The Enlarged Board of Appeal (EBoA) of the European Patent Office (EPO) has ruled last week in referral G3/14 on the question of clarity examination of granted claims which have been amended in EPO opposition and opposition appeal proceedings. The referral asked whether amended claims resulting from a) insertion of features of granted dependent claims into a granted independent claim and b) insertion of complete granted dependent claims into a granted independent claim, are open to clarity examination although lack of clarity is not a ground for opposition, and if so, to what extent such a clarity examination is admissible.

The referral was triggered by the fact that there is a long existing line of case law by EPO Boards of Appeal not allowing clarity examination of amended granted claims unless an alleged lack of clarity of such an amended claim was not already included in the granted claims (the conventional case law) and a more recent new line of diverging case law allowing clarity examination of amended granted claims for several kinds of reasons (the diverging case law). FICPI filed an Amicus Brief as did many others including the President of the EPO, AIPLA, CIPA and epi.

The EBoA’s answers are fully in line with FICPI’s suggestions for the answers to the questions. Although not following each single legal argument presented by FICPI, especially considering a direct applicability of Art. 84 EPC rather than applying a concept of requiring requests to be clear, the EBoA fully followed the ratio of FICPI’s arguments and explicitly confirmed the conventional case law and disapproved the diverging case law (see point 87 of the Reasons). 

The EBoA took the opportunity to answer the questions referred by the referral in a way clarifying the points of law which lie behind them (see point 7. of the Reasons). In doing so, the EBoA defined two basic types of amendments, namely Type A representing amendments of granted claims resulting from inserting features from one granted claim into another granted claim without inserting complete granted dependent claims and/or resulting from deleting features from one granted claim or combinations thereof and Type B representing insertion of complete granted dependent claims into a granted independent claim (see points 2 to 5 of the Reasons).

The EBoA confirmed the conventional case law with the following explicit statements. The EBoA explicitly denied the possibility of clarity examination of Type B amendments (see point 81 of the Reasons). The EBoA explicitly denied the possibility of clarity examination of Type A amendments, if the alleged unclarity was already included in the granted claims (see points 82, 83 of the Reasons). The EBoA allowed isolated clarity examination of Type A amendments, if the alleged unclarity was not already included in the granted claims but introduced by the amendment and only to this extent (see point 84 of the Reasons).

Jürgen Schmidtchen

 

On December 15, 2014, the PTO issued its 2014 Interim Guidance on Patent Subject Matter Eligibility (“the December Guidance”), which supersedes the March 4, 2014 "Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products" ("the March Guidance").

A Two Step Test

The December Guidance describes a two-step analysis of patent eligibility under § 101.  Step 1 asks the question, “[i]s the claim to a process, machine, manufacture or composition of matter?”  Step 2 involves two sub-steps:  Step 2A asks “[i]s the claim directed to a law of nature, a natural phenomenon, or an abstract idea (judicially recognized exceptions)?”  The December Guidance indicates that “[s]uch a claim requires closer scrutiny for eligibility because of the risk that it will “tie up” the excepted subject matter and pre-empt others from using the law of nature, natural phenomenon or abstract idea.”  Laws of nature and natural phenomena include “naturally occurring principles/substances and substances that do not have markedly different characteristics compared to what occurs in nature.”  

For a detailed review of the new guidelines, please see Sharon Crane's summary here. The new Guidance, some Examples relating to natural products, and a Quick Reference Sheet have also been provided by Sharon. 

Sharon Crane

Mr. Russell Slifer, one of the speakers from the USPTO at the Cape Town Congress, is now the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.  An updated bio for Mr. Slifer can be found at this link  .  

As Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, Russell Slifer provides strategic leadership and oversight to one of the largest intellectual property offices in the world.

Most recently, Mr. Slifer served as the Director of the Rocky Mountain United States Patent and Trademark Office, where he led efforts to foster business and technological innovation. His team promoted economic development and intellectual property knowledge throughout the Rocky Mountain region.  He encouraged increase cooperation between USPTO stakeholders, the patent and trademark applicants, the intellectual property bar, businesses, and the education community in the region.  In addition, Mr. Slifer advised the USPTO on a variety of policy matters.

We look forward to welcoming Mr. Slifer to Cape Town.

Registered delegates for the Cape Town Congress already exceed 360 which is more than the attendance at the two previous FICPI World Congresses. There are only a few rooms left in the official congress hotels. Plans for the social events and excursions are being finalized by the conference organisers.

It's not too late to attend. You can get more information, and register on-line, at www.ficpi.org.

 

On March 25, 2015, the Enlarged Board of Appeal (EBA) of the EPO issued the long-awaited decisions in cases G2/12 (i.e. the so-called Tomato case) and G2/13 (i.e. the so-called Broccoli case). 

The issues under discussion were essentially the patentability of plants or plant material other than a plant variety, particularly if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process.

In G2/12 a Board of Appeal of the EPO referred three questions to the EBA in the wake of an earlier decision of the EBA itself (i.e. G 1/08), which was actually issued in relation to the same proceedings against the same patent. More in details, in G1/08 the EBA defined the scope of exclusion from patentability of “essentially biological” processes within the meaning of Art 53(b) EPC; in particular it excluded from patentability essentially biological processes for the production of plants which contain a technical step (even if new and inventive), if such a process does not modify or introduce a trait into the genome of the plant itself.

The additional questions referred to the EBA in G2/12 related to patentability of plants themselves, if these plants are only producible with an essentially biological process:

1. Can the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit?
    
2. In particular, is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application?
    
3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC?

The referring Board of Appeal discussed in detail the arguments for and against patentability of such subject matter and came to the conclusion that:

“…the Board is not fully convinced by the arguments reviewed against considering the process exclusion of Art 53(b) EPC in the examination of claims for plants or plant material.” (see point 65. of T 1242/06)

Hence the involvement of the EBA in order to come to a final conclusion on this issue.

A further referral to the EBA was subsequently made in case G2/13. The referred questions were substantially identical to those of G2/12, but expressly required the EBA to clarify whether a product-by-process claim directed to plants or plant material other than a plant variety would be allowable, if its process features define an essentially biological process for the production of plants.

FICPI filed amicus briefs in both cases and argued that the exclusion from patentability should be interpreted in a restrictive manner. In particular, it argued that a claim or a product-by-process claim directed to plants or plant material other than a plant variety should be allowed even if the only method available at the filing date for the generating the claimed subject-matter is an essentially biological process; FICPI further argued that the fact that the protection conferred by a product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants is irrelevant in the context of the questions referred to the EBA.

The conclusions reached by the EBA in the recently issued decisions are perfectly in line with the arguments made by FICPI. As a matter of fact, the EBA observed that, considering its wording, context, original legislative purpose and legislative history, the process exclusion of Article 53(b) EPC does not extend directly to a product claim or a product-by-process claim directed to plants or plant material such as a fruit, or to plant parts other than a plant variety*.

Consequently, it decided that**:

1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts. 
    
2. (a) The fact that the process features of a product-by-process claim directed to plants or plant material other than a plant variety define an essentially biological process for the production of plants does not render the claim unallowable. 
   
   (b) The fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable. 
    
3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.

_______________________________
*See points VII.6.(3) of the Reasons of both decisions - click here
**See the Order of G2/13, which encompasses that of G2/12 - click here


Roberto Pistolesi