Rule 141 EPC: some good news

As from 1 January 2011 Rule 141 EPC, as modified by Administrative Council decision CA/D 18/09, will require applicants to supply search results relating to any priority filings. On the face of it, this adds yet another burden on applicants that they could well do without.  When laden ladenfam first saw the new Rule, he immediately thought it was quite pointless and unnecessary.  With patent offices around the world becoming increasingly interconnected, wouldn't such an additional requirement being placed on the applicant be a backwards step?  If patent offices can communicate with each other directly, why is there a need to supply information that has been provided by one via (probably at least two) intermediates?  Why not simply cut out the middlemen and send what is required directly, and online?

Fortunately, this does in fact already happen.  In the case of supplying certified copies of priority documents, the requirement under Rule 53(1) EPC for the applicant to supply a copy does not apply where the priority filing was made in Japan, Korea, the US or at the EPO, according to a decision of the President dated 17 March 2009.

Now we can be relieved even before the new year that, in many cases, the new form of Rule 141 will not have any effect on applicants due to another decision of the President dated 9 December 2010.  According to this decision, the EPO will be able to get search results for priority applications filed at the US, UK or Japanese patent office.  laden ladenfam suspects that others will join, once the relevant agreements have been signed.

laden ladenfam now wonders what the point was of the new form of Rule 141, if the ultimate aim was apparently to make such a requirement superfluous.  Can anyone enlighten the, now quite puzzled, IPKat?

Broccoli (G 2/07) and Tomatoes (G 1/08): the decision is in

laden ladenfam reported in a post dated 11 June 2007 of a referral having been made to the EPO Enlarged Board of Appeal (G 2/07) on the subject of whether a process involving crossing and selection of broccoli could be patentable. Another referral was then made relating to a similar type of invention relating to crossing and selection of tomatoes (G 1/08). Now, after a mere three and a half years the Enlarged Board, having combined the two referrals, have issued decisions relating to both.

The questions raised in respect of the broccoli referral were:

1. Does a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature?

2. If question 1 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?

The questions raised in respect of the tomatoes referral were:

1. Does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants fall under the exclusion of Article 53(b) EPC only if these steps reflect and correspond to phenomena which could occur in nature without human intervention?

2. If question 1 is answered in the negative, does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as part of any of the steps of crossing and selection, an additional feature of a technical nature?

3. If question 2 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?

The Enlarged Board has, in both decisions G 2/07 and G 1/08, answered the questions 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.

2. Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.

3. If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.

4. In the context of examining whether such a process is excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.

There is, of course, much reasoning behind the answers, some of which has already been analysed by the prolific Oliver G. Randl in some detail here. I am tempted, as many others might be, to make comparisons with case law on the 'non-inventions' of Article 52(2) and (3) EPC, particularly by the liberal use of the meaning-free word 'technical' in these decisions. However, other than an apparent surface similarity, the comparison does not seem to bear close scrutiny and is probably not much help, if not misleading. In answering the questions, the Enlarged Board seem to me to be indicating that they are not establishing the same kind of 'technical effect' reasoning that is now well-established in the case law relating to Article 52(2). Instead, the use of the word technical in this case appears to be more about whether there is enough of a deliberate intervention in the crossing and selection process for there to be a new result. I wonder whether a known type of technical intervention would do just as well as a new one, provided the result of the process was new and inventive.

As for the significance of the decisions otherwise I will refrain from commenting further, mainly because cats don't like vegetables.

More on the decisions from the EPO here.

More EPO rule changes - this time it's good news (mostly)

There has been much wailing and gnashing of teeth among patent attorneys and applicants over the new rules that the EPO's Administrative Council has inflicted upon us over the past year or two. Rule changes relating to a new deadline for filing of divisional applications (Rule 36) and to a new requirement to respond to an international written opinion shortly after entering the European regional phase (Rule 161) have perhaps been the most controversial.

In the case of Rule 36, nobody was quite sure what exactly would cause the 24 month period within which a divisional could be filed to start. Even though the EPO issued a communication stating that only communications issued by the examining division would count, this did not really resolve the issue, particularly because communications other than those under Article 94(3) or Rule 71(3) also tended to be confusingly issued "For the Examining Division".

