Friday, 13 October 2017

T 0231/13 - no inventor needed, a professional representative is enough


At the opening of the oral proceedings their postponement was requested, because one of the inventors, who wished to accompany the professional representative, could not be present due to serious illness that required medical intervention. This was proven by a medical certificate dated 28 July 2017 and filed during the oral proceedings. The applicant submitted that the request for postponement could not have been made before because the need for medical intervention had been sudden and the representative had been informed of it only the evening before the oral proceedings. The Board denied the request, as it was not made as soon as possible, and because the party was duly represented. 

Summary of Facts and Submissions

I. The applicants have appealed the Examining Division's decision, dispatched on 7 August 2012, to refuse European patent application No. 05 764 574.9.

II. The Examining Division held that claim 1 of the main request did not comply with Articles 84 and 83 EPC, because its subject-matter was neither clear nor sufficiently disclosed. More particularly, the defined "sample size" and its determination according to the claim were objected to. Claim 1 of the auxiliary request contained subject-matter extending beyond the content of the application as originally filed, in contravention of Article 123(2) EPC.

III. Notice of appeal was received on 1 October 2012. The appeal fee was paid on the same day. The statement setting out the grounds of appeal was received on 7 December 2012.

IV. The Board summoned the appellant to oral proceedings. In the communication accompanying the summons the Board set out its preliminary opinion. It raised objections of lack of clarity of the subject-matter of claim 1 of the main request and auxiliary request 2, in particular in relation to steps concerning the determination of a "sample size and calculated relative error", and lack of inventive step of the subject-matter of claim 1 of auxiliary request 1 as then pending.

V. Oral proceedings took place on 1 August 2017.

[...]

At the opening of the oral proceedings the appellant requested their postponement, due to serious illness of one of the inventors who wished to attend.

VI. Claim 1 as originally filed, which corresponds to claim 1 of the main request on which the impugned decision is based, reads as follows:

[...]

VII. The appellant's arguments may be summarised as follows:

Request for postponement of the oral proceedings

At the opening of the oral proceedings their postponement was requested, because one of the inventors, who wished to accompany the professional representative, could not be present due to serious illness that required medical intervention. This was proven by a medical certificate dated 28 July 2017 and filed during the oral proceedings. The request for postponement could not have been made before because the need for medical intervention had been sudden and the representative had been informed of it only the evening before the oral proceedings.

[...]

Reasons for the Decision

1. The appeal is admissible.

2. The invention

[...]

3. Request for postponement of the oral proceedings

At the opening of the oral proceedings the appellant requested their postponement, due to serious illness of one of the inventors who wished to attend.

Under Article 15(2) RPBA, "A change of date for oral proceedings may exceptionally be allowed in the Board's discretion following receipt of a written and reasoned request made as far in advance of the appointed date as possible." The notice of the Vice-President of Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning oral proceedings before the boards of appeal of the EPO (Official Journal EPO 2007, Special edition No. 3, 115) explains in more detail how it can be expected that this discretion is exercised. In particular, for a request of a change of date to be allowed the party should advance serious reasons. The request should be filed "as soon as possible after the grounds preventing the party concerned from attending the oral proceedings have arisen". Examples of serious reasons are given under point 2.1 of that notice.

The aim of the above provisions is to fulfil the need for procedural economy while ensuring that the party can be duly represented during the oral proceedings.

The Board notes that the appellant was duly represented by the professional representative of its choice. Article 133(2) EPC specifically requires such a representation for persons not having their residence or principal place of business in a contracting state to the EPC, who must act through the representative. The attendance of one of the inventors is not relevant for discussion of formal and substantive points in oral proceedings, unless special issues arise, for example in connection with a particular technical point. In the present case, the representative did not put forward any such special issues and the Board cannot see any either. In this context, it is stressed that the above-mentioned notice expressly refers to grounds preventing the party concerned, i.e. its appointed representative - not other accompanying persons - from attending.

