Tuesday, 27 December 2016

T 1789/11 - Bills, bills, bills

The opponent filed six related oppositions against patents arising from a parent application and five divisional applications from it. The Notices of Opposition each contained a debit order, ordering that the opposition fees to be debited from the opponent’s deposit account. Unfortunately, the opponent's deposit account had only contained sufficient funds for one opposition fee. After the opposition period ended, the deposit account was replenished and the opposition fee was payed with 30% penalty, under rules of the ADA. The proprietor challenges the legality of this. Note the Arrangements for deposit accounts (ADA) has since changed! (Old rulesNew rulesFaq ) 

Friday, 23 December 2016

T 623/13 - Deficient in clarity

Clear from the words alone?

This examination appeal deals with the clarity of the claims, and whether a clarity deficiency in the claim wording can be rectified by the fact that the description could possibly help the reader to understand the technical subject-matter which the claim was intended to define. In line with established case law, the Board decides that the claims must be clear by themselves.

Monday, 19 December 2016

Broccoli and Tomatoes followup: staying of proceedings due to the Commission Notice on certain articles of Directive 98/44/EC

 

In G 2/12 and G 2/13 (decision, blog), the Enlarged Board of Appeal concluded that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts. The decision led to a successful maintenance in amended form in the Broccoli case (decision, blog, register) as well as in the Tomatoes case (decision, blog, register).
The decision also led to a discussion in the European Commission. On 3 November 2016 ,the European Commission adopted a notice on certain articles of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions ("the (Biotech Directive"/ "The Directive"). With regard to the patentability of plants and animals obtained by means of essentially biological processes, the Commission takes the view that in accordance with the EU legislator's intention such plants and animals are not patentable under the Directive.
The effect of the Commission Notice for the EPO's examination practice including any necessary follow-up measures is currently under discussion with the representatives of the member states of the European Patent Organisation.
The President of the EPO has decided that, in view of the potential impact of the Commission Notice, all proceedings before EPO examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process will be stayed ex officio. The details are given in the Notice that is reproduced below, together with parts of the Commission Notice.


Friday, 16 December 2016

T 66/12: Simulation results and a sub-range


For people working in chemistry this may be just one of the so-many boards of appeal decisions on (sub) ranges. In the field of electro-mechanics I do not often see a decions about it.
In this opposition appeal the independent claim of the main request relates to a vehicle with a fuel cell. The independent claim comprises a sub range and the sub range seems to be the only difference with respect to the prior art. In the communication of the Board accompanying the summons to oral proceedings the Board concluded that the sub range is most probably an arbitrary specimen of the prior art and is, according to established case law, not novel. The final decision shows that the patent owner tried to prove that there is an effect in the claimed sub range. We can also read that the provided "simulations results" relate to current vehicles that may comprise technology that was not available at the date of filing of the current patent. Thus, there were no useful test results available at the date of filing to prove an effect of the sub range. This decision of the board shows what the consequence can be.

Tuesday, 13 December 2016

T 1825/14 - Extended but then again not?


On the last day of the original 4-month period to respond to an office action, the applicant sent a request for an extension of the time limit by two months to six months. The request was granted. The applicant filed his response on the last day of the 6-month period. About a month later, the applicant received a loss-of-rights communication. The applicant was informed that the "application" had been received at the EPO on 7 December 2011 and that the request for extension of the time limit had therefore been granted "erroneously", the time limit having expired on 6 December 2011. The "extension of time limit" was "considered not having been granted" and, consequently, the applicant's reply was deemed to have been received late... 

Tuesday, 6 December 2016

J 7/15 - Re-establishment for outside payment firm


The applicant uses an outside outside payment firm for paying the renewal fees, as well as an unrelated outside attorney for substantive patent work. The board is not unable to establish exactly why the renewal fees were not paid in time, but finds it sufficient that a historically reliable payment firm was used. 

Wednesday, 30 November 2016

G 1/15 (1) - Order from the Enlarged Board


The order of the decision of the Enlarged Board in the partial priority referral, G 1/15, was issued. The reasoned decision will be issued as soon as possible.

See file wrapper, and our earlier posts Poisonous or nothing wrong? and Referral: Mother poisonous for child?

Tuesday, 29 November 2016

T 628/14 - within time limit for making written submissions, but too late


In this opposition appeal, an opponent submitted new documents in response of the invitation to oral proceedings under Rule 116(1) EPC ("When issuing the summons, the European Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the oral proceedings shall be fixed. Rule 132 shall not apply. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed."). The documents were not admitted in the proceedings as they were late filed and prima facie not relevant. The Board emphasized that the invitation for written submissions should, according to established case law, not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded as established with the notice of opposition. The Board also reviewed that it is at the first-instance division's discretion to admit late filed documents or not, and concluded that the first instance division did not exercise its discretion in an unreasonable way as it had assessed the prima facie relevance of both documents.

Friday, 25 November 2016

T 792/12: the atmosphere of the oral proceedings


 

Sometimes, when I read a decision, I feel the atmosphere of the oral proceedings. Sometimes it gives you also some information about the "happiness" of the Board, the Appellant and/or the Respondent. This recently published decision presents some interesting information with respect to these themes and gives a view of the Board whether they have to sit silently in the room or whether they may interrupt the parties.

