Tuesday, 29 July 2014

T 2231/09 - Communication not an act of the examining division?


Is a communication issued using Form 2001A an act of the examining division pertaining to the examination in accordance with Article 94(3) EPC? We revisit J 9/10.

The applicant appealed against the decision refusing European patent application No. 05254923.5, published as EP 1 640 913 A1.

The examining division had refused the application on the grounds that the subject-matter of the claims lacked novelty or did not involve an inventive step over the prior art.

In the appeal, the appellant essentially argued that the first-instance proceedings were tainted by substantial procedural violations because the examining division had not issued a formally correct communication under Article 94(3) EPC in view of the case law created by decision J 9/10.

In the present case, the communication was issued using Form 2001A. The appelant cited, amongst others, J 9/10 according to which a form 2001A is not an act of the Examining Division.

Background: between 2005 and 2012, communications were issued on EPO Form 2001A in cases in which the applicant had not responded to a negative search opinion drawn up before 1 April 2010. Although J 9/10 dealt with the request for refund of the examination fee, its decision prompted the EPO to issue a notice (OJ EPO 2013, 16) on the time limit for filing voluntary divisionals.

Reasons for the Decision

1. The appeal is admissible.

2. Remittal to the department of first instance

2.1 Pursuant to Article 11 of the Rules of Procedure of the Boards of Appeal ("RPBA"; see OJ EPO 2007, 537) "A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise." The board considers that the term "fundamental deficiencies" referred to in this article and the notion "substantial procedural violation" in Rule 67 EPC 1973, first sentence (now Rule 103(1)(a) EPC) are synonymous (see the German versions of the two provisions where the terms are virtually identical: "wenn das Verfahren ... wesentliche Mängel aufweist" and "wesentlicher Verfahrensmangel", respectively).

The appellant asserted that the proceedings before the examining division were tainted by substantial procedural violations because, in view of the case law created by decision J 9/10, the examining division had failed to issue a formally correct communication under Article 94(3) EPC. Furthermore, the search opinion was very short, and the objections raised by the examining division were not sufficiently clear and inadequate to enable the representative to discuss the issues with the applicant. This meant that the right to a fair hearing had been denied.

2.2 In decision J 9/10 (see point 2.4 of the Reasons) the legal board had to decide in particular what kind of act or acts amounted to the beginning of substantive examination. In this context the board held that a communication using EPO Form 2001A which was attributable only to the formalities officer did not constitute an act of the examining division pertaining to the examination in accordance with Article 94(3) EPC. Such a communication could thus not be regarded as the beginning of "substantive examination" pursuant to Article 10b(b) of the Rules relating to Fees 1973 (see point 2.9 of the Reasons). The board also held in point 3.2 of the Reasons that the formalities officer's error of judgment did not constitute a substantial procedural violation.

2.3 In the present case, the communication dated 21 September 2006 was issued by the EPO using EPO Form 2001A. The applicant replied to it, addressing the objections made in the earlier European search opinion (essentially lack of conciseness, novelty and inventive step). In the board's view, this search opinion may have been concise, but was not too short for the skilled reader to understand the objections. Subsequently, the applicant also replied to the objections raised in the summons to oral proceedings. The applicant thus obviously regarded the two official communications as invitations by the examining division to file observations and amend the application. This sequence of events reveals that the representative was in a position to discuss the issues with the applicant after the communication of 21 September 2006 was issued, and to draw up pertinent replies. Furthermore, the applicant chose not to attend the oral proceedings, in which the examining division eventually refused the application. There is thus no indication of insufficiently clear or inadequate examination proceedings infringing the applicant's right to be heard.

2.4 Lastly, the appellant did not complain that its right to be heard had been infringed in the examination proceedings in any other way. The board too sees no such violation, or any other indication of a fundamental deficiency in those proceedings, which would justify remittal (Article 11 RPBA).

2.5 Nor is remittal to be ordered due to the fact that the primary examiner may not have authenticated the communication using EPO Form 2001A. That may run counter to the findings in J 9/10, which have been summarised above. Yet, as explained, the board has been unable to discern any indication of an insufficiently clear or an inadequate examination starting de facto with the communication using EPO Form 2001A. As a consequence, there would be no causal link between any authentication of the communication using EPO Form 2001A by the formalities officer instead of the primary examiner and the applicant's need to file an appeal. In the absence of such a causal link, remittal under Article 11 RPBA is not appropriate, in analogy to what has been held in the context of the reimbursement of the appeal fee due to a substantial procedural violation (see J 9/10, point 3.1 and the decision cited there).

The board also agrees with J 9/10 (at point 3.2) in that, even if the sole ground of appeal had been the fact that the communication using EPO Form 2001A may have been authenticated not by the primary examiner but by the formalities officer, that would not constitute a procedural violation or fundamental deficiency, but an error of judgment on the part of the formalities officer.

2.6 As a consequence, the request for remittal to the first instance because of fundamental deficiencies in the first-instance proceedings has to be refused.

(...)

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T223109.20140423 . The whole decision can be found here. The file wrapper can be found here.

Friday, 25 July 2014

T2403/11 - Bound by earlier reasoning and statements in application


This appeal decision relates to a discussion of insufficiency of disclosure in opposition proceedings. In this opposition proceedings, all requests were rejected because it was not well defined how the claimed "viscosity" could be determined. The Board also discusses this subject with reference to previous case law. Furthermore, in the appeal the patent proprietor tried to argue that viscosity was not an important feature of the claim, however, contradictory arguments were provided earlier and statements in the patent application seems to contradict the new line or arguments.



Citations from the decision:


Catchwords:
An ill-defined parameter in a claim may lead to insufficiency of disclosure if this parameter is relevant for solving the problem addressed in the patent (T 593/09 followed). If, in such a situation, the patent specification states that the ill-defined parameter is relevant and the patent proprietor initially argued along those lines, then, normally it cannot argue, later on in the proceedings, that this parameter does not matter (points 2.6.1 and 2.6.2 of the Reasons).

[...]


The opposition division's position can be summarised as follows:
None of the requests met the requirements of Article 100(b) EPC. It had not been substantiated that there was a particular method in the prior art which had to be used to determine the viscosity. The skilled person was therefore faced with a number of choices as to which procedure to use, choices which influenced the outcome of the measurement. While claim 1 specified which temperature had to be employed, further conditions such as the selection of the viscosimeter, as well as the container used and the sample pre-treatment, had to be selected and there was no unambiguous instruction on these choices. In fact, given that D10 (section 11 "Report") specified that these conditions had to be controlled, the skilled person would infer that these conditions had an appreciable effect on the measurement. It also appeared from D10 that the spindle/speed combination had a major bearing on the outcome of the measurement. This was further demonstrated by the proprietor itself in its letter of 8 August 2011, which showed large differences in the measured viscosity at different spindle speeds. It could therefore only be concluded that it had not been proven that the skilled person knew which method to use, and, within a single method, the number of selections required inevitably led to different results. Reproducing the invention thus required a significant effort which went beyond any normal trial and error. As the viscosity was an essential parameter in practising or reproducing the invention, without proper instruction on this parameter the skilled person was not able to perform the invention.

Reasons for the Decision
[...]
  
2. Sufficiency of disclosure (Article 100(b) EPC)
 2.1 Claim 1 is directed to a composition for coating foodstuffs which comprises a galactomannan, such as guar gum, and 2 to 7 wt% of alginate, and has a viscosity of 80-110 Pas at a temperature of 20°C (for the exact wording of claim 1, see point IV above).
According to the respondent, the viscosity parameter in claim 1 is ambiguous since the patent does not give the method for identifying it, and this ambiguity means that the invention underlying the patent is insufficiently disclosed.

