Friday, 30 October 2015

T 2230/10 - Linguistic in nature

In this opposition appeal, the applicant appealed against the decision of the Examining Division refusing European patent application as contravening i.a. Articles 52(1) and 56 EPC.

In the appeal, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of the main request (or on the basis of the auxiliary requests).

Claim 1 of the main request reads as follows:

"A method of enabling a user to query an electronic document base, the method comprising the steps of:
- allowing a user to enter query words;
- generating one or more additional keywords based on a profile of the user; and
- searching in an electronic document base for documents that match the combination of query words and additional keywords,
characterized by further comprising the steps of:
- generating a set of concept keywords based on the results of the search; and
- storing the set of concept keywords in a dynamic part of the profile of the user."

The main issue in this appeal is whether the characterizing portion is of technical nature and thus has a technical effect. In its preliminary opinion, the Board appeared to be skeptical.

Tuesday, 27 October 2015

T 0970/12 - Yet another grant of re-establishment of right

This is another example where the Board of Appeal granted re-establishment of rights. Under very extraordinary circumstances and a combination of the Christmas and New years holidays, a sudden death of a close relative of the representative and the presence in the office of a trainee that did not know the correct procedures, the date for filing the Notice of Appeal was missed. The Board did not make much fuss and granted the re-establishment of rights.

Summary of Facts and Submissions
I. The present appeal lies from a decision of the examining division refusing European patent application No. 09166600.8, published as EP 2111855, under Article 97(2) EPC. The application was filed as a divisional application of European patent application No. 07007272.3, published as EP 1847256 (parent application).

Friday, 23 October 2015

T 1171/13: the assistant forgot to fax the statement of grounds of appeal

The Appellant (opponent) filed a request for re-establishment of rights because the assistant of the appellant's representative forgot to fax the statement of grounds of appeal on time while the representative had his holidays. The respondent (patent proprietor) argued that the system of the representative lacks cross-checks and, thus, that the system is not sufficient for showing all due care. The deadline/reminder for submitting the statement of the grounds of appeal was deleted after the representative indicated in the system that he had completed his tasks. The Board is of the opinion that, based on case law, the existing of such cross-checks is not relevant when the error only concerns forgetting to submit the statement to the EPO on time while the statement was ready on time. It seems that the system of registering deadlines and generating reminders is necessary to remind the representative to perform his task on time. On the contrary, it seems not to be necessary to use such a system for reminding the assistant to perform her task on time when it concerns an isolated mistake in a normally well-functioning system and when the assistant is well-trained, experienced, thoroughly component and well-instructed how to handle the letter drafted by the representative. I think that, for example, the Dutch Patent Office will require in such a case that the assistant also uses the system of generating reminders for submitting the letter on time.

Tuesday, 20 October 2015

T 1020/15 - Four substantial procedural violations

In examination appeal after a refusal due to an alleged lack of novelty, lack of inventive step and lack of clarity, the decision to refuse was under scrutiny as, among others, not (sufficiently) reasoned. The Board of Appeal identified four substantial procedural violations: comments from the applicant not taken into account (r.1.2.3), not sufficiently substantiated / no reasons given (r.1.2.4; r.1.3; r.1.4), Guidelines not followed (r.1.2.3, r.1.2.6, r.1.3), and interlocutory revision not granted (r.1.11). Further, common general knowledge was not acknowledged (r.1.10.1) which had a major impact on the assessment of patentability. The decision also shows (again) that also "decisions according to the state of the file" need to be as well reasoned as other decisions.

Saturday, 17 October 2015

J 2/14 Stay of proceedings – Fighting about beer dispensers

In two related cases a third party had requested suspension of proceeding under Art.61(1) [after entitlement proceedings had been started in Belgium]. Three years later the Belgian proceedings had not progressed. The Legal Division refused applicant’s request for resumption of the proceedings, which was already requested at the start of the suspension. The Board of Appeal summarizes that proceedings may be resumed at any moment. In this case the Board concludes that the third party had lost interest in the Belgian court proceedings and decided to resume grant proceedings before the EPO.

Tuesday, 13 October 2015

T 2249/10 - Lack of sufficiency for combination of parameters

The  polyethylene composition in Claim 24 in this opposition appeal is defined by a combination of parameters. Claim 24 according to the main request reads (simplified and formatted)

An injection moulded pipe fitting comprising a polyethylene composition (...)
- the flow rate ratio FRR21/5 of the polyethylene composition (...)  is within the range of 15-28
- the melt flow rate MFR5/190°C of the polyethylene composition (...) is within the range of 0.5-1.1 g/10 min, 
- the composition has a shear thinning index (SHI) (...) within the range of 10-60 (...)

