Tuesday, 21 May 2019

T 314/15 - Wrong/no place of business on notice of appeal: (in)admissible?

In the present case, a notice of appeal by facsimile was received at the EPO on 9 February 2015, carrying at the top of its first page the letterhead "MAN Truck & Bus AG", and below the addressee a line containing various references including inter alia an indication that the letter was written on that same date in Nürnberg, followed by a paragraph designating the number of the above European patent and its underlying application, the name of the patent proprietor and the name of the opponent as "MAN Truck & Bus AG". In the subsequent paragraphs it is declared, with reference to the impugned interlocutory decision, the European patent and its proprietor, that an appeal was filed. A list of requests and a statement concerning the payment of the appeal fee by debit order submitted in the annex completed the letter which was signed by an employee of MAN Truck & Bus AG together with a reference to an EP authorisation 58 1060.1. The letter's footer contains in a left column an indication of inter alia the place of business being München and in a right hand column, a postal address of the company MAN Truck & Bus AG in Nürnberg. In response to a communication pursuant to Rule 101(2) EPC, sent to MAN Truck & Bus AG at its postal address in Nürnberg and stating that the notice of appeal did not contain the address of the appellant and requesting the deficiency be remedied within a period of two months. the address of appellant-opponent was provided, corresponding to the address indicated by opponent in the notice of opposition. It was requested that all correspondence be sent to the Nürnberg postal addres. 
Thus, the notice of appeal of appellant-opponent did not contain the address, contrary to the requirement of Rule 99(1)(a) EPC, but the address of its principle place of business (Sitz) was provided later (together with an address from the company, other than its principle place of business, as address of correspondence). Did the Board consider the appeal admissible in view of Rule 99(1)(a) EPC?

Friday, 3 May 2019

T 2081/16 Successful Appeal against Decision to Grant

In this appeal, the preliminary opinion of the Board was to reject the appeal as inadmissible, given that the applicant had approved the text intended for grant by filing a translation of the claims and paying the necessary fees and thus did not appear to have been adversely affected. The applicant had disapproved the first R 71(3) by filing amended claims and requesting grant to be based on certain pages from the description as originally filed. The request was approved and a second R 71(3) communication was issued. It transpired however that the description pages specified in the new "Druckexemplaar" were based on description page numbers filed at a later date. This led to non-fitting pages and entire passasges being left out randomly.

The Board therefore concluded that it could not have been the Examining Division's intent to grant such as text. The true text had not been communicated to the applicant, making it irrelevant that the applicant gave apparent approval under R 71(5) by paying the fees and translating the claims. Consequently, there was also no conflict with G 1/10, which generally ruled that it is the applicant's responsibility to check the correctness of the text before approving it, and that even when the granted text contains errors introduced by the Examining Division, this does not affect how R 71(5) is to be construed. Furthermore, the fact that the patent was granted without the text intended for grant being communicated to the proprietor also meant that he was adversely affected.

The Board further commented on the situation where a patent is granted based on amendments not introduced by the applicant himself, recommending that these amendments are not only indicated in the "Druckexemplaar" , but also in the communication under R 71(3). In the present case, there had been no specific indication that the text intended for grant differed from the applicant's request.

The decision to grant was set aside and the case remitted to the Examining Division with the instruction to grant on the basis of the applicant's allowed request.

Tuesday, 30 April 2019

T 180/14 - Do not miss the opportunity to correct the error!