2.2 The present case is similar to the one underlying decision T 593/09 (not published in OJ EPO), in which sufficiency of disclosure had likewise to be decided in relation to a parameter ("LTC temperature") for which the measurement method was not sufficiently defined in the patent. As set out in this decision (catchword and point 4.1.4 of the Reasons), the ambiguity of a parameter in a claim is not, by itself, a reason to deny sufficiency of disclosure. What is decisive for establishing insufficiency within the meaning of Article 83 EPC is whether the parameter, in the specific case, is so ill-defined that the skilled person is not able, on the basis of the disclosure as a whole and using his common general knowledge, to identify without undue burden the technical measures necessary to solve the problem underlying the patent.
As set out in this decision, in order to find out whether this condition for insufficiency of disclosure is met, a four-step approach can be applied. Firstly, the problem to be solved by the invention in the patent is identified (point 2.1 of the Reasons), secondly the relevance of the attacked parameter for solving this problem is determined (point 2.2 of the Reasons), thirdly it is analysed whether the parameter in the claim is indeed ambiguous (points 3.1 to 3.5 of the Reasons) and fourthly, if the parameter is ambiguous, it is determined whether due to this ambiguity and the relevance of the parameter for solving the problem, sufficiency of disclosure has to be denied (points 3.6 and 3.7 of the Reasons). This four-step approach will be applied in the present case as well (points 2.3 to 2.6 below).

2.3 The opposed patent relates to compositions for coating foodstuffs (paragraph [0001]). The objective of the invention underlying the patent is the provision of a coating composition with which a sufficiently robust and stable coating can be formed using the extrusion or co-extrusion techniques that are commonly used in the food industry (paragraph [0013]).

2.4 As set out in paragraph [0004], the rheological properties, and especially the viscosity, of the coating composition play a major role in achieving the objective of the opposed patent. If the viscosity is too low, the composition deliquesces before it can be gelled, so that no cohesive coating can be formed. Too high a viscosity can lead to problems in extrusion and to undesirable ripping of the coating. To achieve this objective, the coating composition must have a viscosity of 80-110 Pas at a temperature of 20°C (claim 1 and paragraph [0029]).
The skilled person who wants to carry out the invention, i.e. to obtain coating compositions with which a sufficiently robust and stable coating can be formed, thus needs to determine the viscosity of the coating composition in order to check whether it is within the required range.

2.5 It needs to be examined, as a next step, whether the viscosity is indeed ambiguous.

2.5.1 In this respect, it was acknowledged by the appellant that the patent does not contain any information as regards the type of measurement device or measurement parameters to determine the viscosity, that there are various measurement methods available to the skilled person and that the measured viscosity values depend on the type of measurement device and, for a given device, on the measurement parameters.

2.5.2 The appellant argued however that the skilled person was nevertheless able to find out which method and parameters to use in order to determine the required viscosity. All that the skilled person needed to do was to calibrate the measurement characteristics on the basis of the examples of the opposed patent. More specifically, the skilled person had simply to prepare the compositions of these examples and then to "tune" the measurement parameters until the viscosity values reported in these examples were obtained. The appellant in this respect referred to D12 and D13, where two independent test institutes had reworked the examples of the patent (D12: examples 1 to 4, D13: examples 1 to 3 and 5) and, by tuning the measurement frequency, had been able to obtain the reported viscosity values. The measurement method thus found could be used to check whether the viscosity of any other given coating composition was as required in claim 1. By doing so, compositions suitable to provide robust and stable coatings could be obtained.
Firstly, however, it is nowhere shown in D12 or D13 that the compositions prepared therein are indeed suitable to prepare robust and stable coatings. In fact, it is explicitly stated by the authors of D12 that "[F]urther work described in the patent concerning the application of the gels to be used as a coating of sausages was not part of the investigations [of D12]".
Secondly, it was necessary in the tests reported in D12 and D13 to experiment with various measurement devices that are typical for university departments specialised in viscosity measurement and only a sophisticated multi-step analysis in the end led to viscosity values that were at least close to those in the examples. Such a calibration could thus only be done by a person specialised in the field of viscosity measurement. The patent is however not directed at an analytical scientist specialised in viscosity measurement but to food technologists (paragraph [0001]: "The invention relates to a composition for coating foodstuffs..."). Hence, the skilled person in the art relevant to the patent would not be able to use the calibration techniques applied in D12 or D13.
Thirdly, in fact a calibration of the viscosity measurement is, as a matter of principle, not possible on the basis of the examples of the patent. Such a calibration presupposes that the measurement parameters are the only variables in the examples that determine the viscosity. As will be shown in the following, this condition is not met:
All examples of the patent use guar gum without specifying the type of guar gum. As evidenced by D14, D15 and D16, different guar gums are available. As shown in D17 (table on last page), the viscosity of the compositions used in the examples depend on the type of guar gum. More specifically, in D17, the viscosities of three mixtures each containing a different guar gum are determined, namely containing (i) alginate and Guar HV (a guar gum having a viscosity of 6500 ctp) (test 1), (ii) alginate and Guar standard (3500 ctp) (test 2) and (iii) alginate and depolymerised Guar (50 ctp) (test 3). The viscosity of these mixtures was 1360 Pas for mixture (i), 497.5 Pas for mixture (ii) and 185.6 Pas for mixture (iii), and thus depends on the type of guar gum used. Consequently, the fact that the authors of D12 and D13 were able to tune the measurement method such that the viscosities reported in the corresponding examples were obtained does not mean that it is this method that is to be used according to the patent. On the contrary, it could equally be a different method, if a different guar gum was used in the examples.
For these reasons, the appellant's argument that the measurement method for the determination of the viscosity can be calibrated and thus identified on the basis of the examples of the patent must fail.

2.5.3 As regards the dependence of the viscosity on the type of guar gum shown in D17, the appellant's expert Mr Knoch argued that he had doubts about the correctness of these values, since no details were given in D17 about how the experiments had been carried out. This submission can however not be taken into account in view of the fact that it was made at the latest possible time during the appeal proceedings, while the report had already been available for two years and furthermore since the doubts raised by the expert were not substantiated. Irrespective of this, even if there were some doubt about the absolute values reported in D17, this test report shows at least qualitatively a dependence of the viscosity on the type of guar gum.

2.5.4 The appellant also argued that the skilled person would use a standard guard gum in the examples of the patent and that this standard guar gum had a viscosity between 3000 and 5000 cps, as evidenced by D14. The skilled person would thus know which type of guar gum to use and therefore would be able to calibrate the viscosity measurement method on the basis of the examples.
The board does not find this argument convincing. First of all, nowhere does the patent indicate that indeed standard guar gum is used in the examples. Secondly, even if, in the appellant's favour, it is assumed that the skilled person reading the examples of the patent would indeed use standard guar gum, it would still not be possible to use the examples to calibrate the viscosity measurement method. More specifically, as acknowledged by the appellant, standard guar gum is available within a viscosity range of 3000 to 5000 cps. Thus, the type of the guar gum would still be a variable in the examples that would affect the viscosity of the resulting coating composition.

2.5.5 Consequently, on the basis of the patent and his common general knowledge, the skilled person is unable to identify the measurement method by which the viscosity values required by claim 1 have to be determined. In view of the fact that the values depend on the type of measurement method and parameters, the skilled person cannot tell whether or not a given composition has a viscosity as required by claim 1. The viscosity in claim 1 is thus ambiguous.

2.6 In view of its ambiguity, the viscosity is not available as a selection criterion to identify suitable coating compositions that solve the problem underlying the opposed patent. The skilled person therefore has to identify suitable compositions by trial and error. Hence, the patent is nothing more than an invitation to perform a research programme.