Tuesday, 22 November 2016

D 7/16 - "without comment as to the merits"

 
In appeals D 5/16 and D 7/16, the Board saw itself confronted with a  comment from the Exam Committee in the remittal letter from the Exam Secretariat. The comment addressed one of the statements under appeal of Pre-Exam 2016 and its answer. Despite the general requirement that remittance to the Board shall be done without comments to the merits -Art.109(2) EPC-, the Board seems to be puzzled what the aim of the Examination Committee was, and why/whether its comments were (not) taken into account in deciding on interlocutory revision.

Sunday, 20 November 2016

T 1802/13 Medical imaging - is presenting the information technical?



In this decision it needs to be settled if in medical imaging the claimed superposition of a leadwire has a technical effect. The Board goes into the discussion of presentation of information, differentiating between what is presented and how it is presented (cognitive aspect). Regarding the technicality of the manner in which (i.e. "how") information is presented - the main issue to be established is whether the underlying user interface together with the manner in which cognitive content is presented credibly assists the user in performing a technical task by means of a continued and guided human-machine interaction process (basically related to the question "for what purpose" the content is presented). The Board decides that it is not derivable from the claim - beyond mere speculation - that it credibly brings about the technical effect of accurately predicting the electrodes' properties and providing that information to the surgeon in an efficient manner. The case is dismissed as lacking inventive step.

Tuesday, 15 November 2016

Gold standard poll results

In T 437/14 the board of appeal referred questions on disclaimers to the enlarged board. The central question is how the gold standard of G 2/10 is to be squared with the disclaimers that are allowed for accidental anticipations under G 1/03. The case has been discussed in the comments, and various directions were suggested in which the enlarged board could go.

The past two weeks we placed a poll at our blog in which our readers could make their predictions. Polling is now closed and the results are in.




So there is a clear majority that does not expect that G1/03 is any in danger. I'm looking forward to the enlarged board's decision to see how well this poll matches reality.

Friday, 11 November 2016

R 1/15 - Petitioning for review of an insufficiently substantiated decision


In this petition for review, the petitioner (being the patent proprietor) asserts that the Board of Appeal relied in their decision on common general knowledge which the proprietor was unable to comment on. As such, the petitioner asserts that a fundamental violation of Article 113 occurred, which would be a valid ground for petition for review in accordance with Art. 112a(2c) EPC.

However, the Enlarged Board of Appeal concludes that the petition essentially is based on the assertion that the Board of Appeal insufficiently substantiated their decision, which is not one of the grounds for petition for review as enumerated by Art. 112a EPC. With reference to R 1/08 and R 22/10, the EBoA does acknowledge that while an insufficiently substantiated decision is in itself not a valid ground for petition for review, it may serve as  proof of the BoA not acknowledging a presentation of a party or taking such presentation into account in their decision-making process. The petitioner failed to assert such a violation. As such, the petition for review is deemed unallowable.

Tuesday, 8 November 2016

T 918/14 - No search in PCT phase

Needle-prick like objections?

Claims 2-37 of this application were not searched during the PCT phase, under Art. 17(2)(a) PCT. The reason for not searching these claims is that the first embodiment of the application does not fall under the scope of Claim 1, yet the application cites documents that are prejudicial to the novelty of claim 1. In this situation it was unclear for the Examiner what the intention is of the applicant.  
At first however, after entry into the regional phase, Examination seems to proceed normally, patentability objections are raised and the claims are amended. But when the claims are amended for a second time, the Examiner objects that unsearched subject matter is introduced in the claims, and rejects the claim amendments under Rule 137(3) EPC. During Oral proceedings, at which the applicant did not appear, the application is refused.
The board does not agree with examination in this manner. They provide the following catch phrase (my translation).
1. Refusing to admit claim amendments into the proceedings, because of a mixture of a missing (but justified) supplementary research and vague indications of the patentability of the amendments, exceeds the margin of discretion of the Examining Division under Rule 137 (3) EPC and constitutes a substantial procedural violation (see Reasons 2.8 ).
2. The approach of a search and examination division to initially produce an incomplete search with a non-substantiated reasoning, and on top of that, despite objections and amendments of the applicant, not to carry out an additional search for the new claims, but to present needle prick-like (nadelstichartig) vague objections to patentability is a substantial procedural error on its own (see Reasons Section 2.7).

Friday, 4 November 2016

T 564/12: proving public prior-use


In this opposition appeal there is initially an interesting discussion about the admissibility of two prior-use cases. The Appellant-proprietor asks the Board to declare these prior-use cases retroactively as non-admissible. Furthermore, the Appellant-proprietor is of the opinion that an author of one of the filed affidavits in one of these prior-use cases should have been called as a witness. According to the Appellant-proprietor, the affidavit should be excluded because the opposition Division did not call this author as a witness. 

The board decides that the prior-use cases are admissible. In general, it is quite difficult to prove public prior-use - the questions "what was disclosed", "when", "where"and "under which circumstances" must be answered. In this case quite a lot of evidence was filed by the Appellant-opponent - it was already filed during the opposition proceedings. This Board extensively examines the evidence to decide whether the prior use is proven or not. If you are interested in the prior-use reasonings, you should read the complete text that is provided below.

