Mathys & Squire attorneys: David Hobson, Martin MacLean and Nicholas Fox have filed a Petition for Review on behalf of Ipsen Bioinnovation asking the European Patent Office’s (EPO) Enlarged Board of Appeal to set aside a decision which resulted in the revocation of Ipsen Bioinnovation’s patent EP 2677029.

A Petition for Review is an exceptional remedy which enables a party to overturn a decision of an EPO Board of Appeal. The success rate for Petitions for Review is notoriously low, with fewer than 5% being successful. This is because Petitions for Review can only be based on very specific grounds and there is an obligation on parties to bring issues to a Board’s attention at a hearing. Failing to do so renders a Petition for Review inadmissible unless the circumstances are such that an objection could not have been raised during the appeal proceedings.

Unusually, valid grounds for a Petition for Review appear to have been made out in the present case.

Background to the case

EP 2677029 was opposed as allegedly being invalid on the grounds of added matter, lack of sufficiency and lack of inventive step. At first instance, the added matter objection was rejected. However, the allegation of lack of sufficiency was upheld. No ruling was made on inventive step.

Ipsen Bioinnovation appealed.

When responding to the Grounds of Appeal, in addition to asking the Board of Appeal to uphold the Opposition Division’s finding of lack of sufficiency, the respondent also asked the Board to overturn the Opposition Division’s decision that the claims of Ipsen Bioinnovation’s Main Request did not add matter. This argument gained traction with the Board of Appeal, and in a Preliminary Opinion, issued by the Board a few weeks before a hearing was scheduled, the Board indicated that they were of a preliminary view that three of the dependent claims in the Main Request contained added matter.

Mathys & Squire responded by filing arguments to the contrary and in addition, submitted two additional auxiliary requests into the proceedings which deleted these dependent claims, noting that such claims could not have been filed with the original appeal because the Opposition Division had previously found in Ipsen Bioinnovation’s favour.  Mathys & Squire further noted that the deletion dealt fully with the added matter objections, did not raise any new issues, and did not in any way shift the focus of the appeal which, from the beginning of the case, had been the issue of sufficiency.

Fundamental violation of the right to be heard

At Oral Proceedings, after initially rejecting an added matter attack against claims 1 and 3 of the Main Request, the Board ruled that dependent claims 2 and 4 of the Request added matter. The Board then proceeded to refuse to admit the requests deleting these claims into the proceedings and revoked the patent. No explanation for the refusal to admit the auxiliary requests which deleted the dependent claims alleged to add matter was given at the oral hearing itself.

When the Board’s written decision was issued, it became apparent that the Board had departed from previous EPO case law which would have admitted the requests deleting the relevant dependent claims into the proceedings.

Starting with the decision in T1480/16, many Boards[1] have ruled that deleting dependent claims (particularly when such a deletion does not result in a shift of the focus of a case) is merely a restriction of the scope of an appeal and as such does not constitute an amendment of an appellant’s case. Under such an interpretation of the law, such a request can be made at any time during appeal proceedings and a Board does not have a discretion to refuse the request merely because it is submitted after parties have been summoned to Oral Proceedings.

A second line of case law has taken a different view, holding that the deletion of dependent claims does constitute an amendment of a party’s case. This means that a party has to establish “exceptional circumstances” that justify the admission of a request. However, invariably this has been held to satisfy the “exceptional circumstances” test for admission whenever a request has related solely to the deletion of dependent claims which:

In the present written decision, it became apparent that the Board had declined to follow either of these approaches and instead had decided to refuse to admit the amendments on the ground that they did not address the Board’s concerns relating to sufficiency of disclosure; a ground that had never been discussed at the Oral Proceedings.

Basing a decision on a ground on which a party has not had the opportunity to present comments is a clear breach of a party’s right to be heard under Article 113 EPC and constitutes grounds for a Petition for Review. Further, as there was no prior indication that the Board would depart from the previous case law and that the Board required arguments on sufficiency to be presented, it was not possible to bring this breach to the attention of the Board at the hearing itself.

