EPO - Prior Art Effect of Erroneously Published Foreign Patent Application
EPO - Patentability of Genetic Material
EPO - Abolition of the Possibility of Self-Opposition
EPO - Effect of Publication After the Priority Date
EPO - Protection of Computer-Related Inventions
EPO - Surgical Treatments
EPO - Permissible Amendments/New Matter in Patent Applications
EPO - Patent Protection for Plants and Animals
EPO - Reinstating European Patents and Applications

EPO - Prior Art Effect of Erroneously Published Foreign Patent Application

Under the European Patent Convention almost any public disclosure of an invention prior to the priority date of a European patent application destroys the novelty of a patent application for that invention. Almost the only exception is a six-month grace period provided by Article 55 in respect of disclosures that are "an evident abuse in relation to the applicant or his legal predecessor". In the case of Deodorant detergent/Unilever an Appeal Board was confronted with a situation where there had been publication of a relevant patent application in Brazil contrary to the applicant's wishes. Under Brazilian law patent applications are normally published about two years after their priority dates. In the present situation the applicants had attempted to delay the publication of the Brazilian application by abandoning any claim to priority before publication occurred, thereby expecting that publication would be delayed for a year. Unfortunately, however, the Brazilian application was published on the same date as it would have been had the priority date been claimed. This date was prior to the filing date of the European patent being considered by the appeal board which therefore had to consider whether the Brazilian publication was relevant prior art or whether it was excused as an "evident abuse " of the applicant. The board decided that the publication would not be excused, stating:

even if the publication of the patent application had infringed Brazilian law, that in itself may or may not be tantamount to an evident abuse in relation to the applicant. All governments, as well as their agencies can infringe personal rights, including commercial rights of the kind here involved. However, not everything done in infringement of local laws ... is of necessity an abuse in relation to applicant's rights. ... Whilst it may be true that all abuse of an applicant's rights also involves a breach or infringement of his rights, the converse is not necessarily true. In the case of an abuse ... the state of mind of the 'abuser' is of decisive importance.

The board went on to distinguish the case before it from situations where there was a legally enforceable obligation of confidence and, relying on a declaration from the Brazilian Patent Office that what had occurred in the present case was merely a "lamentable error" concluded that there had been no "abuse" of the applicant's rights "let alone evident abuse, which is the standard of reprehensibility laid down by Article 55" (emphasis in the original).

EPO - Patentability of Genetic Material

Three recent decisions in the European Patent Office have contributed to the developing law on the patentability of inventions involving genetic engineering. The first two (one by an opposition division and the other by an appeal board address the issue of the EPO's prohibition on inventions that are contrary to morality, the appeal board decision also addressing the issue of the EPO's prohibition on the patentability of "plant varieties". The third decision, also by an appeal board addressed the standards to be applied in assessing obviousness in genetic engineering cases.

These three decisions,Relaxin/Howard Florey Institute, Plant cells/Plant Genetic Systems and Expression in yeast/Genenetech, are covered in some detail in our November 1995 Newsletter and we refer the reader to that Newsletter for a more detailed report. Simply patenting genetic material is not considered to be contrary to public morality in these decisions. In one case the EPO stated that inventions should be pegged as being "immoral" only "in those very limited cases in which there appears to be an overwhelming consensus that the exploitation or publication of an invention would be immoral". However, claims drawn to a human being per se or to a plant or animal per se, can certainly be expected to draw fire, the former due to public morality issues and the latter due to issues involving just what are "plant or animal varieties" (since such are excluded from patentability by the terms of Article 53 of the European Patent Convention).

EPO - Abolition of the Possibility of Self-Opposition

Since a decision of the Enlarged Board of Appeals in 1984, the European Patent Office has permitted a patentee to file an opposition against its own European patent. This has provided a convenient way of effecting a Europe-wide amendment of a patent after grant without becoming enmeshed in national proceedings for post-grant amendment.

In a decision on a patent in the names of Peugeot and Citroen, the Enlarged Board of Appeals concluded that its previous decision authorizing this practice was wrong and reversed that decision. In the new decision, the Board concluded that the whole tenor of the provisions relating to oppositions in the European Patent Convention requires that such proceedings should be inter partes. This does not occur when the patentee opposes itself.

The Board recognized the problems that arise when such reversals occur in view of the general principle that the Enlarged Board of Appeals merely interprets, but does not create, the law so that the law must be regarded as always having been what it is now stated to be. Therefore, the Board stated that its present decision shall have only prospective effect and thus will not apply to self-oppositions filed before the present decision. The Board glossed over the logical inconsistency of its position by stating that in this case the issues involved were procedural rather than substantive, implying that in such cases some flexibility in the application of the general principle is appropriate.