The invention relates to a lid of a snuff-box. I found it also interesting to see that the PCT publication of this case has only a 2 page description and has 5 claims in total. The limited amount of words written down in the original patent application have been compensated by all the documents drawn up during the opposition and appeal procedure.


Tuesday, 1 November 2016

T 1824/15 - Delayed


The appellant has argued that two different delays in the first instance proceedings each amounted to a substantial procedural violation, Rule 103(1)(a) EPC, namely the delay of over eleven years in raising an inventive step objection based on D3 and the delay of seven months in issuing the written decision and minutes after the oral proceedings. In view of these issues, the board took this case considerably out of turn, well before it would otherwise have been started. As set out below, the board finds that, in particular because neither delay was contrary to a provision of the EPC, no fundamental deficiency, Article 11 RPBA, or procedural violation, let alone a substantial procedural violation, Rule 103(1) EPC, occurred. This does not however mean that the board is indifferent to the consequences of unjustified procedural delays. (r.2.1). 
The board deviates from T 823/11, where the Board concluded "that the duration of the first-instance proceedings was excessive, the written reasoning given in the communications was inadequate, and the contested decision is insufficiently reasoned within the meaning of Rule 111(2) EPC. These deficiencies amount to substantial procedural violations."

Tuesday, 25 October 2016

T 437/14 - New Questions on Disclaimers referred to Enlarged Board

Is this still the same apple?

The disclaimer case G 1/03 seems to allow exceptions to Article 123(2) that 'Gold-standard' case G 2/10 does not allow. This board does not like it one bit:

"If one takes a bite out of an apple, what remains is recognisably no longer the same apple as the original one. Even though it is still an apple, the apple with the bite taken out of it cannot be regarded as explicitly or implicitly, but directly and unambiguously, "disclosed" in the original apple." (Reasons 8.1)
Claim 1 in this case includes two disclaimers to restore novelty against an accidental anticipation. This would be allowed under G 1/03. Is it also allowed under the more recent G 2/10? We will soon have a new enlarged board decision on disclaimers, joining the ranks of G 1/03 and G 2/10, because the following questions have been referred:

1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?

2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?

3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?

Friday, 21 October 2016

T 2346/12 - Defined by flex modulus

In this opposition appeal, the appellant (patent proprietor) lodged an appeal against the decision revoking European patent No. 1 773 675.

In the appealed decision, the opposition division found that neither the main request (patent as granted) nor the auxiliary request met the requirements of Article 83 EPC.

Of particular interest in this case is that claim 1 defines a closure for sealing a container (...) characterised in that the outer wall surface (10) at the first wall edge (22) has a flex modulus of less than 3.95 N/mm", i.e., a characterisation by parameter.

This case shows the pitfalls of such type of characterization.

Namely, as argued by the respondent (opponent), in the patent in suit apparently a new method for determining the flexibility with the new parameter "flex modulus" was developed, however without providing the adequate level of information for its implementation. 

T 2346/12 - Defined by flex modulus

In this opposition appeal, the appellant (patent proprietor) lodged an appeal against the decision revoking European patent No. 1 773 675.

In the appealed decision, the opposition division found that neither the main request (patent as granted) nor the auxiliary request met the requirements of Article 83 EPC.

Of particular interest in this case is that claim 1 defines a closure for sealing a container (...) characterised in that the outer wall surface (10) at the first wall edge (22) has a flex modulus of less than 3.95 N/mm", i.e., a characterisation by parameter.

This case shows the pitfalls of such type of characterization.

Namely, as argued by the\respondent (opponent), in the patent in suit apparently a new method for determining the flexibility with the new parameter "flex modulus" was developed, however without providing the adequate level of information for its implementation. 

Tuesday, 18 October 2016

T 1679/10 - Anticipation of amendments to claims



The leading principles for what subject matter must be searched "on the basis of the claims, with due regard to the description and any drawings" in accordance with Art. 92 EPC (here Art. 92(1) EPC 1973) is summarized as follows in the B-III 3.5 of the Guidelines:

"In principle, and insofar as possible and reasonable, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended [...]."

This decision clarifies that in the case of a very broad independent claim, the search division cannot be expected to have searched all possible amendments of this claim, unless the dependent claims or the description provides a direction of expected amendments. This decision will be incorporated in B-III 3.5 of the Guidelines as of November 2016.

Friday, 14 October 2016

T 497/11: Revert an amendment after 9 years


In this opposition appeal admissibility is initially an important subject of the discussion. About one month before the oral proceedings (2016) the Appellants filed amended claims which would, according to the Board, "effectively revert to the method claims they had filed in 2007". The amendment comprises the deletion of "by using a computer".
When reading also the inventive step discussion of one of the requests, it seems that the Appellants would like to delete this features from the claims to enforce the choice of the closest prior art into another direction. The selected closest prior art was generic prior art in the field of air traffic control: "A system including a processor, memory, display and input device, for an aviation system, the system further comprising means (e.g. radio) for communicating to said aircraft."
If this amendment is accepted, the board had to start a discussion of the technicality of the claims. One of the arguments of the Appellants was that the recently filed claims were filed because the representation of the Appellants changed. Is that argument enough to get the amendments into the procedure?
This decision is also interesting because a number of features of auxiliary requests are considered to be a mere automation of mental acts, for example, performed by a flight controller. Thus, although the claims are technical with the feature of "by using a computer", most features do not contribute to the inventiveness of the claims because they are not technical.