The Board further notes that although the medical certificate attesting the illness is dated 28 July 2017, the request was only filed four days later, at the last possible point in time, i.e. during the oral proceedings themselves. No reasons were provided why the representative was only informed in the evening of the day before the oral proceedings that the inventor was unable to attend. Hence, it has to be concluded that the request for postponement was not made "as far in advance of the appointed date as possible" within the meaning of Article 15(2) RPBA.

In view of these circumstances, the Board concludes that the need for procedural economy and legal certainty for the public outweighs the present personal wish of one of the inventors to attend, and exercises its discretion not to allow the postponement.

4. Admissibility of the main request

The main request was only filed during the oral proceedings. This constitutes an amendment to the appellant's case, the admission of which is at the Board's discretion under Article 13(1) and (3) RPBA.

According to Article 13(1) RPBA, "the discretion shall be exercised in view, inter alia, of the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy". Moreover, under Article 13(3) RPBA, "Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board [...] cannot reasonably be expected to deal with without adjournment of the oral proceedings." Another important criterion for assessing the admissibility of amendments to a party's case, according to the established jurisprudence of the boards of appeal, is their prima-facie relevance.

The Board notes that the main request was filed at the last possible point in time, without any objective reason for doing so. The outstanding objections to the requests already on file were known by the appellant from the impugned decision and the Board's communication accompanying the summons to oral proceedings. The appellant's argument that an important aspect of the invention had only come to light in a recent discussion with one of the inventors cannot be accepted, as it depends on merely subjective circumstances under the appellant's control.

It is further noted that, compared with the requests already on file, the main request comprises several substantial amendments, including a change in claim category from a process to a device. Hence, the examination of its subject-matter, especially in view of the requirements of Article 123(2) EPC concerning added subject-matter, would entail a relatively high degree of complexity, possibly requiring an adjournment of the oral proceedings.

Lastly, the amendments are not prima facie relevant, since the steps concerning the determination of a "sample size and calculated relative error", still present in claim 1 of the main request and objected to in the communication accompanying the summons to oral proceedings, remain unclear. The appellant's argument that it was clear that those steps were performed by the claimed microscope is not convincing, since the claim, in one alternative designated "personalized sample", specifically contemplates that "an ideal sampling of said eye corresponding to said corneal endothelial cell analyzed samples is defined by the user".

For these reasons the Board does not admit the main request into the proceedings under Article 13(1) and (3) RPBA.

5. Clarity and sufficiency of disclosure of auxiliary request 2

[..]

As regards the appellant's argument that it was surprising that the application had been refused by the EPO but not in China, Japan and the US, the Board notes that it has to decide on the basis of the provisions of the EPC, which may differ from those of other texts. Decisions of other patent offices, possibly taken on the basis of different claim versions, are in any case not binding on the Board.

In summary, auxiliary request 2 is not allowable.

6. Inventive step of auxiliary request 1

[...]

Since, as explained above, the other features of the claim do not contribute to inventiveness, the subject-matter of claim 1 of auxiliary request 1 cannot be allowed for lack of inventive step (Article 56 EPC).

The appellant argued that displaying the defined graphics, possibly on a single screen, was a technical feature, because it enhanced the conveying of information to the user. It suffices to note that the expression "convey of information" can only be considered a synonym for "presentation of information", which, as explained, provides no technical character.

Lastly, as explained in point 5 above, whether auxiliary request 1 was allowed in the US has no bearing on the present decision.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 231/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T023113.20170801. The file wrapper can be found here. Photo "Wandering around post-postponement." by Nick Quaranto obtained via Flickr under CC BY-SA 2.0 license (no changes made).

7 comments :

  1. As the attorney who trained me once said: "at the EPO, they hate patents". One might also say "at the EPO, they hate applicants".

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  2. No doubt, this is a landmark decision.

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  3. The problem is that the application is a computer-implemented invention and this is still a problem for some EPO Examiners. To me, the word "software" in claim 1 doomed the application from an EPO prospective.

