EP 3 054 066 B1 relates to a fence structure.
Brief outline of the case
The patent was maintained according to AR5 and the opponent appealed.
Claim 1 as maintained lacked IS over D16, figuring on the ESR, in combination with CGK.
As the opponent’s objections against AR1 filed in appeal were late filed and not admitted under Art 13(2) RPBA, the patent was maintained according AR1ap.
The case is interesting as it deals with the notion of incentive to modify the PA and the notion of prejudice.
The OD’s decision relating to an incentive in the PA
The OD considered in the contested decision that the skilled person would not have arrived at the invention starting from D16 since this document did not provide any incentive to adapt or modify the fence disclosed therein to improve its corrosion resistance, in particular since this closest prior art teaches the use of various materials already having good corrosion resistance.
The proprietor agreed with the OD.
Alleged technical prejudice against using Corten steel for the proprietor
The distinguishing feature “Corten steel” in the uprights of D16 was specifically defined for the “tubular metallic sections” constituting the uprights.
Corten steel had never been proposed for this kind of application even though the material itself had been known for several decades. The use of Corten steel required an in-depth study before its suitability for a particular application could be confirmed. D16 discloses uprights comprising several points where water or humidity were likely to accumulate and where problems were to be expected if Corten steel was used.
For the proprietor, it was part of the CGK of the skilled person that the use of Corten steel entailed disadvantages in applications with water accumulation or in salty environments. The CGK was to be found in D32 on the following link: “https://en.wikipedia.org/wiki/Weathering_steel” dated 23.04.2013.
The board’s decision
No necessity for an incentive when applying the PSA
The board reminded that the PSA is based on what the skilled person would do when looking for a solution to the OTP, which is defined on the basis of the technical effect produced by the distinguishing features.
For the board, it is a conceptual error to consider that the CPA must provide an incentive to modify the same in order to justify an absence of IS.
The motivation to modify (if any) can also be – and usually is – found in the secondary teaching consulted by the skilled person when looking for a solution to the OTP.
Indeed, a teaching in the secondary document is usually the pointer which incites the person skilled in the art to apply the prior-art teaching disclosed in the secondary document in order to overcome the OTP.
Such a pointer or incentive is precisely what differentiates the obvious solution from a hindsight-based solution or the “would” from the “could”.
In the present case, the known anti-corrosive properties of the Corten-steel metal provide a motivation or pointer to use the material to improve corrosion resistance. There is thus no hindsight in the analysis, contrary to what has been argued by the proprietor.
In the present case, the board added that the fact that some of the materials in D16 exhibit good anti-corrosion properties is not an indication to the skilled person that they are the only materials to be used for the embodiments disclosed therein. In other words, D16 does not teach away from considering other materials.
Alleged technical prejudice against using Corten steel
D32 discloses that the use of Corten steel in construction presents “several challenges if water is allowed to accumulate in pockets, those areas will experience higher corrosion rates, so provision for drainage must be made, but this statement is made in the context of applications in construction.
For the board, the reservations of the use of Corten steel in the technical field of construction does not result in a generalised technical prejudice against all applications. It is restricted to the existence of reservations regarding the use of Corten steel in this particular field.
This does not mean that it was CGK that any water accumulation or humidity concentration in an element differing from a construction element – e.g. a fence upright, as disclosed in D16 – rendered the application of Corten steel unsuitable for it. The same applies to the case of the disclosed disadvantages linked to a use in “salty environments”, the fence of D16 furthermore not being disclosed as being intended for such environments.
The patent specification does not support the alleged technical prejudice either, since it contains no reference to any problems caused by water accumulation or humidity, let alone to any means of countering these alleged problems.
In the absence of any evidence by the proprietor, and without there even being any mention of alleged technical prejudice in the cited prior art, it is not convincing that the precise contribution of the invention was to be seen in overcoming such technical prejudice.
Comments
No necessity of an inventive to modify the PA at the EPO
The present decision of a board reminds that, when applying the PSA, there is no necessity for the skilled person to find an incentive in order to modify the CPA.
This position appears to differ with the position of the German Federal Court (BGH), for which it needs an incentive to modify the chosen PA.
For the BGH, the idea is that treading a new path to solve a technical problem, is in principle to be regarded as an inventive step if the person skilled in the art did not receive a “hint” that put him on this path, see Deichfuß, GRUR Patent 2024, 94.
This is not necessary at the EPO when the skilled person “would” apply a known teaching to the CPA to solve the OTP. The notion of CPA and OTP as used in the PSA is foreign to the BGH.
Alleged technical prejudice against using Corten steel
The board made clear that an alleged prejudice to use a certain product in a given field does not necessarily applicable in all fields.
It is also to the party prevailing itself from a prejudice to prove the existence of a prejudice.
Comments
29 replies on “T 0428/23 – Incentive and the PSA-The notion of prejudice is not applicable to all fields”
An interesting case – thank you for sharing.
