Recent EPO Boards of Appeal decisions & referrals

Two IP founder and patent attorney Anna Molony shares her notes from a recent EPO case law review session that she led for one of her clients. If you would like Anna to present this as a case law review session for your team, get in touch with Anna here.

As the EPO continues to tie itself up in knots over the description amendment requirements introduced in the 2021 Guidelines for Examination, I thought it would be interesting to have at look at some recent decisions in this area – and a possible referral to the Enlarged Board of Appeal. ViCo oral proceedings aren’t going away, so you may be interested in the EPO’s thoughts on witness credibility in them. And we have our first referral to the Enlarged Board for 2023, so let’s have a quick look at that too.

DESCRIPTION AMENDMENTS

T2391/18: When is it necessary to amend the description of a patent post-grant?

EP1872074  – Relates to equipment for processing scrap metal   Tenova S.p.A.

The decision in T 2391/18 related to the decision of the Opposition Division to maintain EP 1872074 as granted. During the opposition appeal the Patentee filed amended claims and an adapted description.

Amendments in Opposition should be occasioned by a ground of Opposition (Rule 80 EPC). A lack of clarity under Article 84 EPC is not a ground for Opposition, except in cases where the lack of clarity arises solely as a result of a post-grant amendment (G 3/14). Adaption of the description in opposition is not appropriate unless a new discrepancy between the description and the claims had arisen as a result of a post-grant amendment.

T 2391/18 confirms that a granted patent cannot be invalidated solely on the grounds that the claims are unclear because the description was not adequately adapted before grant (Article 84 EPC). However, it would also appear from T 2391/18 that any amended claims submitted during opposition that include limitations not present in the granted claims should always be accompanied by a corresponding amended description.

T450/20: The risk of pre-grant description amendments

EP2254485 – Relates to a stent for unblocking blood vessels.

The decision held that the description of a patent could not be mined for a definition limiting the meaning of the claims. However, the Board of Appeal did find it permissible to use functional language from the description to construe the claims.

The Board also ruled out any role for the description of the patent application in claim interpretation. Instead, according to the Board of Appeal, only the description of the granted patent may be used for claim interpretation under Article 69(1) EPC, regardless of whether the description was adapted prior to grant.

T56/21: Board of Appeal poised on the brink of a referral to EBA on description amendments

EP3094648 “FC-REGION VARIANTS WITH IMPROVED PROTEIN A-BINDING” F. Hoffmann-La Roche AG (Representative Roche Diagnostics GmbH)

Both the Board of Appeal (3.3.04) and the appellant (Roche) in the case are the same as in T 1989/18, the first Board of Appeal decision to find a lack of legal basis for the description amendment requirement.

The Board of Appeal in T56/21 is poised on the point of a referral to the EBA on the issue of description amendments and claim interpretation.

VICO ORAL PROCEEDINGS

T423/22: Assessing witness credibility during ViCo opposition oral proceedings

EP2202099 “RFID enabled tire control system and method” The Goodyear Tire & Rubber Company

Opponent: MICHELIN Recherche et Technique S.A.

Board of Appeal considered whether a witness’s credibility can be properly assessed during ViCo oral proceedings.

Catchword: Hearing a witness in first instance proceedings by videoconference allowed sufficient interaction between the deciding body, the parties and the witness. Albeit a part of the witness’ body language was not visible to the participants, this did not amount to an infringement of the parties’ right to be heard since the judgement on the witness’ credibility was mainly based on the conclusiveness of his/her testimony and the absence of contradictions within the witness’ own testimony, between the testimonies of several witnesses and/or contradictions between the witness’ testimony and information derivable from supporting documents

PRIOR USE

G1/23: When is prior use of a product excluded from the prior art for lack of enablement?

This first referral to the EBA of 2023 seeks clarification on the enablement test for prior use of a product.

Relates to T0438/19 [EP 2626911, for Polymers for coating and protecting solar cells in solar panels]

The referral asks whether the non-enabling prior use of a product excludes the composition of the product from the prior art or whether it also excludes the product per se (i.e. so that it cannot be used as a starting point for inventive step).

The referral also seeks clarification over the definition of enablement with respect to the prior use of a product, and particularly whether “enablement” requires that the skilled person be able to fully analyse and reproduce the exact same product.

