27 November 2020

A round-up of recent Decisions from the Boards of Appeal at the EPO

Despite the obvious difficulties in holding in person oral proceedings in view of the current situation with COVID-19, the Boards of Appeal at the European Patent Office have stayed busy, issuing hundreds of Decisions since our last issue of Inside IP. Here, we take a look at some of those Decisions from the Technical and Legal Boards of Appeal.

T 1414/18 – unity

In the application in question, independent claim 1 was directed to a method performed by a user equipment (UE), while independent claim 2 was a more detailed independent claim directed to a method performed by a network node in communication with the first UE.

The examining division refused the application as lacking unity, based on the lack of a single general inventive concept between the two claims.

The Board of Appeal was very dismissive of this reasoning and made it clear that unity can arise by the satisfaction of either of two conditions specified by Article 82 EPC:

  1. Do the claims relate to one invention only?
  2. Do the claims relate to a group of inventions so linked as to form a single general inventive concept?

If the answer to either one of these questions is ‘yes’, then the application does not lack unity.

The Board further made it clear that question (1) needs to be assessed properly even if two claims are directed towards different products/processes.

In its assessment of question (1), for the specific application in question the Board found that the description “refers consistently to a single invention” with a single objective. The Board further noted that the processes used by the UE (of claim 1) and network node (of claim 2) are described as being used in coordination with each other. As a result, the Board found that the claims did relate to a single invention, with claim 1 describing the invention from the perspective of the UE, while claim 2 described the same invention from the perspective of the network node. In other words, the Board found that the answer to question (1) was ‘yes’. In this analysis, the Board further made it clear that it did not matter that the main aspect of the invention was predominantly covered by one more limited independent claim, and that the other complementary independent claim was broader, both claims still related to the same invention.

Based on the answer to question (1), the Board of Appeal was able to conclude that the application complied with the requirements of unity and the reasoning given by the examining division (based on the interpretation that the difference in scope of the independent claims should lead to a finding of the presence of a group of inventions) was insufficient to establish a lack of unity. The Board stated that “the reasoning of the examining division drawing upon the aspects of a “single general inventive concept”, “special technical features” and “non-unity a-posteriori” is moot and does not need further consideration.”

This case stands as a useful reminder that the mere fact that different independent claims are directed towards different products/processes does not necessarily mean that those claims relate to different inventions. Furthermore, the structure and format of the description in discussing these products/processes plays a big part in the assessment of whether or not the claims then relate to a single invention. This is useful to bear in mind when drafting European patent applications.

T 1111/14 – sufficiency

This application had a claim directed towards a method for expanding human liver cells (hepatocytes) in vivo and a claim directed towards a genetically modified mouse in which human hepatocytes can be expanded. The examining division refused the application on multiple grounds, including insufficiency, lack of support and exceptions to patentability. The Board of Appeal set aside the Decision to refuse the application and remitted the application back to the examination division for grant. On the topic of sufficiency, the examining division found that the claimed invention lacked support of technical nature in the description and therefore, was not disclosed in a manner sufficiently clear and complete for it to be carried out by the skilled person.

However, the Board found that the examining division erred in its finding, and stated the following:

The whole argument of the examining division was based on the premise that the person skilled in the art would read the application questioning its teaching. This approach was fundamentally incorrect. The examining division also used the wrong tests. It argued that the skilled person would not “unambiguously derive” from the application that the invention works in the absence of uPA pre-treatment, and that the skilled person would not be prompted to depart from the examples “with reasonable expectations of success”.

In the evaluation of sufficiency, the Board of Appeal reiterated that a finding of a lack of sufficiency should be based on serious doubts, substantiated by verifiable facts. This was not the case, as the evidence presented by the examining division did not prove that the claimed invention did not work.

The application was additionally refused on the basis that the examining division considered that claim 12 was excepted from patentability under Article 53(a) and Rule 28(1)(c) EPC in view of the disclosure on page 29, which states that “Human ES cells can also be derived from preimplantation embryos from in vitro fertilized (IVF) embryos”. Under the revised interpretation of Rule 28(1)(c) EPC, discussed in case T 0385/14, an unfertilised human ovum whose division and further development have been stimulated by parthenogenesis does not constitute a “human embryo”. In view of this, the Board of Appeal decided that this exception to patentability objection could not be upheld.

T 2087/15 – technical features

In October 2006, Reliant Exams AS filed a patent entitled “System and method for improving the quality of computer generated exams”. The content of the application was directed towards a computerised system that can generate high quality exam question sets from a data bank of questions with reduced cost and burden. It does so by using known statistical methods to analyse the quality of exam questions held in a data bank against empirical data as a way of choosing exam questions that differentiate between candidates.

The application was refused as the examining division considered the sole technical problem derivable from the wording of the independent claims to be the configuration and programming of known technical means in order to implement non-technical (teaching) constraints. The appellant argued in its Notice of Appeal that the technical character of the invention relates to both the objectivity and efficiency of the system. The appellant also argued that the system can handle large data sets not possible by a human.

While the Board of Appeal acknowledged the overall technical character of the invention, it was of the opinion that the steps in independent method claim 8 are well-known tasks of people preparing exams (e.g. teachers) and that they do not relate to solving a technical problem, but to the non-technical task of a test writer (e.g. a teacher).The Board did not consider the improvement of the quality of the questions in a database as a technical effect and considered the judgment regarding the quality of any exam set to be subjective in nature. The Board therefore dismissed the Appeal as it was of the opinion that the objective technical problem was in the implementation of a non-technical method on a computer and that this would be straightforward to implement without an inventive step by the skilled person (i.e. a computer specialist).

In this Decision, the Board of Appeal reiterated the principles set out in well-established case law regarding the evaluation of inventive step for computer-implemented invention and cases involving both technical and non-technical characteristics. These principles include the fact that, if the technical problem concerns a computer implementation of a business, actuarial or accountancy system, the person skilled in the art is considered to be a person skilled in data processing, and not merely a businessman, actuary or accountant. Furthermore, as set out in COMVIK, non-technical features generally cannot contribute to inventive step.

Other notable decisions

  • T 0633/16 – The Board disregarded the appellant’s references to Wikipedia extracts, since the appellant had not indicated which versions it was referring to or attached them to the statement of Grounds of Appeal.
  • T 1832/16 – The patent proprietor could not have the proceedings terminated by stating that it was surrendering the patent nor could the EPO revoke the patent at the request of the proprietor.
  • J 0007/19 – “The notion of a mistake eligible for correction under Rule 139 EPC does not cover the scenario where a declaration of withdrawal reflects the true intention of the applicant, but is based on wrong assumptions.”
  • J 0010/19 – While the determination of the interruption of a procedure can be retrospective, it can only be cancelled with effect ex nunc.
  • T 2214/14 –Even though in view of the statements given in a first document “the skilled person may have hoped to be able to revert diabetes in its early stage by administering” a known microsphere composition, a claim to this was still found to be inventive since a second document indicated that they could not have reasonably expected to succeed.