I wonder if you are suggesting in your comments that the BGH would reach a different conclusion on obviousness because the Problem-Solution-Approach is “foreign” to it? As I understand this decision, it is saying that the person skilled in the art would be well aware of the corrosion-resistant properties of Corten steel and that the difference between D16 and the claimed invention is therefore a routine variation, i.e. obvious. The motivation to modify D16 comes from the skilled person’s awareness of the common general knowledge. Wouldn’t the BGH find the hint to tread a new path (or motivation to modify) in exactly the same place as the EPO, i.e. in the skilled person’s awareness of the common general knowledge? Or would the BGH require the hint to come from D16?
I admit that I have as yet only spent a short time on this case but would also thank Daniel for flagging it up.
Since time immemorial, patent owners have played variations on the theme of “Look, it is indisputably new. There must be a reason why nobody’s done it before. That reason is that it wasn’t obvious to do it”. Most courts have seen all this BS before, innumerable times, and it doesn’t wash, under any robust theory of patentable inventivity.
That said, Daniel is to be thanked for reminding us all, again, that the established case law on obviousness in the German courts is different from that at the EPO.
Concepts like CPA and OTP are meat and drink for a technically-competent tribunal (such as at the EPO), less so for non-technical judges trying to do justice in a patent case. Those non-technical judges need more wiggle-room, more subjective impressions, more weight to commercial factors as opposed to depth of technological knowledge.
Trouble is, the more wiggle-room the governing case law allows the courts, the more difficult it is to predict the outcome of the obviousness enquiry, and the more lengthy and complicated the litigation becomes. Litigators are happy if every case has to go to a Court of Appeal. That’s obvious. Business men and women trying to make a success of an SME company less so. That too is obvious.
@ HKJ
I did not say that the BGH would necessarily reach a different conclusion than the EPO. It can well be that both jurisdictions could come to a similar conclusion, simply the way they would go along would be different since the notion of CPA and OTP is clearly foreign to the BGH.
I understand that from what I have heard and read about the BGH case law, that the problem is to be held very general and a problem has to be found even when deciding a lack of novelty. This is totally unknown at the EPO. At the BGH, the problem has to be derived from the application/patent itself, but can be different from the “subjective” problem the inventor was facing. This is also quite different from what is done at the EPO.
The board decision makes clear that there is no general prejudice to use Corten steel in the application envisaged, i.e. upright fencing posts. As Corten steel is well know for its general corrosion resistance, the skilled person would use Corten steel for such posts. This does not require any inventive activity. In other words it would attempt to use Corten steel with the expectation of success. This is another way to look at inventive step.
I am not willing to substitute myself to the BGH, and I am at a loss to say whether BGH requires the hint to come from D16 or not.
However, I could well imagine that the BGH would agree with the OD and find that D16 does not give any incentive to use another corrosion resistant material as the problem of corrosion resistance has already been solved in D16, and therefore conclude to the presence of inventive step. We should not forget that the BGH is often criticised as a “patent repair institution”.
Hi Daniel,
No, I know you didn’t say that BGH would necessarily reach a different conclusion than the EPO, but you did make a deliberate point of referring to the different approaches to assessing inventive step adopted by the two institutions, so I simply wondered if this was something you were “suggesting”. Hence my question.
I don’t see a problem in having two institutions assessing inventive step differently, as long as they reach the same conclusion. For a case such as this where the routine variation seems so clear, it is concerning that you could imagine (based on your far greater experience of BGH caselaw than me) that BGH could arrive at a different conclusion! And your comment about BGH approach to novelty is equally concerning!
Thanks again for your posting.
HKJ
HKJ: Don’t you think that Daniel Thomas was simply suggesting that it is within the imagination of a German court to adopt the reasoning of the OD and accordingly declare that COR-TEN for fence posts was not an obvious choice? What worries me is the OD thinking. Who would have thought that a tribunal of three, including two “technical judges”, after exhaustive contemplation, could arrive at a conclusion that using COR-TEN steel for fence posts was patentably inventive. Such decisions give critics of the EPO material for their argument that only a court can “do” obviousness properly.
It reminds me of the first question once put to me in my patent law firm long ago, by clients from outside Europe facing an opposition by a company fbased in one of the EPC Member States: from which countries do the members of the OD come?
Dear Max Drei,
I agree with you, that the OD’s thinking is worrisome. It is rare that a board states that the OD committed a conceptual error. This was the reason why I selected this case for publication.
In the present case, and in general at the EPO, I do not think that the nationality of the members of the OD have played a determining role.
I would think that it is more the fact that the chair and the first member of the OD were apparently not normally working in the field of the patent which appears to have played a role and the fact that the OP was long and tedious. According to the minutes, the OP started at 09:07 and was closed at 18:19.
As the case is relatively simple, one wonders why it has taken so long, as the OD actually dealt with 2 requests, AR 1 and 5. The new MR and AR3-4 were not admitted as they offended R 80 and AR2 fell for the same reason as AR1. Even taking into account that the opponent came with objections under Art 100 (b) and (c), it does not explain the lengthy procedure. If AR 5 would not have been held allowable, they would still have been 12 AR to discuss…..