In the case of Rule 161, the one month time period imposed to provide a response was seen by many to be far too short, particularly when applicants who would most likely be affected by this would be from outside Europe and therefore not necessarily warned in advance.

The Adminstrative Council have obviously been listening to these complaints about the apparent uncertainty and downright unfairness of aspects of the new rules, and have now issued some further decisions. These include:

• CA/D 16/10 amending Rule 36, entering into force as of 26 October 2010; and
• CA/D 12/10 amending Rules 161 and 162, entering into force on 1 May 2011.

The first of these addresses the issue of which communications start the two year period by specifying in new Rule 36 that the time limit is "twenty-four months from the Examining Division's first communication under Article 94, paragraph 3, and Rule 71, paragraph 1 and 2, or Rule 71, paragraph 3, in respect of the earliest application for which a communication has been issued".

The second decision addresses the issue of the short period to respond under Rules 161 and 162 by making the period six months instead of one.

If all that wasn't enough to be more cheerful about, the Administrative Council have also issued a further decision CA/D 2/10 that addresses some concerns about what should happen if a communication under Rule 71(3) (a notice of allowance issued by the examining division) is not agreed with by the applicant. A revised Rule 71 and a new Rule 71a, along with revisions to Rules 82 and 95 relating to the equivalent situations for oppositions and limitations, allows for a reasoned response to be made with amendments or corrections, followed by approval by the examiner. These changes do not come into force until 1 April 2012, but will then apply to all communications issued on or after that date.

laden ladenfam goes to see the President

Last night laden ladenfam went down to London, not to see the Queen but to see the President of the European Patent Office, Benoît Battistelli at UCL (mentioned here on the EPO website, and now with the full text of the speech). M. Battistelli was in London to ask, and then answer, two questions. (1) How can Europe be a key player at a global level in the patent field? (2) What is the role of the EPO? laden ladenfam was fairly certain he knew the answer beforehand to the second one, but wasn't quite clear about the first one, and was pleased to have it answered.

M. Battistelli had much to say on the subject of how Europe not only can be a key player at a global level in the patent field but also how the EPO in particular is playing a key role throughout the world at the moment. A selection of facts and statistics were brought out to warm the audience to the theme of what the EPO were all about, including:

• The EPO is a central granting agency that can (theoretically, at least) grant patents that cover up to 40 countries including a total of 600 million people. Language difficulties, however, made getting this maximum protection expensive and complicated.
• 210,000 applications were filed in 2009, down 8% on 2008 but rising again after a 4% increase in the first 10 months of 2010, with growth expected to continue in the years to come.
• Pendency times for search reports with written opinions compared well with other patent offices, with the EPO tending on average to get them out within 6 months for first filings. For second filings the numbers were higher at around 27 months, but compared to between 40 and 60 months for other offices.

What was apparently most important as far as M. Battistelli was concerned was to improve quality, which is a hard thing both to define in patents as well as to achieve. The aim of the EPO was to obtain maximum legal certainty so that patents could be granted that were as legally secure as possible. The EPO was not, and should not be, concerned about the economic value of any particular invention, which was purely the business of applicants. The 'raising the bar' initiative of his predecessor was discussed, a sometimes controversial scheme having an overall aim of being more selective in what was granted through being more rigorous in applying existing patent law, as well as tightening down on some rules (which has certainly caused some controversy among the patent profession recently).

A particular problem the EPO faced, in M. Battistelli's view, was that it could be seen to be acting more for the applicant's side, when what should happen is that a balance between applicants and third parties had to be struck in each case. Economic players were much more likely to be third parties than applicants, even in the case of the large patent filing applicants. As a result, the interests of third parties had to be taken into account, and applications granted only for those inventions that really deserved the monopoly rights that resulted, bearing in mind that such monopolies were an exception to the general rule of free markets.

