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 disclaimers that did not have basis in the application as filed were in some cases allowable, but only where a disclaimer was required to: i) restore novelty over an A54(3) document; ii) restore novelty over an "accidental" prior art document, 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"; or iii) disclaim subject matter that was excluded from patentability for non-technical reasons. This allowed disclaimers 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 disclaimers due to accidental disclosures 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, which is 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.

17 comments:

  1. It was to be expected that the question about of the successive application of G 1/03 and G 2/10 would be referred to the EBA.

    G 1/03 applies to undisclosed disclaimers. They are used either to restore novelty over a prior art under Art 54 (3), or an accidental anticipation or on items that fall under an exception to patentability under Art 52 to 57 for non-technical reasons.
    To take the example of the apple bite: the limits of the bite were unknown to the applicant/proprietor, and the chunk taken out corresponds to an Art 54(3) or accidental prior art, or to an exception to patentability under Art 52 to 57 for non-technical reasons.

    G 2/10 applies to the disclaimers relating to embodiments of the invention. G 2/10 can be summarized as follows: If A-B is disclosed, a disclaimer for C-D (included in A-B) is only possible if A-C and D-B can be derived directly and unambiguously original documents.
    To take the example of the apple bite: the limits of the bite have to have been disclosed in the original disclosure to be allowable to disclaim the bite.

    If after deciding according G 1/03 that the undisclosed disclaimer is admissible and well founded, then applying G 2/10 is like asking that what is left in the application or patent is directly and unambiguously derivable from the original disclosure.

    If the undisclosed disclaimer is on C-D applying G 2/10 leads to introduce the additional condition that A-C and D-B must be derivable directly and unambiguously original documents. Which is to say that the undisclosed disclaimer should actually be disclosed. As it is not in essence, and a fiction was created in G 1/03, making it nevertheless patentable. The successive application of G 1/03 and G 2/10 could actually mean the death of G 1/03. This is the meaning of Question 2.

    In the cited decisions, T 748/09 concluded that the successive application of G 1/03 and G 2/10 makes disclaimer not patentable.

    Other decisions have come to the same conclusion, cf. T 336/12, T 1441/13. In T 1839/11, the BA denied admissibility of a late request because it did not want to discuss the “interplay” between G 1/03 and G 2/10, although it acknowledged that in T 2464/10 such disclaimers had been discussed and accepted. It also quoted T 1049/08.

    In all decisions T 1176/09, T 1872/14 and T 2018/08 the successive application of G 1/03 and G 2/10 showed that the disclaimers were patentable.

    It should be noted that in cases in which a disclaimer after application of G 1/03 + G 2/10 was considered patentable, the application of G 1/03 was for objects that fell under an exception to patentability under Article 52 to 57 for non-technical reasons. This is logical. If a method can be used as well as in a medical field and in a non-medical field, if the applicant proprietor wants to limit his claims to the non-medical field, the application in the non-medical field has to be originally disclosed, otherwise there is added subject-matter.

    It is certainly a justifiable exception that might be part of the answer to question 3.

    However a disclaimer meant to restore novelty over a prior art under Art 54 (3), or an accidental anticipation, does not resist the successive application of G 1/03 and G 2/10. If G 1/03 must retain some sense, here is another desirable exception, and a further possible answer to question 3. The applicant of the subsequent application cannot be penalized twice.

    In view of the extensive bulk of case law under G 1/03, I have strong doubts that the EBA will simply throw it overboard.

    It is in my opinion a very formalistic way of looking at G 2/10 which led to the present situation.

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  2. G 2/10 did not itself throw overboard G 1/03. It was meant to exist separately, regulating a situation different from that regulated by G 1/03. They do not bite each other. Still, however, they have been confused by a number of boards. Some clarity may therefore be helpful. But one should not be disappointed if the verdict in the end says just that: that the two should not be confused.

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    1. I do personally find it confusing that A123(2) does not apply to some kinds of amendments, especially when G 1/03 does say that the gold standard applies to all amendments. Some clarity does seem to be required. Otherwise it seems like certain cases get special favourable treatment for unknown reasons.

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  3. There's a typo. The allowance of an undisclosed disclaimer for accidental anticipation relates to 54(2). G1,G2/03 allowed undisclosed disclaimers for any 54(3) prior art.

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    1. Yes, you're right. I have corrected the post accordingly. Thanks for spotting it.

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  4. I may have misunderstood something, but is this statement not conflating 54(3) with accidental anticipation under Article 54(2)?

    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).

