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G 1/14 Inadmissible referral (late appeal - deemed not filed or inadmissible)

In G 1/14 the Enlarged Board of Appeal (very exceptionally) decided that the referral was inadmissible.

The board in T 1553/13 (dealt with in G 1/14) and another board in T 2017/12 (dealt with in G 2/14) referred the question (summary): "Where a notice of appeal is filed and/or the appeal fee paid after expiry of the time limit of Article 108 EPC, first sentence, is this appeal inadmissible or deemed not to have been filed?"

The case G 2/14 was closed as a consequence of the case being deemed withdrawn caused by non-payment of a renewal fee.

In T 1553/13 the Board concluded that the notice of appeal was filed too late and the appeal fee was paid too late. The decision to refuse the patent application was handed over by the EPO to the postal service UPS on 25 April 2013. The shipment was received at the office of the representative on the next day 26 April 2013 by a person named "Weber" according to the "Tracking Information"of UPS. On 7 May 2013 the representative signed the acknowledgment of receipt (EPA Form 2936) and sent it back to the EPO via fax on 8 May 2013. The notice of appeal was filed on 8 July 2013 (Monday) and the appeal fee paid on the same day. The representative held that R.126(2) did not apply and that the time limit was triggered by the actual receipt. The Board held that R.126(1) and (2) did apply and that the appeal was filed after the 10 days of R.126(2). The Board referred then the issue of whether the appeal should be seen as ‘not filed’ or as ‘inadmissible’.

In the proceedings before the Enlarged Board, an ‘amicus curae’ letter pointed out that the notification of the decision underlying the appeal was not notified as prescribed in R.126(1) valid at that moment. UPS was not a post service and the tracking information was no advice of delivery. R.126(1) was amended entering into force at 1 April 2015 to allow the EPO to use UPS. As a consequence, notification took place at the moment the representative was aware (7 May). The appeal was filed in time (using the automatic extension of the weekend).

The Enlarged Board fully agrees. Thus, the referring Board of appeal erred and the appeal was correctly filed. As a consequence, the necessity for answering the referred question is gone [Art.112(1)(a) implies that a decision must be required].

The Enlarged wanted to emphasize the ‘necessity criterion’ and came up with the following headnotes:

1. Befasst eine Beschwerdekammer die Große Beschwerdekammer mit einer Vorlagefrage nach Artikel 112 (1) a) EPU, so obliegt es vorrangig der vorlegenden Beschwerdekammer, in der Vorlageentscheidung darzulegen, dass und warum sie eine Entscheidung der Großen Beschwerdekammer über die Vorlagefrage für erforderlich zur Entscheidung in dem vor ihr anhängigen Beschwerdeverfahren erachtet. Dies ergibt sich auch aus Artikel 22 (2) Satz 2 VOBK, wonach die vorlegende Beschwerdekammer in der Vorlageentscheidung den Zusammenhang der vorgelegten Fragen darzulegen hat.

2. In jedem Fall hat die Große Beschwerdekammer zu prüfen, ob eine Vorlage die Voraussetzungen von Artikel 112 (1) a) EPÜ (einschließlich des Erforderlichkeitskriteriums) erfüllt und damit zulässig ist.

3. Beruht die Vorlage auf einer offensichtlich falschen Anwendung einer Rechtsvorschrift, mit der Folge, dass bei richtiger Rechtsanwendung dieser Vorschrift eine Beantwortung der Vorlagefrage durch die Große Beschwerdekammer nicht mehr als erforderlich für die Entscheidung im Beschwerdeverfahren erscheint, ist sie allerdings als unzulässig zu werten.

T 978/15 - Intermediate generalization in a multipurpose fabric

This Examination appeal centers on an intermediate generalization. The main claim concerns a 'multipurpose fabric suitable for home textile, upholstery & apparel textile application'. The fabric had been further limited to have a "cover factor of 14"; this feature was taken from example 2 of the description.

In the statement of grounds the applicant admits that this is an intermediate generalization but also points out that intermediate generalization are nevertheless allowed under some conditions. Unfortunately, the board is not convinced that those conditions are met in the present case.

Reasons for the Decision

T 0893/13 - Reimbursement of earlier appeal fee

This appeal follows an earlier appeal against the decision of the examination division to refuse the patent application based on a.o. a lack of clarity. In the earlier appeal, the examining division rectified its decision under Article 109(1) EPC and continued examination, only to decide (again) that the application did not comply with a.o. Article 84 EPC.

In the first appeal, the appellant did not request reimbursement of the first appeal fee, nor did the examining division order such reimbursement of its own motion. However, after rectifi­ca­­tion, the appellant did request reimbursement of the first appeal fee. In the present appeal, the appellant now (again) requests that the fee for the first appeal be reimbursed.

