CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 2 800 811 B1 relates to methods and compositions for RNA-directed target DNA modification and for RNA-directed modulation of transcription.

In § [0005] of the patent it is specified that “Any reference to genetic modification of cells do not encompass the germline modification of human beings.”

In § [0006] of the patent it is specified that “The compositions of the invention do not comprise human germ cells, human embryos or human embryonic germ cells.

In § [0007] of the patent it is specified that “The methods of the invention do not comprise the use of human embryos or human embryonic germ cells.”

One of the proprietors of the patent is Mrs E. Charpentier, Nobel Laureate 2020 in Chemistry for her discovery of CRISPR Cas-9 with Mrs J. A. Doudna.

Brief outline of the case

Following 7 oppositions, the OD decided that claims 3 and 20 as granted infringed Art 123(2).

For AR1, the priority was validly claimed as its disclosure was enabled, sufficiency of disclosure was given and it related to the same invention. Cl1 of AR1 did not infringe Art 53(c). Claims 1+23 of AR1 infringed Art 53(a) and R28(b)-AR1 cl 29 of AR 1 infringed Art 53(a) and R29.

For AR2 Claims 13+21 of AR 2 infringed Art 53(a) as the disclaimer was incomplete.

The OD decided maintenance according to AR3. The opponents had no objections.

The proprietor and Opponents 1, 4, and 7 appealed the OD’s decision.

OP were scheduled from 07.10.2024 to 11.10.2024.

After a communication under Art 15(1) RPBA, dated 10.07.2024, the proprietors withdrew their approval of any requests on file with a letter dated 20.09.2024.

The OP were cancelled and the patent was revoked.

What is interesting here are the reasons of the proprietors to withdraw all their requests.

The board’s communication under Art 15(1) RPBA
Only the salient points are mentioned here.
In the communication under Art 15(1) RPBA, the board noted that the following requests were filed in appeal:

• MRap and ARap 1-5 filed with the own grounds of appeal
• ARap 5-47 filed in reply to the opponents appeal, with ARap10-47 renumbered ARap 40-77
• ARap10-39 filed in reply to new objections of lack of N based on a new document
• ARap78-233 filed after a new objection of O4

For the MRap=AR1op; the proprietor disagreed with the necessity of disclaimers in cls 1, 13, 21, 23 for Art 53(a)+R 28(1) or 29(1). The board found the proprietor’s reasons not persuasive in view of the objections raised by O4 and O7.

For the board, the MRap was objectionable under Art 53(a).

ARap1-3 were new requests in which claims 13+21 as granted were deleted.

Claim 1 of ARap1 was objectionable under Art 53(a) like MRap, and therefore not admissible.

The claims of ARap 3+4 are identical to those of AR3op but AR3ap included a disclaimer in claims 1 and 21 in order to comply with Art 53(a) in cls 1+21.

AR2ap contained only in cl1 a disclaimer in order to comply with Art 53(a).

The admissibility of ARap2 and 3 would be decided later.

AR4ap corresponds to AR3op, i.e. as maintained.

or ARap4=ARrop3, the priority P1 is not valid for cl1 as the disclosure in P1 is not enabled. Contrary to the OD, there was no CGK available giving a consistent teaching for the PAM requirement.
As the priority was not valid,

• D1=Jinek; Science, 17.08.2012, not mentioned in the ISR/EPO became PA under Art 54(2). Claims 1, 10, 13, 14 as maintained lacked N over D1.
• Claims 10, 13-16 lacked N over D5=Deltcheva et al., Nature 2011, also not mentioned in the ISR/EPO, became PA under Art 54(2)
• Claim 18 lacked IS over D5.

The board added that ARap 5-233 will probably not be taken into account in appeal.

The reasons for the withdrawal

The proprietors submitted that the communication under Art 15(1) RPBA was based on an incorrect technical understanding of the claims and the board applied incorrect standards when assessing the opponents’ objections.

The proprietors contested the board’s opinion that P1 was not enabled, asserted that the board misinterpreted CGK and applied incorrect legal standards when an undue burden is alleged. Similar comments apply about the objections under Art 53(a), the validity of the priority for the same invention and the objections of lack of N and IS.

The proprietors voiced serious procedural concerns arising from the present board in its decision v T 2229/19 taken by the same board. If said case law would be applied in the present case, it could lead to procedural circumstances that the proprietors would consider as a violation of their right to be heard.

