Tuesday, 25 October 2016

New EPO Enlarged Board referral: does the gold standard apply to a bitten apple?

If claim 1 of your application or patent encompasses subject matter in the prior art, you have to do something about it. Usually this means limiting the claim using subject matter found from somewhere in the application as filed. If the prior art only counts under Article 54(3) EPC, you only have to make the resulting claim novel. Any amendment though has to comply with Article 123(2) EPC, in that it must not contain subject-matter which extends beyond the content of the application as filed. A usual way of limiting a claim would be to add a narrowing feature, making something in the claim more specific. Sometimes though, the only option is to disclaim a part of the invention by explicitly stating that a certain portion is excluded.
"Gold bitten apple" by Teodor Dukov 

The Enlarged Board in G 1/03 decided that disclaimers to exclude "accidental" A54(3) prior art were allowable, but only where anticipation was "so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention" (point 2.2.2 of the reasons). This allowed a disclaimer to be made that would otherwise fall foul of A123(2), but only in quite limited circumstances.

A further Enlarged Board decision in G 2/10 related to disclaimers, but instead to those that were disclosed in the application as filed. The Board did, however, state that the test to be applied is "whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed" (point 4.5.4 of the reasons). This test was, according to G 2/10, the generally accepted "gold standard" for assessing any amendment for compliance with A123(2) EPC.

The question then arises whether the gold standard must also be applied to the type of undisclosed disclaimers that would otherwise be allowable under G 1/03. This situation has arisen in the appeal case, T 437/14, for which a decision has recently issued. The Board has decided to refer the following questions to the Enlarged Board (which will presumably be numbered G 1/16) to decide the issue:
1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?

2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?

3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?
The issue in this case related to a claim to a range of chemical compounds, in which two disclaimers were introduced during opposition and appeal proceedings. These disclaimers were made to confer novelty over two cited documents, but there was no specific basis in the application as filed for them. Following the test in G 1/03, the Board concluded that the disclaimers did meet the accidental disclosure test, and that the resulting claim was novel, inventive, sufficient and clear. The only question remaining was whether the gold standard mentioned in G 2/10 should also be applied. In some previous cases only G 1/03 was applied, while in others the gold standard was used, resulting in an inconsistency that needed to be resolved.

In the Board's view, applying the gold standard of G 2/10 regarding A123(2) would result in the disclaimers not being allowable for the case in point (point 10.2 of reasons). The disclaimers would only be allowable if either only the G 1/03 standard was to be applied to accidental disclaimers or if some modified form of the gold standard test was to be applied.

The Board gave a simple example to illustrate their reasoning. If one takes a bite out of an apple, what remains is recognisably no longer the same apple as the original one. Even though it is still an apple, the apple with the bite taken out of it cannot be regarded as explicitly or implicitly, but directly or unambiguously, "disclosed" in the original apple (point 8.1 of the reasons). The strong suggestion from the Board therefore is that the test in G 1/03 alone is not enough.

Thankfully I do not have to deal with chemical cases where these kinds of issues most often arise, largely due to the way that chemical compounds are often very broadly defined in claims. It has, however, always struck me as a bit odd that an amendment could be made to a claim that had no basis at all in the application as filed. I wonder whether the Enlarged Board will think it odd as well that such a decision could have been made, and set aside G 1/03.

Thursday, 13 October 2016

Sofosbuvir EP opposition - an update

As I reported in February last year, Gilead's European patent EP2203462B1 to sofosbuvir (Sovaldi) was opposed by various organisations, the first of which was M├ędecins du Monde (MdM). Their main reason for opposing the patent seemed to be that Gilead was charging a high price for the drug, which is effective for treating Hepatitis C. The opposition has recently concluded, following oral proceedings earlier this month. A press release issued on October 5th indicated that MdM's opposition was partially successful, and that "the quality of the patent was weak". Details of how exactly the patent fared as a result of the opposition were, however, missing, except for a mention that "the patent extended beyond the content of the patent application as filed" (suggesting an Article 123(2) issue). Another report from IP Watch did not provide much in the way of further illumination, and as yet there has been no word from Gilead or the EPO on the outcome.

The decision and minutes of the oral proceedings have not yet appeared on the EP register for the case, and are unlikely to do so for some time. It can, however, be inferred from what has already been said, and in particular a document that has appeared on the register, what actually happened.

