Tuesday, 31 March 2015

T 37/12 - Scribbling during Appeal

This is an appeal against the decision of the Opposition Division to maintain European Patent Nr. 1 687 159 in amended form. During Oral Proceedings before the Board of Appeal, the proprietor submitted a new auxiliary request 3 which contained handwritten amendments.

Opponent 2 argued that documents submitted during appeal proceedings which contained handwritten amendments did not satisfy the requirements of Rule 49(8) and 99 (3) EPC.

As a reminder, Rule 99(3) states that Part III of the Implementing Regulations shall apply mutatis mutandis to the notice of appeal, the statement of grounds and the documents filed in appeal proceedings, whereas Rule 49(8) states that the request for grant of a European patent, the description, the claims and the abstract shall be typed or printed.  

Headnote [translated by yours truly]

1. When making use of the general reference in Rule 99(3) EPC [to part III of the Implementing Regulations], and when taking into account the Rule's legislative history and purpose, one needs to determine whether and how one of the Rules being referred to is be applied to a particular set of circumstances of an individual case.

2. Applying Rules 49(8) and 50(1) EPC to documents filed during Oral Proceedings before the Boards of Appeal would run counter to procedural economy and [the applying of the Rules] would also not be due for other reasons.

3. The introduction of Rule 99(3) EPC has therefore not given cause to change the practice, which has been practiced over years, according to which documents filed during Oral Proceedings before the Boards of Appeal may contain legible handwritten amendments.

Saturday, 28 March 2015

G 3/14 (2) - EPC requires all dependent claims to be examined on clarity too

We discussed the main answers given by the Enlarged Board in G 3/14 to the referred questions in yesterday's post "G 3/14 - is the clarity issue newly introduced or not?". Today, we give attention one of the analyses underlying the decision: must all claims be examined on clarity by the Examining Division, also all dependent claims? The Enlarged Board seems to answer this with a very clear "yes".

Background / Summary of Facts and Submissions
I. During the appeal proceedings in the referring case (T 373/12) the proprietor filed an auxiliary request for maintenance of the patent which consisted of a combination of granted claim 1 and granted dependent claim 3. This granted dependent claim contained a lack of clarity, namely that the claimed article was coated "over substantially all its surface area". By its decision dated 2 April 2014 and in the light of what was seen as conflicting jurisprudence of the Boards of Appeal, the Board referred the following questions to the Enlarged Board of Appeal under Article 112 EPC (hereafter: "the referred questions"):

Friday, 27 March 2015

G 2/12 and G 2/13 - Fruit and veggies

On 25 March 2015 the Enlarged Board of Appeal published the consolidated decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II). Whereas the EBoA decided in G 1/08 (Tomatoes I) and G 2/07 (Broccoli I) that the processes as claimed in the respective patents at stake were not allowable under Article 53(b) EPC (that indicates that plants and plant varieties or essentially biological processes for the production of plants are unpatentable), the EBoA now came to the (not unexpected) conclusion that this article in the EPC does not prevent patenting the plant products (e.g. fruit and edible parts of the plant) that may be obtained by such processes. Interestingly, all parties involved (patent proprietors, opponents as well as the President of the EPO) agreed with this notion, before the EBoA confirmed it.
The EBoA once again stresses the difference between a product claim, a process claim and a product-by-process claim, the latter being a product claim that should be addressed for patentability separate from the process that is used to produce it.

The EBoA concluded earlier in G 2/07 and G 1/08 that the legislator's intention (Article 53(b) EPC) had been to exclude from patentability those plant breeding processes which were the conventional methods of plant-variety breeding at the time. 
Article 53(b) EPC is about an essentially biological process that cannot be patented. But if one claims a product (not a plant or a plant variety) that may be obtained by such excluded process, such product may very well be patentable and is explicitly not excluded from patentability under Article 53(b) EPC, solely because it was obtained by the unpatentable process.  

Notably, and the EBoA admits this, in some EPC contracting states, including Germany and the Netherlands, the patent law deviates from the EPC by explicitly excluding patentability of products obtained by essentially biological processes (e.g. see Art. 3(1)(d) ROW 1995). The EBoA indicates that such is not the case in the EPC.

Ergo: not all is lost for parties pursuing European patent protection for commercial plant products (like fruit) when the process leading to such products falls under the exclusion of Article 53(b) EPC, at least not in all contracting states of the EPC.

