T 1841/23 - Intervention and UPC litigation

Key points

• Intervention - who expected it to become a hot topic (see G2/24).
• "the board summoned the proprietor and opponent 1 to oral proceedings to be held before the board on 11 December 2024." 
• "A notice of intervention was filed on 18 November 2024, "
  
• The intervention was based on UPC litigation on the patent.
• "In support of its requests for postponement of the oral proceedings before the board or of the board's decision on the appeal, the proprietor submitted, at the outset of those oral proceedings, essentially the following arguments."
• "the matter of postponement of the arranged oral proceedings is at the board's discretion."
• "In the present case, unlike the one underlying T 1961/09, the notice of intervention did, in the now relevant parts, not raise any further objections or new issues, but only argued on old topics. At oral proceedings before the board, opponent 2 was also free to put forward and develop such arguments, which it also did to some extent, as had the proprietor. Further, to ensure fairness between the parties, the present board had taken pains, in the run-up to the oral proceedings before it, to concentrate the debate on a few old, limited and highly relevant issues"
• " As a result, the proprietor's requests for postponement were to be refused and the oral proceedings continued, with the objection of added subject-matter as the next issue to be discussed."
• " In view of the above, the main request is not allowable under Article 123(2) EPC."
• "While an admissible intervention is to be treated as an opposition (Article 105(2) EPC), its filing shortly prior to the oral proceedings before a board does not generally excuse the proprietor (or the other parties), and in particular it does not hand them a voucher for more time. Its concrete implications for opposition appeal proceedings are rather to be determined on a case-by-case basis, under the provisions of the EPC and the RPBA. "
• "Nor are opposition appeal proceedings designed to serve as a placeholder for tactical considerations in parallel proceedings for infringement. They are rather an existential challenge to the title, on the basis of which enforcement is pursued in the infringement proceedings, and parameters such as legal certainty and procedural economy are also involved. Any difficulties for the proprietor in drafting auxiliary requests that also provide the best scope of protection, considering the ongoing infringement proceedings, are not a reason to delay the opposition appeal proceedings."
• Not sure what the Board means with 'placeholder' here, but clearly opposition appeal proceedings are not to be treated as subordinate to any parallel UPC proceedings.
• 
  

EPO 

The link to the decision can be found after the jump.

T 0123/23 - Food for thought - deleting alternatives

Key points

• I'm not sure what to think of this decision.
• The OD revoked the patent, for insufficient disclosure (Art. 83) of one feature.
• " Oral proceedings before the board were held on 17 December 2024. The final requests of the parties were: - The proprietor (appellant) requested that the patent be maintained on the basis of one of eighteen claim requests: main request (labelled as "auxiliary request 5"), auxiliary request 1 (labelled as "amended auxiliary request 5"), auxiliary requests 11, 23, 29, 34, 40, 45, 51, 56, 62, 67, 73, 78, 84, 89, 95 and 96. The decision under appeal is based on all those claim requests except for auxiliary request 1, which was filed during the oral proceedings before the board."
• Claim 1 as granted specifies two alternatives for one feature 1-E.l This feature is unrelated to the feature causing the Art. 83 issues before the OD. The Board finds one of the two alternatives to lack basis in the application as filed. In AR-1, filed during the oral proceedings, that alternative is deleted.
• The preliminary opinion of the Board was that there was no Art. 83 issue, i.e. that all claim requests complied with Art. 83.
• "the board does not dispute the fact that the deletion of the phrase "or other printed indicia" in claim 1 of the main request amounts to the removal of an alternative from this claim which prima facie overcomes the added-matter objection discussed with the board for the first time during the oral proceedings before it. However, this fact alone likewise does not amount to "exceptional circumstances" which necessarily justify admitting the claim request into the appeal proceedings. Instead, the whole situation of the appeal must be taken into account."
• The proprietor: "The added-matter objection to feature 1-E had not been discussed in the board's preliminary opinion. The board might have noted there (see point 7.2 of the board's communication under Article 15(1) RPBA) that further objections in relation to added subject-matter had been raised during the opposition proceedings. However, since the opposition division had not decided on any of these issues, the board's initial intention had been to remit the case on the basis of the claims of e.g. one of auxiliary requests 5, 11, 23 and 29 without conducting any further examination "
• The Board: "In any case, a patent proprietor should prepare the relevant "fallback positions" for that eventuality as early as possible, in line with the general obligation that its complete appeal case is provided as early as possible (see Article 12(3), first sentence, RPBA; see also e.g. T 614/21, Reasons 3.2). This is particularly true in the present case, as the opponents had raised the relevant objection at an early stage of the appeal proceedings, which the proprietor then attempted to overcome only at the latest possible stage, i.e. during the oral proceedings before the board. Moreover, it cannot be the purpose of a hearing held in appeal proceedings to allow an applicant or proprietor, after having discussed, in writing or orally, multiple (higher-ranking) claim requests, to present yet another amended set of claims in a trial-and-error fashion for finally defining its actual "invention" (see e.g. T 1924/20, Reasons 5.1; T 3258/19, Reasons 1.1.4(b))."
• "If the board were to admit the new claim request, it could settle the appeal immediately by remitting the case to the opposition division for further examination of novelty and inventive step - as initially intended - or it could continue with the examination of those issues in appeal, most likely in writing then due to the parties' need to present or amend their respective cases before the board. Both options would however be contrary to overall procedural economy."
• I'm not entirely sure what the Board here means with 'procedural economy' because it did not intend to consider novelty and inventive step at any rate, i.e. also if the Board would have agreed with the proprietor that the feature had basis in the application as filed. 
• "The proprietor could have filed this claim request already during the opposition proceedings, as it constitutes undeniably the safest defence against any possible objection to the presence of "indicia" in the former claims. A remittal would therefore give the proprietor a second opportunity to argue its case before the opposition division, including the possibility of filing even more claim requests if necessary."
• The request is not admitted. The patent is revoked.