In their preliminary opinion, issued on January 28, 2016, the opposition division indicated that claim 1, corresponding to the racemate (shown here), had been specifically disclosed in the application as filed. Claims 2 and 3, however, which were directed to the enantiomers (or diastereomers - see the comment below), did not appear to be disclosed. Whether the disclosure was sufficient to disclose the enantiomers was something that was due to be discussed at the oral proceedings.

Gilead filed a large number of auxiliary requests, the first of which had a set of claims that had been amended to define the enantiomers instead in terms of the slow and fast eluting isomers obtainable by a specific method that was disclosed in the application. The clue that this succeeded at oral proceedings is this document, issued shorty after the proceedings, that contains amendments made to the summary of the invention, and indicating that this corresponds to the first auxiliary request. This shows that claims 2 and 3 have been removed from the application, clearly indicating that claim 1 survived, but that the specific claims to the enantiomers did not.

As a result, the patent seems to me to have survived pretty well, and not really limited in any substantial way. It will, of course, be irritating to Gilead that the specific claims to the enantiomers have gone, but the patent as amended would still protect the drug. Reports (such as this one, for example) that suggest generics may be able to enter the market sooner than expected, therefore seem to be a bit wide of the mark.

Tuesday, 6 September 2016

Sofosbuvir revisited - a chemical puzzle

I last wrote about the blockbuster drug sofosbuvir in February 2015, around the time when a few oppositions were being filed against Gilead's European patent for the drug. The oppositions are currently going through the usual procedures at the EPO, and oral proceedings have been scheduled for 4-5 October 2016. From a quick look at the preliminary opinion of the opposition division, it looks like the patent will be upheld. With ten opponents and a huge amount of material on record, however, it still looks like a Herculean task for the patentee.
Chemical structure of sofosbivir (Wikipedia).

In the meantime, however, I noticed a recent article about a claim being made in the US that a patent owned by the University of Minnesota is infringed by the drug. The article does not mention the patent by number, but after doing a bit of simple searching I think it could be US6475985, titled "Nucleosides with antiviral and anticancer activity", which was granted to the University in 2002 (and was, incidentally, not cited as prior art in the EP oppositions), considerably before the earliest priority date for the sofusbuvir patent in 2007. Claim 1 of this patent reads as follows:

There are other independent claims that are directed to a chemical compound, rather than to a therepeutic method, but claim 1 does seem to have at least the use of sofosbuvir within its scope. It is, however, a bit of a complicated puzzle to figure out whether it does. Can anyone confirm this?

Tuesday, 19 July 2016

Negative IPO Opinions - The Story So Far

Since 1 October 2014, when section 73 of the UK Patents Act was amended to allow for revocation to be initiated by the comptroller following a negative opinion on validity, a total of 13 opinions have issued where an examiner has concluded that a patent is either lacking in novelty or inventive step. This is out of a total of 42 requested opinions that reached a conclusion, 25 of which related to validity.

A first point worth noting is that these numbers are quite small, suggesting three possible reasons: i) people are reluctant to use the opinions service, possibly due to the public nature of the procedure; ii) the service is still not well known, even though it has been around for several year now; and iii) that there is just not very much contentious action around in the UK. I suspect the main reason is the first one, as many will be unwilling to put questions of validity or infringement before an examiner and have it decided on the papers alone, with the result being publicly available, even if the resulting opinion "shall not be not binding for any purpose" (section 74A(4)).

A second point worth noting is that the hit rate of a finding of invalidity, with 13 out of 25 opinions finding the patent to be invalid, is about 50%. If you are looking to use an opinion as a card to play in negotiations, this is not a bad hit rate. Sometimes, of course, a positive opinion can be useful too, particularly if the question is framed in the right way, as I know from personal experience relating to this one.

According to section 73(1A), the comptroller may revoke a patent if an opinion finds that section 1(1)(a) or (b) is not satisfied, i.e. if the claimed invention lacks novelty or an inventive step. He cannot, however, do so until any review under section 74B has been concluded, or once the three month period for requesting a review has passed.