2.6.1 While the appellant during the oral proceedings initially acknowledged that the viscosity as required by claim 1 was indeed essential to solve the problem underlying the patent, it later on presented a second line of argument starting from the assumption that the viscosity was in fact not relevant. According to this line of argument, all that was needed to carry out the invention was to select the preferred galactomannan, namely guar gum, in the amounts indicated in the description of the patent. For instance, the skilled person simply needed to repeat the examples of the opposed patent and choose a standard guar gum to obtain a suitable coating composition. Hence, in order to carry out the invention the skilled person did not need to know how to determine the viscosity. In fact the viscosity had only been included in claim 1 to determine later on whether a given composition infringed the patent or not.

2.6.2 The board does not find this argument acceptable. The proprietor is not free to choose a particular approach when drafting the patent and when arguing its case, and then to change it later on when it realises that this approach might fail. So if the proprietor (and in the present case appellant) chooses to include a statement when drafting the patent that, in order to solve the problem underlying the patent, the coating composition must have a certain viscosity, then normally it cannot argue, later on in the proceedings, that in fact the viscosity does not matter.
Furthermore, even if one accepts the appellant's argument, the patent does not teach the skilled person how to obtain a suitable coating for any composition different from those of the examples, for instance a composition containing a galactomannan different from guar gum. Since, due to its ambiguity, the viscosity is not available as a selection criterion to identify suitable components and amounts for these different compositions, the conclusion remains valid that the skilled person has to rely on trial and error such that the patent is nothing more than an invitation to perform a research programme.

[...]
 2.8 The invention underlying claim 1 is thus insufficiently disclosed.
 
Order
For these reasons it is decided that:
The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T240311.20140430.
The whole decision can be found here.
The file wrapper can be found here.

Photo obtained from FreeDigitalPhotos.net.

 
 

Tuesday, 22 July 2014

R 5/13, R 9/13, R 10/13, R 11/13, R 12/13 and R 13/13 - Limits to the right to be heard?


This is a decision by the Enlarged Board of Appeal in consolidated proceedings on six petitions for review  - R 5/13, R 9/13, R 10/13, R 11/13, R 12/13 and R 13/13, all filed against decision T 1760/11. The petitioners argued essentially a fundamental infringement of the right to be heard (Articles 112a(2)(c) and 113(1) EPC). 
All petitioners in essence argued that the Board not only "fundamentally erred" in denying that document D1 was a feasible starting point for the assessment of inventive step according to the problem-solution approach. In addition, the petitioners argued, choosing document D2 instead of document D1, the Board made a number of "basic errors in the evaluation of the technical information before it and the application of established EPO case law to that information". 
The petitioners argued that the Board took a decision without hearing the petitioners' complete case by concluding that the subject-matter claimed involved an inventive step, after the debate on the issue of inventive step in the light of document D2 as the closest prior art, without a debate on the ground of lack of inventive step starting from document D1.  
The petitioners further argued that, in addition, the Board applied the problem-solution approach wrongly in allowing only one document as the starting point for discussing inventive step, where the case law allowed for more than one document to be considered as the closest prior art and for a discussion of lack of inventive step starting from any of those documents. That denial implied an infringement of the right to be heard according to Article 113(1) EPC. 
The petitioners further argued that, in addition, the Board based its decision not to consider document D1 as a starting point for inventive step merely on the parties' written submissions, and that the Board hereby deprived the petitioners of their right fully to present their arguments by not giving them the opportunity to present oral submissions on this point, even if the Board had a different view.

The decision extensively discusses how far the right to be heard extends, and when it is violated - as to procedural aspects and substantive aspects to the merits. The decision also emphasizes that a petition for review can not be used to assess whether the BoA correctly applied substantive patent law, in particular in using the problem-solution approach. 

Reasons for the Decision

1. All petitioners are adversely affected by the decision under review. The provisions of Article 112a(4) EPC and Rule 107 EPC are satisfied.

Scope of the petitions

2. The petitioners invoke multiple grounds for their respective petitions for review.

3. The petitions for review are founded mainly on the allegation that the appeal proceedings leading to the decision under review involved a fundamental infringement of the petitioners' right to be heard (Articles 112a(2)(c) and 113(1) EPC) in that the Board took its decision on the patent proprietor's first auxiliary request without allowing the petitioners to complete their submissions on the ground of lack of inventive step, in particular in view of document D1.

4. Additionally, the petitioners claim that the Board should have followed their requests to refer the questions submitted by them concerning the selection of the closest prior art and the concept of res judicata to the Enlarged Board of Appeal according to Article 112(1)(a) EPC, or that the Board either ignored the requested referral of the second question or failed to reason why it rejected the referral.

[...]

Allowability of the petitions for review

9. The petitions essentially invoke the ground of petition for review according to Articles 112a(2)(c) and 113(1) EPC.
Article 113(1) EPC provides:
"The decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments."

10. The petitioners submit that the Board decided on the appeal in infringement of Article 113(1) EPC in a manner that gave the petitioners no opportunity to present orally all their arguments on the issue of inventive step of the claims according to the patent proprietor's first auxiliary request.
As established in case R 3/10 of 29 September 2011 (Reasons, point 2.10), "the right to be heard is a fundamental right of the parties which has to be safeguarded, irrespective of the merits of the party's submissions. The necessity to respect it is absolute and therefore cannot be made dependent on a prior assessment of the merits of the party's submissions, which in the present case would involve an assessment of the degree of likelihood that the arguments of the petitioner would have convinced the Board to acknowledge inventive step. It is the very essence of the right to be heard that the party is given a full opportunity to defend its case and to persuade the deciding body that its position is the correct one. This right would be undermined if it were made dependent on an evaluation as to whether the party's standpoint is likely to be justified. In order to answer the question of whether a fundamental infringement of the petitioner's right to be heard occurred as a result of the petitioner's not having been heard on inventive step, it is therefore irrelevant whether the respondents are right in their assessment of the clear obviousness of the claimed solution."

11. The petitioners' key objection lies with the Board's decision to choose document D2 as the (only) closest prior art, rather than documents D1 and D11, which had been proposed by the petitioners and the patent proprietor respectively, and to limit the discussion of the issue of inventive step of the claimed subject-matter according to the patent proprietor's first auxiliary request on document D2 as the (only) starting point in applying the problem-solution approach. According to the petitioners, had the Board allowed a continued discussion of the issue of inventive step starting from document D1, the petitioners would have demonstrated that the subject-matter of the claims according to the first auxiliary request was obvious to the skilled person. Since the Board refused that continued debate, it deprived the petitioners of the opportunity to present arguments on this matter.

12. In support of this, the petitioners in their concluding submissions during the oral proceedings put forward essentially three lines of argument:
(1) that the closest prior art could only be determined at the end of a complete discussion of inventive step starting from all the documents that a party or the parties chose to rely on (point 15 below);
(2) that the Board failed both to inform the parties of its intention to select of its own motion document D2 and to invite the parties to comment on this in order to convince the Board of the inaccuracy of its choice (point 16 below);
(3) that document D1 should also have been considered as a realistic starting point for the discussion of inventive step (point 17 below).

13. Before investigating the aforementioned arguments, the Enlarged Board notes that the examination whether or not the subject-matter of a patent claim involves an inventive step according to the well-established problem-solution approach is a matter of substantive law. That is equally true for the determination of the closest prior art as the first step in the multi-stage method of the problem-solution approach, whether one document alone or a plurality of documents was taken as the starting point or most promising springboard aiming at the invention.

