Tuesday, 30 June 2015

T 1775/12 - Second Oral Proceedings

If an application is granted on a request filed during oral proceedings, does that applicant have a right to second oral proceedings if that request is refused? 

To set the context, I'll summarize the prosecution history. In 2008 this application was filed as one of four divisionals. During prosecution two official communications were sent under art. 94(3), after each of which an amended claim set was filed. In response to a summons for oral proceedings a further amended claim set was filed. During the oral proceedings, an auxiliary request was filed, followed by an amended auxiliary request. The latter was then granted.

After receiving the intention to grant communication (R.71(3)), the applicant files a new request. The new claim set has been broadened with respect to the granted claim set by deleting a feature. In the ensuing correspondence, the applicant request new oral proceedings "as a matter of precaution", however the Examining division now refuses the application without granting a second oral proceeding.

The board of appeal sides with the applicant and finds that his right to be heard was violated. The case is remitted and a second oral proceeding is to be held. It appears however, that the second oral proceedings may be limited to the issue of admissibility.

The board provided the following catchwords:

Friday, 26 June 2015

T 2255/10 - What's the purpose of it all?

This case involves an appeal against the decision of the Examining Division refusing European patent application No. 01 998 993 on the grounds that the claimed subject-matter of the main request and of the first and second auxiliary requests was not clear (Article 84 EPC) and did not involve an inventive step (Articles 52(1) and 56 EPC).


In accordance with the established case law of the Boards of Appeal the closest prior art for assessing inventive step is normally a prior art document disclosing subject-matter conceived for the same purpose as the claimed invention and having the most relevant technical features in common. (Reasons, point 2.2.2, citing T 482/92, Reasons, point 4.1, third paragraph.)
In establishing the closest prior art, the determination of the purpose of the invention is not to be made on the basis of a subjective selection from among statements of purpose which may be set out in the description of the application, without any reference to the invention as defined in the claims. On the contrary, the question to be asked is, what, in the light of the application as a whole, would be achieved by the invention as claimed.
For this reason, statements of purpose must be read in conjunction with the claims. Merely inserting such a statement into the description does not entitle an applicant effectively to "veto" any inventive step objection based on a document which is unrelated to this purpose, if it is not plausible that the invention as claimed would actually achieve the stated purpose. (Reasons, point 2.2.4.)

Wednesday, 24 June 2015

T 2068/11 - The Budapest Treaty, also in far away countries

This decision deals with a lack of sufficiency of disclosure under Art 83 EPC (R 28 EPC 1973 and R 31 EPC 2000) as far as the deposit of microorganisms (in this case a new Lactobacillus delbrueckii strain isolated from Japanese milk) under the Budapest Treaty is concerned. 
A deposit under national law (here: Japan) is insufficient to consider it equivalent to a deposit under the Budapest Treaty, even though R 28 EPC 1973 does not mention or refer to the Budapest Treaty, and even though it does not refer to national laws for incorporation of  the Budapest Treaty. Hence, when converting a deposit under national law to a deposit under the Budapest Treaty, the applicant better makes sure that this conversion takes place before the date of filing of the European patent application. Or even better, deposit the material directly under the Budapest Treaty before the PCT application is filed.
Interestingly, the Board notes that decision T 815/90 is outdated and that the decision therein - to give the applicant the benefit of the doubt - was probably a result due to lack of guidance in 1984 on how to correctly deposit biological material under the Budapest Treaty, which was solved by the issue of the (clear) 1986 guidance.
Summary of Facts and Submissions
I. European patent application No. 05720034.7, filed on 4 March 2005, is based on international patent application PCT/JP2005/003762. It claims priority rights from Japanese patent application No. 2004059912, which was filed on 4 March 2004 and published on 15 September 2005. Entry into the European regional phase took place on 2 October 2006. The European patent application was published on 29 November 2006.
II. The applicant (appellant) filed an appeal against the decision of the examining division to refuse the European patent application. The examining division decided that the main request and the first auxiliary request before it did not meet the requirements of Article 83 EPC in conjunction with Rule 31 EPC (former Rule 28 EPC 1973), and that the second and third auxiliary request did not meet the requirements of Article 83 EPC.

