Monday, 18 June 2018

R 7/16 - Decision on remittal before discussing substantive issues

The auxiliary police... could they have helped the petitioner?

This case is a petition for review following an appeal against a decision of the opposition division. Briefly speaking, auxiliary request V was held allowable during the opposition proceedings, but was found to contravene Article 100(c), 123(2) EPC during the appeal proceedings.

In its written decision (the decision under review), the BoA found that the decision of the opposition division presented a fundamental deficiency. Despite the fundamental deficiency, the BoA decided not to remit the case to the opposition division, thereby exercising its discretion under Art. 11 RPBA.

The petitioner's argues in the petition that the substance of the issues, to which the fundamental deficiency pertained, was not taken into consideration by the BoA when the remittal was discussed, and that this represented a fundamental violation of Article 113 EPC.

The EBoA notes that a detailed discussion of the substantive issues before a decision on the remittal would have rendered any remittal pointless since the first instance would have been bound by the considerations of the Board of Appeal or could have expected that its decision would be reversed if it was not in line with the considerations of the Board of Appeal. It was therefore only logical to limit the discussion on the requested remittal to procedural aspects. See also points 3.2.5 and 3.2.6.

Friday, 8 June 2018

T2020/14 - Who can request continuation of opposition appeal proceedings after lapse of a patent?

In this case the BoA terminated the opposition appeal proceedings in which the patent proprietor was the sole appellant because the patent in suit granted in amended form in opposition had been surrendered with effect for all designated Contracting States and the proprietor had not indicated to continue with the proceedings.

According to Rule 84(1), EPC if a European patent has been surrendered or lapsed in all designated Contracting States the opposition proceedings may be continued at the request of the opponent. This applies also to appeal opposition proceedings according to R. 100(1). 

However, since in the present case the only appellant was the patent proprietor, the BoA states that it would be inappropriate to allow the opponent to decide.   

Tuesday, 5 June 2018

T 2106/14 - Workload and travel no excuse for isolated negligence on the part of an applicant

The applicant in this case failed to meet the time limit for paying a renewal fee with additional fee and requested re-establishment of rights. The Examining Division refused the request, finding that although the applicant's professional representative had exercised all due care in reminding and seeking instructions from the applicant, the person responsible on behalf of the applicant for providing those instructions had failed to exercise all due care.

In appeal, the applicant argued that because the aforementioned responsible person - an executive of the company - had been obliged temporarily to take on an additional work role that involved a great deal of travel, this led to him making an isolated mistake of not putting in place measures to ensure that important correspondence was brought to his attention.  

The Board upheld the decision of the Examining Division, on the basis that while it may be possible to excuse negligence by an employee who normally carries out work in a satisfactory manner, this does not extend to the applicant or to an executive of the applicant acting on its behalf. The same duty of rigorous care applies. 

Monday, 4 June 2018

T 1668/14 - Stretching what an accompanying person can do?

G 4/95 is generally understood as providing quite strict requirements as to when and how to announce an accompanying person and as to his/her role and type of contribrutions to oral proceedings in opposition. Citing and just relying on its headnotes has the risk of taking the conclusions out of context and not interpeting the words of the headnote as they are to be understood in the light of the whole decision, but in view of the limited space in an introduction, I just cite the headnotes and refer to the complete decision here. G 4/95's headnotes read: 
"1. During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under Article 117 EPC [giving or obtaining evidence], in addition to the complete presentation of the party's case by the professional representative.
2. (a) Such oral submissions cannot be made as a matter of right, but only with the permission of and under the discretion of the EPO.
(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:
(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.
(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.
(iii) A request which is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested.
(iv) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.
(c) [...]"
G 4/95's reason 10 clarifies that the requirement that "if during oral proceedings before either an opposition division or a board of appeal a party wishes that, in addition to the complete presentation of its case by its professional representative, oral submissions should be made on its behalf by an accompanying person, the professional representative should request permission for such oral submissions to be made, well in advance of the oral proceedings. When making such a request, the professional representative should state the name and qualifications of the person for whom permission to make additional oral submissions is requested, and should specify the subject-matter on which such person wishes to speak" is an implementation of Art. 113(1) EPC. 
In the current case, the opponent requested that an accompanying person would be allowed to speak on technical issues in his qualification as Elektrotechniker. But it took an unexpected twist - at least for me. Although it seems to me that it was not announced/requested in advance that he would, in his other qualification as German patent attorney, also talk on legal matters - legal matters he is not qualified for in my view as his qualification is German patent law, not the EPC. Further, in my understanding, he presents the admissibility case completely by himself, rather than "in addition to the complete presentation by the professional representative". I am interested to hear your opinions. 

Tuesday, 29 May 2018

EP2771468 - Decision of OD in Crispr case (first instance)

You can't slice up a priority right

Today we have the  first instance decision in the opposition against European patent 2771468 having the title "ENGINEERING OF SYSTEMS, METHODS AND OPTIMIZED GUIDE COMPOSITIONS FOR SEQUENCE MANIPULATION" (PCT/US13/74819). The grounds for the decision were published 26 March 2018.

