Tuesday, 29 December 2015

J 0007/13 - Everything gets more expensive, including divisionals


You can't blame the applicant for trying, but of course the EPO charges the most recent fees for a divisional filing, not the fees that had to be paid at the filing date of the earlier application, as explained in detail by the Legal Board of Appeal in the current case. It is a matter of interpretation because the law lacks an explicit outline that a divisional might encounter higher filing and search fees. Although G 3/98 concerned Art 55 EPC, the Board in this case indicates that it should be viewed in a broader sense than only in relation to Art 55 EPC. Moreover, the filing fees serve the purpose of the filing requirements (submitted documents, etc.), not the substantive prior art issues that relate to the fictitious filing date from the earlier application (or even the priority filing).
Summary of Facts and Submissions
I. European patent application No. 11 004 301.5 was received at the EPO on 25 May 2011. It was filed as a divisional of European patent application No. 03 746 402.1 (the earlier/parent application), which had been filed on 3 April 2003.
II. Together with the application documents, the EPO received Form 1010 listing the fees to be debited in respect of the divisional application from the account of the applicant's representative. The amount of the search fee was given as 800 euro. An accompanying letter contained the explicit instruction that, if any of the amounts indicated in the form were wrong, the right amounts were to be debited from the account.
III. With a communication dated 20 July 2011 the applicant was informed that the correct amount of the search fee payable in the present case was 1105 euro, so that an additional 305 euro would be debited from the representative's account. It was further set a two-month time limit for filing reasoned objections to that finding.
IV. By fax dated 28 July 2011 the applicant did so, arguing that "since the filing date of the present application is 3 April 2003, the correct amount of the European search fee is 800 EURO" and requesting either a refund or an appealable decision.

Friday, 25 December 2015

T 1112/12: is the amendment one of the types of amendments of G3/14?




In G3/14 the Enlarged Board of Appeal explained that during opposition no clarity objection can be raised for a number of specific types of amendments - in particular, if the amendments only relate to combining granted claims (or combining a granted claim with a portion of granted claim) or deleting alternatives from the granted claims, no clarity objections can be raised for clarity problems that were already in the granted claims because clarity is not a ground of opposition. In this case there was an amendment made by the patent proprietor and according to the opponent the amended claim lacked clarity. The clarity issue raised by the opponent was similar to a clarity issue raised by the Opposition Division. The Board concluded that this clarity problem was already in the granted claims. According to the Board of Appeal the amendment could be interpreted as deleting an alternative from the granted claim and, as such, the clarity objection is not allowed into this appeal procedure.
The interesting thing in this case is that the two alternatives are not defined as alternatives in the claims. According to the Board, the wording of a specific feature of the granted claims is such that only two alternatives fall within the scope of protection of that specific feature. One of the alternatives is excluded from the scope of protection in the amended claims. Subsequently this Board concludes that this is "deleting an alternative from the granted claims as meant by the Enlarged Board of Appeal in G3/14". Now I wonder whether I may conclude that: "By adding a disclaimer to a claim that excludes one of the alternatives that falls within the scope of protection of the granted claims, one prevents that the Opponent may raise clarity objections to your amended claim."?
Of course the reality of this case is a little bit more complex: during the opposition proceedings a not-supported-by-the-original-disclosure-objection was also raised against the now excluded / disclaimed alternative. 





Tuesday, 22 December 2015

T 1410/14 - Recognizable to skilled person within short period


In this opposition appeal, the appellant argues a lack of novelty based on public prior use.

Namely, according to the appellant, a tram of Bombardier, which was tested in the city of Lodz, anticipates the claim, while its use, i.e., the testing, was publically accessible. In particular, the appellant argued that all relevant features were visible from a pedestrian bridge crossing the rails of a trajectory of the tramcar, with the trajectory being completed 13 times during testing. 

With respect to a particular claim feature, namely a console of a swivel bearing which is moveable perpendicular to the direction of the tram ("Schwenklagerung eine(r) Konsole (3) (...), die am Wagenkasten (1) in Fahrzeugquerrichtung (Q) verschiebbar gehalten ist"), the appellant argued that such movement would have occured since the rails beneath the bridge were in bad condition, which would result in the tramcars moving mutually with respect to each other, causing the console to move +/- 2 to 2.5cm in the claimed direction, which in turn would be visible from the bridge.

Complicating the matter is that the console would only have been visibile from above for a short time, due to its arrangement within the narrow space between two adjacent tramcars.