David Hobson, commented: “Our client Ipsen clearly suffered an injustice here. I recall my surprise at the hearing that our claim requests were not admitted given that: (i) they unquestionably addressed the added matter issue; and (ii) our position was supported by well-established EPO case law. It was only upon receipt of the decision that the underlying reasoning of the Board of Appeal became clear. I could not have guessed at the time that Ipsen’s right to be heard had been violated and that a consideration of sufficiency was central to the Board of Appeal’s refusal to admit the claim requests. We are hopeful that the Petition for Review will put right this wrong.”

Martin MacLean commented: “The post-grant proceedings in relation to this patent have been as unconventional as I have experienced in 25 years of practicing as a European Patent Attorney. The whole purpose of Oral Proceedings is to give patentees the opportunity to be heard prior to a Board of Appeal ruling on the validity of a patent. When issuing their decision to revoke this patent, the Board must have been aware that questions of sufficiency had not been discussed. The Board’s decision to revoke this patent is therefore clearly unsafe and should be overturned.”

The case is proceeding as case number R14/24.

[1]  For example in: T914/18, T995/18, T1857/19, T884/18, T565/16, T981/17, T1792/19 and T2201/19.

[2] See for example T853/17, T306/18, T682/16, T1224/15, T853/17, T306/18, T884/18, T494/18 and T2920/18.

Mathys & Squire is pleased to be ranked as a leading European patent law firm by the Financial Times (FT) in their 2024 report.

Mathys & Squire also been highlighted in five specialised areas of industry expertise: ‘Biotechnology, Food & Healthcare‘, ‘Chemistry & Pharmacy‘, ‘Electrical Engineering & Physics’, ‘IT & Software‘, and ‘Mechanical Engineering.’

This annual ranking is based on client and peer recommendations, compiled by the FT’s research partner, Statista. We would like to extend our thanks to all our clients and contacts who took the time to recommend our firm.

To access the full report and rankings tables, please visit the FT website here.

Mathys & Squire is thrilled to be ranked in the 2024 edition of IAM Patent 1000: The World’s Leading Patent Professionals . IAM is known for being the definitive resource outlining word-class private practice patent expertise, and conducts extensive qualitative research to identify leading firms and individuals based on their abilities, market presence, and the complexity of their work. Only those with exceptional skills and deep insights into patent matters are featured in the directory.

In addition to our firm ranking, a record number of Mathys & Squire attorneys have been recognised as ‘Recommended Individuals’. Partners Paul Cozens, Stephen Garner, Anna Gregson, Chris Hamer, Dani Kramer, Alan MacDougall, Martin MacLean, James Pitchford, Juliet Redhouse, Michael Stott, Craig Titmus, Andrew White and Consultant Partner Jane Clark have all maintained their rankings. We are also pleased to see Partners Philippa Griffin and Nicholas Fox ranked for the first time.

Mathys & Squire has been recognised as a ” real industry leader that provides a very high level of service and support. It has a real breadth and depth of technical understanding paired with European legal expertise and experience dealing with legal systems elsewhere.” Our team have also been praised for their ability to “collaborate and communicate effectively with clients and each other to efficiently manage global portfolios, coordinate patent strategies, advise on FTO matters and represent patrons in proceedings at the EPO. They keep up to date with commercial developments to provide proactive and cost-effective advice, and always make themselves available to answer questions, providing clear and concise summaries.”

Commentary by Partner Nicholas Fox has been featured in Law Society Gazette, Law Society of Ireland Gazette, World IP Review. Life Sciences Intellectual Property Review, The Canadian Lawyer and The Australian Lawyer, looking back at one year of the Unified Patent Court (UPC) and discussing how national courts still dominate patent litigation in Europe.

Read the extended press release below.

One year in, the jury is still out on the new UPC as its caseload is still dwarfed by national courts, say leading intellectual property law firm Mathys & Squire.

The UPC opened on June 1, 2023 with the aim of becoming Europe’s primary patent court. In its first year of operation, 205 cases were filed at the court (134 infringement cases, 39 revocation actions and 32 provisional measures actions). This represents around 15% of the total number of patent cases filed in Europe in 2021, when a total of 1,275 patent law cases were heard in the UK, Germany, France, Italy and the Netherlands combined.

Although 205 cases in an initial year is an impressive total, the UPC still has a long way to go before it becomes Europe’s primary court for patent litigation. The UPC’s caseload places it slightly ahead of the French courts, which heard 174 patent cases in 2021, and a long way behind Germany, which heard 841 patent cases that year.

