Friday, 30 January 2015

T 1101/14 - Don't put the blame on your secretary, if you as a representative failed yourself!


A representative  mistakenly signed a statement of grounds of appeal having most of its pages missing. As a result, the statement of grounds of appeal, did not indicate the reasons for setting aside the impugned decision or the extent to which it was to be amended - and the Board came to the preliminary conclusion that the appeal appeared to be  inadmissible. The representative tried to argue all due care, referring to the secretary's reliability (trying to put all the blame on her), but ignoring the representative's own lack of particular care when checking and signing the documents to be submitted. But: no excuses for not having checked that carefully! 

Summary of Facts and Submissions
I. The appeal lies against the decision of the examining division [...]
II. The appellant filed a notice of appeal on 31 Janu­a­ry 2014 and paid the appeal fee on the same day. On 11 April 2014, the appellant submitted, electro­nically, amended claims and description pages accor­ding to a main request and auxiliary requests 1-3, accom­panied by a letter stating the following:
"In the matter of the Appeal, we enclose herewith the Grounds of Appeal, to­gether with amended description pages and claims in re­lation to a Main Request and First to Third Auxiliary Re­quests. We request that the decision of the Examining Division be set aside in its entirety, and that a pa­tent be granted based on the application in the form of the Main Request. If the Appeal Board considers that the Main Request is not permissible, we respectfully request an opinion in relation to the allowability of the First to Third Auxiliary Requests. We request Oral Proceedings in the event that any of the Requests are not considered allow­able by the Appeal Board."
No fur­ther reasons were received with that submission, nor did the letter contain a list of intended enclosures.
III. With a summons to oral proceedings, the board informed the appellant of its preliminary opinion that the letter of 11 April 2014, which the board considered to constitute the statement of grounds of appeal, did not indicate the reasons for setting aside the impugned decision or the extent to which it was to be amended. The board therefore came to the preliminary conclusion that the grounds of appeal did not satisfy the require­ments of Rule 99(2) EPC so that the appeal appeared to be inadmissible pursuant to Rule 101(1) EPC. The appellant was also informed that the oral pro­ceedings would be limited to the question of admissibility.
IV. In response to the summons, received on 26 September 2014, the appellant argued that "the Grounds of Appeal which were filed were not the 'full' intended Grounds" and reques­ted re-establishment of the applicant's right in the application under Article 122 EPC in view of the fact that, in spite of all due care required by the cir­cum­stances having been taken, the Applicant was unable to observe the deadline for filing the grounds of appeal under Article 108 EPC.
V. In a communication dated 8 October 2014, the board in­formed the appellant that the request for re-establish­ment would be dealt with in the planned oral procee­dings and raised a number of questions. Since a sub­mission rela­ting to the grounds of appeal was re­ceived in time, it appeared questionable whether a time limit had been missed at all and therefore whe­ther the re­quest for re-establishment was admissible. The board also noted that the appellant had, in res­ponse to its electronic sub­mission, received an imme­di­ate acknow­ledge­ment of re­ceipt from which the omission of a sepa­rate document con­tai­ning the grounds of appeal should have been appa­rent. In view of this it seemed that the cause of non-compliance had been re­moved directly after trans­mission and that consequently the request for re-establish­ment was not filed within the two-month period pre­scribed by the EPC. Moreover, even if the request for re-estab­lish­ment had been made in good time, the presence of the receipt would appear to have a bea­ring on the assessment of whether all due care re­quired by the circumstances had been taken.
VI. The appellant provided further arguments in a letter dated 23 October 2014.
VII. The appellant's case, insofar as it is relevant to the present decision, can be summarized as follows.
a) By 1 April 2014, the appellant and the repre­sen­tative had come to an agreement as to which do­cu­ments were to be filed as and with the grounds of appeal.
b) On 11 April 2014, a bundle of documents was pre­pared for uploading to the electronic filing sys­tem including, in particular, a letter relating to the appeal procedure comprising a cover letter and a twelve-page annex containing the actual grounds of appeal.
c) The procedure normally followed by the represen­ta­tive and her secretary for an electronic filing con­sisted of five steps:
  1. The representative would instruct the secretary which documents were to be filed.
  2. The secretary would upload these documents to the local end of the electronic filing system.
  3. The representative would click through every page of the uploaded documents and, once verified, electronically sign them.
  4. The secretary would perform the "send" function of the electronic filing system and thus have the signed documents transmitted to the EPO.
  5. The secretary would receive the electronic receipt of transmission and check whether the documents enclosed for transmission were properly transmitted.

d) This procedure was also followed in the present case. However, two errors occurred. The se­cretary failed in step ii) to upload the twelve-page annex containing the grounds of appeal, and the repre­sen­tative failed to notice in step iii) that this annex was missing before elec­tronically signing the documents for trans­mission.
VIII. The oral proceedings were held on 12 December 2014, at the end of which the chairman announced the decision of the board.
Reasons for the Decision
The admissibility of the request for re-establishment
1. According to Article 122(1) EPC, the remedy of re-estab­lishment is available to an applicant or pro­­pri­e­tor who was unable to observe a time-limit vis-à-vis the European patent office. Given that a statement of grounds of appeal was received in time on 11 April 2014, it might be considered that no time limit was missed at all.
1.1 The appellant argued that the letter received on 11 April 2014 did not constitute the grounds of appeal. This was obvious from the letter because it referred to grounds of appeal which were meant to be "enclose[d] herewith" but which were, in fact, not. The appellant also referred to Rule 99(2) EPC which required the statement of grounds of appeal to contain "the reasons for setting aside the decision impugned [...] and the facts and evidence on which the appeal is based" and argued that the submission of 11 April 2014 clearly did not contain reasons, facts or evidence. According to the appellant, therefore, no grounds of appeal were received at all and hence the time limit under Article 108 EPC for filing the grounds of appeal was missed.
1.2 The board is not convinced by the appellant's argument. Rule 99(2) EPC provides that the statement of grounds of appeal "shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amen­ded" (emphasis by the board). When an appellant does not maintain the claims as refused but files amen­ded claims, it is a priori reasonable to assume that the appellant may not want to challenge the rea­sons of decision under appeal but rather wants it to be amen­ded. Thus the absence of reasons in the letter of 11 Ap­ril 2014 does not allow the conclusion that the letter does not constitute grounds of appeal in the sense of Article 108 EPC.
1.3 However, even though something was filed within the appropriate time limit which could be understood to be the statement of grounds of appeal, the board accepts that the submission was incomplete with respect to what was meant to be filed at the time. The appellant poin­ted out that not admitting the request for re-estab­lish­­­ment would, in the present case, be tantamount to denying the appellant its access to the boards of appeal and therefore its only remedy against the deci­sion under appeal, and argued that this would be a dis­proportional consequence of the representative's pro­cedural slip.
1.4 The board agrees with the appellant that Article 122 EPC is intended to provide a remedy for the type of error that occurred in the present case.
2. According to Rule 136(1) EPC, the request for re-es­tablishment of rights shall be filed in writing with­in two months from the removal of the cause of non-com­pli­­ance with the time limit. According to the juris­pru­dence of the boards of appeal, the cause of non-compli­ance is removed on the date on which the person respon­sible for the application is made aware of the fact that a time limit has not been observed or when the per­son concerned ought to have noticed the error if all due care had been taken (see Case Law of the Boards of Appeal of the European Patent Office, 7th ed. 2013, III.E.3.1.1 a)).
2.1 The representative argues that she became aware of her error only when she received the board's communication dated 5 August 2014, so that the two months period started at that point.
2.2 The statement of grounds of appeal was filed electro­nically on 11 April 2014. In immediate response to this filing, the appellant received an acknowledgement of re­ceipt for the submitted documents (see also annex G, filed on 26 September 2014). The pertinent list men­tions a letter of appeal ("APPEAL-LETT-1.pdf") having merely two pages and, apart from that, only amended claims and description pages. In particular, receipt of a twelve-page document containing a statement of grounds was not acknowledged. The board is of the opin­ion that the omission would have been directly apparent to the representative had she checked the acknowledge­ment of receipt.
2.3 The representative has however argued that she [= the representative] does not - and is not required to - check the electronic acknowledgement of receipt, as this is a secretarial task. She explained that, according to the procedure for elec­tronic filing used in her office, the primary pur­pose of the acknowledgement of receipt is to confirm that the documents received at the EPO tally with the trans­mitted ones so that, in the case of a transmission problem, some or all of the documents can be sent again.
2.4 The board considers the electronic fi­ling procedure used in the representative's office and, in particular, the use made of the electronic re­ceipt according to that procedure, to be reasonable. There­fore, the board finds that the date on which the cause of compli­ance was removed was the date when the repre­sen­tative actu­ally learned from the board's summons to oral pro­cee­dings that the statement of grounds had been trans­mitted in­completely. As the board's summons was posted on 5 Au­gust 2014, the appellant's request for re-estab­lishment of rights filed on 26 September 2014 was made within the time-limit prescribed by Rule 136(1) EPC.
3. The request for re-establishment is therefore admissible.
The allowability of the request for re-establishment
4. The appellant has argued that, as required by the ju­ris­­prudence of the boards of appeal, the se­cre­tary was a suitable per­son, properly supervised in the task to be performed, and that the representative had exercised reasonable su­pervision over the secretary's work. Also the re­pre­sentative herself had a hitherto flawless record. Thus, the two errors were uncharacteristic and isolated mis­takes in an otherwise secure system. The appellant did not however give any specific reasons as to why the two errors had occurred in the present case.
5. The board has no doubts regarding the professional qua­lifi­ca­tions of the secretary and no reason to question the quality of her supervision by the representative or the reliability of the filing procedure as described. However, in view of the following, the question of whe­ther the secretary's mistake can be excused need not be decided in the present case.
6. The representative argued that, according to the de­scribed procedure, she clicks through every page of the docu­ments to be transmitted before she electronically signs them (see point VII c) above, step iii)). This corres­pon­ded to leafing through a paper submission page by page before signing it by hand.
6.1 The board agrees that this is a reasonable way of checking whether the representative is signing the right documents. More than that, the board considers that it is the representative's responsibility and ob­li­gation to make sure that what is signed is precise­ly what is meant to be signed.
6.2 The representative argued that she failed to spot the incompleteness in the documents she signed despite exer­cising all due care as required by the circum­stan­ces. The representative thus effectively asked the board, by way of re-establishment, to excuse the re­presentative's mistake of signing the wrong documents.
6.3 The representative referred to T 1095/06 in order to support her case. This decision dealt with the question of whe­ther "re-establishment may be possible even in the event of a culpable error on the part of the assis­tant, if the professional representative is able to show that he has chosen for the work a suitable person properly instructed in the tasks to be performed, and that he has exercised reasonable supervision over the work" so that the error can be considered "an isolated error in an otherwise satisfactory system" (see T 1095/06, reasons 5). The decision stated (reasons 6) that the pertinent jurisprudence could not "be extended to everything that can be described as an 'isolated mis­take'" and that, specifically, this jurisprudence could not "be relied on to ignore a failure to act by the professional representative himself, unless there are special circumstances which make the failure to act compatible with taking all due care."
6.4 The board notes that the representative's error is substantially inde­pen­dent of the specific procedure in place for elec­tro­nic filing, since it would arise in the same way if the representative worked on her own and without the support of a secretary.
6.5 The board need not decide whether the representative's mistake in question is in principle compatible with all due care. It notes however, that the signing of docu­ments is an act that requires particular care on the representative's part, especially when the signature relates to the last legal remedy against an adverse de­cision as is, in the present case, the appeal against the decision by the examining division to refuse the application. The board therefore considers that signing the wrong documents is incompatible with all due care unless special circumstances are in­voked which could justify the representative's mistake in a particular case, thus following the cited reasons of T 1095/06.
6.6 In the absence of such special circumstances the board comes to the conclusion that the representative did not take all due care required by the circumstances in the process of filing the grounds of appeal. The request for re-establishment in the time limit for filing the statement of grounds of appeal is therefore to be refused.
The admissibility of the appeal
7. According to Rule 99(2) EPC, the appellant, in the statement of grounds of appeal, shall in particular indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended (emphasis by the board).
7.1 The letter of 11 April 2014 contained no reasoning as to the substantive merits of the amended claims. The grounds of appeal do not specify whether the decision is challenged nor, if so, to what extent and why. They also fail to specify whether the amendments made to the claims are meant to overcome the reasons given in the decision or, if they do, why they are deemed sufficient in this respect.
7.2 This assessment, communicated to the appellant with the summons to oral proceedings, was not challenged by the appellant either in writing or orally.
7.3 Therefore, the board concludes that, due to the absence of any reasons, the letter filed on 11 April 2014 does not satisfy the requirements of Rule 99(2) EPC regar­ding the grounds of appeal so that the appeal has to be rejected as inadmissible.
Order
For these reasons it is decided that:
1. The request for re-establishment of rights is refused.
2. The appeal is rejected as inadmissible.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T110114.20141212. The whole decision can be found here. The file wrapper can be found here. Photo "Signature" by Sébastien Wiertz obtained via Flickr under CC BY 2.0 license.