Orientierungssatz:
Merkmale eines nur für einen kurzen Zeitraum sichtbaren Gegenstands sind nur dann der Öffentlichkeit zugänglich geworden, wenn zweifelsfrei nachgewiesen ist, dass für den Fachmann in diesem kurzen Zeitraum die Merkmale eindeutig und unmittelbar zu erkennen waren (Gründe, 2.1-2.5).

[English translation, paraphrased: Features of an object having been visible only for a short period are only then considered to be publically accessible, when it can be proven without a doubt that these features were clearly and directly recognizable to the skilled person within this short period.]

Friday, 11 December 2015

T 2369/10 - Second medical use of products

Medical Instruments

The applicant found a new medical use for an existing product; namely treatment of substance addiction using a neurostimulator.
 
Normally a product is not made novel merely by identifying a new use for the product. Although, a use claim or a method claim may be possible, a purpose limitation for a product must imply technical differences in the product itself for it to be novel. 

However, if the new use is a medical one, the option of method and use claims are blocked by article 53(c) EPC, which forbids patenting of medical methods (see the articles for details). Fortunately for medical researchers, an exception is made to the general rule;  a new medical use for "any substance or composition" will provide novelty (articles 54(4), 54(5) EPC, G 5/83).

But what if someone invents a new medical use for a product which is not a substance or composition? The possibility of a method or use claim is blocked by article 53(c) EPC.  The lack of novel technical differences blocks the product claim. Although, article 54 does not explicitly allow the application to products which are not substance or composition, it is not forbidden either. 

The board declined the invitation though, and ruled that no novelty is obtained by a medical purpose limitation if the object is not a substance or composition. A request to  refer questions to the Enlarged board was denied. 

No Catchword or headnote is provided but reasons 8.1 give the following summary.

In the present case, the Board holds that, having regard to the wording of Article 54(4),(5) EPC, the ordinary meaning of this Article shall not be extended so as to include something which is not explicitly provided for.

Consequently the Board considers that there is no basis to contemplate that novelty may be conferred on products, other than substances and compositions, by virtue of the provisions of Article 54(4),(5) EPC.


Wednesday, 9 December 2015

T 2477/12 - Priority (yes); Priority application incorporated by reference (no)


The EPO does not like the 'herein incorporated by reference' statement in applications, which is once again made clear in this Board of Appeal decision in which an applicant filed a divisional application without a sequence listing and relied on the fact that the priority document did contain the specified sequences, and that the priority document was referred to in the specification of the divisional as 'herein incorporated by reference'. The Board states that "in view of the degenerate nature of the genetic code, a mere verbal reference to a nucleic acid sequence encoding canine pre-proBMP-7 cannot be regarded as an implicit disclosure of a particular nucleic acid sequence encoding said gene. As far as protein sequences are concerned, a mere verbal reference to an amino acid sequence of canine pre-proBMP-7 does not necessarily disclose a particular amino acid sequence, as more than one such sequence may be known."
The Board cites T 689/90 and T 1497/06 for particular conditions that need to be satisfied to allow the incorporation of subject matter from a cited document. If the applicant would have indicated particular sequences that were presented in the priority application, then the Board might have reached a different conclusion but here the applicant could only rely on a general reference to the priority document, and it did not make it unambiguously clear that the sequences relied on were the ones specifically described in the priority application.

Summary of Facts and Submissions
I. The appeal lies against the decision of the examining division posted on 4 July 2012, whereby European patent application No. 10150052.8 was refused because it did not comply with the requirements laid down in Articles 76(1) and 83 EPC.

Friday, 4 December 2015

T 886/10: A system for implementing an entirely new business model


The Examining division refused the patent application because "the distinguishing features per se relate to business considerations". The Appellant did not agree with the Examining Division and filed an appeal. Appellant argued that the system is based on non-obvious technical considerations. 
The decision of the Board of Appeal is relative short. Often decisions are short because the Appellant was not very active in appeal procedure. In this case the Appellant tried to safe his case with submitting some arguments and filing an auxiliary request. However, it seems that the original application did not contain enough technical information to get a claim with inventive features that are not excluded under Art. 52(2)(c) EPC.


Tuesday, 1 December 2015

T 379/10 - Scope of appeal after successful petition for review


Back before the Boards of Appeal after a successful petition for review (case R 16/13), the question arises what the subject and scope of the appeal should be: can new facts, evidences and arguments / lines of reasoning be introduced by one or all parties, or is the appeal limited to overcoming the substantial procedural violation that was the petition for review? The Board concluded the latter.

Statcounter