Friday, 19 February 2021

D 5/19 - Remitting to the Board of Appeal with reasons amounts to a decision on the merits of the appeal

We do not often post appeals against decisions on EQE grades, but in this decision a general principle was addressed: how does the Board of Appeal with a situation wherein a first instance comments with a positive opinion on the allowability of an auxiliary request when remitting the appeal to the Board of Appeal in view of the main request not being allowable?
This appeal was filed against the decision of the Examination Board for the EQE 2019 which held that the answer paper to the ED 2019 had been awarded 43 marks and therefore the grade "FAIL". The appellant requested that decision to award her a "FAIL"  be set aside and that her paper instead be awarded a "PASS" (main request), or, alternatively, a "COMPENSABLE FAIL" (auxiliary request).  The appellant was informed by the Exam Secretariat that her appeal had not been allowed by the Examination Board (no interlocutory revision). This letter also stated: "The Examination Board wishes to add the following comment: After remarking, the Examination Board considers that the main request is not allowable. However, the auxiliary request could be allowable. The candidate could be awarded 46 marks: [...]." The Examination Board thus remitted the appeal to the Appeal Board (Disciplinary Board of Appeal) without rectifying its decision. Thus, the situation arise that interlocutory revision did not take place as that cannot be done in view of an auxiliary request, while the Examination Board did comment on the reasons for remitting and on the merits of the auxiliary request. How did the Appeal Board deal with this situation, also in view of their restricted competence in EQE appeals (in particular, the allegedly incorrect, and insufficient, number of points awarded to the appellant's answers not being open for review by the Appeal Board)?

Wednesday, 17 February 2021

J 10/20 - Even in the absence of a general dislocation in the delivery or transmission of mail, users and representatives can rely on statements on the extension of time limits which are made in a Notice in the OJ EPO.

In the present case,  the Receiving Section issued the decision under appeal on 5 December 2019The appellant filed the notice of appeal on 17 February 2020. On the same day, the appeal fee and the fees for re-establishment of rights were paid. The statement of grounds of appeal was only filed on 2 June 2020. The Board had to assess whether the grounds were filed in time. The Board analyzed and discussed the various Notice from the European Patent Office of spring 2020 concerning the disruptions due to the COVID-19 outbreak and the Notice from the European Patent Office dated 30 March 2020 concerning the extension of periods for the payment of fees. The Board noted that those Notices only refer to '"restrictions on the movement and circulation of persons, as well as on certain services, exchanges and public life in general, which can be qualified as a general dislocation within the meaning of Rule 134(2) EPC" in the Federal Republic of Germany, the State in which the European Patent Office is located.' and notes that 'Rule 134(2) EPC, however, does not refer to a "general dislocation" as such, but to a "general dislocation in the delivery or transmission of mail". The European Patent Office's Notices are silent on whether there was a general dislocation in the delivery or transmission of mail in the Federal Republic of Germany.'. The Board concludes that 'the principle of good faith / protection of legitimate expectations applies: 'Users must not suffer a disadvantage as a result of having relied on erroneous information received from the EPO (G 2/97, point 4.1 of the Reasons). Therefore, even if there was no general dislocation in the delivery or transmission of mail in the Federal Republic of Germany during the relevant period, and even if it were not possible to apply Rule 134(2) EPC by analogy under the given circumstances, users could still rely on the information on the extension of time limits provided in the Notices of the European Patent Office without suffering any disadvantages.'

Monday, 8 February 2021

T 353/18 - no legal primacy of a clean request over the annotated version

Almost identical, but not quite

With its response to the statement of grounds of appeal, the patent proprietor (respondent) filed, inter alia, an auxiliary request 3, in a clean and a mark-ed up version. Unfortunately, unbeknownst to any one, these two versions were not the same. 

At the oral proceedings the differences came to light. The appellant had used the the annotated version, which happened to contain impermissible added subject matter. The respondent declared that the clean version was the valid version, which happened not to contain said added subject matter. In the end, the board assumed an honest mistake and remitted the case.

 The board provided the following catchword:

Discrepancies between the clean and the annotated versions of a request: no provision in the EPC establishing any legal primacy of the clean version over the annotated version; special reasons justifying a remittal (reasons: section 8)

Tuesday, 2 February 2021

T 1370/15 - A board is allowed to introduce common general knowledge without evidence also in inter partes

The use of grids is well known in the art

After his patent was revoked in opposition, the proprietor filed an appeal. The opponent (respondent) did not make any submissions in response to the appeal. The board was not convinced that the appellant's requests were inventive taking the common general knowledge of the person skilled in the art into account. In particular, the common general knowledge should not be restricted to the material presented in the first-instance proceedings or the oral proceedings by the appellant. 

The board provided the following catchword:

Not only in ex parte-, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field. (See Reasons, point 5.3)

(emphasis added)

Wednesday, 27 January 2021

T 0407/15 - Earlier application was assigned, but no proof that priority right was transferred too

In the present case, the validity of priority was important in view of a  disclosure in the priority interval. The priority applications were filed jointly by three persons (the inventors), and identify "The University of Western Ontario" as assignee in a section entitled "Assignee information"The current Euro-PCT application was initially filed as an international PCT application by The University of Western Ontario, and indicates these same three persons as inventors. Despite having been invited to do so by the Board, the appellant failed to provide any evidence that a transfer of the priority right took place and that it was entitled to claim these priority rights. The Board argued that: "Both US applications 61/035 540 and 61/035 777 contain a section entitled "Assignee information", identifying "The University of Western Ontario" as assignee. This is, however, not sufficient to establish that the priority rights derived from either application have also been transferred to the applicant." "This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While the sections of the priority documents referred to above appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings."

Monday, 25 January 2021

T 2305/14 - claim covers not-enabled embodiment

A seismic survey vessel (10) towing an array of streamers (12), each with a a plurality of streamer positioning devices (18) ('birds') 

The fourth request in this opposition comprises the feature:
towing an array of streamers with the seismic survey vessel, each streamer having a plural­ity of streamer positioning devices there along, each of the streamer positioning devices having a wing used to control the vertical and lateral position of the streamer positioning device

In particular, the the streamer positioning devices (the 'birds')  may each have a single wing. The Boards does not consider this option enabled by the description. 


Monday, 18 January 2021

T 978/17 - what is the nationality of a legal person?

When filing an opposition, then following R. 76(2)(a) jo R.41(2)(c), one should include 

(...) the name, address and nationality of the applicant and the State in which his residence or principal place of business is located. 

The three opponents in this case are legal persons and left blank the box in the form stating Nationality. The proprietor considers that for legal persons one should indicate the country under who's law the legal person was established. As this wasn't done the opposition should not be admissible. 

The board does not buy it. The decision is in German; a machine translation of a relevant passage is include below: