G 1/18 - Appeal deemed not to be filed or inadmissible in case of delayed fee payment?

The (former) President of the EPO has referred a point of law concerning the interpretation of Article 108 EPC to the Enlarged Board of Appeal: Lorsque la formation d'un recours et/ou la taxe de paiement ont lieu après l'expiration du délai de deux mois prévu à l'article 108 CBE, le recours est-il irrecevable ou réputé non formé, et la taxe de recours doit-elle être remboursée ? (Provisional translation of the question into English (source): If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?Provisional translation of the question into German (source): Wenn erst nach Ablauf der in Artikel 108 EPÜ vorgesehenen Frist von zwei Monaten Beschwerde eingelegt und/oder die Beschwerdegebühr entrichtet wird, ist die Beschwerde dann unzulässig oder gilt sie als nicht eingelegt, und muss die Beschwerdegebühr zurückgezahlt werden?). The question concerns the same issue as earlier referrals G 1/14 and G 2/14, which did however not lead to an answer due to the referral being considered inadmissible or because the underlying case ceased to be in existence. 
T 1325/15, issued shortly after G 1/14 and G 2/14 proceedings were ended, could have been seen by some to answer the question, but at least one other Board did not follow it - a final decision/opinion by the EBA will settle the issue. Note that T 1325/15 wrote in r.35. "Both referral decisions concentrated on the meaning of Art.108, second sentence, which reads "Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid". In numerous decisions the BoAs had interpreted this provision as meaning that an appeal did not come into existence, i.e. the notice of appeal was deemed not to have been filed, if the appeal fee was not paid within the two-month time limit of Art. 108, first sentence. In a smaller number of deviating decisions, the boards of appeal dismissed the appeal as inadmissible where the notice of appeal was filed and the appeal fee paid after expiry of the time limit." Also, in r.41. "Art.108, first sentence, requires that notice of appeal be filed within two months of notification of the decision. If no notice of appeal is filed, then no appeal comes into existence. Although the position that R.101(1) means that a late-filed notice of appeal brings into existence an inadmissible appeal may be not unreasonable, in view of the general rule that no distinction is to be made between the late filing and the non-filing of a document, the Board considers that no appeal exists where a notice of appeal was not (deemed to be) filed in due time." and "r.42. The Board notes that its approach, although it has not always consistently been applied in the jurisprudence of the boards of appeal, is also in line with the reasoning in earlier decisions which have argued that an appeal is deemed not to have been filed where the appeal fee was paid in time but the notice of appeal was filed only after expiry of the two-month period of Art.108(1) (see in particular decisions J 19/90, r.1.2.2 and 4; T 445/98, r.1.2, 5, 6 and 7; and T 778/00, section V of the facts and submissions and point 6 of the reasons)." 
It may also be worthwhile to consider the observation made in T 2017/12, r.3.1.1 (the decision that led to the referral G 2/14):“The leading decision is J 21/80. In this case the appeal fee had been paid late. The board held that, "En raison de l'inexistence d'un recours valable, le montant de la taxe de recours payée tardivement doit être restitué.' There is no further reasoning. The order, originally in French, contains the following statement: 'Le recours contre la décision de la Section de dépôt du 12 mai 1980 est considéré comme non formé." The English translation of this, "The appeal against the Decision ... is inadmissible", is incorrect, whereas the German translation is accurate: "Die Beschwerde ... gilt als nicht eingelegt."” 

J 4/17 - No resumption of proceedings after stay of 7 years

After the EPO send out an intention to grant in the patent application, entitlement proceedings against the patent were started before the District Court of The Hague (Article 61 proceedings). As a result the application was stayed at the EPO, starting at 28 March 2011. Proceedings are still pending and oral proceedings in the court  case are scheduled for September 2018.  

During the stay the applicant and a further party repeatedly asked for resumption of the grant proceedings under Rule 14(3). Resumption was granted by the legal division, which appeal is the subject of this case.

The board concluded that the legal division correctly exercised its discretionary powers to lift the stay. However, starting at reasons 5 there is a twist in the tale to the benefit of the appellants. 

This decision is one of a series of identical decisions taken in the parent application and its divisionals.  The board provided the following catch words:

Rule 14(3) EPC is silent on the reasons for setting a date for resumption of the proceedings for grant. It is thus to be concluded that the legislator let it to practice and jurisprudence to define the circumstances that justify setting a date for resumption on a discretionary basis.