Thursday, 29 January 2015

T 1480/12 - A lesson for a lazy representative


The Examining Division refused the application (main request, first and second auxiliary requests) for lack of an inventive step. A third auxiliary request of the appellant for the grant of a patent on the basis of a new claim 1 consisting of a merge of claims 1 and 19 according to the second auxiliary request was not admitted into the procedure under Rule 137(3) EPC, as such a claim was not considered to overcome the Article 56 EPC objection. The examining division held that the request, though not presented in writing, was sufficiently clear for the division to decide on admissibility. The applicant appealed the decision - with the statement setting out the grounds of appeal the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of (substantially) the same main, first, second and third auxiliary request. The applicant did however not present the third auxiliary request as amended application documents in accordance with the formal requirements of Rule 50 EPC, despite being informed of the necessity. As he did not, the Board did not give consent to admit it into the procedure. The decision gives no clue why the representative was too lazy to make a true third auxiliary request.



Summary of Facts and Submissions
I. The appeal is against the refusal of application [...] for lack of an inventive step, Article 56 EPC, (main request, first and second auxiliary requests) over documents [...].
A third auxiliary request of the appellant for the grant of a patent on the basis of a new claim 1 consisting of a merge of claims 1 and 19 according to the second auxiliary request was not admitted into the procedure under Rule 137(3) EPC, as such a claim was not considered to overcome the Article 56 EPC objection. The examining division held that the request, though not presented in writing, was sufficiently clear for the division to decide on admissibility.
II. With the statement setting out the grounds of appeal of 19 June 2012, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the following:
Main request, first and second auxiliary request:
Claims 1 to 19 according to the appellant's main request titled "Requête principale" / Première requête subsidiaire" /  Deuxième requête subsidiaire" filed with letter dated 18 November 2011, or
Third auxiliary request:
Claim 1 recited in the statement setting out the grounds of appeal dated 19 June 2012 on pages 27 and 28.
III. A summons to oral proceedings was issued by the board, provided with an annexed communication in which a provisional opinion of the board on the matter was given.
Regarding the appellant's requests in the statement setting out the grounds of appeal, the appellant was informed that, in order to be considered, new requests should be provided with amended application documents in accordance with Rule 50 EPC. No such amended application documents were filed in respect of the third auxiliary request.
Furthermore, the appellant was informed that it appeared that claim 1 according to the appellant's main request, as well as the first and second auxiliary requests lacked clarity, contrary to Article 84 EPC, and doubts existed as to whether the requirements of Article 83 EPC were met.
Moreover, the appellant was informed that it appeared that the subject-matter of claim 1 of all requests lacked an inventive step in the sense of Article 56 EPC over document D1. In particular, claim 1 was considered to contain both technical features and non-technical features pertaining to the fields of schemes for doing business and administrative schemes, the features making no contribution to the technical character of the invention not supporting the presence of an inventive step.
IV. With a letter dated 1 December 2014, the board was informed that the appellant would not be attending the oral proceedings.
No arguments were provided by the appellant in response to the board's observations.
V. Oral proceedings were held on 10 December 2014 in the absence of the duly summoned appellant.
VI. Claim 1 of the appellant's main request [...]
VII. Claim 1 of the appellant's first auxiliary request [...]
VIII. Claim 1 of the appellant's second auxiliary request [...]
IX. The appellant submitted with the statement setting out the grounds of appeal in substance the following arguments:
[...]
Moreover, the examining division should have accepted the third auxiliary request for the reasons already stated for the other requests.
Reasons for the Decision
1. The appeal is admissible.
2. Absence of the duly summoned appellant
The duly summoned appellant did not attend the oral proceedings, as announced. The proceedings were continued without him, as provided for in Rule 71(2) EPC 1973.
In accordance with Article 15(3) RPBA, the appellant was treated as relying only on its written case.
The board was in a position to decide at the conclusion of the oral proceedings, since the case was ready for decision (Article 15(5) and (6) RPBA) and the voluntary absence of the appellant was not a reason for delaying the decision (Article 15(3) RPBA).
3. Main request
3.1 Clarity, sufficiency of disclosure
Claim 1 of the main request defines "a comparator, to compare the entered profiling information to selections made by other users with similar profiles".
It is, however, unclear how profiling information (such as age etc. (cf description, page 19, lines 11 to 13)) should be compared to selections (eg songs) made by other users with similar profiles.
Accordingly, claim 1 lacks clarity, contrary to Article 84 EPC.
Moreover, as the above does not become clear from the description and drawings either, the application as a whole does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, contrary to the requirement of Article 83 EPC.
The above was noted in the communication annexed to the summons to oral proceedings. The appellant did not submit any arguments in response.
In view of the above, the appellant's main request is not allowable.
4. First and second auxiliary requests
The above also applies with respect to claim 1 and the remaining application documents according to the appellant's first and second auxiliary requests.
Accordingly, the appellant's first and second auxiliary requests are not allowable either.
5. Third auxiliary request
As a third auxiliary request, the appellant requested the grant of a patent on the basis of a claim 1, consisting of a merge of claims 1 and 19 according to the second auxiliary request, recited in the statement setting out the grounds of appeal on pages 27 to 28.
In the communication annexed to the summons to oral proceedings before the board, the appellant was informed that, in order to be considered, new requests should be provided with amended application documents in accordance with Rule 50 EPC.
No such amended application documents were filed in respect of the third auxiliary request, neither before the examining division, nor with the statement setting out the grounds of appeal, nor in response to the communication of the board annexed to the summons to oral proceedings.
Rule 50(1) EPC, in particular in conjunction with Rule 49 EPC, requires amended application documents, such as amended claims, to be presented on separate sheets and meeting certain form requirements. This is essential for further processing of the application, and, not least, avoids any doubts about what exactly is requested to be granted. As such, the board views critically the procedure followed by the examining division, deciding on the third auxiliary request based merely on an indication of the applicant of a merging of claims without any concrete claim being actually filed. In particular, in view of the fact that no amended application documents were filed at all in respect of the third auxiliary request in the first-instance proceedings, the board deemed it necessary in the present case to insist on the filing of proper amended application documents before proceeding to consider any such request. As noted above, no amended application documents were filed in respect of the third auxiliary request in response to the communication of the board annexed to the summons to oral proceedings.
Moreover, it is noted that since claim 1 as recited in the statement setting out the grounds of appeal contains the same unclear feature as claim 1 of the main request, it does not overcome the above objections under Articles 84 and 83 EPC.
For the above reasons, no consent is given to the amendment according to the appellant's third auxiliary request, in accordance with Rule 137(3) EPC.
Order
For these reasons it is decided that:
The appeal is dismissed.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T148012.20141210. The whole decision can be found here. The file wrapper can be found here. Photo "Lazy day"by Mike Norton obtained via Flickr under CCBY 2.0 license.