Most important of all, very few UPC cases have yet to reach any form of conclusion. That is not unexpected. Under the UPC’s court rules, cases are expected to reach a final hearing in 12 months with decisions issued shortly thereafter. It is only now that the Court has been running for a full 12 months that we can start to expect the Court to begin issuing substantive decisions. Up until now, the Court has only ruled on a handful of cases, primarily on procedural issues.

It is likely to be quite some time before the jurisprudence of the UPC resembles anything approaching a settled state. Although there should be a steady stream of substantive decisions over the next 12 months, such decisions will only be decisions at first instance. It will not be until settled practice begins to develop through a substantial body of decided cases or cases are referred to the UPC Court of Appeal that the approach of the new court to substantive patent law is likely to become clear.

UPC case numbers dwarfed by other courts

A slow start for the UPC was baked-in by design.

The UPC has no jurisdiction over patents granted by national patent offices. However, a significant proportion of European patent disputes relate to such national patents rather than to patents granted by the European Patent Office, over which the UPC does have jurisdiction.

Nor does the UPC jurisdiction extend over all European countries. The UK was forced to withdraw from the UPC following Brexit and many significant European countries, notably Spain and Poland have chosen not to join the new system.

Additionally, patent holders have the choice to opt patents out of the jurisdiction of the court and around two-thirds of European patents in existence when the court opened were opted-out. This will have included the vast majority of patents which patent holders thought might have been the subject of third-party revocations actions before the UPC.

The 39 stand-alone revocation actions brought before the UPC in its first year is in stark comparison with the thousands of oppositions filed annually at the European Patent Office (EPO). Although the total number of UPC revocation actions will be bolstered by counterclaims for invalidity brought against patents which are sought to be enforced in the UPC, such numbers are dwarfed by the 3,775 oppositions filed in the EPO in 2022 and are likely to continue to be so for the foreseeable future.

Says Nicholas Fox: “The success of the UPC in attracting work to date is significant – but that shouldn’t be overstated. When we compare the UPC to other national patent courts we see that the UPC is still just one of many courts developing European patent case law.”

“Currently, most businesses tend to focus on bringing patent cases at a national level. If the UPC wants to become Europe’s hub for patent litigation it has to convince patent holders that litigating continent-wide is worthwhile.”

“Both corporates and lawyers will also need to become more comfortable that the UPC will deliver predictable and very robust judgments. At the moment, most of the very big ticket patent litigation, for example in pharmaceuticals, is staying within the national court systems.”

In recent EPO decision T 293/19 a Technical Board of Appeal has suggested that claims to products that could be envisaged as obvious improvements over the prior art, but which could not be produced using methods known in the art, may not be deemed inventive. This decision departs from a long-standing line of previous case law.

The case at issue included claims to both a process and products that were obtainable using that process. The Board decided that the process was both novel and inventive, and then went on to consider the patentability of the product claims. In one request, the product (an IgM antibody preparation) was defined by a specific property (a proteolytic activity of less than 8U/l) that was not disclosed in the closest prior art document. The Board had doubts over whether this feature was sufficient to distinguish the closest prior art but gave the proprietor the benefit of the doubt for the sake of argument.

Whilst it was undisputed that a low proteolytic activity was considered a desirable property in the prior art, the proprietor argued that there were no processes in the prior art that could lead to a product having a proteolytic activity below the claimed threshold and that the product should thus be considered inventive. In support, the proprietor referred to earlier decision T 595/90 which states that “an otherwise obvious entity… may become nevertheless non-obvious and claimable as such if there is no known way or applicable… method in the art to make it and the claimed methods for its preparation are therefore the first to achieve this in an inventive manner”. The reasoning of that decision has subsequently been followed in a number of cases and until now seemed to be a well-established principle of EPO case law.

The Board had doubts over whether known processes could produce the claimed composition, but again assumed in favour of the proprietor. However the Board did not accept the proprietor’s argument that the product claim should thus be held inventive, stating that the EPO’s problem-solution approach for assessing inventive step “[a]t no point…includes the question of whether a product could or could not be obtained by a process known from the art for it to be inventive” and that “an obvious improvement…is not necessarily inventive for the reason alone that it cannot be prepared by methods available at the filing date”. The product claim was thus found obvious, with the Board of the view that the invention lay in the development of the process to produce the product and not the product itself.

