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T 1791/12: referall to Enlarged Board of Appeal as a last resort



Now and then, when I read a decision of a Board of Appeal, I get a sad feeling because the patent owner tries everything to maintain his patent or to maintain it in amended form and it seems that none of his argument are convincing and none of his auxiliary requests solve the problems. "Dear Board, my claims are inventive, there are no violations of Art. 123(2) and I have a number of auxiliary requests which should be admitted to the procedure and solve all the problems." And then the answers of the Board are: "No, No, No." Under EPC 1973 a last resort for the patent owner was to request the Board to refer the case to the Enlarged Board of Appeal "in order to assume the uniform application of law". Maybe you can guess the answer to this question.
This appeal extends from a decision of the Opposition Division. The Opponent and the Proprietor filed the appeal. Besides a discussion about novelty, inventive step, an important part of the decision relates to violations of Art. 123(2) and intermediate generalization. In this context, the proprietor defined a question that should be referred to the Enlarged Board of Appeal and its subject relates to intermediate generalizations. 


Summary of Facts and Submissions

(...) 

IV. With letter dated 28 June 2013, the proprietor requested the following question to be referred to the Enlarged Board of Appeal according to Article 112(1)(a) EPC:"What principles apply for judging an intermediate generalization in sense of Art. 123(2) EPC especially in view of the differing interpretations as given in T1906/11 and T0248/12?"

T 1437/10 - Pri, pri, priority


This case concerns an appeal against a decision of the Examining Division to refuse European Patent Application 99943715.5. In its decision, the Examining Division reasoned that the right to priority of the present application was invalid and that, as a consequence, the subject-matter of the main and auxiliary request was not novel over the disclosure of document D1, being published within the priority period.

Of interest is that the priority document is a US provisional application which was filed without claims. At issue in the present appeal is whether the description of the priority document provides a right of priority for the present - relatively broad - independent claim, and in particular, whether later sections of the priority document, which provide various details, limit the general concept described in an earlier section of the priority document.

Summary of Facts and Submissions

(...)

IV. Oral proceedings before the board were held on 12 February 2015.

(...)

IX. The appellant essentially argued as follows:

The priority document was disclosing at least two inventions. The first one being the general design rule for an interleaver of any size N as disclosed in section 2 of the priority document. Other inventions were to be seen in the sections dealing with the details and with the optimisation of the general design rule as disclosed in section 4 and 5 of the priority document, respectively. In section 2 of the priority document, it was explicitly stated that sections 4 and 5 merely were disclosing the details and the optimisation of the broader invention of section 2. Thus, a separate right to priority was existing for the general interleaver design rule of section 2 of the priority document. Hence, claim 1 according to the main request was entitled to the right of priority.

T 0849/11 - Reflection on parameters


This decision shows that one should never think too lightly about the use of parameters in claims. The applicant who chooses to define the scope of the claim by parameters should ensure that a skilled person can easily and unambiguously verify whether he is working inside or outside the scope of the claim, and the applicant should convincingly show that all the methodologies known in the relevant technical field for determining this parameter yield the same result within the appropriate limit of measurement accuracy to fulfill the requirements of Art 84 EPC.


Summary of Facts and Submissions


I. The present appeal lies from the decision of the examining division to refuse European patent application No. EP 03 731 456 for lack of inventive step.
II. With the notice of appeal the appellant (patent applicant) filed a new main request and auxiliary requests 1 and 2.
III. In its communication under Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), the Board expressed its preliminary non-binding opinion and raised objections under Articles 123(2), 84, 83 and 56 EPC. In particular, it was indicated that claim 1 contained several parameters and that no measurement method was present in claim 1, so that the requirements of Article 84 EPC were not met.

