Official Journal #7, 2009

In this OJ a publication of Board of Appeal decision T 307/03 relating to the subject of double patenting.

Headnote:

I. The principle of prohibition of double patenting, namely that the inventor (or his successor in title) has a right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim is applicable under the EPC, and can be deduced from the provision of Article 60 EPC stating "The right to a European patent shall belong to the inventor or his successor in title" (see point 2.1).

II. Decision T 587/98 (OJ EPO 2000, 497) to the effect (see its point 3.6) that there is no basis in the EPC prohibiting "conflicting claims" not followed (see point 2.7).

III. A double patenting objection can be raised also where the subject-matter of the granted claim is encompassed by the subject-matter of the claim later put forward, that is where the applicant is seeking to re-patent the subject-matter of the already granted patent claim, and in
addition to obtain patent protection for other subject-matter not claimed in the already granted patent. In particular, where the subject matter which would be double patented is the preferred way of carrying out the invention both of the granted patent and of the pending application
under consideration, the extent of double patenting cannot be ignored as de minimis. To avoid the objection of double patenting the claims of the pending application should be confined to the other subject-matter that is not already patented, to allow the examination procedure to focus on whether a claim to this other subject-matter meets the requirements of the EPC (see points 5.2 to 5.4).

The Board of Appeal found a basis for this decision (which is not in line with T 587/98) in Article 60. This in turn has created an interesting discussion earlier this year on (among others) the IPKat Blog, see here. In particular, see the comment by Derk Visser (Author of "The Annotated EPC").


OJ 2009, 434

The EPO will in Opposition Proceedings no longer automatically transmit copies of documents specified as patent documents. If oral proceedings are to take place,parties are advised to check the electronic file via the Register Plus online service in advance of the hearing to ensure they are in possession of all relevant documents.

(Not so very relevant for the EQE probably)


Not in OJ #7, 2009 but published on the website :

The German Patent and Trademark Office will be closed on the following days (in addition to what has been published in OJ 2009, 72)

28 December 2009
29 December 2009
30 december 2009

Under Rule 134(1) EPC, periods expiring on a day on which at least one of the filing offices of the EPO is not open for receipt of documents are extended to the first day thereafter on which all the filing offices are open for receipt of documents.

Under Rule 134(3) EPC, the provisions of Rule 134(1) EPC apply mutatis mutandis where acts are performed with the central industrial property office or other competent authority of a contracting state.


All the above will be copied to the OJ 2009 Summary and published soon on this website.

R 0007/09: The first review under Article 112a with succes for the petitioner

This is the first case where a petitioner was succesful before the Enlarged Board to the extent that his appeal case was re-opened.

In short, the petioner did not receive the grounds of appeal as put forward by another party. The Board of Appeal did not summon the parties to oral Proceedings as the other party only requested Oral Proceedings as an auxiliary request. The Board then decided on the case.

The petitioner argued that his right to be heard was infringed as he was unable to comment on the grounds of appeal put forward by the other party.

The EPO was not able to establish that these grounds of appeal in fact reached the petitioner (see Rule 126(2)) and finally concluded that the petitioner's rights under Article 113(1) therefore indeed had been infringed.

The case itself seems quite straightforward, read it here.
Further comments, see here.

Another approach to inventive step

The person skilled in the art is a key figure in the problem solution approach. A lot of case law has developed around this fictive character, see for example here.

Recently I came across a written opinion where the examiner apparently used another character for determining the presence of an inventive step.

This person appears to be dead which makes it very easy to come to the conclusion that an invention involves an inventive step. More in particular, as far as I know a dead person cannot do anything and also does not know anything ..... I'm thus very surpised why this examiner did not allow claim 1.........

T 0051/08: Res iudicata and divisionals

Art. 111(2) first sentence reads:

If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.