The problem actually starts with the grant as the characterising part reads: “characterized in that said first metallic sections (3) are made of COR-TEN steel”.
AR1 in opposition was lacking N over a document not mentioned in the ESR, and AR5 as maintained was held lacking IS over a document classified as X,Y in the ESR!
The patent was only maintained in appeal according to a further AR, for lack of timely argumentation by the opponent, but in my humble opinion such a patent should never have been granted in the first place. .
Hi,
The present case/decision is indeed interesting and worth discussing.
In view of the fact that the decision finding is arrived at in rather different ways, it cannot be excluded that different decisions can be issued at the EPO and at the BGH or even at the UPC with the same prior art. Ideally the result should be the same, but I failed to be convinced.
The way the BGH assesses inventive step is best illustrated in the article of Mr Deichfuß I have quoted. Mr Deichfuß is judge in the Xth Chamber of the BGH dealing with patent matters.
In this article the author desperately attempts to show that in spite of the different approaches, the result could be identical. The problem is that there is no direct comparison based on cases discussed in both jurisdictions. The case law of the boards cited by the author is old and obsolete and cannot be taken as being representative of recent case law of the boards. The rest is a mere succession of benevolent hypotheses aiming at showing identical results.
I also found the comment about the necessity of a problem when dealing with novelty at the BGH concerning, not to say problematic. In view of the quality of the author, we have to accept this statement at face value.
Daniel, my attenton was taken by Reasons 3.3 page 24 of the Decision. In my own practice, I am often in the situation of arguing that a technical effect can be taken into account even when it is not advertised in the application as filed, and that is because the skilled reader, learning from the description and drawings the realisation of the claimed structure, immediately appreciates from it the technical effect which it delivers (and which I am relying on in defence of the patentability of my claim).
So, my question: is the Board on page 24 reciting what is established and unassailably correct under EPO-PSA?
Dear Max Drei,
I can only but agree with your first comment. I do agree with you that technically minded judges are less prone to succumb to a nice pleading with full arm waiving as one can often see in civil courts. How often has a lawyer come to defend a party at the EPO? There are very few lawyers acting before the EPO. I only had one positive experience, but all the other were desastrous.
Why has the UPC be created: exactly for this reason. It allows people with little or no technical knowledge to regain in a centralised court what they have lost to technically minded people acting at the EPO, be it as party representatives or deciding body.
As far as your second comment is concerned, I would say that if the effect is not advertised in the original description, this does not hinder a finding of inventive step. This is actually what the message G 2/21 conveys.
Headnote 2 says clearly:
!II. A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.”
The last § of page 24 does not, in my humble opinion, says anything fundamentally different:
“The skilled person looking at a particular disclosure can infer technical effects deriving from what they see in view of their technical background, which allows them to understand the technical implications behind the disclosed solution. However, this does not imply that they would necessarily have thought of this as a solution to a particular technical problem before having an opportunity to observe it for the first time.”
This is to me what is established and unassailably correct under EPO-PSA.
Thanks, Daniel. Your reply shows us how slippery is the issue of “hindsight” when performing the obviousness analysis. It is NOT hindsight when we use the specification of the application as filed to discern whether or not an inventive step was made. That’s because the specification was written on a date prior to the date of the claim whose validity is being assessed.
Americans reared in a “First to Invent” environment have a particular dificulty with this form of thinking. For them, the specification, written AFTER the date of invention, is crafted with the benefit of “hindsight” (and so not available for the assessment of inventive activity).
In our system here in Europe, we know that drafters of specifications will include as many wondrous technical effects as they can think of. Tribunals have to view them all with deep scepticism, and listen carefully to opponents and petitioners for revocation who explain the inadequacies of the much-touted but possibly illusionary technical effects trotted out in the specification as filed.
But that’s OK, just as long as the judges can see when they are having “technical” wool pulled over their eyes by silver-tongued advocacy. The winner should be the one with the better case on the technology, not the one with the most skilled advocates.
Dear Max Drei,
The danger of hindsight is indeed always present when assessing IS. The technique has evolved even when an examiner is deciding grant or refusal. The effect of the time lag is more pronounced in opposition and appeal, but at its maximum when validity is challenged outside the opposition period.
I fully agree with you that it is not hindsight when the specification of the application as filed is used to discern whether or not inventive step is to be acknowledged.
I quoted G 2/21, but when one sees how it is applied differently in various boards, it is looks like a big incentive for representatives to indeed include as many wondrous technical effects as they can think of.
For the time being it is most applied in chemistry/pharmacy, but it could well difuse in other areas of technique, albeit with more difficulty.
When looking at some of the board’s decisions after G 2/21, commented in my blog, I come to the conclusion that some boards have manifestly not seen that they are having “technical” wool pulled over their eyes by silver-tongued representatives.
This can work even better with judges without any technical knowledge faced by hand waving lawyers.
I do fully agree with you that the winner should be the one with the better case on the technology, not the one with the most skilled advocates.
@DXThomas,
I have found your statement regarding the reason for which the UPC was created entertaining. But I have not been convinced, given that the UPC is the result of a 40-year effort to create a European patent system.
