EPLAW Patent Blog

EPO - TBA issues further decision on automatic genotype determination in the field of bioinformatics

"DNA Mixture Analysis/PERLIN", Perlin, Mark W. (applicant), Technical Board of Appeal 3.3.08, 19 February 2013, Case No. T 2050/07, reported by Stefan V. Steinbrener, Bardehle Pagenberg

At present, there are virtually no decisions of EPO boards of appeal in the field of bioinformatics. On one of the rare occasions (case T 784/06 "Genotype determination/Beckman" of 23 June 2010; see EPLAW Patent Blog of 27/10/2010), Board 3.3.08 (albeit in a different composition) decided that mathematical steps included in a method of determining the genotype at a locus within genetic material obtained from a biological sample were to be ignored in assessing inventiveness if they did not interact with technical activities so as to lead to a "tangible technical result".

This finding arrived at by reasoning an absence of interaction from a lack of detailed disclosure was somewhat surprising, in particular since on the one hand no objection under Art. 83 EPC was raised; on the other hand it seemed to lose sight of the intended focus on the solution of a technical problem. The decision thus appeared to rely heavily on specific deficiencies of the case and did not answer the question of whether such mathematical steps more or less necessarily performed by computer processing might in principle make technical contributions in biotechnology.

EPO - Extended access to Administrative Council documents

EPO improves transparency of legislative process - database still small

Legislative history is an important tool for interpreting the law. The travaux préparatoires for the EPC 1973 and for the EPC 2000 have been available for some time on the EPO’s website and contribute to a better understanding of the European patent system. By contrast, no comparable documentation existed for the ongoing legislative activity of the Administrative Council (AC) which is in particular competent to amend the Implementing Regulations and the Rules relating to Fees. Whereas the Boards of Appeal quite often cite documents like legislative proposals of the Office or minutes of the Patent Law Committee as background for the interpretation of law, the access to such documents was locked for the users of the EPO. The secretariat of the AC did not even respond to queries for copies of such documents.

As a rule, decisions of the AC are published by the EPO without explanation which can make it difficult to understand in which respect the legal situation has changed. An illustrative example is the recent decision of the Council of 25 October 2012 reducing the fee for the supplementary European search in certain cases (CA/D 14/12) which was published on the EPO’s website on 31 October 2012. Without knowing that the previous decision of the Council is temporary and will cease to apply it is difficult to recognize what is new. To get the context, the reader has to study the new decision, to find the previous one, and to understand its transitional provision in order to find out that nothing has changed in substance. Since November 12, 2012 the new access to the AC documents has been open and it contains not only doc. CA/D 14/12 but also the proposal of the EPO CA/90/12 on which the decision is based and which explains the background.

The new means of information is still limited. So far it contains only 6 documents, all dated 2012 and none of the previous decisions of the AC in this year. It is to be hoped that the database will be quickly expanded. International legislation should not be less transparent than national legislation.

URL to the database:
www.epo.org → About us → European Patent Organisation → Documentation → Administrative Council Documents
 
Reported by Rudolf Teschemacher

European Patent Office - Practice to correct text of granted patents has to cease

EPO, Enlarged Board of Appeal, decision of July 23, 2012 in case G 1/10, to be published in OJ EPO – Request to correct patent/FISHER-ROSEMOUNT

In the case underlying the referral of a point of law to the Enlarged Board of Appeal (EBA), the patent had been opposed on the grounds that a feature in claim 1 of the granted patent had not been disclosed in the application as filed. The proprietor of the patent argued that this resulted from a typographical error made when amending this claim during grant proceedings and that the word “position” in this feature should read “portion”.

On his request, the opposition division took the interlocutory decision to stay opposition proceedings and to remit the case to the examining division for a decision on the proprietor’s request for correction of the decision to grant under Rule 140 EPC. On the opponent’s appeal, the Board of Appeal considered that there was a fundamental point of law and referred the questions to the EBA whether a request for correction of the grant decision filed after the initiation of opposition proceedings is admissible and, if yes, whether the examining division’s decision is binding upon the opposition division.

The EBA answered the questions as follows:

1. Since Rule 140 EPC is not available to correct the text of a patent, a patent proprietor’s request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings.

2. In view of the answer to the first referred question, the second referred question requires no answer.

In the reasons for the decision, the EBA emphasizes the need for legal certainty and the protection of third parties and notes that the proprietor has adequate remedies available to ensure that the text of the granted patent is correct.

 

EPO – Test cases for elucidating public availability of Internet disclosures

Koninklijke Philips Electronics N.V. (patentee) v. DSM IP Assets B. V. (opponent), Technical Board of Appeal 3.5.04, 12 March 2012, Case Nos. T 1553/06-3.5.04 "Public availability of documents on the World Wide Web/PHILIPS" and T 0002/09-3.5.04 "Public availability of an e-mail transmitted via the Internet/PHILIPS" with thanks to Stefan V. Steinbrener (Bardehle Pagenberg) for providing the case and summary

Both the European parent application 00200326.7 and its divisional 02077838.7 have been granted by the EPO to Philips and then opposed by DSM in a "joint venture" of  patentee and opponent as contrived test cases regarding the question of whether documents placed inten-tionally on the Internet constituted prior art within the meaning of Article 54(2) EPC 1973. Those documents related to (i) web pages either certified to have been found by key words entered in a search engine or merely alleged to have existed on the Internet before the filing date of the parent application, and (ii) encrypted or unencrypted e-mails sent and received before said filing date, as certified in a notarial record.

