Friday, 27 June 2014

T 1577/10 - Keep your eye on the ball



As the world championship is well under way in Brazil, a decision related to a football is appropriate. Claim 1 concerns  "A laminated ball (1) for a ball game". 

The claim contains a feature of which the clarity was questioned in opposition:  a peripheral edge portion of the leather panel is folded toward an inside by about 90° or by about 180°

The word 'about' is suspect in Claim drafting. The guidelines tell us that (F-IV, 4.7)"Particular attention is required whenever the word "about" or similar terms such as "approximately" or "substantially" are used. (...) In each case, the examiner should use his judgment as to whether the meaning is sufficiently clear (...)".

Claim 1 of the main requests was based on a combination of dependent claims (claims 1, 2, 3 and 4 as filed), and amendments taken from the description. 

Given the fact that this claim was amended after grant, even including part of the description, one might fear that the Board will take this opportunity and do a full examination of the Claim, including clarity. 

Interestingly, after this board made its decision during the Oral proceedings on 26.03.2014, but before the decision was published on 16.06.2014, another board referred a question to the Enlarged board which deals with exactly this problem. The question is currently pending before the Enlarged board in referral case G 3/14 - (referred in T 0373/12).
Let's see what this board has to say about the matter.


Reasons for the Decision


3.2 Clarity, Article 84 EPC

3.2.1 The appellant has argued that the feature "a peripheral edge portion of the leather panel is folded toward an inside by about 90° or by about 180°" is unclear as such, and renders the claim unclear, Article 84 EPC.

3.2.2 The Board is aware of the current debate regarding the question whether and to what extent a board has the power under Article 101(3) EPC to examine clarity of amendments in opposition or a subsequent appeal made by a straightforward, literal combination of granted claims in correspondence with their dependency (see T373/12 of 2 April 2014 subsequent to the present decision and referring the question to the Enlarged Board). Whereas it was generally accepted that Article 101(3) EPC authorized the full examination of amendments for compliance with the requirements of the EPC (cf. G9/91, reasons 19) and that this also included those of Article 84 EPC (but not those of Article 82, G1/91) the broad view hitherto was that this applied only to the extent that an amendment introduced a contravention of a requirement, cf. CLBA, II.A.1.4 and T301/87 (OJ EPO 1990, 335) cited therein, more recently T478/09 and T589/09. A differing view has emerged in recent case law, see in particular T1459/05, T459/09, T681/00, T1324/09 and T409/10. T1459/05, T1324/09 and T681/00 held that a Board may exceptionally examine such an amendment for clarity, for example if it prevents a meaningful assessment of patentability, or raises to prominence a contradiction previously hidden. Though T459/09 (followed by T409/10 without comment) considered such amendments to be substantial and thus in principle always open to examination for clarity, there also, the amendment in question brought to the foreground a contradiction between newly juxtaposed features when considered in the light of the description, which would not have been immediately apparent in the granted claims.

3.2.3 In the present case the relevant features concern the peripheral edge of the panel being folded toward an inside by about 90° or by about 180°, which literally repeats the wording of granted claims 2 and 3, each dependent on granted claim 1. Issue is taken with the term "about" and whether the angle should be measured at the middle of the panel or at the edge, meaning that alleged lack of clarity would be intrinsic to the wording of the features rather than arising from a sudden contradiction with other features. Granted claims 2 and 3 are moreover the next highest ranking claims after claim 1 and relate to the most distinctive feature of the two embodiments, the fold angle, and thus can hardly be considered to have been hidden from view in the granted patent. Finally, this particular feature is not critical to the assessment of novelty or inventive step. Therefore, in so far the Board might have been inclined to follow this more recent case law (it is not) it finds that the exceptional conditions of the cited case law do not apply in the present case. Irrespective, the two fold angles distinguish the two embodiments as shown in the figures in a manner that the Board believes the skilled person with his mind willing to understand will be likely to understand with no undue effort. Prima facie therefore such a lack of clarity objection seems of little substance.

3.2.4 For these reasons the Board decided that it did not have the power under Article 101(3) EPC to examine the issue.

This decision has European Case Law Identifier ECLI:EP:BA:2014:T157710.20140326. The whole decision can be found here. The file wrapper can be found here.

Photo by Steven Depolo obtained from Flickr.

Tuesday, 24 June 2014

T 1142/12 - A matter of organisational nature


Can a request by a party to conduct oral proceedings at the EPO in Munich instead of at the branch office in The Hague be denied?

In the decision that forms the subject of the present appeal, the request of the applicant to hold oral proceedings in Munich rather than in The Hague was refused on the grounds that according to Art. 18(2) EPC oral proceedings were to be held before the Examining Division itself and consequently had to be held at the location of the Examining Division to which the case was assigned. In the present case the responsible Examining Division was located in The Hague.

The decision was supported with reference to decision T 1012/03, Art. 10(1), (2)(a) and (b) EPC.

Oral proceedings before the Examining Division were held on 15 December 2011 at the EPO branch at The Hague in the absence of the applicant. The application was found not to meet the requirements of Art. 84, Art. 54 and 56 EPC.

The applicant lodged an appeal against the decision. In the statement of grounds, the appellant focused on the location of the oral proceedings. As main request, the applicant requested that the decision under appeal be set aside with the order to conduct oral proceedings at the EPO in Munich. As auxiliarily request, the applicant requested the following question concerning an important point of law be referred to the Enlarged Board of Appeal in accordance with Art. 112(1)(a) EPC:


"Can a request by a party to conduct oral proceedings at the EPO in Munich instead of at the branch office in The Hague be denied?"

Reasons for the Decision

(...)

1.2 In the present case, the issue relating to the competence of the Board to decide upon the question of the venue of oral proceedings is to be dealt with first, for the reason that if the Board came to the conclusion that it had no competence in this respect, the Board would also have no competence in matters subsidiary thereto or associated therewith, for example the referral of a question to the Enlarged Board of Appeal on that issue.

2. First auxiliary request

2.1 The crucial issue to be considered first is to determine who has the power to decide on the location of oral proceedings, namely, whether such a decision is in the hands of the Examining Division or in the hands of the management of the EPO.

2.2 The reasoning followed by the appellant is based on the assumption that the Examining Division had the power to decide on such a matter, or at least that in particular cases, especially where the applicant presented a request to hold oral proceedings in Munich instead of in The Hague with good reasons, such a request could not be refused.

2.3 This question is obviously of particular importance because on its answer depends the determination of the which body is empowered to review such a decision.

2.3.1 If the Examining Division may decide on the location of oral proceedings on a case by case basis, then it would be obliged to justify its decision to refuse a request for oral proceedings in Munich on the basis of the provisions of the EPC, of the Rules or of the Guidelines and in consideration of the reasons given by the applicant. The reasoning on this issue would thus be part of the contested decision which would therefore be subject to appeal.

2.3.2 Alternatively, if the decision on the venue of oral proceedings was within the competence of the management of the EPO and was thus within the power of the President of the European Patent Office then any challenge to such a decision by a party would in fact be directed against a regulation adopted by the President or somebody acting on his behalf, but not against a decision of the Examining Division and therefore would not fall within the competence of the Boards of Appeal.

