesting obiter dicta on the "controversial opinions on the effect of a timely filed but inadmissible appeal" [points 13 to 18 of the Reasons].

To read the whole decision, click here.

T 1179/07 - A New purpose Cannot Impart Novelty to a Known Process

D1 discloses all the process features of claim 1. The only difference with respect to D1 is that the process of D1 has a different purpose. In D1 the urea is not added in order to reduce the aldehyde content but it serves to reduce a viscosity increase through ageing. Therefore, it remains to be examined whether the indication of the purpose in the claimed process can impart novelty with respect to D1. [2.1.1]

The patentee considered this indication of purpose to be a functional technical feature within the meaning of G 2/88 and G 6/88, which had to be taken into consideration for the determination of novelty. [2.1.2]

The headnote of G 6/88 is as follows : “ 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 A 54(1) provided that such technical feature has not previously been made available to the public.” It follows that the relevant considerations of G 2/88 and G 6/88 aim at a claim that is directed to the use of a known compound for a hitherto unknown purpose. These decisions do not elaborate on claims for processes having a particular purpose (zweckgebundene Verfahrensansprüche). Although the ‘use of a given substance’ can be considered to be a process containing the step of using the substance, a use claim should not be in general equated to a process claim as A 64(2) is not as a rule applicable to a use claim. According to G 2/88 [5.1], A 64(2) is not as a rule directed to a patent whose claimed subject-matter is the use of a process to achieve an effect (this being the normal subject of a use claim), but rather to a European patent whose claimed technical subject-matter is a process of manufacture of a product. In the present case the claimed process is – notwithstanding the indication of the purpose – clearly directed towards the manufacture of a product. In this process a given nitrogenous compound is added to certain compounds, which reduces the C1-C2-aldehyde content. In other words, the process produces the end product by means of a process step applied to the initial product, which is different from the end product. If the Board applied the conclusions of G 2/88 and G 6/88 to the granted process claim, this would entail that the product of claim 1 were protected via A 64(2) although the product is known from D1 and is produced by the very process of D1. However, it cannot be the deeper purpose of A 64(2) to extend the protection provided under this article to a product obtained by a known process. In particular, the fact that process and use claims relate differently to A 64(2) does not leave any margin for extending the principles developed by the Enlarged Board of Appeal (EBA) in G 2/88 and G 6/88, concerning the use of a known compound for a hitherto unknown purpose, to process claims. The opinion that the criteria set up by the EBA in the cited decisions are valid only in the context of the use of a known compound for a hitherto unknown purpose and cannot be extended to process claims is also found in decisions T 682/04 [5.3.4-5], T 910/98 [2.2.2], and T 1049/99 [8.4.4-8.5]. [2.1.3]

To read the whole decision (in German), click here.

Publish or Perish

Those who want to stay up-to-date on EPC caselaw know that the EPO publishes more and more decisions. I wanted to quantify this impression and made a graphic comparison of the 2008 and 2009 publication figures. Here is the result :

On September 14, 2009, the EPO has already published 1354 decisions, which is more than during the whole year 2008 (1325 decisions). If this trend continues (and there is no obvious reasons why it should not), one may expect quite impressive figures for the whole year 2009.

T1029/06 - On the Patentability of Environmental Impact Estimations

The application concerns aiding planning, development, design and estimation of an environmentally conscious product. In particular, a method of estimating the impact on the environment and the cost of developing multi-generation products that reuse and recycle objects from products of previous generations. [1]

The majority of the steps (life cycle modelling, predicting, evaluating) are typical tools of operational research that normally have not been considered technical in the established jurisprudence, in particular if only information is processed for the purpose of management decisions with no clear technical application. In decision T 1147/05 [3.3] it was held that “the Board accepts that a reduction of the environmental impact may in certain circumstances constitute a technical effect. One example might be an invention concerning a less energy-intensive process for the manufacture of a product. On the other hand, as a further example, if an invention is a proposal to abandon - rather than to improve - an energy-intensive process, there is no technical effect but, at most, a physical consequence. A technical effect should not depend solely on the intervention of the human mind. In the present case the invention is not a proposal for a technically superior process but a way of selecting, from a given set of improved processes, the most cost-effective ones. Whether or not the processes are actually implemented, i.e. whether there is any effect at all, even physical, is not part of the claim. This will be a later decision to be taken by a manager. Thus, the potential reductions in environmental impact that the invention serves to determine cannot be regarded as a technical effect.” [7]

The Board considers that these statements apply equally to the environmental impact estimation method in the present case. The Board does not consider that the remaining feature of the “memory unit” implies any computer implementation that would limit the claim to involve necessarily technical means (see e.g. T 388/04 [3]). [8]

The appellant relies on T 208/84 (VICOM) and T 953/94. In VICOM, the distinction was drawn at point 5 between a mathematical method and a technical process. The former is carried out on numbers and the latter is carried out on a physical entity (which may be a material object but equally an image stored as an electric signal) by some technical means implementing the method and provides as its result a certain change in that entity. In T 953/94 [6], the Board found allowable a method of controlling a “physical” process using a mathematical model, although a reference to an unspecified “physical process” might, according to more recent jurisprudence, be rejected as a “meta-specification” (see e.g. T 1227/05 [3.1.1]). However, the present case differs from these cases in that there is apparently no resultant change to or control over any physical entity or process, but merely a processing of information. The Board in T 1147/05 [3.4] reached the same conclusion in respect of VICOM for the environmental impact information system. [9]

Summarising, the Board judges that claim 1 of the main request has no overall technical character, but is merely a mixture of subject-matter excluded as such under A 52(2) and (3) EPC, specifically mathematical methods, methods for performing mental acts or doing business and presentations of information. Accordingly, the subject-matter of the claim is not an invention in the sense of A 52(1) EPC. [11]

To read the whole decision : T 1029/06

T 1030/06 - The Potential of the Skilled Person

[...] The appellant argued generally that although the skilled person would be able to understand the invention, he would not be able to develop further or create ideas. The Board can only agree with this statement up to a point. The skilled person is a person of ordinary skill in the art which means not only having access to the state of the art and common general knowledge in the field, but also the capability to perform routine work and experimentation. Thus, the skilled person can be expected to seek out solutions and make choices to try to solve design problems that crop up. This is particularly so where the problem is to come up with an implementation of an apparatus having certain required functions as in the present case. The implementation of the first part of the solution (here the provision of several processors) often leads to further design decisions that must be made (here the choice of encryption scheme and the identification of the source of data) in order to produce a working system. The skilled person cannot be expected to abandon the implementation half-way through in the form of a “black box” with undefined means for carrying out the required functions, but must attempt if possible to put such means into practice using knowledge available to him (see also T 623/97 [4.4]). These would literally be “further ideas” in the sense that they could be new in the given context, but they should be routine and thus not inventive. [20]

To read the whole decision : T 1030/06

For Starters

This blog is intended to report on interesting recent EPC caselaw.

There is an excellent blog in French dedicated to such caselaw, but also to news concerning the EPC as such and French patent law. If your command of French is sufficient, you should definitely have a look : just click here.

My blog is somewhat less ambitious. It is strictly limited to EPC caselaw. My aim is to detect interesting passages in recent decisions. While I sometimes contribute to Laurent Teyssèdre's blog, most decisions that are cited here would not make it through Laurent's filter.