Audit the Intellectual Property in your business, with funding available through Innovate UK

Two IP consultant trade mark attorney Rachel Havard discusses the IP Audits Plus scheme for SMEs, and possible government funding available, for applications made through Innovate UK Edge.

As a trade mark attorney, it is fascinating for me to carry out a deep dive into the present and future interests of a business, to be able to offer well informed advice upon how to identify and protect valuable intellectual property (“IP”) rights, insofar as they might exist now, are able to be protected, or could be created for protection in the future.  Working closely with patent attorney colleagues, I have had the pleasure of conducting many IP audits over the years, for businesses in diverse and often rather unusual markets.  My blog below sets out available options, and how these could help your own business.

Possible government funding for IP audits

The IP Audits Plus scheme, available through Innovate UK Edge, enables qualifying SMEs to receive a £2500 (inc. VAT) contribution from the UK Intellectual Property Office (“UK IPO”) towards an IP audit to the value of £3000 (inc. VAT).  As such, for a payment on their part of only £500 (inc. VAT), the business can receive a thorough assessment of its position in relation to IP rights available to them, along with recommendations for optimising their protection.  

The IP Audits Plus scheme is a competitive grant-funding scheme, open to SMEs ranging from start-ups to already high turnover businesses, if they have witnessed, or are expecting, strong growth, and IP will be significant to the development and commercialisation of the product/service allowing the business to grow.

Should IP audit funding be granted, future costs for protection of identified IP will usually need to be incurred, but the audit process will result in a clear set of recommendations for efficient protection where it really matters, along with dos and don’ts to effectively maintain that protection, to avoid infringing third parties’ IP rights, and with a strong steer towards the most cost effective, tailored approach for the business concerned.

Applications and process for IP Audits Plus through Innovate UK Edge

The audit would need to be applied for with the assistance of a regional Innovation and Growth Specialist from the Innovate UK Edge network of such advisors.  Should the application for audit funding be granted, the recipient needs to appoint IP attorneys, such as Two IP, to carry out the audit. The audit report would require submission with the UK IPO by a specified date, usually within a couple of months, to enable their release of the government funding payable to the selected IP attorneys, with the audit recipient to pay the remainder.

The audit process will often begin with a fact finding meeting or visit of your business from the selected IP attorneys.  As part of the process, we would explore the following and related areas, and develop the audit report from the information gathered, adding our own strategic recommendations:

  • Scope of your business, both technical and geographic, looking at the present, but also future possible directions or expansion;
  • Existing IP in your ownership – which could include registered IP such as registered trade marks, design registrations or granted patents, or automatic rights not requiring registration, such as copyright or unregistered design rights;
  • Potential IP ownership issues or contractual considerations;
  • IP rights capable of protection, yet to be sought;
  • Potential threats to and opportunities for protecting, enforcing, and exploiting your IP;
  • Possible bars to use and/or registration of your IP;
  • Recommendations and cost estimates for bolstering and managing your IP, so placing you in the best position to benefit from it.

You would receive a detailed report upon the above, for discussion with your Innovation and Growth Specialist, ahead of sign off for release of the funding. The chosen IP attorneys will usually offer a follow up consultation to agree next steps, but you could likewise take your audit report away to other IP attorneys to progress in the future.

What next?

The IP Audits Plus scheme is offered as part of a much broader package from Innovate UK Edge, and they should be your first port of call if considering an application under this scheme.  See further details here.

As this is a competitive process, Innovate UK Edge will assess the capability of a particular business to benefit from an IP audit, with an eye to future possible returns and, particularly, high growth prospects.  They would look to match your business with one of their Innovation and Growth Specialists with relevant experience and expertise, who could offer advice on internationalisation, sales and marketing, and other business growth areas, including assisting in completion of the application for funding under IP Audits Plus, should they consider that appropriate.  

Should you be granted the funding for an IP audit, you could then appoint your preferred firm of IP attorneys, who would work with you and with your Innovation and Growth Specialist to see the audit through to the final report and recommendations, to ensure you can get the most out of your IP and the opportunities it can give you.

Even if you do not qualify for the IP Audits Plus scheme, Two IP could still help identify and protect the IP in your business, if you chose to approach us directly.  Should you be seeking focussed advice upon a specific innovation or branding project, we would likewise be delighted to help. 

Please do visit our website at www.two-ip.com, or get in touch with us at hello@two-ip.com with any questions you might have about identifying protectable IP and how best to protect it in your ownership.