Friday, 20 April 2018

T 1931/14 - Suitable for?

This case concerns an appeal by a patent proprietor against a decision of the opposition division revoking his patent on the ground of lack of novelty of claim 1.

Claim 1 reads: "A process for producing oxygen to fuel an integrated gasifier combined cycle (IGCC) power generation system  at a rate which corresponds to the power demand of the IGCC power production...wherein...
(a) during reduction of the power demand from the IGCC...liquid oxygen is produced in excess of that required by the IGCC...wherein...
(b) during an increase in the power demand from the IGCC system excess liquid oxygen is withdrawn..."

In line with T 848/93 (GL (2017), F-IV, 4.13), the BoA came to the conclusion that the stated purpose of the process "to fuel an IGCC" is not to be interpreted as a mere suitability of the process for that stated purpose but rather as functional feature of the process. In other words, the BoA sees the feature "to fuel an IGCC" as a limiting feature of the process claim.

Furthermore, the BoA stated that two claimed steps (a) and (b) are so inextricably linked to such stated purpose that the claim must be read as to be limited for it. 

Therefore the fact that the document used in opposition for attacking claim 1 on the ground of novelty did not mention the same application of the claim "to fuel IGCC systems", would appear to be sufficient for the BoA to establish novelty of claim 1 over said document.   

Tuesday, 17 April 2018

T 2340/12 - What the ... is a space energy implosion unit?

The application in this appeal case refers to a device using "space energy" for therapeutic purposes and foodstuff preparation. It was refused by the examining division for lack of sufficiency and lack of technical character. The ED further objected that the term "space energy" was not clearly defined, and that no method of measuring the energy had been described.

To overcome the deficiencies, the applicant submitted a main request in which "space energy" was replaced with the term "torsion field",  along with a number of articles and internet publications intended to establish the clarity of the new nomenclature. As regards measurement, the applicant argued that it was sufficient to be able to measure the effects of the energy on test subjects, as demonstrated by the experimental data. The ED found the experimental support to be unsatisfactory. 

The applicant also submitted three auxiliary requests - likewise involving a change of nomenclature - which were not admitted into the proceedings because of failure to prima facie address the issue of insufficiency of disclosure.

In appeal, the applicant/appellant contested the findings of the ED and questioned their competence to require experimental evidence. The Board upheld the decision to refuse the application under Art. 83 EPC and the decision not to admit the three auxiliary requests. The Board further commented that while there is no provision in the EPC according to which the grant of a patent depends on the applicant filing satisfactory experimental evidence, the provision of such evidence in order to convince the examining division or board of appeal that its findings are incorrect should be viewed as the applicant's right, rather than his obligation.

Thursday, 12 April 2018

T 2101/12 - Non-technical disclosures are prior art

In the appealed decision, D2 (a US patent application) was cited in a reasoning against novelty. One could therefore be led to believe that this document constitutes at least the most suitable starting point for the assessment of inventive step. The board is however of the opinion that such is not the case (r.6.1). The board also does not consider the document mentioned by the appellant, i.e. D3, or other documents cited in the search report, to be more suitable starting points. Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. In the present case, the board holds that the skilled person starts from this prior art method with zero technical features, the problem which consists in the automation of that method being solved entirely with technical means (r.7.15).
The appellant submitted that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03. The board agrees with the appellant that this opinion is not in line with Catchword 2 of T 172/03 (as also relied upon in the Guidelines for Examination G-VII, 2), unless one interprets the expression "technically relevant" in that Catchword in a trivial manner. The board however considers that the interpretation of Article 54(2) EPC given in T 172/03 is incorrect. 
The applicant also requested to refer to the Enlarged Board: In the assessment of the inventive step of subject matter presenting both technical and non-technical aspects, a problem-solution analysis using a publicly known entirely non-technical practice as "closest prior art", notwithstanding the existence of technical teachings in the same field? The Board did not consider this necessary (r.8)

Tuesday, 10 April 2018

J 10/15 - No jurisdiction for Board of Appeal for decisions of receving section during International phase

Where are those missing figures?
The applicant in this case filed a PCT application through the EPO by having a messenger handing in the application at an EPO office in Munich. About two weeks later, the applicant receives a communication that the figures are missing. 
The applicant does not agree, and wants the receiving section to decide that the figures were present. Subsidiary, a request for incorporation by reference under rule 20.6 jo 4.18 PCT is made. The later request is granted, but the former is not. The applicant appeals the case at the EPO.
Unfortunately for the applicant, the Board of Appeal EPO decides that they are not competent to decide the case. The following head note is provided:
Während der internationalen Phase einer PCT Anmeldung ist eine Beschwerdekammer unzuständig, um eine Entscheidung des EPA als Anmeldeamt zu überprüfen.
which translates to:
During the international phase of a PCT application, a Board of Appeal has no jurisdiction to review a decision of the EPO as receiving Office.