G 3/14: is the clarity issue newly introduced or not?

G 3/14 relates to the examination of clarity in opposition proceedings. 
Yesterday, the Enlarged Board of Appeal decision G 3/14 has been published by the EPO. A 97 pages long document with extensive discussions of the all submissions and of case law of the Boards of Appeal. This blog mainly relates to the reasons of the Enlarged Board with respect to the question of law. The referring Board of Appeal asked questions about the interpretation of decision G 9/91, however, the Enlarged Board of Appeal changed the question of law towards: What is the correct interpretation of Art. 101(3) EPC?
After studying the reasons, it seems that "introduces" is the most important term in the catchwords. A combination of granted claims does not comprise newly introduced clarity issues, because these issues were already present in the granted claims. 
One of the main lines of reasoning is: A claim tree with dependent claims represents (quite often) a large number of independent claims which are the result of writing out all claimed combinations. When the patent is granted, all the possible combinations of claims are, at least in theory, fully examined (for example also for clarity, Art. 84 EPC). When, in opposition proceedings a dependent claim is combined with an independent claim, a number of the granted combinations of claims is deleted and one of the already examined and granted combination is chosen to be the independent claim. 
According to the Enlarged Board, it is an explicit choice in the EPC that clarity is not a ground for opposition and it is an explicit choice of the legislator that clarity must be addressed in Examination proceedings - "opposition is not a continuation of the Examination proceedings". Therefore, only newly introduced clarity issues can be a ground of revocation of the patent under Art. 101(3) EPC.


In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.

Tuesday, 24 March 2015

T 0094/12 - A picture says more than a thousand words

An extra post today, as this decision (online about a bit more than month ago) nicely adds to the blog of last Tuesday "T 0556/11 - In any shape or form", where the difficulty of describing a shape played a key role. In the current case, the opposition division rejected an opposition. In appeal, the independent claim is the main request was amended to include a reference to the drawings "wherein the labyrinth defined in the chamber is configured as shown in figures 3 and 6" to overcome objections as to extension of scope of protection, extension beyond the application as filed, insufficiency of disclosure and inventive step. The board discussed the applicability of Rule 43(6) EPC (which provides for an exception as to when references in a claim to the drawings are allowed) and the allowability of the amended claim. 

Monday, 23 March 2015

T 1363/12 - Gold does not erode

The applicant appealed the refusal of the Examining Division due to an alleged non-compliance with Art.123(2) EPC. He filed an appeal, and argued compliance with Art.123(2) EPC in view of a presumed interpretation of how to apply G 2/10 in a newly added paragraph in the November 2014 edition of Guidelines. Did the gold standard for the fundamental test under Article 123(2) EPC change? 

Tuesday, 17 March 2015

T 0117/10 - Tempus fugit

Calendar app

After two appeals and ten years of prosecution the applicant in this software case has now been awarded a grant (well, nearly..). 

The application concerns a calendar application with a novel cache function (a 'moving cache'). 

The application was refused for the first time in 2006. According to the (then) Examining division the implementation of a cache to 'represent one out of several straightforward possibilities from which a person skilled in the art would select, without the exercise of inventive skill, (...)'. In previous letters the cache management scheme was found 'to relate to pure business issues regarding the management of events, and the conflict notification functionality.' Though the latter consideration was not part of the decision.

With an appeal (T 1265/06) the applicant won a remittal on 15.04.2009. The board had found that 
'the examining division did not cite a single prior art document which was related to the use of a
cache in a handheld device' and that  the 'main request can thus be allowed on the condition that the
description is adapted accordingly.' The appeal decision did not include a order to grant though.

The Examining division cited new documents and in a decision on the file, rejected the application on 1.12.2009. In the new refusal, the Examining division argued that 'the application variables (located in the memory) which are loaded through a database fetch already are the cache. It is noted that such a database fetch is implicit to any database access.'

After the new appeal, part of which is reproduced below, the applicant has won a new remittal, this time with an order to grant.

Reasons for the Decision
1. The appeal is admissible and allowable since in the Board's judgement the decision under appeal does not prove to the necessary standard the lack of inventive step and there are no other objections against the application as it stands apparent from the file. This holds for the claims of the main request, the description as amended with the statement of grounds and the drawing as originally filed.