This conclusion is in some ways difficult to understand. The EPO’s problem-solution approach does only ask whether the invention was “obvious” to the skilled person without explicitly addressing whether this means that the skilled person should merely be able to envisage the invention or actually produce it. However, in order to destroy novelty, an enabling disclosure of a product is required in the prior art (i.e. the skilled person must be able to make the product based on its disclosure in the art), and so it is not clear why this should not also be a consideration when assessing inventive step. If somebody produces a product for the first time using inventive skill, why should they not be entitled to a claim to that product in addition to the process used to make it?

The Board’s conclusion thus seems to represent a significant departure from the principles established by T 595/90. The Board in T 293/19 states that its conclusion would depend on the facts of the case and the claim wording but provides minimal additional guidance, and so it will be interesting to see if any other Boards follow this decision.

Leading intellectual property (IP) law firm Mathys & Squire is pleased to announce the promotion of Laura Clews, Samantha Moodie and Edd Cavanna to Partners at the firm.

An extended version of the press release is available below.

Laura Clews has been appointed to Partner in Mathys & Squire’s life sciences & chemistry team, continuing a 13 year-career with the firm. Laura holds a doctorate in liquid chromatography and is a highly skilled patent lawyer with global knowledge of drafting and litigating patent applications, particularly in the fields of ionic liquids, composite materials, polymer chemistry, solar cells, medical stents and oil and gas technologies.

Samantha Moodie has also been promoted to Partner at Mathys & Squire, having joined the firm’s life sciences & chemistry team in 2011. A specialist in molecular biology and biotechnology and holding a doctorate in molecular virology, Samantha has extensive experience managing complex worldwide patent portfolios. Areas of particular focus for Samantha include antibody-based therapeutics, nucleic acid-based diagnostics and stem cell and regenerative technologies.

Edd Cavanna too has been appointed Partner in Mathys & Squire’s IT & engineering team. With a PhD in Physics, Edd joined the firm in 2015 and specialises in the IP and technology areas of mechanical, electronic, software and energy. Edd’s promotion will strengthen the firm’s services across all technology fields, especially semiconductor devices and applied superconductivity.

Says Alan MacDougall, HR Partner at Mathys & Squire: “It’s a great pleasure to see Laura, Samantha and Edd continue very successful careers with Mathys & Squire and welcome them to our partnership. After joining Mathys & Squire as Technical Assistants, all three have grown into highly regarded specialists in their respective fields. Their wealth of expertise will make a vital contribution to the exceptional services we deliver to our clients.”

Mathys & Squire has also promoted five lawyers to Managing Associates – Alex Elder, Adam Gilbertson, Lionel Newton, Oliver Parish and Leonard Wright.

Says Alan MacDougall: “Congratulations to Alex, Adam, Lionel, Leonard and Oliver are also due, whose promotions are another reflection of the remarkable talent within our firm. Our talented new Managing Associates will deliver valued support to our partners across all service lines and sectors.”

Commentary by Partner Andrew White has been featured in The Independent and The Patent Lawyer, discussing how R&D in defence, alongside agriculture and logistics, is driving innovation in drone technology.

Read the extended press release below.

The number of global patents filed for drone technology has increased 16% from 16,800 in 2022 to 19,700 in 2023* (includes patents for drone countermeasures), shows new research from leading intellectual property (IP) law firm Mathys & Squire.  

Increased innovation in drone technologies has been driven by greater research and development (R&D) spending in the defence sector, the ongoing integration of AI into drone technology as well as drones that can better handle countermeasures. This reflects the growing usage of drones in military conflicts.

Russia is now in the top five countries for filing drone patents. 333 drone-related patents were filed by Russian entities in 2022 and 2023. Ukraine only filed 4 patents relating to drone technology over the same period.

Andrew White, Partner at Mathys & Squire, says: “Military applications now make up a significant proportion of R&D in drone technology. We’re seeing more investment in drone research from defence businesses as governments realise that they are in a literal arms race within this field.”

