The number of inventive step attacks in opposition procedures at the European Patent Office may be constrained in the future due to a recent change in the EPO Guidelines. According to David Brophy, partner at FRKelly, the change will improve efficiency, although the restrictions may also open up a new avenue for criticising decisions on appeal. Kluwer IP Law asked Brophy what has changed.
‘An opponent seeking to revoke a patent will naturally wish to have multiple attacks, since only one needs to succeed. The Guidelines have been changed to make it harder in some cases to launch multiple attacks based on lack of inventive step.
The first step in the “problem and solution” approach favoured by the EPO in assessing inventive step, is to identify the closest prior art. The phrase itself, “the closest prior art”, would seem to imply that if document A is the closest prior art, then document B cannot also be “closest”, but this is not necessarily true. The EPO Guidelines for Examination (G-VII, 5.1) have long recognised that “In some cases there are several equally valid starting points for the assessment of inventive step… If a patent is to be granted, it may be necessary to apply the problem-solution approach to each of these starting points in turn.” The passage furthermore said “In such a situation, there is no need to discuss which document is ‘closest’ to the invention; the only relevant question is whether the document used is a feasible starting point for assessing inventive step.”
In practice, because the latter part of this instruction appears to say “don’t worry about whether the starting point really is ‘closest’ or not”, opposition divisions have often given little weight to arguments that a document was not in fact the closest prior art. The error in this approach (in my view) was that it ignored the opening sentence which implies that to qualify for consideration, the starting points must be “equally valid” and that this will only apply “in some cases”. Efforts by a patentee to prevent a succession of attacks using different starting points have often been dismissed because if an attack based on a new starting document appeared plausible, it was assumed that the starting document must implicitly have been a candidate for the closest prior art, which appears to me to be a back-to-front approach to the question.
The November 2018 version of the Guidelines have added an important qualifier . While maintaining the same acknowledgment that there may be several equally valid starting points and that in such cases inventive step must be assessed in turn from each such document, and also that among those documents there is no need to determine which is the absolute “closest”, the Guidelines now add: “However, applying the problem-solution approach from different starting points, e.g. from different prior-art documents, is only required if it has been convincingly shown that these documents are equally valid springboards. In particular in opposition proceedings the structure of the problem-solution approach is not that of a forum where the opponent can freely develop as many inventive step attacks as he wishes in the hope that one of said attacks has the chance of succeeding (T 320/15, Reasons 1.1.2).“’
Why do you think this change was introduced?
‘Changes to the Guidelines for Examination are typically driven by two factors: either the case law has developed in such a way that the change is unarguably required (e.g. due to a decision from the Enlarged Board, or a decision has become so widely cited that it expresses a generally accepted principle, or almost all the Boards are deciding the same issue identically), or the EPO management wants to implement a change in practice for its own reasons. Decision T320/15 cited in the new Guidelines as justifying the change is not a widely cited or landmark decision in any sense, and therefore we can assume that the change was made instead for internal reasons, and to encourage a change in how oppositions are handled. The reason I say it was not a landmark decision is that has T 320/15 has not as yet been cited in any other case; in addition every decision of the Boards of Appeal is graded for distribution purposes from “A” (publication in the official journal) down through “B” and “C” (varying degrees of distribution to members of other Boards), to the lowest level “D” (no distribution), and T 230/15 was graded “D”.
From this I would infer that those in charge of managing oppositions in the EPO have a feeling that opponents are presenting “too many” attacks, which increases the complexity and time taken to hear and decide on opposition cases. By discouraging multiple attacks from different starting points, those in charge may hope to encourage a more streamlined and focussed approach to inventive step. It may not be a coincidence that this change follows closely upon the introduction at the start of 2018 of dedicated opposition directorates which were created to improve the efficiency and coherence of opposition proceedings.’
In a recent article you quoted Groucho Marx’s statement “Those are my principles, and if you don’t like them… well, I have others.” to describe the situation before November 2018. Do you think the new guidelines are an improvement?
‘Personally, I do think the change is for the better. However, I recognise that my view may be influenced by the fact that in my own practice I more frequently represent patentees than opponents! Objectively, however, I think it is beneficial overall to ensure that if the problem-and-solution approach is being used, it is applied rigorously and fairly, and that the initial step of identifying the closest prior art is not glossed over. It is still very much open to an opponent to argue that there are a number of equally valid starting points, provided only that they can justify this position to the opposition division and not just have it assumed to be true.’
Does this increase the efficiency of the opposition procedure?
‘It will certainly improve efficiency in some oppositions, where inventive step is the main issue and where the number of documents is large. Ensuring that attention is focussed on a small number of attacks benefits the parties in terms of preparation for oral proceedings and the associated costs, and should also ensure that oral proceedings can be run more efficiently to arrive at a good decision with fewer surprises.’
Do you see disadvantages?