2.4 Under the provisions of Art. 18(1) EPC the Examining Divisions are responsible for the examination of European patent applications.

2.5 Chapter IV of the Implementing Regulations relating to the examination by the Examining Division (R. 70a to 72 EPC) provides no indication as to the venue of oral proceedings.

2.6 The provisions of Art. 116(1) and (3) EPC relating to oral proceedings contain no mention as to where oral proceedings are to be held, nor do R. 115 and R. 116 EPC provide any such guidance.

2.7 As a matter of principle, in a democratic organisation, a given body cannot act outside its own sphere of competence as laid down by the applicable law, i.e. the EPC, otherwise its decision would be void.

2.7.1 Nowhere in the EPC can a provision be found suggesting that the Examining Divisions were entitled to decide on matters other than patent applications in accordance with the rules and principles laid down by the EPC.

2.7.2 As stated in decision T 1012/03, which is not contested by the appellant in his submissions in the present case, the practical aspects of the organisation of oral proceedings are a matter relating to the management of the EPO, which lies under the power of the President of the EPO as provided by Art. 10(2) EPC (see point 4 of said decision).

Accordingly the Examining Divisions are clearly not allowed to take a decision, whatever this would be, on this matter.

2.7.3 The mere decisional power of the first instance bodies as well as the Boards of Appeal on this issue extends to the point at which the decision to hold oral proceedings in a specific case is taken. By contrast, the place, the room and even the date are of organisational nature.

2.8 The contested decision based its reasoning on Art. 18(2) EPC.

2.8.1 Art. 18(2) EPC stipulates only before whom oral proceedings must be conducted, namely before the Examining Division. As correctly indicated by the appellant, this provision gives no indication as to the geographical location at which oral proceedings should be conducted and does not empower an Examining Division to take any decision in this respect.

2.8.2 Therefore, the Examining Divisions have no authority according to the EPC to take a decision relating to where oral proceedings are to be held. The consequence is that that issue is not part of the substance of the decision taken by the Examining Division.

2.9 Under the provisions of Art. 21 EPC, the Boards of Appeal shall be responsible for the examination of appeals from decisions of the Receiving Section, the Examining Divisions and the Opposition Divisions, and the Legal Division.

2.9.1 The powers of the Boards of Appeal are thus confined to said defined area which does not include management matters.

2.9.2 Therefore the present Board has no power to challenge the contested "refusal of the request to hold oral proceedings in Munich instead of The Hague". This refusal was merely the expression of the way the EPO is organised whereby in the case that the Examining Division is located in The Hague, oral proceedings are to be held in The Hague and when the Examining Division is located in Munich, oral proceedings are to be held in Munich.

2.9.3 As a matter of general consideration, it may well be that users of the European patent system are dissatisfied with this aspect of the organisation of work within the EPO. However, means other than appeal proceedings have to be found to challenge that issue.

2.10 The respect of the separation of the powers within the European Patent Organisation is a matter of the utmost gravity for it is the first guarantee of a smooth running of this institution.

(...)

3. Request for referral to the Enlarged Board of Appeal

The request for referral to the Enlarged Board of Appeal in accordance with Art.112(1)(a) is to be rejected for the reasons given above.

The question "Can a request by a party to conduct oral proceedings at the European Patent Office in Munich instead of at the branch office in The Hague be denied?" is, as already stated, related to an organisational matter beyond the scope of the power to decide of the Examining Divisions and hence of the Boards of Appeal.

As a consequence, the present Board is not empowered to decide on this issue, and correspondingly is not empowered to refer a question in respect thereof to the Enlarged Board of Appeal.

(...)

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.

Catchword

The question of the venue of oral proceedings is a matter of organisational nature which belongs to the management of the Office pursuant to Art.10 (2) EPC.

When not acceding to a request for holding oral proceedings in Munich instead of The Hague, the Examining Division does not take a decision but only expresses the way the EPO is managed.

Consequently, that issue is not subject to appeal, nor can the Board refer a question on the venue of oral proceedings to the Enlarged Board of Appeal.


This decision has European Case Law Identifier ECLI:EP:BA:2014:T114212.20140408. The whole decision can be found here. The file wrapper can be found here.

Photo by John Morgan obtained from Flickr.

Friday, 20 June 2014

T 2354/12 - A detour to decide on admissibility


A portion of the appeal decision relates to admissibility of late filed documents. Late filed document E6 is admissible because it seems prima facie relevant - this is often the route the Boards follow to decide on the admissibility of a late filed document. However, the admissibility of late file document E7 has not been discussed on basis of the content of the document, but mainly on basis of the what type of document E7 is. Document E7 is an Art. 54(3) EPC document (and has been submitted by the appellant in reply to the summons of oral proceedings). The Board decided on the admissibility of E7 by answering the subsequent question:  "If the document is admitted, does it raise a new ground of opposition?".  This appeal is filed by the opponent against a decision of the Opposition Division.


Citations from the decision:


[...]


Reasons for the Decision

[...]

Admissibility of documents E6 and E7

2. The teaching disclosed in document E6 seeks to make the configuration of a home network computer user friendly "by eliminating the need for any type of user interaction during the configuration process" and deals in particular with the automatic configuration of a computer.
Furthermore, as E6 appears, prima facie, to disclose a feature (ie. the automatic generation of a configuration request on the initial power-up) which according to the contested decision was not known from the documents then on file, its submission with the statement of grounds of appeal can be regarded as a justifiable reaction of the appellant to the findings of the opposition division.

2.1 Hence, despite the fact that E6 was filed only with the statement of grounds of appeal and thus had no part in the first instance proceedings, the Board, considering its relevance, has decided in favour of its admission into the appeal proceedings (Article 12(4) RPBA).

3. Document E7 is a European patent application which was filed before the filing data of the present application, but published after that date. As prior art within the meaning of Article 54(3) EPC, E7 can only be used to support a lack of novelty objection.

3.1 When filing the opposition, the opponent had indicated that the subject-matter of the patent in suit was not patentable under Article 100(a) EPC because of lack of novelty (Article 54 EPC) and lack of inventive step (Article 56 EPC). However, the lack of novelty objection was neither substantiated nor even referred to in the statement of grounds of opposition. This shows that the opponent had actually no reason to invoke Article 54 EPC as a ground for opposition. Lack of novelty was therefore never an issue before the opposition division and has to be regarded as a fresh ground for opposition raised only in the appeal proceedings.

3.2 As held by the Enlarged Board of Appeal in G 9/91 and G 10/91 (OJ EPO 1993, 408, 420), if the patentee does not agree to the introduction of a fresh ground for opposition, such ground may not be dealt with in substance in the decision of the Board of Appeal at all. This conclusion was confirmed by the Enlarged Board of Appeal in its decision G 7/95 (OJ EPO 1996, 626) in which it was furthermore held that when a patent had been opposed under Article 100(a) EPC on the ground that the claims lacked an inventive step, the ground of lack of novelty was a fresh ground for opposition and accordingly could not be introduced into the appeal proceedings without the consent of the patent proprietor.
In the present case, the respondent did not consent to an examination of the novelty of the claimed subject-matter, since this issue had never been substantiated in the opposition proceedings and was in fact a fresh ground for opposition.