Industrial and commercial applications continue to drive drone innovation

Commercial applications of drone technology also continue to expand rapidly, with some emerging applications including:

China remains at the forefront of drone innovation, with 82% of all global drone patents filed since 2015 originating from Chinese companies. During 2023 this rose to 87%, accounting for 17,285 patent filings.  Drone manufacturer DJI of China was the most frequent filer of drone patents – filing 88 in the last year. The US was the second largest filer of drone patents, filing 858 in 2023.

With the global drone market estimated to be worth over $100 billion**, Mathys & Squire emphasises the importance of proactive patent strategies for businesses looking to capitalise on the opportunities presented by drone technology.

White concludes, “As drones continue to be adopted across more industries, it’s crucial for businesses to safeguard their IP in this competitive space through patent protection.”

* Source: World Intellectual Property Organisation. Year end December 31 2023

** Source: Goldman Sachs

Mathys & Squire filed a test case to secure public access to evidence in the Unified Patent Court (UPC) at the end of November 2023. That case was stayed, pending the UPC Court of Appeal’s decision in Ocado v Autostore which we have previously reported on. Mathys & Squire’s test case has now resumed and we have provided our comments to the Munich Central Division so that the Judge-Rapporteur can rule on our request.

The Ocado v Autostore case concerned a request from a member of the public to access pleadings and evidence which had been filed on a case that had concluded before access to the Court file was granted. In relation to the specific facts of the case, the Court of Appeal stated that general interest in scrutiny of the Court should mean that in general, access to written pleadings and evidence should be given to the public after proceedings have come to an end.

The Court of Appeal’s decision still leaves many questions unanswered.

Although opening up court files after a case has finished is to be welcomed, the Ocado v Autostore decision leaves open the question as to when the public will be granted access to court documents whilst a court case is pending. As the Ocado v Autostore case had settled prior to access to the Court file being granted, that question could not be addressed by the Court except by way of brief, limited and non-binding remarks.

The Court of Appeal has stated that when granting access to documents on the court file, a Judge-Rapporteur must weigh the interests of a member of the public requesting access against the interests of protection of confidential information and personal data and the general interest of justice and public order.

Despite the Court of Appeal’s ruling strongly suggesting that public access to written evidence and pleading will now be granted on request whenever a case has been concluded, it is unclear how the Court will balance such interests whilst litigation is ongoing.

The UPC is intended to be a public forum for the settlement of patent disputes. Proceedings before the UPC are stated to be open to the public and the Court of Appeal agrees that it is clear that the written procedure where parties submit written arguments and evidence to the court form part of those public proceedings.

The Court of Appeal has accepted that the public interest in Court proceedings is not limited to cases where the Court issues a final decision. Nor is the public interest solely based on a desire to scrutinise the workings of the court. The validity or otherwise of patents and how patent claims might be construed is of wider interest than merely a dispute between the parties, not least because of the potential that a patent may later be enforced against others. Further, it is desirable that informed reportage on proceedings before the UPC can occur in real time. Such a public interest is not served by delaying access to court documents until after a court case has been concluded.

Of course, in specific cases, there may be good reasons for keeping certain matters confidential pending the resolution of a case. However, we believe that it should be incumbent on parties to substantiate and point out in which specific way their legitimate personal or economic interests are affected.  In our view, making statements concerning a party’s interests in general or merely referencing abstract prejudice to hypothetical personal or economic interests should be insufficient to prevent a third party from accessing the Court file whilst litigation is on-going.

We hope that the Court’s ruling on our test case will clarify these matters. The decision of the Court is expected in a few weeks’ time.

Recent Enlarged Board of Appeal referral, G1/23, seeks to obtain clarity on when a product, or published technical information relating to such a product, can be considered to be state of the art, depending on the degree to which the composition and internal structure of the product may be analysed and reproduced. However, one potential consequence of a Decision on the referral could be to introduce an “on-sale bar” type exclusion from patentability, as applied by the United States Patent and Trademark Office (USPTO). This could, for example, apply to patent applications directed to commercial products historically covered by trade secrets, where reverse engineering the exact products would be expected to be extremely difficult.

Background of the case

The case giving rise to the referral to the Enlarged Board of Appeal – T483/19 – was an appeal against a Decision of the Opposition Division rejecting an opposition filed against European Patent No. 2 626 911. The patent was directed to a material suitable as an encapsulating material for a solar cell, the material comprising an ethylene/alpha-olefin copolymer and defined by a number of parameters, including melt flow rate, density and shore hardness.