T 0887/11: an exception to the prohibition of reformation in peius


I rarely see that the principle of prohibition of reformatio in peius (G 1/99) is discussed in appeal proceeding. In T 0887/11 this is an important point of the discussion between the parties. This appeal extends from a decision of the Opposition Division. The Opposition Division decided that the patent could be maintained with amended claims. The Opponent filed the appeal (appellant)

The main message of G 1/99 was "In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected." It seems to be a fair principle which provides some security to the appellant. After this general principle, the Enlarged Board of Appeal discusses an exception to this principle: " However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision. (...)". 
A first line of reasoning of the Board of Appeal is that the appellant is not in a worse position because a deleted feature in claim 1 of auxiliary request 3A "did not imply any clear structural limitation to the claimed subject-matter". Then the decision becomes a little confusing because, although it seems that there is no reformatio in peius, the Board discusses (most probably for sake of completeness) that the above discussed exception to the principle of prohibition of reformation in peius also applies to this case.

T 1724/10 - Contradictory conclusions not a reasoned statement


The present case concerns an appeal against the decision of the Opposition Division to revoke European patent no. 1 462 952.

The following citations from the decision show the Board dealing with an alleged substantial procedural violation. Namely, the patent proprietor argued that the Opposition Division failed to correctly apply the problem-solution approach, and had failed to consider the right of the patent proprietor to reformulate the objective technical problem in a less ambitious manner. This, according to the patent proprietor, amounted to a violation of the right to be heard and thus constituted a further substantial procedural violation justifying the reimbursement of the appeal fee.

Background / Summary of Facts and Submissions
I. The patent proprietor (appellant) appealed against the decision of the Opposition Division to revoke European patent no. 1 462 952.

II. The opposition had been based on Article 100(a) (lack of novelty and inventive step), Article 100(b) and Article 100(c) EPC.

III. In the contested decision the Opposition Division found, inter alia, that claim 1 of the patent did not have a valid basis in the application as filed (Articles 100(c) and 123(2) EPC), and that the subject-matter of claim 1 did not meet the requirements of Article 56 EPC because a technical problem solved by the method of claim 1 could not be identified. The same objections applied to claim 1 of the first and third auxiliary requests. The subject-matter of the second auxiliary request was found not to comply with Article 56 EPC and to extend the protection conferred by the patent.

(...)

VIII. On 27 January 2015, oral proceedings were held as scheduled before the Board. At the end of the oral proceedings the Chairman announced the Board's decision.

(...)

XI. The appellant's arguments may be summarised as follows:

(Main substantive argumentation omitted)

In summary, the subject-matter of claim 1 was not made obvious by any of the cited documents D6, D11 and D23, or their combinations.

The opposition division stated for the first time during the oral proceedings that the technical problem solved by the invention was speculative and not acceptable as a valid objective technical problem. The fact that the patent proprietor was taken by surprise by this objection and was not given the possibility to file amended claims in response to the Opposition Division's new and surprising argument constituted a substantial procedural violation. Furthermore, the Opposition Division failed to correctly apply the problem-solution approach and, in particular, failed to consider the right of the patent proprietor to reformulate the objective technical problem in a less ambitious manner, as it had been suggested. This amounted to a violation of the right to be heard and thus constituted a further substantial procedural violation justifying the reimbursement of the appeal fee.

Reasons for the Decision
1. The appeal is admissible.

(...)

Reimbursement of the appeal fee

9. The appellant has essentially argued that during the oral proceedings the Opposition Division raised a new argument under Article 100(a) EPC and, in particular, stated for the first time that the technical problem solved by the invention was speculative and not acceptable as a valid objective technical problem. The patent proprietor was allegedly taken by surprise. Furthermore, in the appellant's opinion, the right to be heard was violated because the patent proprietor was not given the possibility to file amended claims in response to the new argument.

9.1 The appellant has further submitted that the Opposition Division failed to correctly apply the problem-solution approach and to consider the patent proprietor's right to reformulate the objective technical problem in a "less ambitious" way.

9.2 In the first paragraph of the section of the contested decision relating to Article 56 EPC, the Opposition Division merely identified the aggregating step and hence also the indexing step based on the aggregating step as novel over an unspecified prior art. From the preceding section concerning Article 54 EPC, it can be assumed that either document D6 or D9 constituted the prior art the Opposition Division intended to refer to. In fact, the minutes (section 6.) of the oral proceedings show that the inventive step discussion had focused on D6.