Nevertheless, your emphasis on the difference between technically minded people and legally qualified judges reminded me of the debate about adopting the German bifurcation at the UPC, which took place in 2022. There was certainly a lot at stake for German patent firms, and indeed the rise of the UPC workload above initial expectations must have had a sizable impact on the workload of German patent courts and on the litigation business of patent firms. Bifurcation is not absolutely excluded at the UPC but it is clearly not the rule, just the exception. And interestingly enough, several decisions of UPC LDs located in Germany have kept away from bifurcation when they had the choice, citing efficiency and consistency objectives.
@MaxDrei
I do not quite agree with the opinion that the UPC is detrimental to SMEs. Proceedings are much swifter than in national courts. And the UP system, which is the cornerstone of the UPC, is highly beneficial to SMEs because the UP option saves national fees. This is clear from the uptake of the UP by SMEs, which is much higher than initially expected.
Francis Hagel, I accept your observations that, for European SME’s, the UPC has some benefits. Thanks for pointing them out, One hopes as ever that, on balance, the good outweighs the bad.
Mr Hagel,
You might have found my statement regarding the reason for which the UPC was created entertaining. It is your good right, but I maintain my point of view.
The UPC allows people with little or no technical knowledge to regain in a centralised court what they have lost to technically minded people acting before the EPO, be it as party representatives or deciding body. If technical judges and representation by non-lawyer qualified representatives could have been avoided, the UPC supporters and lobbyists would have happily done without them.
For your information, the effort to create a European patent system is way older than 40 years. It started with 4 drafts in the 60ties under the then EEC, now EU. Those drafts never materialised and instead came the EPC in 1973 which stopped at grant. The follow-up, the Draft Luxemburg Convention from 1975 was dead borne.
It is only by massive lobbying of internationally active lawyer firms helped by national judges that the idea of the UPC came back on the scene. I maintain that the UPC would like to become a giant, but is no more a pseudo giant standing on very shoddy feet.
The UPC and its promoters are actually ignoring the rule of law, cf. all what happen after Brexit. The UPCA has no exit clause, and the VCLT has been superbly ignored! Rather than doing what should have been done in that situation, some legal tricks were used to create the Milan section of the Central Division. I never heard you say anything about this! I bet you approve the move.
The way the provisional application of the UPCA has been decided ex-officio by the depository is another example of the negation of the rule of law. Contrary to what had been announced by the Interim Committee, the depository ignored the VCLT.
Usefulness of the UPC
What good was it to bring a single entry door in Europe for the litigation of granted EP, when barely a third of those belong to owners residing in UPC member states? Why did Poland and the Czech Republic refused to join the UP system? Have you ever thought of this? I am looking forward to your statement.
Bifurcation has always been a specificity of the German system. In case of parallel prosecution on the validity of a granted EP, opposition at the EPO and counter claim for revocation at the UPC, we have a de facto bifurcation. The results might however diverge, and then? See below.
UPC and SMEs
The usefulness of the UPC, besides allowing some people, e.g. lawyer firms, to deeply fill their pockets, has never been demonstrated. The patent world lived very happily without the UPC and the number of multinational litigation procedures has been limited to large companies with immense financial resources, far from those available to SMEs.
The reduction in post granting fees might be interesting for SMEs, but this apparent fee reduction has to be paid by court fees which are way higher than in national courts. Representation costs are as well way higher as usual, not only due to the multinational aspect of the litigation, but also to the tight time limits which are imposed at the UPC. The drafters of the RoP UPC, a small self-coopted group of lawyers and judges, have duly taken care of their interests. In the end, it will only be firms with deep pockets which will have the financial resources to go to the UPC.
That SMEs are willing to try the new system is not at stake, but are they really aware of the costs which any action before the UPC entails, being claimant or respondent? If a SME wins it can be good for it, but if it loses, its finances might get hurt in spite of the ceilings for recoverable costs. Seeing SMEs fighting against each other at the UPC is not enjoyable when taking into account the costs involved. I dare think of the respective representation costs.
In view at the rate of which patents are maimed when opposed at the EPO, are SMEs guaranteed that they obtain a rock solid patent at the EPO? Less than 20% of patents survive an opposition unharmed. If the UPC does not become a patent repair shop, as the BGH often is, the awakening for SMEs might be hard if they see their patents not surviving. We will have to see how the SME’s participation to the UPC system evolves with time.
The real possibility to end with contradicting decisions
Last but not least, the danger of conflicting decisions between the UPC and the boards of appeal of the EPO, is a problem which cannot be swept under the carpet as it has been done up to now by all those in favour of the UPC.
The day will come when one forum revokes a patent deemed valid by the other one and vice versa. What then for the parties? I would say that then even more money will then go to lawyer firms! When a national court decided differently on validity than the EPO, consequences were not dramatic. With the UPC, the scale of consequences can become dramatic.
It is not because I used to work at the EPO, but for plain logic, that I think that decisions of the EPO on the validity of granted patents should prevail. The EPO has the broadest geographic coverage, and it should in any case not be the decision of the jurisdiction having decided first which ought to be followed.
