BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2020
A. Exceptions to patentability
1. Product claims for plants or plant material
(Case Law of the Boards of Appeal, 9th ed. 2019 ("CLB"), I.B.3.3.3)
In its opinion G 3/19 (OJ 2020, A119), the Enlarged Board began by analysing the scope and focus of the referral and held that the two issues underlying it were interlinked and could be combined in the following single question:
"Taking into account developments that occurred after a decision by the Enlarged Board of Appeal giving an interpretation of the scope of the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC, could this exception have a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature[s] define an essentially biological process?"
Considering Art. 53(b) EPC on its own, i.e. without reference to R. 28(2) EPC, the Enlarged Board confirmed its earlier decisions in cases G 1/98 (OJ 2000, 111), G 2/07 (OJ 2012, 130) and G 1/08 (OJ 2012, 206), and G 2/12 (OJ 2016, 27) and G 2/13 (OJ 2016, 28). Furthermore, the Enlarged Board did not find any subsequent agreement or practice within the meaning of Art. 31(3)(a) and (b) Vienna Convention regarding its earlier interpretation.
The Enlarged Board held that the application of the various methods of interpretation provided for in Art. 31 and 32 Vienna Convention, also taking into account the subsequent developments in the Contracting States, did not lead to the finding that the term "essentially biological processes for the production of plants" in Art. 53(b) EPC was to be read clearly and unambiguously as extending to products defined or obtained by such processes. It therefore endorsed the respective conclusions that it had come to in G 2/12.
At the same time, however, the Enlarged Board acknowledged that Art. 53(b) EPC did not prohibit this broader understanding of the process exclusion either. Furthermore, the Enlarged Board recognised that, with the introduction of R. 28(2) EPC, the legal and factual situation underlying decision G 2/12 had substantially changed. This amendment constituted a new aspect that had arisen since the EPC was signed which could give reason to believe that a grammatical, and restrictive, interpretation of the wording of Art. 53(b) EPC conflicted with the legislator's aims, whereas a dynamic interpretation could bring a result that diverged from the wording of the law. The Enlarged Board held that the exclusion of products exclusively obtained by means of an essentially biological process was not incompatible with the wording of Art. 53(b) EPC, which did not rule out this broader construction of the term "essentially biological processes for the production of plants or animals". The Enlarged Board concluded that, in view of the clear legislative intent of the Contracting States as represented in the Administrative Council and having regard to Art. 31(4) Vienna Convention, the introduction of R. 28(2) EPC allowed and indeed called for a dynamic interpretation of Art. 53(b) EPC.
Accordingly, the Enlarged Board abandoned the interpretation of Art. 53(b) EPC given in decision G 2/12 and, in the light of R. 28(2) EPC, held that the term "essentially biological processes for the production of plants or animals" in Art. 53(b) EPC was to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defined an essentially biological process. In conclusion, the Enlarged Board of Appeal answered the referral as follows:
"Taking into account developments after decisions G 2/12 (OJ 2016, 27) and G 2/13 (OJ 2016, 28) of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.
This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending."
2. Medical method
2.1 One surgical step in a multi-step method
T 1631/17 concerned a method for producing tooth replacement parts. The appellant (patent proprietor) had appealed against the opposition division's decision to revoke the patent. It was undisputed that the wording of claim 1 did not contain any explicit method step that could be deemed surgical within the meaning of Art. 53(c) EPC. However, the claimed method did encompass a step of this kind, and this was sufficient for the patent to fall under the exception stipulated in Art. 53(c) EPC (G 1/07, OJ 2011, 134). As per the description, the method according to the invention began by a first impression being taken from a dentition in which the missing tooth substance had first been temporarily replaced. Only after this impression of the "complete" dentition had been taken were the teeth prepared for the second impression. The dentures were then produced using the two impressions. It followed that replacing the missing tooth substance was an essential feature of the invention. This was particularly true in this case since it was this exact step that made the contribution over the prior art. This method step thus had to be read into the claim when interpreting it. The preparation of the teeth – a step performed after the first impression – therefore also fell within the claimed method, in terms of both when and where it was done. To carry out the claimed method, it was essential to immediately perform the intermediate step of preparing the teeth, otherwise it would not be possible to take the second impression. By definition, the teeth preparation was performed directly on the patient, and since this involved invasively extracting a significant amount of body tissue, it was a surgical method step.