Resumption of the proceedings is not limited to cases involving misuse or delaying tactics. The possibility that the EPO sets a date for resumption upon staying the proceedings for grant hints towards a broader construction.

However an applicant cannot justify its request for resumption based on the length of the entitlement proceedings where this duration has been significantly caused by the applicant's procedural conduct.

T 2145/13 - 2nd medical use (too) broadly claimed?

In this opposition appeal, the Opposition Division (OD) previously upheld the patent in amended form. Claim 1 as upheld by the OD reads as follows (this claim also being maintained by the patent proprietor as part of the main request during the subsequent appeal proceedings):

"1. An anti-NGF antibody for use in the treatment of post-surgical pain".

Several prior art documents, which were already introduced during the opposition proceedings, described the use of anti-NGF antibodies for use in the treatment of neuropathic pain.

The appeal proceedings focuses on the claim construction of the term "post-surgical pain" and whether this term has been interpreted too narrowly by the OD by considering it to exclude neuropathic pain. In other words, is the use of an anti-NGF antibody for the treatment of post-surgical pain indeed novel in view of its known use for the treatment of neuropathic pain?

Of further interest is that during the oral proceedings, the proprietor withdrew all pending auxiliary requests and filed a new first auxiliary request:

"1. An anti-NGF antibody for use in the treatment of post-surgical pain, wherein the anti-NGF antibody is for use in suppressing or ameliorating resting pain."

To briefly summarize the proceedings: the BoA considers the normal meaning of the term "post-surgical pain" to include any pain after surgery, including neuropathic pain (after surgery). The proprietor however argues that the term has a more limited meaning in the relevant art and submits, inter alia, an expert opinion. However, the appellant (naturally) disagrees and provides a counter expert opinion. The BoA then considers the patent's description and finds that its definition does not exclude neuropathic pain caused by surgery. The main request is thus considered to lack novelty. The auxiliary request is not admitted into the proceedings as this possible construction of the phrase "post-surgical pain" was deemed to be foreseeable by the respondent (proprietor).

J 0010/17 - No restoration of the right of priority

Should a European representative take a Communication from the Receiving Section regarding a "missing" request for restoration of priority during the international phase at face value, or should he have realized that - in any case - the restoration of the right of priority based on the criterion of unintentionality has no effect before the EPO as designated/elected Office - and have responded accordingly?

This appeal concerns a decision of the Receiving Section rejecting the request to reverse the finding that a European patent application does not enjoy a right of priority with respect to the claimed priority. This application ad been filed as an international application under the PCT with the USPTO as receiving Office (rO). As the international application was not filed within the priority period, the applicant submitted a request for restoration of the right of priority with the rO. The rO decided to restore the right of priority based on the finding that the failure to file the international application within the priority period had been "unintentional".

After entry of the application into the European phase, the Receiving Section of the EPO issued a reminder communication stating (by ticking of corresponding boxes) that "a request for restoration of the right of priority pursuant to Rule 49ter.2 PCT is necessary for the following reasons: No request for restoration of the right of priority has been filed pursuant to Rule 26bis.3 PCT during the international phase". A time limit was set by the Receiving Section.

By return letter, the applicant's representative stated that "the request for restoration of the priority right was already filed in the international phase ... and duly granted by the Receiving Office". The Applicant requested confirmation of the priority right being in force.

The EPO then issued a notification of loss of rights under Rule 112(1) EPC stating that the "decision by the receiving Office to restore the right of priority based on the criterion of unintentionality has no effect in proceedings before the EPO (R. 49ter.1(b) PCT) and no valid request under Rule 49ter.2 PCT has been filed". In an accompanying letter, the Receiving Section took the view that, even though the incorrect box had been crossed in the reminder communication, the intention of reminding the applicant had been expressed.

It was pointed out that this reminder communication had also stated that the decision of the receiving Office to restore the right of priority based on the criterion of unintentionality has no effect in proceedings before the EPO. The item had not been crossed but the professional representative should have been aware of this position of the EPO.