Thanks to its RoP and its short time limits, see above, the UPC will in most cases decide first. I do not understand judicial harmonisation by the second forum being invited to follow the one having decided first. At this game, the UPC will always win. This is however what has been strongly suggested by the CoA UPC. I call this judicial imperialism.
Daniel, I enjoy it, when your comments give me an opportunity to post another rant, this time on judges, technical or otherwise.
Commentators in England are (once again) suggesting that the jury system has outlived its usefulness. Back in the 1960’s, one judge had to ask counsel who or what are “The Beatles”. Another judge, in the obscenity trial over D H Lawrence’s book “Lady Chatterley’s Lover” famously reminded the jury members to consider whether they would be happy to allow their domestic servants to read the book. No wonder he was ridiculed thereafter in the popular newspapers of the land. I ask you! In what society were judges in England in the 1960’s leading their lives?
But now, it’s different. How can jury members cope with the facts in, for example, an ultra-complex tax fraud (Cum-Ex???) case? In the USA, in patent validity cases, how can the jury cope with complex chem-bio-pharma or computer technology cases? Answer: they can’t. They simply decide which of the opposed parties is wearing the black hat and which one has the white hat, and decide the case in favour of what they perceive as “the Good Guy” against the “Bad Guy”.
How different is it then, when non-technical judges decide whether the claimed subject matter was or was not obvious? Answer: Not different. Jury members defer to the experts at the USPTO. Non-technical judges on the European mainland instead defer to so-called “technical experts”, experts in plausibility, who are paid by their employer to trot out whatever story will win the case for them. Oh and by the way, don’t get me started on the racket called “court-appointed expeert”. Several notorious miscarriages of justice reveal the dangers of that sort of justice. Justice is seen as giving the victory to the side that somehow, subjectively, “deserves” not to lose the case. Is that right? Or in a patent case should the party with the better technical arguments and evidence win the case?
No wonder European patent attorneys, hired guns who work one day for an opponent and the next day for a patent owner, respect and cherish the established case law of the Boards of Appeal of the EPO.
Mr Thomas,
Thank you for your considered response. Regarding the UPC, I have already read your critical comments on your blog and others. I will not discuss them because I do not feel they are relevant from my viewpoint, which is that of an in-house IP professional. I have a few remarks though.
The UPC is an impressive success story, looking at how quickly it has been able to gain credibility and build a consistent jurisprudence, and achieve its objective of « fast-lane » proceedings in all cases. It is also always interesting to listen to practitioners outside Europe, and what I have read so far is that it is an unqualified success.
It must be acknowledged that the EPO is to be credited for a major contribution to this success, since major aspects of the UPC case law draw on that of the EPO.
Take the PSA : by and large, the UPC applies a PSA. It is of note that the assessment of IS is typically a matter for technical judges, and technical judges are European patent attorneys who are familiar with and strong supporters of the PSA. This is true at least for the French technical judges I know.
It is also noteworthy that the EBA (in a 5-member panel but chaired by the Chair of the BOAs) recently stated in R 8/19 Reason 7 that « there is no obligation to apply the PSA ». Literally, this is not disputable, the PSA is not stated in Art 56. Nevertheless, this statement casts doubt as to whether examiners are bound to apply the PSA.
As the UP system, you downplay its benefits for patent owners, by referring to the supposed drawbacks, high costs etc, of litigating UPs before the UPC. This argument disregards the fact the likelihood of litigating a granted patent litigated before a court is minuscule.
Dear Max Drei. Good point, I had only looked at this from the point of view of the board’s decision. How was it possible for the OD to conclude differently on such a clear-cut case? (rhetorical).
How? I suppose the OD was inclined to uphold the ED if it could find a way to do so.
And I suppose it thought it was correctly applying EPO-PSA.
Sometimes, when one over-concentrates on the minutiae of the case law, one forgets to take a step back and ask oneself: what will a fence designer or builder say when I try to explain to them that I just awarded a 20 year monopoly to somebody, in return for coming up with the suggestion that conventional COR-TEN steel would serve just as well for the fence posts as any other well-known and conventional corrosion-resistant steel. Frankly, the OD decision beggars belief.
The EPO prides itself on being real-life in its decisions. Examiners used to visit the research facilities of bulk applicants. Does that still happen, I wonder. Or does EPO management see it as a damper on the “productivity” of its Examiners?
Dear Max Drei,
Let me just come back to some facts:
The OP was long and tedious. According to the minutes, the OP started at 09:07 and were closed at 18:19.
As the case is relatively simple, one wonders why it has taken so long, as the OD actually dealt with 2 requests, AR 1 and 5. The new MR and AR3-4 were not admitted as they offended R 80. AR2 fell for the same reason as AR1. Even taking into account that the opponent came with objections under Art 100 (b) and (c), it does not explain the lengthy procedure. If AR 5 would not have been held allowable, they would still have been 12 AR to discuss…..