Tuesday, 11 October 2016

T 1647/15 - The eyes of an objective observer


In this opposition appeal, three opponents requested that the Opposition Division's decision  be set aside for bias of at least one member of the Opposition Division and that the case be remitted for rehearing before an Opposition Division in a different composition or, in the alternative, that at least one of the questions the Opponents be referred to the Enlarged Board of Appeal, or that the Opposition Division's decision be set aside for violation of the right to be heard and that the case be remitted to the Opposition Division, or that the Opposition Division's decision be set aside insofar as the Opponents are adversely affected and that patent be revoked. A first indication of the alleged partiality was that the representative of Opponent III, on the second day of the oral proceedings, was interrupted by the chairman saying: "Shut your mouth" and "Don't speak any more". The chairman, being asked whether he would confirm this wording, expressed that he would neither regret what he just said, nor "take anything back". The opponents submitted that tis was a clear indication of a personal aversion of the chairman against the representative of Opponent III, and that it was also obvious that this personal animosity negatively affected the ability of the chairman to hear Opponent III with an objective judicial mind. According to the opponents, the Opposition Division made a fundamental procedural violation in deciding itself to reject the then raised objection of suspected partiality by Opponent III. The provisions of Article 24(3) EPC should have been applied to the members of the Opposition Division. The refusal of the Opposition Division to agree to the correction of the minutes of the oral proceedings requested by the Opponents was submitted to be a further indication of partiality. The minutes were deliberately written so as to misinterpret what had happened and was said during the oral proceedings. What did the Board decide?

Thursday, 6 October 2016

T 971/11 - Too late for first instance but admissible in appeal

After you missed the first train, can you catch the next?
The opponent filed a document B1 just before the first-instance oral proceedings. The opposition division considered the document late and not prima-facie relevant. The document was not admitted into the proceedings. The document is again submitted with the statement of the grounds. 
On the one hand the appeal board should only verify that the opposition division's decision not to admit the document was not unreasonable. On the other hand, they need to make up their own mind when the document is presented with the appeal? The board discusses this dilemma, and in the end does not hold it against B1 that is was already rejected by the opposition division. B1 is admitted into the appeal procedure. Another new document that was filed just before the oral proceedings in appeal was not admitted.

Sunday, 2 October 2016

T 1242/06 - Tomatoes III


After two referrals to the EBoA underlying G 1/08 and G 2/12 
settling the Art. 53(b) issues relevant for the present case, the Opposition Appeal proceedings regarding the “Tomato” patent have reached their end: The patent is maintained in amended form with two claims relating to the Tomato fruit itself but no claims to the method of their production. The maintained claims are the claims of Auxiliary request I discussed in the below (highlighted in red and bolded). Depositing of the lines used to obtain the claimed Tomato fruit was not found necessary for enablement. The inventive step of the claimed tomato fruit was found to lie in the low expectation of success of the performed selection.

Wednesday, 28 September 2016

T 2091/12 - Changing a fresh ground to an old ground

Some fresh ground coffee
With its appeal, the opponent filed a new novelty attack based on prior use. He also filed evidence supporting the prior use allegation. 
Novelty was not a ground of opposition in first instance. In the summons, the board notes that it is thus a fresh ground of opposition. As the proprietor did not agree to having it introduced in the proceedings, the fate of this new attack seems ensured. 
However, in his written submissions the opponent files an inventive step attack based on prior use, and supported by the evidence he filed with his statement of grounds. Alas, by this time the board considers it too late in the appeal proceedings, and does not admit the new attack. 

Friday, 23 September 2016

T 1513/11: second non-medical use


The novelty and the inventiveness of a "use claim" was investigated in this appeal that lies from a decision of the Opposition Division. If a physical entity is already known, the use of this physical entity may be novel and inventive (second non-medical use). In this specific case the use of a specific concrete was claimed to oxidize polluting substances. It seems that the prior art does not disclose the claimed use. According to the Appellant (Opponent), the claim is not novel because of public prior use: the specific concrete was already applied to buildings and (after the priority date) one proved that this specific concrete also oxidized polluting substances. The Board was not convinced by the arguments of the Appellant. "Established case law" was used to decide in favor of the patent owner.

Tuesday, 20 September 2016

T 610/11 - An error in a document filed with the EPO, but... who's error?

The appeal against a decision to refuse was withdrawn by the representative. The representative herein followed the instructions from the applicant. Six weeks after the withdrawal, the representative submitted that the withdrawal of the appeal was due to an error and requested correction of that error. In particular, the appellant's representative stated "I have become aware that our instruction to withdraw this appeal were in error." and the representative  requested correction of that error under Rule 139 EPC.