Friday, 23 January 2015

1754/11: A fabric finished with a "mixture"


This appeal lies from a decision of the Opposition Division. There was an earlier appeal T0681/01 in this case. In decision T0681/01 the then pending third auxiliary request was remitted to the Opposition Division to decide on the issue of novelty over alleged prior use and the issue of inventive step. The Opposition Division decided to maintain the patent in accordance with the claims of the then pending main request, which are equal to the above mentioned third auxiliary request. Opponents 1 and 2 filed the appeal.
As the result of the submissions of the Appellants and the Respondent (patent owner) the
Board had to interpret the main claim, in particular the term "mixture". Also, the Board decided on inventive step and "for the sake of completeness" the Board discussed two inventive step approaches which each start from a different closest prior art.

The decision comprises also many other interesting points, like the admissibility of alleged public prior use and the apportionment of costs.  For those subjects, the interested reader is referred to the full text of the decision.

Summary of Facts and Submissions
 

(...) 

IV. Claim 1 according to said third auxiliary request reads as follows:"1. A pleated blind or roller shade comprising a fabric material having a first finish on a first side and a second finish on a second pearlescent side; said first finish comprising a mixture including a first pigment having a first particle size and said second finish comprising a mixture including said first pigment and a second, light reflective pearlescent pigment having a second particle size; said second particle size being larger than said first particle size; the particles of the first pigment being capable of permeating said fabric, whereas the particles of the second pigment remain substantially on the second side, and said second side of said fabric having substantially the same colour as said first side.".

Dependent claims 2 to 7 according to said request relate to specific embodiments of the pleated blind or roller shade of claim 1.

(...)

The Opposition Division decided, inter alia,
- to admit documents D7 and D11 despite their belated filing,
- not to admit documents E20 to E25 in view of their very late filing, their lack of prima facie relevance and their lack of completeness, in the sense that they did not prove up to the hilt the alleged public prior use of a fabric according to sample E5;
- that the fabric "Dapple SPC Ecru" belonged to the prior art under Article 54(2) EPC;
- that, however, the public prior use of the fabric "Dapple SPC Ecru" was not novelty destroying for the subject-matter of claim 1 at issue since said fabric did not comprise a second finish on the second side containing a mixture of pigment particles as required by claim 1;
- moreover, the claimed subject-matter was inventive with regard to the public prior uses of the fabric "Dapple SPC Ecru" and of fabrics for shower curtains corresponding to those of samples E3 and E4;
- hence the claimed subject-matter was novel and involved an inventive step over the cited prior art.
The Opposition Division also considered that the second oral proceedings of 1 April 2011 had to be held because of the late filing by Opponent 01 of documents E20 to E25, but that "no voluntary abuse of the proceedings was intended" by Opponent 01. Hence, for reasons of equity, the Opposition Division decided an apportionment to Opponent 01 of 70% of the costs endured by the Patent Proprietor in connection with the second oral proceedings of 1 April 2011.

VI. Appellants 01 and 02 (Opponents 01 and 02) submitted in their statements of grounds of appeal that the claimed subject-matter lacked novelty or at least inventive step in view of the alleged prior uses.
In particular they invoked :
- lack of novelty over the alleged public prior use of a fabric according to sample E5;
- lack of novelty or inventive step over the alleged public prior use of a fabric "Dapple SPC Ecru" and of other Louver-Lite SPC fabrics mentioned in exhibit SWB1; and
- lack of inventive step starting from the public prior uses of a fabric according to samples E3 or E4.
Appellant 02 also submitted as further evidence inter alia
D14: Declaration by Mr. Barratt dated 14 October 2011 including exhibits BLB3 to BLB5;
D15: Extracts from the Oxford Dictionary of Chemistry, fourth edition 2000, page 364, relating to the definition of "mixture"; and
D16: Printout (11/10/2011) of four web pages (1/4 to 4/4) from the Online Free Dictionary, relating to the definition of "mixture".
Appellant 01 also contested the decision on apportionment of costs.

VII. The Respondent (Patent Proprietor) re-submitted with its reply of 2 March 2012 the sets of claims (labelled "main request claims - filed 23 January 2009") held allowable by the Opposition Division, and also filed further sets of amended claims as auxiliary claim requests 1 to 11. It contested also the admissibility of documents that had been filed belatedly during the opposition and appeal proceedings by the Appellants and maintained that the claimed subject-matter was novel and inventive over the cited prior art. Moreover, it also contested the decision on apportionment of costs.

(...)
Reasons for the Decision
 

(...) 

Respondent's main request - Construction of claim 1

1. Interpretation of the term "mixture" in claim 1

1.1 Claim 1 concerns a "pleated blind or roller shade comprising a fabric material having a first finish comprising a first pigment on a first side and a second finish on the second pearlescent side". As regards said second finish the wording of the claim requires that it comprises "a mixture including said first pigment and a second, light reflective pearlescent pigment".
As regards the meaning to be given to the term "mixture" within the context of claim 1 there was no agreement among the parties. Therefore, the Board must decide which is the proper meaning of this term in the context of claim 1, in order to establish the breadth of the claim to be considered in the assessment of novelty and inventive step.

1.2 It is established jurisprudence of the Boards of Appeal of the EPO that claims should be read giving the words the meaning and scope which they normally have in the relevant art unless the description gives the words a special meaning by explicit definition (see e.g. decision T 620/08, point 3.8 of the reasons).

1.3 It is undisputed that in the present case there is no explicit indication in the description of the patent in suit of any such special meaning to be attributed to the term "mixture" within the context of claim 1. Therefore, the term "mixture" has in the present case the meaning and scope that it normally has in the relevant art.

1.4 The Board agrees in this respect that dictionaries containing definitions for the term "mixture", as illustrated in documents D15 and D16, are a suitable basis for the correct interpretation of this term within the context of claim 1 insofar as the definitions are applicable to the specific technical field, which is the chemical technical field of pigment comprising compositions.

1.4.1 The Board remarks also that the admissibility of D15 and D16 was not contested by the Respondent (see point IX supra) despite their late filing. The Board has also no reason for disputing their admissibility.

1.4.2 Moreover, even though the filed pages of D15 and D16 relate to versions of dictionaries published after the priority date claimed by the patent in suit, it was not disputed that the definitions contained therein were already applicable at said priority date.

1.4.3 D15 is an excerpt from a chemical dictionary and defines a "mixture" as "a system of two or more distinct chemical substances" and specifies that there exist "homogenous mixtures...in which the atoms or molecules are interspersed" and "heterogenous mixtures which have distinguishable phases".

1.4.4 D16 is a collection of excerpts from various dictionaries. The definitions of the term "mixture", which are at first sight applicable also to the chemical technical field of pigments are the following:
- "1.a. The act or process of mixing: An alloy made from the mixture of two metals;
and
"5. Chemistry A composition of two or more substances that are not chemically combined with each other and are capable of being separated"
(excerpt from "The American Heritage Dictionary of the English Language", page 1 of D16);
- "1. the act of mixing or state of being mixed;
and
"3. (Chemistry) Chem A substance consisting of two or more substances mixed together without any chemical bonding between them"
(excerpt from "Collins English Dictionary - Complete and Unabridged", page 1 of D16);
- "A composition of two or more substances that are not chemically combined with each other and are capable of being separated"
(excerpt from "The American Heritage Science Dictionary" page 1 of D16);
- "(chemistry) a substance consisting of two or more substances mixed together (not in fixed proportions and not with chemical bonding)"
(excerpt from "Based on WordNet 3.0, Farlex clipart collection", page 2 of D16).
From the definitions listed above it can thus consistently be derived that the term "mixture" indicates normally in the chemical technical field a homogenous or heterogenous system formed by mixing together two chemical entities which do not bind chemically with each other.

