Re-Establishment of Rights After More than One Year

In a very interesting new decision availabe here, the 10th senate of the Bundespatentgericht granted re-establishment of the right to pay the filing fees almost 2 years after the expiry of the time limit. The applicant had filed an application containing only claims and the office had informed him that the minimum requirements for the filing date were not met because a description was lacking. The office furhter noted that any fees would be refunded and that a new filing date could be obtained by filing complete documents.

The applicant responded by arguing that the claims would sufficiently describe the invention to qualify as a description. The argument was found convincing by the examiner who decided to keep the application pending. However, the office did not inform the applicant on this decision. The applicant got aware of this decision only after almost two years, when the GPTO notified the applicant that his right was lost due to non-payment of the filing fee.

Following the "Crimpwerkzeug" theory, the senate judges that re-establishment may be requested even after expiry of the one-year-term

"in specific exceptional cases for reasons of ensuring an effectice legal protection and the right to be heard, in particular when the reasons for the failure to comply with the time-limit do not lie in the sphere of the party but are rather to be assigned to the court/office".

When Does a Simulation Step Contribute to the Technical Character of a Method?

Oliver Randl has posted an interesting decision (T 1265/09) relating to an application claiming a method for generating schedules in a call-center. The method basically determines staffing requirements split up in different skill group and "adapts" the settings iteratively as a function of the result of a call-handling simulation.

The EPO Board of Appeal refers to the decosion T 1227/05 in an attempt to define necessary conditions to be met by a simulation step in a method to contribute to the technical character of the method.

The board derives from T 1227/05 that:

The board held that beyond its implementation, a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method and, further, it held that a simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose (Reasons, [3.1]). The claimed methods were held to meet these conditions because, firstly, they concerned an adequately defined class of technical items, and, secondly, the stated purpose, ..., was established in the further steps of the claimed methods, .... thereby functionally limiting the claims to the simulation of a noise-affected circuit (Reasons, [3.1.1-2] of T 1227/05, emphasis added).

 The Board further notes that these conditions are necessary but does not sufficient.

In the case at issue, the conditions were not found to be met

"since, in connection with the call handling simulation referred to in claim 1, the telephone call center and, in particular, its performance, are not further specified in the claim and, further, the claimed method does not define the further steps which actually result in the stated purpose, i.e. the call handling simulation." ([1.13] last par.)

 In other words - even if a call-center network is a technical system the simulation of which could be considered a technical task, the claim should cleraly define its technical features determining its performance and give details on how this is simulated.

At first sight, this appears to be somewhat narrower than the broader (and often-cited) statement in T1227/05:

"To that extent, specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In view of this development it must be assumed that the outlay for implementing a technical product will increasingly shift to the numerical simulation phase, while final implementation of the simulation result in the actual manufacture of the product will entail no or only comparatively little extra innovation effort. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product (in effect the German Federal Court of Justice ruled in the same way in its decision of 13 December 1999, X ZB 11/98 - Logikverifikation; Reasons II.4(h))."

 However, the board appears to put emphasis on the words "specific" and "technical" in the first line of the above quote.

 

Limiting Factor - Transhydrogenase

The decision "Transhydrogenase (X ZR 115/09)" relates to the use of microorganisms for producing a target substance, wherein the metabolic system of the microorganism is modified "wherein productivity of said microorganism for reduced nicotinamide adenine dinu-cleotide phosphate is enhanced" (cited from original claim 1.

It was known that  nicotinamide adenine dinu-cleotide phosphate (NADPH) plays a role in the metabolic system producing the target substance. However, the prior art did not point out that NADPH is (one of) the limiting factor(s).

The BGH ruled that the skilled person "... has an incentive to consider an improvement of that particular factor in the complicated metabolic system only if it is not known or to be expected with a sufficient degree of certainty that this factor is limiting, i.e. not available in a sufficent amount in the known methods" (cited from the headnote).

Implicit Incentives - BGH Installiereinrichtung II

The German Federal Supreme Court (BHG) has recently ruled on the "pointers" or "incentives" known to be needed to find that it is obvious for the skilled person to furhter develop a known solution in the way indicated by that pointer.

Besides of noting that all this depends on the circumstances of the individual case, the court notes that not only explicit promptings are relevant:

Rather, the characteristics ofthe technical field under consideration, in particular relating to the education of the persons skilled in the art, the usual way of developing innovations, technical requirements resulting from the construction or the application of the subject-matter under consideration as well as non-technical requirements may play a role.

The Applicant is Kindly Requested to Dig His Own Grave

The "Guidelines for Examination at the European Patent Office" are just what the name says. They should guide the EPO Officers through the Examination procedure and are not addressed to the applicant.

Art. 56 EPC comprises a legal presumption of inventiveness in its formulation:

"An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art."

Inventiveness is something which has to be disproven and can not be positively proven. Else, the Article would read "An invention shall not be considered as involving an inventive step unless, having regard to the state of the art, it is not obvious to a person skilled in the art. Trying to find a consistent chain of obvious steps to be taken by the skilled person disproving inventiveness is the job if the Examiner. In an attemt to avoid hindsight analysis, the EPO prescribes the problem-and-solution approach for this purpose.

