Application EP 2 627 197 relates to optimised nutritional formulations.
Brief outline of the case
The application was refused and the applicant appealed the decision
The board confirmed the refusal.
Claim 1 of the MR contravened the requirement of Art 123(2).
The same applied to claim 1 of AR1.
The applicant’s point of view
The applicant argued that similar claims to that of the MR had been allowed in parallel patents in 18 countries. Since examiners in this many countries were able to derive the claimed subject-matter from the original disclosure, it seemed reasonable that the same would be the case under the EPC.
If the board were to find otherwise, a referral to the Enlarged Board of Appeal was requested.
The board’s decision
The board held that patent examination outcomes in different jurisdictions do not need to be the same. Criteria for allowing amendments to the application as filed can vary. Even if the rules are similar and the disclosures and claims identical, different authorities may reach different conclusions.
This is also true under the EPC, when a board of appeal reviews a refusal decision of the examining division as well as when an opposition division examines an opposition against a granted patent. Moreover, the EPO is not bound by other jurisdictions’ conclusions.
As the applicant did not formulate any specific question to be referred, nor was it clear to the board what this legal question should be, the board saw no reason to ex officio formulate and refer any question to the EBA.
Comments
The applicant was a Californian Company. This might explain why it was surprised to be confronted with an objection of added subject-matter.
On the other hand, it has never been convincing for a first instance division or a board to be told that a patent has been granted in another country, or even in 18 of them.
Requesting the board to refer a question to the EBA without even making a proposal, is a further incongruity of this case.
Needless to add that the objections of added subject-matter were fully justified in the framework of the case law of the EBA and of the TBAs.
Comments
5 replies on “T 1097/22 – Grant in 18 countries is not a reason for the EPO to grant a patent”
The file history makes for interesting reading. A large number of complaints were filed during examination and the language employed in some of those was intemperate to say the least.
There were also numerous and very frequent changes of professional representative. It looks like the representatives’ submissions were also often written in a similarly angry tone to those of the complaints submitted by the applicant itself.
From this I wonder if we have here a classic case of an applicant who is convinced that they know best, and will not take advice with an open mind. That might explain the frequent changes of representative, and also explain why the representatives often seem to have simply put their letterhead on arguments drafted by the applicant.
I am sure many practitioners could tell stories of dealing with similarly stubborn applicants.
@ Anonymous,
Thanks for bothering to look in the register. This is normally the case for me when I quote a file in my blog. This time I did not.
Claiming that if a patent was granted in 18 countries, the EPO examiner should not be so stupid and should do the same, was enough to earmark the decision.
The register is indeed quite revealing and I do not remember one applicant having “used” so many representative’s firms in the prosecution of its case.
There are actually two more applications from the same applicant.
The first one EP 2 278 885 is a parent application which was rejected and the appeal was withdrawn at the end of the OP, but a petition for review is ongoing.
The second one is EP 3 305 083, a divisional application of EP 2 278 885. The application has also been refused.
In all three files the problem is added matter. The way added matter is dealt with at the EPO can indeed be difficult to follow for a US applicant.
Unless I am mistaken the petition was already decided (R 4/18) in October 2018.
That was itself the subject of a complaint (filed directly by the Applicant) which begins “The Decision fills the Petitioner with indignation and is not well taken”…
Dear oh dear!
I have been looking at the file from time to time in the last years, and I was always amazed at how many times the applicant changed representatives. One can wonder who ended the representation in each case, but regardless, the applicant must have built quite the reputation for themselves among EP attorneys.
The other amazing thing is how anyone can think that berating the decision-making person(s) will help their case.
In spite of the fact that the lady applicant did not manage to get any patent granted, she should be nominated in the competition “Inventor of the year”, however in a new category!
An old German say: as one calls in the forest, it echoes back. Nothing to add.