1.5 Appellant 02 invoked inter alia the following special definition:
"lamellar mixture - a mixture in which substances occur in distinct layers"
(excerpt from "Based on WordNet 3.0, Farlex clipart collection", page 2 of D16).

1.5.1 However, it is clear for the Board that this definition concerns a very specific system occurring only under particular circumstances, which system would always be referred to in the relevant art as "lamellar mixture" and not simply as "mixture". Hence, this definition cannot be considered to represent the normal meaning that a skilled person would apply to the term "mixture" in the relevant art, let alone in the context of claim 1.

1.5.2 The Board remarks in particular that the wording of claim 1 requires said first pigment particles and said second pearlescent pigment particles to be present in a "mixture" comprised in one and the same finish.
Therefore, the Board concludes that the wording of claim 1 does clearly not encompass, on a proper interpretation, a mixture wherein said two types of pigments particles are not contained in the same layer but in different layers.

1.5.3 Consequently, a fabric comprising on one side a coloured first pigment and a pearlescent pigment in different layers, wherein both pigments are, in combination, responsible for the visual colour effect perceived by the observer on said side of the fabric, does not, for the Board, meet the criterion of claim 1 at issue, which requires instead two individual types of pigment particles mixed together in one and the same finish composition.

1.6 As regards the Appellants' submission that the "mixture" according to claim 1 at issue would also encompass embodiments wherein the pearlescent pigment comprises a coating consisting of a first pigment of smaller particle size, the Board remarks that such an interpretation is also not in agreement with the normal meaning to be given to the term "mixture" as set out above.

1.6.1 In such a case the pearlescent pigment is coated onto the particles of the first pigment but not "mixed" with the first pigment.

1.6.2 Moreover, the fact that at a microscopic level some admixing of the first pigment with the pearlescent pigment could anyway occur is irrelevant since the coating is an integral part of the pearlescent pigment and a pearlescent pigment comprising a coating is, on a proper interpretation, also clearly distinct from a mixture of a first pigment and a second pearlescent pigment.

1.6.3 This is confirmed by the use of the term "pearlescent pigment" in the prior art as, for example, shown in the brochure BLB3, submitted by Appellant 02 with the declaration D14, concerning the commercially available pearlescent pigments of the Iriodin® series, consisting of mica coated with titanium dioxide. This document reads, in fact, on page 2: "The mica serves as a carrier for the transparent titanium dioxide layer, which is solely responsible for the pearl lustre".

1.7 Therefore, the Board accepts the argument of the Respondent that a "mixture" of a first pigment with a pearlescent pigment in the sense of claim 1 must be understood to concern a composition comprising two types of distinct, individual pigments particles of different particle size mixed together (as opposed to one particle type coating the particles of the other type) within said finish composition without formation of any chemical bond between them.

Respondent's main request - Novelty and inventive step

2. Objections and evidence

2.1 Allegation of prior use relying on sample E5

(...)

2.1.2 The Board also sees no reason for calling into question the finding decision of the Opposition Division that said allegation of public prior does not meet the strict standard of proof applicable. Hence, this alleged prior use is not further considered as prior art in the following reasons.

2.2 Public prior uses of fabrics according to samples E3 and E4

(...)
2.2.2 These fabrics may thus be taken into consideration as prior art in the assessment of inventive step.

2.3 Alleged public prior uses of SPC fabrics

(...)


2.3.4 Therefore, in the following, the prior uses based on SPC fabrics are all dealt with by referring to the fabric "Dapple SPC Ecru" only.

3. Novelty

3.1 As confirmed by Appellant 02 at the oral proceedings, the fabric "Dapple SPC Ecru", which can be used in a roller blind or shade as disclosed in SWB1 (see e.g. page 3, section Solar Protective Coating (SPC); section "Shades of Perfection"; sub-section "Roller Blinds" and Figure; Table on page 4), comprises a dyed fabric material containing a first pigment permeating the fabric, an intermediate heat-sealable layer coated on one side of the dyed fabric and a white layer of titanium dioxide coated mica (a pearlescent pigment) as outer layer on the heat-sealable layer.

3.2 Based on its interpretation of the term "mixture" as used in claim 1 (point 1.7 supra), the Board concludes that this SPC fabric does not contain on a second side a finish comprising a "mixture" of a pearlescent pigment and a first pigment of smaller particle size.

3.3 Hence, the subject-matter of claim 1 and, consequently, of claim 2 to 7 dependent thereon, is novel over a roller blind comprising the fabric "Dapple SPC Ecru" or any other SPC fabric made available to the public by prior use.

3.4 Since no other prior art was cited against the novelty of claim 1 according to the main request (see point XI supra), the Board concludes that the subject-matter of claim 1 and, consequently, that of claims 2 to 7 dependent thereon is novel (Articles 52(1) and 54(1)(2) EPC).

4. Inventive step

4.1 The invention

4.1.1 The invention concerns a pleated blind or roller shade.

4.1.2 As explained in the patent in suit (paragraph [0002]), pleated blinds and roller shades of the prior art usually incorporated fabric material coloured on the first side to enhance the decorative function of such window covering product, while being metallized on the opposite second side for reflecting sunlight or heat.

4.1.3 Therefore, according to the patent in suit (see paragraphs [0009], [0011] and [0016]), the invention aimed at providing alternative pleated blinds or roller shades which have substantially equal heat and light reflective properties as conventional metallized fabrics, have an improved resistance against damage and wear during use, may be prepared in a more economical way in a single operation and wherein both sides may have substantially the same colour.

4.2 Closest prior art

4.2.1 The Respondent considered the known metallized pleated blinds described in paragraph [0002] of the patent in suit as the most appropriate starting point for the evaluation of inventive step, i.e. pleated blinds which incorporate fabric material that is coloured on the first side to enhance the decorative function of such window covering product, while being metallized on the opposite second side to reflecting sunlight or heat.

4.2.2 For the Board, the starting points indicated by Appellant 01, i.e. the prior used fabrics according to samples E3 or E4 are a less appropriate starting point than the prior art cited by the Respondent, since they were made for use in shower curtains, i.e. they belong to a different technical field than that of the patent in suit and were not intended to have substantially equal heat and light reflective properties as conventional metallized fabrics.

4.2.3 As regards a roller blind according to SWB1 comprising the allegedly prior used fabric "Dapple SPC Ecru", the advertisement SWB1 clearly describes on its last page under the heading "Solar, Optical and Colour Fastness Properties" the outstanding heat and light reflective properties of the SPC fabrics described.
Therefore, the Board accepts that the public prior use of such a fabric, if proven, could well be considered to represent a suitable starting point for the evaluation of inventive step.

4.2.4 In the following assessment of inventive step the Board thus follows, for the sake of completeness, each of the two possible approaches, which, however, both lead to the same conclusion that the claimed subject-matter is not obvious. Approach A starts from a roller blind containing the fabric "Dapple SPC Ecru" (assuming for the sake of argument that it belongs to the state of the art to be considered) and approach B starts from a pleated blind comprising a metallized fabric as mentioned in the patent in suit.

Approach A

4.3 Technical problem underlying the invention

4.3.1 According to Appellant 02, the technical problem underlying the claimed invention, in the light of a roller blind comprising the fabric "Dapple SPC Ecru", consisted only in the provision of an alternative roller shade having a fabric of substantially the same colour on both sides.

4.4 The solution
As the solution to the technical problem indicated above, the patent in suit proposes the roller shade according to claim 1 at issue, which is characterised in that it comprises " a fabric material having a first finish on a first side and a second finish on a second pearlescent side; said first finish comprising a mixture including a first pigment having a first particle size and said second finish comprising a mixture including said first pigment and a second, light reflective pearlescent pigment having a second particle size; said second particle size being larger than said first particle size; the particles of the first pigment being capable of permeating said fabric, whereas the particles of the second pigment remain substantially on the second side, and said second side of said fabric having substantially the same colour as said first side".

4.5 Success of the solution
The parties did not contest that the technical problem indicated above was successfully solved by means of the claimed solution. The Board has also no reason to doubt the success of this solution.

4.6 Non-obviousness of the solution

4.6.1 It remains thus to be decided whether it was obvious for the skilled person, starting from a roller blind comprising the fabric "Dapple SPC Ecru", to modify such a fabric in such a manner as to arrive at a roller shade falling within the terms of claim 1 at issue.

4.6.2 As already noted above (point 3.1 supra) the fabric "Dapple SPC Ecru" has an intermediate heat-seal layer between the dyed fabric and the outer SPC pearlescent layer. Moreover, SWB1 explicitly discloses that (emphasis added) "As the SPC backing (the pearlescent outer layer) is white, blinds will always give a uniform appearance to the outside of a building irrespective of the colours chosen for individual work area".