It has now been nearly two years since the new procedure started, so how many patents have actually been revoked using section 73(1A)? Of the 13 negative opinions issued to date, only two have resulted in the patent in question being revoked (EP1837182 and GB2508152), although another one (EP2160936) should be revoked shortly, which I wrote about here [UPDATE 17 August 2016: it has now been revoked, confirmed by this letter from the IPO]. Three other opinions (relating to GB2493904, GB2487996 and EP2124945) resulted in the Office deciding to take no action, with no amendments being made to the patent, while for two others (EP1657072 and GB2503963), no action was taken following amendments being made. The remaining five (relating to GB2493904, GB2480275, EP0736030, EP1472164 and EP2018153) are currently awaiting a decision, four of these being within the 3 month review period, with the other one (GB2493904, which I have posted about before here) having been delayed due to arguments and extensions of time.

Although the overall count may change over the next few months once a few more decisions are made, the impression I get so far is that automatic revocation is likely to remain a rare option for the Office to take, and an option that is only taken when the case is very strong and/or if the patentee does not put up any fight. If the case for revocation is strong, a sensible patentee will be well advised to consider making amendments, either before the UK Office or, if applicable, centrally at the EPO. If the case is less strong, the advice would probably be to put up a fight to try to get the Office to back down, which they seem likely to do in most cases.

Tuesday, 12 July 2016

Partial Priority - An Alternative View

I have written a lot about partial priority over the past few years (to see all of my posts on the subject, click here), and have always allowed conflicting views to be expressed about the subject, for example in various comments on the subject as well as in this post that expresses a view opposed to my own. The discussion to date has, however, been largely about which side should be taken on the issue of whether partial priority should be allowed for a generic claim, i.e. whether a broad or narrow view should be taken, and always within the framework of the EPC and associated case law. This will, of course, determine the outcome of the currently pending G 1/15 case. There are, however, other perspectives that can shed different light on the subject, one of which has been recently published in epi Information.

The article, titled "The History of Partial Priority System of the Paris Convention", by Kazuo Shibata, a Principal Examiner at the Japan Patent Office, goes through the long history of claiming priority for patent applications, going back to the Great Exhibition of 1851 in London. The author then provides details of the various legal developments, and reasoning behind them, that occurred throughout the world up to the establishment of the European Patent Convention in 1973. A key theme of the article, and what appears to be a favourite subject of the author, is what is described as the "umbrella theory" of priority (illustrated by the picture here, taken from the article). This theory, which apparently originated in Germany, was intended to protect an application from being affected by disclosure of the content of its priority document if it covered a combination of features that included subject matter in the priority document. Interestingly, this protects a combination of A+B as well as A OR B from being attacked by disclosure of A in the priority document.

As the author notes, umbrella theory has not been widely taken up, and appears now to be inconsistent with UK and EPO case law. It does, however, provide an interesting different perspective on the question of whether an invention can enjoy partial priority. The author ends with a scenario that he asks the reader to consider, which is similar to some of the scenarios considered in G 1/15. I my view, the scenario makes sense whether the broad view of partial priority is taken or the umbrella theory view is taken, but the author does not yet have an answer himself. I wonder if anyone else can take a view? Is umbrella theory simply outdated and no longer relevant, or does it have a part to play?

Tuesday, 7 June 2016

G 1/15: The wait is nearly over

The EPO Isar building in Munich on a lovely sunny day. 
As I mentioned in an earlier post a couple of months ago, I arranged to get out of the office to attend the oral proceedings for the Enlarged Board (EB) case of G 1/15 on partial priority that were scheduled for 7 & 8 June 2016. As it turns out, the second day is not now going to be needed, because the EB concluded the proceedings at just before 3pm today, following just a few short hours of submissions and brief discussions from each side.

Although the EB did not give any clear indication of how they were going to decide the matter (unlike in lower board of appeal cases, where a decision is normally announced at the end of the proceedings), there were some clues as to how things might turns out. What follows is a brief, and necessarily biased, view of how the proceedings went. It is biased, not only because I have a clear opinion on how the issue should be settled, but because the respondent spoke only in German, with interpretation not being provided for attending members of the public (I even asked, and was bluntly refused, even though there were several spare headsets available), and my understanding of German was just not good enough to closely follow the respondent's speeches. Thanks to other attendees, however, I managed to get at least the gist of what the respondent's arguments were, and they did not seem to be much different to what had already been presented in written arguments and elsewhere. Following several years of discussing the various arguments regarding partial (and poisonous) priority, there was in any case unlikely to be anything that came up today that hadn't already been said somewhere.