• EPO 

The link to the decision can be found after the jump.

T 1418/22 - Using your failed experiments to your advantage

Key points

• Claim 1 is directed to a polymorph. "It is common ground that compound (1) as prepared in example 6 of D3 is in amorphous form (see also example 5 of the patent, reproducing example 6 of D3). Therefore, the feature distinguishing the subject-matter of claim 1 as granted from example 6 of D3 is that compound (1) is in the crystalline form I."
• "The board [...] considers that the objective technical problem should at least be seen as the provision of a more stable and non-hygroscopic form of compound (1). "
• "as pointed out by the respondent [proprietor], example 1 of the patent (page 19) shows the crystallisation procedure used to achieve form I of compound (1). Among a high number of single solvents and solvent combinations used (75 in total, see table 1 on pages 20 to 25), only four mixtures of solvents (samples 23, 24, 39 and 58) led to form I. In the other cases, when solids were obtained, these represented the amorphous form or, in two instances (samples 53 and 69), a different polymorphic form of compound (1) named form II. Anti-solvent experiments did not lead to form I of compound (1) either "
• "Additionally, while it can be accepted that it would have been expected by the skilled person that crystalline forms are more stable than amorphous forms, the results of the patent (see summary provided by the respondent on page 13 of the reply to the statement of grounds of appeal) show that two further polymorphic forms (form II and form III) of compound (1) were found to be more hygroscopic than form I."
• Including the non-working non-claimed examples and alternative polymorphs in the patent application seems a smart move in this case.
• See also: Dai Rees, Inventive Step: The Stories We Tell - link
• "as set out above, form I has a lower hygroscopicity than forms II and III. Thus, in contrast to the condition referred to under point 5.2 of the reasons of decision T 777/08 for denying inventive step, form I, in terms of its hygroscopicity, is not an arbitrary selection of a specific polymorph from a group of equally suitable candidates."
• The Board did not A14, an experimental report drawn up in 2022, i.e. seven years after the priority date, which was filed by the appellants with the statement of grounds.
• According to the opponent/appellant: "A14 demonstrated that if the skilled person had tried standard crystallisation solvents as disclosed e.g. in D7 [prior art, c.g.k.], they would necessarily have arrived at form I of compound (1) as defined in granted claim 1. A14 also showed that no other solid form was crystallised."
• The Board: "the filing of A14 raises complex issues. In fact, admitting A14 would require, for example, considering whether a characterisation by X-ray powder diffraction of the starting sample used in A14 unambiguously allows concluding that the starting material was in amorphous state and that no crystalline material was present. This was contested by the respondent. It would also require assessing whether the crystallisation procedure followed in A14 was such to unambiguously exclude the presence of unintentional seeding. The discussion and consideration of these complex issues would have been detrimental to procedural economy and contrary to the primary object of the appeal proceedings to review the appealed decision in a judicial manner (Article 12(2) RPBA)."
• After the Disappearing Spoon (a book, link) and the Disappearing Polymorph (Derk Lowe's post, the original article is older), now the Disappearing Technical Problem.