The meaning of the legal term res iudicata is old and well-established: it defines "...a matter finally settled by a Court of competent jurisdiction, rendering that subject matter conclusive as to the rights of the parties and their privies" (see Black's Law Dictionary, 5th Edition). Such a final judgement by a court of competent jurisdiction therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or privies (T 934/91, OJ EPO 1994, 184, point 3 of the reasons). Once a final judgement has been handed down, subsequent judges who are confronted with a suit that is identical to or substantially the same as the earlier one and between the same parties, are prevented

from deciding on it a second time.

In T167/93 (headnote) the Board of Appeal said that a decision of a Board of Appeal on appeal from an Examining Division has no binding effect in subsequent opposition proceedings or on appeal therefrom, having regard both to the EPC and 'res iudicata' principle(s).

This decision is silent with respect to the situation where an applicant files a divisional and wants to pursue subject matter in this divisional application whereas a decision in appeal has already been taken for the same subject matter in the parent application.

Such a situation was subject of decision T 51/08. The Board reasons (r 3.1) that a divisional application gives the applicant, within certain limits, the possibility to pursue the same subject matter as in the parent application. Since the aim of the res iudicata maxim is to avoid relitigation of the same subject matter by the same parties, it must inevitably apply to a divisional application.

and in r 3.3:

[..]while it is true that Article 111(2) EPC 1973 provides for the binding effect of a judgment only for the decided case, the general principle of res iudicata goes beyond this and aims at avoiding any subsequent ruling on the same subject matter in other proceedings between the same parties.

The Board thus come to the conclusion as nicely summarised in the catchword :

Subject matter on which a final decision has been taken by a board of appeal in the parent application becomes res iudicata and cannot be pursued in the divisional application.

In addition the Board concludes in the same catchword that :

If the statement setting out the grounds of appeal in a case does not go beyond submitting and arguing for a set of claims which constitutes such subject matter, the appeal is not sufficiently substantiated.

My feeling is that some day this case may be part of a D1 question....

Read the decision here.

PCT Newsletter Summary

An updated PCT Newsletter Summary is available in the download section.

T 0700/05: Bringing a translation into conformity under Art. 14(2) EPC 1973

Article 14(2) EPC 1973 relates to applications filed at the EPO by a natural or legal person having their residence or principal place of business within the territory of a Contracting State having a language other than English, German or French. Such applicants may file an application at the EPO in the official language of that Contracting State, but then need to file a translation into an official language of the EPO.

Article 14(2) EPC 1973 states in its last sentence that "throughout the proceedings before the European Patent Office, such translation may be brought into conformity with the original text of the application".

This provision has been changed in EPC 2000 under which a European Patent application may be filed in any language.

In this case a Japanese applicant filed a PCT application in Japanese at the Japanese Patent Office designating the EPO. Upon entering the regional phase, applicant filed a translation in English.

During opposition the proprietor finds out that there was an error in the translation and requests correction.

The Board of Appeal first establishes that the provisions of EPC1973 apply. The Board then says the following (reason 4) :

The international patent application [..] was filed by an applicant having its place of business in Japan. The international application designated the European Patent Office [..] and was thus deemed to be a European patent application pursuant to Article 150(3) EPC 1973. A translation into English of this international application was provided to the EPO, as prescribed by Article 158(2) EPC 1973 in conjunction with Article 14(1) EPC 1973.

Taking into account that Euro-PCT applications are deemed by Article 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. The provision of Article 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 European Patent Office, i.e. also including opposition and appeal proceedings.

To me this is a bit of a strange decision. For example, take the situation where there were a Spanish and a Mexican applicant. Both applicants have their mother tongue in Spanish, which is a publication language under the PCT.

Both applicants could have filed a direct European Patent Application (Art. 58). However, only the Spanish applicant was allowed to file his application in Spanish, whereas the Mexican applicant needed to file in French, German or English. Thus, the Spanish applicant could have brought (or can bring) his translation into conformity under Article 14(2) EPC 1973, whereas the Mexican applicant could/can not unless he had first filed a PCT application in Spanish and then entered the regional phase before the EPO.

