Tufty the Cat

A Win for Functional Claim Drafting - Openfield

noreply@blogger.com (Tufty the Cat) — Tue, 12 May 2026 10:56:29 +0000

Defining an invention solely in terms of a result to be achieved (colloquially termed "free beer" claiming) is a risky business and something that tends to prompt objections both at the EPO and UK IPO. When training to become a UK patent attorney, in my experience it is quite usual to practice drafting claim 1 using a combination of a few relevant structural features, something to define their relationship, and ending with some functional wording that defines what the purpose or result is. The functional type wording should ideally reveal or define the 'clever bit', i.e. the feature that would distinguish the claimed invention from whatever prior art turns out to be the closest. This doesn't always work though, because an examiner can find a closer piece of prior art than was known to the inventor at the time. However, when it does work it can result in a broader and potentially more useful patent claim.

Because functional claiming can raise objections, it is always a good idea to provide clear fallback positions to more definite features so that the result to be achieved can instead be defined in terms of how the result is achieved if this becomes needed during prosecution. Examiners will often insist on this, particularly at the EPO (see e.g. F-IV 4.10 of the Guidelines for Examination). In the UK, functional claiming tends to be slightly more acceptable, being allowable so long as the specification provides "enough instruction for the skilled person to be able to achieve the desired result without embarking on a research programme" (MPP 14.72). It is therefore fairly common for UK drafted patent applications to have more free beer than applications drafted from a more continental perspective . However, given that the EPO is now considered the usual standard to aim for, it may be less common than it used to be. Examiners at the UK IPO, being more aware of practice emanating from the EPO, may also tend to look upon functional claiming less favourably than they might have done in the past. The practice remains common, particularly among the older elements of the UK patent profession.

All that is an introduction to a recent decision (BL O/0369/26: Openfield) from the UK IPO regarding a UK patent application (GB2306083.3) defining an invention claimed partly in functional terms, and in which the functional part was the supposedly clever bit that distinguished it over the prior art. The latest version of claim 1 of the application reads as follows:

The claim defined a well logging tool of the type illustrated below (Figure 1 of the application), in which an articulated twin arm deployment arrangement would deploy by the arms hinging and extending away from the cylindrical body of the tool so that they then spanned the horizontal well bore. This enabled capacitive sensors along one of the arms to be positioned along the diameter of the bore to sense a level of water within the bore. The clever bit of the invention was to keep the capacitive sensors vertical as the arms were deployed, all other components of the claimed invention being already known. This bit, as shown in the highlighted part of claim 1 above, was defined purely in functional terms, i.e. without actually defining how the capacitance sensors were kept vertically aligned.

The examiner objected that the way the invention was claimed was unclear because it was defined by a result to be achieved and there was only one way the description showed how this would be done, which was by way of a pantographic mechanism (basically two hinged parallel bars). The claimed invention, in the examiner's view, was therefore not enabled across its whole scope (Biogen insufficiency, referring also to Novartis). The applicant's representative argued against this but didn't manage to win the examiner over, resulting in the case coming before a hearing officer.

The applicant's representative then argued before the hearing officer that there were other mechanisms discussed in the patent application, referring to the use of accelerometers, counterweights and pivots that could be used to keep the sensor elements vertical. While these were not actually disclosed in the application itself, the representative showed how such alternative mechanisms could work, referring to other patents and prior art documents. This appeared to persuade the hearing officer, who found that, while the specification defined only a single embodiment, the skilled person would be aware of various ways of implementing a mechanism to do the same thing. The skilled person would therefore be able to perform the invention over the whole scope of the claim without undue burden or effort, using their common general knowledge. The claims did not therefore need to be restricted to only the use of a pantographic mechanism.

The lesson from this appears to be that, at least before the UK IPO, it is possible to impart common general knowledge to the skilled person by referencing material outside of the patent application itself. This does, however, appear to be a risky move because the more the skilled person is deemed to know, the less likely the claimed invention will be considered to be inventive. Indeed, the application has now been remitted to the examiner to consider the question of inventive step. Perhaps the applicant will manage to carefully tread the line between sufficiency on the one side and inventive step on the other but it looks to me like it could now go either way on inventive step.

Daaci - The final Aerotel test

noreply@blogger.com (David Pearce) — Fri, 13 Mar 2026 08:08:00 +0000

As we all now know, the Aerotel test for assessing patentability in the UK is no more. We are currently waiting for the UK IPO to reassess the application from Emotional Perception following the Supreme Court remitting the case to the Hearing Officer, who first dealt with the application in 2022. Last month's decision in the case of Daaci Limited's Application (BL O/0086/26) was the last time the test will have been used in a decision from the Hearing Officer at the UK IPO. The decision is therefore largely of academic interest, but there are a few aspects that intrigued me, the main one being that the same attorney that handled the Emotional Perception case was also representing the applicant in this case.

Daaci Limited (previously named Heresy Artificial Intelligence Limited) is a curious entity, and with an interesting patenting history in the UK. They have had some success in patenting inventions relating to automatic musical compositions in the US, with 6 granted US patents to their name so far. Given the subject matter, you might expect their success rate in the UK to be not great. They did, however, manage to get 3 patents granted in 2024, apparently on the back of the High Court judgment in Emotional Perception (which issued in November 2023), but surprisingly all 3 have since ceased due to non-payment of renewals. The company nevertheless continued to pursue two other applications, one of which was decided on last month. Another is currently awaiting a hearing following a request that the case be heard after the Supreme Court decision.

There are another couple of curious features about Daaci Limited. One is that they have stated their IP assets to have a value of over £12 million, although the company is currently in liquidation. The company is also stated to be a "sister company of Emotional Perception AI Limited" (according to the representative), presumably because they share a company director in the form of Philip Walsh.

The decision last month related to GB2104696.6. As with the other applications mentioned above (which are divisionals of this one), the application related to a system and method for automatically generating a musical composition based on a "briefing narrative describing a musical journey with reference to a plurality of emotional descriptions for a plurality of musical sections along the musical journey". The system involved a database of musical artefacts that were reduced to constituent elements (termed ‘form atoms’) and linked together based on stored rules to assemble a composition having regard to the briefing narrative and provided as an audible musical output.

Figure 3 of the patent application.

As one might expect for such an invention, the examiner objected that the claimed invention was excluded from patentability as being a program for a computer as such. Following the Aerotel test, the examiner assessed the contribution as a system for automatically generating musical compositions using form atoms, which allowed a user to generate a musical composition having musical features such as melodies, harmonies, chords, and rhythms that reflected and conveyed textural descriptions of a supplied briefing narrative. This contribution was found not to be technical.

Before the Hearing Officer, the representative argued that the invention contained elements that were not merely a computer program but were functional and interacted with physical elements, such as the database storing novel structures as code. The representative also argued that the ‘form atom’ feature was not a computer program per se and the claim as a whole did not therefore relate to a program for a computer as such. A similar type of argument was made by the same representative in the Emotional Perception case, where the arrangement of an ANN was argued not to be excluded under the computer program exception. This argument had some success at the High Court before an obviously very inexperienced judge, but was knocked down at the Court of Appeal and the Supreme Court.

The Hearing Officer, with knowledge of the Court of Appeal decision, disagreed on this point, and referred to the caselaw in this area that dated right back to Merril Lynch [1989] RPC 561, in which Fox LJ considered that it could not be permissible to patent an item excluded by section 1(2) under the guise of an item which contained it (a similar point was made in Gale's Application [1991] RPC 305). It was instead decisive what contribution the invention made to the known art, for example a substantial increase in processing speed as in Vicom (T 208/84).

The applicant also argued that the assembly of unique pieces of music was a technical process and that the invention was in the area of musical technology, referring to Article 27 of the TRIPs Agreement, which states "patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application". The hearing officer dismissed this argument too, considering that the Aerotel test did not exclude entire fields of technology but stepped through a careful analysis to assess each invention on its merits and determine whether the invention was anything more than those integers excluded under the Act. Incidentally, how this argument was thought to have the remotest chance of success, given that TRIPs dates back over 30 years and all arguments about its effect on patentability in the UK and Europe (which were effectively zero) had been settled at least 20 years ago, is quite beyond me.

In assessing the contribution and how the invention worked, the Hearing Officer considered that the claimed invention allowed a user to generate multiple alternative compositions quickly, resulting in a more effective way of providing a system to generate a musical composition. The key question was, in analogy with Vicom, whether this composition of music based on an emotional briefing was a technical process. The output had a subjective and cognitive effect on the user in the manner of the aesthetics or emotional impact of the music. This was not considered to be a technical effect outside of the computer but instead was the automation of a creative process. The invention was considered to be a sophisticated and clever way of encapsulating the sort of knowledge, rules and ‘ear’ that a creative composer may possess, but the process being emulated was a creative one that was not technical in the sense that a creative process itself was excluded. The claimed invention was found to fall solely within excluded matter and was not technical. The application was therefore refused.

Given how applications of this type have been assessed over the years using the Aerotel test, the outcome is not at all surprising or unusual. How would such an application fare in light of the abandonment of Aerotel and with the (as yet officially undefined) new test that should instead incorporate the concept of technical character from the EPO problem-solution approach? Readers will know that I have proposed just such as test, which involve six steps so that the EPO approach can be combined with the UK Pozzoli approach to inventive step. The following is an abbreviated attempt to figure out how the application might be assessed, and if it would make any difference to the outcome.

Claim 1 of the application in the form placed before the Hearing Officer is as follows:

1. A computer-based auto-generative composition system, comprising:

an input coupled to receive a briefing narrative describing a musical journey with reference to a plurality of emotional descriptions for a plurality of musical sections along the musical journey;

a database comprising a multiplicity of Form Atoms having self-contained constructional properties within metadata associated with the Form Atom and where the self-contained properties are derived from an historical corpus of music and where each Form Atom has:
a generative set of heuristics that support generation of a set of chords in a chord scheme or many different sets of chords in the same or different tonics that achieve the same form function and which thus have similar associated emotional/musical connotations, and heuristics that space out temporally any number of generated chords for any given length of musical time;
a tag that describes compositional heuristics of its respective Form Atom;
a chord list in a local tonic where the chord list defines branching structures giving options for generation of different chords from the local tonic, and a progression descriptor in combination with a form function that expresses musically one of a question, an answer and a statement, and wherein the metadata creates a meta-map of a chord scheme in a musical section that is linkable to one or more secondary Form Atoms in generation of a musical composition in which, upon automated selection and concatenation of musically related Form Atoms by a computing system operationally arranged to identify and select different Form Atoms, musical good form is established in the generative composition based on compatible heuristics, chord lists and progression descriptors of each Form Atoms selected for adjacent concatenation, and wherein musical good form is compliant with conventions in accepted musical composition and musical good form contrasts with musical bad form in which there is no obvious or known linking that makes any discernible musical sense between successive musical phrases and in which musical bad form fails to communicate structure because sound signals cannot logically be processed into a sensually resolvable anticipatory order;
wherein musical transitions between Form Atoms are mapped to identify and then record established transitions between Form Atoms in multiple original scores and such that, within the system, groups exist in which Form Atoms are identified as having similar tags but different constructional properties; and
processing intelligence, within the system, responsive to the briefing narrative and coupled to the database, wherein the processing intelligence is arranged to:
assemble, automatically, a generative composition having regard to the briefing narrative through selection and concatenation of Form Atoms having tags that align with emotional descriptions timely required by respective ones of the plurality of musical sections; and
select and substitute Form Atoms into the generative composition, the substitute Form Atom:
derived from the historical corpus of music; and
having its compositional heuristics aligned with the emotional descriptions; and wherein
the processing intelligence is further arranged to cause output of the auto-generative composition as musical output created from applied heuristics within a texture generator of the generative system, said texture generator arranged to select and apply
musical instrumentation and arrangements to sequential chord schemes, formed from Form Atoms selected to generate a harmonic palette, for orchestration of the auto-generative composition and whereby the musical output is made audible from a speaker
receptive of the musical output; and
generating automatically a different generative composition in response to at least a change in the briefing narrative.

The claim is very long and is hardly a model of clarity, having many features that appear to serve no purpose other than to provide obfuscation. The overall gist, however, appears to be reasonably clear, which is that the claimed invention is about automatically generating a musical output from a briefing narrative with use of a database of 'form atoms'.

Step 1: construe the claimed invention and determine the technical character

Claim 1 defines a "computer-based auto-generative composition system", which comprises an input to receive a briefing narrative, a database with various features, and a "processing intelligence" responsive to the briefing narrative and coupled to the database, which is arranged to cause a musical output based on heuristics in the database. The claimed invention has technical character because it involves computer hardware on which the system is provided, which receives an input and generates an output. The initial hurdle is therefore overcome, and the invention is not excluded for being a computer program as such.

Step 2: Determine the closest prior art

This was not determined in the Hearing Officer decision, but WO 2009/036564 A1 was cited during prosecution and discloses a similar type of system in the form of a "flexible music composition engine", which generates music in real time based on provided inputs, and uses an "emotional mapper" to generate musical lines and harmonic patterns. This seems a reasonable starting point, at least to establish that computer-implemented musical generating tools are known.

Step 3: Determine the features that contribute to the technical character

Both the input and output are in the form of cognitive information relating respectively to literary and musical works, which cannot themselves contribute to the technical character of the invention. The computer on which the system operates has technical character, so any feature of the computer could in theory contribute to the overall technical character of the invention, although as we have already established this would need to contribute to improving the computer itself in some way, given that the output is not technical.

Step 4: Identify the inventive concept

The inventive concept outlined in the description (under the summary of the invention, pages 11-12) relates to a generative composition system that reduces existing musical artefacts to constituent elements, which are linked together through Markov chains. To provide a new composition, a set of heuristics define how musical sections are concatenated following a supplied briefing narrative.

Step 5: Identify what, if any, differences exist

The features of the invention that could in theory contribute to the technical character, i.e. the computer as a whole or the database and processing intelligence operating on the computer, are not defined in claim 1 in a way that operates on the hardware level but as descriptive and functional elements that relate to heuristics and metadata, and therefore relate only to subjective cognitive features that would be implemented as a program for a computer to output a musical composition. There are therefore no features in claim 1 that could support novelty or inventive step over the closest prior art, even if there are any differences in how the system operates.

Step 6: Would these differences be obvious to the skilled person?

There is no need to answer this because there are no features that can support even novelty, let alone inventive step.

In conclusion, the claimed invention is not patentable because there are no features that can support novelty or inventive step over the prior art. The application would therefore be refused under this new test, although the reasoning is a bit different.

A Supreme Court Fudge - 6 Steps for Emotional Perception

noreply@blogger.com (David Pearce) — Thu, 19 Feb 2026 16:14:00 +0000

As everyone knows by now, the Supreme Court handed down its judgment in the Emotional Perception case last week. There is plenty of commentary around on the judgment itself, so I won't go into the detail of it here. For background, I wrote about the case at the UK IPO stage in the September 2022 CIPA Journal, at the High Court here and at the Court of Appeal here. In brief, the invention is about the use of an artificial neural network (ANN) to compare two media files to determine how similar they are semantically, the main described application being for recommending a music track based on similarities with other music tracks. The application was refused by the UK IPO Hearing Officer in June 2022. The applicant then appealed to the High Court, which overturned the decision (and in my opinion got it completely wrong - see here for why). The Court of Appeal then reversed this finding (correctly in my view) and the Supreme Court has upheld in part the Court of Appeal's decision but decided that now is the time to abandon the Aerotel approach for determining patentability. What this is to be replaced with, however, is not yet clear.

A new hurdle and some steps.

Upon finding that the EPO's "features which contribute to the technical character" approach to assessing patentability, as set out on G 1/19, was to be preferred to the Aerotel "technical contribution" test, rather than setting out a new test the Supreme Court decided to send the case all the way back to the UK IPO Hearing Officer to consider the matter. Given that the assessment of inventive step as set out in Pozzoli was explicitly not overturned, the Hearing Officer now has the task of figuring out how to put together (in what the UK IPO argued would be a "Frankenstein monster") a test that takes parts of the EPO's problem-solution approach as applied to patentability and combines these with the Pozzoli test for inventive step. Presumably novelty will also need to be assessed somewhere along the way. How to do this, however, is not at all obvious, and no suggestions were made as to how to do this from either the applicant's representatives or from the contributions made by CIPA and the IP Federation. Regardless of what the IPO now come up with, the result will inevitably be further discussion and arguments about whether the test is correct and how to apply it. It may even end up in a further appeal that could go all the way back up to the Supreme Court, although more likely will end up at the Court of Appeal again, where a new test will be settled. All this is bound to take some time.

For the time being, we have to try to figure out what all this means in terms of the test we have to apply. To a first approximation, given that the main gist of the Supreme Court's decision was to make the UK approach more in line with that at the EPO, it would be reasonably safe to assume that following the EPO's problem-solution approach will more or less work, although some parts will need to be adjusted to align with UK law. Taking the relevant parts from the EPO approach, as set out in T 258/03 (Hitachi), T 641/00 (Comvik) and T 154/04 (Duns Licensing) and combining this with the Pozzoli four-step test for inventive step, a possible test could be something like the following.

1. Construe the claimed invention and determine its technical character. This is a necessary first step because it establishes whether the claimed invention gets over the Article 52(2) / Section 1(2) 'hurdle', as for example set out in Hitachi. This is a low bar, as the presence of any hardware (even pen and paper) will enable a claimed invention that would otherwise be excluded to get over the hurdle. The step is also necessary to establish what the nature of the technical character of the claimed invention is, as this will need to be looked at later.