EPO 

The link to the decision can be found after the jump.

T 0773/21 - An obligation to submit futile objections before the OD (?)

Key points

• The OD considered D22 to be not novelty destroying for AR-2 (the OD's extensive reasoning is on pages 17 - 20 of the decision).  The claim request was held to be not novel over D6. Request AR-3B, with an additional feature, was filed during the oral proceedings, was admitted, and was held to be novel over D6.
• "Claim 1 of the third auxiliary request is the combination of respective claim 1 of the first and second auxiliary requests, i.e. claim 1 of the first auxiliary request with the additional feature (M1.10) [that is specified in AR-2]."
• In other words, claim 1 of  AR-3 adds a feature to claim 1 of AR-2. Unless I overlook something, this means that the OD, having found AR-2 to be novel over D22, would have found AR-3 to be novel over D22 as well.
• The Board agrees that AR-2 is not novel over D6 and does not consider novelty over D22 of that request. 
• The opponent had attacked AR-3 as not novel over D22 in the statement of grounds. The Board does not admit the attack.
• The Board: "It is undisputed that this request was submitted for the first time during the oral proceedings and an objection of lack of novelty of claim 1 in view of document D22 has not been raised expressis verbis by the opponent during the oral proceedings before the opposition division."
• "The board finds that an objection raised with regard to other requests previously dealt with or still pending cannot be tacitly transferred to a newly submitted request. As long as an objection is not explicitly stated or submitted, it cannot be considered to have been raised or filed. "
• "The opponent could and should have formally raised this objection during the oral proceedings before the opposition division which it did not. In particular, this formal objection would not have compromised the efficiency of the procedure, as it could have been dealt with in a very brief discussion. "
• So, an obligation to make a futile attack: "Dear Chair of the OD, I know you have already decided that the claim is novel over D22, but I formally make the same attack for AR-3".
• What purpose does this obligation serve? It would not have added any substantive reasoning to the decision of the OD, the OD could just have said in their decision that claim 1 of AR-3 is novel over D22 for exactly the same reasons as for AR-2 (which reasons, three pages of them, are in the decision already and were thus available to the Board to review).
• " the opponent has not been able to convincingly demonstrate that it had admissibly raised the objection of lack of novelty in respect of document D22 for this request, let alone that it had maintained it until the decision of the opposition division, as indicated in Article 12(4), first sentence, RPBA."
• "It is not known why the opponent did not raise this objection during the oral proceedings before the opposition division. It might have forgotten to do so or it could have been that at that time, the opponent was convinced that this objection no longer served its purpose."
• ? - Perhaps because the OD had already decided that the higher ranking AR-2 is novel over D22, so that the amendment of adding a feature in AR-3B does not change that finding?
• "Since it is precisely to be avoided that a party changes its mind about objections at will in the course of the proceedings, it would have been important to clearly raise the objection of lack of novelty of claim 1 in view of document D22 at the oral proceedings before the opposition division at least formally."
• "Moreover, not having raised this objection during the oral proceedings before the opposition division leads now to the situation that the opinion of the opposition division with regard to the subject-matter defined in claim 1 is not known and cannot be reviewed by the board."
• "Even though the opposition division's opinion on the second auxiliary request is known [i.e. the three pages of extensive reasoning of the OD why that claim 1 is novel over D22, PJL], it cannot be simply transposed to the third auxiliary request - variant B, since the subject-matter of the respective claim 1 is different."
• Well, if the amendment is adding a feature, the view on novelty of the OD of the claim with that additional feature seems certain? 
• "The prima facie relevance of document D22 is however a necessary condition for admitting this objection at this advanced stage into the proceedings. "
• Cf: Article 12(4): "the suitability of the amendment to address the issues which led to the decision under appeal" (not: overcome the issues, that is in Art. 13(1)). 
• "The opponent could also not convince the board in the written proceedings that document D22 directly and unambiguously discloses all features defined in claim 1, since according to the board's preliminary opinion stated in its communication under Article 15(1) RPBA, document D22 did not disclose the width relationship of D and d of claim 1 (see point 14.5.3 of the communication). Therefore, a prima facie relevance of document D22 is not given because otherwise it should have been recognised by the opposition division and/or by the board having reviewed the extensive previous written discussions. Moreover, the discussion on this topic might well turn out to be extensive which would be contrary to procedural economy."
• So, the Board has formed a preliminary opinion on the matter,  i.e. has studied the claim and the novelty thereof over D22, but denies the opponent the opportunity to discuss this issue during the oral proceedings. 