EPO - Effect of Publication After the Priority Date

In a decision on a question of law referred to it by the President of the EPO, the Enlarged Board of Appeals has decided that, notwithstanding Article 4B of the Paris Convention, publication, after the filing of the priority-founding application, of the technical content of what was contained in that application may be cited against any claim contained in the European Patent application that is not entitled to the priority date of the priority-founding application. In the case of U.S. Applicants, the priority-founding application is most likely their corresponding U.S. Patent Application. Presumably, in view of Article 88(2) of the European Patent Convention, which permits multiple priority dates in a single claim, this 'prior art' can be cited with respect to only a portion (or element) of a claim which is not entitled to a priority claim.

Thus, for example, if the European application claims an invention more broadly than is supported by the priority-founding application or additional features are claimed in the European application which have no support in the priority-founding application, any publication of the subject matter of that priority-founding application that occurs before filing the European application may be used as the basis of an obviousness attack on the claims of the European application that are broader than are supported by the priority-founding application or which are directed to specific features not disclosed in the priority-founding application. In this context, the reader may recall that, as discussed previously in Ladas & Parry Information Letter N.S. 180, the EPO's rules on whether a claim is entitled to a priority date are reasonably liberal. Even so, in cases where development work is continuing after the filing of an application that may be used to claim priority in a European application, care should be taken to ensure that no disclosure of the content of the application occurs before the actual filing date in Europe. This should avoid the risk that publication of that disclosure may be used to invalidate any claims in the European application that go beyond what is supported by the original priority-founding application. Additionally, care should be exercised in properly describing and claiming the invention in its fullest and broadest terms before the priority-founding application is filed. Otherwise, the broadest, and potentially most valuable claims may be considered to have been filed on the actual filing date of the European application and thereby barred by the Applicant's own actions taken in disclosing (i.e. promoting) the invention between the time the priority-founding application was filed and the date the European application was filed.

EPO - Protection of Computer-Related Inventions

Inventions relating to computer editing of text have not been particularly successful in the European Patent Office (see, for example, Ladas & Parry Information Letter N.S. 175). The EPO has routinely regarded such inventions as merely a computerized version of mental acts and thus, although not falling within the EPO's prohibition on protection of computer programs as such, has found that they are caught by the prohibition on protection of mental acts. In the most recent case of this type, however, Editable Document/IBM, the EPO was persuaded that a technical problem was involved rather than a mental one. In this case, the invention in question related to changing of print commands when editing a document represented in digital form according to one word processing software so that the text could be imported into word processing operations operating under a different software. In this case since control of a printer was involved, the Appeal Board concluded that a technical problem had to be solved so that what was claimed was not merely a computerized version of a mental act and thus the claimed invention was patentable.

EPO - Surgical Treatments

Article 52 of the European Patent Convention specifically precludes the grant of patents for "methods of treatment of the human or animal body by surgery or therapy". As discussed elsewhere in these pages, inventions wherein the inventive step lies in the use of a chemical compound for treatment of a disease, claims have been allowed in the form "Compound X for use in therapy of Disease Y" (for the first medical use) and "Use of Compound X for production of a medicament for treatment of Disease Y" (for second and subsequent medical uses of the compound). In the case of Second Surgical Use/Codman the applicants attempted to secure a claim in the second form in a situation where a surgical instrument rather than a chemical compound was involved. Thus, the proposed claim read "use in the manufacture of a laser surgical instrument for carrying out ...(a specified operation)... of substrate means and coating means (having particular characteristics)." Novelty lay in the specified use. The applicants argued that the claim should be allowed in a manner analogous to second medical use claims. The Appeal Board disagreed, stating that in its view:

"a surgical use of an instrument is not analogous to a therapeutic use (of a medicament) ... since the former is not consumed in the application and could be repeatedly used for the same or even other purposes as well .... medicaments on the other hand are expended in the process of use and thus have a once for all utility".

The Appeal Board was of the view that the fact that once a medicament had been consumed it could not be reused gave a more precise meaning to a claim directed to the use of producing a compound for a particular purpose than could ever be possible in respect of an instrument that could be used for a variety of purposes. While there is clearly some logic in this conclusion, the decision points out the unsatisfactory nature of the provisions of the European Patent Convention in dealing with medical inventions.

In another case on a similar topic however, Blood Flow/See-shell a claim involving measurement of blood flow to a specific tissue in an animal was allowed because the claim involved subsequently sacrificing the animal so that, although a surgical operation had previously been carried out on the live animal, it was clear that therapy was not the overall objective.

EPO - Permissible Amendments/New Matter in Patent Applications

Article 123(2) of the European Patent Convention provides that a patent application must not be amended in such a way that it contains new matter, i.e., subject matter which extends beyond the content of the application as filed. The EPO has always construed this provision strictly because it believes that the public on reading the published application has the right to know that it is free to carry out anything which is not disclosed. (Publication occurs eighteen months after the filing date or, if priority is claimed, the priority date.)

The provision has been considered recently in the case of Thermal printing mechanism/Electronic Postage Meter. In this case, the question before an Appeal Board was whether or not it was permissible to amend a main claim to incorporate in it two further features that were disclosed in the original application only in the description of a specific embodiment that was described with reference to a particular figure. The Board stated:

Under these circumstances, a careful examination is necessary in order to establish whether the incorporation of isolated technical features, having a literal basis of disclosure but being disclosed in a specific technical context, results in a combination of technical features which is clearly derivable from the application as filed, the technical functions of which contributes to the solution of a recognizable problem.