1. Availability to the public – obligation to maintain secrecy
The decisive issue in T 72/16 was whether the alleged public prior use by the sale and delivery of products was sufficiently proven. In this case Aspen sold a product (48 pipe sections) to Technip. The board concurred with the patent proprietor that it was not a sale and delivery of a commercially available end product which had thus become publicly available. Rather, the evidence showed that it was a development product, a prototype supplied in the course of an ongoing collaboration programme. Hence, Technip could not be regarded as a mere customer and neither of the partners as a member of the public. According to the jurisprudence of the boards of appeal, such a relationship between two companies which contracted to develop and deliver prototypes and products for test purposes cannot be treated as equivalent to that between a dealer and a customer and in these cases an obligation to maintain secrecy applied. In accordance with the normal practice in those cases there was at least an implicit duty of confidentiality on both companies involved. Thus, the burden of proof was on the appellant (opponent) to establish that there was no confidentiality agreement. The witness's suggestion that the NDA was asymmetric, i.e. only binding on Aspen but not on Technip, appeared not to be probable and, rather, from experience contrary to the situation in comparable co-operation projects, and furthermore not supported by any further evidence. It was not surprising that the witness, an engineer, not an IP specialist, was not aware of all the confidentiality requirements binding the other party.
The board came to the conclusion that Technip was not a mere customer. Rather, Aspen and Technip were engaged as partners in a product development project and their collaboration was governed by an at least implicit confidentiality agreement. None of the prior uses had been proven, so that none of them formed part of the prior art.
2. Ascertaining differences – distinguishing features
Case T 1930/14 concerned a method for the purification of antibodies. The opposition division inter alia held that the subject-matter of claim 1 of the main request lacked novelty.
The appellant (patent proprietor) argued that claim 1 was only for methods in which the separation of monomeric antibodies from aggregates was achieved by the weak CM cation-exchange step. The appellant further argued that the claim should be construed according to the principles set out in T 1931/14. In the appellant's view, the purpose stated in the claim, i.e. "purifying a monoclonal antibody from aggregates thereof" defined the claimed method's application or use (as opposed to its effect). In line with decision T 1931/14, this purpose had to be considered as a functional technical feature of the claim, i.e. it represented a limitation of the process.
The board considered that the finding in T 1931/14 that "where the stated purpose defines the specific application of the method, in fact it requires certain additional steps which are not implied by or inherent in the other remaining steps defined in the claim, and without which the claimed process would not achieve the stated purpose" (point 2.2.4 of the Reasons) could only hold in cases where it was unambiguously clear that the purpose implied such steps and where it was also unambiguously clear what those steps in fact were. In T 1930/14, the board could identify no indication, either in the claim itself or in the description, that would lead the skilled person to understand that the stated purpose "for purifying a monoclonal antibody from aggregates thereof" implied that the claimed method contained additional steps. The claimed method did not contain any implicit additional steps by virtue of its purpose. Thus, contrary to the appellant's view, there were no steps, allegedly implied by the purpose, that served to differentiate the claimed method from that disclosed in document D1. Claim 1 did not meet the requirements of Art. 54 EPC.
3. Chemical inventions and selection inventions – lists
In T 2350/16, the appellant (opponent) argued that document D1 anticipated the subject-matter of claim 1. Having initially found that D1 disclosed all claim 1's features as such, the board still had to examine whether it also disclosed them in combination. It drew up a table showing where and in what context features 1d to 1h were disclosed and specifying from how many variants a selection had to be made to obtain each feature, and concluded that all the features were disclosed in combination. It also observed that the case law on selections from lists could not be applied in the case in hand, because it did not concern (long) lists of the kind commonly encountered in chemistry but, in each instance, merely a selection from among two or three elements at most. D1 disclosed all claim 1's features in combination and so anticipated the claimed subject-matter.
The board also commented on the part played by the skilled person in the assessment of novelty. The respondent (proprietor) had repeatedly contended that D1 was prior art within the meaning of Art. 54(3) EPC and that it was therefore impermissible to keep invoking the skilled person. The board disagreed. Assessing novelty without constantly referring to the skilled person, even if that was not always stated explicitly, was unthinkable. On the other hand, it was not permissible as part of the novelty assessment to invoke the skilled person to settle matters of plausibility or obviousness of the kind which could arise in assessing inventive step.
4. Second medical use
In T 264/17 the board found that the claimed lubricant for replacing synovial fluid was a substance or composition within the meaning of Art. 54(4) and (5) EPC. The therapeutic effect of the claimed perfluorinated polyethers lay in their acting as a replacement for synovial fluid in diseased joints. In the board's view, this effect was achieved as a result of the claimed lubricant's material properties. As set out in the description, the lubricating action of the perfluorinated polyethers was down to their omniphobic properties, i.e. the fact that they repel both hydrophobic and hydrophilic liquids, automatically mass together and, as a result, continuously form a new lubricant film. These material properties were attributable to the chemical structure of the polyethers. Their physiological effect was thus obtained on account of the way in which they interacted (or did not interact) with biological tissue.