Friday, 19 June 2015

R 6/14 - "The minutes clearly indicate that there were no further requests"

In this petition for review (in German), the appellant (proprietor in opposition appeal against the decision to revoke the patent) argued that his right to be heard on auxiliary requests was violated. The minutes of the oral proceedings indicated that the appellant had withdrawn all requests that were submitted in the written procedure, including the request to maintain the patent as granted. Earlier filed first auxiliary request was maintained as main request. The minutes further indicated that, during further discussion of the factual and legal framework of the appeal, the appellant filed a reformulation of the earlier filed first auxiliary request with handwritten additions, and requested to maintain the patent in amended form according to this "first auxiliary request with handwritten additions", or according to earlier filed aux 4 and aux 7 (current aux 1 and 2) with "the same handwritten additions". All earlier requests were withdrawn. After the chairman asked whether the appellant wanted to filed more requests or remarks, the appellant indicated he did not wish to do so. The chairman subsequently called the debate closed, and, after deliberation, the Board rejected the petition as the claims with the handwritten additions were not prima facie clear. The written decision indicated that the Board exercised its discretion under Art 12(4) and 13(1) RPBA to not admit any of the lastly submitted request into the procedure, so that no requests were pending.

In the petition for review, the appellant submitted that his right to be heard as to the exact formulation of the claims of aux 4 and aux 7 with 
"the same handwritten additions" was violated, and that the decision was based on an indication about the direction into which the actual amendments would be directed, but that no concrete claim formulation had been submitted yet as reformulations of aux 4 and aux 7 with "the same handwritten additions". The appellant further submitted, in response to a communication of the Enlarged Board, that the minutes did not contain all details as to how the dialogue between the appellant and the Board had taken place.

The Enlarged Board concluded, in a 3-member composition, that the petition was not clearly not inadmissible, but was clearly not allowable, as the minutes clearly indicated what the appellant's request were and that the appellant has no further requests (reason 5-6 and 8), and because the appellant had not immediately challenged the accurateness of the minutes after its notification (reason 7 and 11).

The request for revision was rejected.

Tuesday, 16 June 2015

T 0275/11: maximum objectivity by the persons conducting the tests?

In this opposition appeal the appellant (patent proprietor) filed results from comparative tests to prove that the "invention" has an advantageous effect. These results were filed to support the inventive step defense that was based on the problem of "providing a better composition for bleaching and/or highlighting keratin fibers [hair]". The Board of Appeal discusses in the decision whether the presented results are based on maximum objectivity. In the decision you can read whether the tests should have a sort of scientific basis or not.

Summary of Facts and Submissions 

III. The decision under appeal was based on the claims according to the Main Request and Auxiliary Requests 1 and 2. The wording of independent claim 1 of the Main Request read as follows:
"1. Water free composition for bleaching and/or highlighting keratin fibres especially human hair based on at least one compound with bleaching and/or highlighting effect characterized in that it comprises at least one dialkyl carbonate selected from di(caprylyl) carbonate and di(ethylhexyl) carbonate, and a cationic polymer."

