In a communication of February 6th , the EBA gave a non-binding provisional opinion.
Admissibility of the questions
The EBA considered Questions 1 and 2 admissible, but currently expressed doubts about the admissibility of Question 3.
In the opinion of the EBA an answer to Question 3 is not required for the referring board to reach a decision on the case before it.
Question 1
The EBA recognised the interest in uniform application of the principles of claim interpretation both in patent granting before the EPO and the BA of the EPO, and also in post grant revocation and infringement proceedings before the courts of the EPC contracting states, including the UPC.
The EBA considered that Question 1 raises at least two issues that will need to be discussed.
First: whether the principle of interpretation set out in Art 69(1), second sentence and Art 1 of the Protocol are to be applied to the interpretation of claims when assessing the patentability of an invention under Art 52-57.
Second: if Art 69(1), second sentence and Art 1 of the Protocol are the legal bases for the principles that are to be applied to the interpretation of claims when assessing the patentability of an invention under Art 52-57.
Question 2
The EBA is of the opinion that the description and the figures can be referred to in the course of claim interpretation.
Comments
The provisional opinion is rather brief and does not reveal much about the thinking of the EBA.
That it should be preferable to come to a uniform application of the principles of claim interpretation inside and outside the EPO does not say much. That such a statement is politically desirable, goes without saying.
The EBA will not be in a position to oblige the UPC or national courts to follow its interpretation of Art 69(1), second sentence and Art 1 of the Protocol, and vice-versa.
Some national courts, e.g. the German Federal Court, have claimed to follow the case law of the EBA, but developed their own interpretation of Art 123(2), which was not followed by the EBA in its decisions relating to what is “directly and unambiguously derivable from the original documents”.
Why should it be different when it comes to Art 52 to 57, taking into account Art 69(1), second sentence and Art 1 of the Protocol.
That description and drawings can be referred to in the course of claim interpretation is also non-committal, as this is already done at the EPO in specific situations.
The only surprise is that Question 3 appears not admissible. One could infer that the reply replies to the Questions 1 and 2 will set the framework on how to answer Question 3.
The in-person OP in case G 1/24 is scheduled for March 28th, 2025 at 10.00 in the Isar Building.
Comments
8 replies on “G 1/24 – Communication of the EBA”
I note that the Rapporteur is David Rogers, lawyer and English native speaker, with a huge number of years of service and experience at the EPO. All the more surprising to me then, that I struggle to see what is the key difference between the issue he flags up as the Board’s first, and the separate one he presents as its second. Has the Board as a whole not yet “got its act together” I wonder
Daniel, can you help me, please? What are your thoughts?
Dear Max Drei,
I was as surprised as you were when I read the communication of the board.
I would not think that the EBA as a whole has not yet “got its act together”.
One way of interpreting the differentiation brought in the statement about question 1 is the EBA is that it might have doubts whether Art 69(1), second sentence, and Art 1 of the Protocol are the legal bases for the principles that are to be applied to the interpretation of claims when assessing the patentability of an invention under Art 52-57.
The limitation in the referred question to Art 52-57, especially to Art 54, actually ignores the effect of the novelty criterion on added matter under Art 123(2) or the validity of the priority. I have some doubts that the EBA will sacrifice its clear position about “directly and unambiguously derivable” on the altar of harmonisation. This position goes through its case law like the red line. But one never knows.
I see this in contrast to the general statement about the interests of a common interpretation in grant/opposition and infringement. This statement is actually non-committal, as long as it is not known how it will be filled with content.
We might get some more idea depending on the questions raised during the coming OP.
Overall, my guess is as good as yours.
Reading tea leaves. My two cents: the first statement concerns whether the principles are correct on the merits. The second statement concerns essentially whether Art. 69 (+ Article 1 Protocol) would apply ‘by analogy’ or in itself.
@ Plu
Teal leaves are not my cup of tea (sorry for the pun). I prefer molten lead in a cup of water (tradition on New Year’s Eve in Germany).
Your guess is as good as mine. The question is really whether Art 69(1), second sentence, and Art 1 of the Protocol should be applied in pre-grant procedures and in oppositions before the EPO.
How the EBA will arrive at his conclusion is actually not so much relevant, but, at the end of the day, legal certainty should be achieved .
We do, alas, have some very “political” decisions of the EBA, “dynamic interpretations” of the EPC, or other ones which are interpreted quite differently by various boards. All this should be avoided in the present case.
Daniel, you urge “legal certainty”. I agree. So, forgive me if this is an ignorant and naive question.
What (if anything) stands in the way of the EBA, giving “legal certainty” its highest priority, deciding to frank the EPO’s “Gold Standard” (directly and unambiguously derivable), and choosing deliberately to leave it to the UPC to decide on questions of “infringement by equivalent”? The EBA might suggest in its keenly-awaited G1/24 opinion that it expects the UPC, when called upon to adjudicate Art 123(3) EPC, to use whatever governing doctrine it conjures up, or whatever existing doctrine (eg Formstein) takes its fancy.
