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.

Summary of Facts and Submissions
I. The opponent lodged an appeal against the decision posted on 31 January 2012 concerning the maintenance of European patent No. 1 772 160. In the decision under appeal, the Opposition Division held that the patent as amended according to the main request then on file satisfied the requirements of the EPC, in particular those of Articles 123(2) and (3) and 56 EPC.
II. Notice of appeal was filed on 30 March 2012 and the fee for appeal was paid the same day. A statement setting out the grounds of appeal was received on 29 May 2012.
III. The following documents are relevant for the present decision: [...].
IV. Oral proceedings were held on 12 July 2016.
The appellant (opponent) requested that the decision under appeal be set aside and that the patent be revoked.
The respondent (patent proprietor) requested that the decision under appeal be set aside and that the patent be maintained on the basis of one of the main request filed during oral proceedings on 12 July 2016 and the first to fourth auxiliary requests filed on 8 October 2012.
V. Claim 1 of the main request reads as follows:
[...]
VI. The arguments of the appellant-opponent relevant for the present decision are summarised as follows:
(i) Article 84 EPC
The clarity objection was admissible. It concerned features of the claim which had been taken from the description. Since the Opposition Division allowed the claims, it implicitly made a decision under Article 84 EPC. Moreover, the objection had been raised with the statement of grounds of appeal and was hence part of the appellant's case.
It was completely unclear how a sealing film for placement over the wound dressing member to seal around the perimeter of the wound could "provide an enclosed space above the wound dressing member in which a vacuum is formed by suction on the port" because the film would be sucked onto the dressing member when vacuum was applied. Such an enclosed space could be provided only if there were additional features that prevented the film from contacting the dressing member, such as a spacing foam, packing material or bosses on the dressing member as described in the patent. These were essential features of the invention which had been omitted from the claim, so that the requirements of Article 84 EPC were not fulfilled.
(ii) Articles 123 and 76 EPC
[...]
(iii) Inventive step
Even if document P4 was considered "late filed", its admission into the proceedings was requested because it was prima facie relevant to the maintenance of the patent. It disclosed almost all of the features of claim 1 and should therefore be considered to form the closest prior art. P4 had been cited as a novelty-destroying document during the examination proceedings, in the granted patent and also at the earliest possible moment in the appeal proceedings. Hence, the citation of P4 could not be seen by the proprietor to be surprising.
[...]
VII. The arguments of the respondent-patent proprietor relevant for the present decision are summarised as follows:
(i) Article 84 EPC
The clarity objection should not be admitted since, although it concerned a feature which had already been added to claim 1 during opposition proceedings, the objection had not been raised before the Opposition Division and, accordingly, no first-instance decision had been given on this matter. The primary purpose of an appeal should be to review the correctness of the appealed decision.
The claimed enclosed space above the wound dressing member when vacuum was formed was a clear, unambiguous feature. The raised objection appeared to relate to the sufficiency of the disclosure, rather than to clarity. The features which the appellant alleged to be missing were disclosed as optional alternatives, certainly not as essential features.
(ii) Articles 123 and 76 EPC
[...]
(iii) Inventive step
The objections based on P4 should not be admitted since they were raised for the first time in appeal proceedings. The opponent had listed P4 in its notice of opposition, but chose not to raise any objections starting from P4 during the opposition proceedings. Consequently, the decision by the Opposition Division made no reference to that document. If the Board considered admitting P4 into the proceedings, the case should be remitted to the Opposition Division, as in T 156/84, in order not to deprive the parties of a full examination of the opposition before two instances. In case of remittal, apportionment of costs caused by additional proceedings before the Opposition Division were requested. At oral proceedings it was clarified that a referral to the Enlarged Board of Appeal as mentioned on page 10 of the respondent's reply dated 8 October 2012 was no longer requested.
In any case, P4 by itself or in combination with P3, or the combination of P2 with P3, did not render obvious the claimed bandage. The arguments were essentially those given in the reasons below.
Reasons for the Decision
1. The appeal is admissible.
[...]
3. Article 84 EPC
3.1 Admissibility
3.1.1 The respondent considered that the objection under Article 84 EPC was inadmissible. It argued that although the objection concerned a feature which had already been added to claim 1 during opposition proceedings, the objection had not been raised before the Opposition Division. Accordingly, no first-instance decision had been given on this matter.
The respondent is right in observing that the primary purpose of an appeal is to provide the adversely affected party with the opportunity to challenge the decision on its merits and to obtain a judicial ruling as to whether the first-instance decision was correct (G 9/91; OJ 1993, 408). However, according to established jurisprudence (G 9/91, point 19 of the Reasons), if amendments are made to the claims in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC. Whilst it is true that in principle the appellant could have raised the clarity objection during the opposition proceedings, he did so for the first time in the statement of grounds of appeal, whereby the respondent and the Board had ample time to consider it. The Board is therefore of the view that the lack of a first-instance ruling on the clarity objection is not sufficient reason to disregard the objection in the appeal proceedings.
