Tuesday, 31 January 2017

T 648/15 - Can't appeal and bound by reformatio in peius; No way out?

Can't appeal and bound by reformatio in peius; No way out? 

Only the opponent filed an appeal against the decision of the opposition division to maintain a patent in amended form. The main request of the proprietor was granted, so that he couldn't appeal. 
During the proceedings, the board of appeal finds a clarity problem in the amendments allowed in first instance. The proprietor invokes the exceptions to the prohibition of  reformatio in peius of G1/99 to defend the admissibility of his auxiliary requests. This is interesting since G1/99 only refers to Article 123, not to  Article 84. The board still allows it. 

Friday, 27 January 2017

T 1379/11: combinations of tecnical and non-technical features


In this appeal against a decision of the Examining Division the claims have a combination of technical and non-technical features and this plays an important role in the inventive step reasoning of the Board. The question is whether the applicant has really added something technical or that the claimed method is an obvious implementation of business requirements in a know technical system. In this case there are also some interesting paragraphs about the selection of the closest prior art - the Board writes "The Examining Division made an attempt to apply both criteria... but failed to do so in a convincing manner.".

Wednesday, 25 January 2017

T 1205/13 - A request that was not decided upon


In the summons to oral proceedings before the Examining Division, the Examining Division objected under Art.56 EPC (inventive step). The applicant then replaced those claims with two new sets, which were refused because of deficiencies under Art.123(2) and 84 (extension of subject-matter and clarity) caused by the amendments. In appeal, the applicant filed the original claims as main request. What did the Board do? No decision was taken in first instance about this claim set, as the applicant replaced them before a decision could be taken - the applicant was adversely affected by the refusal, but the refusal related to the replaced claim. Also, the refusal was based on Art. 123(2) and 84, and not on Art. 56 that the Examining Division held against these claims in its preliminary opinion.

Friday, 20 January 2017

T 1148/12 - Does the figure show parallel electrodes?


Figure 9 shown above shows a garment with chest lead electrodes. According to the applicant the electrodes are arranged substantially parallel from each other and arranged in row. His main claim was amended by adding the restrictions 'parallel' and 'in row'. Can you get support from this amendment by looking at this and similar figures?

Tuesday, 17 January 2017

T 820/14 - Not wrong but not right either


During the search in the international phase of this application, the searcher raised a non-unity objection; identifying fourteen different groups of inventions among the application's 23 claims. To support the non-unity, it is explained that the claims have different technical objects with reference to the ISO/IEC Standard 15408. 
The applicant does not agree and does not pay additional search fees. Finally, a second auxiliary request filed during oral proceedings is not admitted by the Examining division, under R. 137(3) EPC.  The Examining division supports the decision not to allow the second auxiliary request into the proceedings by no less than 5 grounds--some of which are related to the lack of unity problems. 
The board considers that some of these five grounds are wrong, but also concludes that some are correctly within the discretion of the first division. The board acknowledges that in a case like this, G 7/93 seems to say that the board should not put its own views in the place of the first instance's. However, it concludes that in this case it should still do so. (Decision is in German).

Friday, 13 January 2017

T 2502/13 - Positive feature allowed as Art. 54(3) disclaimer?


In the opposition appeal to which this decision pertains (which has been suggested by a reader), the proprietor appealed against the decision of the Opposition Division to revoke the patent on the basis of all requests extending beyond the content of the application as filed (Article 123(2) EPC).

Of interest is the first auxiliary request of the appellant, by which the claim of the main request is further limited by: "further wherein the third ply of interlayer material comprises a plasticizer".

The appellant argues that the subject-matter of claim 1 of the first auxiliary request amounted to a disclaimer allowable in view of A8, which was prior art according to Article 54(3) EPC.

Monday, 9 January 2017

T 2561/11: Information is not explicitly mentioned, but implicitly present

"Invisible Ink"

In this opposition appeal, according to appellant 2 (proprietor), there were quite a lot of things erroneous with the notice of appeal of appellant 1 (opponent), such as: no name of the appellant mentioned, no correct indication of the decision impugned, and it should lack a clear request defining the subject of the appeal. The Board examined this and tried, for example, to understand who the appellant 1 was although this was not explicitly mentioned in the received notice of opposition. The Board also discussed Rule 99(1)(c) EPC comprehensively and concluded, also based on other case law, that a lacking definition of the subject of appeal must be understood as "request that the decision be set aside in its entirety".

Tuesday, 3 January 2017

T 488/13 - A printing error

This printing error increases value
Due to a printing error, a value in the claims differed between the printed patent and the Druckexamplar. During oral proceedings, the proprietor corrected a value in a request to the value in the Druckexamplar. Earlier, the proprietor had also filed requests in which unclear claims were cancelled. The opponents objected to both amendments on the basis of them being late filed, but the board rejects the objections. 

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