Friday, 17 February 2017

T 2602/12: Appellant accused of non-appropriate behavior


In this opposition appeal the Respondent (Opponent) accused the Appellant (Proprietor) of gaining procedural advantages, misleading the public and delaying the proceedings. 
The claim that was granted by the Examining Division had a features that was claimed as "the step xyz is carried out according to a process selected from the group consisting of (i)...., (ii)..., and (iii)....".  In the Opposition proceedings this claim was refused because the process (ii) was considered not to be inventive. 
The decision of the Board relates to a main request wherein the above feature was limited to "the step xyz is carried out according to process (i)". According to the Respondent this request was about equal to a request that was withdrawn during oral proceedings before the Opposition Division. Thus, the Appellant filed a main-request in which one non-inventive alternative of three was removed from the refused claim, while the Appellant withdrew a request to this extent during the first instance proceedings. Is such a main request admissable? Did the Board think this is a procedural advantages, is misleading the public and is delaying the proceedings?
Further, during the Opposition proceedings and during most of the Appeal proceedings, the Respondent did not file inventive step arguments against alternative (i). At oral proceedings they were filed for the first time. What did the Board think about this behavior of the Respondent?



Tuesday, 14 February 2017

T 2117/11 - Devolutive effect of the appeal


The examining division held that the claims relating, on the one hand, to a needle assembly and, on the other hand, to a method of making a needle assembly were not linked by the same special technical features and this raised a non-unity objection. The applicant subsequently filed a new set of further amended claims limited to a needle assembly. The examining division raised further objections under Articles 123(2), 84, 54(1),(3) EPC, and, after being requeste to do so, took as decision according to the state of the file - to refuse. The applicant appealed. With the statement of grounds, the appellant requested that the decision under appeal be set aside and a patent be granted on the basis of a new set of claims  directed to a needle assembly, as annexed to the statement of grounds. In response to the preliminary opinion issued by the Board and attached to the summons for oral proceedings, the appellant filed a new main request directed to a method of making a needle assembly. The Board did not allow this change because the applicant's choice of limiting to the claimed needle assembly rather than keeping the method as well and challenging the non-unity objection entailed that the examination of the application was limited to the selected subject-matter only, i.e. the claimed needle assembly. The decision was consequently based on the set of claims limited to a needle assembly - and this subject-matter thus defines the limit to the power of the Board to examine the appeal.

Sunday, 12 February 2017

T 1440/09 Public availability of document submitted for standardisation



In the past several discussions took place whether or not documents submitted to a standardisation organisation were public. After submitting the document to the standardisation organisation, the applicant put the document on the Internet, and only then was a patent application filed. The Board had the impression that the applicant thought that since the submission to the standardisation organisation was to be regarded as confidential, that this gave protection for a later submission of the patent application (a form of priority). The Board destroyed this dream.

Thursday, 2 February 2017

G 1/15 (2) - The decision on partial priority


The Order was already issued by the Enlarged Board in November last year, but the full decision and its reasoning became available only just now. The Enlarged Board considered the EPC priority provisions of Art. 87(1), 88(2)-(3) and 89, Paris Convention Priority and the FICPI Memorandum in detail to come to its decision. The right to claim priority and its effect/ purpose (reason 4) led the Enlarged Board to conclude that a generic claim encompassing alternative subject matter may not be refused partial priority, provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect. 

Tuesday, 31 January 2017

T 648/15 - Can't appeal and bound by reformatio in peius; No way out?

Can't appeal and bound by reformatio in peius; No way out? 

Only the opponent filed an appeal against the decision of the opposition division to maintain a patent in amended form. The main request of the proprietor was granted, so that he couldn't appeal. 
During the proceedings, the board of appeal finds a clarity problem in the amendments allowed in first instance. The proprietor invokes the exceptions to the prohibition of  reformatio in peius of G1/99 to defend the admissibility of his auxiliary requests. This is interesting since G1/99 only refers to Article 123, not to  Article 84. The board still allows it. 

Friday, 27 January 2017

T 1379/11: combinations of tecnical and non-technical features


In this appeal against a decision of the Examining Division the claims have a combination of technical and non-technical features and this plays an important role in the inventive step reasoning of the Board. The question is whether the applicant has really added something technical or that the claimed method is an obvious implementation of business requirements in a know technical system. In this case there are also some interesting paragraphs about the selection of the closest prior art - the Board writes "The Examining Division made an attempt to apply both criteria... but failed to do so in a convincing manner.".

Wednesday, 25 January 2017

T 1205/13 - A request that was not decided upon


In the summons to oral proceedings before the Examining Division, the Examining Division objected under Art.56 EPC (inventive step). The applicant then replaced those claims with two new sets, which were refused because of deficiencies under Art.123(2) and 84 (extension of subject-matter and clarity) caused by the amendments. In appeal, the applicant filed the original claims as main request. What did the Board do? No decision was taken in first instance about this claim set, as the applicant replaced them before a decision could be taken - the applicant was adversely affected by the refusal, but the refusal related to the replaced claim. Also, the refusal was based on Art. 123(2) and 84, and not on Art. 56 that the Examining Division held against these claims in its preliminary opinion.

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