The issue, just to remind those that haven't been following this for the past few years, is about whether a claim in a European patent (or application) that does not have a full right to priority can be knocked out by publication of the priority application as another European application. If the European application claims something more broadly than is disclosed in the priority application, can this narrow disclosure be Article 54(3) prior art for the later application? The issue was first set out in 2011, and has been discussed many times on this blog, so I won't say any more about it (you can in any case view all of the relevant posts here if you want to catch up).

Following submissions on the case that were provided by the appellant (Infineum), the opponent/respondent (Clariant) and on behalf of the EPO President, along with quite a few amicus briefs, all of which are summarised in my earlier post here, the EB invited all these parties to the hearing to set out their case. They did not, however, set out any preliminary opinion or agenda of things they wanted to discuss, which was fairly unusual for any Board of Appeal case. Whether this meant that they had already made up their mind and were just going through the motions is impossible to tell, but might I suspect be fairly close to the truth, given how things turned out on the day.

The EB was made up of seven members, with F. Blumer and I. Beckerdorf as legally qualified members, W. Sieber and H. Meinders as technically qualified members, P. Carlson as an external legally qualified member, C. Vallet as a further legally qualified member and rapporteur, and W. van der Eijk as chairman. The chairman kicked off proceedings just after 9am by reading the questions that had been referred to them in decision T 557/13 of 17 July last year (which I wrote about here). These are:
1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document? 
2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim? 
3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject- matters" to be interpreted and applied? 
4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim? 
5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?
The chairman noted the importance of the questions raised, which was emphasised by the submissions provided by the parties and the fact that there had also been 33 amicus briefs filed (which thankfully matches my last count of 36 in all). The EB had studied the submissions and taken note of them, so didn't want to hear all of the arguments again but wanted to hear anything that had not been already set out. This might have made the proceedings very brief indeed, as there really wasn't anything else to say that had not already made it to the file, but all sides had a go anyway, as you might expect.

An important point to note is that the Chairman made it clear the referral was considered to be admissible, because it related to a point of law of fundamental importance and on which there was a clear divergence in the case law. There was therefore no need to discuss the question of admissibility (unlike, for example, the case of G 3/08, which I was to a small extent involved with), and none of the parties raised this in their arguments.

The submissions started with Infineum, whose representative Richard Hart went through the various key points as he saw them relating to the questions. One of the more general points raised was that, from the industry context, it had to be recognised that inventing was difficult and did not stop with the first filing. It was therefore very common for an invention to change, and possibly broadening, during the priority year. Having an effective bar to being able to broaden the resulting claims in a patent would result in the patenting system being far too harsh on the applicant, who typically would have spent a lot of effort getting to the point of filing a patent application, and would have done much else that did not result in one. A strict approach to partial priority could therefore act against the interests of the system, as well as being unreasonable in allowing a patent to act against itself. There was a general principle that the scope of a patent should be commensurate with the contribution. If a broader contribution, backed up by further work in the later filed application, could not be protected, this pulled in the opposite direction.

On the substantive legal points, Mr Hart set out the usual arguments starting from Article 88 EPC, which should be interpreted according to the travaux preparatoires, mentioning the now famous FICPI Memorandum, which set out the legislative intent behind Article 88(2), second sentence. Using the memorandum was one way of figuring out how to interpret the legislation, while another way was to consider indirect interpretations based on the Paris Convention, which the EPC was a special agreement within. Article 32 of the Vienna Convention specified supplementary means as a way of interpreting, which the memorandum certainly was. A key point relating to this is that the examples in the memorandum could only be reconciled with the conceptual approach to partial priority, whereas the strict approach could not. There was then a lot of discussion about Articles 4F and 4G of the Paris Convention and commentary by Professor Bodenhausen, during which the EB appeared to be getting a bit bored, and which I will not bore you further with.