That leaves as an open question how the Appeal Boards of the EPO shall handle Art 123(3) issues in post-grant inter Partes proceedings at the EPO. Perhaps the EPO could, for this task, defer to the UPC and align itself with whatever jurisprudence on the DoE the UPC speedily develops.
Der Max Drei,
When I give a lecture, when inviting questions, I am used to say there are no ignorant or naïve questions. Only stupid answers. I will avoid such an answer. Whether I can convince you is a different matter.
Why should the EPO give its highest priority into dumping its “gold standard” to the benefit of the UPC? The EBA has not given up its “gold standard” with respect of national jurisdictions, why should it do it do so for the UPC?
It is also worth remembering here, that the EPO has a responsibility for many more contracting states than the UPC.
The EPC has also been conceived with introducing a clear distinction between grant and infringement.
Both those aspects should not be forgotten in the present discussion.
I would note first, that Art 2 of the Protocol speaks about equivalents, but during the Diplomatic Conference in 2000, the EPC contracting states refused the EPO’s proposition for an Art 3 attempting to give a definition of equivalents.
The UPC is thus free to develop its own doctrine of equivalents as national courts can, and have done in the past.
This should not be binding for the EPO, as the EPO is not there to determine the scope of protection.
The task of the EPO is to grant patents whereby the subject-matter of their claims is novel, inventive, industrially applicable, not comprising added matter and in which said claims are clear and supported by the description. Art 69(1) and the Protocol are for national jurisdictions in the EPC contracting states, and now for the UPC, but not for the EPO.
The EPO has not to decide on infringement and what could be considered as equivalents. “Directly and unambiguously” does not include equivalents. This conclusion goes back to T 167/84, Reasons 6, confirmed for instance by T 670/15, Reasons 2.1.
As far as the gold standard is considered, I wish to remind you of the pemetrexed decision of the UKSC. In view of the gold standard it was not the examiner who was wrong when he raised an objection under Art 123(2). With due respect, it was Lord Neubauer, later supported by sir Robin Jacob, which was manifestly wrong. The then applicant wanted to claim pemetrexed in general, whereas it only disclosed pemetrexed disodium and made no move to explain why it was entitled to a much broader claim.
I would also like to observe that neither Art 123(2) nor Art 123(3) are directly part of the referred questions.
Art 123(2) only appears indirectly is as far as Art 54 is mentioned in question 1. Art 123(3) also only appears indirectly when it comes to its application in oppositions before the EPO and since Question 1 mentioned Art 69(1). There again, the way Art 123(2) and Art 123(3) are dealt with in procedures before the EPO, is a matter for the EPO and its boards to decide.
Accepting in opposition equivalents and hence considering that a broader protection can be envisaged would boil down to taking position on what could be considered infringing by equivalence by national courts. I do not think that national courts in non-UPC states, and there are many more than UPC states, or even the UPC would be happy with this.
By the way, the first decision of the LD The Hague in matters of infringement by equivalence fails to convince. Apparently I am not the only one.
In my opinion, the LD The Hague has been much too protective for the proprietor, as the German Federal Court normally is.
The EPO boards of appeal will certainly be interested in knowing what the UPC, and national courts in all EPC states, have to say in matters of equivalents, but there is no reason whatsoever that they should defer this task to the UPC.
The EPO has being going on for a few decades and with its strict stance on novelty and added matter, all users of the system knew where they stood. It is not the upcoming of the UPC which should change this situation. It can however also be advantageous for applicants/proprietors. Novelty and added matter are the two sides of the same coin, and it is rightly so. What is gained on the one side, is lost on the other. In other words, you cannot have your cake and eat it.
I call the EPO’s position when it comes to novelty and added matter legal certainty at its best. Introducing equivalents when it comes to novelty or added matter will certainly not increase legal certainty. I would claim the contrary, with or without UPC.
I might have been long, but your comment deserved full consideration.
Mr Thomas
I agree with you that equivalents should not be considered in the assessment of validity.
This position reflects the consensus of patent practitioners worldwide, as clear from resolutions 4 and 5 adopted by the AIPPI World Congress in October 2023. These resolutions cover both assessment by patent granting authorities and by courts.
Mr Hagel,
Further to your comment about equivalents, I have been told that under the pre-EPC German case law, equivalents were falling under novelty.
This was possible under an integrated system in which the granting authority and the judiciary existed and applied the same law. A difference in interpretation could not be tolerated.
At the EPO it is clearly different as there exists a clear dividing line between grant and infringement.
EPO case law is very clear in this matter: equivalents have to be apprehended under inventive step. This is also in conformity with Art 69(1) and Art 1+2 of the protocol. Equivalents are not directly and unambiguously derivable from the originally filed documents.
For the surplus, equivalents are not mentioned in the EPC, just in Art 2 of the Protocol, the latter not defining what is to be understood under equivalent.