Important decisions at the EPO Stefano John / NAIP Education & Training Group , European Patent Attorney
Recently the EPO has emitted two important decisions. These are from the Enlarged Board of Appeal (EBoA), which is the ultimate decision making authority within the EPC system (thus the equivalent of the US Supreme Court within the European patent granting and validity system, not for other issues as infringement). Because all patent applications, and thus all technologies, are tested under the EPC, the possible ramifications of emitting such decisions are considered very carefully. This means that the EBoA releases such decisions only rarely and after long consideration.
These important decisions are denoted by their G number. The first decision is G2/12 (or G3/12) and it relates mainly to how one interprets what is patentable and what is protectable under the UPOV treaty for protection of plant varieties. Basically, the EBoA decided that everything which is not strictly a plant variety or an “essentially biological process” to obtain said plant variety is patentable. Hence, one could in theory protect with a patent claim the plants derived from a process that is essentially biological, as long as it is worded properly. Of course the usual standards of novelty and inventive step would have to apply to obtain a valid patent claim!
The other decision may seem also very abstruse, but its ramifications within European patent prosecution could be quite important. Basically the EBoA had to decide how far the issue of clarity would be important in inter-partes oppositions. Clarity is not a ground on which to start an inter-partes opposition, but it is a ground that can be raised within the opposition as a result of making an amendment (to, for example, counter an issue raised on patentability in light of new prior art). There was a school of thought that argued any part of the claims could be attacked within the opposition once an amendment was made. The EBoA disagreed and decided that clarity was only grounds that could be raised in some very specific circumstances.
This may seem abstruse and important only to the procedural law of oppositions at the EPO, but its consequences could be larger than that. Firstly, a backlog of inter-partes oppositions have been stayed pending before the emission of this decision. Now this back-log can be dealt with by the various Boards of Appeal and Examining Divisions. Secondly, it reduces the probability of surprise outcomes within oppositions. Surprise outcomes within oppositions could previously arise from the opponent raising clarity on different and/or unsuspected claims as a result of a different and/or innocuous amendment, but now this is not possible. Thus oppositions should become more certain. This should also reduce the reliance on oral oppositions and the backlog of oppositions within the EPC system.
A third consequence is that it means that patent proprietors have more efficient defences in oppositions. This was because under previous practice, an attack on the pertinence of prior art (e.g. inventive step) or enabling disclosure could be converted into an attack on clarity. If for example the claim being attacked was A+B+C, where C is “means for doing X” and the disclosure in the prior art was A+B which also did X, would it be anticipatory or render the claim obvious? Not necessarily because it may not be C. Under previous practice the opponent could then argue that the claim was not clear as to what C was and should be invalidated as lacking clarity. Now that option is not possible and therefore the opponent has to convince the opposition on the pertinence of the disclosure alone.
A fourth consequence is that the only time clarity will be examined within the European patent system before grant is during Examination with the primary Examiner. This means that the Examining Division may be more careful in judging clarity while prosecuting the patent, but that once it has been granted, clarity will rarely be an issue. One could say “If it’s clear to the primary examiner so that he is willing to grant the patent, clarity should not be an issue”.
Some patent law circles have also noted that this decision indicates an interesting move in patent adjudicating powers away from the EPO. It has been suggested that this has been done to allow the EU UPC Courts, once in place, to take up the issue of deciding on clarity. This leads some to prevaricate and wonder if in the future the EPO is basically being set up to grant patents and the UPC to ultimately evaluate the validity thereof.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
