T 1503/12 - On technical and non-technical features, technical considerations, business methods and THE problem-solution approach

In this appeal against the examining division's decision to refuse a European patent application for lack of inventive step (Article 56 EPC), the appellant submitted that "there was a divergence in how computer-implemented inventions were examined at the EPO. If the application happened to be classified as a business method, the EPO would use the Comvik approach and dismiss features of the invention as non-technical. If, on the other hand, the application was classified in the field of telecommunications, it would be assessed using the "normal" problem-solution approach, and, irrespective of the underlying aim, features relating to data transmission would be treated as a technical telecommunications protocol. Applicants wanted consistency and certainty, especially in the field of computer-implemented inventions, which had become increasingly important." Applicants submitted that "The correct approach, in all fields, was the problem-solution approach." The appellants tried to argue that the claimed invention had a number of technical effects, which provided a basis for inventive step. The Board agreed that the correct approach, in all fields, was the problem-solution approach, but the Board did not agree that there is such divergence: "Comvik is rather a special application of the problem-solution approach to inventions that contain a mix of technical and non-technical features". The Board then applied the problem-solution approach, using Comvik, and concluded that the claimed invention was not inventive. 

T 2380/16 - the meaning of may

Independent claim 1 of the main request begins as follows:

A press fabric for a pulp machine having a multilayer structure obtained by weaving warps, each of which is selected from a group consisting of a monofilament, a monofilament twisted yarn, and a twisted yarn having a monofilament as a core with, as wefts, (...). 

The underlined part being added compared to claim 1 as filed. The opposition division found this addition to be added subject matter, since this formulation also covers a mixture of different types of monofilaments, yet the application only appears to give examples where a single type is used.

The board did not agree.

T 0703/19 - Legitimate expectation remedies missing appeal fee

In this case, the appellant failed to pay the appeal fee within the 2-month time limit of Art. 108. It would appear that the intention had been to pay when the notice was submitted using online filing, but the correct payment method (via deposit account) was not entered; payment method "not specified"  had been selected. Fortunately, the written notice (attached in pdf format) contained a statement that the appeal fee was "herby paid via online fee payment" and the notice was filed well in advance of the 2-month time limit.

The appellant was not notified of any defect in the notice of appeal, but received a loss-of-rights communication, whereupon the appeal fee was immediately paid along with a request that the fee be considered paid in time. The appellant also filed a request for re-establishment of rights. The appellant's arguments were based on G 2/97and the protection of legitimate expectations.

The statement in the notice of appeal could not, of course, constitute a debit order submitted by electronic means and, as remarked in G 2/97, users of the EPO have a duty to do everything in their power to prevent a loss of rights. This decision also sets out that a Board of Appeal is under no obligation to notify an appellant of a missing appeal fee if there is no indication in any of the filed documents from which the EPO could infer that the appellant would, without such notification, inadvertently miss the time limit. 

It was therefore considered whether the documents submitted in this case contained a clearly identifiable deficiency in this respect. The Board noted that it must be expected that a notice of appeal is read, meaning that some kind of plausibility check is performed. The statement in the notice regarding online fee payment was a clear indication of intent to perform a procedural act. That this intention did not correspond to the factual act was also clearly recognizable. The Board found the circumstances in this case analogous to those in G 02/07, where the notice of appeal made reference to an enclosed cheque which had not been enclosed. 

The appellant could therefore have expected notification from the EPO that the information on payment method was missing, which would have allowed the fee to be paid on time. The appeal was therefore deemed filed and the Board ordered re-imbursement of the re-establishment fee. 

G 1/18 - late appeal fee or notice: appeal deemed not filed

The Enlarged Board of Appeal issued opinion G 1/18 on 18.07.2019 on the distinction between an appeal deemed not to have been filed and an inadmissible appeal (where the appeal fee was paid late and/or the notice of appeal was filed late, i.e. outside the 2-month time limit of Art. 108 EPC), and on the consequences of this. A news message was posted on the website of the Boards of Appeal on the same day. The complete decision became available online on 31.07.2019, and is at this moment only available in French. We cite the complete news message and some selected parts of the decision below.

J 0015/18 - Verifiable slip-up not "special circumstances" for post-publication rectification of priority claim

This case concerns a Euro-PCT application which claimed priority of a US application P2, which itself was a divisional application of a further US application P1. The PCT application was filed within the 12 month priority period of P1 and some time after entry into the EP phase, the Applicant requested a correction of the priority claim under Rule 139 EPC. This request was refused by the Receiving Section, on the basis that while claiming priority from a non-first application was clearly a mistake that did not reflect the applicant's true intent, the published information relating to the priority claim was not obviously wrong and thus no special circumstances existed that would justify the addition of the omitted priority claim. 

The applicant appealed the decision, arguing that it is wrong to consider that it must be possible for third parties to detect an error in a priority claim based on the published data alone. Any third party affected by the possible grant of the patent would consult a patent professional, who would conclude that the application should have been filed claiming priority from P1. 

When correcting a priority a claim, it is established EPO practice that the interests of the public  should be safeguarded. The Board therefore considered who should be considered as "the public". The applicant seemed to be arguing that the relevant public concerned patent attorneys. The Board disagreed and concluded persons skilled in the art would be the first to consult a PCT publication and that they should be able to rely on the published priority data. The fact that a patent attorney would be able to detect the error by consulting priority document was held to be irrelevant. 

The Board saw no special circumstances for deviating from the established practice that a request to correct a priority claim under Rule 139 must be made sufficiently early for a warning to be included in the publication.

G 2/19 - Breaking: Haar belongs to Munich

We refer to our previous blog post about referral G 2/19 (and this related post). In G 2/19, the following questions were referred to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Today, the following communication was posted on the EPO website:

Haar, 17 July 2019 

Yesterday the Enlarged Board of Appeal announced its decision in case G 2/19 at the conclusion of the oral proceedings. The first referred question was rejected as inadmissible. The second and third referred questions were reformulated and answered as follows: 

1. Ein Dritter im Sinne von Artikel 115 EPÜ, der gegen die Entscheidung über die Erteilung eines europäischen Patents Beschwerde eingelegt hat, hat keinen Anspruch darauf, dass vor einer Beschwerdekammer des Europäischen Patentamtes mündlich über sein Begehren verhandelt wird, zur Beseitigung vermeintlich undeutlicher Patentansprüche (Artikel 84 EPÜ) des europäischen Patents den erneuten Eintritt in das Prüfungsverfahren anzuordnen. Eine solchermaßen eingelegte Beschwerde entfaltet keine aufschiebende Wirkung. 

2. Mündliche Verhandlungen der Beschwerdekammern an deren Standort in Haar verstoßen nicht gegen die Artikel 113 (1) und 116 (1) EPÜ. 

The reasons for the decision will be issued in writing in due course.

It would appear that the Enlarged Board found that Haar belongs to the greater Munich area, thus not contradicting the provisions of the EPC concerning the location of the EPO.

Furthermore, a third party within the meaning of Article 115 EPC, who has filed an appeal against the decision to grant a European patent, has no right to an oral hearing before a Board of Appeal of the European Patent Office on his request to re-examine allegedly unclear patent claims (Article 84 EPC) in the European patent.

Revised Rules of Procedure of the Boards of Appeal in force from 1 January 2020

On 4 July 2019, a communication was posted  the Board of Appeal website indicating that the revised Rules of Procedure were approved by the Administrative Council and will come into force on 1 January 2020.