In the case before it, the Board concluded that incorporation of the features in question would not meet the requirements set out and so the proposed amendment was not permissible. The official headnotes read as follows:

1. An amendment of a claim by the introduction of a technical feature taken in isolation from the description of a specific embodiment is not allowable under Article 123(2) EPC if it is not clear beyond any doubt for a skilled reader from the application documents as filed that the subject matter of the claim thus amended provides a complete solution to a technical problem unambiguously recognizable from the application.

2. Nor is an amendment allowable under Article 123(2) EPC which replaces a disclosed specific feature either by its function or by a more general term and thus incorporates undisclosed equivalents into the content of the application as filed.

EPO - Patent Protection for Plants and Animals

Article 53(b) of the European Patent Convention bars the grant of patents for, inter alia, plant or animal varieties. There has been a conflict between appeal board decisions as to whether the application of this prohibition is the same for plants and animals and as to whether it applied only if that which was claimed was confined to a grouping of plant or animals at the low taxonomic classification of "variety" (which is more limited than species) or whether it precluded the grant of claims in which new plant or animal types were defined more broadly. The issue was referred to the Enlarged Board of Appeals in Novartis II/Transgenic plant. The Board held that the text of the Convention should be construed strictly so that when reference was made to a "variety" not being patentable, the prohibition did not apply if the claim was directed to a broader taxonomic grouping (that is to a species or higher classification). This decision is in accordance with the much earlier decision on the so-called Harvard mouse case and also with the EU's directive on patent protection for biotechnology and the EPO's own new rules (see our August 1999 Newsletter (N.S. 191) - these new rules do not apply directly to the present case).

In response to arguments that, if claims to specific varieties were prohibited it was illogical to allow claims that covered multiple varieties, the Board commented as follows:

the example given in the amicus curiae briefs that polygamy cannot be allowed if bigamy is forbidden, although plausible at first glance, turns out to be less persuasive. In the same way as a ban on bigamy forbids marrying several persons, it is not permitted to claim several specific plant varieties. It is not sufficient for the exclusion of Article 53(b) to apply that one or more plant varieties are embraced or may be embraced by the claims.

The Board was, however, ruthlessly logical in its application of the prohibition where the subject matter was a single variety, holding that in such a case the ban on patentability was absolute and did not depend upon whether or not "essentially biological processes" had been used to create the variety so that plant varieties obtained by recombinant gene therapy were excluded from patentability. Nevertheless the Board recognized that a claim directed to the production of a new plant or animal variety by recombinant techniques would be patentable and that the direct product of that patented technique would still be an infringement of the claim to the production technique under Article 65 of the Convention even if that product was in fact a plant or animal variety.

EPO - Reinstating European Patents and Applications

There are two possible ways of seeking reinstatement of a European patent application that has lapsed, either by restitutio in integrum, which applies only in certain situations and requires a showing that the applicant has taken all due care to comply with any time limit that has been missed, or by showing that the proceedings had been "interrupted". Possible situations in which interruption may be acknowledged: death or legal incapacity of the applicant or his representative and action against the applicant which prevents him for legal reasons from continuing proceedings before the EPO. Some older decisions have held that bankruptcy under German law or being placed in receivership under French law were situations in which the applicant had been prevented from proceeding for legal reasons. In the case of Bankruptcy/VPL the Legal Board of Appeal considered whether proceedings could be considered as being interrupted when the applicant was undergoing reorganization under Chapter 11 of the US Bankruptcy Code. The Board held that in such a case the applicant could not be regarded as being prevented from continuing proceedings before the EPO for legal reasons. The Board noted that in most cases of Chapter 11 reorganization the applicant remained in possession of its assets as a debtor in possession although supervised by a court and that the appointment of a trustee was rare. Where the applicant remained in possession of its assets it continued to do business. The situation was therefore different from bankruptcy under French or German law. The Board therefore concluded that

in the absence of specific circumstances having been shown in the case under consideration, proceedings against the applicant under Chapter 11 "Reorganization" of Title 11 - Bankruptcy - of the United States Code do not interrupt proceedings before the European Patent Office.

The Board could find no specific circumstances to rebut this conclusion in the case before it. The applicant, which had ultimately been purchased by Sun Microsystems, alleged that it had no cash left to pay its attorneys for proceedings before the EPO when the terms that were missed expired. However, the Board held that this did not mean that it was without any assets that could have been used.

The Board went on to consider whether the application could be revived under the restitutio procedure. It was noted that not only had the applicants failed to respond to an official action in time but they had also failed to pay a maintenance fee. When seeking restitutio only one fee had been paid. However, since the lapsing of the application was the result of two separate omissions, two fees should have been paid. This being the case, the application for restitutio also failed.