14. In view of this, it has to be borne in mind that review proceedings based on Article 112a(2)(c) EPC are confined to procedural defects so fundamental as to be intolerable. It follows from the essential interest of legal certainty that appeal proceedings leading to a final decision shall be re-opened only if one of the grounds provided for in Article 112a EPC applies. The petition for review is no means to review the correct application of substantive law (consistent case law since R 1/08 of 15 July 2008, citing the travaux préparatoires, and R 2/08 of 11 September 2008).

15. In respect of the first line of argument, the Enlarged Board cannot follow the petitioners' view point that the closest prior art – at least in the present case – could have been chosen only after all stages of the problem-solution approach were completed.
According to the established case law of the boards of appeal, the problem-solution approach is the key element for the assessment of inventive step and is the one which is applied first and foremost. It follows a clear method consisting of three main stages, of which the determination of the closest prior state of the art is the first (see Case Law of the Boards of Appeal, 7th edition 2013, section I.D.2., p. 165 et seq.).
The petitioners put forward that the first stage of the problem-solution approach could and should have been concluded only after the other two stages had been gone through (i.e. after the "objective technical problem" to be solved had been established and after it had been considered whether or not the claimed invention, starting from the closest prior art and in view of the objective technical problem, was obvious to the skilled person). In other words, the petitioners argue that they should have been allowed to discuss all the issues of inventive step of any stage of the problem-solution approach in respect of all possible starting points they wished to rely on, despite the fact that the Board structured the discussion by first establishing which document or documents constituted the most promising starting point for an obvious development leading to the invention. In this, the Board not only followed the sequence for the debate announced in its communication annexed to the summons to oral proceedings (page 8, second paragraph; page 9, last paragraph), but by doing so it also systematically applied the standard method of the problem-solution approach.
In so far as the petitioners alleged that the Board deviated from the problem-solution approach by relying on a criterion that was irrelevant for the determination of the closest prior art (i.e. the Board's opinion that "taking document D1 as a starting point for the analysis of inventive step relies on a hindsight knowledge of what is claimed and is therefore inappropriate for an objective assessment of inventive step"; Reasons page 56), this allegation concerns a substantive matter.
However, petition for review proceedings may not be used to review the exercise by a Board of its discretionary power if that would involve an impermissible consideration of substantive issues (see R 1/08 of 15 July 2008, Reasons, point 2.1; R 10/09 of 22 June 2010, Reasons, point 2.2; R 9/10 of 10 September 2010, Reasons, point 10; R 13/11 of 20 April 2012, Reasons, point 4).
In petition proceedings, the Enlarged Board cannot act as a third instance or second-tier appellate tribunal, nor can it examine whether or not the substantive conclusions arrived at by the Board were justified; under no circumstances may the petition for review be a means to review the correct application of substantive law (see Case Law, supra, section IV.E.9.2.4.b), p. 1066 et seq.; R 1/08 of 15 July 2008, Reasons, point 2.1; R 2/08 of 11 September 2008, Reasons, point 5; R 9/08 of 21 January 2009, Reasons, point 6.3), which includes issues falling within the discretion of the Board (R 10/09 of 22 June 2010, Reasons, point 2).
However, that is exactly what the petitioners seek by requesting the Enlarged Board to reconsider the appeal proceedings on its merits and thereby to put its evaluation of the merits above that of the Board. A technical review of the Board's evaluation of inventive step in terms of whether it is objectively correct or appropriate, is outside the jurisdiction of the Enlarged Board.
Finally, the Enlarged Board cannot accept the petitioners' contention that a party, in principle, should be allowed to discuss any particular issue that it relies on or even forms the subject of a request.
Neither the EPC nor the Rules of Procedure of the Boards of Appeal provide any legal basis for such a general approach in appeal proceedings, in particular in inter partes appeal proceedings. Nor is the existence of any such entitlement supported by the principle of party disposition. That principle relates merely to the parties' right of disposal over their requests by advancing, withholding or withdrawing them as they see fit.
More relevant to the present case is another principle of appeal proceedings, the principle of procedural economy, which requires a board of appeal to focus on those points that are relevant for the decision. In the present case, the Board considered that the case could be decided in respect of the issue of inventive step by systematically applying the problem-solution approach stage by stage. Thus, it systematically limited its decision-making and accordingly the discussion with the parties to determining the closest prior art first, before discussing the other aspects of the inventive step of the subject-matter claimed according to the patent proprietor's first auxiliary request.
Consequently, the Enlarged Board does not follow the petitioners' argument that the Board was obliged to let them continue to argue on the alleged lack of inventive step starting from document D1 despite the Board's conclusion not to take that document as the closest prior art and starting point for the further discussion of inventive step.
Since the petitioners were given the opportunity to submit their arguments with regard to the issue of determining the closest prior art, their right to be heard has been observed. Once the Board had reached a substantive conclusion by already excluding one or more documents (here: documents D1 and D11) as starting points for the assessment of inventive step, it was logically consistent to exclude all other prior art not found to be the closest prior art as starting point for the further discussion of inventive step according to the second and third stages of the problem-solution approach. By following this methodology the Board did not infringe the right to be heard, because – as indicated above – a party is not entitled to be additionally heard on the application of the problem-solution approach starting from other pieces of prior art than the closest prior art.
Hence, no infringement of Article 113(1) EPC was committed by the Board.

16. With regard to the second line of argument, the Enlarged Board notes that there is no evidence to support the petitioners' allegation that the Board failed to inform the parties of its intention to select document D2 as the closest prior art and to invite the parties to comment on this so that they might convince the Board of the inaccuracy of its choice.
Rather, there is evidence that the Board actually indicated the possible selection of document D2 as the closest prior art, at a point in time during the proceedings that still allowed the petitioners to react to it.
First, in its communication annexed to the summons to oral proceedings, the Board explicitly pointed to document D2 as one of the documents to be considered in the choice of the closest prior art.
Secondly, according to the minutes of the oral proceedings (pages 5 to 7) and the Board's communication dated 10 January 2013, the discussion concerning the determination of the closest prior art among all of documents D1, D2 and D11 started on 14 November 2012 and continued the next day. The parties were invited to present their arguments. During the debate, the Board first indicated its preliminary opinion in respect of the teaching of document D1 and continued the discussion regarding the choice of the closest prior art. After deliberation, the parties were informed that the Board considered document D2 to be the closest state of the art and subsequently they were invited to address the questions of what the objective problem starting from that document was and whether that problem had been solved.
For this reason, the Enlarged Board cannot find a basis for the petitioners' allegation submitted with its second line of argument.

17. Concerning the third line of argument, that document D1 should also have been considered as a realistic starting point for the discussion of inventive step, the Enlarged Board cannot identify any procedural defect.
The minutes of the oral proceedings show that the issue of whether or not the document preferred by the petitioners (D1) was to be determined as an additional starting point for the evaluation of inventive step was exhaustively discussed with the parties (minutes, pages 5 and 6).
Furthermore, in the decision under review, the Board recapitulated in detail the key arguments submitted by the parties, in particular the petitioners, in this respect during the written as well as the oral proceedings (Facts and Submissions points XII and XIII). The Board gave its reasons for not choosing document D1 (as well as document D11) as the closest prior art and for considering document D2 to be the starting point on the basis of which to apply the problem-solution approach in order to decide on the issue of inventive step (Reasons, points 4 and 10 et seq.).
The minutes further record an intervention by inter alia petitioner IV against the Board's approach of determining only one single document as the starting point for the discussion on inventive step, and also a request to give the petitioners the opportunity to address inventive step of the subject-matter of the first auxiliary request starting from document D1, which the Board rejected (minutes, pages 6 and 7).
Thus, the Board was obviously aware of the petitioners' arguments in favour of document D1 as at least a second closest prior art document and gave reasons why it came to a different conclusion (Reasons, points 4 and 10 et seq.).
Hence, the petitions, again, concentrate on the substantive decision of the Board and on the petitioners' disagreement with the Board's determination of the closest prior art as the starting point for the problem-solution approach when assessing the issue of inventive step. The petitioners dispute neither the sequence of events during the oral proceedings (the request for correction of the minutes, although refused, confirms the petitioners' objection to the Board's refusal to discuss the issue of inventive step starting from document D1) nor the fact that the question of which document or documents were to be chosen as the closest prior art was discussed first.
Their ground for review rather lies with the Board's substantive decision not to take document D1 into consideration as a starting point in the subsequent discussion of whether or not the claims according to the patent proprietor's first auxiliary request involved an inventive step. It is this "refusal" that the petitioners find to imply an infringement of their right to be heard. Their argument is based on their opinion that, on the one hand, the Board was legally bound by decision T 401/04 of 19 December 2006 regarding the choice of document D1 as the closest prior art or that, on the other hand, from a technical point of view document D1 should have been determined at least as a second starting point for the discussion of inventive step.