4.6.3 Therefore, SWB1 does not induce the skilled person to modify the colour of the pearlescent outer layer. Consequently, it does also not suggest to modify the structure of the SPC fabrics, for example, by removing the intermediate heat-sealing layer in the attempt to allow the coloured first pigment present on the other side and in the fabric to migrate till the SPC layer, or by using a different pearlescent pigment which contains an appropriate coloured coating matching the colour of the other fabric side.

4.6.4 Furthermore, even if the skilled person were to consider replacing the white pearlescent pigment of "Dapple SPC Ecru" with a differently coloured one, the resulting fabric would still be different from the fabric of the roller shades according to claim 1 at issue, since it would not contain a finish comprising a mixture of a first pigment with a pearlescent pigment.

4.6.5 As was submitted by Appellant 02 the skilled person, faced with the technical problem mentioned above, could, in theory, try to modify the fabric "Dapple SPC Ecru" by maintaining the white pearlescent backing whilst replacing the coloured pigment used for dying the fabric with, for example, a white pigment like titanium dioxide (which is the coating material of the pearlescent pigment). According to Appellant 02, this approach was suggested by the listing of a product "Dapple SPC White" on the last page of SWB1.
However, the Board observes that further details of said fabric are not given in SWB1 and were not provided by Appellant 02. Moreover, even if the skilled person were to consider putting said theoretically possible concept into practice, the resulting fabric would still be different from the one defined in claim 1 at issue, since the latter must contain a mixture of two different pigments in the pearlescent finishing layer.

4.6.6 Therefore, the Board concludes that the skilled person, starting from a roller blind comprising "Dapple SPC Ecru" (or any of other SPC fabrics invoked), would not, without considerations based on hindsight, arrive in an obvious way at a roller shade falling within the terms of claim 1 at issue.

Approach B

4.7 Technical problem

4.7.1 In the light of the pleated blinds containing a metallized fabric (see paragraph [0002] of the patent in suit) taken as closest prior art, the technical problem was stated to consist in the provision of pleated blinds having improved properties and which can be produced in a more economical way (see point 4.1.3 supra).

4.7.2 In the following assessment, the Board considers, purely for the sake of argument and in favour of Appellant 01, that this technical problem was not convincingly solved.

4.7.3 Therefore, the technical problem formulated, accordingly, in less ambitious terms, can be seen in the provision of alternative pleated blinds having heat and reflective properties and comprising a fabric of substantially the same colour on both sides.

4.8 The solution

4.8.1 As the solution to this technical problem, the patent in suit proposes a pleated blind according to claim 1 at issue (see 4.4 supra as regards all the characterising features) wherein one side of the fabric is provided with a finish comprising a mixture of the first pigment, which is also present in the finish on the other fabric side, with a pearlescent pigment.

4.8.2 The parties did not contest that the stated technical problem is successfully solved by the claimed solution. The Board has also no reason to doubt this.

4.9 Non-obviousness of the solution

4.9.1 It remains thus to be decided whether it was obvious for the skilled person, starting from a pleated blind comprising a metallized fabric, to modify the metallized fabric side in a manner leading to a pleated blind falling within the terms of claim 1 at issue.

4.9.2 In the Board's judgement the skilled person faced with the less ambitious technical problem posed (point 4.7.3 supra), would not even take into consideration a fabric according to sample E3 or E4, intended to be used for a very different technical application which does not require the fabric to have solar and heat reflective properties.

4.9.3 Consequently, the argument invoked by Appellant 01 that such fabrics were prepared on the same machine by the same companies as fabrics for pleated blinds and roller shades, as allegedly derivable from document E14, is of no relevance. In fact, even if this would be the case, it would not amount to a suggestion to the skilled person to try the application of said fabrics, prepared for complying with the technical requirements of a shower curtain, in products belonging to a different technical field, requiring different technical properties.

4.10 Hence, in the Board's judgement, irrespective of the starting point considered (approach A or B), the subject-matter of claim 1 at issue and, consequently, of claims 2 to 7 dependent thereon, involves an inventive step (Articles 52(1) and 56 EPC).

(...)

Order

For these reasons it is decided that:
The appeals are dismissed.


This decision has European Case Law Identifier: ECLI:EP:BA:2014:T175411.20141112. The whole decision can be found here. The file wrapper can be found here. Photo obtained from FreeDigitalPhotos.net.

Tuesday, 20 January 2015

T 997/10 - US attorneys in charge



European application 92908098 by Echelon Corporation was refused on 15 October 2009 in oral proceedings, and the written reasons were dispatched to the applicant on 6 November 2009.

Under the EPC, the time limit for filing an appeal expired on 18 January 2010 (16 January being a Saturday), and the time limit for filing the grounds of appeal expired on 16 March 2010.

On 29 March 2010, the applicant filed the notice of appeal and the grounds of appeal, together with a request for establishment of rights, while paying the required fees. 

In the case at issue, the case management was essentially handled by a U.S. firm of patent attorneys, while the European representative acted on instructions from the U.S. firm rather than directly from the patentee. This included the handling of time limits. As this case shows, unfamiliarity with computing time limits under the EPC is likely to be detrimental to demonstrating all due care.

Reasons for the Decision
 
1. Re-establishment of rights is foreseen in cases where missing a time limit would lead to a loss of rights (Art. 122 EPC). The request for re-establishment must be made within two months "of the removal of the cause of non-compliance", Rule 136(1) EPC, state the grounds on which it is based, and complete the omitted act, Rule 136(2) EPC. In the present case, the applicant has complied with all of the above. According to the appellant's submissions, the error was discovered on 28 January, and on 29 March (28 March being a Sunday), a reasoned request for re-establishment including a notice and grounds of appeal was filed, and the corresponding fees were paid.

2. The request for re-establishment of rights can only be granted if "all due care required under the circumstances" has been taken. According to decision J 3/88, once the files are effectively handled by someone other than the authorised representative, as is the case here, it is this person who is required to have taken all due care, including an appropriate selection and supervision of his assistant:

"3. As regards the requirement of "all due care" within the meaning of Article 122(1) EPC, the US patent attorney must be regarded as the agent of the Appellant. Thus, in order to comply with this requirement, it has to be established that the US patent attorney has taken the due care required of an applicant for or proprietor of a European patent by Article 122(1) EPC (cf. J 05/80; OJ EPO 1981, 343). This means among other things that, in case of culpable errors committed by the US patent attorney's assistants, the Appellant may only benefit from the provisions of Article 122 EPC if he is able to prove that these assistants were carefully selected and properly instructed in the tasks to be performed, and that a reasonable supervision of their activity has been exercised (cf. J 05/80, above)."

3. In the further submission of 8 November 2010, the Board was told that both of Mr Nicholson's assistants were certified paralegals in California, and have worked at the firm of Blakely, Sokoloff, Taylor and Zafman LLP for several years. The Board has not been told who these assistants actually were, or how and whether they have been continuously supervised.

4. An important issue for the Appellant's case of re-establishment of rights is the "fail-safe" system as described by Mr Nicholson. In effect, these are the docketing programme that gives out a soft deadline, and the assistant him or herself who writes the deadline on the file, alerts the attorney to the deadline and partakes in weekly docket meetings in which upcoming cases are discussed. In the case at issue, the assistant failed to perform his or her duties due to an illness in the week of 6 January 2010. The date of 6 January 2010 had found its way to the docketing programme as an alleged "soft" deadline and was ignored.

5. When looking at the facts of the case, the Board first of all has difficulties in identifying a proper fail-safe system that requires effective cross-checks. Decision J 9/86 dealt with a similar case where there was an inconsistency between data in the computer file and data in the manual entries. The Board in this case held as follows (point 9, paragraphs 3 to 6 of the Reasons):

"The Statement of Grounds sets out in detail the system used in the representative's office for recording a time limit in a manual diary, a computer file, and in the representative's personal reminder system. However, in spite of the existence of such a seemingly comprehensive entry and checking system, it appears that the failure to observe the time limit was caused primarily by a failure to enter the time limit in the computer file. The lack of data in the computer file for this case was then later accepted as correct, in preference to the manual diary entry of the time limit, which was therefore deleted.

Thus the system in the representative's office which was supposed to ensure that payments to the EPO were made in due time did not include any effective cross-check. A simple failure by one person to make an entry of the time limit into the computer file resulted in non-payment of the fees and failure to file translations of the claims within the time limit specified.

The question whether a particular system used in a particular office to ensure that acts such as the payment of fees are completed in due time satisfies the requirements of "all due care" in Article 122 EPC must depend upon the individual circumstances of each case. However, in a large firm where a large number of dates have to be monitored at any given time, it is normally to be expected that at least one effective cross-check is built into the system. For a cross-check to be effective, it is clearly essential that if the cross-check shows in a particular case an inconsistency between the data being checked and the data which is being used to cross-check, an investigation must then be carried out to ascertain which data is correct.

