It has been a busy start of the year for the EPO’s Enlarged Board of Appeal (EBA): four referrals have already been made in 2019.

An EPO Board of Appeal can refer questions to the EBA when different Boards of Appeal have come to different decisions on the same question, or when a point of law “of fundamental importance” arises. Questions can also be referred to the EBA by the President of the EPO.

The first referral relates to the patentability of computer simulated methods. In Europe, computer programs are excluded from patentability in so far as a claim relates to the excluded subject matter “as such” (Article 52 EPC). However, it is established case law that computer implemented inventions can be patentable if the claim includes a technical feature. The assessment of inventive step is based only on the technical features of the claim, and whether they have a technical effect.

Existing case law had found patentability in simulated methods on the basis of the improved speed of the method provided by computer implementation (T1227/05). The Board of Appeal (BoA) which made this referral, however, took the view that “a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity”.

The following questions were therefore referred to the EBA:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?

2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

With computer modelling and simulation becoming ever more common, across a wide range of technologies, it will be interesting to see how the EBA decides this one. The questions referred extend beyond the subject matter of the case in question (modelling pedestrian movement), and cover computer-implemented simulations generally. Whilst we are hopeful that the EBA will provide further confirmation and clarification of the patentability of simulations, there is a chance that the Board will decide that the specifics of this case are what matter and either refuse to admit the appeal or make a fairly narrow pronouncement in response.

We’ll keep you posted on progress, but in the meantime, for detailed advice on the protection of software related inventions, please contact our tech team, or your usual GB contact.

A second referral raises questions regarding the right to oral proceedings if an appeal is prima facie inadmissible, how this applies in the case of a third party’s appeal against a decision to grant a patent by the Examining Division, and the location of oral proceedings in appeal proceedings.

The third question in this referral is particularly interesting and relates to the recent relocation of the Boards of Appeal. In 2017, following a decision by the President of the EPO, the Boards of Appeal moved to Haar, a municipality outside Munich’s city centre. The third question asks the Enlarged Board of Appeal to consider whether the relocation of the Boards of Appeal from Munich to Haar was compliant with the European Patent Convention. Specifically Art. 6(2) of the EPC states that the EPO will be headquartered in Munich, with a branch in the Hague.

The questions in full (translated from German) are:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to question 1 is yes, is an appeal against the decision granting a patent prima facie inadmissible in this sense, which appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that under the EPC there is no alternative remedy against a decision of the Examining Division not to take into account the third party’s objections concerning the alleged violation of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant has complained that this location is not in conformity with the EPC and has requested that the oral proceedings be moved to Munich?

The relocation to Haar has never been popular with certain groups within the EPO and this could provide an opportunity for a statement to be made. There is some precedent for a location to be somewhat indistinct – the Hague branch of the EPO is actually in Rijswijk. Of course, the EBA could opt to avoid answering the question (either by saying yes to both questions 1 and 2 or deciding that it is not in its remit to do so), in which case, the whole thing will be neither Haar nor there.

In a further development in a long-running saga, the President of the EPO has made a referral to the EBA for an opinion on the patentability of plants obtained by essentially biological processes.

The articles of the EPC exclude essentially biological processes for the production of plants or animals from patentability (Article 53(b)). The EBA previously decided (in G 2/12 and G 2/13) that this exclusion should not prevent claims directed to plants or plant products produced by essentially biological processes.

The question was then considered by the European Commission (EC) in view of the Biotech Directive, and the EC came to the (conflicting) conclusion that it was the intention of the Biotech Directive to exclude products produced by essentially biological processes from patentability, not just the processes themselves. This led to an amendment to the rules of the EPC, stating that European patents shall not be granted in respect of plants exclusively obtained by means of an essentially biological process (Rule 28(2)).

However, a recent decision by a Board of Appeal (T 1063/18) decided that the recently amended Rule is in conflict with Art. 53(b) EPC as interpreted by the EBA. Referring to the principle that the articles of the EPC shall prevail over the rules (Article 164(2) EPC), this Board of Appeal set aside a decision by the Examining Division that a claim to a pepper plant was not patentable.

The President of the EPO has referred the following questions to the Enlarged Board of Appeal to try to resolve the ongoing uncertainty:

1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?

2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

It is hoped that the answers to these questions will finally provide clarity on the patentability of plants produced by biological processes. In addition, it will be interesting to read the EBA’s comments on the relative authority of the articles and the rules of the EPC, the views of the EBA and the views of the European Commission.

For detailed advice on protecting plants, please contact our life sciences team, especially Meeta Mistry.

The fourth referral relates to the issue of double patenting before the EPO.

The European Patent Convention does not contain any explicit provisions relating to double patenting, but European case law has nonetheless established a principle of prohibition on double patenting based on the notion that an applicant has “no legitimate interest” in a second patent for “the same” subject-matter if he already possesses one granted patent for that subject-matter.

The issue of double patenting most commonly arises in the case of a parent and a divisional application, or in the case of internal priority.

The following questions have now been referred to the EBA:

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent granted to the same applicant which does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1. If the answer to the first question is yes, what are the conditions for such a refusal and are different conditions to be applied where the European patent application under examination was filed

a) on the same date as, or

b) as a European divisional application (Article 76(1) EPC) in respect of, or

c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2. In particular, in the latter case, does an applicant have a legitimate interest in the grant of the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?

It would be great to finally have some clarity on this as it is a key consideration in filing and prosecution strategy. We hope the answers to these questions will provide an authoritative framework for deciding issues of double patenting before the EPO.