3.1.3 The objection under Article 84 EPC is hence admissible.
3.2 The feature objected to as lacking clarity is defined at the end of claim 1 as a sealing film for placement over the wound dressing member to seal around the perimeter of the wound to "provide an enclosed space above the wound dressing member in which a vacuum is formed by suction on the port".
The appellant argued that the sealing film would be sucked onto the dressing member when vacuum was applied, thereby eliminating any "enclosed space", unless the bandage had additional features which prevented this, such as a packing material or bosses (90) placed between the wound dressing member and the sealing film as mentioned in the patent specification (column 3, lines 21 to 25; column 15, lines 8 to 18; Figures 17 to 19).
The Board notes that the patent specification makes it clear that any of these features is an optional alternative. It is even explicitly said that some bandages function quite well without the packing material (column 3, lines 25 to 30). Moreover, the skilled person will immediately recognise that in order to achieve the claimed effect of providing "an enclosed space above the wound dressing member in which a vacuum is formed by suction on the port", a number of other technical options may be implemented, such as devising the sealing film with the appropriate stiffness and/or form. There is hence no need for any of the constructional features which the appellant alleged to be missing.
The Board finds therefore that no essential features of the invention have been omitted from claim 1.
3.4 It is thus concluded that claim 1 of the main request satisfies the requirements of Article 84 EPC.
4. Article 123(2) and (3), 76(1) EPC
4.1 - 4.3 [...]
4.4 Hence, the Board concludes that claim 1 of the main request satisfies the requirements of Article 123(2) EPC.
4.5 Since the aforementioned passages of the description and the figures of the application as filed are identical to the corresponding passages and figures of the parent application as filed, claim 1 of the main request satisfies the requirements of Article 76(1) EPC too.
[...]
Consequently, the Board concludes that the scope of protection of claim 1 of the main request is narrower than that of claim 1 of the granted patent, whereby the requirements of Article 123(3) EPC are fulfilled.
5. Inventive step
5.1 Admissibility of objections based on P4 and remittal
5.1.1 The respondent requested that the objections concerning lack of inventive step starting from P4 as closest prior art should not be admitted into the appeal proceedings. The respondent correctly pointed out that P4 had merely been listed in the notice of opposition, but that no objections based on this document had been raised during the entire opposition proceedings. Accordingly, the decision by the Opposition Division did not make any reference to that document either. The respondent requested, moreover, that if the Board admitted P4 into the proceedings, the case should be remitted to the Opposition Division in order not to deprive the parties of a full examination of the opposition before two instances.
It is conceded that in principle the appellant could have raised the inventive-step objections starting from P4 in the opposition proceedings, rather than waiting to present them in the statement of grounds of appeal. However, P4 discloses a vacuum bandage for connection to a vacuum source for drawing exudate from a wound which appears, prima facie, to come closer to the claimed subject-matter than P2. It hence appears to the Board that P4 is indeed a relevant document which needs to be considered in order to establish with certainty whether the requirements of inventive step are fulfilled. As explained in T 156/84 (point 3.4 of the Reasons), which was cited by the respondent, the principle of examination by the Office of its own motion enshrined in Article 114(1) EPC takes precedence over the possibility of disregarding facts or evidence not submitted in due time provided for in Article 114(2) EPC. Hence, the prima facie relevance of the objections starting from P4 is reason for the Board not to disregard them merely because they had not already been presented during the opposition proceedings.
5.1.3 Article 111(1) EPC leaves it to the discretion of the Board whether to exercise any power within the competence of the department of first instance or to remit the case to that department. Hence, a party has no absolute right to have each individual issue considered by two instances (established jurisprudence as cited in Case Law of the Boards of Appeal of the EPO, 7th edition 2013, IV.E.7.6.1). It is consequently of no relevance that in T 156/84, cited by the respondent, the deciding Board, after considering the specific circumstance of that case, ordered its remittal. As far as the present case is concerned, the Board notes that P4 is an earlier application by two of the inventors of the patent in suit which was cited in the patent specification (paragraph [0007]). Also its complexity is not such that it would justify a remittal of the case to the first instance. Moreover, since the objections had already been presented in the statement of grounds of appeal, the respondent and the Board were given ample time for their consideration.
In view of these circumstances and taking into consideration the imperative of procedural efficiency, the Board considers it appropriate to decide on the raised objections itself rather than to remit the case to the Opposition Division.
5.2 P4 as starting point
[...]
5.3 P2 as starting point
As a consequence, the subject-matter of claim 1 of the main request satisfies the requirements of an inventive step under Article 56 EPC. A fortiori, the preferred embodiments of dependent claims 2 to 14 are likewise patentable.
6. Since the objections raised do not prejudice the maintenance of the patent amended according to the main request, the Board does not need to consider the auxiliary requests.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance with the order to maintain the patent on the basis of [...]

This decision T 799/12 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T079912.20160712. The file wrapper can be found here. Photo "Clouds" by Jan Kraus obtained via Flickr under CC BY 2.0 license (no changes made).

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