07.14.17

“EPO Enlarged Board of Appeal Has Brought an Unprecedented Level of Certainty to the Law,” But Benoît Battistelli Crushes It

Posted in Europe, Law at 2:37 am by Dr. Roy Schestowitz

A shocked Battistelli
Context: The Boards of Appeal Openly Complain (in the EPO’s Web Site) About Battistelli, But Don’t Tell Battistelli About It…

Summary: The systematic erosion of patent quality at the EPO, including attacks on the appeal boards, means less patent justice in the rest of Europe, even in the Supreme Court of Britain

YESTERDAY, only a few days after shaming strikers, the EPO released a pile of lies (warning: epo.org link) that we already debunked in many articles several months ago. These were paid-for lies — a hallmark of the Battistelli regime. They try to pretend that everything is OK and that things are improving. The reality is, many people are leaving (management also) and patent quality declined so fast that even applications the USPTO would reject are being accepted by the EPO.

“They try to pretend that everything is OK and that things are improving. The reality is, many people are leaving (management also) and patent quality declined so fast that even applications the USPTO would reject are being accepted by the EPO.”Yesterday morning we used the term “Gold Standard” and someone later used it as well, essentially by asking, “where is the EPO’s Gold Standard now?” As Mr. Battistelli basically turned the EPO into rubbish (in many respects, ranging from working conditions to patent quality), calling the EPO “gold” anything would make no sense, except maybe the gold diggers that Team Battistelli became.

We’ve gone though the comments thread at IP Kat and highlighted the relevant bits below:

I too am worried about the Art 54(3) point. If a claim defining “sodium” now encompasses in its scope “potassium”, how should an applicant formulate his claim to be clear of Art 54(3) art disclosing potassium, but not sodium? Or now does the test of “disclosure” have now to encompass that which is directly and unambiguously disclosed and also Improver equivalents thereto? Or, put another way, where is the EPO’s Gold Standard now?

How do the Germans sort this out, with their DoE?

MaxDrei?

I would agree with LordBeefBurger and the GuestKat that this judgement is quite surprising.

When considering that the original disclosure only relates to disodium, stating that dipotassium also falls under the scope of the claims, would mean that actually in such a situation the applicant/proprietor could amend its specification after filing in order to envisage any other salts which were not specifically disclosed in the original application.

Even if one would not adopt the strict approach of the BA of the EPO, there is no doubt that such an amendment would plainly offend Art 123(2) EPC.

When one looks at the contribution to the art, the proprietor has only disclosed the association of permetrexed disodium with vitamin B12 or a pharmaceutical derivative thereof, and nothing else. There is well a general statement in § [0005] and [0022] of the patent referring to antifolates as a class associated with a methylmalonic acid lowering agent as vitamin B12. But that’s it.

All further statements in the patent refer exclusively to permetrexed disodium. See for example § [0010], [0011], [0016], [0034], [0039], [0045] or [0047] of the patent specification. The judgement refers to some of those §, but then takes a different route.

The limitation to permetrexed disodium is thus a clear choice of the proprietor. Why the proprietor should then be allowed to obtain protection for something he has not invented? I fully agree with LordBeefBurger “that “disodium” is not a term amenable to variation in practice”. It cannot be compared with “vertical” in Catnic.

The problem with Art 2 of the Protocol on Art 69 in EPC 2000 is that, although it mentions equivalents, the diplomatic conference was not able to reach an agreement on the definition of what is an equivalent. The EPO had made proposals to this effect, but no agreement could be reached. Taking pretext of this new article in the Protocol to go as far as here is quite daring and certainly not enhancing certainty in UK.

One gets the feeling that the mistake done in the Epilady case had to be corrected and a more lenient stance adopted. And for this it was convenient to rely on Art 2 of the Protocol.

The judgement might look interesting, but it should remain a one-off, as in my opinion it totally disregards the actual contribution to art by the proprietor.

I think that now we are Brexiting we can return to formulating our own unique case law and making our purposive construction doctrine broader, without needing to worry about the way Europe or the EPO look at claim language.

The EPO have increasingly viewed the ‘invention’ as the literal claim scope since getting rid of the Snackfood test (https://www.epo.org/law-practice/case-law-appeals/recent/t880073ep1.html)

At least the UK can now go back to reconsidering claims and inventions based on essential and non-essential features, and not let limitations relating to non-essential features get in the way of catching infringers using the same the invention.

Still not had time to read through the decision but let that not stop me indulging myself with a rant.

Through the second half of my long career as a patent agent/attorney, I have defended “purposive construction” against the notion of “infringement by equivalent”. The notion that the claim means the same, whether for validity or infringement, is precious to me. You know, the notion that “What comes after, and infringes, if coming before, anticipates”. You know, the notion that the Act provides only one sort of infringement and there is no justification to debate whether any given act of infringement is “direct” infringement or infringement “by equivalent”.

I remember at a Seminar about 20 years ago, when discussing not Improver but HILTI, speaker Nick Pumfrey cautioned me that such a notion might seem to me unassailable while being simultaneously given no houseroom at all, on The Continent.

What chance does the UK SC have, of getting to the right result, when both sides are represented by professional litigators for whom, the more legal uncertainty there is, the more money they can make? Who is there to point out to the judges the perils and unwisdom of overturning a century of established patent law? One would like to think that the wisdom of the vastly experienced patent judges in the High Court and Court of Appeal would carry more weight. But no, weight is instead given to the jurisprudence of non-specialist, indeed generalist, judges in the civil law jurisdictions of Continental Europe, for whom Binding Precedent is what you find on a Different Planet, but not on grounded Earth.

