Tuesday, 31 March 2020

T 482/16 - Last-minute additional searches during the oral proceedings to make up for the poor search carried out earlier

In the present case, the applicant was confronted with two new documents, D2 and D3, introduced by the Examining Division during the oral proceedings for the first time. The applicant's request for postponement of the oral proceedings in view of this introduction of D2 and D3 was denied. Upon filing amendments trying to take the disclosure of D2 and D3 into account, the applicant was confronted with two further new documents, D4 and D5, also introduced by the Examining Division during the oral proceedings. No time was given to the appellant to consider these new documents. Rather, the appellant's request for postponement was rejected and the application refused. The applicant appealed the refusal. In the appeal, the Board concluded that: "[Therefore,] the appellant was confronted with new objections based on new evidence during the oral proceedings. Although it is possible for an examining division to introduce new evidence even at a late stage of proceedings, in the present case the course of the examination proceedings suggests that the examining division tried to make up for the poor search carried out when the application was filed by performing last-minute additional searches, in an attempt to find documents more relevant than D1 for the claimed subject-matter", as the Board noted that "According to the impugned decision, these new documents had been found by carrying out an additional search on the day of the oral proceedings, just before their start. This means that the introduction of D2 and D3 was not motivated by the new claim requests filed by the appellant to overcome the lack-of-clarity objection raised during the oral proceedings". "The Board concludes that, by rejecting the appellant's request for postponement of the oral proceedings, the examining division did not provide the appellant with the appropriate opportunity to present its comments on the objection of lack of novelty over D3 in the light of D4 and D5. The appellant's right to be heard on the examining division's novelty objection has thus been violated by the examining division's refusal of its request for adjournment of the oral proceedings, contrary to the requirement of Article 113(1) EPC. This amounts to a procedural violation."

Friday, 13 March 2020

R 0001/19 - Your surprise at a Board's decision doesn't necessarily render it surprising

The decision by the Board, which led to the present petition for review, was to revoke the patent for lack of inventive step, as the claimed effect was not achieved over the full scope of the claim. The Board's reasoning was based on a new document D46 that was admitted into the appeal proceedings, to further substantiate the case already made during opposition. The proprietor was surprised that the Board had placed so much reliance on D46 and had not received the impression during the oral hearing that D46 was considered to be highly relevant. The proprietor felt that the Board's decision was based on ex-officio argumentation on which it had not received the opportunity to respond, violating its right to be heard.

The Enlarged Board took a different view. During the written phase, the proprietor did not address the substantive issues raised by the opponent based on D46 because it had not expected D46 to be admitted into the proceedings. The admission of D46 was discussed at the oral hearing and the Board decided to allow it in. The Enlarged Board remarked that this could reasonably be interpreted as meaning that the document was thought to be important. D46 was discussed at a rather late stage in the hearing, but it was discussed and the proprietor limited itself to commenting on the oral submissions of the opponent.

The Board did not direct the proprietor to address the issues raised in the grounds of appeal, but in the interests of impartiality,it is generally recognized that a Board is under no obligation to inform a party that it deems a particular argument relevant. The Enlarged Board concluded that the proprietor had been given several opportunities to address the arguments on which the Appeal decision was based but, for a reason not attributable to an omission by the Board, decided not to do so. Consequently, there was no violation of its right to be heard.

Tuesday, 10 March 2020

T 3247/19 - How special does it need to be under RPBA2020?

In the present case, the appellant requested that the appealed decision be set aside and that the case be remitted to the examining division. However, with the RPBA revision, the rules for remittal changed. Art. 11 RPBA2007  provided "A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise". Art. 11 RPBA2020 however provides "The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons." OJ Suppl 2, 2 "Table setting out the amendments to the RPBA and the explanatory remarks" explained that "The aim of the new provision is to reduce the likelihood of a "ping-pong" effect between the Boards and the departments of first instance, and a consequent undue prolongation of the entire proceedings before the EPO. When exercising its discretion under Article 111 EPC, the Board should take account of this aim." and "Whether "special reasons" present themselves is to be decided on a case-by-case basis. If all issues can be decided without an undue burden, a Board should normally not remit the case. According to the second sentence of proposed new Article 11, where a Board ascertains that a fundamental deficiency is apparent in the proceedings at first instance, it will normally remit the case." The new version of Art. 11 applies to any appeal pending on, or filed after, the date of the entry into force (Art. 25(1) RPBA2020); however, not all decisions issued since 1/1/2020 expand on whether there are any specials reasons for remitting, and why (not).  The current deicison does.