V. With its statement of the grounds for appeal the Appellant defended the patent in suit on the basis of the same requests on which the decision under appeal was based. The Appellant stated that starting from document (1a) as closest state of the art the subject-matter of claim 1 of the Main Request involved an inventive step. As demonstrated with a further comparative Example described in the Appellant's submission the claimed compositions provided improved bleaching and conditioning effects on hair. From the prior art the skilled person had no incentive to use the claimed dialkyl carbonates and a cationic polymer in order to achieve these improvements. Further, document (2) did not refer to bleaching compositions, but only to hair conditioning compositions and would, therefore, not be considered by a skilled person when looking for improving the bleaching and conditioning effects on hair of hair bleaching and/or highlighting compositions.
With regard to inventive step the Respondent brought forward that the comparative Example referred to in the statement of grounds was not suitable to demonstrate any improvement over the closest prior art document (1a). The Appellant did not provide any information on the qualification of the persons who evaluated the test results. The evaluation of the Appellant, which merely specified that the properties were "very much improved", "much better" and "excellently" cannot be verified and have to be disregarded. The objective problem to be solved could only be seen in providing alternative bleaching and/or highlighting compositions. The solution as proposed by the patent in suit was, however, known already from document (2).
Reasons for the Decision 
Main Request 

3. Inventive step (Article 56 EPC)
3.1 The subject-matter of claim 1 relates to a bleaching and/or highlighting composition for keratin fibres, which effects mild bleaching and good conditioning on hair. A similar composition is disclosed in document (1a), which was accepted as representing the closest state of the art by the Opposition Division and by both parties to the appeal proceedings.

3.2 Document (1a) discloses bleaching compositions for keratin fibres, which effect mild bleaching and provide good conditioning of the treated hair. In the specific embodiment disclosed in Example 1 a water free bleaching cream is prepared, which comprised inter alia 10% by weight of a di(alkyl) carbonate(12,14), 35% by weight of potassium persulfate as bleaching compound and hydroxyethylcellulose as polymer. The cream was in the form of a water free suspension. According to the written statements the parties agreed on this teaching of document (1a). This was not disputed by the parties.

3.3 According to the Appellant the problem to be solved starting from document (1a) consisted in providing a bleaching composition with improved bleaching and conditioning effects on hair.

3.4 As a solution to this problem the patent in suit proposes the compositions according to claim 1, wherein di(ethylhexyl) carbonate or di(caprylyl) carbonate were used as di(alkyl) carbonates and a cationic polymer is present.

3.5 In order to demonstrate that the problem as stated in paragraph 3.3 supra has been successfully solved the Appellant referred to two comparative Examples:

3.5.1 The Appellant argued that the comparative Example referred to in the patent specification in paragraph [0072] showed that the composition according to the invention provides improved bleaching and conditioning effects.
However, the comparative Example of paragraph [0072] does not use any di(alkyl) carbonate and, thus, does not represent a fair comparison with the closest state of the art. Any effects that could be derived from this comparative Example cannot, therefore, support the success of the proposed solution.

3.5.2 In its statement of grounds for appeal the Appellant referred to a further comparative Example, which was based on Example 1 of document (1a). In order to modify this composition to mimic a composition according to the claims of the patent in suit the di(alkyl) carbonate(12,14) of the prior art composition has been replaced by an equal amount of di(ethylhexyl) carbonate and 0.5% by weight of the hydroxyethylcellulose polymer has been replaced by 0.5% by weight of Polyquaternium-10 as a cationic polymer. The comparison was done according to the procedure indicated in the patent in suit, paragraph [0073], using ten volunteers. In view of the results obtained the Appellant stated that in 60% of the cases a "slightly lighter" bleaching effect was obtained with the composition according to the invention. In 80% of the cases the hair treated with the claimed composition "showed a much better combability, hair had very much improved elasticity and hair felt excellently natural and in the remaining 20% of the cases the aforementioned differences were present but at a lower level". Further, in was observed that none of the cases of hair bleached with the composition of document (1a) was found to have improved properties compared to hair treated with the composition according to the present invention.
However, the properties of the treated hair as regards the bleaching were obtained by inspection by eye and conditioning effects and were apparently determined by touching or combing the treated hair. Since this kind of evaluation represents inherently subjective evidence the comparison has to be made under conditions that ensure maximum objectivity on the part on the persons conducting the tests. It is, therefore, desirable to show that the tests have been carried out under "blind" conditions to avoid any suspicion of bias. Further, the testers should indicate the results of their inspection in a detailed manner - either by a detailed report or according to a suitable scoring system - in order to allow the Board and the other parties to evaluate the different opinions objectively (see T702/99, points 2. to 4. of the Reasons).
In the present case the Appellant has not given any information on the identity of the persons evaluating the quality of the treated hair, nor their relationship to the Appellant. No indication was given on the conditions under which these tests were run. Further, in its statement of grounds of appeal the Appellant only gave a summary of the test results, which can assist the Board in its evaluation of the experimental evidence, but which cannot substitute for the detailed information on the individual test results presented either in terms of written statements of each testing person or in terms of tables containing the individual scores given by these testers. Therefore, the Respondent and the Board did not have the information to objectively assess and evaluate the experimental evidence referred to by the Appellant.
In the absence of any information on how this comparative test has been executed and in the absence of the individual test results, any effects referred to by the Appellant have to be disregarded.