There are ways and means, in civil law jurisdictions, to live with legal uncertainty. See how the EPO Enlarged Board of Appeal has brought an unprecedented level of certainty to the law of novelty, obviousness, clarity, added matter, sufficiency, Convention priority. Poisoning an English law jurisdiction with a near fatal dose of it though and what do you get? Litigate like in America? Do you know over there how to construe a claim, or what is or is not definite, enabled, enjoys sufficient written description, entitled to priority, old or obvious?

Somebody asked me about Germany. I’m not qualified to advise. But here is a thought to play with, nevertheless. Take the claim, construe it (purposively, if you will) assess validity, assess if there is “direct” infringement. You are nearly done.

Just one more thing, equivalence. Is it “fair” to go outside the claim scope, to nail the infringer? Would it do un”reasonable” damage to “legal certainty” so to nail the infringer? If not, nail him.

But what if he has a Gillette Defence, that his act, whether or not it touches validity of the claim as you have construed it, is nevertheless no more than an obvious variant of the prior art. In Germany, it works. They call it their “Formstein” defence.

HILTI by the way was the case in which a Swiss patentee litigated its patent all over EPC-land. It lost in every jurisdiction bar one. But the reasons were different in each jurisdiction. Which was the one jurisdiction in which it prevailed. Go on, you can probably guess: their home jurisdiction CH.

There is a lot wrong with Europe. We should harmonise. I suppose that’s what the SC in this case has in mind. but was the sacrifice worth it?

BTW, does any reader remember the Chef America case about the bread-making oven. The claim recited heating the dough “to” 400°F when they meant baking it “at” 400°F, that is, an oven temperature of 400°F. How to construe that claim then, to be “fair” to its owner. With purposive construction, no problem. But how does one apply a “Doctrine of Equivalents” to such a claim element? I for one lament the sacrifice of purposive construction on the international altar of the appalling DoE.

It needs to be remembered that one purpose of Supreme Court decisions in all jurisdictions is for basic principles of case law to be invented or substantially changed, and then the lower courts and patent offices need to deal with the fallout on individual future cases. The take home message here is that it is time to reconsider how we are going to deal with equivalents.

As the previous comments have pointed out the present decision will cause issues in validity, and the next 10 years will be a sort of experiment as to how the patent system deals with that. Perhaps validity does need to get stricter in some way, and if that leads to narrower (literal) claim scope on granted patents that might benefit the system in the long run.

This means that the scope of protection for infringement goes beyond the meaning of the claim, but the test for novelty uses only the meaning of the claim without the extra scope provided for infringement. So a granted patent covers more than what it had to overcome in order to be granted.

It’s not the judgement’s fault – the problem is with paragraph 2 of the Protocol to Art 69 which sets up this situation. The judge has simply applied what it says rather than trying to come up with a way to ignore it (as in Kirin Amgen).

I would argue that “a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties” (from paragraph 1 of the Protocol) can only be achieved by NOT having a doctrine of equivalents, as having a different scope of protection for infringement than for interpretation of novelty is not fair. But that makes the “due account” to be taken of equivalents from paragraph 2 of the Protocol be “no account” of equivalents! That interpretation is clearly unreasonable so we must take some account of equivalents when considering infringement and must therefore allow patents to cover more than what the claims state.

It’s a sad place to be but that’s the law our country has signed up to with EPC 2000.

The Protocol only relates to the scope of protection conferred by the claims, and it does not apply to the issue of validity. The law therefore accepts that a patent claim may encompass what has gone before. It is valid, but infringed.

Had the Lilly case been an example of such a situation (i.e. the prior art disclosed the potassium salt) the judges may have been more aware of the implications of their poor judgement, and may have tread more wearily. In the present case, a claim literally covering the potassium salt (i.e. the claim used the word ‘potassium’ in big bold letters with flashing lights and dancing nubile naked dancers pointing at it) would have been valid on the grounds of novelty and inventive step and sufficiency, but such a claim would have been rejected for added matter.

When watching sections of the Supreme Court hearing, I got the impression that most of the judges had no grasp of the issues or understanding of patent law. A couple of judges, including Neuberger, fared better, but still they showed a dangerous ignorance in many of their questions.

Re Snackfood’s comment: Brexit doesn’t come into it. You sound like one of the Supreme Court judges.

I am, myself, looking forward to some more original insight from the Beefburger. Copy and Paste, M’Lud? Can you advise us to follow the US attorney strategy in future? “Draft narrow, claim broad”? Is ‘Observer’ correct that the judgement should remain a one-off? Or would my Learned Friend advise that a decision of the Supreme Court is no such thing? Pray tell!

I am going to go against the grain of the earlier comments and say that this decision seems to make sense. There has long been a disconnect between Article 69 and UK law. This decision seems to address it, without going through the intellectual hooplah of Kirin-Amgen. While Kirin-Amgen is superficially beautifully simple as Lord Neuberger says here, it does not answer the question of equivalents which fall outside any reasonable interpretation of the claim.

As for “file wrapper estoppel” (note, it isn’t even called that) the judgement is clear: it can only be useful when it is useful.

We expect a lot more to be said about this decision in the coming days. We wrote about it yesterday and not so many people have read the decision yet.

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