T 838/16 - removal of a feature requires passing gold standard to satisfy Art.123(2)/76(1)

The patio heater may be off. Does that disclose that the heater may be absent?

In the Guidelines up-to-and-including the 2017 edition, the essentiality test from T 331/87 provided a necessary and sufficient condition for the allowability of the replacement/removal of features from a claim. As of the 2018-edition, satisfying the essentiality test is a necessary condition, but no longer sufficient. The Guidelines 2018 and 2019, section H-V, 3.1, provides: 

• If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2): (i)-(iii)
• However, even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as "the gold standard"”. 

The amendments to the Guidelines seems to reflect recent developments in case law, such as T 910/03 which questioned the applicability of T331/87. The current decision follows the approach in the current Guidelines, and applies the "gold standard", when checking Art. 76(1) for a divisional relative to its parent rather than Art. 123(2) for an amendment: any amendment must be within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively relative to the date of filing, from the whole of the documents (description, claims and drawings) as filed. 

T 1032/97 - No refresh of BoA decisions

A decision from 2001 was recently republished on the Case Law site, for distribution to Board chairmen and members.

Background
The patent application concerned was initially refused for lack of clarity and sufficiency of disclosure. After oral proceedings, the Board decided that the claims were in compliance with Articles 83 and 84  and that the case should be remitted to the Examining Division for further prosecution and examination of novelty and inventive step. It was also remarked that the description still contains reference to speculative subject matter that needs to be deleted to bring it into conformity with the claims.

The Applicant-appellant, however, was unhappy with the text of the decision, in particular with the Board's interpretations of the meaning of certain claimed features (e.g. catalyst) based on definitions taken from the Oxford Dictionary. The Applicant had presented a great deal of supporting data at the oral hearing and was apparently under the impression that the Board had attributed a meaning to the term "catalyst" consistent with the Applicant's written description.

The  Applicant then submitted a request that the Board modify its reasons for the decision to conform with its prior rulings at the oral proceedings. The Board's response to this request is the subject of the recent republication.

The request was refused as inadmissible, following G1/97, where the Enlarged Board ruled that the jurisdictional measure to be taken in response to requests based on the alleged violation of a fundamental procedural principle and aimed at the revision of a final decision of a board of appeal should be the refusal of the requests as inadmissible.

T 657/17 - Always ask your money back!

G 3/03 clarified that, in the event of interlocutory revision under Article 109(1) EPC, the department of the first instance whose decision has been appealed is not competent to refuse a request of the appellant for reimbursement of the appeal fee. The current decision relates to the competence of the Board to decide on  reimbursement of the appeal fee in the event of interlocutory revision where the appellant did not explicitly request for reimbursement of the appeal fee. The current decision followers earlier case law, and concludes that, n the absence of a request for reimbursement of the appeal fee, the issue of reimbursement of the appeal fee should not have been referred to the Board for decision, and the Board is also not empowered to decide on this issue as an ancillary matter.

T 124/16 - New argument based on admitted documents inadmissible in appeal OP

New arguments are rejected

This is another case about late documents or arguments. In the previous opposition proceedings, documents E12 and E14 were both filed by the opponent after the 9 month period. Although document E12 was admitted into the proceedings, document E14 was not. 

The opponent filed an appeal against the first instance decision, formulating inventive step objections based on both E12 and E14. When at the appeal oral proceedings document E14 was also not admitted, the opponent tried to use document E12 to formulate new inventive step objections. 

Although both the document E12 and inventive step arguments based on E12 were already in the procedure, the board nevertheless found that these new objections could not be regarded as a further development of the opponents case. As they were not prima facie relevant either, these objections were not admitted into the case. 

The decision is in German. A machine translation of the relevant part is provided, followed by the original. 

T 2239/15 - Private not the same as confidential

The patent application in this case was refused for lack of novelty based on MPEG standards-related documentation cited in the search report. In response to a previous complaint, regarding similar citations against earlier PCT applications, the EPO informed the applicants that examiners had been instructed that MPEG input documents did not constitute prior art and were not to be cited in search reports. In a later communication, however, they were informed that new facts were available regarding the public availability of a particular citation and that the European search report should mention those documents available to the EPO at the time of drawing up the ESR.

The appellants argued that the citation of the documents in the present case constituted a breach of legitimate expectations and further maintained their position that the cited documents were confidential working documents submitted to the MPEG working group in elaboration of a new standard. They also argued that the established procedures of MPEG required members to treat input documents as private, which was to be construed as 'confidential'. 

The Board considered the issue of confidentiality and the public availability of the documents cited in the present case based on the procedures of MPEG and drew a different conclusion. These procedures require, for example, that documents may be shared only with the permission of the authors and that draft documents are made available to meeting participants on a password-protected dedicated MPEG server. The procedures also specifically allow for the discussion at meetings to include consulting other experts with more specific knowledge on the topics addressed, but who are not actually present at the meetings. 

The Board concluded that the MPEG procedures could not guarantee, nor even expect, confidentiality but seemed to be designed to guarantee a certain privacy of data, by controlling access and transmission, while being sufficiently flexible to allow such transmission with other parties. In the absence of strict limitations,the cited documents were deemed to be have been made publicly available.

On the subject of legitimate expectations, the Board ruled that this principle applies to disadvantageous consequences resulting from the omission of procedural steps. It has no bearing on substantive law and cannot render patentable what would otherwise not be.

The appeal was dismissed.

T 1359/14 (and T 1914/12) - Does the Board have discretion to admit late arguments based on facts already in the proceedings?

A reader pointed me to this decision, in French. In reason 2.1, the Board indicates that a Board has no discretion as to the admissibility of late arguments based on facts already in the proceedings. The Board referred to and followed pararaph 7.2.3 of T 1914/12, also in French, which substantially decided that the lack of "arguments" in Art. 114(2) EPC allowed to file new arguments late, contrary to what Art. 12 RBPA said/says. In view of the tightening of what will be allowed and not with the revised RPBA that enters into force on 01.01.2020, it wil be interested whether a future Board will come to the same conclusion.

In any case, it appears that there should be a referral as this decision follows T 1914/12 which however distinguished from T 1621/09, and seems is a fundamental point of law.

T 1503/12 - On technical and non-technical features, technical considerations, business methods and THE problem-solution approach

In this appeal against the examining division's decision to refuse a European patent application for lack of inventive step (Article 56 EPC), the appellant submitted that "there was a divergence in how computer-implemented inventions were examined at the EPO. If the application happened to be classified as a business method, the EPO would use the Comvik approach and dismiss features of the invention as non-technical. If, on the other hand, the application was classified in the field of telecommunications, it would be assessed using the "normal" problem-solution approach, and, irrespective of the underlying aim, features relating to data transmission would be treated as a technical telecommunications protocol. Applicants wanted consistency and certainty, especially in the field of computer-implemented inventions, which had become increasingly important." Applicants submitted that "The correct approach, in all fields, was the problem-solution approach." The appellants tried to argue that the claimed invention had a number of technical effects, which provided a basis for inventive step. The Board agreed that the correct approach, in all fields, was the problem-solution approach, but the Board did not agree that there is such divergence: "Comvik is rather a special application of the problem-solution approach to inventions that contain a mix of technical and non-technical features". The Board then applied the problem-solution approach, using Comvik, and concluded that the claimed invention was not inventive.