18. Consequently, none of the three lines of argument by the petitioners can lead to the conclusion that the petitioners did not have sufficient opportunity to comment on all aspects on which the decision was taken, so that no infringement of Article 113(1) EPC was committed by the Board.

19. To investigate any further would mean assessing whether the Board correctly understood the substantive arguments submitted by the parties and, above all, whether it gave the right answer to them. The (mere) fact that the petitioners do not share the view of the Board and do not accept the outcome of the decision under review would be a matter for a review of the merits of the decision, which is not a means of redress provided for in the EPC.

20. Consequently, to the extent that the petitions for review are not clearly inadmissible (see points 7 and 8 above), they are clearly unallowable.

[...]

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:R000513.20140210. The decision was put online on 16.07.2014 The whole decision can be found here. The file wrapper can be found here. Photo "Hear No See No Speak No EVIL" by Billy Rowlinson obtained via Flickr , no changes made, CC by 2.0 license.

Thursday, 17 July 2014

T 872/09 - Choosing too late




Catchwords
1. Novelty
The claimed sensor is defined by reference to characteristics of its response when used in a measurement set-up. Since none of the determining aspects of the measurement set-up is defined in claim 1, the technical features of the claimed sensor which are responsible for providing the measurement referred to in the claim remain obscure.
Legal certainty requires that a claimed subject-matter cannot be regarded as novel over the prior art on the basis of an ambiguous feature. Hence, defining a functional feature of the claimed sensor under undefined operating conditions is not appropriate to provide any distinction of the claimed sensor over the prior art sensors (see points 1.2 and 1.3 of the Reasons)
2. Admittance of auxiliary requests
None of the patentee's auxiliary requests were admitted into the proceedings because the patentee, during the first-instance opposition proceedings, deliberately chose not to defend any single auxiliary request, even though it was aware of the fact that its main request had not been found allowable by the opposition division (see points 2 and 3 of the Reasons).

Reasons for the Decision

1. Main request
1.1 According to the appealed decision, the sensor of D1 anticipates all the features of claim 1. The patentee did not contest this finding except for the following feature F of claim 1: "wherein the sensor provides a measurement that correlates with the amount of analyte in a period of 10 seconds or less".
1.2 Construction of claim 1
Claim 1 is directed to a sensor as such, characterized amongst other features, by feature F.
Firstly, feature F is not worded as a structural feature but as a functional feature of the claimed sensor: "... the sensor provides a measurement ...". However, a sensor in itself provides a signal as such but cannot provide a measurement. It is the whole measurement set-up, using inter alia the sensor's output signal, which provides the measurement that correlates with the amount of analyte in a period of 10 seconds or less.
Furthermore, the functional feature F refers to a numerical parameter: "... a period of 10 seconds or less". However, whether a measurement correlates with the amount of analyte within the claimed range or not, depends not only on the sensor but on the whole measurement set-up involved in the measurement.
Still further, the functional feature F does not simply include language to the effect that a measurement of the amount of analyte is provided within a certain period of time but that the measurement correlates with the amount of analyte. The term "correlate" generally means that the relationship between the measurement provided and the amount of analyte to be measured is not as expected on the basis of randomness alone. However, the degree of correlation largely depends not only on the sensor but on the whole measurement set-up involved in the measurement.
The measurement set-up providing a measurement that correlates with the amount of an analyte within a predetermined period of time includes the following aspects:
  • the type and the concentration of the analyte to be measured by the claimed sensor,
  • the constitution of the liquid sample containing the analyte, e.g. the nature and the concentration of the perturbating interferants contained in the liquid sample,
  • the constitution of the reagent layer for producing an electrochemical reaction with the analyte to be measured, e.g. the type of enzyme, the mediator,
  • the material, size and geometry of the working electrode and the reference electrode,
  • the voltage profile applied to the sensor as described, for instance, in paragraph [0032],
  • the exact starting time of the measurement.

Each of the above aspects of the measurement set-up influences the final measurement result to a large extent.
Since none of these aspects of the measurement set-up is defined in claim 1, the relevant technical circumstances, under which the measurement referred to in the claim is provided within 10 seconds or less, remain undefined. It follows that the technical features of the claimed sensor which are responsible for providing that measurement remain obscure, too.
1.3 Legal certainty requires that a claimed subject-matter cannot be regarded as novel over the prior art on the basis of an ambiguous feature (see T 1049/99, reasons 4.4). Hence, defining a functional feature of the claimed electrochemical sensor under undefined operating conditions is not appropriate to provide any distinction of the claimed subject-matter over the prior-art electrochemical sensors, all the more so if these conditions influence the obtained result to a large extent, as in the case at hand.
In view of the fact that feature F does not delimit the claimed sensor from the sensor of D1, it follows that the sensor of D1 anticipates the subject-matter of claim 1 (Article 54(1) and (2) EPC 1973).
[…]

2. First auxiliary request

The board holds that the first auxiliary request is not admissible under Article 12(4) of the Rules of Procedure of the Boards of Appeal ("RPBA", OJ EPO 2007,537).