Costs had to be 'carefully controlled', which meant that applicants should not fear added costs and should also not face unnecessary additional burdens. M. Battistelli added that there was no intention to increase fees, bearing in mind the ability of a monopolist to keep raising their prices (but he unfortunately gave no particular timescale for how long this would apply). The EPO's apparent mission at the moment was to not add unnecessary costs to the already expensive process of granting a patent. [At this point, the patent attorneys among laden ladenfam's readers might have something to say, given recent developments.]

There was some discussion of current projects that the EPO was involved in, which included those within Europe such as the ongoing discussions regarding an EU patent system (laden ladenfam is not holding his breath on this one). Languages, of course, were the most difficult issue. M. Battistelli considered that the solution was to use more machine translations. An interesting point made was that there is already a very large database of professionally translated patent documents, which could be used as source material for much improved machine translation systems. The purpose of all this would be to facilitate access to content, which would be useful to examiners as well as other users of the system, particularly as countries such as China become ever more important as sources of prior art.

The EPO has over the years developed its own system for searching and examining applications, and has been successfully exporting these systems both within Europe to national offices and to the rest of the world. Various IT tools for examination developed at the EPO were being used at the national offices in Europe, and the EPO was exporting the European model elsewhere, one notable case being China, where the system developed at SIPO over the last 25 years was largely based on following the European model.

Finally, mention was made of the recent and ongoing fashion for patenting 'green' technology, to which the EPO has contributed their assistance. In particular they helped out at last year's Copenhagen summit to try to defuse the argument about whether patents helped or hindered development of such technology [an argument that was largely had, as far as laden ladenfam could gather, between people who knew very little about patents and even less about real science]. The answer was, of course, a mixture of both and that patents were not the problem but were part of the solution. There was a strong concentration of patents in large industrial hands, which was to be expected, but there were some surprise findings in the EPO's recent report on the subject, such as the level of innovation from countries like Brazil, China and India. The EPO has now created a new class for green technology, specifically relating to energy. Whether this means anything in the long run is yet to be seen, in laden ladenfam's view.

In conclusion, M. Battistelli's main point was that the duty of the EPO was to ensure that the economic tool of granting patents for inventions was delivered as efficiently as possible.

laden ladenfam thinks that M. Battistelli came across as a President with a very clear idea of a central mission for the EPO, which certainly sounds like a good thing. laden ladenfam does not necessarily agree with every initiative that the EPO comes up with and, along with one or two others in the audience, thinks that the process leading up to rule changes in particular could be made a bit more transparent and consultative. He does, however, think that M. Battistelli should do well in his time as President and wishes him the best of luck.

T 784/06 - "technical effect" reaches bioinformatics

laden ladenfam has been prompted by the EPLAW Patent Blog to read a recent EPO decision, who in turn have been prompted by none other than Stefan Steinbrener.  This name will be familiar to all those who have been keeping a close watch on developments at the EPO leading up to the recent Enlarged Board decision of G 3/08 (commented on by Tufty here, among many others).

The decision, T 784/06 (currently available via the EPO register for application 95906094.8), relates to an application that was originally filed in 1994 for a method of automatic genotype detection.  The method used probability distributions to determine a particular genotype at a locus within genetic material obtained from a biological sample. The actual invention, however, was really all about a mathematical method carried out on a computer, which allowed the probability distributions to be assessed and a result obtained.  If this is all starting to resemble the invention in Vicom, you are already on the right lines.

(Right: the code in question. Can you make any sense of it?)

As a result of the mixture of 'technical' and 'non-technical' features in the claimed invention, the Board took into account the type of analysis normally carried out for computer-implemented inventions.  The applicant argued that the mathematical parts of the claim contributed to the technical effect of the invention, and should therefore be taken into account when assessing inventive step.  The opponent, however, argued that the mathematical parts "did not require any further technical considerations" and were to be disregarded in the assessment of inventive step.

The Board considered that the correct assessment to be made was that from decisions such as T 641/00 (Comvik) and T 154/04 (Duns Licensing), both of which related to computer-implemented inventions.  The question to be answered was whether the claimed invention in the field of biotechnology having a mix of technical and non-technical features could be inventive.  Non-technical features such as mental activities could be taken into account when assessing inventive step, provided they "interact with the technical subject matter of the claim for solving a technical problem and thereby contribute to the technical character of the claimed subject matter" (reasons, point 4).  For assessing inventive step therefore, the question was whether the mental activity steps of the claimed invention interacted with the technical activity part to yield a tangible technical result.  The applicant argued that they did, and the opponent that they did not.

