Friday, 4 November 2022

T 2194/19 - The "invention" is not necessarily and always to be equated with the "invention claimed", not required that all described "embodiments" must fall within the scope of the amended independent claims

In the present case, the examining division regarded several  paragraphs of the description to be at odds with independent claim 1, as amended.  The examining division equated the term "embodiment" with subject-matter that has to fall "within the scope of the invention as defined by the claims", and concluded that the description so adapted was not in conformity with the independent claims, contrary to Rule 42(1)(c) EPC, because the term "embodiment" was used in parts of the description that describe subject-matter that was not part of the subject-matter of these independent claims. Moreover, the examining division held that the "invention" must always be the "invention claimed" and the "invention" was defined by the independent claimws. The Board did not agree and held:
1) the EPC does not define that “the "invention" is necessarily and always to be equated with the "invention claimed"”, 
2) concluding from Art. 84 EPC that "embodiments" of the description of a patent application have to be within the scope of the (independent) claim cannot be derived from the EPC and can also also not be derived from the jurisprudence of the Boards of Appeal, and 
3) in particular Rule 42(1)(c) EPC cannot be the legal basis for establishing such a general and broad requirement for an adaptation of the description to the claims. It is simply not what this provision says.”
Herein, the Board deviates from the strict practice that the first instance nowadays applies as well as from Guidelines (2022) F-IV, 4.3. The Board does however not address the Guidelines, although that could have been expected in view of Art. 20(2) RPBA2020. Also, the Board hardly addresses the case law that the EPO considers to support the “delete all non-covered embodiments" approach that is used by the drafters of the Guidelines, and as a consequences do not discuss whether a referral to the Enlarged Board would be necessary acc Art. 20(1) RPBA2020. Note that the Board also does not mention T 1989/18 of 16.12.2021 that concluded that, as a general rule, not is not required to bring the description in line with (amended) claims intended for grant.


Saturday, 15 October 2022

Deemed date of receipt looses 10 days per 1 November 2023: shortens times to respond to communications!


10 days


A news message on the epi website indicates that the Administrative Council of the EPOrg decided to amen to Rule 126(2) EPC relating to the date on which a document sent by the EPO is deemed to be delivered. Currently, a documnt is deemed delivered 10 days after the date on the document. This will changer per 1 November 2023: as of that date, the date on which the document is deemed to be delivered is the date on the document, similarly to PCT Rule 80.6, second part (with with some differences, in particular the EPO keeping the burden of proving the date of delivery in the event of dispute, whereas under PCT that burden is with the applicant). 

I heard that, surprisingly, only one delegation voted against the change. Even though the entry into force of the amended Rule is about a year away, changing such a well-established rule that is know world-wide to the disadvantage and risk of the applicant may cause some accidents, which cannot in all cases be repaired: not knowing that the rule has changed will make a request for re-establishment of missing, for example, the appeal period, have hardly any chance of success.

Note that the change has no impact on the 9m opposition period (triggered by the mention of the grant in the bulletin), the 1m period for paying the filing and search fee (triggered by the filing), the 6m period to pay the examination fee and file the request for  examination (triggered by the mention of the publication of the search report in the bulletin), the 31m period for EP entry (triggered by the earliest priority date), nor any other periods that are triggered by an event other than notification.
It does however affect all periods for responding to an invitation to remedy a formal deficiency (in most cases, 2m), an office action (usually 4m, sometimes 2m; extendible), a R.161/162 communication (6m), invitations to pay claims fees in case of non-unity (2m), the period for requesting further processing (2m), the appeal periods (2m for notice & fee, 4m for grounds), and all other periods  that are triggered by the notification of letter/invitation/communication! 

So, when,  a communication is issued on 17 November 2023 under Rule 58 to file a missing translation:
- if the current Rule would still have applied, a response would need to be filed by
         17/11/2023 + 10d + 2m -> 27/1/2024 (Saturday) [R.134(1)] -> 29/1/2024 (Mon);
- with the amended Rule however, a response is to be filed by
         17/11/2023 + 2m -> 17/1/2024 (Wed)

The Administrative council documents are currently not yet available on the EPO website (here).