Wednesday, 4 April 2018

T 1423/13 - OP at the instance of the EPO

A (belated) Easter picture, with no relation to this case...

In this examination appeal, the Examining Division (ED) warned the Applicant now Appellant that "in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings in the Hague". However, the Applicant did not previously request oral proceedings, and the application was subsequently refused without holding oral proceedings as "the applicant did not request the oral proceedings at any point of the written procedure" and it is therefore "concluded that the applicant's right to be heard has been entirely respected (Art. 113(1) EPC)".

In appeal, the Board however concludes that the applicant had a legitimate expectation that oral proceedings were to be scheduled, and that the course of action of the ED amounted to a substantial procedural violation. As a reminder, Art. 116(1) expressly allows oral proceedings to be arranged "at the instance of the EPO" and thereby "without a request from a party", see GL E III-4.

Friday, 30 March 2018

T 0198/16 - Yea or Nay to Intention to Pay?

Is the mere intention of an appellant to pay the appeal fee, as expressed by reference to EPO Form 1010 ("Payment of fees and expenses") in the Notice of Appeal, enough to authorise the EPO to debit appellant's deposit account (holding sufficient funds), when said  Form 1010 has erroneously not been sent together with the Notice?

In this examination appeal, the Board held - deviating from T 1265/10 - that regardless of whether or not the EPO would have access to sufficient the funds of the party intending to pay, such an intention can never be considered equivalent to an order.

Referring to R 18/13, the Board further found that - different from a mistake made by an assistant - the mistake made by the representative to not explicitly instruct his assistant to pay the appeal fee and to not properly review the electronic receipt is a mistake that cannot be excusedAccordingly, the request for re-establishment of rights was refused.

As a result, the appeal was deemed not to have been filed.

1. The intention to authorise debiting of the deposit account does NOT already allow the EPO to act on such authorisation and carry out such intent where the EPO, under the deposit account system, already holds such money in trust (deviation in particular from T 1265/10, at point 15), (see point 3.4.3 of the quotation from the summons under point 1 of the Reasons).
2. A representative must give express and clear instructions to an assistant to the effect that the appeal fee has to be paid. It is not enough to rely on the assistant's deducing the duty to file the payment form from the notice of appeal, which includes the sentence: "The appeal fee is paid via the enclosed EPO form 1010."

Tuesday, 27 March 2018

T1833/14 - A tough composition

This case concerns an appeal by an opponent against a decision of the opposition division rejecting an opposition filed by the opponent/appellant.
The patent in suit relates to a tougher polymer composition used for making moulded articles with injection moulding. The appellant lodged the appeal on the grounds of an alleged public prior use anticipating granted claim 1 and inventive step.

The appellant argued that a skilled person could have easily reproduced the claimed composition starting from a product which was publicly sold before the filing date of the patent in suit.

However, the BoA stated that mere public disposal of a product does not give the skilled person sufficient information on how to make that product. In summary, the criteria of sufficiency of disclosure for a polymer (or composition) which demand also the disclosure of the method of preparation of such polymer (or composition) in the patent application, must also apply to the reproducibility without undue burden of a product in the market. The appellant did not show that any information in that respect was available before the filing date, thus the BoA could not consider a sample of the publicly available product as being part of the state of the art according to Art. 54(2).

It is also interesting to note that the BoA contested an inventive step reasoning of the respondent (patent proprietor): the comparative examples disclosed in the application as filed did not relate to compositions differing from the claimed composition only in the distinguishing features of the granted claim with the closest prior art(s), thus the effect of the distinguishing feature over the closest prior art(s) could not have been demonstrated based on those examples, and the technical problem originally formulated by the respondent needed reformulation.