Author: Florian Meier

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GPTO becomes WIPO DAS depositing office

The German Patent and Trademark Office (GPTO) started acting as depositing office for WIPO DAS effective 25 November 2024. Additional information can be found in the official notice from the president and on the WIPO DAS country website.

Two notes for practitioners: First, as of now, only patent and utility model applications will be deposited by the GPTO in WIPO DAS. Hopefully this will be extended to design and trademark applications later. Second, the process for requesting deposition in WIPO DAS is different from, e.g., the process known to European practitioners from EPO and EUIPO priority applications: For priority applications filed with the GPTO, it is required to file a separate request using Form A9164 after the application has been filed. Please find a link to the version of Form A9164 available as of writing this blog contribution .

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EPO seminars

As the year draws to a close, the EPO is going to host several interesting seminars, including:

Opposition Matters 2024: According to the EPO, “Opposition Matters is the EPO’s key event for professional users to keep abreast of the latest and most relevant developments in opposition proceedings.”

Litigation Matters 2024: According to the EPO, “Litigation Matters … is devoted to the latest practices of patent litigation in Europe, with particular attention to the UPC litigation.”

Registration is already open. These events represent a great opportunity to catch up with recent developments. Both events are free of charge and organized by the EPO Academy.

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EU design invalidity

The EUIPO hosted a webinar on design invalidity applications, which was both very instructive and useful for practitioners.

If you are interested in this topic, you can find a recording of the webinar entitled Track on design: focus on invalidity of designs on the EUIPO’s website.

By way of background for readers from abroad: In the context of industrial property rights within the European Union (EU), design invalidity refers to the legal process by which a party may challenge the validity of a registered design before the European Union Intellectual Property Office (EUIPO). A design may be declared invalid for several reasons, including lack of novelty, lack of individual character, or if the design is not eligible for protection under EU design law.

To initiate an invalidity procedure, any party with a legitimate interest can file an application to the EUIPO. This application must set forth the grounds on which the invalidity claim is based and provide the necessary supporting evidence. If the EUIPO finds the design invalid, it will be cancelled. This mechanism is crucial as it allows for the resolution of disputes relating to the validity of designs, helping to maintain a fair competitive environment in the marketplace.

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Adaptation of the description in EPO proceedings

It is rare for a Board of Appeal decision to spark widespread interest on (business and/or IP-related) social media. This was different last week, when many patent practitioners enthusiastically posted about T 0056/21 of 04 October 2024.

Datasheet of T 0056/21

The headnote of this decision reads:

“In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.”

Some have suggested that T 0056/21 will significantly change the EPO’s practice when it comes to adaptation of the description. This will remain to be seen.

Roche’s IP department and the counsel handling T 0056/21 deserve praise for seeking clarification on this issue. This even more so, as the adaptation of the description appears to be very dear to some examiners in light of the quality discussions. And Board 3.3.04 is to be applauded for reasons of the decision that are not only comprehensive, but are guided by what the drafters of the EPC had in mind when it comes to clarity.

Not everyone reading the various posts on T 0056/21 might be aware of the fact that the same applicant (Roche) has previously pushed this matter to the Board of Appeal. The previous appeal has resulted in T 1989/18 of 16 December 2021. While the latter decision does not have a headnote, the reasoning in points 4-13 of T 1989/18 reaches conclusions similar to those in the headnote of T 0056/21. T 1989/18 did not appear to do much to alter the EPO’s practice as regards the adaptation of the description. Hopefully, Roche (or other applicants) will continuetheir commitment to resolving the question of whether, and if so to what degree, an adaptation of the description to amended claims is required. At least in US proceedings, all IP stakeholders appear to be comfortable working with a description that is not modified in light of claim amendments during prosecution.

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2024 Nobel prizes

Two of the 2024 Nobel prizes relate to machine learning (ML) and artificial intelligence (AI), namely those for physics and chemistry. It is astounding how ML/AI techniques are transforming various fields of technology, reshaping the ways we interact with and manage complex systems. One of the most significant impacts can be observed in control operations of technical systems, where AI algorithms enable real-time decision-making and optimization. These technologies allow for more precise control of processes in industries such as energy, manufacturing, quality control, and transportation. ML models can identify patterns and use them for identifying the most suitable control actions. In the realm of medical technology, AI is also proving to be a game-changer. From diagnostics to personalized medicine, ML harnesses data to improve patient outcomes and streamline healthcare delivery.

The EPO has long recognized that a technical contribution can be made by AI/ML inventions, as reflected in the Guidelines. This should encourage innovators to seek patent protection for their AI/ML-based inventions. As we move forward, the integration of ML and AI across various domains will continue to drive innovation.

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Search at the EPO

In the September 12, 2024 episode of the EPO’s Talk Innovation podcast, the focus is on patent quality. One highlight is a new step being taken by the European Patent Office (EPO) to improve the thoroughness of search reports. Starting in November 2023, these reports will be shared with members of the upcoming Examining Division and their team manager. This change aims to make sure that the search reports are as comprehensive as possible. The goal is to minimize situations where important prior art is only introduced years into a case, even when the patent claims haven’t changed much.

The episode also discusses other efforts to improve consistency in procedures. For example, the EPO is working to help Examiners better compare their practices regarding the number of communications sent out before a case goes to oral proceedings. These measures are set to enhance the overall quality and efficiency of the patent examination process.

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Claim construction in EPO proceedings

For several years, there has been divergence in the case law of the Boards of Appeal when it came to claim construction: Some Boards have taken the position that, when assessing patentability, the claims are to be construed in light of the description and drawings as a matter of principle. On the other hand, other Boards have taken the position that the description and drawings are to be considered for claim interpretation in EPO proceedings only in certain cases, namely when the claim wording is unclear or ambiguous.

The recent Boards of Appeal decision T 0439/22 has referred this matter to the Enlarged Board of Appeal. The referral questions are as follows:

1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?

2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?

3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?

These questions also affect many pending proceedings.

The president of the EPO has decided that proceedings before the examining and opposition divisions should continue (Notice from the European Patent Office dated 1 July 2024). This serves the proper functioning of the EPO and for legal certainty.

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BGH “Variationsnut” – Claim Construction

In its decision X ZR 12/22 dated 12 March 2024 – Variationsnut (“varying groove”), the German Federal Supreme Court held that a term used in two different claim features of the same claim may have to be construed differently, if the technical functions of the two claim features indicate this to be necessary.

This decision is illustrative of the importance of technical considerations in the German patent court system: The courts strive to make technical sense of the claimed invention with a mind willing to understand, even if the claim wording may not be perfect.