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  5. To be precise G 1/03 allows disclaimers in order to restore novelty with respect to a prior art under Art 54(3) which does not need to be accidental, and novelty under Art 54(2) when the anticipation is accidental!
    The further category of disclaimers according to G 1/03 are for subjects which might not be patentable under Art 53.
    The boards should never have confused G 1/03 and G 2/10, the have different aims, but they come together only with the third type of disclaimer under G 1/03, i.e. in order to exclude non patentable matter.

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  6. I think I agree with the Anonymous of earlier today, that one should not conflate G1/03 with G2/10.

    The "Gold Standard" applies when we are deciding what a document discloses. The point about Art 54(3) is that one cannot know what to disclaim when writing your patent application because the disclosure of the Art 54(3) citation is unknown to you.

    Otherwise in the situation with G2/10, where an Applicant "in words of his own choosing" describes, claims and discloses the subject matter for which protection is sought and in prosecution seeks to disclaim a part of that disclosure. The disclaimer has to meet the Gold Standard, just like any other prosecution amendment.

    Sorry Tufty but I think that to impose the Gold Standard on a disclaimer of an Art 54(3) doc strikes me as unfair and unjust, unwarranted and unnecessary.

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    1. Quite so, one cannot know on beforehand what should be disclaimed in a 54(3) situation. Adding information in order to formulate a disclaimer however is not a problem per se. The problem begins when the information added presents a skilled person with a different invention than presented at the date of filing. Using a disclaimer to change the invention, even with the intention to solve a A.54(3) situation, would indeed be unjust.

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  7. It would be unfair if one could add technical information. Therefore, any amendment should be free of adding technical information. That is the principle of A.123(2). And it also applies in the case of undisclosed disclaimers. In G1/03 it is observed, that undisclosed disclaimers are not necessarily unallowable, for the reason that they are undisclosed. There are situations in which such disclaimers should be allowable. If one reads the specific reasons regarding such situations (points 2.2.2 / 2.2.3?) it becomes clear that the basis for such allowability is that undisclosed disclaimers do not necessarily add technical information. With that proviso, undisclosed disclaimers should thus be allowed. Said points however do not provide basis for ALL undisclosed disclaimers to be allowable, based on some "fiction". If a 54(3) disclaimer makes a technical contribution, it makes perfect sense it should not be allowed. It goes directly against A.123(2). If it does not add technical information, it should be allowable (or at least not be unallowable), based on G1/03, and fairness is provided to the applicant in order to deal with a A.54(3) publication, without unfairness towards other parties, resulting from adding technical information after the date of filing. (Which would be the situation if a disclaimer making a technical contribution would be allowed.)

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  8. Anonymous of yesterday identifies where "the problem begins" namely when a "different invention" is disclosed, as a consequence of inserting the disclaimer.

    But how often does this happen. Does "the problem" begin every time a disclaimer is inserted, often, rarely, or hardly ever?

    For the Board, an apple is still an apple, even after a bite is taken out of it. See:

    "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)."

    OK, an apple with the bite out of it is "different" from the apple before the bite, but that doesn't mean it is something different from an apple.

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    1. I guess it depends on the technical teaching.

      If the teaching is: "any part of an apple will taste apple-like", there should be no problem in adding a bite-disclaimer to a claim directed to an apple, even though an "apple minus bite" embodiment was not disclosed. What remains in the claim is still "any part of an apple, tasting apple like".

      If the teaching is "an apple will taste apple-like", adding a bite-disclaimer to a claim directed to an apple could run into problems, because "an apple minus bite also tastes apple-like" was not part of the original teaching. Even though that "new" teachning may also hold true.

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    2. If D1 discloses an apple and an apple from which a bite was taken is claimed, is D1 novelty destroying?

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    3. What is your point?

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  9. Very academic case. A priority being published before the effective filing date so as to become toxic is not something that can normaly happen under the EPC. A priority has to be claimed within 12 months but is rendered public in almost all practical cases after 18 months. So it cannot became prior art available to the public before the filing of the European Applications Filing. This also holds for divisionals as they enjoy the filing date, not necessarily the priority of the parent. If they don't they fail to meet the requisites for a divisional under Art. 76. You don't even need Art 88 to kill them. The toxicity can only arise when the priority was published prematurely. In the case you previously critised the English judge indeed the BOa used Art. 76. I do not know British law well enough to understand whether toxicity is a problem there, it is a not a problem under the EPC under all practical circumstances. The EBOa basically wasted their time and interfered in British jurisdiction.

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  10. Should the third question of read like this or am I missing something?

    3. If the answer to the FIRST (not second!) question is no, i.e. ....

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