‘Well, apart from the obvious disadvantage that an opponent may have to make harder choices when deciding which attacks to argue, there is also a likelihood that it will open up a new avenue for criticising decisions on appeal. Every time that an opposition division has to decide a preliminary point like this, which is basically an admissibility point applied to an argument, it opens up the final decision up to criticism on appeal from one side or the other – after all they have to disappoint one or another party whichever way they decide. There is also a delicate balancing act to be carried out between curtailing the introduction of new attacks and respecting the right to be heard that is enshrined in Art. 113 EPC. I’m sure that if you ask me again after I have been on the wrong end of the new Guidelines I’ll think of a few more disadvantages.’
How should parties change their approach to inventive step to respond to the new Guidelines?
‘Decision T 320/15 emphasises a point found elsewhere in the Guidelines, which is that the first step in the problem-and-solution approach is to actually identify the closest prior art. Opponents should be careful to explicitly justify on every occasion why their chosen starting point is the closest prior art, and if a second starting point is introduced, great care needs to be taken in developing an argument that it represents an “equally valid” starting point. Conversely, a patentee in opposition should be ready to argue why their preferred starting document is the (sole) closest prior art, and to have arguments to hand as to why each other document that might be a plausible starting point is not “equally valid” according to the criteria found in the Guidelines and Case Law.’
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In the Guidelines the essential passage of T 320/15 is quoted in extenso: “In particular in opposition proceedings the structure of the problem-solution approach is not that of a forum where the opponent can freely develop as many inventive step attacks as he wishes in the hope that one of said attacks has the chance of succeeding “’.
The message, albeit originally in French, is pretty clear. It is for the opponent to decide which attack he wants to start, and he is not free to try various ones in the hope that one could be successful. It is probably due to the fact that the decision was in French that it did not receive the echo it deserved.
T 967/97 is also interesting. In this decision the Board held that if there are several possible solutions open to the skilled person which might suggest the invention, the ratio of the problem-solution approach requires that the invention be examined in relation to all these solutions before a judgment confirming the inventive step is made.
On the other hand, T 967/97 has also held that, if inventive step is denied, there is no need for a special statement of reasons for selecting a given document as closest prior art, even if the skilled person has several practicable documents at hand; showing that one way is enough to decide on lack of inventive step is then sufficient (point 3.2 of the grounds for the decision).
T 967/97 does however not say that various attacks can be launched in order to find one which is “lethal”. One is enough, even if a plurality of attacks is possible, no more no less. T 320/15 does not depart from this view.
To be honest, the number of cases in which the starting points are “equally valid” is rather scarce. One example is T 591/04, in which both combinations D1+D2 and D2+D1 lead to the subject-matter of the independent claim to lack inventive step. Another one is T 75/12 where the BA admitted that 3 documents could serve as closest prior art, but none of the inventive step attacks were successful. In T 2360/12 the BA accepted an alternate closest prior art, but this was to no avail, as the subject-matter was considered inventive.
There are on the other hand lots of decisions in which the BA makes clear that there is only one “closest” prior art, and this is not necessarily the one chosen either by the division, the opponent or the proprietor. Just a few examples: T 2145/11 in which the BA disagreed with the closest prior art chosen by the opposition division. In T 41/14, the BA disagreed with the closest prior art chosen by the examining division. In T 2278/15, the BA disagreed with the closest prior art chosen by the proprietor, and kept the one chosen by the opposition division. In T 2145/11, the BA chose a completely different closest prior art as the opposition division which considered that two different documents could be chosen as being the closest. The BA concluded to the presence of inventive step.
All those decisions confirm clearly that the cases in which there can be a plurality of valid starting points is rather scarce. I would thus not think that opponents are constrained in their possibility to attack inventive on the basis of a plurality of closest prior art. By essence, the problem-solution-approach relies on one document as being the closest prior art, and the thought of being able to launch a plurality of attacks based on a plurality of closest prior art is thus not logical.
I do not think that this amendment to the Guidelines has anything to do with the creation of directorates specialised in opposition.
I would rather question the creation of those specialised directorates as it introduces two classes of examiners, those dealing with oppositions and those not dealing with oppositions. Only the former will have a chance to be appointed at the BA. For the latter group an important motivation factor is disappearing. If an examiner is confronted with oppositions on patents he granted himself the quantum leap in knowledge is not to be dismissed. Surely there are areas in which there are barely any oppositions, but I consider that being trained in opposition is part of the necessary culture of an examiner.
Could you see representatives only being trained in examination and not in opposition? Why should it be different for examiners sitting on the other side of the table? Everything which appears efficient at a glance might have deleterious effects in the long term. But by then the managers having taken this decision will not any longer be in activity. But the quality of the work done since 2010 has improved, and in the future the efficiency will go along the same line…..
Could 3rd parties file other attacks, which the division may/must consider?
Could the opponents collaborate to raise separate arguments but take a position on each other’s opposition, once the arguments are in the proceedings? Or will the EPO require separate proceedings for separate oppositions rather than combining them?