3.3 As document E7 would only be relevant for the assessment of the novelty of the claimed subject-matter and a fresh ground for opposition may not be dealt with by the Board without the consent of the proprietor, there is no reason to admit this late-filed document into the appeal proceedings.


[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T235412.20140429. The whole decision can be found here. The file wrapper can be found here.
Photo by Brian Rawson-Ketchum obtained from Flickr.
 

Tuesday, 17 June 2014

T 1486/10 - No room for asking "who is who"



This is an appeal wherein the patent proprietor  argued that the opposition was not admissible because the opponent could not be clearly and unmistakably identified before expiry of the time limit for opposition. The board considered that the indication of the opponent as given in the notice of opposition does not fairly allow room for speculation as to the identity of the opponent.

This appeal was lodged by the proprietor against the decision of the opposition division revoking European patent No. EP 1319299 on the grounds that the opposition was admissible and that the subject-matter of claim 1 of the granted patent lacked an inventive step (Article 100(a) EPC in combination with Articles 52(1) and 56 EPC) having regard to the disclosures of the two prior art  documents considered in combination.

The patent proprietor had argued that the opposition was not admissible because the opponent could not be clearly and unmistakably identified before expiry of the time limit for opposition.

Reasons for the Decision
1. Admissibility of the opposition

1.1 The appellant contends that the opposition should be rejected as inadmissible pursuant to Article 99(1) and Rules 55 and 56(1) EPC 1973 [editor's note: corresponds to R. 76 and R.77(1) EPC], because the erroneous designation of the opponent meant that the opponent could not be correctly identified.

1.2 The appellant's arguments can be summarised as follows:
The opposition was filed with the following wording: "Hiermit wird namens und im Auftrag der Harry Graf Software GmbH, Mainzer Strasse 36, 55411 Bingen am Rhein, Einspruch gegen ... eingelegt.". The designation of the opponent thus corresponds neither to the natural person Harry Graf nor to the legal person Graf Software GmbH, both mentioned in the telephone directory at the address indicated in the notice of opposition (cf. documents A1 and A4 cited during the opposition procedure). As a result, the opponent cannot be clearly and unmistakably identified, since the opponent could be the natural person "Harry Graf", the legal person "Graf Software GmbH", or the natural and legal persons jointly ("Harry Graf und Graf Software GmbH").
The appellant referred in particular to G 3/99, which states that the opponent has to be determined before expiry of the time limit for opposition (cf. G 3/99, point 12 of the reasons and T 25/85, point 6 of the reasons). The appellant argued that a notice of opposition must be objectively clear, ie it must not require speculation to establish which part of the notice was wrong and what the true intention [of the opponent] was. In the appellant's view, the reasons given in the impugned decision were based purely on speculation. In particular, the decision was partly based on the ground that it was a well-known practice in Germany to include the name of an associate in the company name. However, it could not be assumed that this would be known to persons resident outside Germany such as the present appellant. The appellant submitted also that the board in its preliminary opinion concerning admissibility (cf. point 1 of the communication accompanying the summons) had not correctly applied the test that the opponent must be clearly and unmistakably identifiable.
Accordingly, the decision of the opposition division should be set aside and the opposition be found inadmissible.

1.3 The board notes that it is not in dispute that the designation "Harry Graf Software GmbH" is erroneous, because no company of that name existed at the address provided in the notice of opposition.

1.4 Further, the board agrees with the appellant that the identity of the opponent must be clear from the notice of opposition without having to speculate as to the true identity of the opponent.

1.5 However, in the present case, the board considers that the indication of the opponent as given in the notice of opposition does not fairly allow room for speculation as to the identity of the opponent. In particular, the board considers that the erroneous name "Harry Graf Software GmbH" would not plausibly lead to the opponent's designation being construed as either the natural person "Harry Graf" or as joint opponents "Harry Graf und der Graf Software GmbH" instead of the corrected version "Graf Software GmbH".

1.6 In this respect, the wording used in the notice of opposition "Hiermit wird namens und im Auftrag der Harry Graf Software GmbH, Mainzer Strasse 36, 55411 Bingen am Rhein, Einspruch gegen ... eingelegt" (board's underlining) would in the board's view lead the reader to immediately conclude that the opponent is a company (GmbH). This is corroborated by the presence of the word "der" (= the) which is grammatically associated with the feminine noun "GmbH" as the genitive case of the definite article. In the board's view, it is implausible that the opponent is not a company, since then both the beginning and the end of the opponent's designation would have been erroneous. In this respect, filing an opposition in the name of a natural person according to the rules of the German grammar would have resulted in wording which would not include the word "der": "im Auftrag von Harry Graf", or less likely "des Harry Graf".

1.7 It is true that when looking up in the official documents ("Gemeinsames Registerportal der Länder"; cf. document A1 cited in the opposition procedure) in order to check the identity of the opponent one would notice a discrepancy. But irrespective of German naming practices and assuming for the reasons given above that the opponent is a company (GmbH), it would be immediately noticed that a GmbH existed at the given address with almost the same name, ie "Graf Software GmbH". Hence, it would be concluded, without any need to speculate, that the opponent was actually "Graf Software GmbH" (which in the above-cited German sentence would read "... der Graf Software GmbH" following the clause "im Auftrag" (i.e. in the name of) and that the discrepancy (ie the presence of the additional word "Harry") was the result of an error, which is all the more plausible considering that document A2 cited in the opposition procedure indicates Harry Graf as being the founder of the Graf Software GmbH.

1.8 The other possible identity of the opponent proposed by the appellant, ie jointly "Harry Graf und der Graf Software GmbH", in the board's view is simply too far-fetched to be seriously contemplated by the reader.

1.9 The board notes in passing that the European Patent Register gives the opponent's correct designation whereas in the file there is no mention of an amended entry in this respect. Thus the board cannot exclude that the opponent's correct name, ie without "Harry", had been entered into the register by the EPO when the opposition was filed, which underscores the obviousness of the correction. In its decision, the Opposition
Division noted that "Errors in a designation can be corrected pursuant to Rule 88 EPC 1973 [editor's note: R. 139 EPC], first sentence, at any time (T 828/98)" and held that the correct name of the opponent was "Graf Software GmbH" (cf points 2.4 and 2.10). The board additionally notes that the error in question is of the kind which could also have been dealt with under Rule 56(2) EPC 1973 (Rule 77(2) EPC), if the Opposition Division had noted the deficiency and had issued an invitation to remedy it (cf T 219/86, point 8 of the reasons).

1.10 The board concludes that there is no reason to set aside the opposition's division on the basis of this matter. The opposition is therefore admissible, since the other requirements concerning admissibility are met, which is in any case not in dispute.