Update 21 November 2022: the Administrative council documents are now available on the EPO website:

    • CA/D 10/22 Decision of the Administrative Council of 13 October 2022 amending Rules 46, 49, 50, 57, 65, 82, 126, 127 and 131 of the Implementing Regulations to the European Patent Convention; amended Rules 46, 49, 50, 57, 65, 82 in force as of 1.2.2023; amended Rules 126, 127 and 131 in force as of 1.11.2023;
    •  CA/30/22 Rev. 2 Legal changes to support digital transformation in the patent grant procedure (first basket): amendments to the EPC Implementing Regulations (Preparatory documents for the decision)

The epi news message is cited below (no changed made): 

Wednesday, 21 September 2022

T 17/22 - On the "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC"

In the present case, the examining division issued a decision to refuse the application based on the ground under Article 123(2) EPC and on lack of novelty, lack of inventive step and lack of clarity. However, the examining division had issued only two communications before deciding to refuse the application: the first was a communication under Rules 161(1) and 162 EPC, inviting the applicant to correct any deficiencies noted in the written opinion raised by the EPO as ISA in the international phase, and the second was a communication under Rule 137(4) EPC headed "Invitation pursuant to Rule 137(4) and Article 94(3) EPC", accompanied by an annex raising an objection under Article 123(2) EPC and the statement: "nota bene: The amendment appears also not suitable to remedy the deficiencies". In the statement setting out the grounds of appeal, "the appellant contended among others that the examining division had committed a substantial procedural violation as, in the proceedings before the examining division, the appellant never had the opportunity to address the objections as expressed in the appealed decision. Moreover, with the invitation pursuant to Rule 137(4) EPC, the appellant had only been alerted that certain amendments had not been sufficiently identified and/or their basis in the application as filed has not been sufficiently indicated. The subsequent decision to refuse the European patent application without any further ado had come completely to the surprise of the appellant. Thus, the appellant submitted that the right to be heard under Article 113(1) EPC had been violated.".
The Board considered the scope of Art. 94(3) EPC in detail and considered that at least one substantive communication pursuant to Art. 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on substantive grounds is issued (or, exceptionally, summons for OP). The Board addressed in detail whether a communication under Rules 161(1) and 162 EPC can/cannot be considered a communication under Article 94(3) EPC and whether an "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC" can/cannot considered a substantive communication under Article 94(3) EPC.

Wednesday, 7 September 2022

T 682/22 - No interlocutory revision despite single ground for refusal overcome by amendment: what does the Board say?


In the present case, the application was refused due to lack of novelty. The applicant appealed with a sole request in which the applicant amended the independent claims. The amendments included the addition of a feature to the independent claims which, according to a positive statement in the annex to the summons for oral proceedings before the examining division, made the claim novel. Nevertheless, interlocutory revision was not granted (possibly because the ED considered further amendments to extend subject-matter, but -in accordance with Art.109(2), the reasons were not given). The Board of Appeal discussed the breath and the established case law of Art.109(1) EPC, as well as the Guidelines, and considers it appropriate to point out that there are (still) some significant inconsistencies between the current Guidelines and the established case law as to the interpretation of Article 109(1) EPC. The Board concluded that "interlocutory revision must be granted if the amendments clearly overcome the grounds for refusal, even if further new objections arise, i.e. irrespective of whether new objections under Article 123(2) EPC or whether previous objections referenced in the appealed decision were raised by the first-instance department" and noted that "the established case law (...) and the current Guidelines are inconsistent with each other."  The Board conclude that, in the current case, "the appeal is "well founded" within the meaning of Article 109(1) EPC. There is also no apparent reason to contest that the appeal is "admissible" within the meaning of Article 109(1) EPC. The examining division should therefore have indeed rectified its decision and continued with the examination of compliance with the requirements of the EPC. However, for whatever reasons, they did not do so."


