Tuesday, 19 April 2016

T 2227/11 - Filing a backup appeal



A recurring problematic situation is the calculation of the appeal due dates in case the examining division corrects its refusal decision. We had this situation last month in T 105/11, where the applicant understandably (but incorrectly) took the corrected decision to compute the appeal time limits. 

Also in this case, the EPO issued a corrected decision. Apparently to be on the safe side, the applicant files two appeals, one against each decision, and also pays the appeal fee for both appeals. As a result, the EPO (incorrectly) refunds the appeal fee for the first appeal, and informs the applicant (incorrectly) that he ought to take the second decision for computing his time limits. 

This puts last month's decision in a new light, in which the Board hesitantly accepted the belated appeal as admissible because "the professionally represented appellant should have been aware" (R.1.8). Apparently, it is not so simple.

Another interesting aspect of this decision are two internet disclosures D1 and D2, which the applicant disputes are state of the art. The applicant considers that such disclosures, should be proved beyond any reasonable doubt (citing T 1134/06). The board does not accept this, and considers balance of the probabilities sufficient.


Summary of Facts and Submissions
 (...)
II. A first decision refusing the application dated 11 May 2011 was issued by the examining division and posted on the same day.

A notice of appeal against this decision was received on 19 July 2011. The appeal fee was also received on 19 July 2011.

With letter of 3 June 2011, the applicant requested correction of the decision and of the minutes of the oral proceedings.

A corrected second decision refusing the application dated 28 July 2011 was issued by the examining division and posted on the same day.

A second notice of appeal against this decision was received on 4 August 2011.

On 8 August 2011 the appeal fee was refunded.

A second appeal fee was received on 24 August 2011.

The statement setting out the grounds of appeal was received on 21 September 2011.

With letter of 13 September 2011, the applicant was informed that:
"- The decision to refuse a European Patent application dated 11.05.2011 has been cancelled.
- With regard to the communication of 24.08.2011 (Refund of fees), the fee for appeal paid for the decision dated 11.05.2011 has been refunded.
- The decision to refuse a European Patent application dated 28.07.2011 is valid.
- The time limits as mentioned on Form 2019 are calculated from the decision of 28.07.2011.
- This is to confirm that the notice of appeal has been filed in due time, namely on 04.08.2011.
- In addition the fee for appeal in amount of 1180,- EUR has been debited on 04.08.2011 too.
- The next procedural step is filing the grounds of appeal within four months of the notification of the decision of 28.07.2011."
(...)

Reasons for the Decision

1. Admissibility of the appeal

With letter of 13 September 2011, the applicant was inter alia informed that:
the first decision refusing the application dated 11 May 2011 had been cancelled,
the second decision refusing the application dated 28 July 2011 was valid, and
the time limits as mentioned on Form 2019 (ie with respect to Artcile 108 EPC) were calculated from the second decision.

The findings in this letter are, however, incorrect as the first decision could only have been "cancelled" by the examining division by way of an interlocutory revision in accordance with Article 109(1) EPC 1973. However, according to the file no interlocutory revision was decided by the examining division (see also Case Law of the Boards of Appeal of the EPO, 7th edition 2013, III.K.4.1.4).

The second decision dated 28 July 2011 is, therefore, null and void.

Accordingly, contrary to what is stated in this letter, the date of notification of the decision for the purposes of Article 108 EPC remains that of the decision posted on 11 May 2011 and is accordingly 21 May 2011 (cf Rule 126(2) EPC).

However, as the first notice of appeal, the first appeal fee and the statement setting out the grounds of appeal were all received within the prescribed time limits as of 21 May 2011, the appeal is admissible.

2. Internet citations

The appellant disputed that D1 and D2 were prior art under article 54(2) EPC. According to T 1134/06, the fact that an internet disclosure was state of the art under article 54(2) EPC should be proved beyond any reasonable doubt. The facts and evidence had to meet the criteria established by the jurisprudence in respect of prior use, ie, they had to answer the questions when the internet disclosure was made available to the public, what was made available and under which circumstances was it made available. Such evidence was not shown by the examining division.

In the board's judgement, however, the examining division was right to comply with the practice followed at the EPO when citing documents retrieved from the Internet provided in the Notice of the EPO concerning internet citations (OJ EPO 8-9/2009, pages 456-462)) which is of a later date than decision T 1134/06 referred to by the appellant. It is noted that the examining division thereby also acted in accordance with the instructions provided in the Guidelines for Examination in the EPO in force at that time (cf C-IV, 6.2; Version April 2010). In particular, the appropriate standard of proof for internet citations is the balance of probabilities.

