Friday, 18 August 2017

T 1921/12 Who should sign a 'decision'

In this decision the Board of Appeal is annoyed about the fact that a Rule 140 Correction of a decision of the Examining Division (signed by the whole division) and a Rule 139 Correction of an obvious error (signed only by the primary examiner in the opposition period, i.e. after grant; G 1/10 stopping this process was not yet issued) are not in the public part of the file.
The Board sees the R.139 correction as not valid since no formally correct decision is taken; it would require the signature of the whole Examining Division.   
In the decision several aspects of the problem-solution approach are re-discussed. The Board is also not keen on hearing witnesses. 

Wednesday, 9 August 2017

T 2369/12 - Everything you submit can and will be used against you?

The Examining Division held a particular auxiliary request not to be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 83 EPC).

In the appeal, the applicant now appellant submits a post-published document (Exhibit A) with the title "Efficacy of Enterisol® Ileitis administered to Lawsonia-positive pigs 1 to 6 days of age" and argues that there was no evidence on file that there were serious doubts substantiated by verifiable facts that the application lacked sufficient disclosure, and indeed, that the post-published data contained in "Exhibit A" made it plausible that vaccination with the L. intracellularis vaccine in the face of maternal immunity in young pigs would be effective.

The present case shows the Board scrutinizing Exhibit A and - probably to the dismay of the appellant - concluding that it is in fact Exhibit A which as a whole raises serious doubts on the suitability of the claimed bacteria for vaccination. "Everything you submit can and will be used against you"?

Friday, 4 August 2017

T 488/16 - Not plausible at the filing date

Is it plausible that the compound had the effect?

In this opposition appeal the effect (inhibiting PTK activity) of the claimed compound (dasatinib) was supported with post-published documents: documents (9) and (10) filed during the Examination procedure and documents (36) and (37) filed with the statement of the grounds. 

The application as filed contains a large number of compounds of which one is selected in the claim under appeal. The decision does not contest that the post-published documents show that this compound works, indeed works very well. The question is, whether this was plausible at the filing date. The board maintains the revocation of the patent. 

Monday, 31 July 2017

T 287/14 - Disclaimers: donot try this at home!

Amendments introducing disclaimers have probably led to more pain than joy. Disclaiming subject-matter in the application-as-filed usually is acceptable, but often has a high risk of lacking inventive step. Disclaiming subject-matter not in the application-as-filed led to G 1/03 already quite some years ago and is well-documented in many later decisions as well as in the Guidelines - strict conditions, which can basically only work out well if there is only one Art.54(3) EPC prior right document with a  single, clear disclosure. Disclaiming embodiments in the application as filed led to G 2/10, which has a quite cryptically phrased headnote, but when read as a whole also gives very clear conditions -it usually is possible, as long as it is clear that something remains and that you do not sneakily change to a different inventive concept-  and it is also well documented in the Guidelines. G 1/03 and G 2/10 relate to different cases, so cannot prima facie be considered as somehow conflicting, but Board 3.3.09 made the currently pending referral G 1/16 while handling appeal T 0437/14 asking a.o. whether the G 2/10 decision effects how some aspects of G 1/03 shall be interpreted. The current decision shows again that even of a disclaimer is made in good faith, it can easily be done wrongly and, as here, of the disclaimer is introduced before grant, one may all too easily end up in an inescapable Art.123(2)-123(3) trap... And the trouble was in this case actually not even in how the disclaimers needs to be drafted, but how novelty has to be assessed... which the opponent did correctly, but the examining division and the applicant/proprietor had not/did not... As to the aux requests, Art. 13(1) and 13(3) RPBA prevented further chances to remedy the trouble.

Tuesday, 25 July 2017

T 1153/12 - Lack of sufficiency in a mathematical claim

Claim 1 of this Examination appeal describes on a high level the mathematical processing of an audio signal. The claim comprises, for example, the generation of output channels using a basic matrix or a post matrix. Said matrices are functionally defined and by their configuration elements which  'are acquired by using' a number of parameters. 
The Board does not consider this definition sufficient. The description does not help in further understanding what processing is actually performed. Technicality is  never an issue in this decision, even though all processing seems to be of a mathematical nature. Nevertheless, also in mathematics the invention needs to be explained fully.

Friday, 21 July 2017

J 13/14 - On divisionals and translations...

Translating prohibited?

The present European patent application was filed in English as a divisional application from a parent application which was as an international application filed in German and also published in German. On entry of the parent application before the EPO, a translation into English was filed.

However, filing the divisional application in English turned out to be fatal mistake. 

According to Rule 36(2), a divisional application shall be filed in the language of the proceedings for the earlier application, while providing for an exception in case the latter was not filed in an official language of the European Patent Office, in which case the divisional application may be filed in the (non-official) language of the earlier application while having to provide a translation.

Filing the English translation did not change the language of proceedings of the parent application (which remained German). German is an official language of the EPO, so the exception of Rule 36(2) does not appear to apply. However, one cannot fault the appellant for exploring all legal remedies.


1. For the purposes of Article 76(1), first sentence, and Rule 36(2), first sentence, EPC, a European divisional application of an earlier European patent application which was filed in an EPO official language must also be filed in the EPO official language of the earlier application. Otherwise, it is filed in an inadmissible language. In this case a correction of the language deficiency by means of a translation into the language of the proceedings for the earlier application is neither required under Rule 36(2), second sentence, EPC nor is it even admissible in view of the wording of that provision and the Enlarged Board's decision G 4/08. Nor is it possible for the applicant to remedy the language deficiency in its divisional application by means of a correction under Rule 139, first sentence, EPC or by means of an amendment under Article 123(2) EPC.

2. In accordance with the established jurisprudence of the boards of appeal, a European divisional application which was filed in an inadmissible language cannot be treated as a valid divisional application by analogous application of Article 90(2) EPC.

Tuesday, 18 July 2017

T 1138/12 - Creative opposition issues

In this appeal in opposition several issues came up. The patent proprietor filed a very creative (second) auxiliary request which basically amounted to "Opposition division, tell me which claims (of the first auxiliary request) are allowable". The patent proprietor was also unhappy about the short time it took the opposition division to reach a decision while allegedly not all members were present at the same time. (please note that the decision is 33 pages, so the following is a brief summary!).