Tuesday, 29 March 2016

T 1997/11 - Not enabled



The patent application in this Examination appeal is refused under Art. 83 for lack of  enablement. 

The invention concerns an intravascular-ultrasound (IVUS) data-acquisition system in which the transfer function of a catheter is estimated from the ultrasound data itself. I understand this feature supports, what is referred to as, 'blind deconvolution'.

About half a year after the priority date an article D0 is published authored by the inventors which also discloses the invention. Document D0 is more detailed and gives more enablement than the patent application. This difference may have brought an enablement problem to the fore.

The applicant claims that blind deconvolution is part of the common general knowledge of the skilled person, as evidenced by either D3 (cited by the Examiner) or documents D15-D24 (cited by the applicant). Note that document D3 is cited by article D0 as well.

Friday, 25 March 2016

T 2054/11 - Witness not a gap-filler


In this opposition appeal, the appellant alleges that the Opposition Division committed a substantial procedural violation in that it failed to hear a witness.

The case concerns an alleged public prior use. During opposition proceedings, the opponent (now appellant) attempted to substantiate the public prior use (i.e., the "what, when, how...") by submitting, amongst others, an affidavit of a witness (mr. Steinparzer).

However, the Board concludes that the opponent had at no point in the procedure explicitly named mr. Steinparzer as a witness to be heard, nor requested him to be heard, nor indicated why mr. Steinparzer was to be heard. As such, the Board concludes that the Opposition Division did not commit a substantial procedural violation by refraining from hearing the witness.

The Board further concludes that hearing the witness would also not helped the opponent's case, since the opponent apparently relied on the witness to fill 'gaps' in the substantiation of the public prior use since it was found to be incomplete. However, the Board confirms that witnesses can only be used to 'harden' the substantiation, but not to fill gaps therein.

Tuesday, 22 March 2016

T 0967/10 - Pathogen resistant veggies

Where the examining division refused the application under Art 123(2) EPC, lack of inventive step under Art 56 EPC and because one of the auxiliary requests related to an unpatentable plant variety under Art 53(b) EPC, the Board here took a different approach and denied patentability straight away due to lack of clarity under Art 84 EPC. The issue was raised by the examining division as well, but this issue was enough for the Board to dismiss the appeal. Because plants having a phenotype of "reduced susceptibility towards infection with Bremia lactucae" were known in the prior art, the claim lacked clarity because, based on the specification and the claims, it could not be determined by the skilled person what the genetic information present in the genome of the claimed plants finally would be, which would render them less susceptible towards a Bremia lactucae infection. The take-home message being that it is wise to define some part of the genome that causes the reduced susceptibility (some SEQ ID) and include that in the claim. Then at least it can be easily determined whether a plant obtained by a crossing process is within the claim scope or not.
Summary of Facts and Submissions
I. An appeal was filed by the applicant (appellant) against the decision of the examining division to refuse European patent application number 05759731.2. The application was filed as an international application and published as WO 2005/124108 (the application as filed) with the title "Reduced susceptibility towards pathogens, in particular comycetes, such as downy mildew in lettuce and spinach".
II. The examining division considered that the subject-matter of main request and auxiliary request 1 did not meet the requirements of Article 123(2) EPC, while the subject-matter of auxiliary request 2 related to a plant variety pursuant to Article 53(b) EPC and was therefore held as not being patentable. Moreover, the subject-matter of auxiliary request 2 was held to lack inventive step.
The board issued a summons to oral proceedings and later, a communication pursuant to Article 15(1) RPBA in which it set out its preliminary appreciation of substantive and legal matters concerning the appeal. The board was of the preliminary opinion that claim 1 of the main request lacked clarity because the claimed lettuce plants were not defined by any identifiable features which would allow the skilled person to distinguish the claimed plant from one of the prior art in a straightforward manner. The resistance phenotype itself could not serve this purpose, as the same phenotype could potentially arise from various different genetic origins. Nor was there any additional disclosure in the application of the genetic cause of the resistance phenotype in the deposited seeds. In other words, the trace left in the claimed plant by the process mentioned in the claim was unknown. The board also noted that lettuce varieties with field resistance to B. lactuca were known in the art.

Friday, 18 March 2016

T 0105/11: a requested correction of a decision and a too late filed ground of appeal


Admissibility of an appeal is quite often a point of discussion. In this case the Examining Division refused to grant a patent in a decision and the Applicant requested a correction of the (original) decision. When the Examining Division re-issued the decision it was not made completely clear that the re-issued decision was a correction of the previous decision (however, this is implicitly clear because the Applicant requested a correction). Case law defines that a correction of a decision has retrospective effect and that, thus, the date of refusing the patent application does not change and, thus, the appeal term still starts at the date of the original decision. In this case the Applicant filed a notice of appeal within the 2 months from the original decision, but filed the ground of appeal after the end of the 4 months period from the date of the original decision (and within 4 months from the date on which the decision was re-issued). In some appeal cases the principle of "protection of legitimate expectations" was applied in "similar" cases and the appeal was admissible. However, the Board had some doubts that this situation was similar enough to the previous cases. "Albeit not entirely without hesitation", the Board decided on this subject.

Tuesday, 15 March 2016

T 1921/10 - No prominent role...


In this examination appeal, the applicant submitted auxiliary requests in response to the summons for oral proceedings. The amendments made to the auxiliary requests with respect to the main request had been derived from originally-filed claims 5 and 6. However, these claims had not played a prominent role in examination and appeal proceedings...



Sunday, 13 March 2016

T 0629/15 Re-establishment of rights - payment of renewal fee



In this case the board of appeal has to deal with a common situation wherein a renewal fee has been missed and responsibility for payment was lying with the US attorney and a fee payment agency. In such a situation, when does the 2 month period for requesting re-establishment start? 
The European patent attorney is of the opinion that the period starts when he is instructed to affect the payment. The board reviews the case law and concludes that if the loss of rights communication is received earlier, then this communication triggers the period. The request for reestablishment is now inadmissible for being filed too late.

Tuesday, 8 March 2016

T 2542/12 - Can a strain be enabled without a deposit?

Presumably healthy Cod,  escaping from a cod trap

Claim 1 of this Examination appeal concerns a bacterium causing Cod's Syndrome in cod. The strain was deposited by the inventor before the priority date. Moreover, the priority document, of which the inventor is not the applicant, refers to the deposit.  Unfortunately the depositor had not properly authorized the applicant to refer to the deposited material. The board does not allow the applicant to benefit from the deposit to argue the enablement of the invention. (The decision refers to Rule 28(1)(d) EPC 1973, corresponding to Rule 31(1)(d) EPC 2000).

As the claims in this appeal make no mention of the deposited strain, the Board needs to decide if a Claim to a bacterium is enabled in the absence of a deposit. The Board admits that this is possible but continues to set a high bar for this to be allowed. The situation regarding the deposit is discussed in reasons 18-31. 

Friday, 4 March 2016

T 2451/13 - Up to the hilt

Up to the hilt: the sword being plunged into an opponent with only the hilt remaining visible...

This decision summarizes the principles governing burden of proof in case of public prior use, and in particular, what is to be exactly understood as representing 'up-to-the-hilt'. When applied to the present case, the Board concludes that this standard is met...

Catchwords:
If the publication date of a document originating from an opponent (or a subsidiary thereof) is in dispute, the opponent must prove that date "up to the hilt". The yardstick for this proof is that of "beyond reasonable doubt" rather than "absolute certainty" (point 3.2).

Tuesday, 1 March 2016

T 1402/13 - No 50% reimbursement of the appeal fee



This decision relates to a conditional withdrawal of an appeal and a request for reimbursement of the appeal fee since no preliminary opinion was issued by the board and no date for oral proceedings was set. Problem was however that the applicant (appellant) did not pay the renewal fee that was due earlier (31 August 2015) than the withdrawal of the appeal was submitted (19 February 2016). Interestingly, this decision was published straight away, on 25 February 2016, while the applicant could still pay the renewal fee with a 50% surcharge until 29 February 2016. Of course this would not have been (money-) wise because the return of the appeal fee (1240 euro at the time; 50% being 620 euro) would not outweigh the costs for the renewal fee plus surcharge (2340 euro). To be on the safe side, the board could have waited until after 1 March 2016, but they did not.
The conclusion is that one cannot get a reimbursement of the appeal fee when an application is no longer pending. The appeal procedure in this case has ended due to the loss of rights. The declaration regarding the withdrawal of the appeal cannot be effective.


Summary of Facts and Submissions
I. The appeal lies against the decision of the Examining Division dated 17 December 2012. It was filed on 13 February 2013. A statement of grounds was submitted on 24 April 2013.
II. The renewal fee for the 12**(th) year fell due on 31 August 2015 and was not paid by that date.
III. On 18 February 2016 the Appellant submitted a declaration stating: "The Appellant ... hereby withdraws their Appeal against the decision of the Examining Division upon the condition that the withdrawal is received in time to qualify for at least a 50 % refund of the appeal fee."
IV. The Board has neither issued a preliminary opinion nor set a date for oral proceedings.
Reasons for the Decision
1. Procedural declarations may be made with the proviso that certain conditions are met, as long as a case is already pending (J 16/94, referring to Article 108, first sentence, and Rule 64(b) EPC 1973; T 854/02, Reasons 2.1) and these conditions do not concern facts outside the proceedings (T 502/02, Reasons 1, referring to Articles 21 and 111(1), second sentence, EPC). Thus, whereas a conditional appeal is not possible, the conditional withdrawal of an appeal may be valid (T 6/92, Reasons 2 and 3; T 304/99, Reasons 3.1.).
2. The withdrawal of an appeal can, though, only take effect if the appeal is still pending.
3. This is not the case here. Since the renewal fee for the 12**(th) year was not paid in due time, the application is deemed to be withdrawn in accordance with Article 86(1), 3rd sentence, EPC. Such a loss of rights also affects the appeal proceedings. The fact that the Appellant might still reverse the loss of rights by paying the renewal fee plus an additional fee (50 % of the renewal fee) within 6 months after the due date, does not change the current situation, since no such fees have been received by the Office. Thus, at present the application is no longer pending and hence the appeal proceedings have also ended due to the loss of rights. Therefore, the declaration regarding the withdrawal of the appeal cannot be effective.
4. In consequence, the prerequisites of Rule 103(2) EPC are not met. Thus, no reimbursement of the appeal fee or parts of it is possible for as long as the renewal fee plus the additional fee have not been paid.
Order
For these reasons it is decided that:
The request for a (partial) reimbursement of the appeal fee, dated 18 February 2016, is refused.
This decision has European Case Law Identifier: ECLI:EP:BA:2016:T140213.20160225 and can be found here. The file wrapper can be found here.Photo "Flower" by Jeremy Knight via Flickr under a CC-By license (no changes).

Statcounter