The applicant requested a decision from the Receiving Section and appealed this decision. In the statement setting out the grounds of appeal, the appellant referred to the incorrect information given in the reminder communication and argued that the principle of legitimate expectations should apply in the present circumstances. The appellant requested that the decision under appeal be set aside and asked "to receive a new, corrected invitation for filing a request for restoration of the right of priority including a new time limit".

The Board found that the mistaken information in the EPO communication (that no request for restoration of the right of priority had been filed in the international phase) had no bearing on the conduct of the European representative as to whether a request should have been filed in the European phase in the absence of proof of the alleged instruction. In the absence of such an established link between the erroneous information and the loss of the priority right, the principle of legitimate expectations cannot apply. Accordingly, the finding of the Receiving Section that the application does not enjoy a right of priority was found justified.

T 1029/14 Keep Out! Fresh ground of opposition?

Like the decision discussed in the previous blog, the Board in this opposition appeal case refused to admit, due to lateness of the submission, an inventive step attack based on a single document (D1), which had been used in opposition to substantiate lack of novelty only. The ground of inventiveness was mentioned in the Notice of opposition, but not substantiated. The Board's refusal under Art 13(3) RPBA was unsurprising, given that the arguments for lack of inventiveness were presented for the first time only 2 working days before oral proceedings were held, and the patent proprietor would have needed an adjournment to prepare its response.

The Board went further, however, and also considered whether this inventive step attack constituted a fresh ground of opposition that could be admitted into proceedings only with the permission of the patent proprietor. The appellant argued that the new attack was admissible, for the reasons allowed in T 0131/01.

The Board took the view that the facts in this case were different, because the appellant had made no suggestion in opposition proceedings that the claimed subject-matter would be obvious when starting from D1, should it be found to be novel. The reasoning of T 448/03 was followed, and the Board concluded that an objection concerning inventive step is to be considered a fresh ground, if it is raised for the very first time in the appeal proceedings, irrespective of the fact that the document used as the starting point for the inventive step objection was the same document as used before to attack novelty.

T 181/17 - Inventive step attack with document used for novelty attacks as closest prior art

The introduction of new grounds during opposition and opposition appeal proceedings may be difficult, but also the introduction of new lines of reasoning in support of raised grounds of opposition. A raised ground of lack of inventive step may allow assessment of novelty in view of  the closest prior art - G 7/91 and Guidelines (2017) D-III, 5. Also, in a case where a patent has been opposed under Article 100(a) EPC on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated, a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty; in such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee - T 131/01. One would expect that introducing a new line of attack for an existing ground to be less difficult, e.g. when introducing a new inventive step attack using a document used for novelty as closest porior art. However, in the case below, the inventive step attack based on D17 -not admitted in first instance proceedings, but filed with and admitted into the appeal and used for several novelty attacks- as the closest prior art was not admitted into the proceedings in accordance with Article 13(1) Rules of Procedure of the Boards of Appeal (which provides that any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion, where the discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.)

R 0003/17 - Another unsuccessful petition

This petition for review was filed against a decision of the BoA based on two main objections of the petitioner/patent proprietor:

(a) the Opposition Division did not allow for a fair debate during opposition proceedings, and did not give reasons in its decision of revoking the patent, on the admissibility of a disclaimer in claim 1, thus depriving the applicant/patent proprietor of the possibility of having this point re-examined in second instance proceedings. The BoA  further violated Rule 104(b), EPC  because it failed, upon request of rectification of the petitioner, to report such objection in the minutes of the oral appeal proceedings.

(b)   the BoA violated Art. 20(1) and Art. 21, RPBA and consequently Art. 113(1), EPC because the BoA appeared to deviate from the interpretation of Art. 123(2), EPC given by the Enlarged Board in G2/10.

The petition is rejected as clearly not well founded. 

Regarding (a): the patent proprietor had requested together with rectification of the minutes,  reimbursement of the appeal fee for the reasons given in (a) contested to the Opposition Division (see also point 2.1 of the present decision). However, the Enlarged Board is of the opinion that these requests were clearly abandoned by the respondent and thus there could not be any breach of Rule 104(b), EPC.

Regarding (b): the Enlarged Board simply states that an erroneous application of a rule of the RPBA is not per se ground for petition of review unless this brings to a substantial procedural defect under Art. 112a, EPC which appears not to be the case here.