In this opposition appeal, the appellant (priopretor) filed statement of grounds of appeal including a new main request, which was indicated to include claims 1-22 of the 2nd auxiliary request filed during the oral proceedings before the Opposition division, and several auxiliary requests. Claim 1 of the new main request did not however correspond to claim 1 according to that second auxiliary request filed during the oral proceedings before the opposition division - at least two significant differences were identified.  In the letter of reply to the statement of grounds of appeal, filed by the opponent (respondent) in 2014, the discrepancy between what was said in the statement of grounds and in the submitted main request, was identified in detail. The appellant did not at that stage react to the respondent's reference to this identified discrepancy between the written statement and the content of the annexed main request. In a communication under Article 15(1) RPBA the board drew the appellant's attention to the corresponding discrepancy already identified by the respondent. It was inter alia noted by the board that the subject-matter of claim 1 of the main request and the first, third and fourth auxiliary requests was provisionally considered to not fulfil the requirements of Article 123(2) EPC. With letter of 15 February 2019, i.e. approximately one month prior to the oral proceedings scheduled before the board, the appellant, in response to the board's communication, filed a new main request as well as new first to fifth auxiliary requests. Claim 1 of the new main request is identical to claim 1 of the second auxiliary request as filed during the oral proceedings before the opposition division. The new main request was presented as a request for correction of obvious errors of what was submitted as new main request wit the statement of grounds in 2014. Did the Board accept the correction? Did the Board admit and allow at least one of the other requests?

Wednesday, 17 April 2019

T 0725/14 - Valid transfer of rights results in invalid priority claim

If during the priority year a European patent application - filed by applicant A - is transferred to a party B, is then the priority claim from a subsequent application (from which the patent in suit matured) by applicant A to the earlier application valid? Which acts and statements, including their timing, constitute the transfer of a priority right between parties? And what role do the parties' intentions - as far as they can be derived from the documents on file - play in this?

Tuesday, 9 April 2019

G 3/19 - Patentability of plants exclusively obtained by essentially biological processes: the referral

The full text of the referral by the President to the Enlarged Board of Appeal relating to the patentability of plants exclusively obtained by essentially biological processes is available online. Also see our earlier posts (w.r.t annoucemcentearlier annoucement T 1063/18 and first news message)). The accompanying letter is dated 4.04.2019 and was received in the BoA Office on 08.04.2019.

Under Article 112(1)(b) EPC the President of the European Patent Office refers the following points of law to the Enlarged Board of Appeal:

1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?

2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant
to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

J 4/18 - Dutch and French natural persons as co-applicants entitled to language-based fee reduction

Since Rule 6 EPC was amended per 1 April 2014 by limiting the possible fee reduction to the filing and examination fee and by inserting 3 new paragraphs, 4-7, the possible fee reduction when filing an EP application or a request for examination in an admissible non-EPO language is limited to certain categories of applicants, namely small and medium-sized enterprises, natural persons or non-profit organisations, universities or public research organisation. In case of multiple applicants, each applicant shall be an entity or a natural person of those categories. So, if a Dutch natural person and a large Dutch billion-euro firm together file an EP application in Dutch, they are not entitled to a 30% reduction in the filing fee; however, if two Dutch natural persons together file an EP application in Dutch, they are entitled to such 30% reduction. But what if a Dutch natural person and a French natural person together file an EP application in Dutch? Such a situation was addressed in a list of frequently asked questions intended to provide additional information for users, publisned by the EPO at the time of entry into force of the current (amended) Rule 6 and still available. The current decision decided however differently than what the FAQ provides for. 

Sunday, 7 April 2019

News: President referred questions to the Enlarged Board on patentability of plants exclusively obtained by essentially biological processes

Following his earlier annoucement, the President has submitted questions too the Enlarged Board of Appeal which relate to the patentability of plants exclusively obtained by essentially biological processes and to decision T 1063/18 (also here). According to a news meesage from the EPO posted last Friday, the President of the EPO seeks the Enlarged Board of Appeal to clarify the applicable legal framework.
The full text of the referral is not yet available. It will be interesting to see which clarifiation the Preseident seems to be required as one may argue that T 1063/18 has already given the answer, as that decision analyzed whether conclusion from G 2/12 needed any adaptations after the introduction of Rule 28(2) EPC subsequent to a notice from the EU Commission (no). Also, the news message below does not mention any conflicting decision, which is needed for the referral to be admissable under article Art.112(1)(b) EPC. (However, also with an inadmissible referral, the Enlarged Board may give a clarification as it did in the software decision G 3/08). So, the full text will be highly interesting, we will keep you posted!