The Board reviewed the case law on correction of errors and, in the end, the Board comes to the conclusion that the declaration submitted by the appellant's representative to withdraw the appeal cannot be considered to contain an error to be corrected under Rule 139 EPC, as the error was made by the applicant and not by the representative.

Monday, 19 September 2016

T 1784/14 Inadmissible request




This case deals with a second appeal in opposition. In the first opposition proceeding the opposition division decided to revoke the patent. In the first opposition appeal proceedings the proprietor submitted a main request and six auxiliary requests. The board of appeal rejected the the main, first and second auxiliary requests and remitted the case to the opposition division for further prosecution on the basis of the third auxiliary request. 
The opposition division decided that the third auxiliary request met the requirements of the EPC. In the second appeal proceedings the proprietor requested that the appeals be dismissed or, alternatively, that the case be remitted to the opposition division for consideration of the fourth to sixth auxiliary requests as filed before (referred to hereinafter as first to third auxiliary requests) or alternatively, if this request was not allowed, that these auxiliary requests be considered by the board. The proprietor did not submit any facts, evidence or arguments in support of the allowability of any of its claim requests. 
The Board follows T 1732/10: unsubstantiated claim requests which are not self-explanatory become effective only at the date on which substantiation is provided. Their filing in and of itself plays no role, no matter when they are filed. In the present case no substantiation was provided at any time during the entire appeal proceedings. As a logical consequence, the claim requests must be considered not validly filed at all.

Catchword: If no substantiation is provided, at any stage during the appeal proceedings, for claim amendments which are not self-explanatory, the requests containing those amendments may be considered not validly filed (T 1732/10 r.3 followed)

Friday, 9 September 2016

D 4/16 - "A representative" vs. "Der Vertreter"


This appeal lies from the decision of the Examination Board of 31 March 2016 awarding the appellant the grade "FAIL" in the pre-examination for the European qualifying examination 2016, her answer paper having been awarded 69 marks.

According to the Examiner's report, the candidate had an incorrect answer to statement 5.4.

Statement 5.4 relates to representatives dealing with international applications. At issue here is whether the statement is restricted to the specific context of the statement (involving a representative called Hassan), or relates to representatives dealing with international applications in general. See also the discussion of candidates on our EQE blog here.

A further ambiguity is than in statement 5.4, the expression "a representative" was translated differently in the English and German versions, namely to "der Vertreter".

Tuesday, 6 September 2016

T 738/13 Right to be heard


In this appeal from examination, the Board has to decide if the Examining Division has violated the applicant’s right to be heard by not motivating its decision well.
The applicant had requested supplementing the Examining Division by a legally qualified examiner. This was refused and motivated only by citing the relevant section of the Guidelines. The Board sympathizes with the applicant but finds in this case the brief motivation acceptable.
The Board does agree that the lack of inventive step decision is not adequately reasoned. The applicant had submitted a thorough problem-solution approach reasoning. The division is silent in its decision on this reasoning. The Board considers submitting the case back, but first spots a new clarity issue. The Boards takes this upon its own shoulders. The applicant manages to overcome the Art.84 objection. The Board then submits the case back for further examination.

Friday, 2 September 2016

T 1691/15 - Confidentiality of complaints during opposition



Complaints filed at the EPO are treated confidentially. But what should happen if an opponent communicates with the complaint department of the EPO relating to his opposition. Should protecting the privacy of the complainer prevail, in this case the opponent, or should the patent proprietor be informed?
In this case the Board decided to inspect the non-public part of the file themselves and forward parts thereof to the proprietor. 
Reasons for the Decision
(...)
3. Communication of the exchange of letters between the appellant and the EPO during the opposition proceedings - Referral to the Enlarged Board of Appeal (request 6)
3.1 In his letter dated 7 May 2015 in the appeal proceedings, the appellant referred, among others, to the following letters:
- EPO's letter dated 30 April 2014; and

Tuesday, 30 August 2016

T 779/11 - In the dark after the search stage


Acting in its capacity of ISA, the EPO issued a declaration under Art.17(2)(a) PCT to the effect that no international search report would be established because no meaningful search was possible. The declaration explained that "[t]he claims relate to subject matter excluded from patentability under Art. 52(2) and (3) EPC [sic]". The declaration further mentioned that a search might be carried out during examination before the EPO should the problems which led to the declaration be overcome. However, the Examining Division refused the application without carrying out a search. It decided on a main request and two auxiliary requests, refusing the main request and auxiliary request 1 for lack of inventive step and not admitting auxiliary request 2 into the proceedings. The applicant appealed and argued, in particular, that the Examining Division's decision not to perform a prior-art search at all was against the established case law of the boards of appeal.
The Board made a clear distinction between the EPO as ISA, and the EPO in the regional phase: acts of the EPO as ISA are not subject to review by the Board. The Board then continued to review whether the claimed subject-matter related to notorious knowledge, which would/could justify to not perform a search and not cite any prior art document. 