2. The Board agrees with the appellant that the new documents cited do not improve the relevance of the available prior art. In particular, the decision under appeal fails to substantiate the leading argument that use of a "moving cache" in a handheld computing device is prior art. In the preceding decision T 1265/06 (see point 5 of the reasons), the Board stated that "the examining division did not cite a single prior art document which was related to the use of a cache in a handheld device, let alone something like a 'moving cache' for implementing the calendar application on a handheld device". This factual situation has not substantially changed in spite of the efforts of the examining division to produce more relevant prior art.

Friday, 13 March 2015

R 2/14 - Normative concordance solving a normative conflict?


1. The simultaneous entrustment of the Chairman of the Enlarged Board of Appeal with judicial tasks in his capacity as judge appointed in accordance with Article 11(3) EPC and with executive tasks in his capacity as Vice-President Appeals appointed pursuant to Article 11(2) EPC causes an inherent "normative conflict" between the institutional provisions of Article 10(2)(f)and (3) EPC and Article 23(3) EPC, which cannot be completely resolved without changes to the current institutional structure of the European Patent Organisation. However, in the meantime, its impact can and must be mitigated by a continuous balancing of these potentially conflicting duties ("normative concordance") (points 36 to 40).

2. The factual scope of an objection pursuant to Article 24(3) EPC is defined in the statement of grounds of objection initiating the interlocutory proceedings under Article 24(4) EPC. Apart from a subsequent elaboration of said objection by supporting facts, evidence and arguments, the subject-matter of the proceedings, in principle, cannot be extended or changed, whether by new facts or by a new objection (points 56.3 to 56.6).

Summary of Facts and Submissions

I. The patent proprietor (hereinafter: the petitioner) filed a petition for review against decision ... of Technical Board of Appeal ... (hereinafter: the Technical Board of Appeal) dated ... dismissing its appeal against the decision of the opposition division dated ... revoking European patent No. ... . The petitioner based its petition for review on a fundamental violation by the Technical Board of Appeal of its right to be heard (Articles 112a(2)(c) and 113 EPC). In essence, the petition contained the assertion that, when taking the decision under review, the Technical Board of Appeal either had disregarded essential facts or arguments submitted by the petitioner or had based its decision on facts or arguments unknown to the petitioner.

II. The present proceedings relate to the petitioner's objections to all the members of the Enlarged Board of Appeal in its original composition pursuant to Rule 109(2)(a) EPC, consisting of Mr ... as the first and Mr ... second legally qualified members (the second legally qualified member being the chairman) and Mr ... the technically qualified member (hereinafter: the Enlarged Board). The petitioner raised and reasoned these objections in its letter of 8 July 2014 (hereinafter: the statement of grounds of objection).

Tuesday, 10 March 2015

T 1122/11 - Close, closer, closest prior art

This decision shows that it may be useful to appeal a refusal of an application, and show that the initial closest prior art in an inventive step rejection should actually not have been considered to be the closest prior art. Starting from another closest prior art document, the result here was that the appeal board came to different conclusion than the examining division (and in fact agreed with the applicant).
Besides that, for readers that may struggle with the meaning of blood, blood-based sample, blood sample, serum sample, plasma sample, blood-derived sample, etc., this decision clarifies that one can never be too careful in describing in the application as filed what samples are being used, since these terms are certainly not readily exchangeable. The components in blood are multifold and endless different kinds of blood-based samples may possibly be used, according to the board.

Summary of Facts and Submissions
I. The appeal lies from the decision of the Examining Division announced at oral proceedings on 1 December 2010 refusing European patent application No. 07 754 043.3.
Claim 1 of the application as originally filed read as follows:
"1. A method of determining whether a patient will be responsive to a drug or treatment, the method comprising:
obtaining a test spectrum produced by a mass spectrometer from a serum produced from a patient having a disease;
processing the test spectrum to determine a relation to a group of class labeled spectra produced from respective serum from other patients having a same or similar clinical stage disease and known to have responded to or not responded to a drug or treatment; and 
determining, based on the relation of the test spectrum to the group of class labeled spectra, whether the patient will be responsive to the drug or treatment."

Friday, 6 March 2015

T 2130/11: disclaimers and Art. 84 EPC: an inescapable trap?