    To me the key passage of the decision is:

    "As regards the appellant's argument that it was surprising that the application had been refused by the EPO but not in China, Japan and the US, the Board notes that it has to decide on the basis of the provisions of the EPC, which may differ from those of other texts. Decisions of other patent offices, possibly taken on the basis of different claim versions, are in any case not binding on the Board"

    If three important PTO, all member of PPH pilot program, granted a patent peraphs EPO should consider that the application is worth of a patent?

    I hope that EPO be le strict and institutionally navel-gazing toward computer-implemented invention, as this is an important business.

    Trust_me

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  4. The interesting thing is that I disagree with the viewpoints above. In my view, the decision is surely disadvantageous for the appellant, but I think that from a legal viewpoint, there is nothing to complain.

    In fact, it may well be that other legal provisions (e.g. US-, CN- or JP-patent law) allow granting of a patent, even if the only technical difference to the prior art is a (simple) display of information. The EPC does not. Thus, I think that the BoA may not be blamed for following the EPC because this is their job. Thus, nothing to complain from my point of view.

    The same applies to the decision not to postpone Oral Proceedings. It is obviously correct that the inventor is strictly speaking no party to the proceedings. Thus, its absence is only relevant under special circumstances. The appellant has not put forward any and - additionally - has requested the postponement at a very late stage of the proceedings. Under these circumstances, it is understandable that procedural economy and legal security for the public prevail.

    I cannot see why this decision should be a landmark decision either. The notion that if the only technical difference over the prior art is a (simple) presentation of information, the subject-matter is not patentable, is evidently not very new (see e.g. T641/00, 6. and T1543/06, 2.).

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  5. Last anonymous: I fully agree, there is nothing surprising about this decision.

    Well, except one thing: 29 July 2017 was a Friday. It is quite likely that the applicants office was not aware of the medical problems of the inventor before monday 31 July, and that this message only reached the representative late on 31 July. The representative was probably travelling to Munich in 31 July. I see nothing wrong with the moment of notification of the illness,

    Not that it makes a difference of course, but still....

    I wonder what would have happened if the applicant had withdrawn the authorisation on the morning of 1 Aug. No represensentation anymore, no possibility to send somebody else. Postponement would appear inevitable.

    ReplyDelete
    Replies
    1. Maybe you are right. However, the BoA do not seem to like such a late withdrawal by the applicant. See e.g. CL BoA, C.IV.6.2.2 a):

      A party requesting oral proceedings is not obliged to be represented at them. Its duly announced absence could not be considered as improper behaviour (T 1071/06).

      However, the boards consider it highly undesirable for summoned parties to announce too late, unclearly or not at all that they will not be attending. Such conduct is inconsistent both with the responsible exercise of rights and with the basic rules of courtesy (see for example T 434/95, T 65/05).

      In my view, a withdrawal of representation at such a late stage equals a late announcement of the party (applicant) that it will not be attending (because representation is a prerequisite for attendence).

      In view of the above, it seems to be unlikely to me that this procedural maneuver will effectuate a postponement of the oral proceedings...

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  6. The decision is not a landmark decision.

    The refusal of the postponement corresponds to established practice and case law.

    The same applies to the decision as to the substance. The reason for refusal has only to do with presentation of information, albeit this being carried out through a CII.

    In T 1094/07 the representative tried to obtain postponement of the OP in that he resigned his mandate 24 hours before the OP. The BA held that oral hearing could be torpedoed by resignation of the representative "in the eleventh hour". It was thus correct to of the ED to hold the OP in the absence of the representative.

    In T 861/12, the representative of choice of the opponent could not attend. The Board considered that one of the other 5 appointed representatives could replace the absent one, and refused postponement. The fact that the opponent then withdrew the power of attorney for the 5 remaining representatives did not help either.

    Any procedural manoeuvre where the representative resigns its mandate, or where the party withdraws a power of attorney shortly before OP, will thus not lead to postponement of the OP.

    EPO, especially the BA, thus neither hates patents or the applicants, it simply does not like to be taken for a ride.

    ReplyDelete

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