The key points to Mr Hart's submissions appeared to be, as we have seen before, that the conceptual approach is the only one that can be made consistent with everything else, including the concept that the test for novelty is essentially the same as the test for priority. If the tests were to be different, which they would need to be if the more strict literal approach were to be taken, then the test applied for assessing priority would result in nonsensical results for novelty. The proper test was, as with that for novelty, to compare the disclosures and determine the boundary of the claim, then determine what falls within the scope of the claim. The decision in G 2/98 could be viewed, as the respondent had done, that a new more restrictive test was being laid out on partial priority, or that it wasn't. It was, in Mr Hart's view, more likely that the EB in that case were not trying to set out a new test, and that later decisions were simply a misunderstanding of what was meant by "a limited number of clearly defined alternative subject-matters" in point 6.7 of the reasons. The later decision of T 1222/11 was the first one to have properly considered how this should be aligned with the EPC, setting Article 88(2) in its proper context.

After a short break, the opponent/respondent, represented by Mr Mikulecky, was given his turn to set out his case. As I mentioned above, I was not able to follow his arguments very closely, but the gist of his case was that the more strict approach to partial priority should be followed because G 2/98 had set out a new test to be met. The fact that this could not be reconciled with at least some of the examples in the memorandum was, in Mr Mikulecky's submissions, a sign that, although the legislative intent was clear when the EPC was first drafted, times change and the intent changes with them. If I am understanding this correctly, this seems to me like a very strange argument, because if G 2/98 was trying to set out a new interpretation of Article 88(2) EPC it would have said so rather than just referring to the memorandum as expressing the legislative intent without making it clear that this was no longer the case.

Another point made by Mr Mikulecky related to the consequences of taking the strict literal approach. In his submission, these consequences were just a feature of the system, and had to be dealt with by better drafting. If the invention had been broadened out during the priority year, the applicant just had to take more care when preparing the later application to make sure that there was sufficient basis for all separable embodiments. In my view, this is a more sensible argument, although still wrong because it would inevitably lead to applicants having to include ever increasing amounts of what effectively amounts to boiler plate language to make sure that all embodiments were either claimed or disclaimed. This was surely not what the legislator intended, and is definitely contrary to the memorandum, which makes it quite clear that the main reason for allowing multiple priorities is to prevent this sort of thing being necessary.

The EB then gave the EPO President a chance to express his views. Unfortunately, whether out of time pressures or fears for his own safety, the President himself could not be there. He did, however, send a couple of representatives, who did the job for him. As with the written submissions, the President did not make it entirely clear which side of the fence he was on, although it seemed that he was more in favour of the conceptual view than the strict literal view. Apart from some comments about the EPO requiring an approach that was practical and not over complex, and that not allowing priority for a part of a claim that was not spelled out as such was contrary to common practice, the President did not have much further to say of substance. There was, however, a comment about the adverse consequences of following the literal approach, which would inevitably lead to increased complexity in applications and a consequential increase in legal uncertainty for third parties.

After lunch, each of the parties were given an opportunity to respond to what the others had said earlier. Not much of interest was raised at that point, but there was an odd discussion about what would be the consequences of leaving out a chunk of the priority document in a later filing, on which priority depended. I suspect this is not going to be a key feature of the EB's reasoning, so I will leave it there.

Finally, after a short break while everybody went outside as a result of a fire alarm (pictured right; it turned out the EPO was not on fire, and the alarm was probably just some building work setting it off), the EB had a chance to ask some questions. Only five of the members asked any questions, and this took up the final 20 minutes or so of the proceedings. The impression I got from this was that the EB did not really need to know any more from the parties, and had therefore probably already made up their minds. The most interesting question, in my view, came from the Chairman, who asked the respondent how the intent of the legislation could have changed over the 40 or so years since it was prepared. What had made this intent change? The questions, along with the body language of the EB members, which seemed to express boredom with the appellant and annoyance at the respondent, gave me the general feeling that they were largely sceptical of the respondent's arguments.

At the end, the Chairman announced that a decision would be made "as soon as possible" (which raised a small ripple of laughter from the audience), but that this would be by November this year. This fits with the impression I have gathered previously from discussing the issue with people from the EPO, who think that this is an important issue that needs resolving soon. I might as well stick my neck out now and say that I think the decision will be in favour of the appellant, and the answer to question 1 is likely to be either a clear "no" or possibly a "no" with some very limited caveats. The answer to question 5, which I suspect the EB will deal with at least partly as a separate question and not necessarily dependent on question 1, will be a clear "no", regardless of how the answer is arrived at. We now only have a few months to wait. I will, of course, write about it as soon as I hear.

Any comments on the above would be gratefully received, particularly if they go over any points that were raised at the hearing but that I have not covered.

