The latest trends at the EPO

Every year the European Patent Office (EPO) as a fundamental institution of intellectual property rights in Europe organizes a conference where the recent highlighted decisions are revealed and current trends are analyzed in depths. In today’s IPintz article as a participant I seek to give a brief summary of this event.

The 2015 EPO Boards of Appeal Conference was held in Munich on the 26th and 27th of November.

The first lecture was held by Mr. Wim Van der Eijk vice president of the EPO, chairman of the enlarged board of appeal. He introduced the basic function of the Board of Appeal as to be a judicial forum for reviewing first instance decisions in compliance with the fair trial principle and also to improve the practice of the EPO by constantly reinterpreting the provisions of the European Patent Convention and thus providing legal certainty. Mr. Eijk informed the audience that the most important decisions were related to the impartiality of the Board of Appeal, the scope of patentability of biotechnological products and methods and the clarity of the amended claims.

Key decisions of the Board of Appeal

How many of them appeal to you?

All clear – G 3/14

Kevin Garnett explained this decision which dealt with the issue whether the clarity of the amended claims should be reexamined during the opposition procedure.

Article 84 of the European Patent Convention declares:

“The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.”

Article 101 (3) at the same time declares:

“If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates

(a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled;

(b) do not meet the requirements of this Convention, it shall revoke the patent.”

So the basic question was to which extent these requirements must be taken into account, namely the clarity of the amended claims should be reexamined, or the amended claims must fulfill only the general criteria of a patent namely novelty, inventive step and industrial applicability.

The answer of the Board of Appeal – after overviewing its earlier practice and seeking to interpret the EPC even with the use of travaux préparatoires – was that the clarity should be reexamined from this point of view only if the amendments caused the lack of clarity per se.

How to draft and file an appeal

Hugo Meinders, chairman of one of the technical boards of appeal led the audience into the matter of how to draft and file an appeal before the EPO properly.

The most important thing to do is to file the appeal and pay the fee within two months from receiving the decision. In the appeal the ordering part and the reasoning must be contested.

In case T 2532/11 the appellant filed a set of revised claims (as implicit auxiliary request), however did not contest the decision itself, thus the board deemed the appeal inadmissible.

In T 899/13 not all the grounds of the refusal of the patent application were referred to, thus the appeal was also deemed inadmissible. This is certainly logical, since only one non-compliance with the provisions of the EPC can lead to the refusal on the first instance as well.

As to specific suggestion Mr. Meinders stated that an appeal should not repeat the arguments already set forth to the original examiner, except when those reasons were not referred to in the original decision, and follow the structure of that.

Tomatoes and Broccolis – the patentability of biotechnologically produced plant parts

In his lecture Dr. Ingo Beckendorf guided the audience through a most certainly hot topic related to the scope of patentability of biotechnological products and methods. The topic has implications worth millions of dollars as this area of science is expected to undergo a revolution like physics in the first decades of the twentieth century or computer technology in the seventies.

Article 53 of the EPC states that European patents shall not be granted in respect of:

“b) plant or animal varieties or essentially biological processes for the production of plants or animals; […]”

The first overall interpretation of the scope of Article 53 was given in decision G 1/98.

The definition of essentially biologically process was rendered in decisions G 2/07and G 1/08, where the Enlarged Board of Appeal answered the referred question in the following way:

“A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being ‘essentially biological’ ”

In the recent decisions of G 2/12 (Tomato II) and G 2/13 (Broccoli II) the Board of Appeal has given further guidelines on the interpretation of this provision proclaiming that material results (product claims) of such procedures are patentable. The decisions received fundamental criticism especially from Great-Britain and Germany since in respect of those two countries those decisions are contra legem to their national patent law.

Independence and impartiality of the Chairman of the Enlarged Board of Appeal

A rather constitutional law related topic is the set of safeguards aimed to ensure the impartiality and independence of the Chairman. Since the procedure of the Board of Appeal strongly resembles a judicial review procedure, some of the European legal traditions must be applied.

Even though the European Patent Organization is not a member of the European Convention of Human Rights (ECHR), it is a settled case law that in appeal procedures Article 6 of the ECHR must be applied.

This provision states that:

“In the determination of his civil rights and obligations or of any criminal charge against him, everyone is entitled to a fair and public hearing within a reasonable time by an independent and impartial tribunal established by law.”

In case R 8/13 the impartiality of the Chariman was challenged on the grounds of his dual function namely that he is one of the vice presidents of the EPO at the same time. The Board examined its case law and found that the dual function per se is not a sufficient ground to presume impartiality from the Chairman. In an earlier case (R 19/12) the partiality was declared as a result of the Chairman being a member of two executive committees. This structural deficiency has been corrected since then, thus the mere dual function is not sufficient to uphold partiality.

In R 2/14 the same issue was addressed stating that the Chairman cannot fulfill neither of his roles (judicial and executive) without having a regard to the other. The Board however proclaimed that in case of a conflict between the two functions the judicial one must prevail. The good faith of the appointed Chairman must be presumed until proven otherwise.

The conference also included a mock trial and a cocktail reception. The content and the organization of the event were of excellent quality just as expected from the EPO. I can happily recommend this annual event to all top European patent attorneys.

Dr. Marton Csirik
Pintz & Partners