All this was, as far as laden ladenfam was concerned, quite conventional and straightforward.  The Board, however, then threw something of a googlie in deciding that the non-technical steps were only generally formulated and not well described in the specification.  The specification did not provide a reasonably complete and sufficient description of the software, and this was not remedied by the mathematical formulae or the extract of code provided.  As a result, no interaction could be established between the mental activity steps of the claims and the technical part, and these steps could be ignored when assessing inventive step.  The claimed invention therefore lacked an inventive step, since the technical part was disclosed in documents cited during proceedings. The patent was revoked.

(Left: Or perhaps the real invention was just too simple?)

laden ladenfam thinks that this is decision is an important one, but perhaps not as important as it could have been.  The Board's reasoning relating to the non-technical parts of the claims being insufficiently described seems to be a bit unusual, and tends to put the whole decision in a strange light.  laden ladenfam suspects that the Board had decided that the claimed invention should not be allowed but were struggling to find sound reasons to reject it in light of the arguments presented. However, the decision highlights at least two important points.  Firstly, that the case law relating to computer-implemented inventions can certainly be applied to the field of bioinformatics.  Just because an invention is classified in the biotech field does not mean that the invention has to be assessed according to the case law relating only to that field.  Secondly, if an invention is to rely on computer-based processing steps including mathematical methods then the disclosure needs to be as full as possible, and preferably described in a way that makes it understandable to someone outside the field of software coding.  A few lines of impenetrable computer code and a couple of equations does not necessarily amount to a sufficient disclosure of the invention.  laden ladenfam, who also could not make much sense of the invention as disclosed in the specification, wonders whether a different outcome could have been obtained if it had been more fully described or simply better explained.

Friday Foghorn

In addition to marking the 42nd anniversary of the foundation of NASA, today is also the day that the EPO gains its 38th Member State as Serbia accedes to the European Patent Convention. An extension state since November 2004, Serbia deposited its instruments of accession on 15 July 2010 and started the final steps towards becoming a full-blown member of what the EPO proudly proclaims to be "the largest transnational patent system in the world".

Patents Events at IBIL, University College London

Nestled within laden ladenfam's upcoming events pages, it is now possible to find two irresistible nuggets of patent-interest (pronounced with either a long or short 'a' as the mood takes) from UCL's Institute of Brand and Innovation Law.

The first up is also a first of other sorts, as laden ladenfam can exclusively reveal (although unfortunately cannot yet provide the exact details of) the fact that on the 8th of November 2010, Benoît Battistelli (right), the new President of the European Patent Office, will be giving a public lecture at UCL - his first in the UK since stepping into his new role. The event will be held in UCL's Cruciform Lecture theatre, exact details are yet to be finalised (and will be posted by laden ladenfam when they are), but for those with an interest in patents it's a date for your diaries.

The second event in UCL's November patent-fest, is the Institute of Brand and Innovation Law's annual Innovation Seminar. This year, the event is to be held on the 17th of November. Things start a little later than usual, with drinks before the event rather than after. Refreshments are available from 5:45, with the event commencing proper at 6:15.

The title is Patent Claim Interpretation. Speakers are:

• Professor Dr. Peter Meier-Beck: Presiding Judge at the Bundesgerichtshof, Karlsruhe, Germany, and Honorary Professor at the Heinrich-Heine-Universität, Düsseldorf;
• Professor Dan Burk: Chancellor's Professor of Law, University of California, Irvine;
• Dr Matt Fisher, UCL IBIL

Daniel Alexander QC, of 8 New Square is in the chair.

For the Innovation Seminar on Patent Claim Interpretation, click here: but be warned - places are going fast!

It's EP divisional crunch time

laden ladenfam should not need to be reminding his patent attorney readers about this, but tomorrow 1 October 2010 is the final day in many cases for filing divisional applications at the EPO (see laden ladenfam's previous post here for a good starting point), as a result of the EPO Administrative Council decision CA/D 2/09.