The EPO standard of proof is generally the balance of probabilities. By way of exception, the standard of proof of the balance of probabilities is shifted to a standard of proof beyond reasonable doubt mainly in opposition where only one party has access to information eg concerning an alleged public prior use. The difficulty of the other party to gain access to information in support of no such public prior use having taken place, allowing it to counter-argue, has caused the case law to tend in this case toward expecting the public prior use to be proved beyond reasonable doubt (see also Case Law of the Boards of Appeal of the EPO, 7th edition 2013, I.C.2.5).

In the specific case of internet citations of prior art, both the EPO and the parties to the proceedings generally have equal access to the relevant information notably concerning the authenticity of its publication date and content. Accordingly, there is no reason to deviate from the standard of proof of the balance of probabilities.

Indeed, while the board agrees with the detailed reasoning in T 1134/06 that internet citations of prior art entail a number of difficulties in assessing the authenticity of notably the publication date and the content, in its judgement there is no reasons to impose a stricter standard of proof.

It is understood that these difficulties may require some far-going investigations in the matter and the provision of supporting evidence. In the board's view, however, it is not because the matter is more complicated that a stricter standard of proof should be adopted.

The burden of proof generally lies with who affirms. In the specific case of internet citations of prior art cited by the EPO, the burden of proof thus lies with the EPO. If the EPO however is satisfied that, on the balance of probabilities, the internet citations constitutes prior art, it is then up to the party to prove otherwise.

3. Documents D1, D1' and D2

Having regard to the above, it is noted that D2 stems from Datalog International (previous name IBG Immucor), which appears to be the former name of the applicant, and that the Safe Track and IBG Immucor Blood Tracking System referred to in D1 are products of these companies. Accordingly, the applicant's access to information concerning these documents should be unproblematic.

In the decision under appeal, the examining division essentially held that document D1 was a presentation that took place at the IBMS Congress 2001 (September 2001) and that therefore the publication date was the date of the congress. Moreover, document D1', a copy of this report dated 21 November 2001 retrieved from the Internet Archive was provided.

Document D2 was retrieved from the Internet Archive and was dated 5 June 2003.

The examining division held that, on the balance of probabilities, both documents D1 and D2 were prior art under Article 54(2) EPC.

Concerning document D1, the appellant argued that the examining division failed to prove beyond any reasonable doubt that D1 was state of the art under Article 54(2) EPC.

As detailed above, however, a proof beyond any reasonable doubt is not required in the present case. A proof on the balance of probabilities suffices.

The content of documents D1 and D1' is identical, apart from an introductory paragraph not present in D1'. Rather than using document D1' as evidence that the publication date of document D1 lies before the priority date of the application, it is considered expedient to refer directly to document D1'.

The board has no reasons to doubt the authenticity of the content and publication date of document D1', so that the document is considered to form part of the state of the art under Article 54(2) EPC 1973.

Having regard to document D2, the appellant argued that in T 1134/06 it was explicitly stated that images of the Internet Archive (archive.org) were not necessarily instantaneous snapshots of a website but could be assembled in the course of successive crawls and that links could connect to different material than at the time of capture (paragraph bridging pages 6 and 7).

However, as is clear from the article referred to in T 1134/06, these successive crawls are completed in any case in two days (cf Howell B.A., "Proving Web History: How to use the Internet Archive", Journal of Internet Law, February 2006, pages 3 to 9, in particular page 8, left-hand column, third paragraph). This point is thus irrelevant in the present case where the crawl dates of the different pages of D2 lie between February and June 2003 and thus several months before the priority date of the application (19 February 2004).

Moreover, the issue of links being inactive or connecting to different sites of the live web does not arise either in the present case, as each page of D2 has been individually crawled on the indicated dates (between 16.02.2011 and 24.06.2011) and archived.

Accordingly, the board has no reasons to doubt the authenticity of the content and publication date of document D2 either, so that also D2 is considered to form part of the state of the art under Article 54(2) EPC 1973.

This decision T 2227/11 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T222711.20160218. The file wrapper can be found here. Photo "Project 365 #11: 110114 Send In The Clones" by Pete obtained via Flickr under a Public Domain Mark 1.0 license (no changes made).

1 comment :

  1. In defence of the examining division, the re-issuance of the decision in the present case and in T 105/11 was the work of the formalities officer and not of the division.
    May be the formalities officer would have been well advised to consult either the division, or better the legal department rather than to launch a second decision.
    What made the things worse is that the appeal fee for the first and only correct appeal was reimbursed....
    Some training seems to be urgently needed within the body of formalities officers. Such blunders should not persist.

    T 1134/06 is now obsolete and it is good so. T 1134/06 resulted in the refusal of the Board (a mechanical one) to accept archive.org as a reliable source of information. It is to be doubted that an electronics board would have come to such a drastic requirement.

    ReplyDelete

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