Friday, 26 August 2016

T 2052/14 Disclosure of relative dimensions in drawings


The Examining Division held that the subject matter of claim 1 was not new with respect to D1 (EP 1748243 A2). The division derived from the figure a ratio of 0.9 and thus anticipating a claimed ratio from about 0.1 to about 1.0. The Board disagrees. D1 does not indicate that the drawings are to scale. Moreover, D1 is not related to the claimed aspect and there would thus also not have been any reason for D1 to be to scale. This raises the issue whether the skilled person would derive the claimed ratio from a schematic drawing. The Board thinks not.
The Examining Division also regarded to formulation from about 0.1 to about 1.0 unclear (Art.84). The Board disagrees; this formulation only allows a wider interpretation. The Board regards the wider range to be new.

Friday, 12 August 2016

T 799/12 - Clarity in opposition appeal


In this opposition appeal, the proprietor challenged the clarity objection that was raised against claim 1 as amended made during first instance opposition proceedings, but which was only raised with the grounds of appeal. He was however unsuccesful: amendments made during opposition are to be examined for compliance with all EPC requriements and the amendment was based on the description (not just an incorporation of an unclear dependent claim - G 3/14). Further, the board of appeal has the power to examine all EPC requirements, not just the ones on which the decision was based: the Board thus examined clarity, and also admitted new arguments against inventive step based on a document that was not used in any objection before.

Tuesday, 9 August 2016

T 360/11 - Very late needs to be very clear

In this appeal against the decision to refuse, the applicant filed amended claims in response to the summons for oral proceedings, aiming to overcome the Art.84 and Art.123(2) objections in the preliminary opinion of the Board, and further amendments in the course of oral proceedings. The Board did however not admit the amended claims into the proceedings, as very late amendments are required to be very clear. 

Sunday, 7 August 2016

T 1727/12 Sufficiency of disclosure for a broad claim



In this decision the Board has to go into different forms of lack of disclosure. The Board is not a big fan of the British term ‘Biogen sufficiency’ and goes back to the original decision T 409/91 and terminology used in that decision (“the patent monopoly should be justified by the actual technical contribution to the art”). 
In opposition proceedings, Art.84 cannot be used in this respect. In the opinion of the Board, the opposition division has not been convincing in proving that Art.83 was violated. In particular, the opposition division believed that features of dependent claims 3-5 were required for the invention of claim 1, but the division did not come up with options which the skilled person would not know how to carry out. The burden of proof was thus not met.

The Board remitted the case back to the opposition division for further prosecution. No oral proceedings were held, since the request "In the event that the Patent is not to be maintained in the form in which it was granted, the Proprietor requests oral proceedings" does not cover the situation wherein the Board does not take a final decision on the case itself but remits the case.

Wednesday, 3 August 2016

T 1717/13 - How many tries should you get in OP?


How many tries should an opposition division allow a proprietor to rectify an added subject matter problem? After the opposition division had maintained its added subject matter objections during the oral proceedings, the proprietor filed three more auxiliary requests. The first two were admitted into the procedure but the third was not. The reasons given in the minutes are that the third request was late filed and did not resolve an earlier objection.

In appeal the proprietor alleged that procedural violations took place. In particular, he claims that:

(a) by not admitting further claim amendments to overcome newly raised objections by the opposition division during the oral proceedings; in this respect, the opposition division exercised its discretion to disregard amendments incorrectly;


(b) by causing the patent proprietor's representative to be taken by surprise during the oral proceedings by giving contradictory reasoning, which made it difficult to react to newly raised objections;


(c) by not giving sufficient time to take into account the newly raised objections during the oral proceedings and to consider a new version of a main claim in order to be able to appropriately react to the newly raised objections.


The board gives the opposition division a wide berth to make its own decisions with respect to admitting auxiliary request or not. Some doubts are expressed about the divisions refusal to allow all  further auxiliary requests, but in the end no substantial procedure is found. 

At the end of the cited part of this decision there is also an interesting analysis of intermediate generalizations.


Friday, 29 July 2016

T 1742/12 - Close, closer, closest prior art

The most promising springboard?

In this examination appeal, the concepts of 'closest prior art' vs. 'a suitable starting point' in inventive step are discussed. Decisions such as T 967/97 and T 21/08 (also cited in the present case) have tended towards the inventive step having to be assessed relative to all suitable starting points, rather than presuming the existence of one closest prior art document to be used as sole starting point.

In this case, according to the Board's preliminary opinion, the claimed invention lacked an inventive step over D1. With its letter of response, the appellant introduced a document that had been considered in a related case, D6, and argued that given the existence of D6, D1 cannot be closest prior art and that, hence, the inventive step assessment had to start from D6.

The present Board does not follow this line of argument, and rather deliberates that it cannot be true that if a claim is considered obvious with respect to D1, it cannot be rendered non-obvious if a closer prior art, e.g., D6, was found, i.e., an inventive step argument cannot be refuted merely by the introduction of another piece of prior art. Thereby, T 967/97 and T 21/08 are followed.

Tuesday, 26 July 2016

T 803/12 - No right to two instances


In continuation of the patent being revoked in opposition due to lack of sufficiency of disclosure, the proprietor appeals the decision. The proprietor requests the case to be remitted to the Opposition Division as he is of the opinion the his right to be heard has been violated and that he is entitled to be heard in two instances according to Art. 32 of the TRIPS agreement and based on Art. 125 EPC, Furthermore, the proprietor requests the Board to order a correction of the minutes of the oral proceedings before the Opposition Division.