9.2.1 According to paragraph 18 of the contested decision, the aggregating and indexing steps recited in claim 1 provided the technical effect of different aggregated documents and different search results. The Opposition Division appears to have acknowledged the presence of a technical effect in the form of "different aggregated documents" and "different search results".

9.2.2 Having identified the differences between the prior art and the claimed invention, the Opposition Division concluded that it was not possible to identify a technical problem solved by the method of the application, which could be the basis of an inventive step.

9.2.3 In paragraph 20 of the decision, the Opposition Division summarised the different attempts of the patent proprietor to define a technical problem starting from the closest prior art document and, in particular, the patent proprietor's view that if no other problem could be formulated, one had to define the problem as how to find an alternate solution to the prior art and ask whether the skilled person would arrive from there at the claimed invention.

9.2.4 In reply to the patent proprietor's arguments, the Opposition Division stated in paragraph 21 of the decision that these argumentations were not convincing because it was not possible to consider the proposed solution as an alternative solution to the one found in the prior art firstly because a technical problem could not be identified and secondly because the results provided by the method of the opposed patent and by the method of the prior art were different.

9.2.5 Finally, in paragraph 21 of the contested decision, the Opposition Division reiterated that claim 1 did not meet the requirements of Article 56 EPC because a technical problem solved by the method of claim 1 could not be identified.

9.3 The Board notes that all the above conclusions of the Opposition Division relating to the lack of inventive step are presented in the contested decision without any prior analysis of the allegedly closest prior art document (D6), or of the problem it addresses. It is also not explained why the technical differences between the claimed subject-matter and the closest prior art identified by the Opposition Division did not allow the definition of a technical problem to be solved according to the problem-solution approach (see also point 6.2 above).

9.3.1 Similarly, the Board finds that the Opposition Division did not explain in the contested decision why, in its opinion, a synonymous use of the terms "link" and "reference" was not plausible and consequently the statement "by use of links such as Uniform Resource Locators" in claim 1 offended against Article 123(2) EPC (see point 16 of the contested decision). In particular, the Opposition Division did not provide any reasons for refuting the patent proprietor's arguments.

9.3.2 In the Board's opinion, the juxtaposition of seemingly contradictory conclusions (e.g. acknowledgement of technical differences but no possibility to define a technical problem), presented in the contested decision as apodictically evident and without any factual support, does not constitute a "reasoned decision" within the meaning of Rule 111(2) EPC.

9.4 In accordance with the case law of the boards of appeal (see Case Law of the Boards of Appeal, Seventh Edition, September 2013, IV.E.8), the Board considers that in the present case the failure to provide adequate reasoning in a decision is to be regarded as a substantial procedural violation justifying the reimbursement of the appeal fee.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.

3. The appeal fee is to be reimbursed.

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T172410.20150127. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "Whatever you say ...". by James Jordan obtained via Flickr under CC BY 2.0 license (no changes made).

T 0972/13 - Costly absence


The decision is in German. Here first a short part is roughly translated into English.
The appellant does not turn up at oral proceedings, having announced before 'not to be represented'. Since this left open that the appellant would turn up himself, the responded had to prepare the case an turn up.This contributed to costs being awarded to the respondent. 