2. Determine the closest prior art. This is step 1 of the Pozzoli test, and includes an assessment of the identity of the skilled person and their common general knowledge. It also corresponds to the first step of the problem-solution approach, although we are not going to use this to assess what technical problem is to be solved.

3. Determine the features of the claimed invention that contribute to the technical character. This is a requirement that was set out in Comvik, which applies to so-called 'mixed' inventions, i.e. those comprising a mixture of technical and non-technical features.

4. Identify the inventive concept. This is step 2 of the Pozzoli test, but with the difference that only those features that contribute to the technical character (step 3) can contribute to the inventive concept. This requirement is set out in part (F) of the summary in G 1/19 of Duns (point 30 of the reasons), in which features that do not contribute to the technical character of the invention are to be ignored for assessing both novelty and inventive step.

5. Identify what, if any, differences exist. This is step 3 of the Pozzoli test, but again adapted such that only those features identified as being part of the inventive concept can be taken into account. If there are no such features, the claimed invention is not patentable.

6. Would these differences be obvious to the skilled person? This is the final step of the Pozzoli test, in which any differences, if these have been identified at step 5, are assessed in light of what the skilled person knows and would find obvious. Even if an invention has been found to have features that do contribute to the technical character, they could still be found to be obvious in light of what the closest prior art is and what the skilled person is presumed to know.

The above is only a first pass at what I guess the new test will need to involve. The details and the particular order in which some of the steps are taken may vary (steps 1 and 2, for example, could probably be done the other way around) but I think all of these steps will be needed in some form to take into account everything required for an assessment of patentability that also includes novelty and inventive step.

Although all the Court of Appeal level decisions on patentability leading up to Aerotel are to be abandoned, some other features of existing UK case law may usefully be taken into account, for example the 'signposts' set out in AT&T/CVON (not mentioned in the Supreme Court decision), which could apply when considering step 3. Although these signposts were provided to help decisions on the final Aerotel step, i.e. whether the contribution is technical, they should also be useful for assessing whether any feature contributes to the technical character of the invention since similar criteria apply.

We will have to wait and see what the UK IPO come up with, but I think it will have to be something along these lines. If they do come up with something similar, in the particular case in question my educated guess is that the claimed invention will probably not get past step 3 or may fail at step 5. I think it very unlikely that it will get all the way to step 6. I also think that, whatever happens, the boundary of what is patentable in the UK will not get significantly extended as a result.

G 1/25 Amicus Briefs - A Brief Summary

noreply@blogger.com (David Pearce) — Wed, 04 Feb 2026 09:29:00 +0000

Following up from my earlier post about the referral to the Enlarged Board, now that the period for filing written submissions (or 'amicus briefs') has passed, I have reviewed the various submissions that have been filed. Some are very long, and I have reviewed many of them only briefly, although I hope that the EB will review each of them in detail because there are some important points raised. For now, it is interesting to note that, although there is no consensus on the issue (otherwise there would be no need for a referral), there appears to be a strong majority view that Question 1 should be answered with a 'no'. This is, however, not about a democratic vote and the EB will have to come to their decision based on what they think is correct, not what the majority view may be.

Based on a total of 39 submissions filed and visible on the EP register as of today (4 February 2026), including a couple that appear to have been filed late, 27 have suggested an answer of 'no', while only 8 say 'yes'. A few others either provide no answer or are somewhat vague about what the answer should be. The table below is a list of all submissions that I have found (excluding those from the parties to the case), with their proposed answers (where this is discernible), and the pie chart here shows the answers to Question 1.

Many of the submissions make interesting points, some of which are expressed in stronger terms than others, while others carefully sit on the fence or even fail to come to any clear conclusion. It should be remembered that Question 1 does demand a clear answer. It either is, or is not, necessary to comply with the requirements of the EPC to adapt the description to amended claims so as to remove an inconsistency. While there are certainly arguments to be had either way, including what is meant by an 'inconsistency', a clear 'yes' or 'no' is in the end required because it is of primary importance for the EB to be able to come to a clear conclusion on what the EPC actually requires applicants and proprietors to do, and what the EPO is permitted to require them to do. Sitting on the fence, or coming up with reasons based on vague principles that are not actually set out in the EPC, is simply not good enough.

It would take me far too long to set out in detail all the arguments put forward in the various submissions, most if not all of which have already been made many times over the past few years. Some of the submissions are, however, in my view worth looking at in more detail because they raise interesting points, are well written, or are provocative one way or the other. The following is a very brief selection from the submissions, with links that should hopefully take you directly to the document on the EP register if you want to see more.

In characteristic American style, AIPLA put forward a combative set of submissions, the main point being that adaptation of the description is an "administrative construct developed originally as a housekeeping measure". This seems to get to the core of what has happened over the past few years, as the EPO has become more strict on adapting the description to the claims. A requirement that was previously typically only one that involved adapting the summary of invention to say something like "the invention is defined in the claims" has gradually become more and more onerous on applicants where the current requirements (although inconsistently applied) force applicants to comb through the entire specification to adjust wording wherever the word "invention" or "embodiment" is used, or even delete entire sections, to appease the examiner. This view is concurred with by Bardele Pagenberg, who state that "Using the concept of consistency as a yardstick for support is in our view wrong and not in accordance with the EPC", and also refer to adaptation of the description being a housekeeping issue. Others further support the point by referring to adaptation of the description being a burden on applicants, with BIA (the UK Bioindustry Association) expressing concern with compulsion, where examiners enforce a mandatory requirement to adapt the description, causing additional cost and uncertainty. Canon Inc go further, saying that "the practice of aligning the description with the claims accepted for grant serves no useful purpose", a point that is matched by the submissions from JEITA and Richardt Patentanwalte, while Ericsson state that "it is not the purpose of opposition and opposition appeal proceedings to tidy up the description".

Greenwoods make a couple of important points, one being that "if the claims are clear despite the description no amendment to the description appears to be necessary", another being that "it should be up to the applicant proprietor to decide whether to amend the description or the claims to remove inconsistencies that cause genuine difficulty in determining the scope of the claims" (a point which I also made in my thoughts, which were expressed in the submissions from UNION-IP). Another important point is raised in submissions from the IP Federation that support under Article 84 EPC is about "ensuring the invention is sufficiently described to justify the scope of the claims. It does not extend to the reverse" (which is similar to my point about the requirement being unidirectional). A similar point is made by the pseudonymous submissions from "Jackson Lamb", who states that "The support requirement should not be interpreted to require a one-to-one correspondence between the claims and the description".

A common theme, of course, with all of the above, among others, is the view that there is no requirement of the EPC that mandates amendments to the description. This is, however, not shared by some of the other submissions. The strongest submissions from those who answer 'yes' to Question 1 appear to be from Bugnion, Patentanwaltskammer and (unsurprisingly) from the EPO President, all of which refer to Article 84 EPC as being the primary basis for setting a requirement for description amendments. Bugnion argue that "supported by the description" in Article 84 sets a "mandatory requirement on the description to disclose a solution that is consistent and not in disagreement with the claims", while the EPO President goes further with a public policy type argument about the purpose of Article 84 EPC, which is apparently "to ensure that the public is not left in any doubt as to which subject matter is covered, and which is not". Patentanwaltskammer further argues that "Once it is accepted, following G 1/24, that the description forms an integral part of the framework for claim interpretation under Article 69 EPC, the consistency of the patent text becomes mandatory. A patent text that contains contradictory statements cannot reliably fulfil its function as a basis for interpretation of the claims". This does, however, raise the question of whether it is the patent as granted that should be used for interpreting the claims or, as some would argue, the patent application as filed.

The submission by Samson & Partner, on behalf of Apple Inc, raises the possibility again of Angora cats (see here for some of my comments relating to this fictional animal), arguing that they "should not be unnecessarily bred and nurtured" by not amending the description to match the claims. Another large patentee Roche, however, argues that this should not be the job of the EPO, and that "the Boards must apply legislation, not act as legislator", also referring to G 1/24.

Finally, there are a few that stand out for their fence-sitting and vagueness, some of which fail to come to any clear answer to Question 1. Most disappointingly (for me at least) are those from CIPA, who fail to answer with a clear 'no' and instead state that "It is not generally necessary for the description to be adapted to the allowable set of amended claims" (my emphasis). Well, is it or isn't it? Another from Martin Wilming refuses to answer the question at all, and just refers to a previously published article that is clearly against the idea of mandatory description amendments, in which case it is odd that a clear answer is not provided.

Question 1 is, of course, the most important one to answer. For those that answer 'no', Question 2 then obviously falls away. For those who answer 'yes', however, it is useful to note the justifications that are made for support in the EPC. The most common is Article 84, while other provisions such as Rule 42(1)(c), Rule 48(1)(c) and Article 69 are also mentioned. Question 3 is largely of little concern, with the vast majority simply stating that the same rules should apply in examination as for opposition (although with the proviso that Article 84 works differently, given that it is not a ground of opposition).

In summary, I think the EB have plenty of arguments, some of them good, to review and work with. I hope they do take them all into account and come up with the correct decision. We may have a while to wait though, and I expect the decision when it does come is going to be a very long one.

Amicus	Question 1	Question 2	Question 3
AIPLA	No	None	No
Bardele Pagenberg	No	None	No
Bayer AG	No	No answer	No
BIA (UK BioIndustry Association)	No	Not applicable	No
Bugnion	Yes	A84, R42(1)(c), R48(1)(c)	No
Canon Inc.	No	No answer	No
CIPA	Vaguely no - “not generally necessary”. Does not answer the question.	No answer required	No
CPI	No	No answer needed	No
D.X. Thomas	Yes	Article 84 and Rule 42(1)(c) EPC	No
EFPIA	No	No answer needed	No
EP&C Patent Attorneys	Yes	A84, A69 EPC	-
epi	No	A84 does not provide legal basis	No
EPO President	Yes	A84, R42(1)(c), R48(1)(c)	No
Ericsson	No	None	No, except for additional focus on A84 during examination
ETH Zurich	No	None recognised	No
FEMIPI	No	No legal basis	No
FICPI	No, provided the subject-matter does not explicitly refer to the claims.	No answer	No, but applicant/proprietor should be given an opportunity to amend.
Francis Hagel	No	No answer	No
Greenwoods	NO (in capitals and bold)	No requirements of the EPC require such adaptation	No
GRUR	No answer	No answer	No answer
IP Federation	No	No provision in the EPC that mandates adaptation of the description	No
IPO (Intellectual Property Owners Association)	No	No requirement of the EPO necessitates such an adaptation	No
“Jackson Lamb”	No	No answer needed	No
Japan Intellectual Property Association	No	Does not apply	No
JEITA	No	No answer necessary	No
Martin Wilming	No answer	No answer	No answer
Michael Stadler et al	No	No answer	No
Michael Snodin	No	No need to answer	No
Ordine Dei Consulenti in Proprieta Industriale	No	No answer needed	No
Patentanwaltskammer	Yes	A84, A69	No
Patentwerk B.V.	Yes	A84, 82, 53, 52(2) EPC	-
Peter De Lange	Yes	R48(1)(c)	No
Richardt Patentanwälte	No	No answer	No
Roche	No	No basis	No
Roy Marsh	No	No answer	No
Samson & Partner (Apple Inc.)	Yes	A84 (?)
Siemens	No	No answer needed	No
UNION	No	No answer needed	No
VPP	No	No answer	No

Accelerate With Care

noreply@blogger.com (Tufty the Cat) — Sat, 31 Jan 2026 11:36:00 +0000

Section 73 of the UK Patents Act 1977 (as amended) grants the Comptroller power to revoke patents on his own initiative, as opposed to revocation proceedings being initiated under Section 72 by another party. The scope of the Comptroller's powers is strictly limited to: i) novelty only prior art under section 2(3) being uncovered after a patent is granted; ii) an opinion on a patent finding a lack of novelty or inventive step (but only in 'clear cut' cases); and iii) an EP(UK) patent being granted for the same invention as a GB patent. These provisions are only used sparingly, with the third being the most common given that it is not unusual for a GB patent to be granted ahead of a corresponding EP. The second is used more sparingly, and has only been used a few times over the past 11 years (see here for more). The first is, as far as I can work out, even more rare. It is not straightforward to find such cases, especially now as the patents journal has been hobbled since its recent 'update' to remove the ability to filter by applicable section number. One such case, however, has come to light recently by way of a decision from the UK IPO from earlier this month: BL O/0018/26 (Chordata), relating to GB2610710B.

The application was filed on 19 October 2022. Shortly afterwards, the applicant's then representatives requested accelerated examination on the basis that they were trying to secure investment. The UK IPO accepted the request and issued a combined search and examination report on 20 December 2022, based on a search that was carried out on 15 December 2022, which cited documents of only background relevance. The applicant also requested early publication, resulting in the A publication issuing on 15 March 2023. After some further to-ing and fro-ing, the application was found to be allowable and was granted on 13 December 2023. Importantly, this was only around 14 months after the filing date, meaning that the examiner would not have been able to uncover all potential prior art under section 2(3) before the application was granted. As is standard practice, the applicant was notified in the communication under section 18(4) of this, and that the examiner would complete the search after 21 months from the priority date.

The search was completed in September 2024 and two further documents were identified: EP4316358A1 and EP4319639A1 (these links will take you to the EP register for each case). Both of these were EP re-publications of earlier international applications, specifically WO 2022/255662 and WO 2022/216819. According to how section 2(3) works, if a published patent document has an earlier priority date but a later publication date, it can only count if it also covers the UK, which would include an international application that enters the UK national phase, a European application designating the UK or an international application that enters the European regional phase and designates the UK (and where the UK designation is not withdrawn). Both of the documents related to international applications that entered the European regional phase and designated the UK, although both had since been deemed withdrawn. WO 2022/255662 was published on 8 December 2022 but WO 2022/216819 was published on 13 October 2022, i.e. six days before the filing date of the application. It is also worth noting (although this did not feature in the decision) that a search carried out on 15 December 2022 could in fact have found both documents and could have identified one of them as being 'intermediate' prior art.

The hearing officer first looked at the two citations and came to the conclusion that, since one of the them was in fact published before the filing date it could not count as s2(3) prior art but was full prior art under s2(2). Regardless of whether this disclosed the claimed invention (which the examiner asserted it did), it could not be considered further and was ruled out. The other citation did, however, count as s2(3) prior art, so the hearing officer assessed whether it disclosed the claimed invention. In short, after some discussion it was found that claim 1 was not novel over this document. The proprietor would therefore need to do something about it. A further problem was that the proprietor had dispensed with the services of their patent agent and was doing this by themselves. The hearing officer, apparently being more lenient with them than he would perhaps be with a represented proprietor, gave them a few suggestions of which claims were not anticipated by the citation and gave an opportunity to make amendments, but suggested strongly that they sought professional help in doing so. The proprietor was given 3 months to sort things out with the examiner, otherwise the patent would be revoked.

There are a couple of lessons to be learnt from this case. The first is that, although applications can in some cases be accelerated and granted much sooner than would normally be the case, this comes with a risk that further prior art might not be found until after the application is granted. It is typically a risk that is worth taking, but only if the searches that are carried out in the time given are competently done. The second lesson is that searches are not always competently done, which seems to be the case here, given that the examiner did in fact have plenty of time to find the two additional documents before the application granted. It is an unfortunate fact that searches at the UK IPO often do not uncover relevant prior art that could be found by another examiner. A common occurrence in practice is that a UK search report will find no relevant prior art but a subsequent PCT application on the same claims, searched by an EPO examiner, will find some. If the UK application is granted early, this can invalidate the earlier UK patent, although it can be put right if the PCT application then overrules it in due course (resulting in a patent that has a longer duration too). If, however, the applicant does not have the willingness or money to have this fallback position, they can be left with a weak or invalid patent. Best practice therefore, if acceleration of a UK patent is required, is to keep going with a later filed PCT application and keep options open for as long as possible.

Some Thoughts on G 1/25

noreply@blogger.com (David Pearce) — Tue, 06 Jan 2026 11:59:00 +0000

I wrote here about the referral to the Enlarged Board in T 697/22, which has since been allocated the unsurprising case number G 1/25, it being the first (and only) referral to the EB made in 2025. The EPO announced the questions referred here, along with the members of the EB for the case, and inviting written statements by 30 January 2026. According to the EP register for the patent in question, only four submissions (or 'amicus briefs') have been filed to date, three of which are from patent attorneys in private practice and one from FICPI. More submissions are to be expected over the next few weeks, so it may be a bit premature to summarise what has been filed. However, from my brief review the general opinion seems to be against answering question 1 in the affirmative, although with caveats in some cases. We shall see if this impression changes once more submissions are filed this month.

As a reminder, the questions that have been asked of the EB are the following:

If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?

Question 1 is a bit long-winded but is carefully worded to be specific to the question that needs answering in T 697/22, in which the Board found it couldn't decide whether a request on file was allowable because no amendments had been made to the description to align it with the allowable claims. In general, however, the question raises the issue of whether there is any provision in the EPC that requires such amendments to be made. As has already been found in T 56/21 (commented here), based on a comprehensive review of the EPC and existing case law there is a strong argument to be made that there is in fact no such provision. The 'leading' case law on the subject, however, is that Article 84 EPC provides the basis for requiring description amendments, even though the wording of the Article itself does not say so.