2. Main request - claim 1 - novelty and inventive step
[...]

3. Remittal
3.1 The primary purpose of these appeal proceedings, as pointed out in board's communication accompanying the summons, is to examine the correctness of the opposition division's decision. In particular, this concerns the questions of admissibility of the opposition, novelty with respect to the disclosure of E6, and inventive step with respect to the disclosures of E6 and E44.

3.2 In view of the board's finding that these matters do not prejudice the maintenance of the patent, the decision under appeal has to be set aside. However, the board notes that the notice of opposition mentions a large number of other documents not considered in the decision of the opposition division in respect of the ground of opposition under Article 100(a) EPC. The ground of opposition based on Article 100(b) EPC also has not been considered by the opposition division.
In order that these matters, insofar as deemed necessary, can be considered by the opposition division, the board decides to remit the case for further prosecution (Article 111(1) EPC).

4. Auxiliary request
[...]


5. Costs
[...]

6. Admissibility of E50 and E51
[...]

7. Conclusion
The opposition is admissible. However, the ground of opposition under Article 100(a) EPC, insofar as based on lack of novelty with respect to E6 or lack of inventive step with respect to E6 combined with E44, does not prejudice the maintenance of the patent. The decision under appeal is therefore to be set aside and the case to be remitted for further prosecution.

Order
For these reasons it is decided that:
- The decision under appeal is set aside.
- The case is remitted to the opposition division for further prosecution.

- The requests for a different apportionment of costs are rejected.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T148610.20140320. The whole decision can be found here. The file wrapper can be found here. Photo by Ernesto obtained via Flickr.


Thursday, 12 June 2014

T 2599/11 - Re-instating broader claims in opposition appeal



This is an appeal by the patent proprietor against a decision of the Opposition Division. An issue to be resolved was whether the proprietor was allowed at this stage to file a request with a broader claim than decided by the Opposition Division.

Reasons for the Decision
1. Admissibility of the appeal, Article 110 and Rule 101(1) EPC
1.1 With the statement setting out the grounds of appeal the appellant had filed a main request and first and second auxiliary requests, all broader in scope than the claims defended by the appellant before the opposition division.
The respondent has argued that these requests were inadmissible, since they were not subject of the decision under appeal, and that therefore the appeal was inadmissible.
However, whether the appeal is admissible or not, does not depend on the admissibility of these requests, but on the requirements Rule 101(1) EPC refers to.
1.2 Rule 101(1) EPC ("Rejection of the appeal as inadmissible") stipulates that if the appeal does not comply with Articles 106 to 108, Rule 97 or Rule 99, paragraph 1(b) or (c) or paragraph 2 EPC, the board of appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 EPC has expired.
[…]
It follows from the above that the appeal complies with the relevant legal provisions listed in Rule 101(1) EPC and is therefore admissible.

2. Admittance of the sole request of the appellant
2.1 The sole request was filed after the statement of grounds of appeal. Therefore it has to be decided whether this request can be admitted into the proceedings according to the Rules of Procedure of the Boards of Appeal (RPBA).
2.2 In principle the statement of grounds of appeal shall contain a party's complete case which has to be taken into consideration by the board pursuant to Article 12(2) RPBA, if it does not hold facts, evidence or requests inadmissible which could have been presented or were not admitted in the first instance proceedings (Article 12(4) RPBA). Nevertheless, this does not mean that amendments to a party's case are excluded from the appeal proceedings. Rather they are allowable under the requirements of Article 13(1) RPBA, namely under the discretion to be exercised by the board with respect to the complexity of new submissions, the current state of the proceedings and the need for procedural economy. Moreover Article 13(3) RPBA rules that amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the board or the other parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.
2.2.1 The appellant's case was set out in the statement of grounds of appeal dated 27 March 2012 in which the patent was defended inter alia with a first auxiliary request. After having been filed its case, the appellant amended its first auxiliary request insofar as in claim 1 the word "flow" was replaced by "floor", the expression "characterized in that" was moved and claims 21, 22 and 32 to 39 were deleted (cf claims 1 to 30 of auxiliary request Ib filed on 18 June 2013). With the amendments mentioned in point III above, this request finally became the sole request in the appeal proceedings.
2.2.2 Exercising its discretion in line with the limits set out above the board considers that these amendments are marginal as they can be understood effortless and legally assessed. Furthermore there is no risk of misunderstanding of the amendments by the respondent and the board as well and moreover the amendments do not affect the substance of the claimed matter. Therefore it can reasonably be expected that all participants of the procedure are in a position to deal with the amendments easily and without adjournment of the oral proceedings (Article 13(3) RPBA).
2.3 The admittance of the sole request into the appeal proceedings under Article 13(3) RPBA however, does not per se mean that there are no further hurdles to overcome with respect to its admissibility. Since pursuant to Article 12(4) RPBA it remains to decide whether this request has to be considered as inadmissible for the reason that it could have been presented or was not admitted in the first instance proceedings before the opposition division.
2.3.1 The board has no doubt that the sole request could have been filed already before the opposition division, because the arguments that were discussed in the appeal proceedings regarding inventive step were already raised with the respondent's notice of opposition. Apart from this the sole request's claims correspond in substance to claims 1 to 20, 23 to 31 and 39 of request A at stake in opposition proceedings, which was filed on 25 June 2010, but later withdrawn in the oral proceedings before the opposition division and subsequently substituted by requests B to E, on which the opposition division delivered at the end its decision. Nevertheless, the board exerted its discretion to admit the sole request of the appellant to the procedure for the following reasons:
2.3.2 The purpose of the opposition appeal proceedings is mainly to give the losing party the possibility of challenging the decision of the opposition division on its merits, cf decision G 9/91 (OJ EPO 1993, 408) and opinion G 10/91 (OJ EPO 1993, 420), point 18 of the reasons. This implies that appeal proceedings are not about bringing an entirely fresh case. Rather, the decision of the board of appeal will in principle be taken on the basis of the subject of the dispute in the first instance proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings which in principle confines the parties range to amend the subject of dispute in second instance proceedings (T 1705/07, point 8.4 of the reasons).
2.3.3 In this regard the respondent has submitted that the appellant was not allowed to file requests that were broader in scope than the request on which the decision was based, since the function of appeal proceedings is to give a judicial decision upon the correctness of the decision taken by the opposition division.
2.3.4 Contrary to the submissions of the respondent the present board is of the opinion that the purpose of the appeal proceedings as defined in G 9/91 and G 10/91 does not prevent the appellant from submissions and requests which after revocation of its patent by the opposition division revert to a more broadly worded version in appeal proceedings than the claims defended in opposition proceedings, if these broader claims do not amount to a completely fresh case.
2.4 Thus, with respect to Article 12(4) RPBA the board had to consider whether the non-filing of the sole request or the withdrawal of the similar request A in the opposition procedure prevented the opposition division from giving a reasoned decision on the critical issues, thereby compelling the board either to give a first ruling on these issues or to remit the case to the opposition division, cf Case Law of the Boards of Appeal of the EPO, 7th edition 2013, IV.E.4.3.2 c).
2.4.1 In this context the respondent referring to decision T 361/08 has argued that the first auxiliary request filed with the statement of grounds of appeal was to be rejected as inadmissible. In this decision (see point 13 of the reasons, last paragraph) the board stated that the fact alone that the main request in question was submitted and subsequently withdrawn in the first instance proceedings was a sufficient reason not to admit this request into appeal proceedings. The present board, however, does not subscribe to this general statement but it endorses the more restricted statement in the third paragraph of point 14, that it is not the patentee's right to revert to granted claims if these claims did not form a basis for the decision under appeal because the request comprising these claims was withdrawn in the first instance proceedings.
2.4.2 In the present case, claim 1 of the sole request did indeed form a basis for the opposition division's decision. As it is clear from the facts and submissions point IV, the opposition division decided on inventive step of auxiliary request E and revoked the patent after the broader requests A, filed on 25 June 2010, and B, C and D had successively been withdrawn in the course of the oral proceedings. Claim 1 of auxiliary request E is a combination of granted claims 1, 23 and 26, whereas claim 1 of the sole request in appeal proceedings is a combination of granted claims 1 and 23. Hence, it is broader than claim 1 on which the opposition division decided. However, this does not exclude the appellant from defending its patent on the basis of the sole request.
2.4.3 Since all features of claim 1 of the sole request are present in claim 1 of request E which formed the basis of the impugned decision and on which the opposition division came to a negative finding of its subject-matter regarding inventive step, the opposition division has also expressed itself - at least implicitly - on the subject-matter present in the sole request. Therefore the board is of the opinion that the present case is neither a fresh case in the sense of G 9/91 and G 10/91 nor a case which Article 12(4) RPBA intends to avoid by granting the board the discretionary power not to admit requests which could have been presented in the first instance proceedings. Finally it should be noted that the critical issues in the opposition and the appeal proceedings were identical in so far as the question had to be answered whether the claimed subject-matter involves an inventive step in view of documents D8 and D3 or not.
2.4.4 In conclusion it is summarized that the sole request of the appellant does not bring an entirely fresh case and the decision of the board can be taken on the basis of the subject of dispute in the first instance proceedings. For these reasons the sole request was admitted into the proceedings.