Even though applicants and attorneys have had over a year to prepare, there will inevitably be something of a last minute rush to make sure all those divisionals that might be needed are on file by midnight tomorrow.  Will the EPO's fax machines and online system manage to cope with the load?

laden ladenfam knows that many hard-working people both at the EPO and within patent attorney firms will be struggling at the moment to cope with the excessive load of applications, and would like to express his sympathy for all those adversely affected.  He would be interested to hear any stories of how things are going (or not, as the case may be).  If you have the time, please chip in using the weblog's comment facility (anonymously, if necessary).

As a final tip, according to the Notice of the President dated 12 July 2007 (Special Edition No. 3, OJ EPO 2007), applications can be filed at the EPO's offices in Munich, The Hague or Berlin, in particular at the following fax numbers:

Munich
+49 (0)89 2399-4465
The Hague
+31 (0)70 340-3016
Berlin
+49 (0)30 25901-840

Other things to do in Munich on 1 October here.

1 October 2010 Update: Thanks to a comment, laden ladenfam has been pointed to this notice from the EPO, which states:

"The European Patent Office (EPO) has been informed of an email containing a hoax announcement purporting to be from the EPO in which the public is given the impression that the Office's fax and online filing services will not be available from 30 September 2010 to 6 am on 4 October 2010, due to maintenance and updating of the Office's telecommunication facilities.

The European Patent Office informs all concerned that this notice is completely false and that all electronic filing facilities at the European Patent Office (online and fax) are fully available.

The Office reserves the right to take legal steps against the person(s) who disseminated this false information."

laden ladenfam, who has not had sight of this email, is intrigued. Can anyone shed any further light?

G 1/09: When is a patent application pending?

Once a patent application has been filed, and before it has been granted, refused or withdrawn, the application is considered to be "pending", i.e. awaiting some further action before a final decision is taken.  One thing that can only be done while a European application is pending is filing of a divisional application.  If the application has already been granted, or has been refused or withdrawn, or if the two year period under Rule 36 has passed, it is too late.  Or is it?

A strange situation arises in the case of an application that is refused at the end of oral proceedings at the EPO.  At that point, one would think, the application becomes no longer pending and, consequently, it is no longer possible to file a divisional.  However, if an appeal is then filed against the decision the application miraculously becomes pending again, because otherwise a final decision by an appeal board could not be taken.  

The question then is: is a European patent application that has been refused at oral proceedings still pending during the time allowed in which to file an appeal?  Does it even matter if an appeal is filed to make the application pending again? 

This was the situation for EP application 01102231.6, which was refused by the examining division in oral proceedings held on 23 November 2005.  On 14 December 2005, the applicant filed a divisional application, i.e. within the time allowed for filing an appeal against the decision. They did not, however, file an appeal in time.  

The EPO then took the view that, because the pending earlier application has been finally refused, the application could not be processed as a divisional.  The EPO issued a decision to this effect, which the applicant then did appeal against.  

In decision J 2/08, the board of appeal decided that they could not decide on the meaning of the word "pending", and instead decided to refer the following question to the Enlarged Board of Appeal:

"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(2) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"

At this point, laden ladenfam thought that there were good arguments either way, and could not decide himself which way the question should be answered.  It did seem, however, a bit odd that an application could be considered to have been pending only in retrospect, which would be the inevitable result of the EPO's apparent view in 2006.

After a mere 16 months of deliberation, the Enlarged Board have now issued their decision, which is available via the EP register for the divisional application 05027368.9, and presumably shortly to appear on the EPO decisions page.  To cut what is a long story short (there is much pontification in the decision, which laden ladenfam's readers can peruse and comment on at their leisure), the Enlarged Board concluded:

"[U]nder the EPC a patent application which has been refused by the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed.  The same conclusion applies to Rule 36(1) EPC 2000 both in its former and its current version."

Or, in other words, in answer to the actual question raised: yes.


We can all now breath a sigh of relief, and get back to all those divisional applications that have to be filed by Friday.  


laden ladenfam thanks Simon Roberts (BT) for the tip.