In this case, novelty of the claimed material was not at issue but rather it was the availability to the public of a commercial product – ENGAGE® 8400 – named in an example of a prior art document, which was considered to be of critical importance in determining the closest prior art for the purposes of assessing inventive step. For context, ENGAGE® 8400 was commercially available and prior art data sheets show the product to have all of the properties of Claim 1, except for aluminium content. What wasn’tin the public domain was how to make ENGAGE® 8400.

The Patentee argued that, in order for the commercial product to be considered state of the art, the skilled person must be able to produce a polymer that is exactly (and not just similar to) ENGAGE® 8400 and do so without undue burden. This, the Patentee argued, was in line with established jurisprudence following the Enlarged Board of Appeal Decision in G1/92.

According to the headnote for Decision G1/92, the “chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition” and the “same principle applies mutatis mutandis to any other product”.

In the reasons for the Decision, the Enlarged Board in G1/92 stated that an: “essential purpose of any technical teaching is to enable the person skilled in the art to manufacture or use a given product by applying such teaching. Where such teaching results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art“.[Emphasis added] – paragraph 1.4 of the Reasons.

The Opponent in T483/19 sought to cast doubt on the reproducibility criterion in the reasons of G1/92, pointing to an alleged inconsistency between the reasons and the headnote to the Decision. The Opponent also pointed to other Decisions of the Enlarged Board (including G2/88) which might be seen to suggest that the intention was for availability to the public (so as to be considered state of the art) to be determined by accessibility of the public to the prior art product, rather than depending on whether the accessible product could be reproduced without undue burden.

On the other hand, the Patentee identified Decisions applying G1/92 and establishing three criteria for a product to be considered available to the public so as to be state of the art: 1) a member of the public is able to access the product; 2) a skilled person must be able to analyse the composition or internal structure (i.e. must be able to access the information that is inherent to the product); and 3) a skilled person must be able to reproduce the product based on common knowledge and without undue burden, as only then, it was argued, does it represent a complete technical teaching.

The submissions of both parties established an apparent divergence in the application of G1/92 which was considered justification for the referral to the Enlarged Board of Appeal for guidance.

G1/23 – The referral

The Technical Board in T483/19 referred the following questions to the Enlarged Board of Appeal:

1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?

2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?

3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?

Thus, the referral seeks to establish the extent to which the reproducibility criterion is critical for a product to be considered state of the art and whether published technical information relating to the product can be considered state of the art, regardless of whether the composition or internal structure of the product can be analysed and reproduced without undue burden.

Clearly, the referral in G1/23 is focused on commercial products having compositions and internal structures that are not readily reverse engineered. Nevertheless, the potential reach of a Decision on the referral is significant and not only limited to polymer technologies, nor indeed only chemical inventions.

USPTO on-sale bar

Many readers will be familiar with the USPTO’s “on-sale bar” provision – a statutory bar found in Section 102 of the United States Patent Act – which excludes from patentability products or processes which have been on-sale before the “critical date”, 12 months prior to the filing of the US patent application.

The on-sale bar under the America Invents Act (AIA) even extends to confidential sales, as confirmed by the U.S. Supreme Court in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. In that Decision, it was concluded that the AIA did not narrow the scope of the on-sale bar in patent cases, and that the term “on sale” had a well-settled judicial interpretation that included confidential sales, prior to the enactment of the AIA. More recently, in an appeal to the Federal Circuit – In re Certain High-Potency Sweeteners (Inv. No. 337-TA-1264) – it has also been held that a confidential process could give rise to an on-sale bar. Thus, even confidential sales of an invention deriving from the inventor more than 12 months prior to the filing of the US application are prejudicial to the subsequent patent filing.

Potential consequences of G1/23

One might question whether it is legitimate for an innovator company who has sold a product covered by a trade secret – where the composition and internal structure of the product are not specifically disclosed and cannot be identically reverse engineered – to later apply for patent protection for the same product. A clear benefit to the public of said company pursuing patent protection is the full knowledge of the composition and internal structure of the product and an understanding of how the product is reproduced, which information would be expected to be contained in a (sufficiently enabled) patent application. In general, there is a tranche of European Patent Office (EPO) case law following G1/92 which would appear to give the green light to such a practice. However, there is the potential for the Decision in the new G1/23 referral to disrupt this notion.