This decision has European Case Law Identifier: ECLI:EP:BA:2013:T259911.20131126. The whole decision can be found here. The file wrapper can be found here.

Tuesday, 10 June 2014

T 1141/10 - Sufficient Identity





In this opposition appeal an insufficiency objection (Art. 83 EPC) was raised. Claim 9 requires a collagen like material prepared by genetic engineering having "an amino acid sequence equivalent to that occurring in nature for collagen, wherein equivalent implies amino acid identity of at least 80%".

The board takes care to distinguish sufficiency from a clarity (Art. 84 EPC).

Reasons for the Decision


(...)
Article 100(b) EPC; Article 83 EPC

5. Although Article 100(b) EPC was an original ground of opposition, there is no decision of the opposition division on this article in the decision under appeal.

5.1 In a first decision dated 12 January 2007, the opposition division decided that the main and sole request fulfilled the requirements of Article 83 EPC. In the First Appeal, the respondent/opponent submitted arguments to contest the decision of the opposition division on Article 83 EPC. There was, however, no reasoned decision of the board on this issue in the decision T 98/07 of the First Appeal.

5.2 After the board's remittal of the case for further prosecution, both the opposition division and the patentee considered that the board had decided on Article 100(b) EPC/Article 83 EPC and that it was not an issue in the further prosecution of the case. This was contested by the opponent in opposition proceedings and in the present appeal proceedings.

5.3 In the light thereof, the board considers the ground of opposition based on Article 100(b) EPC/Article 83 EPC to be part of the present appeal proceedings and the parties' arguments on this ground are to be examined by the board.

6. The respondent's objections under this article arise essentially through the presence of ambiguity in the claims, in particular concerning the features "amino acid identity of at least 80%" (claim 9) and "being free of helix structure" (claims 1 and 9) (cf. point XIX supra).

6.1 According to the case law of the Boards of Appeal, care has to be taken that an insufficiency objection is not in fact an objection under Article 84 EPC. A distinction has to be made between the clarity of what has been disclosed and the clarity of what is claimed. For Article 83 EPC, it is necessary to show that the feature is so ill-defined that the skilled person is not able, on the basis of the disclosure as a whole and using its common general knowledge to identify (without undue burden) the technical measures or suitable parameters necessary to solve the problem underlying the patent (cf. inter alia, T 593/09 of 20 December 2011, Catchword and point 4.1.4 of the Reasons, T 608/07 of 27 April 2009, point 2.5.2 of the Reasons).

7. As for the objected first feature, the following points are of relevance:

7.1 The objection against the first feature was raised with the respondent's letter of 23 November 2009 (page 18) for the first time in the proceedings. Although a similar feature was present in product claim 50 as granted, it was always discussed in the context of Article 84 EPC and its relevance for a broad interpretation of the claim under Article 54 EPC. In these submissions, reference was made to prior art disclosing several methods for determining the level of sequence identity and to sequence alignments with known sequences occurring in nature for collagen. No problems were encountered to argue against the novelty of the claimed subject-matter in these earlier stages of the proceedings. These arguments are also submitted by the respondent under Article 100(a) EPC/Article 54 EPC in the present appeal proceedings (infra).

7.2 There is obviously no information on new (non-disclosed) sequences of collagen occurring in nature and thus, the respondent's argument is based on mere assumptions, namely the existence of new collagen sequences that might be significantly different from the known collagen sequences.

8. As for the objected second feature, the following points are of relevance:

8.1 The method cited in the patent and disclosed in document D25 allows a skilled person to identify and measure the presence of (collagen, gelatin) helix structures. Although the selection of several parameters influences the presence of these structures, these parameters are identified in document D25 (temperature, pH, ionic strength, concentration, etc.) and conditions disclosed for which the presence of these structures is most probable.

9. In view thereof, the board considers the Main Request to fulfil the requirements of Article 83 EPC.

(...) 

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T114110.20140311. The whole decision can be found here. The file wrapper can be found here. Photo by Maria Teresa Ambrosi obtained via Flickr.


Friday, 6 June 2014

T 620/13 - Notice of appeal implicit or inferrable?


Photo by Pete as obtained from Flickr.

The present decision concerns the admissibility of an appeal against the decision of the Opposition Division.
According to R.99(1) EPC, the notice of appeal shall contain:
(a) the name and the address of the appellant (...);
(b) an indication of the decision impugned; and
(c) a request defining the subject of the appeal.

According to R. 101(1) EPC, if the appeal does not comply with (...) Rule 99 1(b) or (c), the Board of Appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 has expired.
R. 101(2) EPC provides a potential fail-safe, in that if the Board of Appeal notes that the appeal does not comply with Rule 99, paragraph 1(a) [emphasis added], it shall communicate this to the appellant and shall invite him to remedy the deficiencies noted within a period to be specified.