EPO - Appeal not filed in the name of the true party: Can the deficiency be remedied? Referral to EBA

EPO, Technical Board of Appeal 3.3.07, decision of January 30, 2012, to be published in OJ EPO   – Zenon Technology Partnership v. Siemens Industry, Inc.

In these times of mergers and acquisitions, representatives in proceedings before the EPO sometimes lose track of who is the true party to the proceedings. A good example is the patent portfolio of the former Hoechst Group. In 1999, Hoechst AG merged with parts of Rhône-Polenc to become the French Aventis Group and after a further merger Sanofi-Aventis. The industrial property rights were moved from company to company, from parent companies to subsidiaries and vice versa. It is no surprise that in many proceedings problems arose who the true party was at a given time.

Illustrative are two cases decided recently, i.e. T 261/08 of September 22, 2010 and T 1421/05 of January 18, 2011. In these cases a Hoechst subsidiary was the original opponent. Within seven years, the business to which the opposition was related was transferred three times and the names of the companies concerned were changed four times. The appeal was filed on behalf of the original opponent (with a changed name) who had ceased to exist two respectively 5 years before the appeal proceedings. Eventually, the appeals were held admissible. Decision T 1421/05 comprises 94 pages and the major part deals with the status of the opponent. 

BE - Supreme court upholds traditional Belgian prima facie validity test in PI proceedings

Novartis v. Mylan, Supreme Court (“Hof van Cassatie/Court de Cassation”), Belgium, 5 January 2012, Docket number C.11.0101.N,

The Belgian Supreme Court has confirmed an earlier decision of the Brussels court of appeal whereby Novartis saw its claim for a preliminary injunction against Mylan’s intended commercialisation of a generic sustained release formulation of fluvastatin granted. In doing so, the Supreme Court upheld the established approach applied by the Belgian courts that a granted (European) patent is presumed to be valid for the purpose of obtaining an interim injunction. This prima facie validity is not affected by a decision of the Opposition Division of the EPO against which an appeal has been lodged before the EPO Technical Board of Appeal, even if the patent concerned was revoked in its entirety by the Opposition Division. According to the Court, this directly ensues from the suspensive effect of such an appeal pursuant to Article 106(1) EPC.

Read the judgment (in Dutch) here.

Head note: Philippe de Jong

EPO - The inescapable trap enlarged

EPO, Technical Board of Appeal  3.2.04, 28 September 2009, Decision No. T 567/08 – Unilever v. Plasticos and Colgate-Palmolive

As to the problem of added subject-matter, EPO practice exhibits a specific feature which is dangerous for the patentee in opposition proceedings. If the EPO considers a limiting amendment, made and allowed in grant proceedings, to have added new matter, the patentee falls into the inescapable trap created by the Enlarged Board of Appeal in decision G 1/93: The amendment cannot remain in the claim because of the prohibition of adding new matter in and it cannot be removed from the claim because of the prohibition of extending the scope of protection after grant.

EPO - European patents may become valid in Morocco

The President of the European Patent Office (EPO), Benoît Battistelli and Morocco's Minister for Industry, Commerce and New Technologies, Ahmed Reda Chami, have signed an agreement on the validation of European patent applications and granted European patents in Morocco. The agreement will enter into force once the necessary implementing legislation has been passed by the Moroccan parliament.

EPO - Enlarged Board of Appeal decides on the exclusion from patentability of “essentially biological processes”

EPO, Enlarged Board of Appeal, decision of 9 December 2010 in consolidated cases G 2/07 - Broccoli/PLANT BIOSCIENCE and G 1/08 – Tomatoes/STATE OF ISRAEL

The Enlarged Board of Appeal (EBA) answered the question referred to it by Technical Board of Appeal in T 83/05 (OJ EPO 2007, 644) and T 1242/06 (OJ EPO 2008, 523) as follows:

“1. 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" within the meaning of Article 53(b) EPC.

 

EPO - Willy Minnoye and Raimund Lutz appointed as Vice-Presidents

In its meeting of October 26 to 28 2010, the Administrative Council of the European Patent Organisation has appointed Belgian Willy Minnoye and German Raimund Lutz as Vice-Presidents of the EPO with effect from January 1, 2011.

Mr. Minnoye will succeed Mr. Hammer (DE) as Vice-President of Directorate General 1 – General Operations, which is responsible for examination and opposition. Mr. Minnoye is one of the rare internal appointments at this level and is currently Principal Director in the field of electricity and semiconductor technology as well as site manager of the EPO’s office in Berlin.

Mr. Lutz will succeed Mr. van der Eijk (NL, acting VP in 2010) as Vice-President Directorate General 5 – Legal/International Affairs. At present, Mr. Lutz is head of the German delegation in the Administrative Council and President of the Federal Patent Court in Munich (Bundespatentgericht). Legal affairs and the EPO’s relation to its users will be key responsibilities within the near future, since the “raising the bar” initiative has created many practical and legal problems which the new management under President Battistelli has to tackle.

Read the Communique of the EPO here. 

Reported by: Rudolf Teschemacher