The problem actually started with the grant as the characterising part reads: “characterized in that said first metallic sections (3) are made of COR-TEN steel”.
AR1 in opposition was lacking N over a document not mentioned in the ESR, and AR5 as maintained was held lacking IS over a document classified as X,Y in the ESR!
The patent was only maintained in appeal according to a further AR, for lack of timely argumentation by the opponent, but in my humble opinion such a patent should never have been granted in the first place….
I leave you and the other readers to draw their own conclusions.
Dear Max Drei,
Your last comment of May 13th deserves a reply.
I would not consider your comments as mere expression of a rant. They are more than often the expression of common sense.
When it comes to decide complex matters, civil court judges, due to their education, do not have the knowledge necessary to make decisions by themselves. This is not a criticism, it is a matter of fact.
In patent matters we see how long and tedious the way judges in civil courts go along in interpreting the claims, defining the skilled person etc.., This shows that they do not have the technical knowledge to be in a position to decide by themselves. The EPO’s technical boards of appeal do not need all these convolutions.
We do need judges to interpret legal texts, and come to a decision when two parties quibble in court. When judges need to interpret the technical content and context of the case in front of them, they are confronted with their limits.
With due respect to British judges, one could say that not knowing who the Beatles were, or having reservations about the content of “Lady Chatterley’s Lover”, might be due to the wigs they were and which could hinder perception of what is going on in real life. 😉
In the cum-ex affair, a deep knowledge of the functioning of the digitised stock exchange was needed to even realise that fraud was going on. The time of paper shares have long gone. It is with the help of tax experts and IT forensic specialists that the fraud which happened in a fraction of a second could be demonstrated. No judge on its own can have the required knowledge.
Another field in which very specialised knowledge is a prerequisite, is in case of medical malpractice. Accidents and catastrophes in manufacturing plants are another example.
That on top, a jury should decide in such cases is bringing the exercise of justice ad absurdum. So called experts are then playing a direct role in the decision finding. As you say, a court case is then boiling down to a battle of experts. Each party has its own expert and they rarely agree. It is a bit like the skilled person. For the opponent it is super intelligent, and for the proprietor, it is as thick as two planks, and we are back to square one.
Wouldn’t it be “fun” if there were lots of Eastern Texas districts over the world…..
Saying justice is a difficult job which deserves respect, but judges should, in lots of cases, acknowledge the limits of their knowledge and wisdom. The same applies to lawyers who have a monopoly of representing parties in court. They might be good at speaking and at waving arms, but this does not replace technical and scientific knowledge.
In this respect, the founders of the EPC and their decision to give, in patent matters, precedence to technical knowledge at the boards of appeal of the EPO deserves high praise. Even if the EBA is chaired by a legally qualified person, two technical members need to be present in the panel when it decides under Art 112.
The question is: shall the judges rely on their own knowledge of the person skilled in the art, or shall they gather that knowledge from experts? Only the EPO has a high enough throughput of cases that the judges themselves have enough technical knowledge. In the courts, shall it be a “court-appointed expert” who delivers to the judges the technical understanding they need? or shall it be, as in England, exclusively evidence delivered under cross-examination by the respective technical experts fielded by the opposed parties. The latter is the safer way, but is more time-consuming and expensive. This is why the courts should respect the decisions taken at the EPO. But how much respect does one give to the OD decision here? Can the TBA’s maintain quality, going forwards from here? Should they even bother to try?
Dear Max Drei,
I do agree with you that in the absence of any own technical knowledge of judges in civil courts, they need “experts” to help them in their task.
Taking as example the BGH, judges need first to interpret the claim, define the skilled person, its common general knowledge and then to analyse and interpret the prior art to come to a conclusion on the validity of the patent, or on the possible infringement.
“Experts” can be “court experts” in the ordinary meaning of the word, or “experts of the parties” speaking through their respective lawyers.
The expert of the opponent, or the defendant in infringement, will always consider the patent invalid and that of the proprietor, that the patent is valid beyond any doubt. If a party is dissatisfied with the expertise report of a “court expert”, it will generally require a second report by a different “court expert”. If both reports coincide in their result, then the likelihood that the experts conclusions are correct is high. The slightest difference or nuance between the reports, will however end up in a battle of interpretation of the various reports.
I do agree that when faced with reports of “experts of the parties”, only evidence delivered under cross-examination gives the guarantee that the situation is properly assessed and does not result from a bias. The latter is certainly the safer way, but, as you point out, it is more time-consuming and expensive.
It is interesting to note that under Art 117(1,e) EPC means of giving or obtaining evidence include opinions by experts, but it is not specified which kind of “experts” are meant.
From time to time, parties requeste the hearing of “experts” under Art 117(1,e) EPC. I do not remember that a board has ever granted such a request. Boards mainly consider that they have enough technical knowledge and experience which makes calling experts inappropriate.
When parties file “expert” reports, the boards certainly take knowledge of them, but do not give them more weight than any other submission of a party. And it is right so so. The boards are generally displeased when such a “expert report” has been drafted by a former member of the boards, even after the delay imposed to them not to appear after having left the boards.
