The IPKat EPO Boards of Appeal Year in Review 2023

PatKat reviewing the year

It is time once more for the IPKat patent year in review! Pour yourself a glass of mulled wine, curl up with your favourite feline and catch-up on your EPO case law. 

G2/21 and the mysteries of plausibility

The topic that this Kat has spent the most electronic ink on this year is undoubtedly G 2/21. There are many misconceptions and confusions with regards to G 2/21, not least its relevance to the slippery concept of plausibility. Another source of confusion is the divergent approaches of the UK courts and the EPO with respect to the test for the evidence standard in sufficiency and inventive step analysis. Readers looking for some clarity on G 2/21 may wish to skip straight to the recent referring Board's interpretation of G 2/21 in T 0116/18.

• Plausibility demystified - a review of EPO case law before G 2/21
• G 2/21: Is the technical effect embodied by the invention as originally disclosed?
• To encompass and embody: Applying the abstract principles of G2/21
• Applying G 2/21: Preliminary opinion from the referring Board of Appeal on post-filed evidence appeal (T 0116/18)
• UK divergence from the EPO on plausibility (Sandoz v BMS), Part 1: Is the "plausibility" test the same for both sufficiency and inventive step?
• UK divergence from the EPO on plausibility (Sandoz v BMS), Part 2: Interpretation of G 2/21
• Interpretation of G 2/21: Inventive step may be supported solely by post-published data (T 0116/18)
• G 2/21 does not permit armchair inventing (T 0258/21)
• Clarity on the interpretation of G2/21 from the referring Board (T 0116/18)
• Crystallising the interpretation of G 2/21 (T 1989/19)

Plausibility in other technical fields

A common misconception is that G 2/21 is only relevant to the biotech field. However, as demonstrated by a number of Board of Appeal decisions, G 2/21 and the general principles of plausibility/credibility may be applied to any technical field reliant on experimental data. 

It is also hard not to wonder about the EPO's current preference for the term "credibility" in place of plausibility. This Kat suspects that the shift to "credibility" is partly an attempt by the EPO to distance itself from the UK courts and their approach to plausibility as almost a legal concept in and of itself. Additionally, it is possible that the EPO wishes to connect the case law on plausibility with that on computer implemented inventions. In the field of computer implemented inventions, the term "credibility" has long been used as the test for whether an invention has any technical effect (Case Law of the Boards of Appeal, I-D-9.2.8). Food for thought. 

• Chocolate teapots and nuclear bombs: Whole range sufficiency of mechanical inventions (T 0149/21)
• The relevance of G 2/21 to machine learning inventions (T 2803/18)
• Reliance on a silent technical effect: Application of G 2/21 to semiconductors (T 2465/19)

Is ViCo a settled matter?

After a flurry of decisions at the start of the year, the Boards of Appeal have gone rather silent on the topic of ViCo oral proceedings. Anecdotally, it seems that Boards of Appeal are now generally happy to grant a party's request for in-person proceedings in view of the reasoning in G 1/21 that in-person proceedings remain the gold standard. This approach contrasts with the Board of Appeal decision in T 1158/20 which controversially found that G 1/21 could be dynamically interpreted (or to put it less favourably, ignored) in view of the significant improvements in ViCo technology. Interestingly, no other Board of Appeal has yet cited T 1158/20. It thus appears that the majority of Boards of Appeal are prepared to take a pragmatic approach with regards to the mandatory use of ViCo. 

• Pandemic measures cease but ViCo Boards of Appeal oral proceedings continue
• Board of Appeal finds ViCo is now equivalent to in-person proceedings, and that G 1/21 "gold-standard" no longer applies (T 1158/20)
• ViCo oral proceedings: True gold or fool's gold? (T 0758/20)
• BREAKING: In-person proceedings are still the "Gold Standard" - Boards of Appeal start to diverge on ViCo (T 2432/19)
• Keeping a digital poker face: Assessing witness credibility in the ViCo age (T 423/22)
• Boards of Appeal confirm lack of legal basis for mandatory ViCo proceedings absent a state of general emergency (T 0149/21)

A referral to the Enlarged Board on prior use (G 1/23)

The round up last year ended with this Kat's less than favourable review of the EPO's Christmas video, which seemed to entirely misunderstand some of the basics of European patent law, particularly the risks of prior use. The topic of prior use has been elevated to the status of a referral to the Enlarged Board of Appeal (G1/23). This is one to watch for 2024. 

• The free evaluation of evidence of prior use (T 0042/19)
• New EBA referral: When is prior use of a product excluded from the prior art for lack of enablement?

Time for PatKat to have
a well-earned snooze

The description amendment debate continues

Not since "Gantry Gate" has a topic on IPKat received as many reader comments as that of description amendments. We are now poised on the brink of a referral on description amendments, courtesy of Roche (T 56/21). Will this be G1/24?

