OPENING OF THE SYMPOSIUM AND WELCOMING ADDRESS
Peter MESSERLI
Vice-President DG 3
Your Excellency, President of the Supreme Court, ladies and gentlemen,
In my capacity as Vice-President of Directorate-General "Appeals" of the European Patent Office I would like to welcome you very warmly to this symposium. We have a very interesting programme ahead of us and may look forward to working together in the next few days which will surely be enriching to all of us. To bridge this opening session and the working programme I would like to say a few words about what has happened in the boards of appeal since the last judges' symposium.
Let me start with some statistics.
In 2009, the boards of appeal (of which there are now 28) registered 2 503 new cases, a 3.4% increase over the year before, and they settled 1 939 appeals, a 7.0% increase in production over the 2008 figure.
This year, 1 632 new cases were registered by the end of July and the boards settled 1 141 appeals. The figures for appeals filed suggest that so far the economic crisis has not had an impact on the work of the boards of appeal. However, the high number of new appeals is also due to the high number of refusals of patent applications in the area of computer-implemented inventions.
I shall now turn to the Enlarged Board of Appeal which took on a new role with the entry into force of the EPC 2000 in deciding on petitions for review. The new procedure allows parties to petition the Enlarged Board of Appeal on the ground that there has been a fundamental procedural defect or that a criminal act may have had an impact on the decision of a board of appeal. The total number of petitions for review received since the introduction of this procedure at the end of 2007 is 45, most of them alleging that a fundamental violation of the right to be heard has occurred. 45 petitions is a relatively small number compared to the large number of decisions rendered by the boards of appeal over the same period of time, which exceeds 4 000. I take this as a sign of the high quality of the decisions of the boards of appeal.
In the vast majority of cases settled - 31 at this point in time - the petitions for review were rejected as clearly inadmissible or unallowable. However, in one case, R 7/09, the Enlarged Board of Appeal found the petition for review to be allowable. It judged that a fundamental violation of Article 113 EPC had occurred in that the statement setting out the grounds of appeal was considered not to have been communicated to the petitioner, who had therefore had no opportunity to comment on the grounds for the decision under review.
As you know, the core business of the Enlarged Board of Appeal are referrals of questions of law to ensure uniform application of the law or if a point of law of fundamental importance arises. These referrals can be made by the boards or, in case of diverging case law of the boards of appeal, by the President of the EPO. In 2008, the Enlarged Board of Appeal handed down one decision, in 2009 only two interlocutory decisions concerning procedural matters, but this year it has already decided four cases.
Let me give you a short summary of the decisions of the Enlarged Board of Appeal on referrals in the last two years. I shall present these only briefly as most of them will be discussed at greater length in the course of this symposium.
Three decisions - G 2/06, G 1/07 and G 2/08 - concern exclusions from patentability in the area of biotechnology and the medical field. In 2008, the Enlarged Board of Appeal decided in G 2/06 (OJ EPO 2009, 306), the stem cell case, that Rule 28(c) EPC forbids the patenting of claims relating to products which - as described in the application - at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said products are derived, even if the said method is not part of the claims. It also held that it was not of relevance that after the filing date the same products could be obtained without having recourse to a method necessarily involving the destruction of human embryos. In this decision, the Enlarged Board also refused a request for a preliminary ruling by the European Court of Justice on the questions referred.
G 1/07 concerns the exclusion from patentability of surgical methods. The Enlarged Board decided inter alia that a method in which, when carried out, maintaining the life and health of the human being or the animal is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to Article 53(c) EPC.
G 2/08 concerns the use of a known medicament in treating a particular illness. The Enlarged Board held that Article 54(5) EPC does not exclude a medicament already used in the treatment of an illness from being patented for use in a different treatment of the same illness. This is also the case where a dosage regime is the only feature claimed which is not comprised in the state of the art. Furthermore, Article 54(5) EPC now permits purpose-related product protection for any further specific use of a known medicament in a method of therapy. In the light of this the Enlarged Board decided that corresponding claims may no longer have the format of so-called Swiss-type claims.
In G 3/08 the President referred a number of questions concerning the exclusion from patentability of computer programs as such. The Enlarged Board of Appeal held that the referral was inadmissible. It stated inter alia concerning one of the questions that, whilst there was a difference between two decisions of the boards of appeal concerning whether a claim to a program on a computer-readable medium necessarily avoided exclusion from patentability, this was a legitimate development of the case law and not a divergence which would make the referral admissible.
Finally, in G 4/08 the Enlarged Board of Appeal ruled that if an international patent application has been filed and published under the PCT in an EPO official language it is not possible, on entry into the European phase, to file a translation of the application into one of the two other official languages of the EPO which would then become the language of the proceedings.
Currently, five referrals are pending before the Enlarged Board of Appeal.
G 2/07 relates to a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants. The question is whether such a process escapes the exclusion from patentability of essentially biological processes merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature. This referral has been consolidated with G 1/08, which deals with practically the same issue. These cases are colloquially referred to sometimes as the "Broccoli" and the "Tomato" case.
Oral proceedings were held in July this year and you can expect the decision in these cases before the end of the year.
In 2009, the Legal Board of Appeal referred the following question to the Enlarged Board of Appeal, now pending as case G 1/09: Is an application which has been refused by a decision of the Examining Division thereafter still pending until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed? The issue is relevant to the question of up to when a divisional application can be filed.
G 1/10 concerns a patent proprietor's request for correction of the decision to grant a patent. The main question is whether such a request which was filed after initiation of the opposition procedure is admissible.
The question most recently referred to the Enlarged Board of Appeal concerns disclaimers. In G 2/10 a technical board of appeal asks whether a disclaimer infringes Article 123(2) EPC if its subject-matter is disclosed as an embodiment of the invention in the application as filed.
I would like to turn, very briefly, to a more practical issue which I already raised in previous symposia. It is the possibility not only for parties, but also for national courts before which patent infringement or nullity proceedings are pending, to request accelerated processing before the boards of appeal or the opposition divisions. This possibility is being used in a rather small number of cases and this is why I would like to remind you of it. The boards of appeal are quite open to such requests and my offer still stands that if you do not know exactly which board is dealing with a particular case which is also pending before you, you can address such requests to me and I will then forward them to the competent board for consideration or, where the proceedings are pending before an opposition division, to the relevant directorate-general of the EPO.
There is nothing new concerning another matter I mentioned in previous symposia, namely the project of organisational autonomy and detachment of the boards of appeal from the European Patent Office. The implementation of this project requires amendment of the EPC and thus a diplomatic conference, and there seems no prospect of that in the very near future.
Let me conclude with a few words on the latest information products of DG 3 "Appeals" of the EPO. The 6th edition of our book entitled "Case Law of the Boards of Appeal" has recently been published in the three official languages of the EPO. It offers a comprehensive and systematic report of the case law of the boards of appeal. It incorporates decisions handed down before the end of 2009 and the most important decisions from the first two months of 2010, and I am pleased to inform you that we will shortly be sending you all a copy. In addition to this publication, the annual case law special edition of the EPO Official Journal, which includes summaries of selected decisions from the previous and also the current year, serves as an update to those interested in following the developments in the case law of the boards of appeal on a regular basis. This year's special edition will be published in October.
Apart from these paper publications, I would also like to mention our ESPACE® LEGAL DVD published twice a year, where you can find all decisions since 1979, as well as the EPO website (www.epo.org) where you can find all decisions free of charge.
Your Excellency, President of the Supreme Court, ladies and gentlemen, I have come to the end and would like to thank you very much for your attention and invite you all to take part in a lively discussion in the days to come.