It is clear that presently board members have to show a certain performance if they want to be reappointed, but from regular discussions with some of them, I am convinced that most board members not only bother to try, but also want to maintain quality in substantial matters.
The problem with the boards is more the fact that the RPBA are not applied in a convergent and coherent manner by the various boards. If the overall quality delivered by the boards has to be criticised, it is more in procedural than in substantial matters.
This is a problem which needs attention, rather than always touting that the boards have an excellent and increasing production. The will to shorten the time of disposal of an appeal is to be acknowledged, but this should not be done at the detriment of the parties.
In view of the experience of 40+ years, decisions of the boards in matters of validity can really be considered as a benchmark for other jurisdictions. However, I am not sure that this opinion I shared at the UPC.
I might also have been ranting, but it was worth it.
Francis Hagel defends the UPC with some good arguments but one of them (that the likelihood of being in court with a granted patent is “miniscule”) cannot pass without a word from me.
We have to ask ourselves, why is it that the likelihood in miniscule, given that so many patents are opposed at the EPO. It doesn’t necessarily follow that all is well, in the patent world. Ideally, that is because parties mostly know already which of them will win in court, so settle instead. But it might not be that we have achieved the ideal.
Thinking back to the UK, before 1978, the likelihood was also miniscule back then. But that was because litigation was so expensive (and slow) that parties (businesses craving “certainty”) almost always settled their differences before they got to court. Some commentators, and some lawyers with “skin in the litgation game” argued that this was not a bug but a big plus feature in the English system. Parties settled with each other earlier and more often exactly because the only alternative (litigation all the way to a full trial of the action) was so slow and expensive.
To be fair to SME’s, the option to go all the way to trial has to be not only fast and fair but also affordable. Mr Hagel argues on the basis of his inside knowledge that it is. Hooray. well done Brussels. Europe’s not dead yet, eh?
Dear Max Drei,
I read with interest your reply to Mr Hagel’s statement of May 16th.
I am not convinced that Mr Hagel brought forward good arguments in favour of the UPC. I am rather convinced of the contrary, as his arguments were rather biased. I refer to my own reply to Mr Hagel.
It is nothing new under the sun that parties prefer to settle before going to court. A court action is always more expensive. I have also witnessed a drop in oppositions in specific fields as a result of negotiations and cross-exchange of licences between parties. When they haggled again, oppositions came back. In view of the fact that less than 20% of patents survive an opposition untouched, I would not advise SMEs to act at the UPC without checking the value of their patent.
As far the affordability of the UPC for SMEs is concerned, I gave an example based on a case disputed before the it. A do not think that half a million € in procedural costs is something a SME can fork out just like that. And this was just for a PI. Not even a complete dispute on validity.
@MaxDrei
Thanks for your kind response. I have to clarify a point. When I pointed out the concern for SMEs that patent procedures should be affordable, this related to the benefits of the UP option. I had not in mind the UPC.
As to the assessment of the UPC, there may be different opinions, but a key thing is that the UPC is part with the EPO, the UP system and national courts competent for patent matters of the European patent system, and I think it distorts the judgment if this system is viewed through the lens of the UPC, especially because a vast majority of patent owners are not, or very seldom, exposed to litigation. But they are well aware of the benefits of the European system.
Patents are not worthless because they are not litigated. For companies, patents may be very beneficial in non-contentious contexts. Surveys show consistently that a primary objective of filing patent applications is to secure their freedom to operate. In addition, applications/patents may effectively support the company’s business objectives in contexts such as relationships with suppliers, clients, investors and even competitors. Companies typically keep away from litigation, which entails costs and uncertainties and may affect relationships with clients. I spent two decades in a multinational company in which the motto for lawyers was : « Keep the company out of trouble ». Litigation was of the main « troubles ».
Sorry for the inadvertent repetitions of my comment.
I removed the repetitions
DXThomas
Mr Hagel,
Your statements of May 16th call for the following reply.
You have your opinion on the UPC and I have mine, and we could agree that we disagree. Let’s now turn to your statements
I fail to see how the UPC has built a consistent jurisprudence after barely two years of existence. You must be joking. There is still a lot of work to be done by the CoA. May be in 5 or 6 years we will be able to speak about a beginning consistent jurisprudence. For the time being we are far from it.
The only thing which is clear from the UPC is that the EPO should follow its decisions, as it will always decide first. I do not call this harmonisation, I call this judicial imperialism.
It is certainly a fast lane procedure, and this the first reason for the costs involved. Time is money, and even more for lawyers.
It is clear that for practitioners outside Europe that the UPC is a kind of godsent. One central place to attack European industry, what could they hope for better?
You are willingly ignoring it, but barely a third of granted patents belong to patent owners residing in UPC contracting states. So were is the interest of the UPC for European companies and especially European SMEs? The impact of the UPC on European SMEs has never been established. I do not wonder why. Have you ever thought why Poland and the Czech Republic did not want to join the UPC?