Maybe this is established practice of the EPO, or maybe I'm missing the point, but from this decision one may draw the conclusion that applicants from non-contracting states had better filed a PCT application (in a publication language of the PCT) rather than a direct European application if they wanted or want to rely on the provision of Article 14(2) EPC 1973 last sentence.

Anyway, under EPC 2000 this is no longer an issue as direct European Applications may now be filed in any language.....

Read the decision here.

T 2321/08 continued...

The Blog "European Patent Case Law" noticed an interesting development concerning this case.

The Examining Division, in a communication undert Art. 94(3) following the order of the Board of Appeal, openly comments on this decision and argues why this decision is either incorrect, should not be followed and/or why the issue at hand should possibly be dealt with by the Enlarged Board.

Click here for the European Patent Case Law Blog. (In case you have difficulty with reading French, there is a translation option in this Blog that works quite well. Further, you can also download the communication directly from this Blog.)

Click here for an earlier post on this decision.

T 1847/06: Another undisclosed disclaimer not allowed

When I was in Strassbourg earlier this year (CEIPI D course) one of the tutors warned us to stay away from undisclosed disclaimer as "it could only get you into trouble".

At that time I just took these words for granted and focussed on studying for the EQE. After the EQE I started this Blog and since then I try to pick out the interesting decisions as published regularly on the EPO website. As such, this is the 3rd time in about 3 months that a decision concerns such undisclosed disclaimers, in which indeed the proprietor of the patent got into trouble and lost a request or even his patent. See also T440/04 here and T 0107/07 here.

The present case is yet another variant of how things can go very wrong. The proprietor in appeal filed requests wherein claim 1 contains an undisclosed disclaimer, which was drafted generally as follows:

1. Use of a [..] stem cell [..] to screen [..] provided that said screening does not comprise [..]

The disclaimer was said to disclaim the subject matter of a 54(3) document.

The Board of Appeal (see Reason 13) first considers that this 54(3) document indeed anticipates the claim when read without the disclaimer. However, the Board of Appeal does not find a basis in this document for the broad "comprising" language as used by the proprietor in the disclaimer.

For this reason the Board considers that the disclaimer introduced into claim 1 extends beyond the disclosure of the 54(3) document and, therefore does not meet the requirements of G1/03. Consequently the introduced disclaimer offends against Article 123(2).

So, the lesson (I believe) to be learnt from this case is that when you have to introduce an undisclosed disclaimer, for example in the B exam, or you have to attack a claim in the C exam containing such a disclaimer, always check if the disclaimer does not extend beyond the disclosure of the document that contains the disclaimed subject matter.

If the disclaimer so extends you have probably drafted the wrong disclaimer in your B exam, or you can attack the respective claim undert Art. 123(2) in the C exam. Note that (as was the case in T440/04) if you conclude that the disclaimer does not extend beyond the contents of the "disclaimer document" this is still no guarantee that the claim (B exam) is correct or cannot be attacked (C exam). It could still be the case that the disclaimer disclaims "too little".

Have a good weekend ...

PCT Newsletter 2009 #7 and #8

The combined July and August edition of the PCT Newsletter is available for download, click here.

The National Institute of Industrial Property (Brazil) was appointed as ISA and IPEA and will begin functioning as such with effect from August 7, 2009.

Question from the practical advice:

I have heard that a number of changes took place on 1 July 2009 concerning the filing of sequence listings, for example, that there is no longer a fee benefit for sequence listings over 400 pages. As I plan on filing an international application containing a sequence listing of about 500 pages, please could you explain the options available to me for filing the sequence listing part - will I now have to pay a fee per sheet for that part?

The answer can be found in the Newsletter. This advice concerns sequence listings and is quite specific. I personally think it is not that important for the EQE ...

That said, I copied the entire advice and the other information above to the PCT Newsletter Summary, which will be available in the download area soon.

Who is the skilled person ?

