G 4/19 "Double patenting" - Press Communiqué

A Press Communiqué of 22 June 2021 on decision G 4/19 of the Enlarged Board of Appeal was issued yesterday. The Enlarged Board held that a European patent application can be refused by reason of the prohibition on double patenting. The Press Communiqué is cited below in full (emphasis added); it gives the main conclusion and argument - reference is made to the full decision for the full reasoning and the scope of the prohibition. The full decision is not yet available on the case law web pages, but it is available as pdf in the register (pdf). 

D 11/19 - Pilot project EQE 2019 on a computer: legality & equal treatment challenged in appeal

In this EQE appeal against a decision awarding 41 marks for paper B 2019, "requests were made to revoke the decision and to have to quantify the extent to which the advantage of the participants in the "pilot project" of the EQE 2019 was reflected in a better result, and based on this knowledge, in particular to reevaluate task B of the complainant, so that the complainant's entire 2019 EQE is deemed to have been passed". "As an alternative, it is requested to revoke the decision and to arrange for the examination committee to quantify the extent to which the advantage of the participants in the "pilot project" of the EQE 2019 was reflected in a better result, and based on this knowledge, in particular, task B of the complainant is reassigned rate so that the complainant's entire 2019 EQE is deemed to have been passed". Various further requests were filed. The Disciplinary Board summarized this part of the complaint as "The complainant [finally] complains about a violation of the principle of equal treatment and an impairment of the impartiality of the examiners in connection with the implementation of the pilot test on the occasion of the European qualifying examination 2019, in which 15 selected applicants were allowed to write the work on task B with the help of a computer. He specifically asserts practical simplifications in the preparation of the work using a computer, which resulted in a considerable time advantage and better examination conditions. In view of the small number of 15 participants, anonymity and impartiality in the correction were not guaranteed. Overall, the regular applicants in the European qualifying examination 2019 were clearly at a disadvantage,"

BREAKING NEWS: G 1/21 - Exclusion and objection of the chairman of the Enlarged Board, but not of other members

Interesting developments in G 1/21! On the same day as on which the President of the EPO further extended the pilot project for oral proceedings by videoconference before opposition divisions, as set out in the decision of the President of the European Patent Office dated 10 November 2020 concerning the modification and extension of the pilot project for oral proceedings by videoconference before opposition divisions (OJ EPO 2020, A121), to run until 31 January 2022 (see here), was a decision published online with respect to exclusion and objection of the chairman and other members of the Enlarged Board in case G 1/21 (decision dated 17 May 2021). Curious to what was decided and why: see below!
Update 28.05.2021: on 24.05.2021, the opponent's representative filed a response to the Communication with the decision, raising further reasoned objections and requests; the oral proceedings on 28.05.2021 started with a non-public discussion of those issues - see at the bottom of the page. The objections were rejected, but the oral proceedings to the merits of the case were further postponed, as the submissions from the President were only notified to the appellant two days before the oral proceedings.
Update 02.06.2021: oral proceedings are to be held on 2 July 2021 by videoconference.)

T 1294/16 - A matter of principle

A few interesting topics in this decision of the Board of Appeal, wherein an appeal was filed against the decision of the Examining Division to refuse the application.

1. If there is a prior art document D2 that has the same purpose or objective as the claimed invention, is it then possible that another document D1 that has a different purpose is chosen as the closest prior art for assessing inventive step?
   
2. Is it a substantial procedural violation if the decision of the Examining Division is based on D1 as closest prior art, when  - allegedly -  in the oral proceedings before the Examining Division, only D2 was considered as the closest prior art? Is it "implicit" that both D1 and D2  had been considered as closest prior art, and is this "implicit discussion" sufficient to satisfy the appellant's right to be heard? 
   
3. Can a difference (relative) to D1 in the mathematical formula claimed be an argument for inventive step?
4. In view of RPBA 2020 Article 13(1) and (2), may the Board still admit requests that were filed after notification of the summons to oral proceedings, and during oral proceedings?

T 2255/15 - Can the Board of Appeal disregard third party observations that were only filed during the appeal proceedings?

In the present case, the appeals lodged by the opponent and the patent proprietor lie from the interlocutory decision of the opposition division that the European patent No 1 369 037 in amended form. Third party observations were submitted in an early stage of the appeal proceedings, as well as in later stages, objecting to novelty and to inventive step w.r.t. newly field documents (existing grounds, but new facts, arguments and evidence). The patent proprietor requested that the third-party observations, with all the documents and annexes referred to in the observations, not be admitted into the proceedings as they were late-filed. However, the RPBA seems to only impose constraints on late-file submissions by parties, as does Art. 114(2) EPC, and not by third parties. How did the Board handle these third party observations: were they admitted and, if so, to what extent?

T 488/18 - Withdrawn request for Oral Proceedings need not be made by orignal party for reimbursement

Who exactly should ask for the refund?

During this opposition an insolvency was started for the assests of the opponent. A preliminary insolvency administrator was appointed, who then became a party to the proceedings in opposition by way of a statutory change of party and took the place of the former opponent and respondent. An attempt was made to interrupt the proceedings under Rule 142(1)(b) EPC  or under Rule 84(2), first sentence, EPC but these were rejected. 

When the only request for oral proceedings was withdrawn from the now opponent, the question presented whether this suffices for a 25%  reimbursed of the appeal fee under Rule 103(4)(c) EPC. In a another Board decision (T 777/15), this was denied. The board provides a deep analysis for this point, and comes to the different conclusion that a reimbursement is possible. The following head note was provided:

There may also be a possibility of repayment of the appeal fee under Rule 103(4)(c) EPC if a request for oral proceedings has not been withdrawn by the appellant but by another party to the proceedings who has not filed an appeal (see points 8.3 - 8.9 of the grounds for the decision). (English MT translation by Deepl.)

Eine Rückzahlungsmöglichkeit der Beschwerdegebühr gemäß Regel 103 (4) c) EPÜ kann es auch dann geben, wenn ein Antrag auf mündliche Verhandlung nicht vom Beschwerdeführer zurückgenommen wurde, sondern von einem anderen Verfahrensbeteiligten, der keine Beschwerde eingelegt hat (siehe Nrn. 8.3 - 8.9 der Entscheidungsgründe).

T 2393/17 - mere assertion of lack of information not enough for insufficiency

Claim 1 for a dishwasher in this opposition appeal comprises the feature that 

either said bottom wall (14) or said cover (12) incorporating a first and a second half-conduit (28, 30) tapering at respective ends facing each other, so that they form an air gap device, 

The opponent objected that the patent does not sufficiently disclose such incorporated half-conduits. The boards does not agree, and finds that it is not enough to state insufficiency but that one has to address why this particular feature would not be possible for the skilled person to produce.