T 0740/15 - Two substantial procedural violations in one case

It may seem awkward that an opponent wants to continue an opposition even though the opposed patent has lapsed for all designated contracting states during opposition. However, in this particular case, the proprietor did not explicitly surrender his rights in the designated contracting states. Hence, the opponent could not be 100% certain that the proprietor would not try to restore any rights in any of the states as soon as the opposition proceedings would have been terminated. As a result the opponent expressed the wish to continue with the opposition and requested oral proceedings before any decision was reached. Nevertheless, the opposition division terminated the proceedings. This, as the Board in this case clearly indicates, is a substantial procedural violation and is an 'infringement' of Art 116(1) EPC. One may wonder why the opposition division came to their decision although the right to oral proceedings (when requested) is so firmly established in the EPC and the case law of the Boards of Appeal. Even worse, their issued decision did not contain any reasoning, which is also in breach with Rule 111(2) EPC: decisions that are open to appeal should be reasoned. Two substantial procedural violations justifying reimbursement of the appeal fee, in one single case.
Summary of Facts and Submissions
I. The appeal by the Opponent lies from the decision of the Opposition Division dated 18 February 2015 to discontinue the opposition proceedings against European patent No. 2 067 820 (Form 2351).
II. An Opposition had been filed against the patent on 27 January 2012 on the grounds of lack of sufficiency, novelty and inventive step. Oral proceedings were requested as an auxiliary measure.
III. The proprietor responded with a letter dated 17 September 2012, requesting to maintain the patent in amended form according to a new main request or two auxiliary requests filed therewith.
IV. On 11 August 2014, a communication pursuant to Rule 84(1) EPC was sent by the opposition division stating that the opposed patent had been surrendered or lapsed with effect for all the designated contracting states. In the communication it was stated that "the opposition proceedings may be continued at the request of the opponent, provided that within two months from notification of this communication a request is so filed." The communication further advised that the opposition proceedings would be discontinued if no such request was filed in due time "and the state of the files give no grounds for the proceedings to be continued by the European Patent Office".
V. The opponent filed a response to the communication on 15 September 2014, in which it was requested that the opposition proceedings "be continued". It was also stated that "for the avoidance of doubt, the Opponent maintains its previous arguments against the Patent and its request for oral proceedings.".
VI. On 18 February 2015, the opposition division issued the decision to discontinue the opposition proceedings.

T 2068/14: a right to oral proceedings by video conferencing?

photo AT&T picturephone
AT&T picturephone
During the examination and during the appeal procedure, the appellant (applicant) requested oral proceedings held by video conferencing. The examining division refused oral proceeding by video conferencing. In the appeal procedure, the appellant argues that refusing the oral proceeding by video conferencing is a substantial procedural violation. Not long before the scheduled oral proceedings of the appeal procedure, the appellant requested a re-scheduling of the oral proceedings of the appeal procedure and requested oral proceedings to be held by video conferencing. Also, with respect to "does the applicant have the right to oral proceedings by video conferencing", the appellant requested a referral of three questions to the Enlarged Boards of Appeal. It seems that the appellant finds it unfair that applicants who have appointed a professional representative who is not located close to Munich or The Hague have to bear higher costs for attending the oral proceedings. This decision of the Board discusses whether (and why) one has (or has not) the right to oral proceedings by video conferencing.

R 2/15 - Withdrawal as chairman

The petition for review concerns an interlocutory decision, taken by Board of Appeal, rejecting the petitioner's objection of suspected partiality raised under Article 24(3) EPC against its chairman. The chairman also gave notice himself that he should not take part in the present case pursuant to Article 24(2) EPC.

T 0895/13 Insufficient disclosure for a medicine

The Board, in an opposition appeal, examines the requirements for disclosure of a medicament. It confirms that the principle defined in T 609/02, for a Swiss type of claim, also apply to a further medical use claim defined under Art.54(5) EPC2000. Applying this principle, the Board concludes that the invention is insufficiently disclosed (Art.83 EPC).
In doing so, the Board also makes clear that the assessment of the technical effect provided by the claimed subject-matter was to be made in the context of the assessment of sufficiency of disclosure and not under inventive step as was done by the Opposition Division.

J 22/14 - Back and forth in the register

Can the legal division correct a transfer recorded in the register, if it later doubts the transfer was legal? In this unusual set of circumstances a transfer of a patent application is contested by the parties. We will refer to the parties as the appellant and the respondent.

Originally, a direct European patent application was filed in the name of the respondent.  About 5 years later, the same representative filed a request to transfer the application from the name of the respondent to that of the appellant. As proof of the transfer selected pages of an Assignment Agreement were filed. 

Just over a year later, a request is filed with the legal division to revert the transfer. It is argued that filing only selected pages of the agreement is not sufficient and that authorizations were both lacking and not substantiated. The request is accompanied with an injunction of a Kantonsgerichts in Zug that purportedly proved that the agreement was signed for the respondent by someone who was not authorized to do so.

The legal division reverts the transfer because there is no national (court) decision that the transfer was valid.  (Bis zum Nachweis einer entsprechenden nationalen Entscheidung is daher der Rechtsübergang nicht i.S.v. Regel 22 EPÜ hinreichend nachgewiesen.)

The appellant requests an appealable decision and subsequently appeals it. The board reverts the decision of the legal division, and reverts the reversion.

Similar decisions between the same parties were made for patent applications in J 16/14, J 21/14, J 20/14, J 17/14, and for patents in J 18/14, J 19/14.