EPO 

The link to the decision can be found after the jump.

T 1286/22 - No French style devolutive effect of appeal

Key points

• The opponent appeals. The patent is granted in French to a French proprietor, with a professional representative located in France.
• The Board finds the claims of the main request to be not novel.
• "During the oral proceedings before the Board, the respondent, after hearing the Board's findings on the main request, requested that auxiliary requests 3 to 5 as filed with the Opposition Division by letter dated 1 December 2021 be admitted into the appeal proceedings. It also requested that the case be remitted to the Opposition Division to consider these auxiliary requests."
• "The respondent referred to the minutes of the oral proceedings before the opposition division, stating in point 7.1 on page 10 that the said auxiliary requests 3 to 5 had been maintained. It argued that there had never been any question of abandoning these auxiliary requests. Since the contested decision concerned only the main request, the respondent was convinced that if the board had found the main request unfounded, the proceedings should automatically have continued on the basis of the auxiliary requests filed before the opposition division."' 
• As I understand it, this is (or traditionally was) indeed the case in French civil litigation under the 'devolutive effect' of the appeal (comments are welcome). But not at the EPO (anymore).
• The Board: "while Article 12(1)(a) RPBA provides that the appeal proceedings are to be based, inter alia, on the minutes of any oral proceedings before the Opposition Division, this provision does not mean that everything mentioned by the respondent according to the minutes of the oral proceedings before the Opposition Division, in particular the maintenance of auxiliary requests 3 to 5, automatically forms part of the grounds relied on by the respondent in the appeal."
• "None of the written submissions made by the respondent during the appeal proceedings referred to auxiliary requests 3 to 5. The raising of these auxiliary requests during the oral proceedings therefore constitutes an amendment of the respondent's grounds under Article 13(2) RPBA. The Board was unable to recognise any exceptional circumstances justifying the admission of this amendment of the respondent's grounds at such a late stage in the appeal proceedings. Indeed, compliance with the Rules of Procedure of the Boards of Appeal, in particular the provisions of Article 12(3) RPBA, is the responsibility of the parties."
• The requests are not admitted.
• The patent is revoked. 

EPO 

The link to the decision can be found after the jump.

T 2463/22 - On evidence, the standard of proof, Re B (Children) (and Francis Bacon)