Wednesday, 26 February 2020

T 2063/15 - Amendment not occasioned by a ground for opposition

Rule 80 EPC stipulates that amendments to the claims of a granted patent may be made provided that these are occasioned by a ground for opposition. In the present opposition appeal case, the main request and Auxiliary request 1 were not allowed for lack of novelty and lack of clarity, respectively. The subsequent Auxiliary request 2 and Auxiliary request 3 both contained an additional independent claim (i.e., claim 2).

Claims 1 and 2 of auxiliary request 2 were based on combinations of claims 1 and 2 and claims 1 and 9 as granted respectively. The Board considered Auxiliary request 2 not to violate Rule 80 EPC, since granted claims 2 and 9 were each separately dependent upon granted claim 1, found not to be novel; thus, the amendments made to the claims in auxiliary request 2 were occasioned by a ground for opposition. Regardless, Auxiliary request 2 was considered to lack novelty.

In auxiliary request 3, claim 1 was based on a combination of claims 1 and 2 as granted and additional features taken from the description. Claim 2 was the same as in the preceding request. The Board found that the inclusion of the additional independent claim 1, based on claims 1 and 2 as granted in combination with features taken from the description, was no longer simply occasioned by a ground for opposition since this ground was already addressed through the filing of independent claim 2. Accordingly, the amendments made to the claims were deemed not occasioned by a ground for opposition contrary to the requirement of Rule 80 EPC. Auxiliary request 3 was therefore not allowable.

Tuesday, 18 February 2020

T 2227/15 - Transition from RPBA2007 to RPBA2020

Since 1/1/2020, the revised  Rules of Procedure of the Boards of Appeal (RPBA2020) are in force. Its Article 25 lays down the transitional provisions, and provides that the revised version of the RPBA will in principle apply to all appeals pending on the date of its entry into force (see explanatory notes). However, as submissions already on file may be affected, two exceptions are provided in order to protect legitimate expectations which parties may have had at the time of filing such earlier submissions. A first exception is made, in Art. 25(2), with respect to revised Article 12, paragraphs 4 to 6 relating to the basis of appeal proceedings. In the explanatory notes to Art. 13(3), it further provides: "A further exception is made with respect to the strict provision of revised Article 13, paragraph 2. It will only apply to a submission filed after the statement of grounds of appeal or reply thereto if, at the date of entry into force of the revised version, the summons to oral proceedings or a communication of the Board under Rule 100(2) EPC has not been notified. Otherwise, Article 13 of the Rules of Procedure of the Boards of Appeal in the version valid until the date of the entry into force of the revised version will continue to apply." The applicability of Article 13(1) RPBA 2020 to cases where the summons to oral proceedings were notified before the entry into force of the RPBA 2020 has been a topic of the present appeal.
The decision is further issued, in part, in abridged form according to the new provisions of  Article 15(7)-(8) RPBA2020 and also already used (to our knowledge for the first time) for T 1687/17 of 9 January 2020.

Tuesday, 11 February 2020

T 1621/16 - Multiple selections from lists of converging alternatives

In the present case, amendments were based on multiple selections from lists of converging alternatives (i.e. lists of options ranked from the least to the most preferred, wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list). The appellant (patentee) argued that these should not be considered to be equivalent to selections from lists of non-converging elements, and that these rather represented a restriction of the scope of protection and were allowable under Article 123(2) EPC. The opponent and the opposition division argued that amendments based on the selection of at least two intermediate options (i.e. different from the most preferred) from lists of converging alternatives infringed Article 123(2) EPC, and that lists of converging and non-converging alternatives had to be treated in a similar way, because the convergence could only be considered to provide a specific pointer to the most preferred options. The Board had to settle on the matter.

Tuesday, 28 January 2020

We normally discuss decisions of the Boards of Appeal on this blog, but every once in a while a first instance decision is worth discussing, as it is today.
On 20 December 2019, the EPO published a news message on the EPO website indicating that:

"The EPO has refused two European patent applications in which a machine was designated as inventor. Both patent applications indicate “DABUS” as inventor, which is described as “a type of connectionist artificial intelligence”. The applicant stated that they acquired the right to the European patent from the inventor by being its successor in title.
After hearing the arguments of the applicant in non-public oral proceedings on 25 November the EPO refused EP 18 275 163 and EP 18 275 174 on the grounds that they do not meet the requirement of the EPC that an inventor designated in the application has to be a human being, not a machine. A reasoned decision may be expected in January 2020."
The decision is now available including the full reasoning from the Receiving Section. An appeal may be expected in due course.