To answer Question 1, it is worth first considering what problem this is trying to solve. The supposed problem, at least from the perspective of the EPO, relates to cases where there is, in general terms, an “inconsistency” between the claims and the description, i.e. where the claims define the invention having a scope that is different to the description. Such an inconsistency is, however, perfectly normal and expected in any application or patent. This is because the claims are invariably a generalisation of what is set out in detail in the description and drawings, and are therefore intended to define the invention more broadly. The EB has, however, not been asked to decide on how broad a claim can be in light of a more detailed description, which is the specific purpose of Article 84 EPC. Instead, the EB has been asked more generally to decide on whether there are any requirements of the EPC that make it necessary to adapt the description to amended claims to remove an inconsistency. This can only mean that the supposed problem to be addressed is: i) whether a claim that defines a narrower scope than the description and drawings is an inconsistency; and ii) whether the EPC requires that such an inconsistency needs to be resolved by amendment of the description.

Any supposed inconsistency of the above type between the claims and the description in a European patent will inevitably be a matter for interpretation. If, for example, a particular feature in a claim is defined as being required but the description specifies that the feature is optional, an interpretation of the claim in accordance with Article 69 EPC and G 1/24 is needed. Article 69 EPC requires that the extent of protection shall be determined by the claims but the description and drawings shall be used to interpret the claims. G 1/24 similarly sets out that the claims are the starting point and basis for assessing patentability, while the description and drawings shall always be used to interpret the claims when assessing patentability.

While Article 69 EPC is primarily intended for the purpose of assessing patentability and infringement in post-grant court proceedings, the principles of G 1/24 are directed towards assessing the patentability of claims in proceedings before the EPO and the Boards of Appeal, in which infringement is never an issue.

A correct interpretation in the above situation should result in the straightforward conclusion that the claim language is the primary source of interpretation. To take a more specific example, if claim 1 defines a product comprising features A, B and C, while the description specifies that C is an optional feature (e.g. as a result of this optional feature being used to amend the claims during prosecution), an interpretation of the scope of the claim according to Article 69 EPC and G 1/24 would not arrive at the conclusion that C is merely optional because this would place primacy of the description over the claim language. Instead, a conclusion would be reached that the description is clearly not consistent with the scope of the claim and should therefore be discounted, at least as far as the optionality of feature C is concerned. The claim does not need to be interpreted more broadly, and the apparent inconsistency therefore has no effect on the scope of the claim, when interpreted correctly.

In another example, a specific feature in a claim may have a meaning that would be interpreted by the skilled person to have a particular scope when read in isolation but for which a different and broader interpretation is provided by the description. This would also result in an apparent inconsistency between the claim and the description. This is, however, the situation that has already been resolved by G 1/24, in which the EB decided that the description and drawings should always be referred to when interpreting the claims, and not just in the case of a lack of clarity or ambiguity. The problem to be solved in the present case is not therefore how to interpret a narrow feature in a claim when a broader interpretation is provided by the description, since this has already been solved by G 1/24.

The supposed problem to be solved is therefore not a problem at all, not least because any inconsistency can be easily resolved through the existing rules of interpretation based on Article 69 EPC and G 1/24, depending on the applicable forum. Nevertheless, the question is whether there are, in the wording of Question 1, any “requirements of the EPC” that necessitate the description to be amended when such an inconsistency becomes apparent.

There are several provisions of the EPC that result in applicants being required to amend the description of an application, which would also apply when allowing an opposed patent to be maintained in amended form. Examples of these provisions include Rule 42, which is commonly used to justify amending the technical field and background section of the description, and Rule 49, which defines formal requirements for the presentation of documents (as now set out in decisions of the President of the EPO). Other requirements such as Rule 48, requiring the removal of irrelevant or unnecessary statements, or the use of SI units (again under Rule 49), may require amendments to the description. These are all, however, formal requirements that have no bearing on whether there is an inconsistency between the claims and the description.

Article 84 EPC has commonly been used in support of a requirement to resolve any inconsistencies of the above type between the description and claims (the leading case being T 1024/18). Article 84, however, is a requirement on the claims that establishes a unidirectional obligation on the description, which is required to provide a foundation, i.e. support, for the claimed invention. This requirement ensures that the scope of protection defined by the claims does not exceed what is justified by the disclosure of the description and drawings. This requirement differs from, although with some overlap, Article 83 EPC, which requires the disclosure to enable the invention so that the skilled person can reproduce it. A requirement for support does not mean that the boundaries of what the description includes needs to be limited to what is claimed, in the same way that a table does not need to have a supporting surface that has the same extent as an item placed on the table. A broader description still provides support for an invention, provided the scope of the claimed invention is not too broad to be supported. To extend the analogy, a table that is too small to support a larger object may result in the object falling off, i.e. not being supported. In line with the decision of T 56/21, Article 84 EPC does not provide a legal basis for a mandatory adaptation of the description to claims of a more limited scope.

Given that there are no other provisions of the EPC that could plausibly be used in support of requiring description amendments, the answer to question 1 must be a clear ‘no’. A further point to note, however, is that there may be circumstances where the proprietor may choose to amend the description to address an inconsistency, for example in the situation where a broader definition of a feature is provided in the description compared to the claims. In such cases, it is the proprietor’s responsibility to make any such amendments, and it is the EPO’s responsibility to ensure that any such amendments comply with the requirements of the EPC (such as Article 123(2)). It is not the EPO’s responsibility to place an obligation on the proprietor to make any amendments to resolve any apparent inconsistency.

Given the answer to Question 1, Question 2 does not require an answer.

To answer Question 3, we only need to consider the different principles that apply during examination leading up to grant compared to examination and appeal following opposition. In examination leading up to grant, there is more scope both for amendment by the applicant and for objections by the examiner, including under Article 84 EPC. Any alleged lack of clarity in a claim may for example be resolved by adjusting the claim wording or introducing a feature from the description. This does not, however, justify placing a requirement on the applicant for amending the description to match the claims, just as there should be no such requirement after grant. The answers to questions 1 and 2 should therefore be no different during examination proceedings before grant. As with the case of a patent post-grant, it should be the applicant’s responsibility to make any amendments to the description that may affect how the claims should be interpreted, and it is the EPO’s responsibility to ensure that any such amendments comply with the requirements of the EPC.

The above comments are only my own thoughts on the subject but I expect they will have broader support in the profession and I hope will get the support of UNION-IP, which should be submitting an amicus brief this month. It will be interesting to see what the overall impression is once all submissions are in.

T 1044/23: application of G 1/23 to un-enabled products

noreply@blogger.com (Tufty the Cat) — Mon, 24 Nov 2025 16:46:00 +0000

A recent decision from the EPO Boards of Appeal, T 1044/23, has followed the finding in G 1/23 that a product placed on the market is prior art, regardless of whether the product can be reproduced. The decision, however, makes G 1/23 potentially rather limited in terms of how far it can be applied.

The patent in question, EP3161066, claimed a polyethylene composition in terms of various parameters. Claim 1 as granted read as follows:

Polyethylene composition having the following features:
1. density of from 0.950 to 0.970 g/cm³, determined according to ISO 1183 at 23°C;
2. MIE from 1 to 30 g/10 min;
3. ratio MIF/MIE from 15 to 30, in particular from 20 to 29 or from 22 to 29, where MIF is the melt flow index at 190°C with a load of 21.60 kg, and MIE is the melt flow index at 190°C with a load of 2.16 kg, both determined according to ISO 1133;
4. ER values from 0.40 to 0.52

The patent was opposed on the grounds that the claimed invention covered two products that were available before the filing date, both being high density polyethylene (HDPE) resins available from the Dow Chemical Company (the opponent). Evidence for the products being available was provided by product datasheets and dated invoices. Certificates of analysis of the products were also provided to show the relevant parameters, which are summarised in the table below.

	Density	MIE	MIF/MIE	ER
Claim 1	0.950-0.970 g/cm³	1-30 g/10 min	15-30	0.40-0.52
D1 DMDA-8904 NT7	0.9516 g/cm³	4.11 g/10 min	22.8	0.50
D9 DMDA-8907 NT7	0.9516 g/cm³	7.08 g/10 min	22.3	0.49
Aux 1		1-25 g/10 min
Aux 2	0.955-0.970 g/cm³

The opposition division, following G 1/92 and the later decision T 1833/14, found that the two products were not considered prior art under Article 54(1) EPC “because their manufacture was not enabled” (point 19 of the decision). They also found the patent to be inventive over two other cited documents due to these documents not disclosing all the parameters in claim 1, in particular the ER value (relating to rheological polydispersity).

The opponent appealed the decision and argued that, according to G 1/23 (which issued after the opposition decision), the requirement for the product to be reproducible was no longer a valid criterion to exclude a commercial product from the prior art. Since both D1 and D9 resins were publicly available before the filing date of the patent, and the evidence showed that both fell within the scope of claim 1, the patent was not novel in view of either resin.

The Board referred to point 1 of the decision in G 1/23, which states:

“A product put on the market before the date of filing of a European patent application cannot be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person before that date.”

The Board found that, according to the evidence provided, there was no reasonable doubt that the resins were supplied to customers before the filing date of the patent. The resins were therefore considered to be within the state of the art according to Article 54(2) EPC. There was no dispute that the resins did fall within the scope of claim 1 as granted, so the Board found that claim 1 lacked novelty. The first auxiliary request, which limited the MIE range to 1-25, made no difference and therefore also lacked novelty.

The second auxiliary request limited the density to the range 0.955-0.970 g/cm³, which was higher than either prior art resin and therefore novel. The question was then whether the commercially available resins could be considered to be the closest prior art, given that methods to prepare them were not publicly available. G 1/23 only provided guidance on that point to the extent that a commercial product could be selected as the closest prior art but depended on the specific circumstances because the relevant technical teaching that a skilled person would take from the product would always be case specific. The Board referred to comments in G 1/23 about it being obvious to add lemon juice to Coca-Cola for a less sweet taste, even though the recipe was secret. In the present case, even though the resins were not fully reproducible, there was no reason why they could not be a realistic starting point for further developments.

Starting from either resin, the problem to be solved was, in the Board's view, at best the provision of an alternative composition, given that the patent showed that increasing the density tended to result in poorer properties. In light of this, no particular pointer in the prior art would be required. Although the appellant/opponent argued that the skilled person would know how to adjust the density of the resins while maintaining other properties within the claimed ranges, the Board considered that no evidence was provided of what the skilled person would have done to adjust the parameter. It followed that it was not credible that the skilled person would know how to modify the resins to get within the scope of claim 1. The claim according to the second auxiliary request was therefore found to be inventive.

The Board also found that claim 1 of the second auxiliary request was inventive over another of the cited document (D6), which disclosed all parameters except for the ‘ER’ value within the claimed range. Again, the objective problem was considered to be the provision of an alternative composition, but the Board concluded that it was not obvious how the skilled person would obtain a composition within the claimed range starting from the resins disclosed in D6.

The end result of all this appears to be that the scope of G 1/23 for using un-enabled prior art products is going to be limited if the patent claim has the slightest point of novelty, given that it will need to be shown how the skilled person would be able to change the product without knowing how to make it. Even if it is clear that the change would result in a poorer product, this can still result in a finding of inventive step.

Proposed changes to the epi disciplinary procedures

noreply@blogger.com (Tufty the Cat) — Tue, 28 Oct 2025 18:33:00 +0000

All European Patent Attorneys (EPAs) are automatically members of the Institute of Professional Representatives before the European Patent Office, known for short as epi (deliberately lowercase, for reasons unknown) and have to abide by its rules and regulations. These include a code of conduct, which sets out how EPAs should behave. Alleged breaches of this code, if they come before the epi via a complaint raised against a member, are judged according to the Regulation on discipline for professional representatives. If a member is found to have not complied with the code of conduct, they can face a warning, a reprimand, a fine or, in extreme cases, deletion from the list of professional representatives. Who gets to decide on this, and how, is the task of the disciplinary system of the epi. At the moment, this is made up of the Disciplinary Committee (DC) and the Disciplinary Board (DB). The diagram below illustrates how this system currently works. The DC is made up of 39 members, one from each of the EPC member states, all of whom are EPAs, and is effectively the first point of call for any complaint that makes it to the epi. Each member of the DC is proposed by the epi Council and is either elected or appointed by the Council. The DC decides on complaints and refers serious cases (which are those that may require a fine or deletion) to the DB, which is made up of epi members and lawyers from the EPO. The DC, which only meets a few times a year, can typically take between around 5 and 15 months to decide on a case, while the DB can take longer (in some cases a lot longer), which can stretch the disciplinary procedure to several years. There have been moves to speed up procedure at the DB level but without changing the basic structure of the system.

An important point to note is that the number of cases the DC and DB have to deal with is small. A total of 72 cases have been considered by DC between 2012 and 2024, averaging around 5 or 6 per year. Of these, only 21 have been referred to the DB. The vast majority of EPAs will therefore not need to have anything to do with the disciplinary procedure and. If they do, will be first judged by their peers and, in most cases, complaints are either dismissed or only minor action is taken. This does not mean that the profession is simply looking after its own regardless of behaviour but more that the profession is in general well run with the great majority of its members being trustworthy and competent (although there are, of course, exceptions that tend to stand out). Appeals from the DC/DB can be made to the disciplinary board of appeal at the EPO and the overall rules are set and amended by the Administrative Council of the EPO.

One might think that the current system, although slightly odd in having effectively two first instances, would not need changing. If any changes were being considered, there would presumably be wider consultation among those who would be affected, namely all EPAs. However, based on information I have recently received, it appears that changes to the disciplinary system are about to be pushed through that would alter the system in major ways and possibly without any consultation among EPAs. The proposed changes, which are illustrated in the diagram below, in simple terms involve the removal of the DB and consolidating the first instance into a single DC but with a different composition and with much less input from EPAs.

The details of the changes are not yet clear (at least to me) but appear to involve the EPO having a much greater role in the composition of the replacement DC (which will probably have a different name) and with epi members having a consequently reduced role and therefore less control. The new DC will not have a member from each country and will become less independent from the EPO through including paid lawyers from the EPO on the new DC (all epi members of the current DC are unpaid for their time, while the EPO lawyers would be). While some changes might be worth doing to make the system more efficient, what is slightly disturbing to me is that the proposed changes are apparently being rushed through at what appears to be an unseemly pace. A meeting of the epi Council in just a few days' time could in theory make a decision on what changes are going to be made, followed a few days later by a meeting of the Administrative Council to implement the changes. While it seems unlikely that such an accelerated process could actually happen, this is what appears to be in the works Is there some kind of coup going on by the EPO and others to take over the process, or will normal epi members be fully informed and consulted before anything changes? We should find out soon enough.

T 697/22 (G 1/25) - Enlarged Board Referral on Description Amendments

noreply@blogger.com (Tufty the Cat) — Wed, 30 Jul 2025 09:58:00 +0000

I wrote a few months ago about a case at the boards of appeal, T 697/22, where a possible referral to the Enlarged Board (EB) on the question of whether description amendments are required. At the time, the board were considering four questions to be raised to the EB to resolve the issue, and asked the parties to the appeal proceedings for comments. The parties then provided comments and the board has now issued their decision. Three of the questions initially proposed are now to be referred, which are:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?

The case in question related to a patent that was opposed and then maintained in amended form. Both parties appealed and the Board ended up deciding that the claims on file according to an auxiliary request were allowable. Due to amendments made to the claims, however, there then existed an inconsistency between claim 1 and parts of the description that described certain claimed features as optional. Based on what was then on file, the Board had to decide whether this inconsistency was in contravention of the requirement of Article 84 EPC that the claims must be supported by the description. The decision that needed to be made was whether this inconsistency made the request allowable or not allowable, giving rise to the first question.

The Board reviewed the existing case law and found some decisions that were in favour of aligning the description with the claims and others that were not. This resulted in two lines of case law that were clearly diverging.

According to the first line of case law, adaptation of the description was required when amendments to claims introduced inconsistencies. The leading case on this was identified as T 1024/18, which stated: "According to long established case law of the Boards of Appeal, [Article 84] has been interpreted as requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC." This reasoning was followed by T 447/22, T 2685/19, T 1516/20, T 121/20, T 2293/18, T 1968/18, T 2766/17, T 2378/13 and T 3097/19. Other decisions that also came to the same conclusions included T 169/20, T 673/22 and T 1784/21. In all these decisions, the Board found that the common underlying principle was that there is a legal basis requiring the description to be consistent with the amended claims. Although the principle legal basis provided in most cases was Article 84 EPC, this was not consistently applied. Some decisions cited Rule 42 EPC, either alone or in combination with Article 84, while others referred to a more general legal requirement or cited other provisions including Rules 48 and 71(1) in support.

According to the second line of case law, which had developed more recently, there was no legal basis for refusing a patent application if there was an inconsistency between any amended claims and the description. This line of case law was started by T 1989/18, which was followed by T 1444/20 and most recently and prominently T 56/21 (see my post here). Other decisions such as T 2194/19 also reached a similar conclusion. According to this line of case law, any inconsistencies between the claims and the description were the applicant's responsibility alone. T 1989/18 for example found that, if the claims were clear in themselves, their clarity was not affected by the description containing unclaimed subject matter, while the board in T 2194/19 rejected both Article 84 and Rule 42 EPC as a basis for adaptation of the description. The board in T 56/21 went further in finding that neither Article 84 EPC nor Rules 42, 43 or 48 provided a legal basis for requiring the description to be amended.

The Board also referred to a recent UPC decision from Sweden (AGFA NV v Gucci Sweden AB), which found that, although the description should always be referred to when interpreting the claims (which of course is now also a requirement at the EPO following G 1/24), an apparent inconsistency between the claims and the description was not an impediment to upholding a patent with a broader description than a more limited claim. A patent proprietor could not, however, rely on such an inconsistency to interpret a limited claim.