3.5.3 Since none of the two comparative tests referred to by the Appellant can support the alleged improvements over the closest prior art, the technical problem as stated in paragraph 3.3 supra above is regarded as having not been successfully solved.

3.6 As a consequence, the technical problem as stated in paragraph 3.3 supra has to be reformulated as to provide an alternative bleaching and/or highlighting composition.

3.7 In order to provide an alternative the skilled person would turn to document (2). This document relates to hair conditioning compositions which are also used for bleaching compositions (claim 7). He knew from this document that cationic polymers and di(alkyl) carbonates, such as di(octyl) carbonate (identical to di(caprylyl) carbonate) are suitable additives to provide hair with improved conditioning effects (see claim 6; page 5, lines 21 to 28; page 3, lines 25 to 29) in compositions for hair treatment, including hair bleaching compositions. The skilled person would thus have arrived at the subject-matter of claim 1 without having to exercise any inventive skill.
The Appellant brought forward that the skilled person when looking for an alternative bleaching and/or highlighting composition would not have considered document (2), since this document does not refer to water free compositions and does only relate to the problem of hair conditioning.
However, document (2) does not only refer to water containing compositions, but explicitly states that the compositions may also be in the form of water free oils, gels, aerosols of sticks (see page 2, lines 22 to 25). Further, the document clearly states that these compositions may be used in bleaching compositions (see claim 6). The fact that one focus of document (2) is the conditioning effect provided by the hair treatment compositions is not sufficient to deter the skilled person from considering its teaching, in particular, since the patent in suit itself aims inter alia at providing improved conditioning effects to the hair.
Therefore, this argument of the Appellant cannot succeed.

3.8 Therefore, the Board concludes that the subject-matter of claim 1 according to the Main Request does not involve an inventive step in the sense of Article 56 EPC.

Auxiliary Requests 1 and 2


For these reasons it is decided that:
The appeal is dismissed.
This decision has European Case Law Identifier: ECLI:EP:BA:2015:T027511.20150414. The file wrapper can be found here. Photo "wigs" by Steve N obtained via Flickr under CC BY-ND 2.0 license (no changes made).

Friday, 12 June 2015

R 1/14 - Too late raising of a procedural objection

This is a petition for review against a decision of the board of appeal in an opposition case. The appellant requests the representative to request postponement of the oral proceedings, partly based on an explosion which has happened at the site of the appellant.
The board refused the request. The representative did attend the oral proceedings. At the end of the proceedings he filed an objection in respect of procedural defects: 
"The refusal of the request for postponement of oral proceedings in view of the explosion in the proprietor's facility and the refusal to admit documents E55, E56 and E60 into the proceedings, although filed at least four weeks before the oral proceedings represent a fundamental violation of our right to be heard and constitutes a procedural defect."
The board dismissed this objection raised under R.106 EPC.
The appellant filed a petition for review. The petition was found inadmissible since the objection was not raised in good time. The board was in no position to remedy the issue of postponement once the proceedings were more or less over.