Moreover, the therapeutic effect was undoubtedly caused by a chemical composition, specifically by the perfluorinated polyethers defined in the claim. The board held that it was secondary whether or not these were to be deemed "active agents" in the traditional sense.
5. Second (or further) non-medical use
In T 1385/15 the board held that a claim directed to a further non-medical use could not be found to lack novelty if the prior art did not disclose the claimed technical effect of the substance and the claimed use in combination.
The contested decision concerned the patent's independent claim 1, which was directed to the use of a cleaning agent, containing at least two different surfactants selected from at least two of three groups of surfactants – cationic, non-ionic and amphoteric – and, when diluted ready-to-use in an aqueous solution, having a pH value of at least 10.5, to destroy/inactivate micro-organisms selected from the group comprising bacteria, viruses and fungi in the mechanical disinfection of articles.
The opposition division had referred in the contested decision to documents D1a and D2 and arrived at the view that independent use claim 1 lacked novelty over D1a in light of D2. It had conceded that neither document in isolation disclosed all the features of that claim but, having analysed G 6/88 (OJ 1990, 114), which was authoritative on assessing the novelty of claims directed to a second non-medical use, concluded that the feature "for destroying ... bacteria, viruses and fungi" was not such as to confer novelty over D1a, because this technical effect of the cleaning agent defined in the claim was already known from D2 and so, in view of G 6/88's headnote ("provided that such technical feature has not previously been made available to the public"), could not make for a novel claim.
The board considered that this interpretation in the contested decision was not in line with G 6/88, which itself stated, in point 8 of the Reasons, that, for a finding of lack of novelty, all the technical features of the claimed invention had to have been made publicly available together. The board therefore took the view that a novelty objection could not be based on a combination of the teaching of D1a with that of D2.
Summing up, G 6/88 had held that the functional technical feature conferring novelty could lie in achieving a technical effect in a particular context. Thus, in the case at issue, the functional technical feature was the anti-microbial activity in the context of the claimed mechanical disinfection of articles. This feature was not disclosed in D2 and therefore could not be derived from it in any event.
C. Inventive step
1. Distinction between plausibility and obviousness
In T 184/16 the board acknowledged plausibility when assessing sufficiency of disclosure and inventive step. Therefore, the board decided to take into account post-published evidence D4. The board noted that acknowledging plausibility was not in contradiction to the finding that the claimed subject-matter was non-obvious in view of the prior art. The criteria for plausibility and obviousness were different. On the one hand, for plausibility of a claimed effect to be acknowledged, it was enough if there were no prima facie serious doubts that the effect could be obtained and, conversely, no a priori reason or indication in the common general knowledge that the effect could not be obtained. On the other hand, obviousness was decided within the framework of the problem-solution approach, where generally an important consideration was whether the claimed solution was suggested and thus made obvious by the prior art. See also chapter II.C.2. "Level of disclosure required for medical use – plausibility".
2. Closest prior art – most promising starting point
In T 1450/16 the appellant (applicant) submitted that the skilled person would not have chosen document D1 as the closest prior art. The board did not agree with the assumption relied on by the appellant that, according to the basic problem-solution approach, the person skilled in the art may be entrusted with the task of selecting the closest prior art or a suitable starting point for the assessment of inventive step, which is the first step in the multi-stage method of that problem-solution approach. In the board's view, this would mean that the same (fictitious) person as the one who finally assesses the obviousness of a certain claimed subject-matter had already selected their "favourite" prior-art document in order to conduct that assessment. Given that the objective technical problem was to be derived from the distinguishing features established with respect to the selected closest prior art, such a selection would further imply that this skilled person could pose the objective problem to him or herself. However, this would be at odds with the very aim of the problem-solution approach, namely to provide an objective method of evaluating inventiveness, avoiding as far as possible an inadmissible hindsight analysis. The board was aware of case law which at least implicitly indicates that the skilled person may select their "own" closest prior art (see e.g. T 1841/11, T 2057/12, T 1248/13). However, the board in the case in hand followed the conclusions drawn, for example, in T 422/93 (OJ 1997, 24, see headnote 1) and T 1140/09 that the relevant skilled person was to be defined starting from the objective technical problem. In the board's view, the person skilled in the art within the meaning of Art. 56 EPC entered the stage only when the objective technical problem had already been formulated. Thus, the skilled person under Art. 56 EPC was the person qualified to solve the established objective technical problem (see e.g. T 32/81, OJ 1982, 225; T 26/98; T 1523/11) and not necessarily the person versed in the field of the underlying application or in the field of the selected closest prior art, as apparently advocated in T 25/13. The board concluded that, in accordance with the findings in T 855/15, it must be the respective deciding body (whose members cannot be equated with the skilled person as a notional entity; see T 1462/14) – be it the examining division, the opposition division or the relevant board of appeal – that selects the closest prior art rather than the skilled person mentioned in Art. 56 EPC. The board summarised its finding in a catchword as follows: In the application of the problem-solution approach for the assessment of inventive step, the person skilled in the art within the meaning of Art. 56 EPC enters the stage only when the objective technical problem has been formulated in view of the selected "closest prior art". Only then can the notional skilled person's relevant technical field and its extent be appropriately defined. Therefore, it cannot be the "skilled person" who selects the closest prior art in the first step of the problem-solution approach. Rather, this selection is to be made by the relevant deciding body, on the basis of the established criteria, in order to avoid any hindsight analysis.