In summary, the Board decided that question 1 was needed because this determined whether the patent in question was allowable or not and was necessary to resolve the disagreement in the divergent case law. Question 2 was needed to determine, if there was such a requirement, what the legal basis was. Finally, question 3 was needed because the same issue arose during examination proceedings, which the more recent case law had come from. The Board also made reference to G 1/24, following which the question of whether an application could be granted or a patent upheld if there was an inconsistency had become of even greater significance.

We will now therefore finally, after a couple of previous false starts, get the chance to find out if the EPO's current practice in requiring applicants to amend the description is correct, which many find to be an unnecessary burden, or if the whole thing should be scrapped. I know which way I would decide. We will, however, need to wait a little while to find out.

UPDATE 5/8/25: The EPO has issued a notice mentioning the G 1/25 referral and which states that "the President of the EPO has decided that proceedings before the examining and opposition divisions should continue". This will mean that the current Guidelines for Examination will continue to apply while the referral is pending and that cases where amendments to the description have been required will not be stayed pending outcome of the referral. Given that this will apply to practically all applications currently pending at the EPO, this is not very surprising. The EPO would clearly prefer it if proceedings did not grind to an almost complete halt while the Enlarged Board consider which way to go.

G 1/23: Reductio Ad Absurdum

noreply@blogger.com (Tufty the Cat) — Wed, 23 Jul 2025 16:50:00 +0000

The reductio ad absurdum logical argument is a well known way of disproving an initial statement by showing that it leads to an absurd conclusion. If the initial statement is either true or false, the argument when properly applied inevitably leads to the conclusion that the opposite must be true. A well known application of the argument is the proof that there are infinitely many prime numbers, which dates back to ancient Greek times and is attributed to Euclid. The proof starts by assuming there are not infinitely many prime numbers and figuring out the consequences. Following a series of logical steps, it can be clearly shown that the statement cannot be true because there is a number that is the product of all primes plus 1 that is either itself prime or cannot be divided by any prime, meaning there must be a prime number greater than all the primes initially assumed. Therefore, the initial assumption must be wrong and there must instead be infinitely many prime numbers.

I have never before seen this type of argument being used in legal decisions, probably because legal analysis is typically quite different and is rarely as clear cut as to be amenable to logical proof. The recent decision of the Enlarged Board of Appeal in G 1/23 is the first example I am aware of that actually uses this argument, which it does in coming to an apparently definitive answer to the question of whether a product that is put on the market must be reproducible by the skilled person to be considered part of the state of the art.

The argument is used by the EB to reject an interpretation of the prior decision G 1/92 that a non-reproducible product would be entirely excluded from the state of the art. The EB first assumes that this interpretation of G 1/92 is true, i.e. that a product put on the market, if not reproducible (i.e., the skilled person cannot manufacture it from scratch using different starting materials), is entirely excluded from the state of the art. This means the product, including all its properties, is treated as if it does not exist for the purposes of assessing novelty and inventive step under Articles 54(2) and 56 EPC (see point 44).

The EB then explores the logical implications of this assumption, focusing on the concept of reproducibility and the skilled person’s reliance on common general knowledge, which is derived from the state of the art (points 50–54). The skilled person’s common general knowledge is limited to what is part of the state of the art. If non-reproducible products are excluded from the state of the art, they cannot be part of the skilled person’s common general knowledge (point 57). The EB interprets “reproduce” as manufacturing the product by a different route, not simply obtaining it from the market (point 38). Thus, the skilled person must rely on starting materials that are themselves reproducible and part of the state of the art to recreate the product (point 58). To reproduce a product, the skilled person must use starting materials that are reproducible. However, these starting materials themselves require precursor materials, which must also be reproducible, and so on (point 59). This creates a regress where every material must be reproducible without relying on merely available (but non-reproducible) materials, such as naturally occurring substances or chemical elements (point 60). The EB then argues that this assumption leads to an absurd result: if only reproducible materials can be considered part of the state of the art, then no material in the physical world would qualify as state of the art. This is because all materials ultimately rely on non-reproducible starting materials, such as chemical elements or naturally occurring substances like crude oil, which cannot be synthesized from scratch by the skilled person (points 60–63). For example, chemical elements (e.g., carbon, oxygen) cannot be reproduced; they are taken from nature or the market. Even simple compounds or raw materials (e.g., crude oil) are not trivially reproducible, yet they are undeniably part of the technical reality the skilled person works with (point 61). If non-reproducible products are excluded, the state of the art becomes an “empty set” (point 65), meaning that no technical teachings, whether from products, documents, or oral disclosures, could be considered prior art, as they all depend on non-reproducible materials at some point. This outcome is described as “manifestly absurd” (point 72) because it contradicts the practical reality that skilled persons routinely use commercially available or naturally occurring materials in their work (point 67). Since the assumption that non-reproducible products are excluded from the state of the art leads to the absurd conclusion that the state of the art is empty, the assumption must be false. Therefore, the EB concludes that a product put on the market cannot be excluded from the state of the art solely because it is not reproducible (point 80). Instead, the product and its analysable properties are part of the state of the art, regardless of reproducibility, as long as they are publicly available (Headnote I and II). As a result, the EB reinterprets G 1/92 to align with this conclusion, concluding that “reproducibility” should include obtaining the product from the market in its readily available form, rendering the enablement requirement redundant (point 73). This ensures that commercially available products, even if not reproducible by manufacturing, are part of the state of the art, and their analysable properties can be considered for novelty and inventive step assessments (point 74).

The reductio ad absurdum argument used by the EB is effective here because it shows that the enablement requirement, as suggested by an interpretation of G 1/92, leads to an impossible and impractical outcome, which would exclude all materials from the state of the art. This contradiction with technical reality and the purpose of patent law (to assess inventions against what is publicly available) forces the rejection of the enablement requirement for products that have been put on the market. The argument underscores that the state of the art should include all publicly available technical information, regardless of whether the skilled person can replicate the product from scratch.

G 1/24: The Return of the Angora Cat

noreply@blogger.com (Tufty the Cat) — Wed, 25 Jun 2025 08:54:00 +0000

I wrote some thoughts about the then pending case of G 1/24 back in October 2024. As it turned out the Enlarged Board came to roughly the same conclusion, at least on the first two questions. You will all have read the decision already, but just for reference here was the conclusion from the Enlarged Board:

The Angora cat is angry.

"The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation."

This seems to be fairly clear, at least in the context of the opposition case that led to the referral. This was all about whether a clear term in a claim should be interpreted more broadly than a normal reading would suggest if the description provided a broader definition. The EB's decision indicates that it should. Most would agree that this is a good thing, since patent proprietors should not be permitted to defend their patent with a narrow interpretation and then have the option open afterwards to interpret the claim more broadly to cover infringers. This would most likely not happen in the case such as in G 1/24, since courts across Europe, including the UPC, all agree that the description and drawings should be used to interpret the claims. The Angora cat in cases such as this therefore seems to have been put down.

G 1/24 will already be having an effect on opposition cases now underway, where opposition divisions will be pointed towards the description and drawings where a particular term in a claim should be given a broader meaning. This should be good for opponents, who should now be able to argue more successfully for some claim features being broader and therefore more likely to be covered by the prior art. There are, however, always unintended consequences.

An example of potential unintended consequences arose very recently during opposition oral proceedings in a case for which I was the representative for the opponent. Claim 1 of the patent in question, which was very poorly drafted (at least by UK standards), had various terms that were broad or unclear and required interpretation. For the opponent, I interpreted the claim broadly so as to cover the prior art, which it did. The preliminary opinion of the opposition division agreed, finding claim 1 of the patent to lack novelty, along with various auxiliary versions the proprietor had submitted. Nothing then happened until the oral proceedings, with the proprietor not even submitting any written submissions in advance. At the hearing, however, the proprietor submitted a further request to add more features to claim 1 from the description and proceeded to argue on the basis of G 1/24 that the claim features should be interpreted narrowly to be clear, novel and inventive over the prior art. What concerned me, (other than the frustratingly late submissions and the OD's decision to admit them) was that G 1/24 is now being used by attorneys to argue for claim features to be interpreted narrowly based on the description in order to get around the prior art. What was more concerning though was that the OD appeared receptive to these arguments and ended up maintaining the patent as amended, even though claim 1 was still fundamentally flawed in various ways. Is this perhaps an early sign that G 1/24 is being used to bring back the Angora cat in another form, allowing unclear and badly drafted claims to be made allowable on the basis of the description filling in the gaps? One case is of course not representative, and this is only my immediate impression, but if the argument can be made then others will surely also try. I can see this kind of thing ending up in T decisions before too long.

Another problem with dates

noreply@blogger.com (Tufty the Cat) — Wed, 21 May 2025 15:01:00 +0000

Working in patent practice requires, among other things, a keen eye for due dates. Getting a due date wrong by just one day can make a big difference. This can sometimes make all the difference for a patent application, as a recent example I wrote about here demonstrated. There are many other instances of critical due dates under the UK Patents Act and Rules where it is very important to know when a particular period ends.

I wrote a long while ago about a decision from the UK IPO (Rigcool v Optima Solutions), in which the issue was about how to calculate the end of "a period of two years beginning with the date of grant" under Section 37(5) (as it was then worded), in relation to when proceedings for entitlement could be commenced for a granted patent. Did the period end on the day of the anniversary of grant or the day before? Following reasoning derived from how the term of a patent under Section 20 is calculated, this was determined to be the latter, i.e. the last day on which entitlement proceedings could be initiated was the day before the anniversary. This turned out to be very important in the case in question, since the claimant had filed on the anniversary of the date of grant, which was determined on this basis to be one day too late.

Following that case, some amendments were made to the Patents Act and Rules by The Patents (Amendment) Rules 2011 (SI 2011 No. 2052) and the Intellectual Property Act 2014, which adjusted the wording used in various places in the Rules and Act respectively to clarify that any periods specified were supposed to end on the anniversary and not the day before. One example in the Rules was the period under Rule 32 for making a request for reinstatement of an application. This was one of the periods that was previously specified as being "beginning with", which was then changed to "beginning immediately after". The relevant period under Rule 32 was then defined as "twelve months beginning immediately after the date on which the application was terminated". The situation was then made clear that the period would end on the anniversary and not the day before. Or so we may have thought.

In a recent judgment from the High Court in Ahmad v Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 936 (Pat), Mr Justice Mellor decided on an appeal by the claimant Mr Ahmad in relation to his patent application, which had been refused by the UK IPO in 2021. Mr Ahmad made various accusations and complaints about being badly treated by the UK IPO, accusing the Office of "malicious comments that are illegal and against all the guidelines with lots of fraud", among other things. It was fairly clear that Mr Ahmad, who was self-represented, was not particularly familiar with the usual way of prosecuting patent applications in the UK and was somewhat chaotic and unreasonable in his dealings with the UK IPO. Faced with Mr Ahmad's numerous failings and utterly hopeless arguments, Mellor J had no difficulty in striking out his claim by summary judgment, finding Mr Ahmad's claims to be totally without merit. One of the points raised was whether Mr Ahmad could have requested reinstatement of his application, which he failed to do. This was certainly not a deciding factor in the case, but Mellor J noted what the due date for making such a request would have been, calculating it in the following way:

"The termination of the application was effective on 31 August 2021 (one day after the two month extension window elapsed following 30 June 2021). By operation of r. 32 (under s.20A) the applicant is then given a generous, but fixed, deadline within which to seek reinstatement. In Mr Ahmad's case, it was a deadline of 31 August 2022: twelve months after the application was terminated on 30 August 2021. That period is set by r. 32(1) and –(2) PR07, and is not extendable: see r. 108(1) PR07 and its Sch. 4 Part 1" (paragraph 50, emphasis in the original).

The letter from the UK IPO that started the period for requesting reinstatement referred to the application not being in order for grant on 30 August 2021, indicating that it was treated as having been refused on that date. The period under Rule 32(2) was therefore defined based on this date, being the date on which the application was terminated. Mellor J calculated, however, that the final date on which a request for reinstatement could be made would be 31 August 2022. Given all the history behind why the particular wording of Rule 32(2) as it now stands was arrived at, this seems to be wrong. The correct due date should actually have been 30 August 2022. It made no difference in that case but it is slightly concerning that a High Court judge can get this wrong. Perhaps the wording currently used is not as clear as we might think.

Description Amendments - Finally a Referral?

noreply@blogger.com (Tufty the Cat) — Wed, 23 Apr 2025 14:32:00 +0000

We have been waiting a long time for a Board of Appeal to finally refer questions to the Enlarged Board on the long-running controversy of whether, or to what extent, amendments to the description are required for European patents and patent applications. Given recent developments, we may now be getting near the point where this actually happens.

In brief, the issue of description amendments is, as far as the EPO is concerned, a settled matter. In their view it is necessary for the description to be in line with the claims to avoid any inconsistencies. According to the current version of the Guidelines for Examination, F-IV, 4.3, "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought". In many cases, this leads to extra time and trouble being expended when attempting to get an application allowed. Many have also objected that the supposed justification for this requirement simply is not there in the EPC. Article 84, which is used by the EPO in support, simply requires the claims to be "clear and concise and be supported by the description". If the description provides support for the claimed invention, does it even matter if it also includes support for things that are not part of the claimed invention? There are also cases where it may not be clear where the line should be drawn between what is described in the application as a whole as embodiments and what is actually within the scope of the claimed invention. Forcing applicants, and their attorneys, to make a decision during prosecution that can affect how the invention may be interpreted post-grant (since courts invariably insist that the description is always used to interpret the claims) may be considered unfair, if not actually unjust.

Those of us who have been keeping a close eye on this thought that we were going to get a referral last from the appeal case of T 56/21. In the end, however, the Board decided that a referral was not needed because in their view Article 84 did not provide any justification for amendments to the description at all. I wrote last year about this lengthy decision here. The EPO, however, has been taking no notice at all of the decision (which is, of course, only binding on the case in question) and maintains that their practice is justified. The Guidelines therefore remain unchanged.

However, in another appeal case, T 697/22, there has been some movement on the matter. Following oral proceedings held in December 2024, the Board indicated that they were minded to refer questions to the Enlarged Board. A communication has recently issued with some proposed questions, which the Board has asked the parties involved to comment on before they make a decision on a referral. Unlike in T 56/21, the Board found that there was divergent case law on the subject of description amendments and a referral may be needed to resolve the question of whether these were in fact required. The proposed questions are the following:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendments introduce an inconsistency between the amended claims and the description of the patent, is it necessary to comply with the requirements of the EPC, to adapt the description to the amended claims such that the inconsistency is removed?

2. If the first question is unconditionally answered in the affirmative, which requirement of the EPC necessitates such an adaptation?

3. If the first question cannot be unconditionally answered in the affirmative, what are the conditions under which adaptation of the description is necessary to comply with the requirements of the EPC?

4. Would the answer to these questions change if an inconsistency existed between the claims and the description of a European patent application?

The parties have been given until 26 May 2025 to provide comments, following which the Board will decide whether a referral is to be made, and if so what the final form of the questions should be.

For now, all we can do is wait and see what happens. It is, however, interesting to note that the draft questions avoid mentioning Article 84 EPC at all. This is clearly deliberate, since question 2 asks whether there is any provision in the EPC that requires the description to be adapted to the claims. If T 56/21 is to be followed, there is in fact no such provision. The Enlarged Board, however, may find differently.

Faketoshi Patent Oppositions - The Story So Far

noreply@blogger.com (Tufty the Cat) — Fri, 18 Apr 2025 13:58:00 +0000

For the past few years, in my spare time I have been working on oppositions against three European patents granted to nChain Licensing AG, each of which originated from GB priority applications filed in April 2016. Each patent named Craig Wright and fellow Australian Stephane Savanah as co-inventors. For those few people who may still be unaware, Wright has since 2015 been falsely and fraudulently claiming to be the person behind the pseudonym Satoshi Nakamoto, the creator of Bitcoin. Wright's implausible, and easily disprovable, claims were disputed in late 2015 almost as soon as they became public through engineered leaks to the press. It was, however, only after several lengthy, and extremely costly, legal battles involving many others (including myself), that his claims were finally and comprehensively demolished by Mr Justice Mellor in a mammoth judgment handed down on 20 May 2024 (Crypto Open Patent Alliance v Craig Steven Wright [2024] EWHC 1198). The judgment was appealed by Wright, but permission was denied by Lord Justice Arnold in, for him, an unusually brief 3 page judgment issued on 29 November 2024. There are further strands to the Craig Wright story, including a contempt of court finding, alleged tax fraud in both the UK and his native Australia and a likely upcoming criminal prosecution for perjury, but here is not the place to go into them.

Going back to the beginning, the company nChain was set up in 2016 by Wright and his business partner Stefan Matthews, with help from Canadian businessman Robert MacGregor, and enabled by substantial financial backing from Antiguan-based Canadian online gambling tycoon Calvin Ayre. The stated business aim of the company was to patent and commercialise inventions arising from Wright's alleged extensive knowledge of Bitcoin and related technology by virtue of his being Satoshi. As explained in the 2016 article by Andrew O'Hagan, "The Satoshi Affair":

They would complete the work on his inventions and patent applications – he appeared to have hundreds of them – and the whole lot would be sold as the work of Satoshi Nakamoto, who would be unmasked as part of the project. Once packaged, Matthews and MacGregor planned to sell the intellectual property for upwards of a billion dollars. MacGregor later told me he was speaking to Google and Uber, as well as to a number of Swiss banks. ‘The plan was to package it all up and sell it,’ Matthews told me. ‘The plan was never to operate it.’

The infamous "1Feex..." paper wallet.

