Monday, 11 January 2021

T 2429/17 - Cogent reasons for amendment after summons

Lacking clarity


Art. 13(2) of the  Rules of procedure of the Boards of Appeal states that 

Any amendment to a party's appeal case made (...) after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

The question then is, what could be a cogent reason? In this case, the Board raised objections under Articles 84 and 123(2) EPC for the first time in its summons. As the new request responded to these objections, they cleared this hurdle. Unfortunately, the new request was also considered to introduce new clarity issues, so in the end the request was not admitted after all.  

Monday, 4 January 2021

R 10/18 - No obligation for a Board to discuss irrelevant arguments

Did they miss your submission, or was it not relevant?


The Enlarged board considers the catchword of R 8/15. Catchword 1 of that decision reads (in part, emphasis added): 

(...) One aspect of the right to be heard as covered by Article 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness. Article 113(1) EPC is infringed if the Board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the Board substantively considered those submissions. (...)

In this case, a potential issue with this rule is considered. If you don't see your arguments back in the decision then either: the board did not consider your arguments, or the board did consider them but found them to be irrelevant. The former case would infringe the right to be heard, while the latter would not. But how is an appellant to know which of these two options was the case?

The Enlarged board seems sympathetic to this view, but concludes that if you don't see a submission in the decision, then apparently it was not relevant. It leaves the door open though if there are indications to the contrary. 

This case R 10/18 provides the following catchword:

1. One aspect of the right to be heard as covered by Article 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness.

Article 113(1) EPC is infringed if the board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the board substantively considered those submissions. (See Reasons, point 2.1.1, affirming the relevant part of catchword 1 of R 8/15).

2. A board is presumed to have taken into account a party's submissions that it did not address in the reasons for its decision, meaning that it, first, took note of them and, second, considered them, i.e. assessed whether they were relevant and, if so, whether they were correct.

An exception may apply if there are indications to the contrary, e.g. if a board does not address in the reasons for its decision submissions by a party that, on an objective basis, are decisive for the outcome of the case, or dismisses such submissions without first assessing them as to their correctness. (See Reasons, point 2.1.1.2).

Monday, 28 December 2020

T 1604/16 - Boards have competence to review points of fact

What did this car look like before the repairs?


This is a decision with the second highest distribution classification 'B'. They do no not occur that often, so the issuing board considered this to be an important case. 

In first instance opposition proceedings, the opposition division concluded that a car sold by the opponent was novelty impairing prior use. This was evidenced by hearing the car buyer as a witness. In appeal the opposition has been withdrawn, and the board wonders if it is allowed to challenge the findings of fact established in first instance. The recent decision T 1418/17 suggests that a Board of appeal should not do so. This board does not agree, and provides the following catchword:
The boards have competence to review appealed decisions in full, including points of law and fact. This applies also to findings of fact of the department of first instance which are based, at least in part, on the evaluation of witness evidence obtained in the course of hearing a witness (reasons, point 3.1 and sub-points).

Friday, 25 December 2020

T 1350/09 - Different ornaments is inventive, merely unique sensorial signals are not

Using different ornaments can be inventive


Merry  Christmas from the DeltaPatents blogging team.  This decision shows that adding pretty ornament can be inventive even if providing a unique sensorial signal is not.

Claim 1 of the main requests in this opposition was:

1. A display pack comprising a see-through container which contains a plurality of unit-doses of a detergent product in a multiplicity of sensorially distinctive groups, and wherein the groups are distinctive in terms of colour, shape, size, pattern or ornament, or wherein the groups are distinctive in terms of providing a unique sensorial signal such as smell, sound, feel, etc."

The first auxiliary request struck the  final wherein clause : " or wherein the groups are distinctive in terms of providing a unique sensorial signal such as smell, sound, feel, etc." That made the difference.

Monday, 14 December 2020

T 483/17 - 'more up to the hilt' is not needed



The opponent in this case alleged that one of its own products is novelty destroying prior art. As this prior use lies within the sphere of the opponent, proof 'up to the hilt' was required. The board's analysis of this proof is very case-specific of course, but makes for interesting reading (if you're into that kind of thing). The proprietor makes a good effort to find inconsistencies in the  provided proof, which leads the Board to state at one point that if more evidence was provided, it 'would merely have been proven even more "up to the hilt"'. 

In the end the opponent manages to prove to the Board's satisfaction that it really did sell a product that falls under the scope of the claim. 

Monday, 7 December 2020

T 2620/18 - Appeal deemed not filed due to mistaken payment of small-entities appeal fee


The  Schedule of fees of the EPO has two amounts for the appeal fee. A small fee for natural persons or small entities, as defined in Rule 6(4) and (5) EPC, and a large fee for everybody else. What happens, if you accidently declare yourself a small entity, even though you are a large entity, and thus pay the wrong fee? When filing an appeal to an opposition this happened to the unlucky appellant. In this case the appeal was deemed not filed. In particular, an attempt to correct under Rule 139, was dismissed as the correction was not filed quickly enough. 

In the decision, the Board goes through of the ways in which this may be rectified, but comes to the conclusion that none apply.  The decision has the following abstract (translated from the German):

For the question of the insignificance of the difference between the full appeal fee and the appeal fee, see Reasons No. 4.8.

On the question of an implicit request for correction of a debit order and the timeliness of the submission of a request for correction, see Reasons 5.7 to 5.14.

On the issue of ex officio correction of amounts in debit orders, see Reasons 6.1 and 6.2.

For the question of interpretation of a debit order with regard to the appeal fee, see Reasons No. 8.4.

Below a machine translation of the sections cited in the abstract is provided, and below that, the original German. 

Tuesday, 1 December 2020

T 670/19 - Technical character of lip assessment


The invention in this Examination decision concerned a scale to for clinical assessment  of the lips and mouth area. Such a scale may for example be used to judge the efficacy of new lip augmentation procedures. 

For example, one feature of claim 1 in appeal is  'a lip fullness scale comprising illustrations of the mouth area of human subjects'.  

During Examination the claims were initially objected to as lacking novelty. However, as those objections were overcome, the claims were objected to as lacking technical character.  According to the Examining division the claim 'relates to purely abstract subject-matter' and is thus excluded under Article 52(2) and (3) EPC. 

The board of appeal did not agree--these illustrations imply a physical medium and thus technical character. The case is remitted. 


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