First-instance opposition proceedings
2.1 At the end of the first-instance oral proceedings, the patent was revoked for lack of novelty of the claimed subject-matter with respect to D1. In advance of those oral proceedings the patentee had filed a first auxiliary request whose claim 1 defined subject-matter which undisputedly overcame the novelty objection at stake. This first auxiliary request then on file was identical to the first auxiliary request being the subject of the present decision. However, after the patent according to its main request had been revoked during the oral proceedings, the patentee deliberately decided to either withdraw that auxiliary request, or at least not to pursue it any further during the first-instance proceedings. As a consequence, the decision of the opposition division dealt only with the issue of novelty of a single independent claim, i.e. claim 1 of the patent as granted, with respect to a single prior art document D1. In particular, the opposition division was not in a position to decide on any of the other numerous novelty and inventive step objections raised by the opponent in its notice of opposition. These objections had a wide scope since the subject-matter of claim 1, as well as that of various dependent claims, according to the opponent's submissions, was anticipated or at least rendered obvious by various prior art documents other than D1.
2.2 Due to the patentee's course of action, the opposition division was effectively prevented from taking a reasoned and sufficiently comprehensive decision on the patentability of the claimed subject-matter over the cited prior art. This issue was largely left unresolved given that the examination of the grounds for opposition was limited to the mere novelty assessment of claim 1 as granted with respect to D1. This is contrary to the purpose of Article 12(4) RPBA, namely of encouraging parties to complete their relevant submissions during the first instance opposition proceedings (see T 23/10, reasons 2.4 and 2.7).
Moreover, the board is convinced that the patentee could easily have defended the first auxiliary request in the first instance proceedings. Indeed, this auxiliary request was not only filed in preparation of those oral proceedings, but also did its claim 1 incorporate a straightforward amendment, which would have undisputedly overcome the objection of lack of novelty at stake, as it merely combined claim 2 as granted with claim 1 as granted.
2.3 If the board decided to admit the first auxiliary request into the proceedings, it would either have to assess the compliance of a set of claims with the requirements of the EPC for the first time during opposition proceedings or to remit the case to the opposition division. None of these two options is satisfactory, be it due to the parties' general interest in having their case heard by two instances or their general interest in the proceedings being conducted in an efficient and foreseeable manner.
2.4 The patentee, in deliberately choosing during the first-instance opposition proceedings not to defend the patentability of the first auxiliary request then on file, deprived itself of the possibility of having the request admitted into the appeal proceedings (see T 144/09, reasons 1.9 and 1.14; T23/10, reasons 2.8).
2.5 Therefore, the board decides to exercise its discretion under Article 12(4) RPBA in not admitting the first auxiliary request into the proceedings.
2.6 The patentee presented the following arguments in favour of admissibility:
2.6.1 The patentee did not withdraw the auxiliary request 1 at the first instance oral proceedings. As explained in the patentee's letter dated 3 March 2014, the patentee's representative, at the first instance oral proceedings, "stated that he would not argue for the novelty of auxiliary request 1, but instead reserve the right to reintroduce this auxiliary request in appeal proceedings" and, as a response to a question by the chairman of the opposition division, the patentee's representative "explicitly stated that it was not to be withdrawn".
 […]
Whether or not the patentee explicitly withdrew auxiliary request 1, however, is of no fundamental importance to the present situation. The undisputed statement by the patentee's representative in the oral proceedings before the opposition division that "he would not argue for the novelty of auxiliary request 1, but instead reserve the right to reintroduce this auxiliary request in appeal proceedings" means in any case that it did not defend that request in those oral proceedings. This approach amounted to the acceptance that the patent be revoked by the opposition division without trying to defend it at that stage.
It appears that the patentee did not argue in favour of the novelty of auxiliary request 1 before the opposition division in the firm belief that the novelty debate would automatically be taken up in the appeal proceedings in case the main request would not be allowed. However, no legal basis for such an assumption exists. On the contrary, admissibility of new requests depends on the board's discretion aiming at fair proceedings for both parties, especially in the present case where the facts and submissions had not changed from the beginning of the opposition proceedings. Neither were new objections raised nor were new prior art documents introduced into the proceedings by the opponent.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T087209.20140408. 
The whole decision can be found here
The file wrapper can be found here.

Photo by John R. Southern obtained from Flickr.

Tuesday, 15 July 2014

T 2184/10 - On second thought, not so clear





This appeal reversed the opposition division's decision on clarity after the opponent introduced evidence to show lack of clarity.


Claim 1 of the main request concerned a method for conveying resistance to beet necrotic yellow vein virus (BNYVV) to a sugar beet plant. The claim requires that "said resistance is a durable resistance and in which the virus does not replicate"

The durable resistance feature was first introduced in an auxiliary request filed during the oral proceedings of the opposition. One might have some reservation about what durable means exactly, but the opposition division had no problems with clarity. In the grounds for the decision the opposition division had this to say about the clarity of this term:

(...) a reference to the durable resistance must be understood as a reference to the properties of the plants obtained by said method. Any other interpretation would be technically meaningless. The Opposition Division also concluded that the term "durable resistance" was clear to the skilled person, i. e. it referred to resistance during essentially the whole life of a plant.

 And I guess that is not unreasonable. Each field has its own terms, and I guess durable resistance can be distinguished in practice from other types of resistance. In fact the opposition division found the Claim not inventive because, inter alia, it is "common practice for the skilled person to look for the best, i. e. complete and durable, resistance and to screen for the complete absence of virus replication."

In appeal, the opponent introduced a new document, which gives a nuanced view of durable resistance, which seems to have swayed the board.


Reasons for the Decision
(...)
Main Request
Article 84 EPC; admissibility of document D19

5. In comparison to claim 1 as granted, the Main Request requires the DNA fragment used in step (a) of claim 1 to be "of at least 35 nucleotides" (instead of 15 nucleotides) and the conveyed BNYVV resistance to be "a durable resistance and in which the virus does not replicate" (cf. point VIII supra). The term "durable resistance" was objected under Article 84 EPC for lack of clarity in the opposition proceedings and the opposition division decided that the term fulfilled the requirements of this article (cf. page 12, point 4.1.1 of the decision under appeal).

6. In reply to the appellant's Grounds of Appeal, the respondent maintained the objection of lack of clarity for the term "durable resistance" and filed document D19 to support its arguments (cf. point III supra). Document D19 is a general review which is, as its title indicates: "A critical analysis of durable resistance", clearly concerned with the objected term. Since the feature in claim 1 comprising the objected term was introduced for the first time with the filing of an auxiliary request at the oral proceedings before the opposition division, the board agrees with the respondent that there was no opportunity to file document D19 at an earlier stage of the proceedings (cf. point XIV supra).

7. Thus, the board, in exercise of its discretion, decides to admit document D19 into the appeal proceedings (Article 12(4) RPBA).

8. As for the objection under Article 84 EPC for lack of clarity of the term "durable resistance", the board notes the following:

8.1 As argued by the respondent (cf. point XIV supra), there is no definition for this term in the patent. In fact, several terms are used in the patent, such as "total resistance" and "absolute resistance" (cf. page 2, paragraph [0011], line 56, page 4, paragraph [0028], lines 44, 49 and 50, page 7, paragraph [0048], line 3 of the patent). However, the patent does not define the precise meaning of each of these terms. In the decision under appeal, the opposition division considered the term "durable resistance" to be clear to a skilled person and it further defined this term as meaning a "resistance during essentially the whole life of a plant" without specifying any other limitation and/or requirement (cf. page 12, point 4.1.1 of the decision under appeal).

8.2 This definition closely resembles the definition of this term given in document D19, namely "a resistance that remains effective during its prolonged and widespread use in an environment favorable to the disease" (cf. page 309, first paragraph of document D19). However, document D19 refers to several elements for measuring and/or testing a "durable resistance", including time (long), area (large), number of pathogen races or subtypes, disease pressure, etc. and it further differentiates between the effectiveness or level of resistance and its durability. Indeed, it is explicitly stated that "(t)here is clearly a subjective element in the decision to describe the resistance of a cultivar as durable", further adding that "(i)n many instances the decision will depend partly on the relative performance of other cultivars" (emphasis added by the board) (cf. page 310, third paragraph of document D19).

8.3 The appellant, in its reply to the board's communication pursuant to Article 15(1) RPBA, argued that a "demonstrated durable resistance against BNYVV" is "evidenced by its progeny (i.e. with stable inherited genome insertion)" (cf. inter alia, page 10, fourth paragraph, page 15, last but one paragraph of the appellant's letter dated 18 April 2014; point VI supra). This is also evident from the subject-matter exemplified in the patent, where the bioassay for BNYVV resistance was carried out using the transgenic F1 seeds (cf. page 6, Examples 2 and 3 of the patent). Although, as stated by the appellant (cf. point XIII supra), the definition of the term "durable resistance" given in document D19 and by the opposition division in the decision under appeal did not exclude this further requirement, it did not necessarily include it.

9. In the light of the factual situation described above and under specific consideration of the arguments presented by the appellant itself, the board concludes that the term "durable resistance" has no generally accepted meaning in the here relevant technical field and is thus open to interpretation. As such it is ambiguous and renders the scope of claim 1 unclear. Thus, the Main Request does not fulfil the requirements of Article 84 EPC.
 