Even at that time, it was evident to anyone who took the time to look into the matter that Wright was clearly not Satoshi but was a rather inept forger with a particular talent for bare-faced lies. Some, however, apparently remained persuaded (or perhaps were willing to go along with the lies for their own reasons), including Mr Ayre who continued to fund Wright's Satoshi project on the promise of a big payout in the future, not only in respect of the supposedly valuable patentable Satoshi inventions but also on some very large stashes of Bitcoin that Wright claimed to own and which were apparently used as collateral.

nChain GB filings 2016-2024

So, after having conveniently departed Australia in October 2015 following a raid by the Australian Tax Office, Wright began working as Chief Scientist for nChain in his new base in London to get his supposed inventions patented. Wright was also incentivised by getting a substantial share in the company. The patent filings started flowing in to the UK IPO, the first one being filed on 23 February 2016 in the name of EITC Holdings Limited (later assigned to nChain). 76 applications in total were filed in 2016 and applications continued to be filed at a similar rate each year right up to the end of 2023, at which point they appear to have come to an abrupt and almost complete halt.

Wright and friend (not a patent attorney)

Wright, of course, did not do this all by himself but was assisted by people who supposedly knew what they were doing with preparing and prosecuting patent applications. We would normally term these people patent attorneys but I am reluctant to do so in this case because, as it turns out, the main person involved in preparing and filing Wright's applications, at least in the early days, was not actually a patent attorney. She was instead a fairly recently graduated computer scientist PhD with a few years' experience working with patents but had not yet passed the UK examinations. Wright, however, got on very well with her and continued to employ her services right up until at least last year, even though she has still not passed the UK exams. Although the inventions themselves may not have been of the highest quality given their provenance, it certainly did not help that they were turned into patent applications that, at least to some extent, were somewhat handicapped by fairly poor drafting. As it turns out, one of the cases was also not helped during prosecution by some poor handling by others leading up to it being granted.

I started looking into Wright's patenting activities in around 2020 and first wrote about them here in February 2021, noting that nChain had already built up a substantial patent portfolio with over 300 priority filings, which then resulted in other filings that were prosecuted more widely in other jurisdictions, including at the European Patent Office. At the time I wondered about their technical relevance, given that Wright's relevant knowledge was clearly not going to be important or relevant for any developments in Bitcoin or related technologies. Nevertheless, nChain was already demonstrating that whatever strategy was being used was starting to bear fruit, with patents being granted by the EPO. Many of these patents appeared to me, based on a limited review, to be examples of what I termed 'cargo cult patenting', as they appeared to contain overly technical-sounding, and sometimes lengthy, claims that were able to get through the examination process but which were highly unlikely to be infringed by anyone. It appeared, however, to be mainly a numbers game at that point, where the number of patents being granted was the main aim and not whether the patents covered anything actually useful. The reasoning may well have been that, if a sufficiently large patent portfolio could be built up, it would almost inevitably be considered worth a lot of money to someone and would then be bought up by a big player in the field who wanted to get a position in this up and coming blockchain technology area. It almost didn't matter what the patents covered, as long as they sounded sufficiently technical and their importance could be puffed up by Wright with his brash salesman bravado. After all, Theranos managed to do something similar, at least for a while.

As a result of the technical obfuscation technique used to get many of their patents through the system, the prospects of finding any of the patents that might be a good enough target for opposing seemed to me unlikely. A particular group of applications, however, came to my attention that were an example of one of Wright's nonsense ideas, which was that Bitcoin could be made "Turing complete". How this was possible when the language used to run Bitcoin transaction scripts did not allow for loops was at the time unclear to anyone actually knowledgeable in the field, but Wright continued (and still continues) to insist that Bitcoin could be made Turing complete by using transactions as logic gates and doing loops off the blockchain. What the point of all this was is still not clear, but nChain's patent attorneys (real ones this time) managed to get 3 patent applications through the EPO's normally rigorous examination system, resulting in EP3449450 granted in June 2022, EP3449451 granted in July 2022 and EP3449452 granted in June 2022. I wrote about the first one of these patents, and the issues around Turing completeness, in November 2022, shortly after an opposition was filed by Arthur van Pelt with my assistance and with financial help from various generous Bitcoin supporters.

Craig Wright's opinion of the first opposition.

The first opposition, which was labelled "Faketoshi01" for ease of reference, was all about added matter. For the full details, see the post mentioned above. In short, the problem with the patent was that claim 1 had been amended during prosecution in a way that added matter (not allowed under Article 123(2) EPC). This was not noticed by either the patent attorney who did the amending or by another attorney who signed it off, nor was it noticed by the 3 member examining division at the EPO, who allowed the application. Once granted, the patent was fatally flawed because the only way to correct the added matter issue would have been to remove it. Unfortunately for the patentee, this was also not allowed (under Article 123(3) EPC) because this would inevitably broaden the scope of the patent. The patent was therefore stuck in an added matter trap that was impossible to get out of. Once the opposition was filed, it was inevitable that the only outcome could be revocation. Nonetheless, nChain's patent attorneys tried anyway and ended up making things worse. In the end, shortly before oral proceedings were due to be held to decide the matter, nChain switched patent attorneys and their new representatives clearly saw that the problem was insurmountable. Instead of fighting a battle they knew they could not win, they threw in the towel and asked for the patent to be revoked. The patent was then revoked in May 2024 without any fight. This decision was final and no appeal was filed.

The second opposition (Faketoshi02) was filed in March 2023 against EP3449452. This time, the issues were not about added matter but about novelty and inventive step. Claim 1 of the patent defined a method that would cover a process carried out by a conventional Bitcoin node that was well known before the 2016 priority date. In the opposition, the primary source of prior art was the 2014 book "Mastering Bitcoin" by Andreas Antonopoulos. This is such an important and useful piece of prior art because it goes into technical detail of how Bitcoin was known to work at the time, including details of the various opcodes used in Bitcoin transactions. Although it had already been cited during prosecution by the EPO examiner, nChain's representative had somehow managed to convince the examiner that there was some kind of difference in what was claimed compared to what was disclosed in the book. As argued in the opposition, this turned out not to be correct.

This time the proprietor fought back. An initial, rather inept, response was first filed by the representatives who got the patent granted, which again ended up causing more trouble than it was worth because it left nothing on file that was even admissible, let alone allowable. As with the first case, the attorneys then got switched and the new attorneys got to work by filing 15 sets of amendments to the claims in response to a preliminary opinion that was very much against them. At oral proceedings held on 26 September 2024, there was quite a fight over the first 7 of these sets of amendments but at this point the representatives decided to give up and throw in the towel, presumably realising they had nothing left. The EPO opposition division then decided to revoke the patent. A written decision issued on 4 November 2024.

The third opposition (Faketoshi03) was filed in April 2023 against EP3449451, again based on novelty and inventive step grounds. The proprietor's representatives, which were again switched after a failed first attempt, filed even more sets of amendments. At the oral proceedings on 24 September 2024, the Opposition Division surprisingly came up with added matter as a new ground of opposition. The proprietor's attorneys, being justifiably surprised at this (as was I), got the proceedings rescheduled to give them time to think a bit more. At the rescheduled proceedings held on 10 December 2024, the new added matter ground was upheld and the patent was revoked after only about 30 minutes of argument. Unfortunately for the patentee in this case, the added matter problem was the same for all their numerous requests so, once the first request fell all the others followed for the same reason. The written decision revoking the patent then issued on 23 December 2024.

A hit rate of 3 out of 3 is not bad going, but for two of these we are not yet at the end of the story. For the second and third cases, the patentee decided to file appeals against the revocation decisions. I was slightly surprised at this because they had taken the precaution of filing divisional applications on each of them, all of which are currently still pending at the EPO, meaning that they could have another go at getting a patent without the limitations of post-grant amendments. However, given that appeals have been filed there is still the possibility, however remote, that they could rescue something and perhaps save face. So far, grounds of appeal have been filed on Faketoshi02, which have already been responded to, and grounds on Faketoshi03 are due in the next few days (Update 29 April 2025: grounds have now been filed and responded to). So far, the arguments from the proprietor/appellant do not look very impressive but we will probably have to wait at least another couple of years before we find out what the Board of Appeal thinks of them, given the large backlog of cases they have to deal with. More excitement is therefore yet to come. I shall, of course, keep you posted.

A problem with dates

noreply@blogger.com (Tufty the Cat) — Wed, 09 Apr 2025 07:48:00 +0000

Knowing when a divisional application (or, more correctly, a new application under section 15(9)) can be filed is a tricky business in the UK. I have written previously here about how applicants and their representatives can sometimes get caught out by assuming that the same rules apply to those at the EPO. Unlike at the EPO, where the general rule is that a divisional can be filed provided there is a current application pending, in the UK the latest date for filing a divisional is 3 months before the end of the compliance period, provided the application is still pending. This additional requirement can cause problems when applications are still being prosecuted close to the end of the compliance period, especially if it's not yet clear what will get allowed.

According to Rule 30, the compliance period is 4 years and 6 months from the filing or priority date, or 12 months from the date of the first substantive examination report if this is later. The end of the period can be extended by 2 months under Rule 108 without providing any reasons, and may be extended further if evidence is provided. This means that, if the end of the compliance period is getting closer than 3 months, a divisional can still be filed if an extension request is filed in time.

Let's say we are exactly one month away from the end of the compliance period, which for the sake of this example is 30 December 2024. Can we still file a divisional application? The current date is 30 November 2024, which is a Saturday. We have unfortunately left this rather late, as we knew a while back that a divisional application would be needed. As a busy patent attorney, however, we are used to dealing with things at the last minute and we are sure that all will be fine because we can just file a request for a 2 month extension at the same time as filing the divisional application and all will be in order.

Unfortunately, things will not be in order. A further quirk of the UK patent system is that dates on which things are deemed to be filed differ depending on what they are and whether the Office is open. For the purposes of most things the Office is closed at the weekend, meaning that anything filed gets a deemed date of the next working day (see here). This applies to everything apart from new applications that do not claim priority, which get the filing date of the day on which they are actually filed, regardless of whether the Office is open.

The upshot of all this is that the divisional application we filed on 30 November (which did not claim priority) gets that date of filing but the extension request we filed at the same time gets a deemed filing date of 2 December. The result is that the divisional was filed out of time because on the date of filing it was within only 1 month of the end of the compliance period. The only way to rescue this would be to get a further discretionary extension to the compliance period to allow another purported divisional application to be filed within time, but we would have to adequately explain what happened and why this would be justified.

This all sounds very implausible and not something that should happen in the real world. Any competent patent attorney with a reliable docketing system will be warned in good time beforehand about the upcoming deadline for filing any divisional and will not resort to the risky business of filing things on a Saturday evening. This is not, however, a theoretical example but actually happened. The full details can be found in a recent decision from the UK IPO in BL O/0308/25. To prevent further embarrassment to the patent attorney involved, I will not go into any more detail. It is, however, highly recommended reading for all UK patent attorneys, and especially for those involved in marking papers for the patent attorney examinations.

Bionome v Clearwater - intention is not enough

noreply@blogger.com (Tufty the Cat) — Mon, 16 Dec 2024 15:02:00 +0000

When developing technology that may lead to patentable inventions, it is always a good idea to work out what to do with the resulting intellectual property. The question of who owns the IP is crucial to how and whether the technology can be developed further and commercialised. If the invention results from a joint venture, it is particularly important to figure this out beforehand by specifying in an agreement what each party is bringing to the venture, what they own themselves, and how any resulting IP from the joint venture will be dealt with. Even if such an agreement is reached, however, problems can still arise when the parties fall out before everything is set up commercially. The case of Bionome v Clearwater, which was decided last week at the High Court, is an example of this.

Image: Grok's idea of a sugar-coated leaf.

The case did not start at the High Court but at the UK IPO, where the claimant Dr Clearwater filed in 2022 a request under sections 8 and 12 for him, or alternatively his company, to be added as joint applicant on Bionome's patent applications. The patent applications at that stage included an international application, published as WO 2021/191614 A1 and a UK application published as GB2598881A. Since then, further applications have been filed from the international application in several other countries. The issue from Dr Clearwater's perspective was that, while the applications had named him as joint inventor, the applicant was identified only as Bionome Holdings Limited, a company that was started by his ex-business partner Dennis McCarthy after they had worked together to develop the invention.

At issue before the IPO was an agreement between Mr McCarthy (via his son) and Dr Clearwater that stated they agreed to assign their IP to an as-yet unspecified jointly-owned entity after certain steps were concluded. Their working relationship, however, broke down in January 2020 before the entity was created and before any patent applications were filed. It was only after this that Mr McCarthy arranged to file a UK patent application in March 2020, followed by an international application a year later. Before the IPO, Dr Clearwater argued that the agreement was only an intention to assign and not an actual assignment. The hearing officer agreed that it only indicated a direction of travel, did not define future actions and did not constitute a binding agreement regarding ownership of any IP. The hearing officer found in decision BL O/0410/24 in May this year that Dr Clearwater should therefore have been named as joint applicant, not just joint inventor, and ordered his name to be added as joint applicant on the GB and PCT applications.

Bionome appealed the decision to the High Court, arguing that the hearing officer had got it wrong by misinterpreting section 7 and misconstruing the agreement. They argued that section 7(4), by stating "Except so far as the contrary is established", created a presumption that Bionome had a right to the inventions that could only be overcome by evidence from the claimant. Tom Mitcheson KC, acting as Deputy Judge of the High Court, rejected this argument, finding that the section did not create any sort of additional evidential hurdle or burden beyond the prima facie case that Dr Clearwater had already established, i.e. that he had jointly developed the invention with Mr McCarthy. On the construction of the agreement, Mr Mitcheson found that the hearing officer was correct in interpreting it as amounting only to an intent to transfer any IP and not to an actual assignment of IP. Bionome's appeal was therefore dismissed on both points.

One lesson to be learned from this case is that agreements expressing only an intention do not amount to an actual assignment. If an actual assignment is intended, this needs to be explicitly expressed and preferably what is being assigned needs to be specified. Another lesson, which may be harder to follow, is not to get into joint ventures with someone who you do not trust, regardless of any agreement.

Description amendments at the EPO - the beginning of the end?

noreply@blogger.com (Tufty the Cat) — Tue, 29 Oct 2024 16:10:00 +0000

[This is a lightly edited version of a recent article I wrote for the Barker Brettell website.]

Practice at the EPO currently requires that, before an application is granted, the description must be brought into line with the allowed claims. Doing this can be time-consuming and may involve making difficult choices about what amendments are required and how they should be made. EPO examiners, who are required to follow the Guidelines for Examination, can be strict in applying this requirement, typically allowing no room for ambiguity between what is defined in the claims and what is described in the rest of the application. If, for example, something in the application is described as an "embodiment", current practice will tend to require this to be within the scope of the claims. Otherwise, the description of the embodiment may need to be deleted or mentioned as being not according to the invention. The nature of drafting patent applications, however, means that often there may be some doubt about what is described as an embodiment being within the claims, especially if the claims have been amended to obtain allowance.

There have been strong disagreements about the legal basis for the requirement of conforming the description to the claims. The current Guidelines for Examination states: "Any inconsistency between the description and claims must be avoided if it could throw doubt on the subject-matter for which protection is sought" (F-IV 4.3). Justification for this is claimed to be from Article 84 EPC, which states that the claims of an application "shall be clear and concise and be supported by the description". Many, however, have questioned whether this requirement for support justifies a requirement for conformity. I have been firmly in the camp of Article 84 providing no justification for amending the description but, having raised this with senior people at the EPO, the prevailing view has been for a long time that "supported by the description" is taken to mean "in conformity with the description". The justification for this always seems to be that the public needs to be kept safe from dangerous Angora cats that manage to squeeze through examination with narrowly interpreted claims, which then suddenly become broader after grant. This is, however, a matter for national courts to decide and should not be for the EPO to determine pre-grant.

A common feature in patent drafting is to include a section in the description in which a number of claim-like clauses are set out, the intention of which is to provide basis for amendments that might be made later, including after grant. Such clauses are specifically identified for deletion in the Guidelines, based on the reasoning that leaving them in the application would "lead to unclarity [sic] on the subject-matter for which protection is sought" (F-IV 4.4). This specific practice has now been put to the test by an applicant (F. Hoffman-La Roche) who, during examination, objected to deleting a set of claim-like clauses in an otherwise allowable application. The application was then refused for the sole reason that Article 84 EPC was not complied with. The applicant appealed this decision, which has now resulted in a recently published decision T 56/21 on the question of whether such amendments are actually required.

In their appeal, the applicant argued that the Guidelines were not correct in stating that amendments to the description to conform to the claims were required, indicating that there was no legal basis for this. The Board of Appeal, however, took the view that it was not their job to criticise the Guidelines but instead to consider whether there was any justification for the practice from the law itself. The Board stated:

"The question to be addressed is that of whether Article 84 EPC provides a legal basis for objecting to an inconsistency between what is disclosed as the invention in the description (and/or drawings, if any) and the subject-matter of the claims, the inconsistency being that the description (or any drawing) contains subject-matter which is not claimed, and for requiring removal of this inconsistency by way of amendment of the description (hereinafter: "adaptation of the description"). If so, an application could be refused if the applicant did not amend the description accordingly, or did not agree to an amendment of the description proposed by an examining division" (point 2 of the Reasons for the Decision, emphasis in the original).