Although in the referring case, T483/19, it is only inventive step which is at issue, it seems clear that the referral in G1/23 is not limited to that particular context and a Decision could equally be relevant to the consideration of novelty. This is of course particularly the case if it is decided that the reproducibility criterion is not an essential requirement in order for the commercial product to be considered state of the art (question 1 of the referral), even if its composition and internal structure is not state of the art.    

If it is decided that technical information about a commercial product can be state of the art, even when the product itself may not be analysed or reproduced, then this potentially opens the door for publicly available disclosures of such information (which pre-date the patent filing) to be taken into account from either a novelty or inventive step perspective. This is of particular relevance when considering the closest prior art and technical effects underpinning a claimed invention which form part of the EPO’s problem-solution assessment of inventive step (as we have seen in the referring case, T483/19). It is also likely to be of greater significance when claims are defined by reference to performance parameters, as opposed to purely compositional and structural features.   

In these scenarios, the result could be a shift closer to something resembling an on-sale bar, despite the fact that the commercial product could not be analysed and reproduced prior to the filing of the patent application.

Another interesting element to the referral is the notion that there could be a distinction over when a product may be considered available to the public based on the degree to which its composition and internal structure may be analysed and reproduced. Should it be necessary for its composition and internal structure to be fully analysable and identically reproduced without undue burden (question 3 of the referral) in order for the commercial product to be considered state of the art? If not, where should the line be drawn?

What if, for instance, the commercial product may be analysed and reproduced to a degree that yields a closely related (but not identical) product which shares the same or very similar performance characteristics reported in technical information for the commercial product? Would that then mean that the commercial product itself forms part of the state of the art? If that was the case, then there would again be a shift more towards something resembling an on-sale bar than currently exists at the EPO.

With increasing advances in analytical chemistry (particularly with the potential contributions of AI in the future) understanding what might constitute an “undue burden” for the skilled person to analyse and reproduce the product is clearly a concept that should evolve with the advances in the technology at the disposal of the skilled person. Thus, it also seems possible that what might constitute an undue burden now, may not be considered so in the future.

Impact on IP / commercialisation strategy

If as a consequence of the Decision in G1/23 there is the perception of at least some movement toward an on-sale bar type exclusion before the EPO, then there may be incentive for applicants to consider filing patent applications earlier, or at least before commercialising the products of their innovations. Alternatively, it may prompt a more considered approach as far as product marketing is concerned, and particularly in terms of the content of technical brochures etc., for those innovators who might still wish to seek patent protection after an initial commercial sale of a product covered by a trade secret.

If there is the potential for technical information to be considered state of the art, even where the commercial product to which it relates is not (fully) analysable or (identically) reproducible without undue burden, it may prompt applicants to consider how claims to such products are defined in later filed patent applications. For instance, there may be a preference to avoid defining such products by reference to parameters, if those same parameters are disclosed in technical brochures associated with the commercial product. This may prompt applicants to consider defining products by features of their chemical composition instead, where possible, or possibly even by features of a process used to prepare them.

Alternatively, it may encourage innovators to take additional steps to preserve their trade secrets in preference to pursuing patent protection, albeit at the risk that third parties could independently develop the same technology at some point in the future.  

Watch this space…

A Decision in G1/23 brings with it the possibility of somewhat of a sea change in the way the EPO assesses disclosures of products having compositions and internal structures of varying degrees of analysability and reproducibility. Depending on where the line is drawn in considering whether those products, or published technical information relating to those products, may be considered state of the art, it seems that there is the real possibility for the EPO to inch closer to an on-sale bar type exclusion. This could have an impact on the IP and commercialisation strategies of innovators in numerous technology fields.

Commentary by Partner Nicholas Fox has been featured in  Law360 and World IP Review giving an insight into the implications of the Court of Appeal’s ruling that a member of the public can have access to the evidence and pleadings in the now settled Ocado v Autostore dispute.

Read more on the subject of the ruling by Partners Nicholas Fox and Alexander Robinson below.