In the present case, although there was inconsistency between the data in the computer file and the data in the manual entry diary, it appears that the reason for the inconsistency was not investigated. Furthermore, it has not been established that the person who carried out the cross-check was under a duty to investigate an inconsistency in such circumstances. Therefore, on the information at present before the Board, the system in use in the representative's office could be open to criticism."

6. The Board regards it of particular importance in the case at issue that nowhere in Mr Nicholson's statement can the actual time limit for filing an appeal be found. As the decision under appeal dates from 6 November 2009, the time limit for filing the notice of appeal would have been 18 January taking into account the ten day rule of postal delivery (Rule 126(2) EPC) and the fact that 16 January was a Saturday (Rule 134(1) EPC). From Mr Nicholson's statement (and, curiously enough, also from Mr. Wombwell's letter of 29 March 2010 requesting re-establishment of rights), it would seem that 6 January 2010 was thought to be the time limit for filing an appeal, and that Mr Nicholson was (wrongly) told by an assistant "that 16 January 2010 or 6 February 2010 was the deadline for filing the appeal". The vagueness of this statement would already have been a good reason for further inquiries. Mr. Nicholson further mentions that an internal "soft" deadline was assumed to have been set for a date two weeks before the actual "hard" deadline". But neither is 6 January two weeks prior to 16 January, nor is 16 January two weeks prior to 6 February. In respect of the latter two dates, Mr. Nicholson states that "16 January 2010 was approximately two weeks prior to 6 February, [and] we assumed that 16 January was a "soft" deadline and that 6 February was the "hard" deadline". - Again, this statement is rather vague. 6 February was actually three weeks after 16 January. Further, it was a Saturday, and according to Rule 134(1) EPC, no "hard" deadlines fall on days when the Office is closed.

7. According to Mr Nicholson, 6 January 2010 was the due date for filing the notice of appeal. This, first of all, was an incorrect calculation. Next, and admitted by Mr. Nicholson, a mistake was made in noting the date to indicate 16 January as the "hard" deadline. In such case, the computer should presumably have given an alert two weeks prior to this date, and it is not clear from the facts why this was not the case. If, on the other hand, 6 January was the alert for a soft deadline, it is not entirely clear why this was ignored. Further, had Mr. Nicholson taken a look at the case on the alleged "soft" deadline of 16 January, he could still have managed to instruct Mr. Wombwell to file a notice of appeal on 18 January, which was the actual time limit. Finally, no explanation has been given how the date of 6 February 2010 was calculated. The note for this date presumably should have concerned the "grounds of appeal", and not the notice of appeal, giving further credence to the impression that the persons in charge of the file were unfamiliar with procedures and time limits before the EPO, since the actual "hard" deadline for filing the grounds of appeal would have been 16 March, one month and ten days later than the deadline noted. In sum, on the evidence presented, the Board is not convinced that "all due care" was given to calculating and meeting the time limit for filing a notice of appeal.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision has European Case Law Identifier ECLI:EP:BA:2010:T099710.20101207. The whole decision can be found here. The file wrapper can be found here. Photo from freedigitalphotos.net.

Friday, 16 January 2015

T 967/09 - How low can you go?