The appellant (patentee) has appealed against the decision of the Opposition Division, in which the European patent no. 1,127,712 had been revoked. The appellant and respondent II (Opponent 2) had requested oral proceedings.In the summons to the oral proceedings, the Board gives its preliminary opinion that the appeal of appellant is inadmissible. According to the Board the appeal boils down to the mere assertion that the contested decision is not right, without mentioning the legal or factual reasons why the decision should be repealed. This leaves it to the Board and Respondent to speculate about the extent to which appellant could view the contested decision to be defective. This is exactly what the filing of a statement of grounds should prevent.By letter, the appellant had announced that they would not be represented at the oral proceedings. But such an announcement leaves open the question whether the complainant would not actually be present. In exercising its responsibility for the duty of care to their client, the representative of the Respondent II was therefore forced to prepare and be present at the hearing for the simple reason that the appellant might still turn up. Reasons for the Decision1. AdmissibilityThe appellant has not responded to the preliminary opinion of the Board an did not participate in the oral proceedings.Even after a review of their preliminary opinion, the Board sees no reason to deviate from it. Since the statement of grounds does not state the legal nor the factual grounds for overturning the decision, it does not meet the requirements of Rule 99 (2) EPC and is in accordance with Rule 101 (1) EPC to be rejected as inadmissible.2. Request for ReimbursementAccording to Article 104 (1) EPC in opposition proceedings each party bears their won costs. This is also true in opposition appeal proceedings. However, reimbursement would be considered, if it is equitable. This is the case where a party has been lacking in the necessary care and consideration in the process procedure and therefore has caused the other party costs that could easily have been avoided without compromising their own legal position.By letter dated 12 December 2014, the appellant complainant has announced that they would not be represented at the hearing on 28 January 2015. Such announcement leaves open, however, whether the complainant herself will actually be present or holds open still to appear.In exercising its responsibility for the duty of care to their client the representatives of the Respondent II have been thus forced to prepare and to be present at the hearing, to avoid the case that the appellant would still occur.To prevent this, the appellant would have been able to withdraw their request for oral proceedings without further ado, what she did not do. Thus, it is equitable that the appellant bears the costs of respondent II  incurred by participating in the hearing (Article 104 (1) EPC).

For these reasons it is decided:1. The appeal is rejected as inadmissible.2. The appellant shall bear the costs incurred by Respondent II by participating in the oral proceedings of January 28, 2015

In the original German text:

T 0556/11 - In any shape or form

Defining a shape without functional language can be hard

 The  Examining division had rejected a claim to a vaginal speculum as lacking clarity because its shape was only defined in terms of functional features. The Board of Appeal agrees with this assessment; This claim ought to include further structural features. The argumentation seems almost interchangeable with one for an objection based on a missing essential feature (which would be based on the same Article 84 EPC).


Claim 1 of the main request reads as follows:
"1. Vaginal speculum (1) comprising two spoon blades (3,4) which form a spoon blade assembly and:
- are intended for introduction into the vagina (25);
- are elongated in a longitudinal direction; and
- are located alongside and opposite one another;
the one spoon blade (4) at one end of the spoon blade assembly being provided with two bodies (6) which together with said one spoon blade form a housing part having a U-shaped cross section and other spoon blade (3) being accommodated between said bodies (6) such that it is hingeable with respect to the one spoon blade (4), wherein an exterior of the housing part having the U-shaped cross section (4,6) is shaped for accommodating said housing part having the U-shaped cross section in the mouth of the vagina (25) after the spoon blades (3,4) have been introduced into the vagina (25); and for holding said housing part having the U-shaped cross section, at least when the spoon blades (3,4) are in a position in which they have been brought together, in place in the mouth of the vagina (25) by the ring (50) of the muscle tissue (30,31) extending around, the mouth of the vagina."

Reasons for the Decision

J 14/14 - Notification of a communication

Appeal against a decision of the Receiving Section, whereby an EP (divisional) application  was rejected on the ground that the applicant had failed to correct a deficiency noted by the Receiving Section which had been sent to the appellant on 5 December 2013 pursuant to Rule 58 EPC. However, the appellant's representative -based in London- submitted that did not receive said communication. Aproof of delivery in respect of the communication, the EPO gave a letter from Deutsche Post which refered to a registered letter sent to the representative's address in "London / Grossbritannien" on 5 December 2013. The letter from Deutsche Post states that "das ausländische Postunternehmen teilt uns jetzt mit, dass die Nachforschungen nach Ihrer Sendung abgeschlossen sind.Die Sendung wurde am 10.12.2013 an einen Empfangsberechtigten ausgeliefert." The Legal Board of Appeal had to decide on whether the communication had been validly notified or not.