The EPC does not have any provision defining the person skilled in the art, or skilled person in short. Yet this person appears to be a quite important character for the purpose of applying the EPC. For example, the skilled person is important if not crucial for determining presence of an inventive step, Article 56. Most EPC study books provide a summary on what the skilled person is all about. During the working sessions of the 14th European Patent Judges' Symposium Graham Ashley, member of a Technical Board of Appeal EPO presented an article providing yet another summary.

This summary is well hidden in the in Special Edition 1 of the Official Journal 2009, yet may be interesting reading material. Like other summaries, the article discusses who or what the skilled person is (for purpose of the EPC) and provides quite a few references to the Case Law.

Unfortunately it is not possible to extract only this article, but rather you would

have to download the whole Special Edition. Anyway, the article can be found on pages 94 -101.

Below is the summary by the author of this article :

Summary (dots added by EQETools)

The skilled person (or persons) of the EPC is

• not real,
• being of average ability for his field
• but having exhaustive common knowledge and aware of all things that are not technical.
• He is a legal creation
• whose purpose is to assist in providing a more objective approach to the assessment of inventive step and other provisions of the EPC.
• He certainly does not cut an athletic figure,
• and whilst being able to vault the bar of common knowledge, raising it any higher would be beyond his capability.

You can download the Special Edition 1/2009 here

Happy reading !

T 0069/07: Don't forget to call....

Article 6 of the Code of Conduct of the European Patent Institute, of which Professional Representatives are obligatory a member reads :

"In all dealings with the European Patent Office and its employees, a member shall act courteously, and shall do everything possible to uphold the good reputation of this Institute and its Members."

In this particular case a party decided on the day before not to attend Oral Proceedings (before the Board of Appeal) taking place the next day. However the representative did not inform the EPO about this non-attendance so that obviously the Board of Appeal did not become aware of it on forehand.

During (or just before the actual opening) the Oral Proceedings the Board allowed waiting some time for a possible small delay in arrival. Then, later on the Board had the registrar telephone the Professional Representative, who only then informed the registrar of the non-attendance.

The Board then says (Reason 1.4 and 1.5) :

"The representative of the respondent had sufficient time to inform the Board of its intended non-appearance at the oral proceedings, 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 oral proceedings."

"The facts of [..] T 954/93 [..] were similar to those of the present case in that a party did not appear at the oral proceedings without informing the Board beforehand, causing telephone calls and a delay in the start of the oral proceedings. 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."

In other words, it seems the Board was "not amused" ...

Read the "code of conduct" here.

Not an important decision for the EQE by the way .....

T 0107/07: Undisclosed disclaimer not allowable

Again an example of the danger of introducing undisclosed disclaimers. See also T440/04 reported earlier on this Blog for another example.

This case concerns an opposition appeal against EP 0 684 304 concerning a cleaning composition.

During examination prior art under Art. 54(3) was cited against the corresponding patent application. In response the applicant introduced an undisclosed disclaimer in claim 1, disclaiming the subject matter of this 54(3) prior art. A patent was then granted.

Opposition was filed and the patent was maintained in amended form. Claim 1 as maintained differed from claim 1 as granted yet contains the undisclosed disclaimer.

In it's decision the opposition division held that altough G1/03 was not yet published at the time of introduction of the disclaimer, the principles of legitimate expectations did not prevent the application of this decision retrospectively. Further, the disclaimer was found to be drafted in accordance with the criteria of G1/03, hence the claim complied with Art. 123(2) EPC.

The opponents argued that the disclaimer removes more than necessary so that the principles of G1/03 were not met. The opposition division did not agree and found (r. 3.3):

"that Headnote II.2 of G 1/03 should be understood in the light of paragraph 3 of the Reasons for this decision. Here it is explained that the disclaimer should not remove more than necessary to restore novelty because the necessity for a disclaimer is not an opportunity for the applicant/proprietor to reshape his claims arbitrarily. On the other hand the requirements of conciseness and clarity of Article 84 also apply to claims containing disclaimers; a balance has to be struck between the interests of the applicant and of the public and this may necessitate adapting the terminology of the disclaimer in order to respect these requirements. This balance is also mentioned in the Guidelines, C-VI 5.3.11."