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T218410.20140520. The whole decision can be found here. The file wrapper can be found here. Photo by  Derrick Tyson
obtained via Flickr.



Friday, 11 July 2014

J 15/13 - A weapon for a competitor to delay grant?


This is an appeal by an applicant (Novozymes A/S) against  a decision of the Legal Division rejecting its request to resume the grant proceedings stayed pursuant to Rule 14(1) EPC. The grant proceedings were stayed at a late stage: only after the applicant filed (minor) amendments in response to a R.71(3) communication, a third party (Danisco US Inc) requested that the proceedings for grant be stayed pursuant to Article 61(1) EPC / Rule 14(1) EPC. The decision extensively discusses the requirements of Rule 14(1) (conditions for stay), Rule 14(3) (discretion of the EPO to set a date for resumption regardless of the stage reached in the national -entitlement- proceedings) and balancing all valid interest of the parties.



Summary of Facts and Submissions
I. The appellant (applicant) appeals against the decision of the Legal Division dated 12 June 2013, rejecting its request to resume the grant proceedings of its European patent application No. 10 180 655.2 stayed as from 21 September 2012 pursuant to Rule 14(1) EPC.
With a communication under Rule 71(3) EPC dated 11 September 2012 the Examining Division informed the appellant that it intended to grant a patent on the basis of its application. The appellant was invited to pay the fee for grant and publication and to file the translations of the claims.
One day later the appellant submitted "replacement pages 1, 14 and 15" of the application which "involve minor modifications to the amendments that the examiner has proposed in his description". The appellant requested, if necessary, the issuance of a new communication under Rule 71(3) EPC incorporating these modifications.
With letter dated 21 September 2012 the respondent (third party) requested that the proceedings for grant be stayed pursuant to Article 61(1) EPC in conjunction with Rule 14(1) EPC. With the same letter the respondent submitted a copy of a lawsuit filed in Denmark on 20 September 2012, claiming entitlement to the application in suit.
With letter dated 26 September 2012 the appellant requested that the grant proceedings not be suspended or, in the case of suspension, immediate resumption of the proceedings. In addition it requested oral proceedings.
[..]
Reasons for the Decision
[...]
2. Allowability of the appeal
2.1 Under Rule 14(1) EPC, the European Patent Office must stay grant proceedings if a third party provides proof that it has commenced national proceedings against the applicant for the purpose of seeking a judgement that the third party instead of the applicant is entitled to the grant of the patent. Under Rule 14(3) EPC the European Patent Office may - at its discretion - set a date on which it intends to resume the proceedings for grant of a patent stayed pursuant to Rule 14(1) EPC regardless of the stage reached in the national proceedings. In principle, this includes the possibility to resume the proceedings right away (cf. J 33/03 of 16 November 2004, point 2.1 of the Reasons).
[...]
2.3 In appeal proceedings, where the Board of Appeal has to decide on a case where the department of the first instance had to exercise its discretion, it is not the function of the Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. Rather, the first instance department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal (cf. G 7/93, OJ EPO 1994, 775, point 2.6 of the Reasons). Therefore the Boards of Appeal should only overturn the first instance department's exercise of its discretion (cf. J 13/12 of 17 June 2013, point 3.1 of the Reasons), if it comes to the conclusion that this discretion was not exercised according to the correct criteria, or that it was exercised in an inappropriate way (G 7/93, loc. cit.).
2.4 In the decision under appeal the Legal Division, in reaching its decision, balanced the interests of the appellant and the respondent. Thus it exercised its discretion under Rule 14(3) EPC.
2.5 The first instance also exercised its discretion under Rule 14(1) EPC correctly and appropriately.
According to the established case law of the Boards, the department which is initially responsible for the decision pursuant to Rule 14(3) EPC has to take into account all valid interests of the appellant and the respondent. In this respect, the Legal Board of Appeal has ruled that the aspects that should be considered are in particular, (i) how long the proceedings before the national courts/authorities have been pending, (ii) the duration of the suspension and (iii) whether the request for suspension of the grant proceedings was filed at a late stage (cf. J 6/10 of 12 November 2012, point 4.2 of the Reasons; J 7/10 of 12 November 2012, point 4.1 of the Reasons). These aspects were considered by the Legal Division in an appropriate way.
2.6 Delaying tactics
2.6.1 Timing of the respondent's request under Rule 14 (1) EPC
The timing of the respondent's request for the suspension of the grant proceedings does not amount to a delaying tactic.
The EPC allows a third party to request suspension of the grant proceedings at any time while they are pending, i.e. at any time before the date on which the mention of the grant of the patent is published (cf. J 7/96, OJ EPO 1999, 443 point 6.2 of the Reasons). Therefore, in the present case, the respondent was within the provisions of Rule 14(1) EPC when it filed its request after the Examining Division had already dispatched the communication under Rule 71(3) EPC on 11 September 2011
Thus, in the view of the Legal Board of Appeal, the filing of the request under Rule 14 (1) EPC at the last possible moment may only be taken as an argument for the resumption of the grant proceedings if such behaviour appears to be a misuse of the respondent's right to a stay of the grant proceedings. This is not the case here.
For the same reasons, the appellant's argument that the "entitlement was never raised during the litigation (in several countries, including Denmark, Finland, Germany, The Netherlands and the United Kingdom)" - cf. letter dated 18 June 2013, point 4.17 page 6 - does not convince the Board that the respondent's request under Rule 14(1) EPC is in this case an abuse of procedure.
2.6.2 Merits of the Danish entitlement suit
Delaying tactics cannot be assumed because of the merits or demerits of the Danish entitlement suit.
2.6.2.1 The appellant is of the opinion that the Danish entitlement suit is "unjustified" and "without merit". It bases this view mainly on the fact that in these proceedings the respondent does not even allege that the transfer of know-how took place before the application in suit had been filed. It referred to the Writ of Summons of the Danish proceedings where the respondent had argued that the application in suit was filed after the respondent published the invention in a patent application and used it for the launch of a commercial product. Thus, in the view of the appellant, it is obvious that the entitlement suit must fail and was only filed in order to allow for a request for suspension of the grant proceedings.
2.6.2.2 In its decision G 3/92 (OJ EPC 1994, 607) the Enlarged Board of Appeal pointed out that, under the European patent system, the EPO has no power to determine a dispute as to whether or not a particular applicant is legally entitled to apply for and be granted a European patent in respect of the subject-matter of a particular application. Pursuant to the "Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent" (the "Protocol on Recognition") the courts of the Contracting States have sole jurisdiction to decide claims to entitlement to the right to the grant of a European patent (point 3 of the Reasons)
[...]
2.6.2.3 However, applying the principles laid down in G 3/92 the EPO must not be entirely blind as regards the entitlement suit. According to Rule 14(1) EPC, the grant proceedings may only be stayed in the case that a third party provides evidence that he has instituted proceedings against the applicant seeking a decision within the meaning of Article 61(1) EPC. The department of the EPO who has to decide whether to suspend the grant proceedings or not, and in appeal proceedings the Board of Appeal, at least is entitled to and has to verify if the suit on which a third party relies meets the requirements mentioned in Rule 14(1) EPC, i.e. if (1) the person who asks for a stay of the grant proceedings is the same person who instituted the national proceedings, (2) if these proceedings are directed against the applicant and (3) if such proceedings are entitlement proceedings within the meaning of Article 61(1) EPC.
2.6.2.4 The requirements (1) and (2), set out in the paragraph above, are met in the current case. This is undisputed.
2.6.2.5 With regard to point (3) above, the Board needs to ensure that the requirement of Rule 14(1) EPC according to which only a law suit which is directed to a judgement that a person other than the applicant is entitled to the grant within the meaning of Article 61(1) EPC justifies the stay of the grant proceedings, is satisfied. The question is whether or not the proceedings instituted before the Danish court can be considered as entitlement proceedings within the meaning of Article 61(1) EPC.