Disclaimers are always a nice subject for a complicated and expensive appeal procedure and quite often result in "important" case law. In this appeal, which lies from a decision of the Opposition Division, claim 1 of the main request comprises a long disclaimer which tries to disclaim embodiments of a relevant Art. 54(3) prior art document. According to this Board, G1/03 defines that the disclaimer has to fulfill the requirement of Art. 84 EPC. G1/03 defines that the patent owner may not disclaim more than strictly necessary to be novel over the Art. 54(3) document. In order to disclaim all embodiments of the relevant Art. 54(3) prior art document, but not disclaim more than strictly necessary, the patent owner considered it necessary to introduce the long disclaimer. However, this disclaimer has to fulfill Art. 84 EPC.
It seems to be an inescapable trap. How to disclaim not more than strictly necessary when the embodiments as disclosed in the Art. 54(3) document do not fulfill the requirements of the Art. 84 EPC (e.g. clarity and conciseness).
In this decision the Board refused the main request because the disclaimer did not fulfill the requirements of Art. 84 EPC (clarity). However, the Board formulated its decision in such a way that the requirements of G1/03 and Art. 84 EPC are not directly an inescapable trap.

The difficulty for the applicant or patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention. Not even a condition on the allowability of a disclaimer made explicit in a decision of the Enlarged Board as the condition that a "disclaimer should not remove more than is necessary to restore novelty" (G 1/03, point 3 in the reasons, second paragraph, last sentence) may have as a consequence the watering down of one of the requirements of the EPC. The requirements of Article 84 EPC must therefore apply for a disclaimer as for any other feature of a patent claim (see point 2.9).
On the other side, the condition that the disclaimer should not remove more than is necessary to restore novelty should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, point 3 in the reasons, second paragraph, last but one sentence). In this respect situations can be foreseen, in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims (see point 2.10).

Tuesday, 3 March 2015

T 1938/09 Objection for suspicion of partiality


In an interlocutory decision of 25 April 2014 in the Petition for Review case R19/12, the Chairman of the Enlarged Board of Appeal was replaced having been accused of potential partiality in view of his role as Vice President of the EPO and as such subject to the supervisory authority of the President of the EPO under Article 10(2)(f) EPC (R19/12 r.14.1 in conjunction with r.16) [the EPO having decided on the case under appeal].In this new case, an attempt is made to have the chairman of the Board of Appeal replaced on the ground that any member of the Presidium of the boards of appeal could act as a substitute for the Vice President 3 (VP3 - Chairman of the Enlarged Board of Appeal). In view of interlocutory decision R 19/12, a party could also suspect any chairman of a board of appeal of being partial in a pending appeal case in which he or she was involved, if at any time during the pendency of the appeal proceedings he or she had been appointed as a substitute for VP3.The appellant raised several issues and proposed several questions to be referred to the Enlarged Board. Here we will only show the reasoning of the Board.

Reasons for the Decision

1. Where in an admissible appeal an objection under Article 24(3) EPC in respect of a board member is made by one of the parties, the board in its original composition must first decide on the admissibility of the objection (interlocutory decision R 12/09 of 3 December 2009, Reasons for the decision No. 2). An objection is inadmissible if, for example, the party has taken a procedural step while being aware of a reason for objection, or bases the objection on the nationality of the board member (Article 24(3), second and third sentences, EPC). Furthermore, the objection must be sufficiently substantiated in order to be admissible (R 12/09, Reasons for the decision No. 2). 

2. The board in its original composition considered the objection of suspected partiality with respect to the Chairman to be admissible. Therefore, the Chairman was replaced in accordance with Article 24(4) EPC for the decision to be taken on the objection. 

3. The EPC does not prescribe how the board in its alternate composition has to conduct proceedings under Article 24(4) EPC, but Article 3(2) RPBA states that the member concerned shall be invited to present his comments as to whether there is a reason for exclusion. This provision requires that the member objected to must be given an opportunity to present his comments and thus safeguards the member's right to be heard with respect to the objection (Münchner Gemeinschaftskommentar, Art. 24, Rdn. 46; see also Benkard, EPÜ, 2. Auflage, Art 24 Rdn. 26, Singer/Stauder, EPÜ 6. Auflage, Art. 24 Rdn. 16).