Report of Recent EPO Decisions – June 2009
EPO DECISIONS
This report covers recently published decisions of interest from the Boards of Appeal of the European Patent
Office. It is one of a series of reports that Bristows produces regularly for publication in the CIPA Journal. This
report has been published in the June 2009 issue of the CIPA Journal and includes decisions of the Technical
Boards of Appeal on patentability, inventive step, sufficiency, priority and EPO procedure.
Notes:
Technical Board of Appeal (TBA) Decisions are available on the EPO website at http://legal.european-patentoffice.org/dg3/updates/index.htm and similarly decisions of the Enlarged Board of Appeal (EBA) can be
downloaded from http://www.european-patent-office.org/dg3/g_dec/index.htm. A list of the matters pending
before the Enlarged Board is included at http://www.european-patent-office.org/dg3/g_dec/pending.htm.
Recent notices and press releases of the EPO are published at http://www.european-patentoffice.org/news/info/index.htm
and
http://www.european-patent-office.org/news/pressrel/index.htm
respectively, and recent issues of the Official Journal can be downloaded from http://www.european-patentoffice.org/epo/pubs/oj_index_e.htm.
Patentability (Article
52
EPC)
and
Inventive
Step
(Article 56 EPC)
T 0012/08: Game machine
and
storage
medium
therefor / Nintendo Co.
Ltd.
TBA Decision of 6
February 2009
Chairman: M. Ceyte
Members: A. de Vries and
T. Bokor
By this decision, the TBA overturned the Examining Division’s refusal of an
application for being an obvious implementation of excluded subject matter. The
application in question concerned a computer program for varying the probability
of encounters between a player-controlled game character and other objects located
within a map-type game format.
The Board was clear that the problem – of reducing predictability (and therefore of
holding the player’s interest) – and the solution – a form of time-dependent random
number/event generator – were both of technical character. Although the Board was
of the opinion that modern computer gaming systems did have several elements
(such as narrative) that were essentially conceptual rather than technical, this was
not one of them. In the context of game-play, it drew the distinction between a
technical method (e.g. of random number generation by rolling dice) and the
expression of a game rule (e.g. moving pieces on a board by the number of places
indicated). “Game rule” was given its classical meaning as a “regulatory framework
agreed between players concerning conduct, conventions and conditions...”
(T336/07), as such being confined to the abstract formal structure of the game.
Here, the random event generator was not intended to be known by players, much
less agreed, and hence it was not a game rule. Accordingly, the Board held that it
was not excluded from patentability under Article 52(2)(c) EPC.
On the issue of inventive step, the Board held that although time-dependency is
well-known in gaming devices, none of the prior art citations included timedependency in the context of random event generation. The Board was also clear
that it was not generally known that predictability could be reduced by making
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likelihood of appearance time-dependent (curious, perhaps, in view of
predictability of appearance being inherently time-related). As such, the Board held
that the claimed solution was not obvious, setting aside the earlier decision and
remitting the case to first instance with an order to grant the patent.
Sufficiency
83 EPC)
(Article
T
0190/07:
Treating
protein-containing liquids
/
Common
Services
Agency
TBA Decision of
January 2009
The patent in issue before the TBA here related to the use of a depth filter to
remove infective prion proteins associated with transmissible spongiform
encephalopies from aqueous solutions. The Patent was opposed on the ground of
insufficiency of disclosure under Article 100(b) EPC but the Opposition Division
had rejected the opposition.
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Chairman: R. Freimuth
Members: P. Gryczka and
D. Rogers
The opponent argued that the degree of filtration achieved in the examples
described in the specification could only be accomplished under specific operating
conditions. As these conditions were not indicated in the claims, nor mentioned in
the description, an essential feature of the claimed invention had not been
disclosed, and the opponent therefore argued that the invention was insufficient
under Article 83 EPC.
The TBA held that the degree of filtration of prion proteins was an issue relating to
the technical problem solved by the invention to be considered when assessing
inventive step. As the claimed use only required the removal of proteins without
defining the extent to which the proteins should be removed, this was not an issue
of sufficiency of disclosure and the patent was not therefore insufficient on this
ground.