Influenza vaccines are often produced on fertilized eggs. However, influenza viruses for vaccines can also be grown on (animal) cell cultures. In any case it is important to keep the contamination from the host cell culture as low as possible. The patent in this particular case deals with keeping the amount of contaminating host cell DNA in an influenza vaccine preparation as low as possible.
This decision deals with sufficiency of disclosure (Art 83 EPC). It specifically deals with the question whether the patent specification contained a sufficient disclosure of a method to obtain an influenza vaccine preparation containing an amount of less than or equal to 25 pg contaminating DNA derived from the host cell on which the viruses were grown. One of the opponents (respondent III) was able to convince the board that a declaration provided by this opponent described a method as disclosed in the application as filed and (in their hands) resulted in a contaminating DNA content that was approximately 1000x higher. The fact that the specification as filed contained text indicating that DNA content should be measured during the production process did not help in showing what should in fact be performed during the method to reach the quantities as required by claim 1.
This is the second appeal originating from European patent No. 0 870 508. The patent as granted was revoked a first time by the opposition division in a decision dated 3 June 2003 for the reason that the subject-matter of claims 1 and 3 as granted (sole request) lacked an inventive step (Article 56 EPC). Subsequent appeal proceedings before this board, albeit in a different composition, resulted in the decision T 327/04 of 15 December 2005. In this decision the board overruled the decision of the opposition division and found the subject-matter of the claims as granted to comply with the requirements of novelty (Article 54 EPC) and inventive step (Article 56 EPC). The decision then under appeal did not deal with the invoked ground for opposition under Article 100(b) EPC. The board remitted the case to the opposition division for further prosecution, in particular for the examination of the requirements of sufficiency of disclosure (Article 83 EPC).
Subsequently, the opposition division revoked the patent anew by its decision dated 18 December 2008, i.e. the decision which is the subject of the present appeal. The opposition division held that the patent as granted (sole request) did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by the person skilled in the art (Article 83 EPC). In coming to this conclusion the opposition division took into account test reports relating to the DNA measurement, the slot-blot analysis and the reproducibility of an example of the patent as filed by one of the respondents (opponent 03, document (D62), see below) during the first appeal proceedings (see decision T 327/04, supra, section VI).
Summary of Facts and Submissions
I. The current appeal lies from the decision of the opposition division dated 18 December 2008 to revoke the European patent No. 0 870 508, having the title "Influenza vaccine", and which had been granted for European patent application 98201056.3.
II. Independent claims 1 and 3 as granted read:
"1. Influenza surface antigen vaccine from Influenza Viruses propagated on animal cell culture obtainable by the method of claim 3 and having a host cell DNA content equal to or less than 25 pg per dose.
3. Method for the preparation of surface antigen proteins from Influenza Viruses propagated on an animal cell culture comprising the subsequent steps of:
a. treatment of the whole virus containing fluid obtained from the cell culture with a DNA digesting enzyme, and
b. adding a cationic detergent,
followed by isolation of the surface antigen proteins."
Claim 2 was dependent on claim 1 and claims 4 to 9 were dependent on claim 3.
[...]
V. The following documents are referred to in this decision:
D6: Brands et al. (1996), In "Options for the control of influenza III", Brown, et al. (Eds.), pages 683- 693.
D62: Experimental test report submitted by the appellant and dated 3 June 2004.
D75: Declaration: Statement by Dr. Alexander Pasternak dated 15 June 2009.
D76: The European Agency for the Evaluation of Medicinal Products (Human Medicines Evaluation Unit), Document CPMP/ICH/381/95 (Note for guidance on validation of analytical methods: definitions and terminology).
D77: Second declaration of Dr Benoit Champluvier dated 30 October 2009.
D78: Declaration of Dr Frédéric Schynts dated 3 November 2009
VI. With its statement of the grounds of appeal, the appellant filed two further documents (D75) and (D76), the former being a declaration.
VII. With its reply to the appeal, respondent III (opponent 03) submitted two declarations (documents (D77) and (D78), comprising a number of annexes) reporting on further experimental results when repeating example 1 of the patent in suit.
VIII. Respondent II (opponent 02) replied likewise to the appeal and submitted a number of further documents and a further declaration.
IX. In a response to the submissions of the respondents, the appellant filed three further documents and a further declaration. Subsequently, after having been summoned to oral proceedings, the appellant filed with a letter dated 6 August 2014 an auxiliary request consisting of claims 1 to 7, being identical to claims 3 to 9 of the main request (patent as granted).
X. The oral proceedings, held on 4 November 2014, were attended by the appellant and respondent III. Respondent II was not represented at the oral proceedings, as had been previously announced in writing.
XI. The requests of the parties were:
The appellant requested that the decision under appeal be set aside and the patent be maintained as granted, alternatively on the basis of the auxiliary request filed with its letter of 6 August 2014.
The respondents requested that the appeal be dismissed.
XII. The appellant's arguments may be summarised as follows:
Main request - claim 1 - sufficiency of disclosure
It was sufficient for fulfilling the requirements of sufficiency of disclosure that a person skilled in the art was in a position to reproduce an example disclosed in the patent in suit and then to verify whether the value of the parameter obtained by such reproduction corresponded to the value of the parameter indicated in the specification of the patent in suit.
The patent specification as a whole contained sufficient information such that a skilled person, with the information provided in the patent in suit and supplemented with common general knowledge, was in a position to perform accurate measurements of the residual host cell DNA content. Moreover, many documents on record demonstrated that a skilled person could also make accurate and reliable DNA measurements in the low picogram range without undue burden. At the relevant date of the patent in suit, slot blot (and dot blot) hybridisation was very common and widely applied by experts in the relevant field. General textbooks and practical manuals existed which provided clear and elaborate practical guidance on how to perform slot/dot blot DNA hybridisation analysis for DNA quantification.
Validation of an analytical assay was generally considered important, yet clearly understood requirement in the context of pharmaceutical preparations such as vaccines (see document (D76)).
The declaration of document (D75) demonstrated that all relevant technical knowledge was readily at the disposal of the skilled person to establish and accomplish an accurate DNA measurement. The patent did not hide any any critical know-how relevant to a quantification of residual DNA. Any allegedly missing information could be compensated by applying general technical knowledge and proceeding via proper validation, always accompanied by obvious and routine control experiments (specifically: negative controls, positive controls and optionally use of known amounts of "spiked" target DNA), all routine tests during validation being guided by known validation criteria (see document (D76)).
Claim 1 defined a ratio of residual host cell DNA relative to the vaccine dose, i.e. a ratio of DNA to a reference amount of influenza surface antigen (HA). This did however not mean that a single dose had to be tested and measured for residual DNA content, but that it could be measured in a multitude of dose equivalents, suitably in the order of mg amounts of HA, and the then measured amount of DNA could be calculated to the amount of DNA per one dose. A skilled person therefore did not necessarily have to make undue efforts, in particular undue optimisation efforts, for detection of DNA close to the absolute detection limit of the analytical method.
Paragraph [0024] of the patent should be read with a mind willing to understand. The skilled person would immediately understand that the DNA probe should be a whole cell genomic probe since he would know that this provided the most adequate and precise results.
The experiments described in the declarations of documents (D77) and (D78) (a) were devoid of any "in-process" control data for the experiment, such as measuring the DNA content after each step (as in the table on page 4 of the patent in suit) (b) lacked any explicit indication that the virus incubation in the fermentor was stopped 48 hours after infection as in example 1 of the patent in suit and (c) did not indicate that the nuclease was added for another four hours of incubation. In view of these deficiencies the repeat of experiment 1 of the patent in suit as described in documents (D77) and (D78) did not establish any insufficiency of disclosure of the patent.
The slot blot hybridisation conducted to measure the host cell DNA in the product resulting from the repeat reported on in declarations (D77) and (D78) was not a "validated test" as required by the patent. The measured residual DNA values were therefore not meaningful. For example, the assay to measure the DNA described in documents (D77) and (D78) had a sensitivity of 300 pg DNA only and was thus far too weak to have the capacity of reliably detecting a host cell DNA content of equal to or less than 25 pg. Therefore, the respondent had not convincingly shown that the claimed process could not yield a vaccine with a contaminating host cell level of equal or less than 25 pg.
Auxiliary request - claim 1
Claim construction
Claim 1 was not limited to a defined DNA content level and should not be interpreted to require a host cell DNA content of <= 25pg/dose. Claim 1 rather defined two particular process steps to be applied in a specific order in the course of the preparation of influenza surface antigen proteins based on an animal cell culture. The capacity of this method to achieve reduced residual host cell DNA contents, which the board in its decision T 327/04 considered to contribute to substantiating the presence of an inventive step, did not mean, either explicitly or implicitly, that the feature "<= 25pg host cell DNA per dose" was a mandatory limitation.
Sufficiency of disclosure
It was sufficient that claim 1 defined the essential process features and their combination, which as a whole described the contribution of the claimed method over the prior art. The effect that the DNA/dose ratio could be reduced supported inventiveness but could not be turned into an argument against sufficiency of disclosure, because the 25 pg DNA was close to the detection limit.
XIII. The respondents' arguments may be summarised as follows:
Main request - claim 1 - sufficiency of disclosure
The declaration in documents (D77) and (D78) reported the results of a further experiment made in response to the impugned decision of the opposition division that "the repetition of example 1 by Opponent III was not enough to question the sufficiency of disclosure of the patent".
A significant amount of experimental information had to be supplemented by the declarants of document (D77) and (D78) in order to be able to carry out the experiment of Example 1, both in respect of virus/vaccine production and in respect of DNA measurement. However, where the patent gave information, it was followed. An exact following (as far as possible and complemented where appropriate with missing technical information) of the protocol given in example 1 led to a final DNA content of 25 ng per 50 myg HA as measured by slot blot technique. This was 1000 times higher than the limit given in the patent of 25 pg per 50 myg HA. The results clearly showed that not only did the example not lead to the claimed low levels of residual DNA but in fact led to levels very significantly far away from those claimed. Moreover, the further measurements by the Q-PCR method and the Treshold method rendered it likely that even the 25 ng figure was a significant underestimation.
The relevant question for assessing sufficiency of disclosure was not whether or not a specifically described example was exactly repeatable, but whether the overall teaching of a patent in respect of a claimed embodiment could reliably lead the skilled person to put it into practice (decision T 923/92). The declarations clearly demonstrated this not to be the case.
The subject-matter of a claim might properly be defined by parameters provided that there was a clear description in the patent of the method to be used for their determination. Such a description could only be omitted where: (i) a person skilled in the art already knew which method to use, or (ii) all methods gave the same result. Thus, where slot blot hybridisation was the method to be used to measure residual host cell DNA content, a clear description of this method needed to be contained in the patent unless the skilled person already knew how to perform it or all ways of performing it gave the same result. Because it had been demonstrated that different protocols for measuring DNA amounts in a sample gave different results, it was necessary that the patent provided the skilled person with the details of the slot blot protocol used to determine this critical parameter. Furthermore, no standard protocol for slot blot existed in the art.
Validation guidelines (such as in document (D76)) provided details of how to validate, not how to hybridise. They were not hybridisation guidelines. A skilled person could not validate a protocol if he did not know what the protocol was.
For compliance with the requirement of sufficiency of disclosure the patent had to offer at least (a) a detailed hybridisation protocol and the criteria to be met for its validation and (b) a method for quantifying HA and the criteria for its validation. As none of this important guidance was contained in the patent in suit the person skilled in the technical field of analytical sciences was not in a position to validly repeat the measurements made by the patentee.
The common general knowledge of the person skilled in the art was not sufficient to enable him set up a slot blot hybridisation protocol for quantifying residual DNA. Moreover, there was no reason why the skilled person should inevitably understand that the probe referred to in paragraph [0024] of the patent (canine DNA probe) referred exclusively to a "total genomic MDCK DNA probe". Accordingly, the skilled person was not in a position to make a reliable measurement of the residual DNA without undue burden. The subject-matter of claim 1 was therefore insufficiently described.
Auxiliary request - claim 1
Claim construction