The Board disagrees with the proprietor in all aspects. The case is not remitted, the minutes are not corrected and the patent remains revoked.


T 2306/12 - Unclear how to measure particle size

Pretty particles, but not related to the patent

During opposition proceedings, the proprietor had included in his main claim that "the size of the active ingredient particles is less than 10% of the particle size of the inclusion bodies". The feature was taken from one of the dependent claim in the granted patent.

The patent description does not say how the particle size is to be measured. As the particles are not round, there is no obvious way to measure particle size. The opponent objects that because of this the description does not disclose the invention sufficiently. 

The board is not convinced. We had a similar situation in T 2182/11.

Friday, 22 July 2016

T 1663/13: apportionment of costs of appeal procedure

This appeal has been filed after a decision of the Opposition Division and the decision relates to the apportionment of costs of the appeal procedure.
In this case it is not the first time that apportionment of costs is a subject of the discussion. Also during the Opposition procedure, in view of the fact that the Opponent had informed the EPO only at a very late stage that it would not attend the oral proceedings, the Opposition Division decided that the proprietor's request for apportionment of costs was justified and ordered that its travel and accommodation costs be borne in full by the Opponent.
The Opponent filed the appeal. In his statement of grounds he argued that the patent should be revoked. He did not appeal to the decision of the apportionment of costs. Three days before (first) scheduled oral proceedings of the Appeal, the Opponent (Appellant) withdrew its request for oral proceedings and withdrew the appeal. Thereafter the proprietor requested apportionment of costs for the costs that he made with respect to the appeal procedure. After some communication in writing, the Board summoned the parties for (second) oral proceedings to discuss the apportionment of costs of the appeal proceedings. The proprietor informed the Board that he would not attend the (second) oral proceedings. The Opponent requested one day before the (second) oral proceedings a postponement of the (second) oral proceedings. 
This decision discusses whether the (second) oral proceedings will be postponed and discusses the apportionment of costs of the Appeal proceedings. The history of the file seems to influence the decision.

Tuesday, 19 July 2016

T 2171/14 - Special reasons for not remitting, despite fundamental deficiencies in first instance


In this decision, the Board concluded that the "impugned decision from the Opposition Division presented a fundamental deficiency in that there is no reasoned decision in regard to the specific objections under Article 100(c) EPC made against Auxiliary Request V, which objections had been made originally against the main request and, as specifically stated in the minutes of the oral proceedings (see point VII above), had been maintained against the subject-matter of claim 1 of Auxiliary Request V found allowable by the opposition division. The impugned decision also does not contain any reasoned decision with respect to the further opposition ground under Article 100(b) EPC, nor with respect to the subject-matter of independent claim 12The missing reasoning on the mentioned opposition grounds together with the remarks made by the opposition division in the "preliminary comments" section of the reasons for its decision, give rise to serious concerns as to the way in which the opposition division approached in particular the objections made under Article 100(c) EPC, as briefly explained below". The Board then carefully considered whether to remit the case -the "normal" procedure in case if fundamental deficiencies in first instance proceedings- or not. And concluded not to (r.5-5.5), but to  examine the opposition themselves. In examining Art. 100(c) EPC / Art.123(2), the Board took explicit care to not limit the the exact text of the application as filed, but to consider what the skilled person would directly and unambiguously derived from the application as filed (e.g., r.6.4.2, r.6.4.3(g)).

Friday, 15 July 2016

T 1272/10 Continuing opposition appeal proceedings after lapse of the patent?



If in opposition proceedings the patent turns out to have fully lapsed, the opposition proceedings are only continued at the request of the opponent [R.84(1)]. The same principle applies in opposition appeal proceedings [R.100(1)]. But does this make sense if the opponent has not appealed? The Board does not think so.

Tuesday, 12 July 2016

R 2/14 - Is there an undue burden?

Undue burden?

This is a successful petition for review.  

Claim 1 as granted refers to an amino acid sequence "SEQ ID NO:4". Unfortunately, the sequence contains an error and does not provide the required desaturase activity. The opposition division revoked the patent as not complying to Art. 83 EPC. In the appeal, the proprietor countered that the skilled person could nevertheless prepare a protein having the desired activity. 

In the appeal decision, the board rejects this argument. The relevant part of the decision is the following:



"30. Since the skilled person relying on the patent application was not informed that the protein defined by SEQ ID NO:4 was inactive, and since the patent application neither disclosed any active sequence variants having at least 60% sequence identity nor which positions of SEQ ID NO:4 had to be modified in order to obtain a functional desaturase, it had to go back to E. gracilis and redone the desaturase in order to put the claimed invention into practice. Even though each of the steps necessary for recloning could be performed by a person skilled in the art,- it is the combination of all the necessary steps (isolation of total mRNA, PCR amplification and selection of a group of amplification products with homology to known desaturases, completion of the 5' and 3' ends by RACE amplification, cloning and expression of the full length sequence to assess its function) which creates an undue burden on the skilled person trying to perform the invention. The same applies to the two alternative approaches mentioned by the appellant.

31. Thus, contrary to the requirements of Article 83 EPC, the skilled person would not have been in a position to perform the claimed invention readily and without undue burden across essentially the entire scope of claim 1."