Tuesday, 9 June 2015

R 16/13 - Surprise!

This is a Petition for review against a decision of a board of appeal in an opposition case. Although such petitions are rarely successful, here the patent proprietor convinced the Enlarged Board of Appeal that its right to be heard was violated.

Claim 1 of the main request, refused by the Board of Appeal, concerned micronised crystalline tiotropium bromide characterized by the following parameters: particle size, specific surface area value, specific heat of solution and water content.

Early in the procedure the applicant had filed document D11A with comparative test results. In its decision the board of appeal considered this document to be insufficient to prove the advantages of the claimed substance because the parameters used in the claim were not specified in document D11A. 

In its decision the board of appeal considered document D25 to represent the closest state of the art and reformulated the objective technical problem to produce a different micronised crystalline tiotropium bromide. This task was found not inventive. 

The decisive reason [maßgebliche Grund] that D11A does not give complete parameter values, was never an issue in the entire procedure preceding the decision. Accordingly Enlarged board sets aside the appeal decision.

In the meantime, the board of appeal has issued a new summons for oral proceedings in appeal case T 379/10.

Friday, 5 June 2015

T 445/08 - True intentions to be confirmed

This appeal is the referring case of G 1/12, and shows the Board applying the answers of G 1/12.

  • If the notice of appeal is to be considered in the context of the file history, the true intention needs to be confirmed by external facts and evidence at least to prevent that requirements such as those of Article 107 EPC be circumvented (point 9).
  • In applying Rule 139 EPC to a party's request to correct a mistake in the notice of appeal in respect of the identity of the appellant, the principle of legal certainly needs to be taken into consideration (point 10).
Background / Summary of Facts and Submissions
I. The appeal lies from the decision of the Opposition Division, posted on 28 December 2007, revoking European patent No 1140330.

II. The (registered) patent owner was Zenon Technology Partnership, The Corporation Trust Company Corporation Trust Centre 1209 Orange Street, Wilmington, DE 19801/US (the patent had been acquired from Zenon Environmental Inc, 845 Harrington Court Burlington Ontario L7N 3P3 Canada, by an assignment registered by the EPO on 30 May 2006).

III. A notice of appeal, dated 8 February 2008 but received on 15 February 2008, was filed, reading:

"European Patent No 1140330 (99955620.2-062)

Zenon Technology Partnership

We hereby give Notice of Appeal (underlined by the Appellant) against the decision of the Examination Division [sic] dated 28 December 2007 to refuse the above patent application [sic]. Cancellation of the decision in its entirety is requested so that the patent may be maintained?.

The name, address and nationality of the Appellant is (emphasis by the Board):


845 Harrington Court


Ontario L7N 3P3


ZENON ENVIRONMENTAL INC is a Canadian Corporation.

In the event that the Board of Appeal wishes to make a decision detrimental to the Applicant's [sic] rights at any time, it is hereby requested that Oral Proceedings be held to discuss the matter."

The procedural steps after the filing of the notice of appeal

IV. On a communication dated 7 March 2008 notifying the parties of the commencement of the appeal proceedings, the Registrar of the Board added the following handwritten statement: "the appeal was filed in the name of ZENON ENVIRONMENTAL INC (underlined by the Registrar). The patentee is here registered as ZENON TECHNOLOGY PARTNERSHIP (underlined by the Registrar). Therefore the patentee is asked to clarify the situation."

V. The Appellant and the Respondent both reacted with letters dated 13 March 2008.

The Appellant wrote "... the appeal should of course have been filed in the name of the current proprietor, i.e. Zenon Technology Partnership (underlined by the Appellant). I apologise for the confusion and respectfully request the correction".

The Respondent requested that the appeal be rejected as inadmissible, as it had been lodged by a legal entity other than the adversely affected (entitled) party.