We usually only have  board of appeal decisions, but I'm told this is an important case as it relates to the CRISPR technique of DNA manipulation. It is moreover interesting because of its scale and the issues it raises. There were 9 opponents, 255 documents filed, 72 auxiliary request and a 40-page decision.

The priority documents are US provisionals and each have a number of natural persons as inventors/applicants. I count a total of 12 different natural persons who are applicants to the priority documents in various combinations. It turns out that for some of these persons the priority rights had not been transferred to an applicant of the PCT application, or at least evidence of a transfer acceptable to the OD was not filed.  As a result, the priority claim was objected to the by the opponents. The proprietors have numerous arguments why this objection should not be allowed, but in the end the priority claim is not accepted. Because of the invalid priority, the patent was found not novel.

The underlying problem appears to be hidden in reasons 75-75.1: one of the inventor/applicants of the provisional was not an inventor in the sense of the US law. Accordingly, his successor in title was left of the PCT application, probably to satisfy US law. That one of the persons, who is not an inventor, misses as an applicant on the PCT application now appears to doom this patent in Europe.

Notice of appeal has already been filed, so we'll be interested to see how this case progresses.  

Tuesday, 22 May 2018

T 1409/16 - Either...or?

If a claim uses "either...or" wording in respect of two (mathematical) inequalities, should this be read in the sense that either the first or the second inequality has to be fulfilled, but not both ("exclusive or"), or should this be interpreted as to imply that the first inequality, the second inequality or both have to be met ("inclusive or") - i.e., corresponding to "and/or" wording? And is the answer to this question affected by the presence of a dependent claim using "conventional" "and/or" wording?
Furthermore, if a certain fraction derived from a prior art polymer has properties that fall within the scope of the claims, does this polymer then make the composition as claimed available to the public?

In this opposition appeal, claim 1 as maintained during proceedings before the Opposition Division reads:

"1. A composition being a laundry treatment composition or component thereof, comprising:
- a substituted cellulose having a degree of substitution, DS, of from 0.01 to 0.99 and a degree of blockiness, DB, such that either DS+DB is of at least 1.00 or DB+2DS-DS^2 is of at least 1.20 and
- a laundry adjunct ingredient."

The Appellant (Opponent 1; party as of right Opponent 2 did not make any submissions) argued that the "either...or" wording had to be clearly read such that only one of the inequalities of claim 1 should be fulfilled (exclusive), but not both - particularly in view of dependent claim 10, wherein explicit "and/or" (inclusive) wording was used (albeit relating to other features). According to the Appellant, such an exclusive "either...or" interpretation of claim 1 would however not be supported by the description, arguably disclosing substituted cellulose compounds fulfilling either none or both (as in the Examples) of the two inequalities according to claim 1.

The Board found that in principle both "exclusive disjunctions" and "inclusive disjunctions" may be expressed by the "either...or" wording as used in claim 1. As such, claim 1 is ambiguous and needs to be construed taking into account the contents of the entire patent in suit. In this regard, the Board considered that particularly the Examples, disclosing compounds fulfilling both inequalities, would make it clear that in fact an inclusive "or" is implied by the claims, meaning that at least one of the inequalities should be met.
The Board held that the "either ... or" wording could only be considered as expressing an exclusive "or" in cases where the two situations referred to are, due to their very nature, mutually exclusive, i.e. incompatible with each other
The Board further found that, citing G 1/92, fractionation - as performed by the Appellant - of a commercially available product in order to arrive at a fraction having properties falling within the scope of the claims, amounts to reverse engineering based on hindsight to reveal extrinsic ("extrinsic" within the meaning of G 1/92) characteristics that point beyond the product per se. Information revealed by following such a deliberate fractionation procedure does not correspond to what can be considered to having been made available to the public by an analysis of the chemical composition.

Tuesday, 15 May 2018

T 0802/13 - (Un)disclosed combination of features?

This case concerns a successful appeal of a patent proprietor against a decision of the Opposition Division to revoke a patent on the ground of added subject matter.

In the Opposition Division's view, claim 1 of the main request lacked features of the embodiments disclosed in the application as filed in combination with the features added to amended claim 1.

In the BoA's view (see also GL(2017), H-V, 3.2.1), the skilled person is presented with additional technical information if only some of the features of an originally disclosed combination of "inextricably linked" technical features are extracted.This is the case if the original disclosure conveyed the teaching, explicit or implicit, that all the features of that combination had to be present together in order for a specific technical effect to be obtained. In such a situation, claiming only some of those features would present the skilled person with the different (additional) technical information that the omitted features were optional for that specific technical effect (reason 4.3, last paragraph, of the present decision).

However, this was not found to be the case here essentially because those non-claimed  features of the embodiments disclosed were considered to contribute to technical effects different from the technical effect derivable from original claim 1 (and application as originally filed). The BoA considered those non-claimed features exemplary rather than limitative for achieving the desired technical effect. 

Furthermore, in view of the BoA, both the Opposition Division and the respondent did not clearly distinguish between what is covered by a claim from what is disclosed by a claim. A claim can cover much more than what it discloses, thus also embodiments which are not originally disclosed, but this is irrelevant for the evaluation of added subject matter.