In the present case, the appellant attempted to file the notice of appeal using EPO's online filing software, which resulted in an attachment of 
a Spanish language printout of an online bank transfer order with the handwritten addition: "011 - Fee for appeal E08021319.2" and further the name of the patent proprietor, also legibly handwritten.
The Board rejected the appeal as inadmissible since the requirements of Rule 99(1)(b) and (c) EPC are not met, despite the appellant arguing that the appeal could not be rejected as inadmissible before the appellant was given a chance to correct the deficiencies under Rule 101(2) EPC, and (in a later communication) that the decision impugned had been implicitly identified and that the subject of the appeal could be be implied from the overall intention of the appellant.
Summary of Facts and Submissions
II. The representative of the opponent, now appellant, filed a document by means of the electronic filing facilities of the EPO on 13 February 2013. The transmission of the document resulted in the generation of another document by the EPO's online filing software, entitled "Letter accompanying subsequently filed items" in the electronic file (the "PHOENIX electronic file system") of the EPO and referred to hereafter as the Appeal Letter. Under the heading : "The document(s) listed below is (are) subsequently filed documents pertaining to the following application:" it indicated the application number and the applicant's reference identified in the appropriate boxes followed by a table listing attached files, fee payments and mode of payment as well as identifying any attachments. In the case at hand the attachment was identified as "Notice of Appeal" with the original file name recorded as "INGRESO TRANSFER E08021319.2 APPEAL.pdf", assigned the assigned file name "APPEAL.pdf". The attachment was a document in pdf format which, on the face of it, is a Spanish language printout of an online bank transfer order, for the amount of 1240 EUR, with the following handwritten addition: "011 - Fee for appeal E08021319.2" and further the name of the patent proprietor, also legibly handwritten. The generated Appeal Letter further referred to the appeal fee and its amount, as well as mode of payment by transfer to a Spanish bank account of the EPO. The Appeal Letter further included the name of the representative and his address, and data of the electronic signature of the representative.
The appeal fee was paid with an effective date of 13 February 2013.
III. The Registrar of the Board sent a standard communication (EPO Form 3204) to the appellant with a posting date of 15 March 2013, indicating the commencement of proceedings before the Board. This communication contained the following: "The letter dated 13.02.2013 filed by the opponent against the decision of the European Patent Office of 13.12.12 has been referred to Board of Appeal 3.2.04.".
IV. A statement of grounds of appeal dated 15 April 2013 were filed online on the same day, followed by a confirmation copy including copies of cited prior art and received on 22 April 2013. The patent proprietor, now respondent filed a substantive response to the issues raised in the grounds by letter dated 12 August 2013, also filed online.
V. A communication of the Board under Rule 100(2) EPC was issued on 27 September 2013. The Board pointed out that no document was apparent in the file which could be considered as a notice of appeal, and that the particulars of the appeal only became clear from the grounds of appeal. The document filed ostensibly as notice of appeal was in Spanish, without translation, so that it should be deemed not to have been filed. Prima facie it was also not a notice of appeal, but merely a copy of a transfer order. The fee payment could not substitute the notice of appeal, according to settled case law. Therefore, the appeal was expected to be rejected as inadmissible under Rule 101(1) EPC.
VI. The appellant responded to the communication of the Board by a telefax dated and received 4 December 2013, and requested a reconsideration of the finding that the appeal did not comply with Rule 101 EPC. According to the appellant, the Appeal Letter contained all necessary data, such as the representative and his address, patent number, the fact of the fee payment. This document was in English, and clearly expressed the dissatisfaction of the opponent with the appealed decision. The other document was a mere proof of the corresponding fee. The fee payment had to be understood as the intention to appeal the relevant decision under Article 108 and Rule 99(1) EPC. Secondly, the Registry had not complied with Rule 101(2) EPC, in that it did not call the attention of the appellant to the deficiencies in the appeal and did not set a time limit to correct the identified deficiencies. The appellant's attention was first drawn to the problem by the Communication of the Board, and as a reaction to this Communication the appellant submitted with the response a correct Notice of Appeal, pursuant to Rule 101(2) EPC. The appeal could not be rejected as inadmissible before the appellant was given a chance to correct the deficiencies under Rule 101(2) EPC. It was requested to continue the appeal proceedings. The response of the appellant contained in an Annex a Notice of Appeal, dated 4 December 2013 and written in English.
VII. A second communication of the Board under Rule 100(2) EPC was issued on 20 December 2013. The Board commented on the position of the Appellant that the Appeal Letter should be considered as the valid notice of appeal and it indicated that the appeal still appeared to be inadmissible essentially for the reasons set out in this decision, namely that the Appeal Letter does not meet the requirements of Rule 99(1)(b) and (c) EPC.
VIII. The appellant responded to the second communication of the Board by a telefax of 28 February 2014, and argued that the decision impugned must have been implicitly identified in the Appeal Letter as the Registrar was able to deduce from the Appeal Letter the necessary data, as attested by its communication of 15 March 2013 (see point III above). Case Law of the Boards of Appeal support that the subject of the appeal can also be implied from the overall intention of the appellant. Specific reference was made to several decisions of the Boards of Appeal.
Reasons for the Decision
Admissibility of the appeal
(...)
2. The purported notice of appeal - the Appeal Letter - was received in the EPO within the time limit for filing the notice of appeal, and the appeal fee was also paid in time. The fact that the Appeal Letter is a computer generated form is immaterial, as electronic filing is an admissible form of filing documents and the Board is satisfied that it has been signed with an enhanced electronic signature (Article 5(2) and 7(4) of the Decision of the President of the EPO dated 26 February 2009 concerning the electronic filing of documents, OJ EPO 2009, 182, for a more recent publication see: Supplementary publication to OJ EPO 1/2014, 98). As such, it must be taken to have been sent with the knowledge and approval of the party sending it. The crucial issue is whether the Appeal Letter complies with the requirements of Rule 99(1)(b) and (c) EPC for a notice of appeal. As indicated in the communication of the Board (see point VII above) the Appeal Letter does not include anything that the Board may recognize as an indication of the decision impugned or a request defining the subject of the appeal, and thus it does not meet the requirements of Rule 99(1)(b) and (c) EPC.
3. The Board holds that the clear wording of Rule 101(1) EPC leaves no choice but the rejection of the appeal as inadmissible if the requirements of Rule 99(1)(b) and (c) EPC are not met in due time, and the Board has no power to ignore these clear and unambiguous provisions of the EPC. It is also not possible to allow a correction of these formal errors in the notice of appeal by setting a time limit to the appellant once the two month time limit under Article 108 EPC for filing a notice of appeal has expired, as explained below.
4. As to the requirements of Rule 99(1)(b) EPC, the appellant argues that these were fulfilled by the Appeal Letter, as the impugned decision had obviously been properly identified as could be inferred from the Board's communication of 15 March 2013 (see point III above). As to the requirements of Rule 99(1)(c) EPC, the appellant argues that the subject of the appeal could be inferred from the overall circumstances and the apparent intention to appeal.
5. The Board does not accept these arguments. The question is not whether a department of the EPO, such as a Board of Appeal is able to deduce with a relatively high probability that a party intends to appeal a decision and which decision that might be. Rather, as a question of principle, the notice of appeal is a legal declaration or legal statement made by a party to a proceeding before the EPO, and as such it must contain an unambiguous, clear and most of all, explicit statement, which is recognisable as a legal statement, concerning both the identification of the impugned decision and the subject of the appeal (see also J 19/90 of 30 April 1992, point 2.1.3 of the Reasons).
6. As to the required indication of the impugned decision (Rule 99(1)(b) EPC), the Board does not find anything in the Appeal Letter itself which could be considered to be such an indication. It is immaterial that the Registrar was able to establish that a decision was being appealed and on the face of it was able to identify which decision that might be, so that she was also able to issue a communication on EPO Form 3204, informing the parties of the commencement of an appeal and the allocated appeal number. That is the sole, stated purpose of such a communication. In no way does such a communication reflect on whether or not an appeal has been validly filed, i.e. meets all formal requirements for admissibility, or whether or not the appeal is well founded, issues that are only considered and decided once the appeal procedure has commenced. In particular therefore the issuing of the communication on Form 3204 marking commencement of appeal proceedings neither establishes nor confirms that the Appeal Letter actually complied with Rule 99(1)(b) EPC, even if it refers to a (presumably impugned) decision. The Board adds that the date of the last decision is in fact filled in - on the basis of the application or publication number - automatically by the internal software used by the Registrars, among others for the preparation of Form 3204. The date can be overwritten if necessary. Presumably the decision was also "identified" in this manner, after the Registrar noted the appearance of the word "appeal" in the Appeal letter) and proceeded to prepare and send Form 3204.
7. Concerning the required request defining the subject of the appeal, the Board recognises that such a request may indeed be implicit as stated by the Appellant on page 3 of the letter of 28 February 2014 in reference to the "guidelines" in the Case Law of the Boards of Appeal of the EPO (CLBA), 6th Edition 2010. The Board takes this reference to be to Chapter VII.E.7.5.2 (b) of the 6th edition of the CLBA, in particular decision T 358/08, mentioned on page 852 last paragraph, see Catchword and point 5 of the Reasons. In light of the totality of this decision it is clear that T 358/08 was concerned with the question how the required "subject of the appeal" introduced in Rule 99(1)(c) EPC related to the "extent of the appeal" required by corresponding previous Rule 64(b) EPC 1973. Thus, according to the correct reading of that decision by the present Board, what may be "implicit" is that part of the request which indicates whether the decision is to be set aside in whole or only in part. Otherwise decision T 358/08 lends no authority to the argument that there need not be any request at all, a situation which did not occur in that case, see point III of the Summary of Facts and Submissions. Indeed, such an argument would imply that a document clearly identifiable as a Notice of Appeal could actually be dispensed with, which would rather erode the regulatory intent and purpose of Rule 99(1) EPC. Finally, all case law cited by the Appellant regarding implicit requests assumes that the impugned decision is identifiable in a notice of appeal.
(...)
11. To put it simply, if the Board were to accept that the totality of the circumstances on their own, i. e. in the absence of any explicit request or statement to appeal were sufficient, then it would also have to accept that a mere fee payment is also sufficient to find an appeal admissible, contrary to established case law (see CLBA 7th Edition 2013, Chapter IV.E.2.5.4). Obviously, in most cases the mere payment of the appeal fee and its stated purpose as an appeal fee would be perfectly suitable to derive therefrom an intention to appeal. Furthermore, as long as at least an application or publication number is indicated with the payment (as is customary), the presumed decision impugned could also be safely identified in the overwhelming majority of the cases. In this regard, the present Board follows decision J 19/90 (supra), which found that even if the overall content of some documents accompanying the payment include all necessary data and clearly indicate that the purpose of the payment is an appeal (in case J 19/90 the EPO Form 1010 recommended and provided by the EPO was examined in this regard), this cannot substitute a clear and explicit statement or request expressing the will to appeal, see point 2.2.2 of the Reasons.
12. The Board also has no authority to accept the Notice of Appeal subsequently filed 4 December 2013 (see point VI above), as if it had been filed in time. This latter would only have been possible following a request for re-establishment of rights as foreseen by Article 122 EPC.
(...)
14. In the light of the above the Board concludes that the requirements of Rule 99(1) (b) and (c) EPC are not met.
Order
For these reasons it is decided that:
The appeal is rejected as inadmissible.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T062013.20140522. The whole decision can be found here. The file wrapper can be found here.