The question to be addressed was therefore a broader one than whether claim-like clauses would need to be deleted, and instead related to whether the description should need to be amended at all if there were any inconsistencies with the claims. The Board also referred to Article 69 EPC, which had been used as a further justification for removing any inconsistencies. This provision, which defines the extent of protection of a European patent or application, was considered by the Board to be separate from the assessment of patentability and intended to be used by national courts in infringement proceedings rather than for assessing patentability. The question was therefore limited only to whether Article 84 EPC provided any justification for removing inconsistencies between the description and claims. The purpose of Article 84 EPC, in the Board's view, was to ensure that there was a clear definition of the subject-matter in the claims in terms of technical features of the invention to allow examination for patentability. Claims should be clear from their wording alone, so clarity of the claims of an application should, in the Board's view, be key in examination. If the description were to be used to interpret the meaning of the claims this could, the Board suggested, lead to broad claims being granted based on a narrower interpretation from the description, which would lead to diverging decisions after grant.

On the key question of description amendments, the Board considered that the ordinary meaning of the words of Article 84 EPC ("The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description") did not support a requirement to bring the description into agreement with the claims by deleting or disclaiming subject-matter in the description which is not claimed. Some previous decisions from the Boards of Appeal had decided questions of whether a claimed invention was supported by the description, but these related to whether broad claims should be brought into line with the disclosure by limiting the claims. Other decisions related to bringing the description into conformity with the claims but, in the Board's view, these misconstrued the relationship between Articles 84 and 69 EPC as well as the relationship between the claims and the description. Given that the two provisions should be applied independently in separate situations, with Article 84 before grant and Article 69 after, the Board concluded that there was no rationale for adapting the description to match the subject-matter claims. Matching the description to unclear claims would fail to provide legal certainty, while adapting the description to clear claims would likewise fail to improve legal certainty. The attempts by the EPO and some previous Boards of Appeal may have been aimed at reducing variability in the extent of protection of granted patents, but in the Board's view this encroached on the competence of the national courts and legislators.

In conclusion, the Board decided that Article 84 EPC did not provide a legal basis for a mandatory adaptation of the description to claims of a more limited subject-matter. While the Board had initially envisaged referring a question to the Enlarged Board, in the end they considered that there was no need for this because the requirements of Article 84 EPC for the purpose of examination were unequivocal. The wording left no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter. The Board was also not persuaded by the EPO's reasons for requiring the description to be adapted to allowable claims, which were to provide a more uniform determination and better predictability of the extent of protection of granted patents. The Board considered that this could only be achieved if the granted claims were clear in themselves. Adapting the content of the description to match the subject-matter of allowable claims would reduce the reservoir of technical information that could be used in national courts to determine the protection conferred by the granted patent. The Board therefore allowed the appeal and ordered the Examining Division to grant a patent on the basis of the specification with the claim-like clauses intact. The case was remitted to the Examining Division, which has now issued a Rule 71(3) communication with the claim-like clauses intact.

While the reasoning behind this decision is complex and lengthy, the conclusion is clear: there is no legal basis for requiring applicants to amend the description during examination to match allowed claims. The decision flatly contradicts current practice at the EPO, as defined by the current Guidelines for Examination. What happens next is up to the EPO, unless a further Technical Board decides the issue the other way and finally refers questions to the Enlarged Board. I expect arguments between interested parties and the EPO to continue over at least the next few months, in particular when it comes to the EPO deciding on how the Guidelines are to be amended next year.

For those wishing to keep a close eye on what happens, I would recommend attending the UNION-IP Winter Roundtable on 28 February 2025, where the issue will be discussed in more detail.

Some Thoughts on G 1/24

noreply@blogger.com (Tufty the Cat) — Wed, 16 Oct 2024 15:45:00 +0000

A few months ago I attended an online seminar hosted by the EPO in which the question of interpretation of claim features was discussed. What was interesting about this was the clear difference between how the EPO Boards of Appeal interpret claim features compared to national courts. The difference was about whether the description of a patent should be used to interpret how broad a particular claim feature should be. If the views of an English judge, a Dutch judge and a member of the Enlarged Board of Appeal are anything to go by, the view from the EPO is that a broad claim feature should not be given a narrower interpretation based on what the description states, while national courts will tend to interpret a broad claim feature narrowly based on the description.

Grok's idea of an Angora cat
(see Jacob LJ's comments here)

This difference in interpretation, while on the face of it perhaps surprising, make some sense when considering that the EPO Boards of Appeal can only determine questions of validity, while national courts determine infringement as well, although this does not fully explain it. If a broadly interpreted claim before the Boards of Appeal is found to be invalid, e.g. for lacking novelty or inventive step, it doesn't make any difference if a particular feature in the description provides a narrow interpretation that could make it valid unless that feature is put in the claim. This is similar to practice before the Examining Division or Opposition Division, where an explanation of what a claim feature means will usually result in that needing to be included in the claim wording.

If the same claim is put before a national court, the judge will usually be assessing the claim features for infringement as well as for validity, so if the feature is instead interpreted narrowly this may still result in effectively the same outcome, i.e. the claim is only valid if interpreted narrowly as if the narrow interpretation were included in the claim itself. Infringement can then be assessed based on the narrow interpretation, which may result in a claim that is valid but not infringed. The question is whether this difference in interpretation matters. Should interpretation of claims be aligned between the EPO and national courts, or is a difference something that can be allowed to continue given that their roles are different?

The seminar I mentioned only covered the question of interpretation of broad claim features, but it's also worth considering what would happen if a claim feature is instead interpreted narrowly on the face of the claim language alone but could (or perhaps should) be given a broader interpretation based on the description. The EPO's current way of dealing with this difficulty is to require applicants to ensure that the language of the description is in conformity with that of the claims, using Article 84 EPC as a (possibly flawed) justification for this. This approach is much contested, with applicants often finding it difficult to comply with EPO practice without introducing problematic amendments, which may themselves fall foul of other provisions such as added matter under Article 123(2) EPC. The Boards of Appeal have also disagreed over the past few years on whether such amendments are even required, with the latest contribution in T 56/21 coming down firmly on the side of no amendments being necessary at all. Practice at the EPO has nevertheless been evolving towards a more strict view of making the description be entirely consistent with the claims. The practice itself is, however, not always strictly enforced and there will be many granted patents that contain inconsistencies between what the claims state compared with what is stated in the description.

The issue of claim interpretation is now one that is sufficiently important for questions to be raised to the Enlarged Board of Appeal, which was done in decision T 439/22. The issue in the decision under appeal relates to whether the term "gathered sheet" in claim 1 of the opposed patent should be interpreted narrowly according to how the skilled person would view it or if it should be given a broader meaning based on what the description stated. The Opposition Division rejected the opposition based on the term having a narrow meaning, while the opponent argued that it should be interpreted more broadly, which would result in it encompassing the prior art. The patent in question therefore stood or fell based on whether the description should be used to impart a broader meaning to an otherwise clear claim feature.

The questions now being raised to the Enlarged Board are the following:

1. Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?

On question 1, the issue of whether Article 69 EPC should be used by the EPO at all, or if this is just a guide for national courts, may be key to resolving any inconsistency in approach. Since courts across Europe, and now including the UPC, need to be aligned as far as possible with how they interpret granted patents for infringement as well as validity, even though Article 69 EPC is primarily concerned with interpretation for infringement, interpretation for validity at the EPO should ideally be in line with this. In general therefore, the principles in Article 69 may be relevant to patentability, but should not be a primary concern during examination when assessing patentability of an invention under Articles 52 to 57 EPC. As it turns out, T 56/21 has already decided on this specific point and concluded that Article 69 EPC should not be relevant when considering patentability during examination. Instead, Article 84 EPC should be the key requirement during examination, while Article 69 EPC should only be of concern when considering infringement. Following this approach, the answer to question 1 should be a clear no, because Article 84 should instead apply during examination. Personally I would have considered an answer that was more like a yes but with the proviso that Article 69 should not be a primary concern during examination (which appears to be what happens in practice anyway).

Question 2, which does relate to Article 84 rather than Article 69, may be answered by way of a hypothetical example. If, for example, a claim has wording that on the face of it would appear to be clear to the skilled person but the supporting description provides a broadening interpretation by way of a range of examples intended to be covered by the claim wording, it does not seems to me to be correct to take only the narrow wording of the claim and ignore the broader interpretation from the description because this would enable the applicant/proprietor to argue for a narrow interpretation to obtain grant or maintenance of the patent, following which they could argue for a broader interpretation for infringement (known as the 'Angora cat' problem). File wrapper estoppel would not be an appropriate counter to this, because this is not uniformly applied across Europe. The converse, however, should not be a problem because, if a term in a claim is broad and would clearly be understood as such by the skilled person but the description imparts an unambiguously narrower interpretation on the term, granting such a claim would not adversely affect third parties because any infringement issue is for the national (or UPC) courts to decide, i.e. whether such courts interpret the term for infringement broadly or narrowly. The answer to question 2 should therefore be that the description and figures should always be consulted when interpreting features in claims to assess patentability, particularly if these impart a broader scope to any features than would be apparent to the skilled person from the claim wording alone. Article 84 could be used to resolve this, because a narrow claim term that is given a broader meaning in the description could be seen as unclear due to the narrow meaning not being supported, which would require an amendment to be made either to the claims or to the description.

On question 3, the answer could be found by considering what purpose the definition provides. Article 84 is often used to require that unclear terms in a claim for which there is a clarifying feature in the description need to be amended before grant to make them clear because the general view during examination is that the claim wording needs to be clear by itself. The claim wording may therefore need to be amended during examination to incorporate a definition from the description if it would be unclear otherwise. However, if the claim features are clear in themselves, a definition explicitly given in the description for a particular term used in the claims can only result in a narrower definition of the term so, following from the answer to question 2, can be disregarded for assessing patentability if the term, interpreted more broadly without the definition, is still patentable. If the claims are not patentable without the explicit definition, the definition (or something else) should be incorporated into the claims. The answer should therefore be that such a definition could be disregarded if the claim is clear by itself and still patentable, otherwise the definition may need to be incorporated into the claim. How this is done will depend on whether the situation is for an application undergoing examination, in which case a clarity objection can be raised and an amendment made as a result, or if the situation is for a patent during opposition, in which case clarity cannot be raised on the claims as granted. Instead, during opposition the claims should be interpreted in a way that can make sense to the skilled person and patentability assessed based on that, preferably without imparting a narrow definition from the description because this would again raise the Angora cat problem. If it turns out that the patent is invalid based on this assessment, it will then be up to the patentee to decide what amendments may be needed to make it patentable.

The above are only a preliminary few thoughts from me on the questions, which could quite reasonably be answered differently. My mind is not yet set on the matter, so it would be interesting to see if anyone has any thoughts to contribute.

J 1/24: Can an application be pending after grant?

noreply@blogger.com (Tufty the Cat) — Wed, 02 Oct 2024 12:54:00 +0000

Do I actually need to be here?

According to Rule 36 EPC, a divisional application may be filed relating to any pending earlier European patent application. This used to mean that a divisional could only be filed until just before an earlier application was granted, refused or finally deemed withdrawn. There was a long running argument in the early 2000s about the effect of filing an appeal if an application was refused, which would usually happen at the end of oral proceedings before the Examining Division. Since some applicants wanted to make sure they didn't lose the opportunity to have another go, it used to be common to file a divisional application just before oral proceedings in case the application was refused because, once the application was refused, it would then no longer be pending. An alternative would be to file an appeal against the decision to refuse, which would have the effect of suspending the refusal while the appeal was pending. Preparing and filing an appeal just to get a divisional filed was, however, an expensive way to go about it.

The question then was whether it was actually necessary to file an appeal, or if a notice of appeal and then grounds of appeal would need to be filed for any divisional filed after the date of refusal to be valid. This resulted in conflicting decisions, with the Board in J 28/03 finding that the suspensive effect of an appeal depended on the outcome of the appeal, meaning that the status of a divisional could remain uncertain for years. This was finally resolved by a referral being made to the Enlarged Board in J 2/08, which asked whether a refused application could be considered pending within the meaning of Rule 36(1) EPC until expiry of the time for filing a notice of appeal, even if no appeal was actually filed. The Enlarged Board decided in G 1/09 that the answer to this was yes. Nervous applicants could thereafter go to Examining Division oral proceedings without fearing that their opportunity to file a divisional would be lost in the event the application got refused.

So much for applications that were refused, but what about applications that are granted? A decision to grant a patent is issued by the EPO once the grant procedure is completed, i.e. claims translations are filed, renewals are up to date and the grant fee and any excess claims fees are paid. The decision states a future date on which the application will be granted and, as from that date, the application is no longer pending. The current understanding is that any divisional has to be filed at the latest by the day before the date of grant. But what happens if the applicant files a notice of appeal against the decision to grant? Is this even a valid thing to do, and if so does this suspend the effect of the decision to grant, allowing more time for a divisional application to be filed?

Implausible though it appears, this actually happened in the case of European application 19209269.0, for which a decision to grant issued on 18 February 2021, indicating that the application would be granted on 17 March 2021. The applicant filed a notice of appeal on 16 April 2021, requesting that the decision to grant be set aside, which was followed by grounds of appeal filed on 18 June 2021, arguing that, due to a change in practice by the EPO regarding Article 84, the applicant was adversely affected by amendments made to the description before grant. In the interim, however, the EPO issued a communication indicating that the original decision to grant maintained its effect and remained valid, but (rather confusingly) that the date of publication of the mention of grant on 17 March 2021 would be deleted. The applicant had by then filed a divisional application which, if the original date of grant was maintained, would have been invalidly filed.

The situation then developed further when, on 7 April 2022, the applicant withdrew its appeal and, on 18 May 2022, the EPO Receiving Section issued a notice of loss of rights on the divisional application, stating that it could not be proceeded with, referring to the decision of J 28/03 (see above). The applicant then requested a decision, arguing that the application had been validly filed as a divisional. The decision, which was based on the reasoning from J 28/03, stated that the divisional had not been validly filed because the parent had already been granted and every further action was dependent on the outcome of the appeal proceedings. The suspensive effect of the appeal only interrupted the procedure until the appeal was withdrawn. The applicant then appealed this decision, which has now led to issuance of the Legal Board of Appeal decision in J 1/24.

The question for the Board in this case was whether the parent application was still pending according to Rule 36 EPC when the divisional application was filed. Although there was no definition in the EPC about what constituted a pending application, it was established that decisions of the EPO "do not become final until expiry of the period for seeking ordinary means of legal redress" (reasons, point 7). This was decided in G 1/09 in relation to the period for filing a divisional application during the period for filing a notice of appeal following refusal of an application, although the Enlarged Board also indicated (in obiter comments) that the pending status of an application ceased on the day before mention of its grant was published. In this case, the Board found the principle in J 28/03 that the status of the parent application depended on the outcome of the appeal unconvincing, and instead found that an appeal did have suspensive effect regardless of whether this was against refusal or grant. This was supported by the reasoning in G 1/09 that an application that has been refused is still pending for the purpose of Rule 36 EPC during the period for filing a notice of appeal. The same conclusion should therefore apply to a decision to grant. Given that the date of grant was in this case deleted after the notice of appeal was filed, the parent application was still pending when the divisional application was filed, meaning that the divisional was validly filed regardless of the eventual outcome of the appeal.

This new decision does not appear to fully resolve the issue of whether a divisional application can be filed after the date of grant in the same way as G 1/09 because it seems to rely on the date of grant being deleted as a result of a notice of appeal being filed. Therefore, unlike in the case of a decision to refuse an application, it appears that a notice of appeal still has to be filed for the application to be pending when a divisional is filed. It does, however, appear to give applicants a new possibility in the rare event of an applicant changing their mind on whether to file a divisional after it has already become too late. Will it be used in practice? I suspect rarely, but it's one to keep in the back pocket for those rare occasions when something does not go as planned.

Emotional Perception at the Court of Appeal

noreply@blogger.com (Tufty the Cat) — Tue, 23 Jul 2024 15:04:00 +0000

I wrote a few months ago about the, in my view, deeply flawed judgment from the High Court in the case of Emotional Perception AI Ltd, which was an appeal from a UK IPO hearing officer decision that refused the application in question for being excluded under Section 1(2) as a program for a computer. There were a few things that were, in my view, wrong about the judgment but the main one was the finding by the judge that an Artificial Neural Network (ANN) was not a computer program. The reasoning by the judge was along the lines of computer programs needing to be written by a human to count as being computer programs, while ANNs were instead generated by training. My opinion at the time on the judge's reasoning was this:

"Although it should not be necessary to point out to anyone reading this with any knowledge of computers at all, the single major flaw in the reasoning of this judgment is that the ANN, whether in hardware or software, would in actual fact be defined by software in the form of computer code defining connections and weights of the ANN and how it operates. It should go without saying that computer software does not need to be written by a human being for it to be a computer program. Indeed, all computer software in the form it is ultimately used, i.e. object code, is not human readable at all but is a string of 1s and 0s that is only readable by a computer. It is still, however, a program for a computer within the meaning of section 1(2) or of Article 52(2) EPC. How the computer program is generated, whether this is by compilation of human-written source code or the result of a training process (or, in this case, a combination of both), is not relevant to whether it is considered a program for a computer. It is also not relevant, according at least to Gale's Application, whether the program is implemented on hardware instead of software. Both are defined by code that defines how hardware operates, either by programming a general purpose piece of hardware or by defining a specific arrangement created or burned into circuit form in hardware".

The IPO appealed the High Court decision on four grounds, the first two of which related to whether the "program for a computer" exclusion was engaged in the case of ANNs. The other two related to whether the mathematical method exclusion applied and whether there was a substantive technical contribution.

At the Court of Appeal, Lord Justice Colin Birss took the lead judgment, with Lord Justice Richard Arnold and Lady Justice Nicola Davies following. Readers will recall that Colin Birss has been involved in cases like this going right back to the Aerotel judgment in 2006, where he was the barrister representing the Comptroller in their appeal. There could not therefore be a more suitably qualified appeal judge for this case.