The proprietor had successfully argued that  the flow rate ratio and melt flow ratio ranges do not imply a shear thinning index within the claimed range. The application gives two examples 1 and 2 which do have the required parameters. Unfortunately, the board does not see how the preparation of these examples differs from that of the comparative examples.

The claim is rejected for lack of sufficiency.

Reasons for the Decision
1. The appeal is admissible.

Friday, 9 October 2015

T 1021/11 - Two independent claims for same medical use

In this examination appeal, the main request comprises two independent claims for the same medical indication of the same substance, one claim drafted in the Swiss-type format (use of substance X for the manufacture of a medicament for the treatment of disease Y) and the other claim following the provisions in Article 54(5) EPC (substance X for use in the treatment of disease Y).

In a telephone conversation with the rapporteur, the applicant was invited to comment on the presence of two independent claims for the same medical use in the same set of claims in this request.

The applicant commented that he has a legitimate interest to pursue both claim types in one set because determining the scope of those claims in potential infringement proceedings was a matter for national courts, as confirmed in decision G 02/08. 

In addition, both claim types were deemed allowable by the applicant since the patent application was pending when G 02/08 was issued (and thus the Swiss-type format was allowable) while the transitional provisions concerning the revised Convention Article 54(5) EPC applied to the present application.

Tuesday, 6 October 2015

T 0083/05 - Broccoli III the final

This decision concerns the patent application directed to a broccoli plant with elevated levels of anticarcinogenic glucosinolate derivatives, that was the result of crossing different known broccoli plants and using genetic markers that indicated elevated levels of such glucosinolate derivatives. It is the final of a long lasting case going through two rounds of Enlarged Board of Appeal decisions: Broccoli I (G2/07) and Broccoli II (G2/13, case law blog: here). See also the Tomatoes I and II decisions that concerned similar issues and that were co-decided by the Enlarged Board. 
In this particular decision (which was named Broccoli III) the Board of Appeal reacts to the ruling of the Enlarged Board in G2/13 and of course adapted to that ruling by finding that the claims directed to 'an edible Brassica plant produced according to a method for the production of Brassica oleracea with... etc.'  fulfills the requirements of the EPC. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts. There is nothing unexpected about this particular decision, but it is important because it generated such important case law.

Smmary of Facts and Submissions
I. Both opponent 01 (appellant I) and opponent 02 (appellant II) filed appeals against the interlocutory decision of the opposition division maintaining European patent No. 1 069 819 in amended form.
II. The appellants submitted that the patent as amended and the invention to which it related did not meet the requirements of the EPC. They relied in particular on the opposition grounds of added subject-matter, lack of enabling disclosure, lack of novelty, lack of inventive step and that the subject-matter of the method claims was not patentable pursuant to Article 53(b) EPC.
III. During the first oral proceedings before this board (albeit in a different composition), the patent proprietor (respondent) submitted a new main and auxiliary request. Claims 1 to 4 of the main request were directed to a method for the production of Brassica oleracea with elevated levels of particular glucosinolates comprising a number of steps of crossing, selecting and backcrossing.
The other claims of the main request were all independent and read as follows:
"5. An edible Brassica plant produced according to the method of any one of claims 1 to 4.

Friday, 2 October 2015

T 595/11: underpayment of appeal fee and still admissable?

A 20% reduced appeal fee was paid by the Appellant (patent owner) who filed a notice of appeal in Dutch, while the patent owner is a legal person in Switzerland. The EPO communicated the file number to the Appellant and the Respondent (opponent) and indicated that the case was referred to a specific Board without any further comments. Later, when the respondent informed the Board that the Appellant was not entitled to the fee reduction, the Appellant paid the remaining portion of the fee and requested that the EPO to accept the late payment of the full appeal fee through the application of the principle of good faith (according to G2/97: the principle of the protection of legitimate expectations). In this case the Board discusses whether the Appellant could have expected that the EPO checked the entitlement to the fee reduction early enough such that the Appellant could have remedied the Appeal, for example, by paying the full fee on time or by filing a request for re-establishment of rights. In response to arguments of the Respondent, the Board had also to consider whether the consequence of its decision would adversely affect one or more parties to the Appeal if the principle of the protection of legitimate expectations applies to this case.