The Court of Appeal of the Unified Patent Court (UPC) has now ruled that a member of the public can have access to the evidence and pleadings in the now settled Ocado v Autostore dispute. However, obiter comments in the Court’s decision mean there are still outstanding questions about the Court’s commitment to openness and transparency.

Background to the Decision

On 10 April 2024, the UPC Court of Appeal finally issued a decision permitting a member of the public sight of the evidence and pleadings which had been filed by Ocado in a case brought by Ocado against Autostore

The Ocado and Autostore dispute had been brought by Ocado in June 2023. However, shortly thereafter, the two parties settled the dispute and made a request to withdraw the action and the proceedings between the two parties were declared closed on 8 September 2023.

In the short time whilst the Ocado v Autostore dispute was pending, a member of the public filed a request to be given access to the statement of claim in the case. That request was filed on 15 August 2023 and then subsequently granted by the Court of First Instance in October. However, Ocado appealed the decision granting access and access to the court documents was withheld pending the appeal. The Court of Appeal have now rejected Ocado’s appeal and upheld the original order so that now access to the pleadings has finally been granted.

Concerns about speed and transparency

The decision of the Court is to be welcomed. However, the decision still leaves troubling questions about the Unified Patent Court’s commitment to transparency.

The UPC Court Rules state that written evidence and pleadings shall be available to the public upon “reasoned request”. However, the timeline of the proceedings outlined above demonstrates that it has taken 7 months and 26 days for the Court to process what should have been an administrative matter. This is concerning for a court which has been launched on the promise of speedy and transparent justice. The fact that a party has been able to block access to court documents for such a long period of time, even when a case has been settled, raises serious questions about the ability of third parties to access court documents in anything approaching real-time.

The reality of access to court documents in the Ocado v Autostore case is a far cry from that promised in early drafts of the UPC Court Rules which provided that written evidence and pleadings lodged at the Court would be available to the public for on-line consultation. Why the content of pleadings and evidence before the UPC should be shrouded in secrecy, whereas the content of oppositions before the European Patent Office are freely available, is entirely unclear.

Equally concerning are obiter comments in the Court’s decision which seem to suggest that despite the Court rules not containing any such limitation, Court documents should only be available after the conclusion of a case and that the public should not normally be permitted access to evidence and pleadings whilst a case is on-going unless there is a “direct legitimate interest” in the subject-matter of the proceedings.

The Court’s obiter comments in this respect would seem to be in conflict with the norms set out in the Council of Europe Convention on Access to Official Documents (Tromsø Convention) and the recommendations of the Council of Europe which require limitations on public access to be set down precisely in law. If it was intended that the public should only have access to written pleadings and evidence lodged with the court after a case has concluded, then this should have been made explicit in the wording of the relevant rules. The fact that no such limitation appears in the rules, suggests that there is no justification for any kind of blanket ban.

Rather, access should only be denied if parties to proceedings can establish that there are substantial reasons specific to the case which would mean that permitting third parties access would threaten the integrity of the proceedings.

However, it is difficult to envisage why publication of pleadings in patent infringement and revocation matters would prevent parties from bringing forward arguments and evidence in an impartial and independent manner, without external interference; or why such publication would cast doubt on the integrity of the Court’s deliberations and decisions. Such public access does not appear to threaten the integrity of the EPO’s opposition procedure. Nor does it threaten the integrity of court actions in for example the UK, Sweden or Finland, where Court rules permit third parties access to pleadings and evidence in pending matters.

Mathys & Squire test case

Mathys & Squire filed a test case to secure public access to evidence in the UPC at the end of November 2023. That case was stayed, pending the UPC Court of Appeal’s decision in Ocado v Autostore. Mathys & Squire now has three weeks from the date of the Appeal decision to submit comments on the decision to the judge handling our test case, who will then invite comments from the parties to the main proceeding where we are requesting access. The judge will then rule on the substance of our request and will hopefully confirm the right of third parties’ access to court documents in on-going proceedings.

Although the Ocado v Autostore decision has clarified a number of issues, as the main proceedings had settled long before the case came before the Court of Appeal, the Court was not in a position to settle how access should be decided in relation to on-going proceedings and it looks likely that many of those questions will now be the subject of decisions in our test case.