Much of the judgment goes into describing the technical detail and background to the claimed invention, which I don't need to go into here. The key part is where the first two grounds of appeal are discussed (paragraph 56 onwards). A few dictionary definitions were referred to regarding what a computer program is, which Birss LJ decided came down to a computer program being "a set of instructions for a computer to do something" (para 61). Importantly, this was consistent with the Aerotel judgment, which referred to a computer program being simply "a set of instructions".

The applicant's argument attempted to push the idea that a computer program required the involvement of a human computer programmer, but Birss LJ found that was neither relevant nor helpful. Code written by a human would be in the form of a high level programming language, but computers actually worked by running machine code that was generally not human readable. There was no justification for a distinction between code written by a human and code created by a computer. Since an ANN was a computer, whether implemented in hardware or software, the inputs used to define it (such as the connections and weights of the network) amounted to a computer program. It followed that the computer program exclusion was engaged, contrary to what the High Court judge decided.

Birss LJ also found that the High Court judge erred in finding that the output of the claimed invention, which was in the form of a recommended file (e.g. a music file selection based on a matching process done by the ANN) involved a technical contribution. This was found to be nothing more than the standard transmission of a file representing a recommendation, which the IPO hearing officer found at first instance had no technical effect. Instead, any effect was only in terms of the semantic meaning of the file selected. None of the AT&T signposts were of assistance with this.

In conclusion, the appeal was allowed and the hearing officer's decision to find the invention excluded from patentability was upheld. We are now back to where we were before, with some clarification now that ANNs are computers and the way they are configured is by way of computer programs*.

*Edited - see comments below.

Conquest Planning: Estoppel & res judicata

noreply@blogger.com (Tufty the Cat) — Fri, 26 Apr 2024 07:07:00 +0000

There has been some excitement over the past few months among the very niche community of UK patent attorneys specialising in AI, following the High Court judgment of Emotional Perception. I wrote about the case here and it was also written about in a slightly more approving way by one of my work colleagues. It was inevitable while the judgment still stood (an appeal is currently pending with a hearing at the Court of Appeal scheduled for May 2024) that attempts would be made to get applications relating to AI through the UK IPO that would previously have been considered unpatentable, particularly given the change in practice in light of the judgment. At least one such attempt has been made, which has resulted in the decision last month in the case of Conquest Planning Inc. (BL O/0259/24).

The application, GB2311361.6, was a divisional of an earlier UK application that was a national phase entry of PCT application PCT/CA2020/050275. The abstract on the cover page of the published PCT application is probably enough for the reader to have a good guess as to where this, originally Canadian, application was going to go in Europe. This described the invention as "a financial planning system that comprises a Strategic Advice Manager (SAM) module that utilizes an artificial intelligence (AI) module to automate and optimize the financial planning decision-making process". Unsurprisingly, in decision BL O/988/23 from 24 October 2023, the application was refused because the hearing officer found the claimed invention to be a tool for recommending financial plans in which an AI module was used. This related entirely to an administrative process that was computer-implemented but made no improvements to a computer in a technical sense. This resulted in the invention being found to be excluded under section 1(2) for being a method for doing business and a program for a computer as such. The fact that the invention made use of a computer program did not impart any technical contribution, following the usual reasoning from Aerotel/Macrossan and AT&T/CVON.

Probably expecting this negative result, the applicant had already arranged for a divisional to be filed in July 2023. This application then faced similar objections from the examiner and eventually (although rather more quickly this time, due to the compliance period coming up) came before a hearing officer after the examiner decided that the claims on file as of 8 December 2023 were not patentable for essentially the same reasons as were already provided in the earlier decision. By that time, however, the Emotional Perception judgment had come out, so the applicant ran the argument before the hearing officer that, because the application related to AI, the change in practice should be taken into account. A question then was whether the applicant was trying to have a second go at getting the same invention patented. The issue to be considered was what bearing the previous decision had on the divisional application. The hearing officer noted that, in a previous decision BL O/033/09 (Rajesh Kapur), the principle of estoppel was found to apply to ensure that litigation was final and could not be subsequently fought all over again. The Patents Hearing Manual notes at points 1.96 and 1.97:

"Estoppel by record (doctrine of res judicata) applies where a relevant judgment (and that includes a decision of a tribunal such as the comptroller) has already been given. The judgment stands forever, as between the parties unless it is modified by the normal course of appeal (in which case the modified judgment stands in its place). For example, in an infringement action (Poulton v Adjustable Cover & Boiler Block co (1908) 25 RPC 529 the plaintiff was awarded damages which were ordered to be assessed and paid by the defendant in due course. However, before the damages had been paid, the defendant caused the patent to be revoked on the basis of new evidence. Accordingly, he argued that he need no longer pay the original damages since the patent must, at the time of the first action, have been invalid. He was however held to the terms of the first decision. This judgment although old remains good law - see Coflexip SA v Stolt Offshore MS Ltd (No 2) [2004] EWCA Civ 213, [2004] FSR 34, discussed below with regard to abuse of legal process. See also Unilin Beheer BV v Berry Floor NV and Others [2007] EWCA Civ 364 in which it was decided that a later finding of invalidity of an EP(UK) patent in an EPO opposition would not disturb a finding in the UK Courts that the patent was valid and infringed as between the parties in the UK action, so that any damages must still be paid.

There are two types of estoppel by record. The first is "cause of action" estoppel where the same cause of action lies in a final judgment (cf the example given above). The second is issue estoppel which, per Lord Denning in Fidelitas Shipping Co Ltd's v vlo Exportchleb [1966] 1 QB 630 at p640, applies where, within one cause of action, there are several issues raised which are necessary for the determination of the whole case. Once an issue has been raised and distinctly determined (even if the question was in fact not the subject of any dispute or argument) then as a general rule neither party can be allowed to fight that issue all over again. But not always - cf, for example, Rose Bro's (Gainsborough) Ltds Appln [1960] RPC 247 and Hodgkinson & Corby Ltd & anr v Wards Mobility Services Ltd [1997] FSR 178. Cinpres Gas Injection Limited v Melea Limited [2008] EWCA Civ 9 contains a discussion of the difference between cause of action and issue estoppel - see paragraphs 66 to 77. Estoppel was not established in that case, the judgment holding that there had been perjury by a witness closely identified with one of the parties; (see paragraphs 105 to 107), and adoption of the fraud by the party itself; (paragraphs 108 - 120)."

As a result, the hearing officer found that the applicant was prevented from asserting that the claimed invention was outside of the exclusions from patentability if the scope of those exclusions remained unchanged. Did the Emotional Perception judgment change the scope of the exclusions though? The judge had found that a system for recommending data files using an artificial neural network (ANN) was not excluded as a computer program. The claimed invention in this case involved the step of training an artificial intelligence to develop a financial plan, which the applicant argued was sufficient to determine the question of patentability in their favour. The hearing officer, however, found that this did not relate to a trained ANN or to the training of a ANN but instead to a generic AI. It could not therefore be said to engage the exclusions raised in Emotional Perception. Given the identical facts and identical law, the previous decision must be followed. The application was therefore refused.

The lesson here then is that, although there may have been a change in practice in light of Emotional Perception, the effect while the judgment stands is likely to be very limited, being specific to the question of whether an ANN can be considered to be a computer program as such. If the claimed invention does not relate specifically to an ANN, the change in practice is not going to be of much use. Another point to note is that the other exclusions, in particular that relating to business methods, will still apply, so even if the computer program exclusion is avoided there may be others that can still prevent a patent being granted.

If you like this ...

noreply@blogger.com (Tufty the Cat) — Fri, 26 Jan 2024 18:18:00 +0000

I was hoping that someone else would by now have critically analysed the recent High Court judgment in Emotional Perception AI Ltd [2023] EWHC 2948 (Ch), which issued on 21 November 2023, but it appears that nobody has yet. There has been a recent article in the CIPA Journal, but the less said about that the better. Even the IPKat has said nothing about it so far, which is a pity. It appears therefore to fall to me to do the necessary explanation and (to give the game away somewhat) point out that the judgment is a definite outlier and is not in line with higher level case law, including several judgments from the Court of Appeal, nor is it in line with case law at the EPO. There have been several articles published that have, rather excitedly, announced the judgment as some kind of breakthrough for AI inventions because it finds, in effect, that a trained artificial neural network (ANN) is not a program for a computer under section 1(2) of the Patents Act 1977. This is, of course, in reality complete nonsense. As a consequence, the reasoning goes, this will result in AI inventions now being much more patentable than they were before. The UK IPO have even changed their practice to instruct their examiners that, as from 29 November 2023, objections should not even be raised to inventions involving an ANN for excluded subject matter. This is great news for inventors working in the field of AI who want patent protection (which may not be all of them), and also great news for their patent attorneys. I, however, am not so sure it will work out well in the longer run, and suspect this will be a temporary aberration, although I may of course be wrong.

I have been following case law on patentability in the UK and at the EPO for the past 17 years or so, coincidentally starting roughly around the time of the Court of Appeal judgment in Aerotel/Macrossan [2006] EWCA Civ 1371, which issued while I was sitting my UK Finals in 2006. Looking at my IPKat posts from around that time (see here for example), there was much discussion in the follow-up to Aerotel about whether the 4-step test was actually in line with the EPO, which instead applied the problem-solution approach according to Comvik (T 641/00). After a bit of disagreement about the validity of computer program claims (see here), the issues in the UK appeared to settle. Although the tests applied at the UK IPO and the EPO are very different, the core issues are essentially the same, which is whether there is a 'technical effect' (which I wrote about in 2013 here). I have revisited this several times in the intervening years, most recently when writing a chapter for the IPKat's 20th anniversary book. Although there has been some tinkering around the edges, the general principles have not really changed for at least 10 years and, for better or worse, have been applied with reasonable consistency by the UK IPO. These principles can be found in any of the numerous decisions that have come from UK IPO hearing officers, which I have had the dubious pleasure of reviewing for the CIPA journal for the past 17 years. You may even have read one or two of my reviews, although I suspect very few people do.

Firstly, according to Aerotel/Macrossan, the way to deal with 'excluded matter' under section 1(2) (i.e. things that are not inventions for the purposes of the Act), was to:

i) properly construe the claim;
ii) identify the contribution (which may be the actual or alleged contribution, depending on whether a search has been performed);
iii) ask whether the contribution falls solely within excluded matter; and
iv) if step iii) hasn't already covered it, check whether the contribution is actually technical.

Secondly, in considering whether a computer program makes a technical contribution, the later decision in AT&T/CVON, which was supported and slightly amended by the Court of Appeal judgment in HTC v Apple [2013] EWCA Civ 451, set out the following five 'signposts', any one of which may indicate the presence of a technical contribution according to step iv) of the Aerotel test:

i. Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer.
ii. Whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run.
iii. Whether the claimed technical effect results in the computer being made to operate in a new way.
iv. Whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer.
v. Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

It is worth noting at this point that, although Kitchin LJ stated, "these are useful signposts [...] But that does not mean to say they will be determinative in every case", in practice at the UK IPO, rightly or wrongly, these signposts have been determinative in every case where they have been applied. There has not been a single case where the signposts have been used and yet the invention has still been found to have a technical contribution. I would certainly have noticed and pointed it out with great excitement if there had been. To at least a first approximation therefore, if the contribution in a computer-implemented invention is not found to be within at least one of the signposts, it is not patentable.

With that all established, a computer-implemented method in a patent application such as the one put forward by Emotional Perception AI Limited (previously known as Mashtraxx Limited), would be expected to face a difficult time in getting granted. The application itself related to a method of training and implementing an ANN to identify a pair of similar data files, a particular example being music files. In simple terms, the claimed invention was about matching data files based on closeness of written descriptions and of the data itself. The actual claimed invention is a classic example of technical obfuscation, with the latest version of claim 1 reading as follows:

The IPO examiner objected that the claimed invention was not patentable because it related to a mathematical method and a computer program as such, objecting that the contribution made by the claimed invention (leaving aside clarity and sufficiency issues with claim 1) was to software for training an ANN to identify similar files by extracting measurable signal qualities from two files, assembling a multidimensional feature vector for each file based on these qualities, determining the distance between the two vectors and adjusting the ANN's weights to provide a measure of similarity between the files. In effect, the invention (in my words, not the examiner's) was about analysing music files to provide an output of the type "if you like this, then you might also like this". The examiner found that this did not solve a technical problem, and especially not a technical problem within a computer. The invention was computer-implemented, but used conventional hardware that was programmed to perform a non-technical function. It was not directed to a process outside of the computer, nor did it form part of the internal workings of the computer. In conclusion, the examiner found that the invention was "directed to an excluded process and there is nothing more to it" (examination report 13/10/21, page 10/11).

After reaching this impasse with the examiner, the applicant then went for a hearing before the (very experienced) hearing officer Phil Thorpe. Among the arguments run by the applicant, one involved a comparison with the seminal EPO Board of Appeal decision from 1986 of Vicom (T 208/84), which decided that an image processing algorithm could be technical because the output was an improved image, which was considered to be technical. The hearing officer did not, however, consider that the comparison was a good one, because in this case there was no change to the data files, but only an output that provided an indication of a pair of semantically similar files. The claimed invention, in the hearing officer's view, did not therefore define a technical process and the contribution was found to relate wholly to a computer program as such, resulting in the application being refused.

At that point, I would expect any normal applicant to give up and take the loss, given the very low hit rate of getting computer-implemented inventions facing excluded matter objections granted at the UK IPO. In this case, however, the applicant and their attorney did not give up and instead took the matter to appeal before Sir Anthony Mann in the High Court. Although obviously a highly experienced legal mind, Sir Anthony has not come to my attention at all previously in the area of patent cases, let alone the highly specialised area of patentability of computer-implemented inventions. As it turns out, this is I think one of the key problems with the judgment.

Sir Anthony first set out how he understood the invention, which he considered could be envisaged as a 'black box' "which is capable of being trained as how to process an input, learning by that training process, holding that learning within itself and then processing that input in a way derived from that training and learning" (paragraph 3). He then described the claimed invention as being an improved system for providing media file recommendations to an end user, particularly for music files, the advantage of which was to offer suggestions of similar music in terms of human perception and emotion by passing music through a trained ANN. Claim 1, which had been (rather confusingly) amended from the above claim 1 to a "system for providing semantically relevant file recommendations" was defined by Sir Anthony as "a product by process claim", while another independent claim defined a corresponding method, both defining the steps of training the ANN and providing an output of relevant files. My initial problem at this point is that claim 1 as presented in the judgment (see here) is not really a product by process claim, but is a system defined by its features of operation, which is not in line with how a typical product by process claim is defined (see for example the EPO Guidelines F-IV 4.12).

My next problem with the judgment is Sir Anthony then going on to "assume for the moment that the ANN itself is a hardware system (as opposed to a software emulation)" (paragraph 8). Why this assumption is made is completely beyond me. There is no justification for it from the application, nor is there any sensible reason why the ANN would be assumed to be hardware. In the Court of Appeal judgment of Gale's Application [1991] RPC 305, which is supposed to be in line with the current Aerotel test, Aldous LJ found that putting instructions on hardware did not make an invention patentable. The invention in that case related to a new way of calculating a square root on a computer. Aldous LJ found that "if Mr. Gale's discovery or method or program were embodied in a floppy disc (software) neither the disc nor a computer into whose RAM that programs had been inserted could be patented, it must, in my view, follows that the silicon chip with its circuitry embodying the program (hardware) cannot be patented either" (para 332). Simply switching from software to hardware did not therefore, based on this reasoning, make an invention patentable if it did the same thing. Sir Anthony, however (who did not appear to be aware of this judgment as he made no reference to it, nor was it pointed out to him by the UK IPO) managed to change the argument about whether the invention in this case was patentable by arbitrarily assuming that the ANN was implemented on hardware and entirely ignoring the valid line of reasoning that this should make no difference.

The next problem I have with the judgment is another apparent misunderstanding by Sir Anthony, apparently led by the applicant's representatives, where he came to the view that the ANN training model was not programmed to include all its detailed logical steps but adjusted itself through training to produce a model which satisfied the training objective. This led him to ask the question of where the computer program was that was said to engage the exclusion. This resulted in a confused bit of reasoning about where the program would be in the case of a hardware ANN (which had already been wrongly assumed), with the UK IPO's representative implausibly conceding that "there would in that case be no program to which the exclusion applies" (para 43). This inevitably resulted in Sir Anthony, having been well and truly led up the garden path by the applicant's attorney and the IPO's problematic representation, that there was in fact no computer program because the ANN was not operating on a set of program instructions at all but "was emulating a piece of hardware which had physical nodes and layers, and was no more operating or applying a program than a hardware system was". It becomes very difficult at this point to take the judgment seriously any more because the reasoning is so preposterous and wrong that anything further is bound to be wrong. And so it turned out to be, with Sir Anthony concluding that the ANN in substance operated at a different level from the underlying software on the computer and operated in the same way as a hardware ANN, resulting in the emulated ANN not being a program for a computer and therefore not excluded.

Although it should not be necessary to point out to anyone reading this with any knowledge of computers at all, the single major flaw in the reasoning of this judgment is that the ANN, whether in hardware or software, would in actual fact be defined by software in the form of computer code defining connections and weights of the ANN and how it operates. It should go without saying that computer software does not need to be written by a human being for it to be a computer program. Indeed, all computer software in the form it is ultimately used, i.e. object code, is not human readable at all but is a string of 1s and 0s that is only readable by a computer. It is still, however, a program for a computer within the meaning of section 1(2) or of Article 52(2) EPC. How the computer program is generated, whether this is by compilation of human-written source code or the result of a training process (or, in this case, a combination of both), is not relevant to whether it is considered a program for a computer. It is also not relevant, according at least to Gale's Application, whether the program is implemented on hardware instead of software. Both are defined by code that defines how hardware operates, either by programming a general purpose piece of hardware or by defining a specific arrangement created or burned into circuit form in hardware.