In this respect, the Board endorses the respondent's view that national proceedings leading to a decision under Rule 14(1) EPC have to be entitlement proceedings not only in name but also in nature. It is acknowledged in the jurisprudence of the Legal Board that the EPO is not allowed to examine the substance and merits of a national entitlement case. However, the Board's power of examination cannot be limited to the mere check whether the claim submitted with the entitlement suit is directed to the transfer of the application but - to certain extent - also allows and may even require a consideration of the grounds given in the complaint of the entitlement suit, namely as to whether the plaintiff's submissions - whether justified or not - are directed to a transfer of the application as a result of being the true inventor of the invention claimed in the application or its legal successor. In the Board's point of view this seems to be evident because the subject-matter of a law suit is not defined only by the claim but also by the cause of action submitted by the plaintiff.
Therefore, the Board considers it to be necessary to regard the arguments given by the plaintiff within the Danish entitlement case in order to decide whether or not this law suit could lead to a decision in the meaning of Article 61(1) EPC and thus to the stay of the grant proceedings according to Rule 14 EPC. It is emphasized by the Board in the decision J 33/03, and as argued by the appellant in the current case, that the right of a third person to request a stay of the grant proceedings is a strong weapon which can be misused. To guard against such misuse it seems to be appropriate for the Board to verify whether or not the Danish law-suit satisfies the above requirements.
2.6.2.6 In the writ of summons in the Danish proceedings it is argued as to why the respondent is of the opinion that the application in suit should be transferred to it as a consequence of it being the inventor of the now claimed invention. Whether well-founded or not, that means, in the current case, not only the claim but also the arguments brought forward in the national law suit are directed to a transfer of the application in suit as a result of such entitlement. Therefore the Danish law suit is directed to a decision within the meaning of Article 61(1) EPC and thus can be considered to be entitlement proceedings not only in name but also in nature.
2.6.2.7 Apart from what can be gleaned from the Danish court documents, the Board may also consider circumstances relating to the conduct of the Danish law suit. The Board is aware that the appellant's request of a summary dismissal of the Danish entitlement proceedings was rejected by the Danish court. Finally it appears that the Danish court is going to hear an expert before it takes a final decision. Because of these facts, without evaluating the arguments brought forward in the Danish law suit, it can be concluded that the Danish court considers the case before it not to be entirely without merit from the outset.
2.7 The respondent does not intend to uphold the patent
The respondent has stated that its intention is to withdraw the application if it wins in the Danish entitlement proceedings. However this intention does not reduce the respondent's interest in a further stay of the grant proceedings. According to Article 61(1) EPC a person other than the applicant who is entitled to the grant of the European patent may not only prosecute the application as its own (Article 61(1)(a) EPC) or file a new application in respect of the same invention (Article 61(1)(b) EPC) but also request that the European application be refused (Article 61(1)(c) EPC). Thus, it is expressly provided by the EPC that a third party may file an entitlement suit just in order to withdraw the application. On this understanding the argument of the appellant that the respondent does not need the protection guaranteed by Rule 14 EPC is not convincing. The respondent may be indifferent as to which version of the application it will withdraw after the entitlement suit has been decided in its favour. But even if the entitled proprietor is not interested in the patent, it can be in its interest to prevent the applicant from getting a patent.
2.8 Length of pending national proceedings and duration of suspension
Under Rule 14(1) EPC the proceedings for grant shall be stayed if a third party provides evidence that it has instituted proceedings against the applicant seeking a decision within the meaning of Article 61(1) EPC. Under Rule 14(2) EPC the grant proceedings shall be resumed where evidence is provided that a final decision within the meaning of Article 61(1) has been taken. These two provisions make clear that under the EPC the grant proceedings can be suspended during the whole duration of the national entitlement proceedings.
In the present case, the Danish entitlement proceedings were initiated by the respondent on 20 September 2012. The Legal Division stayed the patent grant proceedings as from 21 September 2012. A hearing before the Danish court should take place in October 2014. Assuming that the Danish court will come to a final decision within a reasonable period of time after this hearing, the first instance national entitlement proceedings could be finished within roughly two years from the commencement of the stay.
According to the jurisprudence of the Boards, a suspension that lasts longer than three and a half years, could, under certain circumstances, damage the legitimate interest of the applicant (cf. J 13/12 of 17 June 2013, point 3.1.18 of the Reasons and J 10/02 of 22 February 2005, point 4.1 of the Reasons).
In the cases J 6/10 and J 7/10 - which are related cases - the Legal Board of Appeal found that a four-year duration of the suspension of the grant proceedings was not in itself a sole decisive factor for lifting the suspension (cf. J 6/10 of 13 November 2012, point 4.3 of the Reasons; J 7/10 of 13 November 2010, point 4.3 of the Reasons). Rather, in this case, the Legal Board of Appeal considered the duration of the suspension of about four years in combination with the fact that the respondent applied delaying tactics not only in respect of the filing of the request for suspension pursuant to Rule 14(1) EPC, but also in respect of the way in which the national entitlement proceedings were conducted, as a basis for ordering the resumption of the grant proceedings. Since such delaying tactics cannot be observed here (see points 2.6 to 2.6.2.7 above), the situation of the present case is to be distinguished from cases J 6/10 and J 7/10.
The present case also differs from that underlying the decision J 33/03 cited by the appellant. In J 33/03 the decision to resume the grant proceedings was mainly based on the assumption that a final decision of the entitlement suit could be expected after a final decision of the Federal Supreme Court of Justice, a third instance, which would take many years (J 33/03 of 16 November 2004, point 3. of the Reasons). That the present proceedings will be so long and drawn out has not been substantiated in the present case.
Furthermore, in the present situation i.e. after a relatively short duration of the suspension of the grant proceedings and a short time before an expected first-instance decision of the entitlement suit, the alleged economic damage caused by a further stay of the grant proceedings cannot be taken as a decisive reason for resumption. Hence, the probable length of stay of two years appears to be an acceptable period for a stay and does not justify the immediate resumption of the grant proceedings pursuant to Rule 14(3) EPC.
2.9 Further filing of amendments by the appellant
Additionally it has to be taken into account that, in the present case, the appellant filed further amendments to its application after the communication pursuant to Article 71(3) EPC had been dispatched by the European Patent Office.
The Legal Board of Appeal is neither competent nor qualified to evaluate whether or not these amendments have an impact on the further course of the grant proceedings. However, the present case can be distinguished from the case where the resumption of the grant proceedings would directly lead to the grant of the patent, as is normally the case when the stay of these proceedings occurred after the issuance of the communication under Rule 71(3) EPC. Thus, the argument that a resumption of the grant proceedings could not impair the third parties interest by affecting "its" patent - which normally argues for a quick resumption of the grant proceedings in cases like this - does not apply here.
2.10 In conclusion, as matters currently stand, there seems to be no predominant interest in an immediate resumption of the grant proceedings. Furthermore it does not seem to be appropriate to set a date on which the proceedings for grant shall be resumed.
3. Thus, the appeal of the appellant is not successful.
Order
For these reasons it is decided that:
The appeal is dismissed


This decision has European Case Law Identifier:  ECLI:EP:BA:2014:J001513.20140509. The whole decision can be found here. The decision was made available obnline on 08.07.2014. The file wrapper can be found here. Photo by Rekyt obtained via Flickr.

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