Key points

• Some reflections on the standard of proof from Board 3.3.09 in this appeal about an alleged public prior uses.
• "The case law of the Boards of Appeal has tried to reconcile the following two aspects.
• - On the other hand, there is an imbalance in that one of the parties to the proceedings has access to the evidence and the other does not. The party that contests the prior use usually has little or no access to evidence that could support its case. All it can do is, essentially, point out inconsistencies or gaps in the chain of evidence provided by the other party.
• - On the one hand, under the principle of free evaluation of evidence, the deciding body must not observe any formal rules when assessing evidence, such as giving one means of evidence, as such, more weight than another. Accordingly, a lower probative value must not be systematically attributed to e.g. witness statements on a prior use from real life than to written evidence such as patent specifications."
• " In the current board's view, under the principle of free evaluation of evidence, it is always decisive in the evaluation of evidence that the members of the deciding body are personally "convinced". Moreover, they must always be convinced of whether, as stated in T 1138/20, "the alleged fact has occurred". Both is true regardless of which standard of proof is applied. "
• "The current board considers the following extracts from House of Lords, Re B (Children) [2008] UKHL 35, Reasons 2 to be an accurate and illustrative description of the issue at hand: "If a legal rule requires a fact to be proved (a 'fact in issue'), a judge or jury must decide whether or not it happened. There is no room for a finding that it might have happened. The law operates a binary system in which the only values are 0 and 1. The fact either happened or it did not. [...] [T]he standard of proof [...] is [...] the degree of persuasion which the tribunal must feel before it decides that the fact in issue did happen." (emphasis by the board)."
• As a comment, I thought "non liquet" is an essential element of the law on evidence, but legal traditions apparently differ. Even in the meaning of the phrase, it turns out. Compare the English and German Wikipedia pages for non liquet
• https://en.wikipedia.org/wiki/Non_liquet - "In law, a non liquet (commonly known as "lacuna in the law") is any situation for which there is no applicable law."
• https://de.wikipedia.org/wiki/Non_liquet - "Auch heute wird im Verfahrensrecht bei Beweisproblemen mit non liquet eine Situation bezeichnet, in der weder der Tatsachenvortrag der einen noch der anderen Seite bewiesen werden kann." ... "Im Zivilprozess hängt die Entscheidung bei einem non liquet von der (materiellen) Beweislast ab. Derjenige, der nach den Regeln der Beweislast die streitige Tatsache zu beweisen hat, verliert den Rechtsstreit, weil er beweisfällig bleibt (zumeist der Anspruchsteller)."
• I'm more familiar with the German use of the term non liquet (the term is used in the same way in Dutch law). The question for me was: what do judges do if the evidence is ambiguous in common law procedures / in the UK?
• To cite Francis Bacon in Reading on the Statute of uses (published in 1642):
• 
  
  https://books.google.nl/books?id=fusOD6ELKZ4C&newbks=1&newbks_redir=0&dq=The%20learned%20reading%20of%20Sir%20Francis%20Bacon%2C%20one%20of%20Her%20Majesty's%20learned%20counsel%20at%20law%2C%20upon%20the%20statute%20of%20uses&pg=PA305#v=onepage&q=non%20liquet&f=false 
• It seems that the view of the House of Lords in 2008 is still very much in line with the common law approach, or perhaps the remark of the House of Lords - self-evident as it is to the Lords, it is foreign to me - can be explained by the historical English approach to evidence.
• As a further remark, since under German law, the "Beweislast" rules determine the outcome of the case in the event of a (German-style) non liquet of the evidence, a concept alien to English law, it seems, it may have to be considered what 'burden of proof' precisely means in English law.
• See also T 1076/21: "If a material fact is not or cannot be proven, a decision is taken on the basis of who bears the relevant burden of proof. The fact that the real position cannot be established is to the detriment of the party which bears the burden of proof for this fact, among other things because the other party is given the benefit of the doubt. In principle, each party bears the burden of proof for the facts it alleges (T 63/06, Reasons 3.1 and 3.2)."

EPO 

The link to the decision can be found after the jump.

Pending R 16/23 - The right to oral proceedings

Key points

• Petition for review R 16/23 was forwarded to the Enlarged Board in a five-member composition. The petition for review concerns decision J 6/22 where the Legal Board did not hold oral proceedings although these were requested and decided to reject the request for re-establishment for the late filing of the Statement of grounds of appeal. 
• The petition for review is in the public part of the file here. A well-known patent attorney firm is handling the case. 
• In the end, the request for re-establishment is based (at least at the root) on a burn-out of a European patent attorney who is referred to in the petition for review as Ms. K. This  elegantly allows the petition for review to be visible in the public part of the online file.
• Oral proceedings are scheduled for 21 November 2025 by video conference and will be public - see the summons here.
• The Legal Board furthermore issued no preliminary opinion in advance. That is argued to be a separate procedural violation (Art. 113(1) EPC). So, perhaps that will be the focus of the debate.