UPDATE 9/6/16: Here's a tweet from me asking for your opinion on what the answer to question 1 is going to be. Just a bit of fun, but it would be interesting to see what your view is. Please vote!

UPDATE 22 June 2016: The minutes of the oral proceedings have now appeared on the EP register here. They are a bit more brief than my report, and the only useful piece of information is the confirmation that the EB will be issuing their decision by November.

Wednesday, 25 May 2016

T 1785/15 - If you're reading this it's too late

The end of the examination procedure at the EPO starts with a communication under Rule 71(3) EPC, which informs the applicant that the examining division is prepared to grant the application on the basis of an accompanying version of the application text. The text intended for grant (a.k.a. the druckexemplar) is typically an assembly of the originally filed application, together with any amendments the applicant has made along the way, and usually with further amendments made by the examiner. Examiners often make amendments to tidy up the application so it complies with the EPC, such as inserting a characterising clause to comply with Rule 43(1)(b), mentioning a relevant document to comply with Rule 42(1)(b) or amending the description to conform with the claims (Article 84 EPC). Normally the examiner's amendments are fairly easy to identify and a decision on whether to approve them is straightforward. If any are not acceptable, for example if the examiner gets something wrong, it is always possible to respond with a request under Rule 71(6) to have them changed. If the changes are minor and unlikely to be a problem, the right to receive a further communication under Rule 71(3) can be waived, and the application can then go on to get granted without further ado.

All this is straightforward and well known, at least to European practitioners. An important point to note is that the communication under Rule 71(3) is the applicant's last chance to get things right before the application gets granted. Approving the text for grant is therefore not something to be taken lightly. Examiners, applicants and even patent attorneys can make mistakes and this is the opportunity to correct any that might have been made. An applicant that responds to a Rule 71(3) communication without first checking carefully that everything is how they want it to be is running the risk of not getting what they want and not being able to do anything about it afterwards. As the Enlarged Board decision of G 1/10 made clear, errors made by the applicant during prosecution cannot be corrected after grant, which can prove fatal to the resulting patent. Possibly more importantly, errors made by the examiner that have been approved by the applicant at the Rule 71(3) stage also cannot be corrected after grant. As stated in G 1/10, the responsibility for any errors remaining in the text after grant is the applicant's alone, whether the error was made by them or by the examining division.

A recent decision, T 1785/15, has emphasised the need to be careful when considering whether to approve the text for grant. The application, 09756869.5, entered the European regional phase in 2012 and the applicant made some amendments to the claims the following year in response to the international written opinion. The examining division then issued a communication under Rule 71(3) in February 2015 with a clean and marked-up version of the text. Substantial changes were made to the claims, together with a few formal changes to the description. The applicant then paid the grant fee and filed translations of the claims into French and German within the usual four month period. Only after a decision to grant was issued did the applicant point out to the examiner that the claims contained errors. By that point, however, it was too late to do anything about it. The applicant's attorney, who somehow got the impression from the examiner that the decision to grant could be appealed, filed an appeal against the decision to grant.

The Board first pointed out that appeals could be filed by any person adversely affected by a decision (Article 107 EPC). By approving the text for grant, the applicant had signalled its approval, leaving no room for the notion that they were adversely affected by the decision to grant. Rule 140 EPC allowed obvious mistakes in decisions to be corrected but, as G 1/10 set out, this was not available for correcting the text after approval by the applicant. The applicant's request for a correction was therefore inadmissible. Normally this would not mean that the appeal fee was refunded, since the applicant should have known that the appeal was hopeless. They had, however, been given the impression that an appeal could be validly filed after speaking with the examiner. The Board therefore decided that the appeal fee could be refunded, even though the appeal was rejected as inadmissible.

This case is another warning, as if it were needed, that the communication under Rule 71(3) should be taken very seriously and the text for grant should be carefully checked before it is approved. The responsibility for this is with the applicant, but applicants are often unaware of the importance of getting things right at this stage and may simply wave an application through, not wanting to spend any more time and money than necessary to get the application granted. The responsibility is then in practice down to the patent attorney, who should always carefully check the text for grant and point out anything that might be a problem, even if this means adding a bit more to the bill, or having to write off some time. Obvious errors or mistakes can then be spotted and corrected before it becomes too late.