As if the judgment wasn't wrong enough at that point, Sir Anthony then went on to decide whether there would be a technical effect to the invention, having nevertheless already decided that it wasn't excluded. After going through some of the usual case law on the subject, including the somewhat dubious decision in Protecting Kids, Sir Anthony went on to agree with the applicant that "moving data outside the computer system in the form of the file that is transferred [...] provides an external (outside world) effect". This is, of course, entirely out of line with all existing case law on the subject, both in the UK and at the EPO. Sir Anthony nevertheless went on to find that there was a technical effect in providing an (entirely unchanged) file selection to a user as an output of the claimed invention, and allowed the appeal.

At this point, the only comment I have to add is the following:

Does the EPO care about double patenting?

noreply@blogger.com (Tufty the Cat) — Fri, 08 Dec 2023 19:28:00 +0000

Although it has been a contentious issue in the past, the Enlarged Board of Appeal decision of G 4/19 clearly established that double patenting is not allowed. As the Guidelines for Examination G-IV 5.4 concisely puts it, "two patents cannot be granted to the same applicant with claims directed to the same subject-matter". G 4/19 provides a fuller definition of what is not allowed:

1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.
2. The application can be refused on that legal basis, irrespective of whether it
a) was filed on the same date as, or
b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or
c) claims the same priority (Article 88 EPC) as the European patent application leading to the European patent already granted.

Given this clear guidance, one might expect that an examiner will raise an objection if, for example, an applicant files a divisional application with the same claim 1 that has already been granted on the parent application. This would be the clearest case possible of what is not allowed according to G 4/19, and something EPO examiners should be well aware of. As I have discovered recently, however, this does not appear to be the case. I have now found three examples of an applicant filing a divisional application with the exact same claim 1 that has already been granted on the immediate parent application, following which the search opinion has found no objections. These are: EP4092953, EP4184856 and EP4209954. Before you ask, the applications have different examiners but the same applicant. The first of these I have already written about here as it related to the question of when third party observations could have an effect. It turns out that double patenting, once it is pointed out, is in fact a serious enough objection that it can cause examination to be reopened after a communication under Rule 71(3) EPC has issued. This made me wonder whether examiners even check for this when preparing their search opinion for a divisional application. In all of the above three cases, it appears that the examiner did not because the search opinion in each of them simply stated:

This would, of course, be the case if the examiner was only looking for the usual things like novelty, inventive step, clarity and sufficiency because the same examiner had already examined the same claim for the parent application and found it allowable.

Can anyone explain to me how a competent EPO examiner can examine the claims of a divisional application and entirely ignore the possibility of double patenting? In a related question, can anyone explain to me why an applicant would want to file a divisional with claim 1 in the exact same form as their recently granted parent application?

G 1/23 Referral - Is a marketed product prior art?

noreply@blogger.com (Tufty the Cat) — Sun, 19 Nov 2023 20:31:00 +0000

The question of whether something is made available to the public is fundamental to patent law. Article 54(1) EPC states that "An invention shall be considered to be new if it does not form part of the state of the art". Article 54(2) EPC then goes on to define what constitutes the state of the art, which is "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application". A product that is put on the market is made available to the public either by use or "in any other way", so such a product becomes part of the state of the art once on the market. A later filed patent application claiming the same product would consequently not be novel.

There is a difference, however, between making available a product by placing the product itself on the market and making the same product available to the public by way of a disclosure, for example by publication of a paper or a patent application. In the latter case, the product itself is not disclosed but is only made available to the public if a skilled person would be able to reproduce the product based on what is disclosed. In other words, the disclosure needs to be enabling. This requirement does not (or at least should not) apply to a disclosure by placing the product on the market simply because the product itself is made available. Consequently, disclosure of the product by placing it on the market does not necessarily disclose to the skilled person how to make the product, while disclosure by publication is in effect the reverse, in that the disclosure must disclose to the skilled person how to make the product.

Given the above, is there any question to be answered regarding whether a product is considered to be made available to the public if the skilled person might not be able to reproduce the product itself? One might think not, but this is in fact a live question that has been put before the EPO Enlarged Board of Appeal. Technical Board of Appeal decision T 438/19 has raised the following questions:

1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?

2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?

3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?

Only question 1 is really of any significance. If this is answered in the negative, the other two questions are essentially pointless and don't add anything. Since it should be obvious by now that I think the answer to the first question should be a clear 'no', I will not even say anything about the other two.

A first important point to note, which is key to answering question 1, is that it relates to a product and not to a method for making a product. In the patent in question, the product is a “material suitable as an encapsulating material for [a] solar cell” (claim 1 of the patent). The claims of the patent relate only to: i) the material itself; ii) a solar cell comprising the material; and iii) use of the material as an encapsulating material for a solar cell. There is no question regarding a method of making the material or whether such a method was made available to the public at any point.

A second important point to note is that the alleged differentiating feature in claim 1 of the patent is only the final feature of claim 1, which is “a content of aluminum element of from 10 to 500 ppm”, the purported closest prior art disclosing all other features. Therefore, if the purported closest prior art is considered not to be excluded from the state of the art within the meaning of Article 54(2) EPC, the only question to be addressed is whether increasing the aluminum content to a value within the stated range would be obvious to the skilled person, and not whether a process of making the product in this way would be available to the skilled person.

Thirdly, although the question of validity of the patent is one of inventive step, the question before the Enlarged Board is one only of novelty, i.e. whether the product was made available to the public before the priority date of the patent. The finding of the Enlarged Board will therefore have an effect on any case relating to whether putting a product on the market makes the product part of the state of the art for novelty or inventive step.

As a general principle, as outlined above, if a product has been put on the market and therefore made available to the public, any claim to the product itself in a later filed patent application would lack novelty. A distinction should be made between a claim to a product and a claim to a method of making the product. The former claim would be invalid over the making available to the public of the product, regardless of how the product was produced or whether the skilled person could have reproduced the product. The latter claim would only be invalid if the method of making the product was known by, or would be obvious to, the skilled person. A new method of making an existing product is patentable. The product itself produced by any other method cannot be patented a second time.

The referral in this case stems from the following paragraph from the Enlarged Board’s reasoning in G 1/92:

"An essential purpose of any technical teaching is to enable the person skilled in the art to manufacture or use a given product by applying such teaching. Where such teaching results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art” (point 1.4 of the reasons).

The referring board in T 438/19 indicates that the last sentence of the above passage “could appear to indicate that a product put on the market becomes state of the art and therefore available to the public only when the composition or internal structure of the product can be discovered and reproduced without undue burden” (point 8.2 of the reasons). This would, however, in my view be a misreading of both the sentence itself and the context in which it is used, which is in relation to whether a product can be reproduced. The sentence is only referring to the situation where, if the skilled person can reproduce the product without undue burden, both the product and its composition or internal structure become state of the art. The product itself is state of the art regardless of whether its composition or internal structure could be analysed, not least because the product in the same form would be an infringement of a claim to the product if placed on the market afterwards. The reference in G 1/92 to the skilled person being able to “reproduce it without undue burden” is therefore clearly referring to the skilled person being able to deduce how to “prepare the said product”, not to whether making the product available to the public before the priority date would be prior art for a claim to the product itself. This is regardless of whether the skilled person could reproduce the product with or without undue burden. The answer to question 1 must therefore be no.

For a claim to a product, it does not matter whether the skilled person could or did reproduce the composition or internal structure of the product if the same product would be considered infringing if put on the market afterwards. A good example of this is the case of Merrell Dow Pharmaceuticals Inc. v H.N. Norton & Co. Ltd. [1996] RPC 76, a judgment from the UK House of Lords. The key finding of this was that a product (in this case an acid metabolite of an anti-histamine drug terfenadine) was made available to the public before the priority date of a patent to the product because it was an inevitable consequence of taking the drug terfenadine. Although the composition of the acid metabolite product was not made available to the public until after the filing date of the patent in question, following further research by the patentee, this did not matter. This was because, as Lord Hoffmann put it, “one cannot swallow terfenadine without shortly afterwards making the acid metabolite in one’s liver” (paragraph 7). Lord Hoffmann then quoted the Enlarged Board decision in G 2/88 (Mobil), which stated: “It is generally accepted as a principle underlying the EPC that a patent which claims a physical entity per se, confers absolute protection upon such physical entity; that is, wherever it exists and whatever its context (and therefore for all uses of such physical entity, whether known or unknown)” (point 5 of the reasons). Lord Hoffmann then went on to state that the consequence of this is that: “If the use would have been an infringement afterwards, it must have been an anticipation before”. (paragraph 25). If the Enlarged Board in G 1/23 were to find that such a principle was no longer applicable, this would allow patent claims to products already put on the market, thereby turning something that would previously not be an infringing product into an infringement. It ought to be clear that this would be a nonsense, and should not even require considering provisions such as Section 64 to allow what was done before to be continue to be done. I hope that the Enlarged Board see this and decide accordingly.

UPDATE 13 March 2025: According to an article from patent attorneys at GJE, following oral proceedings held yesterday the Enlarged Board has decided that the above 3 questions should be answered as follows:

1. A product put on the market before the filing date of a European patent application is not excluded from the state of the art solely because its composition or internal structure could not be analyzed and reproduced without undue burden.
2. Technical information about such commercial products (e.g., in brochures or data sheets) does constitute state of the art regardless of whether the product itself could be analyzed and reproduced.
3. When determining what constitutes state of the art, a physical product is by definition enabled by being put on the market and analysability and reproducibility are not required.

Although we will have to see what the official decision says, it appears from this that I was completely correct and my earlier fears have been allayed. Putting a product on the market is indeed a public disclosure, making any later filed claim to the product itself invalid.

J 5/23 - Electronic Signatures are Invalid

noreply@blogger.com (Tufty the Cat) — Mon, 25 Sep 2023 17:06:00 +0000

Back in December 2021, I wrote about electronic signatures in light of the then recently published notice from the EPO about them being used as evidence for registering a transfer of rights. Before going any further, I recommend reading my previous post so you are familiar with the concept of digital/electronic signatures, if you are not already. In brief, the situation at the time was that, if a digital signature was to be used it would need to comply with fairly strict requirements to pass the test of being considered valid. It was evident at the time, as I tried to make clear, that a mark on a document that appeared to be a digital signature, but without the required certification, would not pass the test. Evidently, however, not everyone realised this and attempts were made to record assignments at the EPO with such documents. European application 21204983.7, filed in the name of Gyrus ACMI, Inc., is one such example, and appears to be the first one on this issue that has resulted in an appeal decision.

In March 2022, the applicant's representative filed a request pursuant to Rule 22 EPC to record a transfer of rights regarding the application. The registration fee was paid and the request was accompanied by an assignment document, purportedly signed by both parties. The signature part of the assignment document as submitted to the EPO looked like this:

Both signatures were evidently not done by hand, but an indication that the document had at some stage been electronically signed was provided by a DocuSign Envelope ID at the top of the assignment document, which looked like this:

It is impossible to tell from the EP register whether the document that was submitted was in fact the electronically signed version, since these documents are resampled versions and any signatures would be stripped out. However, it is evident based on what happened next that what was submitted was merely a dumb copy without any actual digital signatures, because an objection was raised shortly afterwards by the EPO Legal Division in a communication dated 24 March 2022, stating:

"With regard to the electronic signatures attached to the Patent assignment submitted on 14 March 2022, we are unable to access the electronic certificates attached to them. We therefore cannot assess whether the signatures fulfil the requirements set out in the notice from the European Patent Office dated 22 October 2021 concerning electronic signatures on documents submitted as evidence to support requests for registration of a
transfer of rights under Rules 22 and 85 EPO and requests for registration of a licence or other rights under Rule 23 EPC (OJ EPO 2021,A86).

Your attention is therefore drawn to the definition and requirements of a qualified electronic signature provided under Article 3(12), (15), (23) Regulation (EU) No 910/2014. Please note that the qualified electronic signatures must be electronically verifiable by an accessible qualified certificate attached thereto. Only the original (digital) format of the electronically signed document allows such verification. Scanned or similarly reproduced documents do not serve this purpose.

You are therefore invited to re-submit the document in question in PDF format bearing either a verifiable electronic signatures or a handwritten signatures within two months of notification of the present communication".

Rather than going back and getting a proper digitally signed document or one with handwritten signatures, the applicant's representative argued back to the Legal Division that, because the assignment document contained text string signatures from both parties, the document should be accepted. The Legal Division disagreed, pointing out that only documents bearing qualified electronic signatures within the meaning of Regulation (EU) No 910/2014 could be accepted, according to the EPO notice of 22 October 2021. Such signatures, as pointed out by the Legal Division, "must be electronically verifiable by means of a digital qualified certificate included in the document filed. Only the original, digital format of the electronically signed document permits such verification". After some more (rather pointless) arguments from the applicant's representative, a final decision was made on 23 February 2023 to reject the request for recordal. An appeal was then filed in March 2023, arguing in part that Rule 2 EPC and the Decision of the President dated 14 May 2021 concerning the electronic filing of documents permitted assignments with text string signatures to be used for recordal purposes.

The Board of Appeal, deciding on the papers alone, issued their decision in J 5/23 on 4 September 2023 (which, incidentally, is incredibly quick for a BoA decision). The unsurprising aspect of the decision is that the Board did not agree with the appellant that the general rules for filing documents could apply also to recordal of assignments. There was, however, a substantial sting in the tail, which is that the Board have decided that electronic signatures of any kind (qualified or otherwise) do not meet the requirements of Rule 22(1) EPC. The reasoning from the Board was in essence that the definition of the word "signature" in Article 72 EPC has not been changed to allow electronic signatures. At the time the EPC entered into force, and also according to standard dictionary definitions, the word "signature" meant something written by hand. If this were to be interpreted to also include electronic signatures, the question arose as to what kind of electronic signature could qualify within the meaning of Article 72 EPC. Given that Article 72 EPC required there to be clear and unambiguous formal requirements for the transfer of a European patent application, it would be at odds with this rationale if - without any explicit legal basis - any type of text in electronic form could be considered a signature (see point 2.4.5). In the Board's view, the Notice from the EPO concerning electronic signatures could not overrule the definition of a signature in Article 72 EPC. What would be required is agreement between the contracting states to provide an updated interpretation, which would apparently go beyond what the Administrative Council was able to do. The Board's concluding statement was the following:

"In conclusion, the Board, applying the general rule of interpretation pursuant to Article 31 VCLT to the term "signature" in Article 72 EPC, i.e. interpreting this term in good faith according to its ordinary meaning in the applicable context and taking account of the purpose of this legal provision, holds that this term - in the absence of a different definition in the Implementing Regulations (see point 2.11 below) - must be understood as referring to a handwritten depiction of someone's name, written on the assignment "contract" referred to in Article 72 EPC. In the absence of any such handwritten signature, an assignment agreement does not comply with the formal requirements under Article 72 EPC and, under Rule 22(3) EPC, has no effect vis-à-vis the EPO. It follows from Rule 22(3) EPC that it is beyond the EPO's jurisdiction whether or not such a contract, in cases of non-compliance with the requirements of Article 72 EPC, also has no effect between the parties to the contract themselves. If necessary, this question must be decided by the competent national court according to the applicable law regulating the consequences of non-compliance with formal requirements for contracts" (point 2.9, emphasis added).

The Board does then, however, go on to indicate that this might be fixed by changing the Rules:

"While under the present legal framework the term "signature" must be understood as referring to handwritten signatures only, Article 72 EPC does, as such, not prohibit the legislator of the Implementing Regulations to the EPC, i.e. the Administrative Council, from specifying the meaning of the term "signature" in the Implementing Regulations (see G 3/19, Reasons XXVI.4). Taking due account of the rationale underlying Article 72 EPC (see points 2.4.2 and 2.4.3 above), such a definition could include a reference to some form of electronic signature and still respect the boundaries set by Articles 72 and 164(2) EPC. Providing such a definition in the Implementing Regulations would then change the context in which the term "signature" in Article 72 EPC is interpreted pursuant to Article 31 VCLT (see points 2.5 to 2.5.6 above), both by the departments of the EPO and by national courts." (point 2.11)

The upshot of all this is that, not only is it now clear that a "text string" signature in an assignment document is not acceptable but, based on this decision, all types of electronic signatures are now considered invalid for the purposes of recording an assignment. As of right now, all practitioners will need to revise their advice to clients that assignments must have handwritten signatures. It looks like there are only two options available if the EPO wants digital signatures to get accepted. The first option would be to somehow overturn this decision by getting the Enlarged Board of Appeal to decide on the matter, although there is of course no guarantee that the Enlarged Board would decide in any other way. This could in any case only happen once there have been two conflicting decisions, so it would first need another case to decide the other way for the President or a Board of Appeal to kick the issue further upwards. Perhaps there is another appeal currently pending? The alternative, which may be far less appealing but which could be a quicker option, would be to get the Administrative Council to amend the Implementing Regulations to change the context in which the term "signature" is interpreted, as suggested in point 2.11 of the decision. For the time being, however, it appears that using electronic signatures for assignments are effectively dead in the water.

Postscript: Thanks to the anonymous commenter who has pointed out the final line in the decision (pdf version). Take a look: