Wednesday, 6 September 2017

T 158/14 - Hidden in plain sight


If your appeal to an opposition is entirely based on new documents, which moreover could have been found with a straightforward Espacenet search, should your appeal then be inadmissible? 
The opponent filed two new Japanese documents (D9 and D10) together with its appeal. The proprietor objects to these documents on the basis that they could easily have been found in a search during the opposition period. In particular, the proprietor observes that an Espacenet search in the same EPC class as the opposed patent for the year prior to the priority year gives document D10 as its very first hit.  Document D9 requires a bit more work, but is found in a similar manner. According to the opponent, basing an appeal on these late-filed documents is not only inadmissible but amounts to an abuse of procedure.
The opponent has it own complaints about the proprietor though. Three days before the oral proceedings, a further response is filed of about 90 pages, including new requests. 
The board doesn't go along with either objection. 

Reasons for the Decision
1. Admissibility of the appeal and of the documents D9 and D10
1.1 The patentee argued that the appeal was inadmissible for the reason that the opponent's grounds of appeal were exclusively based on the newly cited documents D9 and D10, documents which should not be admitted into the proceedings because they were late-filed and not prima facie relevant for the subject-matter of claim 1 as maintained according to the interlocutory decision of the opposition division.
The patentee explained that it would have been easy for the opponent to find D9 and D10 in public databases, in particular for the reason that D9, D10 and the present patent had at least one of the IPC classes G01N1/36 or G01N1/28 in common. The mere fact that D9 and D10 were not written in an official EPO language was not a sufficient reason for allowing the opponent to introduce these documents into the proceedings after the nine-month period defined in Article 99(1) EPC. The opponent was supposed to have searched during the nine-month period all existing databases, including those of Japanese utility models, either itself or by mandating a Japanese search company. Furthermore, none of the documents D9 and D10 was novelty destroying or rendered obvious the subject-matter of claim 1. The patentee concluded that D9 and D10 were late-filed, technically not relevant and, therefore, should not be admitted into the proceedings.
In response to a question from the board during oral proceedings, the patentee stated that the filing of D9 and D10 with the statement of grounds of appeal amounted to an abuse of procedure in the sense that these documents were late-filed and that no other objections than those based on D9 and D10 were raised by the appellant in its statement of grounds of appeal against the patent as maintained by the opposition division.
1.2 The opponent was of the view that its appeal fulfilled all the legal admissibility requirements foreseen by the EPC.
It further insisted that documents D9 and D10 were not withheld deliberately by the opponent but that they were retrieved by pure coincidence after the decision of the opposition division with the help of a Japanese client of the opponent, the client having given a hint of the existence of Japanese patent documents disclosing the same invention as the present patent. It was not realistic that the opponent was supposed to search all possible databases in all possible languages. The EPO had also not retrieved these patent documents. Finally, since D9 and D10 were highly relevant for the patentability issue of the claimed subject-matter, they had to be admitted.
1.3 The board notes that the sole reason provided by the patentee for rejecting the appeal as being inadmissible was based on the fact that the opponent's statement of grounds of appeal had exclusively been based on newly cited documents D9 and D10 which should not be admitted into the proceedings.
Following the established case law of the boards of appeal, the board considers that late-filed documents, as long as there is no abuse of procedure by the opponent, may be admitted into the proceedings if they are prima facie sufficiently relevant for questioning the maintenance of the patent (see e.g. decisions T 1019/92, point 2.2 of the reasons; T 671/03, point 2.2 of the reasons; T 1029/05, point 2 of the reasons).
1.3.1 Abuse of procedure
The board acknowledges that D9 and D10 could in principle have been retrieved within the nine-month opposition period. This, however, is not the issue at stake, but rather whether the late filing of the documents constitutes an abuse of procedure. Concerning this aspect, the board is satisfied that the opponent provided a reasonable justification why D9 and D10 were not filed during the nine-month opposition period: these documents are Japanese utility models having no English abstract and were found by the opponent only by chance after discussing the appealed decision with one of its Japanese clients. Documents D9 and D10 were filed at the earliest possible point in time of the appeal proceedings, i.e. with the statement of grounds of appeal. The board sees no indication that the opponent deliberately withheld D9 and D10 for tactical reasons.
1.3.2 Relevance of D9 and D10
Both D9 and D10 relate to the same technical field as the present invention, i.e preparation of histological samples, deal with the same technical problem, i.e. how to clean tissue cassettes from excess embedding medium and even disclose the same solution to the problem, i.e. sliding the cassette over a heated plate. Therefore, the board is convinced that D9 and D10 are highly relevant with regard to the patentability of the claimed subject-matter.
1.3.3 For the above reasons, the board decides to exercise its discretion pursuant to Article 12(4) RPBA to admit D9 and D10 into the proceedings.
Since the sole reason substantiating the patentee's request to hold the appeal to be inadmissible is not found convincing by the board, and since the board sees no other reason for holding the appeal inadmissible, the appeal is admissible.
2. Main request
2.1 Admissibility
2.1.1 The opponent stated that receiving from the patentee a letter of approximately 90 pages, including a new main request and new first and second auxiliary requests, just a few days before the oral proceedings represented an unfair behaviour of the patentee and justified a restrictive handling of the RPBA when deciding the admissibility of the claim requests. Moreover, the amended feature of claim 1 "... to melt the excess embedding medium ..." introduced a new problem since it contained added subject-matter. Therefore, the main request should not be admitted into the proceedings.
2.1.2 The patentee argued that present claim 1 was identical to claim 1 as filed with its letter of reply to the opponent's statement of grounds of appeal. The subject-matter of present claim 1 represented a limitation of the subject-matter of claim 1 underlying the appealed decision. The basis for the amended feature could be found on page 4, line 28 to page 5, line 5 of the application as filed. Finally, the term "excess" did not represent added subject-matter since it had a basis in original claim 1.
2.1.3 Acknowledging that filing a submission with a large amount of pages and new claim requests shortly before the oral proceedings should in principle be avoided by any party, the board nevertheless decides that the main request is admitted into the proceedings for the reasons given by the patentee.
(...)
3. Admissibility of the first auxiliary request
3.1 The first auxiliary request is not admitted into the proceedings pursuant to Article 13(1) and (3) RPBA.
Claim 1 of the first auxiliary request has been received by the EPO on 23 June 2017, i.e. shortly before the oral proceedings held on 29 June 2017, contrary to the requirement of Article 12(2) RPBA, according to which the patentee had to present its complete case with the reply to the opponent's statement of grounds of appeal. No valid reason, such as the filing of new evidence by the opponent, is apparent for the late filing of the first auxiliary request.
Claim 1 of the first auxiliary request comprises the additional feature, taken from the description, that the plate is heated in the range of 60°C to 90°C. D9 does not explicitly disclose this feature. However, the board is of the view that it lacks prima facie an inventive step (Article 56 EPC 1973). Indeed, D9 teaches to heat the plate at a temperature sufficient to melt the embedding medium. Therefore, depending on the actually used embedding medium, the skilled person would necessarily heat the plate at a temperature above the melting point of the actually used embedding medium. In particular, if the embedding medium had a melting temperature in the range of 60° to 90°C, the skilled person would adapt the heating elements of D9 so as to heat the plate in the range of 60°C to 90°C.
But even if the embedding medium had a melting point below 60°C, the board considers it obvious for the skilled person to increase the temperature of the grooved plate above 60°C in order to solve the problem of rendering the removal of the excess embedding medium formed on the exterior walls of the cassette more efficient. It appears obvious, indeed, that the higher the temperature of the grooved plate, the more efficiently and the faster the excess embedding medium is melted away from the exterior walls of the cassette.
3.2 The patentee argued that the new feature was already implicitly present in the feature of claim 1 of the main request "... temperature sufficient to melt the excess embedding medium". The patentee further noted that the present oral proceedings were the last chance to obtain a patent for its invention. Moreover, the new feature was already present in claim 2 of the main request filed with the patentee's reply to the grounds of appeal. Concerning inventive step, the patentee argued along the lines of its argumentation for the main request.
In view of the discretion not to admit late-filed amendments given to the board under Article 13(1) and (3) RPBA, the board does not find these arguments convincing. As noted by the opponent, the amendment originates from the description and it was not foreseeable that the feature of claim 2 of the main request filed with the reply to the grounds of appeal would effectively be introduced in claim 1. Concerning inventive step, the patentee did not present new arguments additional to those already discussed with respect to claim 1 of the main request.
3.3 Since the subject-matter of claim 1 is late-filed and prima facie not inventive over D9, the board, in view of the current state of the proceedings and the need for procedural economy, exercises its discretion pursuant to Article 13(1) and (3) RPBA not to admit the first auxiliary request into the proceedings.
4. Admissibility of the second auxiliary request
(...)
5. Apportionment of costs
5.1 The patentee requested for the first time with letter of 21 June 2017 the full refund of its costs in accordance with Article 16(1) and (2) RPBA, submitting that the late introduction of documents D9 and D10 only in the appeal proceedings constituted an abuse of procedure. The patentee reiterated its request during the oral proceedings without providing additional arguments.
5.2 Under Article 16(1) RPBA, it is at the discretion of the board to order, after request of a party, an apportionment of costs according to Article 16(2) RPBA and different from the principle that each party shall bear the costs it has incurred (see Article 104(1) EPC for the costs of opposition proceedings). Article 16, paragraph (1)(a) to (e), RPBA lists typical circumstances in which a divergent apportionment of costs is to be taken into account.
5.3 Circumstances according to Article 16, paragraph (1)(a) to (d), RPBA were not invoked by the patentee and are also not apparent. As to the alleged abuse of procedure pursuant to Article 16(1)(e) RPBA, the late filing of documents D9 and D10 by the appellant does not amount to such an abuse (see point 1.3.11.3.1 above).
5.4 As a result, the board, by exercising its discretion and after having carefully considered the relevant circumstances of the case, for the above-mentioned reasons does not see any persuasive grounds which would justify a departure from the normal rule that each party bears its own costs, and accordingly refuses the request of the patentee for an apportionment of costs.
(...)
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
3. The request for apportionment of costs is refused.
This decision T 0158/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T015814.20170629. The file wrapper can be found here. Photo by vieleineinerhuelle obtained via Pixabay under Creative Commons CC0 (no changes).

3 comments :

  1. This decision shows that some boards do not apply the rules of procedure in a mechanical way, but in very balanced way. Late filed documents admitted, late filed main request, filed 3 days before the oral proceeding admitted as well. There is however no surprise that AR1 and 2, filed with the MR, comprising both different features from the description were not admitted.

    It should also not be forgotten that a patent which does not have a raison d'être should not be upheld.

    It is however worth noting that in T 900/09, the board allowed full apportionment of costs for the whole appeal procedure. The board held that, would the novelty destroying documents would have been filed in first instance, the whole appeal procedure could have been avoided. See point 15 of the reasons.

    In T 900/09, the proprietor did however not claim abuse of procedure. The highly relevant document was actually a sales brochure from the opponent himself. This one could indeed have been retrieved earlier.

    May be with a different reasoning, and by avoiding filing a 90 pages document as well as new requests 3 days before the oral proceedings, the proprietor could have obtained more.

    ReplyDelete
  2. What is the purpose of having a patent which is readily not valid for lacking of novelty? That's not an asset but just a blunt instrument for bothering (or trying to bother) a competitor. EPo was right to admit the prior art!

    Trust_me

    ReplyDelete

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