In T 787/17 the board determined that D2 came closest to the subject-matter of the invention and therefore served as the "closest prior art" for the purposes of the problem-solution approach. Within D2, the embodiment in Fig. 11a was closest to the invention. The board could not agree with the argument that this embodiment did not amount to a realistic starting point because it did not give the skilled person any indication as to how they were supposed to proceed in order to solve the problem. It stated that, as a rule, any element of the prior art in the field of the invention that disclosed subject-matter developed for the same purpose or with the same aim was a possible starting point. There was no need for special justification, e.g. on the basis of the skilled person's considerations. In particular, whether such an element gave any indication as to how to solve the objective technical problem was irrelevant to its selection as a starting point, for the simple reason that the objective technical problem could only be defined on the basis of the starting point. Nor was there any need to justify why the skilled person would proceed from one particular embodiment among a large number of embodiments in a pre-published document. Each of the embodiments constituted an element of the prior art that was known per se to the (notional) skilled person and could therefore equally serve as a starting point.
3. The skilled person's level of knowledge
In T 1601/15 the board held that the skilled person did not need prompting to apply their knowledge. It was not convinced by the argument that the skilled person would have had no reason to draw upon it. The skilled person did not need a reason to apply their knowledge. This knowledge formed, as it were, the technical background for any activities they performed and fed into all their decisions. In this regard, a distinction had to be made between the common general knowledge in the art and the teaching of specialist documents. In the case at issue, the solution to the problem would have been obvious to the skilled person in light of their knowledge, as evidenced in particular by document D15.
4. Effect not made credible within the whole scope of claim – neural network
In T 161/18 the claimed method was distinguished from the prior art only by an artificial neural network; however, the training of this network was not disclosed in detail, meaning that its use did not result in a special technical effect that could justify a finding of inventive step. Claim 1 stated that "the blood pressure curve measured at the periphery is transformed into the equivalent aortic pressure by means of an artificial neural network whose weighting values are determined by learning". In the board's view, merely mentioning that weighting values were determined by learning did not go beyond what the skilled person would have understood by an artificial neural network. Therefore, the claimed neural network was not adapted for the specific use claimed. It merely involved an adaptation – not specified in greater detail – of the weighting values, which was in the nature of any artificial neural network. The board was therefore not convinced that the asserted effect was achieved by the claimed method across the whole scope of the claim. This effect therefore could not be taken into account as an improvement over the prior art when assessing inventive step. See also chapter II.C.1. "Reproducibility – neural network".
5. Assessment of inventive step
5.1 Technical character of an invention
In T 1798/13 the invention concerned forecasting the value of a weather-based structured financial product. The values of these products were based on specific weather measures, such as temperature, precipitation, hours of sunshine, heating degree days, cooling degree days or wind speed.
The examining division essentially considered that the invention had two aspects, namely a) defining and calculating a weather forecast and b) defining and calculating the influence of the weather forecast on a particular financial product. They could not find a technical problem solved by the implementation of either of these aspects. The decision further considered that the introduction of mathematical equations in claim 1 would not render it technical because it was not clear what technical problem these solved.
The board agreed with the appellant that a system for weather forecasting, for example comprising sensors for measuring specific weather data, had technical character. The invention, however, relied on the use of already measured weather data. It could be argued that this (raw) weather data represented measurements about the physical world and was therefore also technical. The situation would thus be similar to that in T 2079/10, which considered that physical parameters represented technical data and that the choice of which physical parameters were to be measured fell within the competence of the technical skilled person.