Tuesday, 3 June 2014

T 607/10 - Change of plans



Photo obtained from FreeDigitalPhotos.net

This is an appeal by the patent proprietor against a decision of the Opposition Division. 

The opponent, respondent in this appeal, only substantiated an objection under inventive step against claim 1 of the main request based on document E19 as the closest prior art which is combined with document E26. For the 1st, 2nd and 3th request document E26 was selected as closest prior art which was combined with E19 (and for the 2nd and 3th request, alternatively, with E4)
In a communication the Board expressed doubts whether E19 was a particularly appropriate choice as closest prior art. 
In his submissions to the oral proceedings, probably inspired by the communication of the Board, the opponent changed his line of attack by modifying his arguments: for the main request E26 was selected as closest prior art and, according to the opponent, document E19 provides the features of claim 1 that are not present in E26. 
The proprietor informed the Board that "he will not attend the oral proceedings".

Citations from the decision:


Catchword: In deciding whether a new argument has the effect of amending a party's case within the meaning of Article 13(1) RPBA it must be established on a case-by-case basis whether the new argument is a departure from, or just a development of, the original arguments filed with the grounds of appeal or the reply thereto (see point 4.1.3 of the Reasons).


Reasons for the Decision

(...)

4. Inventive Step: Main Request

4.1 Admissibility of a new line of argument

4.1.1 In the reply to the statement of grounds of appeal, the opponent argued that the subject-matter of claim 1 of the main request did not involve an inventive step having regard to document E19 (seen as the closest prior art) in combination with document E26. At oral proceedings before the Board the opponent stated that document E19 was not to be regarded as the closest prior art, and presented a different argument based on document E26 (seen as the closest prior art) in combination with document E19.

4.1.2 Article 12(2) RPBA requires that the reply to the statement of grounds of appeal shall contain a party's complete case, and should specify expressly all the facts, arguments and evidence relied on. Article 13(1) RPBA provides that any amendment to a party's case after it has filed such a reply may be admitted and considered at the Board's discretion.
In decision T 1621/09 a detailed analysis of the implications of Articles 12 and 13 RPBA was set out, in which inter alia the following conclusion was reached:
- "new arguments, even when based on facts and evidence already in the proceedings, can have the effect of altering a party's case: the facts and evidence relied on can be assembled in different ways using different arguments. On the other hand, there will clearly be many situations where a new argument does not change a party's case. For example, it may be just be a different way of looking at the same point." (T 1621/09, point 9 of the Reasons.)