What becomes of the division’s ability to consider arguments of its own accord, if they see a possible argument which could succeed.
Dear Cynic,
What you suggest is not as simple as you think. There are procedural rules in opposition which have to be respected.
Observations of third parties are possible in opposition, but they should not be anonymous. An opposition division has no obligation to consider them. If they are prima facie relevant, an opposition division may take them into consideration, but it has a large discretion in doing so. The opposition division is under no obligation to give any reason if observations of third parties are disregarded.
In case of a plurality of oppositions the legal and factual frameworks of both oppositions (cf. R 76(2,c)) are added, but not combined. If the oppositions are admissible, the grounds of opposition of opponent 1 can be used by opponent 2, and vice versa, but within the legal and factual framework of each opposition. There is thus no combination of oppositions.
Any combination of documents brought forward by each opponent, e.g. D1 of O 1 + E3 of O2, is prima facie late, and has first to be admitted into the procedure. This will only be the case if the late combination of documents is prima facie highly relevant and could lead to a possible different outcome of the opposition procedure. Here an opposition cannot ignore such late objections, but has to give reasons why they are admitted or not in the procedure. If the division fails to do so, then it will commit a substantial procedural violation and its decision will be set aside by a BA, and the appeal fee will be reimbursed.
According to Art 114(2) an opposition division is not bound by the requests of the parties. However, this does not mean that the division will do the job of the opponents or of the proprietor. In opposition the division has to be neutral, and it is extremely rare that the division will raise an objection on its own volition. For the same token, it will not suggest to the proprietor requests which may overcome the objections raised by the opponents.
To sum it up, what you suggest is not at all likely to happen. But this should not come as a surprised to any professional representative.
Dear Attentive Observer,
IIn my view, your understanding that a combination of e.g. D1 of O 1 + E3 of D2 could be late is in contradiction to Rule 113 EPC according to which:
“new facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed”.
This Rule seems to imply that (at least) all arguments presented on or before the final date for making written submissions must be considered. Otherwise, the right to be heard would be violated.
Dear European Patent Attorney,
I beg to disagree. Not all the arguments presented before the final date for making written submissions must be considered. The right to be heard is not violated, if the opponent submitting the new combination of documents has been heard about its admissibility.
If the subject of the proceedings has changed, and this is the case considered in R 113, i.e. the independent claim has been amended by, for instance limiting it with features from the description, then the likelihood for the new combination of documents to be admitted, and the corresponding arguments as well, is much higher.
If the new combination of documents is cited against a combination of claims as granted, then, the likelihood of its admission is much lower as the subject of the proceedings has not changed. Thenn, the new combination has to be shown as highly relevant and susceptible to lead to a different outcome of the opposition procedure.
The change of subject of the procedure is determined by the proprietor and not by what the opponent who decides to file in form of a new combination of documents. If the claims have not been amended, then the filing of the new combination of documents is late, as this combination was not part of the legal and factual framework of the oppositions which consists as explained by the addition of the legal framework of the oppositions. What is important here is that the combination D1+ E3 was not present at the end of the opposition period.
Anything submitted after the expiry of the opposition period, be it by an opponent or by an association of documents from two or more opponents, is prima facie late and the opposition division has the discretion to admit or not. I would advise you to have a careful look at R 76(2,c) and Art 114(2).
It the OD has exercised its discretion correctly, a BA will not reverse the decision on admissibility taken by the OD, even if the BA would have, in the circumstances, come to a different conclusion on the admissibility. There is abundant case law on this.
Dear European Patent Attorney,
I beg to disagree. Not all the arguments presented before the final date for making written submissions must be considered. The right to be heard is not violated, if the opponent submitting the new combination of documents has been heard about its admissibility.
If the subject of the proceedings has changed, and this is the case considered in R 113, i.e. the independent claim has been amended by, for instance limiting it with features from the description, then the likelihood for the new combination of documents to be admitted, and the corresponding arguments as well, is much higher.
If the new combination of documents is cited against a combination of claims as granted, then, the likelihood of its admission is much lower as the subject of the proceedings has not changed. Thenn, the new combination has to be shown as highly relevant and susceptible to lead to a different outcome of the opposition procedure.
The change of subject of the procedure is determined by the proprietor and not by what the opponent who decides to file in form of a new combination of documents. If the claims have not been amended, then the filing of the new combination of documents is late, as this combination was not part of the legal and factual framework of the oppositions which consists as explained by the addition of the legal framework of the oppositions. What is important here is that the combination D1+ E3 was not present at the end of the opposition period.
Anything submitted after the expiry of the opposition period, be it by an opponent or by an association of documents from two or more opponents, is prima facie late and the opposition division has the discretion to admit or not. I would advise you to have a careful look at R 76(2,c) and Art 114(2).
It the OD has exercised its discretion correctly, a BA will not reverse the decision on admissibility taken by the OD, even if the BA would have, in the circumstances, come to a different conclusion on the admissibility. There is abundant case law on this.