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EPO: new procedural rules may restrict appeals but guidelines are ‘slight recipe change’

With the new examination guidelines and procedure rules coming into force, businesses reveal their views on changes to the ‘hope to succeed’ criteria and the earlier-communicated streamlining of the appeals process

With the annual update to the EPO’s examination rules set to come into force on November 1 and those to the Boards of Appeal procedure rules in January, in-house counsel are starting to consider what the changes mean for them.

Sources say they largely welcome the office’s alterations, such as those to the technical character of artificial-intelligence inventions and examination fee discounts, although they inevitably expressed some concerns.

They are particularly pleased with the removal of an inconsistency between the guidelines and case law on a skilled person’s ‘hope to succeed’ and ‘expectation of some improvement or advantage’ which, they hope, will streamline the inventive step hurdle.

However, one source says that while the guidelines are largely non-contentious, the lack of changes made to the previously-released Boards of Appeal procedure rules is troubling because they could seriously restrict applicant appeal rights in their current form.

The general counsel at an innovator pharmaceuticals company says the EPO changes look positive, but adds that measuring claim parameters – which the EPO has done as part of restructuring said parameters – could lead to wrangles.

“I don’t think claims can ever be read out of the context of the description,” he says. “And difficult-to-measure parameters can make meeting clarity and sufficiency requirements challenging.”

He adds that he agrees, however, with the decision to remove the third step in the assessment of the novelty of selection inventions.

“I have always thought purposive selection belonged with inventive step,” he says.

An advanced preview of the annual update to the Guidelines for Examination was published on October 1, which included tweaks to rules on how clarity, inventive step and novelty are considered.

No changes were made to the Rules of Procedure of the Boards of Appeal document since the preview of it was published in July as part of this update. But more detail was given in the guidelines on discussions on formality and procedural processes, such as deadline calculations after resumption of proceedings.

The EPO’s Guidelines for Examination, which gives practice and procedure instructions for European application and patent examinations in accordance with the European Patent Convention (EPC) and its Implementing Regulations, are updated every year.

Hopes and expectations

Sources say that the removal of the inventive step hurdle contained in the phrase ‘hope to succeed’ was a needed change.

The alteration came about because the case law in T2/83 sets out that it would be obvious for a skilled person to modify the closest prior art in the “expectation of some improvement or advantage”. The current iteration of the guidelines conflated this with the “hope of solving the objective technical problem”.

An article in the Journal of Intellectual Property Law and Practice pointed out in 2017, however, that ‘hope’ and ‘expectation’ have different meanings. A ‘reasonable expectation’ is based on a scientific appraisal of available facts and a ‘hope to succeed’ is merely the expression of a wish.

The associate general counsel at a generics drug company says the removal of the ‘hope to succeed’ standard should bring about some consistency in the case law, while the innovator pharmaceutical assistant general counsel adds that it will be interesting to see how case law develops on the distinction between ‘hope to succeed’ and ‘reasonable expectation of success’.

Frank Landolt, chief IP counsel at Confo Therapeutics in Belgium, says it is good that the EPO has “changed the recipe slightly” with this matter of inventive step to better align the guidelines with case law. “The change like going from black pepper to white pepper, so to speak. It is different, but it is still pepper,” he says.

But he adds that there is a question of whether this alteration will have much of an impact in practice. When applied to a specific case, he says, these kind of discussions on inventive step are often factual and case-specific and can be quite subjective.

“My sense is that the changes may lead practitioners to slightly change the way they present their arguments, to be more aligned with the guidelines,” he says. “But at the end of the day, the specific facts of the case will still have a bigger impact on the outcome than some change in nuances in the wording of the guidelines.

“Examiners will likely still go with their gut feeling of whether there is an invention or not. As a colleague once described it to me: ‘It is a matter of whether or not I smell an invention.’”

Landolt notes, however, that this type of scenario might not play out too often if the changes to the guidelines lead to internal EPO instructions to examiners to change their practices. “That is maybe something to keep an ear to the ground for,” he says.

Procedural rules

A more contentious area might be the new procedural rules for the Boards of Appeal.

In an interview with Managing IP this week, EPO Boards of Appeal president Carl Josefsson suggested that changes to the rules had been made to increase predictability, consistency and efficiency, in line with the board’s objectives.

But the head of IP at a factory tech company says that this drive for efficiency could inadvertently be restricting applicants’ right to appeal against a decision.

In a typical patent opposition procedure currently, it is possible for the opposition division to revoke a patent based on formal grounds such as those contained in Article 123 (2) of the EPC – the extension of subject matter beyond the application as filed.

In such a case, other grounds such as lack of novelty and/or inventive step are not discussed in opposition.

“That absolutely makes sense under the current rules because you would not discuss whether a claim was novel and inventive if the claim was not allowable on formal grounds. That would be pointless,” says the head of IP.

When a decision to revoke based on extension of subject matter is then appealed, the Boards of Appeal could decide that the claim is allowable and will typically refer the case back to the opposition division. Then the other grounds would be discussed and any decision by the opposition division would still be appealable.

“But it appears that the new rules will limit the number of cases referred back,” the head of IP points out.

This means that in the case mentioned above, the appeal board would decide on Article 123 (2) and subsequently discuss novelty and inventive step for the first time. Any decision on those grounds would no longer be open to appeal.

“Although this would speed up the procedure, it seems to be a violation of the right to have at least two instances to hear all the arguments in a case,” the head of IP adds.

He points out that the EPC is already different from most other legal systems in that it only sets out the possibility of one instance of appeal, while others have a lower court, higher court and supreme court, and thus offer two instances of appeal.

“The streamlining of the process that the Boards of Appeal procedure rules seems to want to achieve thus threatens to potentially take away the possibility for appeal on grounds which were not discussed before,” the IP head concludes.

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