In T 2079/10, however, the invention was seen to lie in the improvement of the measurement technique itself, which involved technical considerations about the sensors and their positions. In the case in hand, the measurements themselves did not play a role, the improvement was in the processing of data to provide a better weather forecast.
The applicant's second argument was essentially that an improvement in the weather data by calculating and further processing it was also technical. In the board's view this led to the key issue in this case, namely whether improving the accuracy of given data of a weather forecast was technical. If it was not, then the details of the algorithm, the "mathematics" as the division put it, did not help.
The board held that it was not. The "weather" was not a technical system that the skilled person could improve, or even simulate with the purpose of trying to improve it. It was a physical system that could be modelled in the sense of showing how it works. This kind of modelling was rather a discovery or a scientific theory, both of which were excluded under Art. 52(2)(a) EPC and thus did not contribute to the technical character of the invention.
5.2 The aim to be achieved in the formulation of the technical problem
In T 1749/14 the invention was in the field of mobile point-of-sale (POS) terminals for carrying out transactions, e.g. involving a credit card. Conventionally, the merchant possessed such mobile POS terminals and the customer had to provide his identification credentials such as account number and PIN to this merchant's unit. The invention tried to avoid the customer's sensitive information becoming known if the merchant's device was tampered with by allowing a transaction to be carried out without the customer having to present account information and the PIN to the merchant. The board held that the notional business person might have come up with the abstract idea of avoiding the customer having to provide PIN and account information to the merchant. The invention, however, required a new infrastructure, new devices and a new protocol involving technical considerations linked to modified devices and their capabilities as well as security relevant modifications of the transfer of sensitive information using new possibilities achieved by the modifications to the previously known mobile POS infrastructure. This went beyond what the notional business person knew and concerned technical implementation details (how to implement) which were more than a straightforward 1:1 programming of an abstract business idea. This was in the sphere of the technical expert and subject to the assessment of inventive step (see T 1082/13).
In T 232/14 the invention related to the identification of specially taxed or branded manufactured items (also called units or cartons, e.g. cigarette cartons), packaged into containers (also called cases). Identification allowed products to be authenticated as genuine, tracked and traced, which helped to detect contraband and counterfeit products. The board held that using ranges of unit identifiers to label a number of (consecutive) unit identifiers of manufactured items was, at the level of generality at which it was claimed, on the business side of the line between technical and non-technical subject-matter (see e.g. T 144/11, points 2.1, and 3.6 to 3.9 of the Reasons). Contrary to the appellant's argument, the board held that the ranges of unit identifiers did have a meaning for the business person. They corresponded to batches of units produced on a production line. (point 2.6 of the Reasons). Even if the "determining of ranges of unit identifiers" achieved a technical effect, such as reducing data storage and data bandwidth requirements, it was a matter of routine design for the skilled person, a software programmer or a database expert, based on common general knowledge to store the first and the last element of a list of items, instead of the whole list. Therefore the determination of ranges of unit identifiers was rather linked to the number of possible ways of organising items of a group of items based on how they were produced, that is, the number of batches, than to the way in which data can be stored.
The board agreed with the examining division that the use of an (electronic) database for the storage of data, that is, the ranges of unit identifiers, was a straightforward consequence of the requirement specification when implementing it on a data processing system. The person skilled in the art when implementing the business requirements would straightforwardly store in the database a container identifier for each container, each being coupled in the database to the one or more ranges of unit identifiers allocated to the container. The saving in storage space was a mere "bonus effect".
In T 2314/16 the invention concerned the distribution of rewards to participants in an affiliate marketing scheme by which an influencer (called user in claim 1) received a reward for advertising a product or service on a blog or on social media. Participating influencers were each allocated a portion of an advertisement banner displayed on a website. The visitors to the website did not see the user areas, only an advertising banner. When the visitor clicked on the banner, the user whose portion was clicked on got a reward, distributed according to the sizes of the image portions. The partial areas were allocated such that the reward distribution rates matched the degree of contribution of each user to the advertising.
The board held that the specification of the business method ended with how to determine the reward distribution ratio. The features of dividing the advertisement display area into partial areas and allocating each partial area to a user such that when the partial area was clicked on the user got a reward, were based on technical considerations of the web page system. It was not motivated by any business considerations. In order to come up with this idea, one needed to understand how a web site is built, and in particular how an image map works. Thus, this feature could not be part of the non-technical requirements. Instead it was part of the solution that had to be evaluated for obviousness.