In T 2229/19 the board held inadmissible an AR filed in reply to a communication under Art 15(1) RPBA in which a dependent claim was deleted to address an objection under Art 123(2). The AR was not admitted as it was not prima facie overcoming an objection of lack of sufficiency, which had yet to be discussed. The board held the request inadmissible without hearing the proprietor on sufficiency. A petition for review, R 14/24, is presently pending.

The proprietors noted that the approach in T 2229/19 diverged from established case law according to which claims have been deleted to address a point raised in a communication under Art 15(1) RPBA
The proprietors referred to T 1480/16, T 914/18, T 995/18, T 1857/19, T 884/18, T 565/16, T 981/17, T 1792/19 and T 2201/19, which held that the deletion of a dependent claim after a communication under Art 15(1) RPBA as not being an amendment under Art 13(2) RPBA.

The proprietors referred to T 1224/15, T 853/17, T 306/18, T 682/16, T 1224/15, T 853/17, T 306/18, T 884/18, T 494/18, T 2920/18, T 2295/19 and T 424/21, which held that the deletion of a dependent claim after a communication under Art 15(1) RPBA as constituting exceptional circumstances under the same Art.

The proprietors added that they cannot expose the Nobel-prize winning invention protected by the present patent to the repercussions of a decision handed down under such circumstances, when other members of the family, e.g. EP 3 957 749 were still at a stage where the proprietors can procedurally ensure that they will ultimately be fully heard by the board on substantive issues.

The proprietors further explained at length in their letter why the board was incorrect in its communication under Art 15(1) RPBA.

Comments

The board composition in T 2229/19 and in the present case different only by the legally qualified member.

As there is no decision we will newer know whether the board would have acted as implied by the proprietors. Whether the arguments of the proprietor on the various issues of substance, like enablement of the priority and the same invention and hence validity of the priority are correct or not is a question for the specialists in the field. I would not dare ginving an opinion.

When 7 oppositions are filed, it is manifest that the patent would disturb a lot of third parties. For the proprietors to give up such a patent on the basis of what they would expect from the board, the level of frustration must have been extremely high. I will not decide whether it was justified or not, but it gives food for thoughts.

It is to be noted that D1 comprises as last co-authors Mrs Doubna and Mrs Charpentier. D5 comprises as last co-author Mrs Charpentier.

Knowing the care US universities take in their IP departments with publications, it is somehow surprising that D1 and D5 which were published in the priority interval could be fatal to the N or IS of the claims as maintained. Publish or perish is not on the agenda of US universities. Any publication is vetted by their own IP department. This is, alas, not the case in lot of European universities.

The only conclusion to be drawn is that the proprietors were implying directly that the board was not competent ratio materiae, when it assessed the substance of the claims as maintained.

In T 1549/22, the same proprietors also withdrew their approval of any requests submitted and referred to the reasons given in the present decision. The composition of the board in T 1549/22 is the same as in the present case.

General comment

It is nothing new that boards of appeal have not a similar approach when it comes to procedural issues like deletion of claims which are confronted with various objections.

Various decisions presented and commented on this blog had deletion of claims s topic. See e.eg. T 1836/22, T 1800/21, T 598/20, T 2019/20 and T 602/21 among more.

Similar procedural situations should be dealt with in a similar manner and not give to proprietors the impression of going to a lottery when they appeal a decision of an OD.

Prima facie, deleting objectionable claims helps procedural economy. It is then difficult to understand that, for the sake of a narrow minded formalistic approach, patents are revoked.

An external view

It seems appropriate here to quote an article in JUVE published in May of this year.
I quote:

“But although most users still believe that the BoA’s work is good overall, patent attorneys and in-house counsel repeatedly point out that the speed and quality of the decisions depend heavily on the respective board. They claim that quality can vary depending on the technical field and board. Therefore, measuring the real success of the BoA requires a closer look at the performance of the individual boards.

“In future, BoA president Josefsson must ensure that the differences between the technical fields and boards do not diverge too far. It must not become a lottery for users where each board provides a different service and result. The boards should also avoid basing too many of their decisions on formalities instead of looking at the technology. For years, users have criticised this aspect in what is otherwise a positive overall impression of the BoA”.

The article can be found on the following link:
https://www.juve-patent.com/legal-commentary/figures-show-boards-of-appeal-productive-but-its-only-half-the-story/

T 1087/20

https://www.epo.org/en/boards-of-appeal/decisions/t201087eu1