[..]

"the opposition division considers that the wording of the disclaimer is clear and concise and that the requirements of Article 84 are met. Moreover the disclaimer does not amount to an arbitrary reshaping of the claim as it uses precisely the wording of [..]. The opposition division therefore concludes that the balance mentioned above has been respected in the present case.

Both the proprietor and the opponents were not happy and filed an appeal.

The opponents argued that the 54(3) document that was cited during the examination proceedings was in fact not novelty destroying when the claim would have been read without the disclaimer.

The Board of Appeal then summarises the established case law, in particular G1/03 and states (r 1.1.2) :

"that the introduction of a disclaimer based on a state of the art is not allowable if said state of the art does not destroy the novelty of the claim in question (see G 1/03, point 2.6.5) [..]"

"For example, G 1/03 underlines that a disclaimer may serve exclusively the purpose for which it is intended and nothing more and that, in the case of a disclaimer concerning conflicting pplications, its purpose is to establish novelty with respect to a prior application in the sense of Article 54(3) EPC. Therefore, if a disclaimer has effects which go beyond its purpose as stated above, it is or becomes inadmissible (point 2.6.5 of the reasons)."

The Board then looks again at the 54(3) prior art and concludes that this prior art does not anticipate the subject matter of claim 1 when read without the disclaimer. Hence the disclaimer was found unallowable.

The proprietor tried to argue that the disclaimer does not have "bearing on the technical information of the application and does not contribute to the technical teaching of the claimed subject-matter; its addition to claim 1 thus cannot be considered to contravene the requirements of Article 123(2) EPC for the reasons given in G 1/93 and G 1/03 (see for example, G 1/93, headnote 2 and G 1/03, point 3 of the reasons)." (r 1.1.4)

The Board of Appeal does not agree and confirms that G1/03 specifies that a disclaimer excluding a conflicting application, only excluding subject-matter for legal reasons, is required to give effect to Article 54(3) EPC and has no bearing on the technical information in the application (points 2.1.3 and 3 of the reasons).

The disclaimer in this case does not comply with the requirements listed in G 1/03 for an allowable disclaimer since it has been drafted on the basis of a document which cannot destroy the novelty of the claimed subject-matter.

With respect to G1/93 the Board concludes that the disclaimer modifies the technical characteristics of claim 1 hence that this disclaimer constitutes an amendment that contravenes Art. 123(2) EPC. (See reason 1.1.4 for more details)

All other requests also contained the disclaimer, and as a result the patent was revoked.

I did not study the subject matter of the claims and the prior art in detail, but removal of the disclaimer was probably not an option for the proprietor in this case, because such an amendment would have contravened Art. 123(3) as extending the protection conferred. So, effectively the proprietor may have been caught in the Art. 123(3)-(2) trap.

The lesson learned from this case is (again) that one should be extremely careful when introducing undisclosed disclaimers in a patent application. In some of the recent A and B chemistry papers introduction of such disclaimers has been required (I don't know if this was the case of E/M papers). Some day the C committee will probably build a similar case in a C paper.....oops I may just have inspired them to do so.

In any case, be prepared and study G1/03 well before sitting the EQE.

Read the decision here.

Friday evening considerations

As the evening of another very hot day sets in, the mind starts working again.

..... flowcharts instead of large pieces of text ..... case law organised so one can actually find it quickly ..... A tools ..... B Tools ..... C Tools ..... how about the Guidelines ..... what am I going to do with the PCT ..... is this Blog appreciated at all ..... where do I find the time to further optimise the layout of the Blog and the download area ..... what will it look like in the future and what do I need to do to get there ..... what am I going to do with advertising in the future ..... will I try to find sponsoring for the Blog ..... will I invite others to join the Blog as authors ..... will I start promoting this Blog actively ..... where do I find the time to organise all the stuff I mentioned above ..... did I pass the EQE

The answer to at least one of these issues will be known on August 5.

I just wonder if I will be having the same thoughts next year ?

Cheers !