4.1.3 The present Board considers that in deciding whether a new argument has the effect of amending a party's case within the meaning of Article 13(1) RPBA it must be established on a case-by-case basis whether the new argument is a departure from, or just a development of, the original arguments filed with the grounds of appeal or the reply thereto. (See also T 1621/09, point 9 of the Reasons.)

4.1.4 In the present case, the new argument cannot be seen as merely a further development or elaboration of the opponent's previous position. The new analysis is based on a different choice of closest prior art (document E26 instead of E19), and this in turn means that, compared to the previous argument, it is necessary to consider a different set of distinguishing features, a different objective problem to be solved and different reasons (based now on document E19) why the skilled person would find it obvious to arrive at the distinguishing features having regard to the prior art.
This new argument must therefore be seen as constituting an amendment to the opponent's case within the meaning of Article 13(1) RPBA, which may be admitted and considered only at the discretion of the Board.

4.1.5 A further complicating factor is that the proprietor was not present at the oral proceedings when the question of amendment arose, although duly summoned.
An analogous problem arose in T 1621/09 (see point 40 of the Reasons) which prompted the board in that case to analyse the relationship between Articles 13 and 15(3) RPBA, and in particular the issue of "the amendment to a party's case at oral proceedings in the absence of the party prejudiced." (See point 40 et seq. of the Reasons.)
The conclusion drawn, which is endorsed by the present Board, was the following:
- "The Board therefore concludes that it remains a matter for the Board's discretion to allow an amendment to a party's case in the absence of the prejudiced party. The absence of the prejudiced party is a factor to be taken into account but does not prevent the board from allowing the amendment and proceeding to reach a decision on the basis of the case as now amended." (See point 44 of the Reasons.)

4.1.6 In the present case, the Board, in the exercise of its discretion, decided to admit the new arguments put forward by the opponent. The reasons for this are as follows:
a) In its communication under Article 15(1) RPBA (which also forms part of the appeal proceedings according to Article 12(1)(c) RPBA), the Board expressed doubts whether a convincing argument could be based on documents E19 plus E26, and indeed whether document E19 was a particularly appropriate choice as closest prior art. It was also noted that the opponent's argument based on the combination of documents E26 (seen as closest prior art) and E19 against claim 1 of the first auxiliary request would logically appear to apply to claim 1 of the main request also (as this claim included all features of claim 1 of the main request plus one extra feature). The new arguments of the opponent can therefore be seen as having been raised in response to the communication of the Board.
b) In the same communication, the Board indicated that the issues mentioned in the previous paragraph might be discussed at oral proceedings, and hence the proprietor could have foreseen that the argument which the opponent is now relying on might well become a subject for discussion. In fact, the proprietor did submit further comments on the combination of documents E26 (seen as closest prior art) and E19 in the subsequent letter dated 10 March 2014, albeit in the context of the first auxiliary request.
c) Moreover, even before the Board sent the communication under Article 15(1) RPBA, the proprietor had already commented extensively in the statement of grounds of appeal (see page 8, second paragraph) on the combination of documents E26 and E19 in relation to claim 1 of the first auxiliary request (which, as mentioned, comprises all features of claim 1 of the main request), and so the position of the proprietor in relation to this argument is part of the basis of the appeal proceedings.
d) The new argument is not incompatible with, or contradictory to, the opponent's previous case, nor does it raise any complex issues.

4.2 The combination of documents E26 plus E19

4.2.1 At oral proceedings before the Board the opponent stated that document E19 was not the closest prior art, and argued that claim 1 of the main request was not inventive based on document E26 (taken as the closest prior art) in combination with document E19. The Board also believes that document E26 is the most appropriate choice as closest prior art.

4.2.2 In the written appeal procedure there was some disagreement between the parties concerning which of the claimed features were disclosed in document E26. Although the parties' submissions were made in the context of the discussion of claim 1 of the first auxiliary request, the Board takes the view that they also apply to claim 1 of the main request for the reasons stated above (see point 4.1.6a).
The proprietor argued that only the features of the preamble were disclosed, whereas the opponent argued that features (e) and (g) could also be considered to be disclosed in document E26. In the oral proceedings, however, the opponent appeared content to argue on the basis that document E26 discloses only the features of the preamble of claim 1 of the main request, and the Board also considers this to be the correct assessment (see figure 1 and accompanying text).

4.2.3 Both parties also take the view that the features of the characterizing part contribute to achieving the object set out in paragraph [0003] of the contested patent, i.e. to provide a surge arrester with better short-circuit performance by being able to withstand an electrical/thermal breakdown of the varistor stack without mechanically falling apart. The Board can also accept that this represents a reasonable summary of the objective problem.

4.2.4 Document E19 may be seen as addressing essentially the same problem (see column 1, lines 34-46; column 2, lines 56-64), and proposes a solution whereby the stack of varistor elements (zinc oxide pellets 1) is radially surrounded by a bursting preventive bandage ("tapes" - see column 2, lines 31-33; figures 1,2) with openings ("gap zones 16" - see column 2, lines 31-37; figures 1,2), the bandage consisting of a bursting-preventive spiral (figures 1,2) of insulating material (resin-impregnated glass fibres - see column 1, line 64 to column 2, line 3) arranged in the form of a helical line around the varistor stack (figures 1,2) thereby forming said openings (16) for pressure relief in case of internal short circuit in the surge arrester (column 2, lines 56-64).
A skilled person would therefore find in document E19 a solution to the objective problem involving the provision of features corresponding to those of the second alternative of the characterizing part of claim 1 of the main request (features e, f2 and g).

4.2.5 The Board is not persuaded by the argument of the proprietor that a skilled person would not combine these two documents as they relate to two different constructions: the varistor elements in document E19 being positioned spaced apart with the axial contact pressure being generated by the springs 7, and the arrester elements in document E26 being positioned against each other with the axial contact pressure being generated by a compression member.
Whatever relevance this point may have had for the argument starting from document E19, within the context of the present argument starting from document E26 it is unconvincing. As noted above, document E19 discloses a solution to the problem of withstanding a breakdown of the varistor stack without mechanically falling apart. There is no suggestion in document E19 that the proposed solution (i.e. the use of fibres 4 and gap zones 16) is only effective within the context of the particular configuration of varistor elements disclosed in the document, nor can any reason be seen why a skilled reader would arrive at that conclusion. The Board's view is that a skilled person would not hesitate to apply the solution suggested in document E19 to other types of varistor stacks, such as those of document E26, to solve the same problem.
The argument that the teachings of these two documents could not be combined as the "fibre winding 4 from E19 would in this case interfere with the position of the compression member 8 in E26" is also unconvincing. The Board does not believe that a skilled person would find any particular difficulty in combining these two simple mechanical features in a single device.

4.2.6 For the above reasons, the Board judges that claim 1 of the main request does not involve an inventive step within the meaning of Article 56 EPC 1973.

(...)

Order

For these reasons it is decided that:
The appeal is dismissed.




This decision has European Case Law Identifier: ECLI:EP:BA:2014:T060710.20140410. The whole decision can be found here. The file wrapper can be found here.

 

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