The factious debate on description amendments also took place this year in the context of the EPO's continued hard-line on claim construction, particularly on the issue of whether or not the description should be taken into account for the purposes of construing the claims. The year began, for example, with a second catastrophic comma case (T 1473/19). In this case, the loss of a single comma from the claims was yet again found to add matter to a case, despite this amendment being entirely out of step with the disclosure of the invention in the description. It therefore appears that the EPO is currently trying to have its cake and eat it on claim construction and description amendments. The EPO is simultaneously requiring applicants to bring the description in line with the claims to prevent any confusion over claim interpretation, whilst also denying recourse to the description for the purposes of claim construction. 

• Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description
• When is it necessary to amend the description of a patent post-grant (T2391/18)
• Confidentiality restrictions around clinical trials and prior public use (T 0670/20)
• The risk of pre-grant description amendments (T 0450/20)
• Board of Appeal poised on brink of a referral on description amendments (T 56/21)
• Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat))
• Referral on description amendments moves one step closer (T 56/21)
• EPO tries to have its cake and eat it on claim interpretation (T 0169/20)
• Construing the claims to include technical effects mentioned in the description (T 1924/20)

The gold standard remains untarnished

The EPO has a famously strict approach to basis. Indeed, the risk of added matter after grant is one of the reasons the debate on description amendments is so heated. However, the flip side to the strict EPO added matter test is that the same approach is applied to the test for novelty. The gold-standard requirement for a direct and unambiguous disclosure is thus used in both added matter and novelty analysis. In recent years this has led to the welcome demise of some of the "extra criteria" for the novelty of certain types of invention, as confirmed by a number of Board of Appeal decisions this year on subranges, undisclosed disclaimers and selections from lists. 

• Gold Standard test for novelty reigns supreme, even for subranges (T 1688/20)
• Make no bones about it: The "credibility test" has no place in the novelty assessment of second medical use claims (T 0558/20)
• Defining what the invention is not can be as important as defining what the invention is (T 0273/22, Chimeric antibodies/REGENERON)
• Unambiguous disclosure without patent profanity (T 2171/21)

Artificial intelligence and the rise of LLMs

The biggest technological event this year is the rise of large language models (LLM) such as ChatGPT. PatKat is reliably informed by AI expert Mr PatKat, that LLMs represent a true paradigm shift in the ability of AI. At the very least, LLMs have substantially lessened the burden of sourcing cat-themed patent blog illustrations...

The astounding abilities of LLMs also serve to shine a light on the absurdity of the DABUS case. This week, the UK supreme court finally rejected the appeal by Dr Thaler to have DABUS named as an inventor on a patent application. This Kat has to admit that the whole DABUS saga fills her with a certain sense of tedium (IPKat). The case did not address either of the more interesting questions of: a) whether the AI could be said to have actually invented anything, and b) how ownership of AI generated technologies should be determined.  

• Bad cases make bad law: Has DABUS "the AI inventor" actually invented anything?
• Use of large language models in the patent industry: A risk to patent quality?

Sequence listings shenanigans

The controversy on the implementation of the new standard for sequence listings was one of those topics likely of interest to only a subset of readers. However, the eventual outcome showed that, on some issues, the EPO is prepared to listen to user concerns. For those interested, the official communication removing the excess page fees for a ST.25 sequence listing added to the pages of a divisional has now been issued (OJ EPO 2023, A98). 

• Looking beyond ST.26: Is it time for patent offices to enter the bioinformatic age?
• EPO maintains ST.26 sequence listing requirement for divisionals but compromises on excess page fees

US versus EPO on functional inventions

The biggest patent event across the pond this year was the US Supreme Court decision in Amgen v Sanofi. The US approach to enablement confirmed in Amgen v Sanofi is in stark contrast to the approach taken by the EPO. As the Boards of Appeal continued to demonstrate this year, unlike the US, the EPO is generally comfortable with broad functional claiming. 

• Broad functional claiming at the EPO (T 0835/21)
• When generating antibodies for a target is more than routine (T 0435/20)
• US Supreme Court decision in Amgen v Sanofi: The European Perspective
• Benefits and pitfalls of functional patent claims (and why the UK is out of step with the EPO on claim construction): Astella v Teva [2023] EWHC 2571 (Pat)

Final thoughts for 2023

It just remains for PatKat to thank all her readers this year, and wish everyone a joyful festive season!

Toasting in the New Year

IPKat of Christmas past:

• The IPKat EPO Boards of Appeal Tear in Review 2022
• The IPKat EPO Boards of Appeal (BA) Year in Review 2021
• The IPKat EPO Enlarged Board of Appeal (EBA) Year in Review 2021
• A Question of Priorities: 2019 Boards of Appeal Year in Review
• The Year of the Pepper: 2019 Enlarged Board of Appeal Year in Review

Image credit: DALLE-3