Tuesday, 13 April 2021

T 488/18 - Withdrawn request for Oral Proceedings need not be made by orignal party for reimbursement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When the only request for oral proceedings was withdrawn from the now opponent, the question presented whether this suffices for a 25%  reimbursed of the appeal fee under Rule 103(4)(c) EPC.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be a possibility of repayment of the appeal fee under Rule 103(4)(c) EPC if a request for oral proceedings has not been withdrawn by the appellant but by another party to the proceedings who has not filed an appeal (see points 8.3 - 8.9 of the grounds for the decision).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).

Wednesday, 7 April 2021

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. 

Wednesday, 17 March 2021

T 1807/15 - Referral G 1/21: OP by ViCo compatible with right to OP acc.Art.116(1) EPC if not all parties agree?

In the present case, the respondent requested that the oral proceedings be postponed due to the COVID-19 pandemic and in particular in view of the restrictions on travel between the United Kingdom and Germany. Furthermore, the respondent pointed out that the oral proceedings were not suitable for a videoconference, in particular since simultaneous interpretation would be required. In response to the respondent's request for oral proceedings to be postponed in view of the travel restrictions, the parties were informed by communication that the oral proceedings  would be held by videoconference (VICO). The appellant responded to that communication by a letter at the end of which the appellant also included a statement that he agreed with the respondent concerning the unsuitability of the case for oral proceedings by videoconference. Oral proceedings nevertheless took place in the form of a videoconference on the scheduled date, i.e. without the parties' consent. During the oral proceedings the appellant requested: "We thus make the auxiliary request that the question be referred to the Enlarged Board of Appeal for decision as to whether oral proceedings under Article 116 EPC can be replaced by a videoconference without the parties' consent?"

Thursday, 11 March 2021

G 1/19 - Computer-implemented simulation of a technical system or process that is claimed as such

In this case, European patent application relates in particular to the modelling and the simulation of movements of a pedestrian in an environment. The simulation of an individual pedestrian's movement may form part of the simulation of a pedestrian crowd ’s movement in a building. Modelling a building and simulating the movement of a crowd within the building may be useful for verifying whether the design of the building fulfils certain requirements, for example in the case of an evacuation of a stadium or a railway station
In its appeal against the refusal, the appellant argued in particular that the method steps of the claimed invention were technical features or physical parameters. Even if the method steps were considered to be non-technical, they still contributed to the technical character of the invention since they resulted in a technical effect by virtue of their interaction with the computer. Reference was made to T 641/00 (COMVIK, OJ 2003, 352) and to T 1227/05 (OJ 2007, 574), the latter concerning simulations.
In its communication accompanying the summons to oral proceedings, the referring board took the view that the steps forming the claimed method were in themselves non- technical and could contribute to the technical character of the claim only to the extent that their combination interacted with the technical features of the claim to produce a technical effect. Such a technical effect could be present if the design of the simulation steps was motivated by technical considerations of the internal functioning of the computer on which the simulation was implemented, or if the technical effect was part of the overall purpose of the claimed method. The referring board tended to the view that the claimed simulation method did not serve a technical purpose and therefore did not contribute to the technical character of the invention.
By interlocutory decision T 489/14 dated 22 February 2019 (OJ 2019, A86, the "referring decision") Technical Board of Appeal 3.5.07 referred, on the basis of Art.112(1) (a) EPC, the following questions of law to the Enlarged Board  for decision:
  1. In the assessment of inventive step, can the computer- implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?
  2. [2A] If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer- implemented simulation claimed as such solves a technical problem? [2B] In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
  3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?
After assessing the admissibility of the referred questions, rephrasing of part of the questions, an analysis of the legal framework, the existing case law and the various submissions, The Enlarged Board ruled: 
  1. A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation's implementation on a computer.
  2. For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
  3. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.

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)