Could you please give some figures supporting your allegation that “by and large, the UPC applies a PSA”. In my opinion, it does not apply the PSA as it is done at the EPO. At best the UPC applies a kind of “Canada Dry” PSA: it looks like the PSA, it smells like the PSA, but it is not the PSA.
Mixing a discussion on the UPC with a decision of the EBA in a R case, on the application of the PSA, is misplaced, to say the least.
As a professional representative before the EPO, you should know that examiners are bound by the Guidelines.
They can only diverge from them for good reasons. I cannot imagine a first instance division diverging from the Guidelines in such an important aspect as the assessment of IS.
Inferring from a comment of the EBA in a petition for review, discussing procedural matters, that there is no obligation to apply the PSA, is as well misplaced. I presently do not know a TBA not using the PSA.
It is not the first time I notice this behaviour on your side, but you really have the nag to misinterpret facts and decisions if they serve your point of view. In the future, I will systematically pin you down when you come with such fake arguments.
The fact that the likelihood of litigating a granted patent litigated before a court is “minuscule” is not as pertinent as you might think. Large companies with heavy financial means can inundated, or threaten to inundate SMEs by acting against them in court. The UPC has not been designed for the benefit of SMEs. The best proof is that for a while, the set-up of a litigation insurance scheme for SMEs has been envisaged. The idea has been dropped later.
A long time ago, I have witnessed a scenario in which large companies harassed a SME till it collapsed. A SME, with quite revolutionary patents in the packaging sector, was brought to the halt, as the owner and inventor did not have the financial means to cope with the pressure from the leading companies in the sector. Either the SME’s patents were simply copied, as the leaders knew it could not afford litigating, or bought up, or the SME was threatened with litigation actions before court. It all happened in Germany. I dear imagine this happening now with the UPC in place and with the involved costs.
In the well-known Hanshow/SES Imotag-Vusion case, the claimant which saw its PI refused in first instance and in appeal, has to bear the cost in first instance of 202.041,00 € and in appeal of 131.874,80 €. Taking into account the own costs of the claimant, one can estimate the cost of the procedure for the complainant at roughly 500.000+€. I do not call this amount “minuscule”. With 850 employees Vusion can be considered as a SME.
Mr Thomas,
I do not understand your reaction. In respect of the statement in EBA decision R 8/19 that « there is no obligation to apply the problem-solution approach » , I refer to your own comment posted on 25 September 2024. I quote :
« The EBA held that there is no obligation to apply the problem-solution approach.
However, regardless of whether and how the problem-solution approach is used, the right to be heard means, at least, that the parties must be heard on the basis of the reasoning used in the decision.”
Regarding the IS assessment method applied by the UPC, I call it a PSA because it is very close to the EPO’s PSA, and in fact way closer to the EPO’s PSA than to the IS assessment methods of other leading juridictions (Germany, UK, US).
I can see two differences :
First, the UPC calls for a “realistic” starting point, and accepts that there may be more than one starting point. At the EPO, the term “closest prior art” normally implies that there can only be one starting point. However, this is not binding on an opponent who wants to launch several attacks based on different starting points, and my understanding is that an OD cannot dismiss the opponent’s submission because it would be a violation of the opponent’s right to be heard. In other words, there may be a difference between the ex parte and the inter partes contexts in the way the EPO applies the PSA.
Second, the UPC in the first decisions of the CoA did not refer to a so-called “objective technical problem” taking into account prior art found as a result of the search, but held that the problem was to be defined in view of the entire application.
On this topic, it is of note that the Paris CD decision Kinexon vs Ballino of 20 April 2025 departs from the CoA decisions by referring to an objective technical problem. It will be interesting to see if it the CoA accepts this departure from its first decisions. If so, the UPC approach would become very close to the EPO’s.
Mr Hagel,
If you do not understand my reaction in respect of the statement in R 8/19, then I cannot help you. It is your problem, not mine. As explained to you, doubts as to whether examiners are bound to apply the PSA are totally out of place. It is absolutely flabbergasting to even come up with such a statement.
Your last reply illustrates again once more, that you have the nag to come up with sweeping statements based on isolated decisions also taken by first instance divisions of the UPC.
At the EPO, the term “closest prior art” does not imply that there can only be one starting point. However, when at the EPO, its come to show a lack of IS, then it is indeed enough to show that one way is enough to show this.
When the opponent has launched a plurality of reasonable attacks of lack of IS, then each attack has to be dealt with in order to come to the conclusion that IS exists. Indeed, an OD cannot dismiss an opponent’s submission, but it can certainly be dealt in a more summary way. If all the opponent’s submissions have been dealt with its right to be heard will have been respected. because
In T 320/15 it was made clear that the structure of the PSA is not to be seen as a forum where a party can develop various attacks at will from various prior art documents, in the hope that one of them would have a chance of success. There is nothing to add,
At the UPC, and at the German Federal Court, all possible ways are taken in order to show a lack of IS. This is actually superfluous. One way should be enough.
The way to tackle IS at the UPC may be very close to the PSA, but in view of the clear differences, it is not a PSA. It is a “Canada Dry” version of EPO’s PSA.