In point 24 of the reasons for the decision in T 327/04 the board had made it clear that a critical feature of the process of claim 1 (then claim 3) was its capacity to yield a vaccine with a contaminating host cell DNA level of <=25 pg /dose. In the decision concluding that the subject matter of claim 1 was inventive, the assumption was accordingly taken by the board that this critical feature was met.
Sufficiency of disclosure
Because the board in its earlier decision T 327/04 had decided that the claimed subject-matter involved an inventive step, it had to fail for insufficiency of disclosure.
In the context of sufficiency of disclosure in relation to the subject-matter of claim 1 of the main request it had convincingly been shown that the method of claim 1, when following the protocol of example 1 of the patent in suit, did not result in a vaccine with a contaminating host cell DNA level of <=25 pg /dose. Therefore, the considerations on sufficiency of disclosure in relation to the subject-matter of claim 1 applied mutatis mutandis to the patent in suit in relation to the subject-matter of claim 1.
Reasons for the Decision
1. The appeal is admissible.
2. As none of the parties have objected to any documents, declarations or claim requests newly filed during these appeal proceedings, the board sees no reason not to admit any of them into the proceedings.
3. The sole remaining ground for opposition to be dealt with in these appeal proceedings is whether or not the patent discloses the invention as defined in the two independent claims in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC).
Main request - claim 1 - sufficiency of disclosure
4. In the decision under appeal the opposition division considered two points to be of relevance for coming to its decision that the patent insufficiently disclosed the invention: (i) the (non-)reproducibility of an example of the patent in suit and (ii) the measurement of the residual host cell DNA content.
4.1 Concerning point (i), the opposition division decided in favour of the patent proprietor. Indeed, the experiments described in test reports relating to the reproducibility of an example of the patent as filed by one of the respondents (opponent 03) during the first appeal proceedings differed in a number of steps from the procedure as described in the patent. In view of the doubts about the effect of these changes to the procedure described in the example of the patent and the fact that these changes were not justified by experimental evidence or facts of general knowledge, the opposition division considered that the burden of proof for demonstrating that the invention was not reproducible had not been discharged by the opposing party.
4.2 Concerning point (ii), however, the opposition division decided in favour of the opponents and consequently revoked the patent. The opposition division derived from decision T 327/04, supra, the requirement that the feature "host cell DNA content <=25 pg/dose" was relevant for both claim 1 and claim 3. Accordingly, it was of critical significance for both claims that the patent in suit sufficiently disclosed a DNA measurement method for an influenza antigen vaccine which allowed reliable detection of a host cell DNA level <=25pg/dose. This was not the case in the patent in suit as the mere mention of a "validated" method in paragraph [0024] was not regarded as a sufficient disclosure.
5. During the present appeal proceedings, respondent III submitted two declarations, documents (D77) and (D78), comprising one and two annexes respectively, which report on experiments designed to repeat the experiment described in Example 1 of the patent in suit, i.e. which lead to the production of "Purified Bulk MaP157" comprising less than 25 pg of host cell DNA per 50 myg HA as measured by slot blot hybridisation (see paragraphs [0021] to [0024] of the patent in suit). The declarant of document (D77) stated that the results of repeating Example 1 of the patent in suit demonstrated that Example 1 (see table 1 of Annex 1 to the declaration) yielded a purified bulk containing 25 ng for a dose of 50 myg HA, with the DNA residuals being measured by a slot blot hybridisation method, i.e. approximately 1000 times higher than that required by claim 1. The declarant of document (D78) confirmed the results of repeating the example, and described in Annex 2 the experimental details of the applied slot blot hybridisation method to measure the residual host DNA content. In Annex 3 the declarant presented results of residual host cell DNA measurements in the same purified bulk as used for the slot blot measurement when the DNA was measured by a Q-PCR and Treshold**(TM)assay. The results of these measurements were a magnitude of 10 times higher than the result of the measurement by slot blot hybridisation.
6. A successful objection of lack of sufficiency of disclosure presupposes that there are serious doubts, substantiated by verifiable facts (see e.g. decision T 19/90, OJ EPO 1990, 476 and decision T 890/02, OJ EPO, 497). In order to establish insufficiency of disclosure in inter partes proceedings, the burden of proof is upon an opponent to establish, on the balance of probabilities, that a skilled person reading the patent, using his common general knowledge, would be unable to carry out the invention (see decision T 182/89, OJ EPO 1991, 391).
7. The board considers that the results of repeating the experiment of Example 1 of the patent in suit, as described in documents (D77) and (D78) and summarised in point 5, above, sheds at least serious doubts on the reproducibility of the invention as defined in claim 1.
8. Despite two further written submissions by the appellant, it was not until the oral proceedings that the appellant contested the experimental design and conduct of repetition of example 1 of the patent in suit as reported on in documents (D77) and (D78).
8.1 The appellant submitted in particular that (a) the experiments described in the declarations were devoid of any "in-process" control data for the experiment (i.e. of the measurement of the DNA content after each step as in the table on page 4 of the patent in suit), (b) there was no explicit indication in the declarations that the virus incubation in the fermentor was stopped 48 hours after infection as in example 1 of the patent in suit and (c) it was not indicated that the nuclease was added during another four hours of incubation.
8.2 The board notes in this respect first of all that declaration (D77) states that "I have designed and overseen the second GSK experiment (see Annex 1) which was designed to compare the results obtained after a repeat of the experiment described in Example 1 of the Patent" (point 3 of the declaration, emphasis added by the board) and that "following Example 1 of the patent yielded a purified bulk containing 25ng for a dose of 50myg of HA with the DNA residuals measured by slot blot hybridisation" (point 4 of the declaration, emphasis added by the board). The appellant furthermore indicated when submitting the two declarations (see section V, above) that in order to repeat the example "a significant amount of experimental information had to be supplemented by [the two declarants] in order to be able to carry out the experiment, both in respect of virus/vaccine production and in respect of DNA measurement. However, where the patent did give information, it was followed" (Underlining by the board). In the opinion of the board, the mere fact that the declarations do not provide an explicit time indication for the virus incubation (48 hrs) and nuclease treatment (4 hrs) and do not explicitly reproduce "in-process" DNA control measurements does not bring into doubt the statement that the experiment was followed, at least to the extent of the technical detail contained in the patent. In respect of the virus incubation time, the nuclease treatment period and the "in-process" control, this technical detail is uncontestedly contained in the patent.
8.3 In this context the board also notes that in the experimental test report contained in document (D62), which the appellant had submitted during the first appeal proceedings before this board and which had been considered by the opposition division in the impugned decision, there was no explicit indication of "in-process" DNA control measurements nor any indication that the nuclease was added during another four hours of incubation in study 1.
8.4 The board notes furthermore that the alleged deficiencies highlighted by the appellant do not qualify as a criticism of the procedures followed by the declarants when repeating the experiment of example 1, but merely question the credibility of the statements of the declarants as referred to in point 8.2, above, that the example was properly reproduced. In this respect, however, the appellant has not submitted any evidence to support its allegations of lack of credibility.
8.5 In view of the above considerations the board has no reason to doubt that the virus/vaccine production method followed by the declarants was the method as disclosed in Experiment 1 of the patent in suit in as far as it goes, supplemented where necessary with common general knowledge of the skilled person.
9. Another line of argument of the appellant related to the method for the measurement of the residual host cell DNA in the purified bulk resulting from the repetition of Example 1 of the patent as described by the declarants in document (D77) and (D78).
9.1 Paragraph [0024] of the patent, when referring to the purification method of Example 1, states that "[t]roughout the above process the host cell DNA content of samples was analysed according to a validated test based on slot blot hybridisation using a 32 P-labelled canine DNA probe". In this respect the appellant argued that the slot blot hybridisation conducted to measure the host cell DNA in the product resulting from the repetition reported on in declarations (D77) and (D78) was not a "validated test" as required by the patent. The measured residual DNA values were therefore not meaningful.
9.2 The board notes in this respect that claim 1 does not recite the measurement method to be used for establishing compliance to a residual host cell DNA content of equal or less than 25 pg per dose of vaccine. In paragraph [0024]) of the patent in suit it is merely stated that "a validated test based on slot blot hybridisation" was used. Therefore, in the board's opinion, it is not obligatory that the residual host cell DNA is measured by the method used by the appellant. The board considers that any residual host cell DNA measurement method as accepted by a skilled person to comply with the conventional standards of controlled scientific experimental conduct is suitable.
9.3 [...] The board considers that the experimental design for the slot blot measurement of the residual MDCK genomic DNA in the purified bulk including the various control readings complies with the conventional standard of controlled scientific experimental conduct. Indeed, the experiment established a sensitivity curve around the value to be measured and included positive as well as negative controls.
9.4 The board notes furthermore that declaration in document (D78) did not stop short with the measurement by slot blot hybridisation (by which the residual host cell DNA in the purified bulk was measured and calculated to be 25 ng per dose, being approximately 1000 times higher than required by claim 1). In addition to this measurement, the declarant also quantified and calculated the MDCK genomic DNA content of the purified bulk sample by two further DNA quantification techniques, i.e. the so-called Q-PCR method and Treshold method. The results of the measurements by these methods, along with these of the quantification by means of slot blot hybridisation, are reproduced on page 8 of Annex 3 to declaration (D78) and are in fact now 10 times higher per dose of vaccine than that measured by the dot blot method. In the opinion of the board they tend to confirm the results of the slot blot hybridisation measurement, which were themselves 1000 times higher than required by claim 1.
10. On the basis of the above, the board considers that the arguments as submitted by the appellant are not convincing.
11. In summary, the board is satisfied that respondent III has substantiated, by means of verifiable facts, serious doubts that the patent does not disclose the invention as defined in claim 1 in a manner sufficiently clear and complete for it to be carried our by the skilled person. These doubts are considered not to be convincingly rebutted by the appellant. Accordingly, the board considers that respondent III has discharged its burden of proof in this respect. The board therefore concludes that the patent, in respect of the subject-matter of claim 1, lacks sufficiency of disclosure (Article 100(b) EPC).
Auxiliary request 1 - claim 1
Claim construction
12. Sufficiency of disclosure requires that the teaching of the application (Article 83 EPC) or the patent (Article 100(b) EPC) enables the skilled person to carry out the (whole) subject-matter of a claim without undue burden. The disclosure of a patent application or patent is aimed at the skilled person. It is an accepted principle in patent law that the same skilled person with the same level of skill has to be considered when, for the same invention, the two questions of sufficiency of disclosure and inventive step are being considered (see Case Law of the Boards of Appeal of the EPO, II.C.3.1). It is also the same skilled person that has to be considered when construing the subject-matter of a claim. It accordingly follows that the construction of a particular claim should be identical for the assessment of inventive step and sufficiency of disclosure.
13. The board, in its decision T 327/04 (supra, see points 21 to 41 of the reasons) came to the conclusion that the subject-matter of claim 3 as granted (identical to claim 1) involved an inventive step. In its assessment of inventive step in relation to the subject-matter of this claim, the board made a number of statements reflecting the claim construction it considered applicable.
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16. Accordingly, for the requirement of sufficiency of disclosure to be satisfied in relation to the subject-matter of claim 1, the patent should disclose a method which achieves a residual DNA content of less than 50 pg per dose.
17. In point 11 above the board has come to the conclusion that the patent lacks sufficiency of disclosure in relation to the subject-matter of claim 1 of the main request. The board considers that, when applying the the construction of claim 1 as referred to in point 16, above, the same considerations as for claim 1 of the main request apply mutatis mutandis for the subject-matter of claim 1.
18. Accordingly, the board concludes that the patent in suit does not sufficiently disclose the invention in respect of the subject-matter of claim 1 of the present request (Article 100(b) EPC).
Conclusion
19. Since neither of the appellant's requests is allowable, the appeal must be dismissed.
Order
For these reasons it is decided that:
The appeal is dismissed.
This decision has European Case Law Identifier: ECLI:EP:BA:2014:T096709.20141104. The whole decision can be found here The file wrapper can be found here. Photo by zazzle.nl.

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