Tuesday, 12 July 2022

T 3000/19 - Use of video retrieved from the internet as prior-art

The grounds for refusal of the decision under appeal are based on lack of inventive step when taking as starting point documents D4 and D5. The prior-art evidence cited by the examining division as "document D4" refers to a video titled "Mac OS X Leopard Overview : Mac OS X Leopard Dictionary", retrieved from the YouTube website and, at the same time, a document including a screenshot of a web browser visiting that YouTube website. The video of D4 was cited for the first time in the examining division's communication of 24 January 2018, which provided the URL for accessing the video on the internet. The document with the screenshot also shows YouTube information about the video, including the publication date of 9 July 2008 used by the examining division. It does not show any other information relevant to the case. The Board discussed Internet disclosure as prior-art evidence, Use of electronic evidence in proceedings and Use of online video evidence in the EPO. The Board considered the procedure in accordance with the Guidelines for Examination, B-X, 11.6 to be insufficient for preserving video evidence and guaranteeing its accessibility over time as needed for EPO proceedings or for further judicial proceedings before the boards of appeal of the EPO or national courts (Article 131(1) EPC). The Board concluded to be not in a position to make its own assessment of the relevant evidence in its original presentation in an objective and independent manner. In view of this, the Board concludes that the decision under appeal is not sufficiently reasoned and violates Rule 111(2) EPC. This constitutes a substantial procedural violation. The measures recommended by the Guidelines for Examination of November 2018, B-X, 11.6, which were followed by the examining division, did not adequately preserve the relevant electronic evidence to guarantee accessibility over time.

Tuesday, 1 February 2022

Referral by T 1513/17 and T 2719/19 - Priority from an earlier application having different applicants for different states

In the present case (T 1517/17, consolidated with T 2719/19), the patent proprietor filed an appeal to the interlocutory decision of the opposition division revoking its patent. The application on which the patent was granted had originally been filed as an international application under the Patent Cooperation Treaty (the PCT application). It claims priority on the basis of the US provisional patent application (the priority application). The priority application was filed in the name of the two inventors H. Wang and Z. Zhong. The PCT application names the same two persons as inventors and as applicants with designation for the US only. It also names as applicants Alexion Pharmaceuticals, Inc. and the University of Western Ontario as applicants for all designated States except the US. The patent in suit names Alexion Pharmaceuticals, Inc. as patent proprietor and R.P. Rother, H. Wang and Z. Zhong as inventors.

The Board decided to refer the following questions to the Enlarged Board of Appeal:
I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?
II. If question I is answered in the affirmative [note: which seems likely, in view of it being a substantive requirement in Art.87(1) EPC]
Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC
in the case where
1) a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and
2) the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
3) the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?
In reason 37, the Board also indicted that "a
 separate question relating to conflict of laws-rules to be applied to a transfer of the priority right is nonetheless not necessary because it is inherently contained in the questions posed and it will be addressed in the considerations of the EBA, as needed."

Thursday, 23 December 2021

T 1989/18 - As a general rule, not required to bring the description in line with (amended) claims intended for grant

In the present case, the examining division found the set of amended claims of the main request to be allowable, but nevertheless it held that the amendments to the description adapted to those claims (submitted with the same letter) did not comply with the requirements of Article 84 EPC, in particular because they related to subject-matter which was broader than the subject-matter of independent claim 17 of the request, and refused the European patent application for that reason. The Board carefully assessed the applicability of Art. 84 EPC as well as of Rule 42(1)(c) and Rule 48(1)(c) EPC as possible legal basis requiring adaptation of the description, and concluded that such basis does not exist (except possible in the case of non-unity). The Board also argued why it distinguished from earlier decisions (some of whuch being cited in the Guidelines in support of such alleged requirement).


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