The proprietor raised two complaints against the decision, the second of which is that the board based its decision on facts and arguments in respect of which the parties were not heard and did not reason its conclusions about the objection under Articles 100(b) and 83 EPC.


Friday, 8 July 2016

T 277/12 - Technical feature or particular use?


In this opposition appeal, the novelty of claim 1 is discussed, which reads as follows:

"A life support system for an aircraft, including a first oxygen supply apparatus operable to provide a limited supply of first product gas being one of pure oxygen and oxygen-enriched gas, to a breathing gas supply apparatus, and a second oxygen supply apparatus operable to provide a durable supply of second product gas which is an oxygen-enriched gas containing a lower concentration of oxygen than that in the first product gas to the breathing gas supply apparatus, wherein the second product gas is supplied at a pressure which is higher than that at which the first product gas is supplied to the breathing gas supply apparatus".

Of particular interest is the highlighted part: the Board deliberates whether this implies an actual technical limitation of the system, or merely pertains to a particular use of the system.

The Board considers the answer to lie in the specification: "the skilled person will need to interpret the claim by seeking to understand how the claimed pressure relationship is achieved in the rest of the specification".

Friday, 1 July 2016

T 2365/11: arguments to save your patent that fail without proof


In this opposition appeal the patent proprietor tried some interesting procedure related arguments to save his patent. 
A first line of arguments was based on the fact that in a specific letter another opponent was mentioned than the person who filed the opposition. According to the proprietor: "Since the 'true' opponent was therefore not known, and in any case the original opponent had no legal capacity, this constituted a circumvention of law by abuse of due process according to G3/97, rendering the opposition inadmissible." A second line of arguments was that replacing the chairman of the Opposition Division one day before the oral proceedings resulted in a procedural violation. 
The proprietor was not very successful with these arguments. It seems that the problem was that the proprietor could not prove what he argued - at least he did not provide enough evidence and arguments to show that there was a real circumvention of law and that the new chairman was not well-prepared for the oral proceedings.

Tuesday, 28 June 2016

T 1402/13 - Deemed to be withdrawn as no renewal fee paid, but when?


If the renewal fee is not paid by the due date, and also not by the end of the 6-month period to pay it with an additional fee, when is the European application deemed to be withdrawn? There seems to be no doubt about it since the November 2015 Guidelines for Examination: it reads in A-IV, 1.1.1 "In the event of non-payment of a renewal fee by the due date (Rule 51(1)), the application is pending up to the last day of the six-month period for payment of the renewal fee with an additional fee (Rule 51(2)), and a divisional application may still be filed during this period – even if the fees are ultimately not paid. Deemed withdrawal of the application takes effect on expiry of the six-month period." The Guidelines paragraph reflects what was written in the OJ 2007, SE 4, page 86, item 4: "Article 86(3) EPC is also deleted and the legal consequence of a failure to pay the renewal fee in due time is added to Article 86(1) EPC. It is emphasized that this does not modify the current situation, and under the Implementing Regulations to the EPC 2000 the application shall only be deemed to be withdrawn if the renewal fee and any additional fee have not been validly paid within the prescribed grace period for payment (see Rule 51(2) EPC 2000)." Nevertheless... the Board decided differently in this case.

Monday, 27 June 2016

T 1088/11 Enlarging and reducing the opposition division




Last January we discussed T 1254/11 dealing with enlarging/reducing the opposition division. This also plays in this case where the board takes the effort to thoroughly discuss whether (enlarging and later) reducing of an opposition division is possible at all and the procedural aspects for a valid reduction.
The board concludes that in principle, an opposition division may set aside a decision to enlarge its composition pursuant to Article 19(2) EPC (as is the current practice). 
On the procedural aspects, the Board decides that the legal validity of an enlargement or a reduction of an opposition division may only be established on the basis of the evidence in the publicly available file. In particular, where an opposition division has been enlarged pursuant to Article 19(2) EPC, but the case is nevertheless decided in a composition of three members, there should be clear evidence on the public file that a decision to set aside the enlargement was taken by the opposition division in its four member composition prior to the final decision. 
This was not the case, thus the board remits the case to the opposition division for further prosecution.

Tuesday, 21 June 2016

T 690/11 - When is presenting information technical?

Set-up procedure screen without web-browser

This opposition appeal concerns a dialysis system that shows set-up procedure screens to help an operator.

Claim 1 of the patent as granted reads as follows:

"A dialysis system (10,100) comprising:
a display device (40); and
a web browser (602) and web server(604) embedded in the dialysis system, characterized in that the browser and the server operate with the display device to:
display a plurality of dialysis therapy set-up procedure screens that require an operator input, and
display a plurality of dialysis treatment screens that graphically illustrate the progress of at least one step in the dialysis therapy in at least substantially real time."

The opponent considers that the features of displaying dialysis therapy set-up procedure screens and treatment screens are non-technical and should be disregarded for inventive step. The board disagrees, and finds this claim inventive over a dialysis system with a web browser. The comparable case T 336/14, which featured earlier on this blog, went the other way; the present claim is distinguished from it in the decision below.


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