The opponent also successfully showed that the two examples identified in the
description did not illustrate the claimed invention, as they did not possess an
integer common to all of the claims of the invention. However, the Board held
that, having found the invention sufficiently disclosed in the specification, the fact
that none of the examples illustrated the claimed invention had no impact because,
in the present case, a worked example was not necessary for the skilled person to be
able to carry out the invention.
Priority (Article 102
EPC)
T
0382/07:
Pharmaceutical
composition, based on
etheric oils obtained from
plants for use in the
human and veterinary
medical field / D & W
Trading B.V.
TBA Decision
September 2008
of
26
Chairman: U. Kinkeldey
Members: G. Alt and R.
Moufang
This was an appeal by the patentee against the decision of the Opposition Division
to revoke a European patent as a result of loss of priority. The patent claimed
priority from two separate applications derived from a PCT filing. The applications
were filed with the industrial property protection office of Macedonia on 25 August
1995 but the Patent claimed a priority date of 26 May 1995 based on a prior
disclosure at an exhibition on that date.
Macedonia became party to the Paris Convention for the Protection of Industrial
Property (“Paris Convention”) in 1991. Article 11 Paris Convention provides that
member countries are allowed to recognise exhibition priorities in their domestic
law but that they are not obliged to do so. Whether or not an applicant is entitled to
claim an exhibition priority is thus a matter to be decided on the basis of the
respective national law of the country where protection and priority are claimed.
However, the TBA considered that in the case of a European application or patent,
whether exhibition priority can be claimed is decided on the basis of the EPC, not
the law of the country where the exhibition took place or where the first application
claiming the exhibition priority was filed. The TBA concluded that, since the EPC
does not recognise exhibition priorities, the priority claimed in the Patent must fail,
irrespective of whether the law of Macedonia recognises exhibition priorities.
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Accordingly, the priority date claimed in the Patent was rejected by the TBA.
EPO Procedure
T
0857/06:
Tumor
necrosis factor binding
protein II, its purification
and antibodies thereto /
Abbott GmbH & Co. KG
Here, the TBA had to consider an unusual procedural situation. Earlier in the
proceedings, the Opposition Division had attempted to incorporate the content of a
first interlocutory decision into that of a second interlocutory decision. The second
decision had been appealed, and the question arose as to whether the first decision
could be considered as part of the appeal.
EBA Decision of 5 June
2008
The Opposition Division had stated during the oral proceedings leading to the
second decision that “the first and second oral proceedings are to be seen as one
procedure the decisions of which being appealable in the usual manner” and that
“the partial decision taken in the first oral proceedings … will be part of the final
decision”. The reasons for the first decision were also repeated in the second one.
Chairman:
U. Kinkeldey
Members:
R. Gramaglia and R.
Moufang
The TBA confirmed that this attempted course of action had been wrong. A matter
already decided could not be decided again by the same instance and the second
interlocutory decision could not therefore concern an issue decided first time round.
To challenge the first decision, the appellant therefore had to have appealed it, and
the patentee’s appeal notice stated that the appeal was lodged against the second
decision and there was no explicit reference to the first.
However, the TBA considered that the Opposition Division’s statements had been
objectively misleading, allowing the appellant to infer that it need only appeal the
second decision in order to challenge the conclusions of the first. Ruling that the
principle of legitimate expectations meant that a party must not suffer disadvantage
by having relied on a misleading communication or statement in a decision, the
TBA decided that the patentee’s appeal did encompass a challenge to the first
decision.
The situation was further complicated by the fact that, as the first decision did not
terminate the proceedings, Article 106(2) EPC suggests that it should only be
appealable together with a final decision. Although the second interlocutory
decision was not final, the TBA considered it left no substantive issues outstanding.
The TBA therefore decided to construe Article 106(2) purposefully and (citing T
762/90) held that, to avoid the nonsensical situation that would otherwise result, the
first interlocutory decision was appealable together with the second.
The decision is also noteworthy for its extensive discussion of the attendance of
assistants during the deliberations of a Board following an unsuccessful objection
by the patentee to an assistant being present.
Bristows
This month’s contributors were Ewan Nettleton, Dominic Adair, Greg Bacon and Jane
Craghill
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