These are the rules of the game: the examiner has to try establishing a logical chain of reasoning using the problem-and-solution approach and the appicant's task in the examination of obviousness is to point to the steps which are illogical or non-obvious in this approach.

It appears that some examiners have gotten this completely wrong. Many (according to my subjectiv impression mainly those from The Hague) use the following text block in their examination reports:

The applicant should indicate the difference of the subject -matter of the new claim vis- a- vis the state of the art and the significance thereof, i.e., which is the underlying technical problern that is solved in an inventive way by those features of the independent claim that form a contribution over the prior art (e.g. D1 ). ln the Ietter of reply, the applicant is requested to apply the problem-solution approach for inventive step as outlined in the Guidelines CIV 11.5, i.e. the applicant is requested to
- determine the closest prior art,
- identify the technical features distinguishing the claimed subject-matter from the closest prior art,
- identify the objective technical problern being solved by the claim, and
- provide a convincing argument as to why the solution to the above objective technical problern that is put torward by the claim would not have been obvious to the skilled person.

 When I read this text block, I always feel that the examiner on the other side has not really understood what the Examination procedure is all about. He actually wants the applicant to execute the tasks of the examining division.

Technical Contribution, not Economical Contribution Counts for Inventor's Remuneration

The German Federal Supreme Court (BGH) has published its decision (Ramipril II - X ZR 35/09) in a dispute on Inventor's remuneration.

In the case at issue, neither the original invention report nor claim 1 as filed or as granted relating to a substance made mention of a particular ingredient with the name Ramipril. Nontheless, the feature that the substance contains Ramipril has somehow made its way to a dependent claim 8. However, this dependent claim 8 turned out to cover the economically most important embodiment of the invention.

Both the employer and the Upper District Court considered the fact that the element which turned out to have the highest economical importance as being relevant for the calculation of inventor's remuneration.

Actually, the guidelines for calculating the inventor's remuneration as well as the established case-law require calculating the value of the invention as well as the "share factor" (Anteilsfaktor) the inventor has contributed as compared to the contribution of the employer and of his co-inventors.

The BGH has now found that this "share factor" is to be calculated based on the technical contribution the employee-inventor has made in view of the prior art. The economical importance of this contribution as compared to other contributions of the invention is of secondaryrelevant only to the extend where  the economical success is considerded as an indicator for the role of the feature in the development process of the claimed subject-matter. However, according to the judgement of the BGH, the generally no causal link between the economical exploitation of the invention and individial features of a claim because using the the patented invention necessarily means at least all of the features of the independent claim are used in combination.

Good Excuses, Bad Excuses

I have the impression that the EPO Boards of Appeal have an increasing tendency to not admit new documents or requests if the submitting party does not present good reasons for the late filing. Examples include e.g. T1914/08 (cf. item [2], where the Board asks for a "justification having a causal link to the present proceedings") or T1488/08 (cf. item[2.2] asking for "objective reasons").

It may be heretic but I would like to ask whether this approach is justified in view of the  nature of the proceedings before the EPO. The Boards of Appeal do clearly have the discretionary power not to admit new facts or requests. However, this power has to be exercised on the firm basis of the objectivity principle and the overriding interest in fair proceedings.

In my view, there are (at least) two principles limiting the discretionary power of the Boards. Firstly, the decison not to admit an amendment of the case should clearly not violate the right to be heard of the submitting party. Secondly, the boards (just as the opposition division) should not be forced to knowingly take wrong decisions. The first principle requires the admissibility of amendments constituting a reasonable reaction to events inside of or outside of the procedure and the second principle requires that documents of prima facie relevance should be admitted.

Article 13(1) RPBA states that

“Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”.

What about the excuse? The complexity of the submitted subject-matter is clearly independent of the quality of the excuse.

Further, the procedure will not be the more economical the better the excuse for the late filing is. Rather, the procedural economy allows for the non-admission of amendmens which would clearly not change the result of the procedure (e.g. the admission of the allegedly novelty-destroying Document D99 if the Board holds that the patent is not novel over D1 already). Furhter, procedural economy should not be mixed up with the Board's comfort.

Finally, we are left with the "current state of the proceedings". In my view, this means that the Boards should shift the point of equilibrium of their balance towards the non-admission side in the later the stages of the proceedings. However, this may affect the mechanism of the balance but the weights to put on the balance should remain unchanged.

The fact that the amendment is a direct response to new points raised by the other party may support as a positive weight the admissibility of an amendment for reasons of fairness and for the preservation of the the right to be heard. However, in my view, the lack of such reasons should not constitue a "negative" weight on the balance unless the Board has additional evidence supporting the suspicition that the late-filing is the result of procedural abuse. Procedural abuse is a severe accusation which should not be raised without by the Boards without very good grounds.

In view of these considerations, the reasons for not admitting amendments to the case mentioned in T1488/08 appear to be based on a doubtful exercise of discretion. Here is what the Board has to say:

In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty.

For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case.(Emphasis added).

 If this way of exercising the discretion was correct, this would imply that every amendment which is determined by procedural tactics is inadmissible. The fact that the prima facie relevance is checked only "for the sake of completeness" and not at the first place implies that this board has set its prioprities in a questionable way. The prima facie test would actually have been entirely sufficent to reject the new grounds.