Friday, 29 April 2016

T 2523/11: attempt to voluntarily reduce scope of protection without support in application as filed

In opposition the patent was revoked because there was no support for a range of "0.2mm to 0.8mm diameter for warp and weft yarns". The patent application as filed has support for: "warp yarns having a diameter in the range of 0.20 mm to 0.80 mm and weft yarns having a diameter in the range of 0.20 mm to 1.0 mm". Thus, the proprietor reduced the scope of protection by giving up the diameter range from 0.8mm to 1.0mm for the weft yarns. 

During the Opposition procedure the proprietor used G 1/93 to argue that the scope of protection of features without a technical contribution may be reduced without violating Art. 123(2). The Opponent and the Opposition Division did not share that opinion. 

An appeal was filed with several requests in which the proprietor tried several strategies to overcome the A.123(2) and (3) problem. In the main request a correction of an obvious error was requested (change 1.0 to 0.8mm). In the auxiliary requests several variations of (undisclosed) ranges / values were requested. The outcome of the appeal procedure is that the scope of protection is now reduced to "infinitely small".

Tuesday, 26 April 2016

T 651/12 - To display information in an ergonomically improved manner is a technical purpose

The Examining Division considered the subject-matter of claim 1 according to the main request to lack an inventive step and refused an application. The Examining Division reasoned that the claim was made up of technical and non-technical features, the technical features merely defining a commonplace map display apparatus and the non-technical features defining a method defining an abstract calculation on the basis of modelled map data. The applicant appealed, arguing that the claim features were technical as was the problem solved.
According to the Board's opinion, a map display apparatus and method explicitly comprising, after the calculation of the three-dimensional bird's eye view map, displaying this map on the screen, would provide a more realistic view of the road to the user and support the user in better orienting himself. This would be considered to be a technical solution to a technical problem: the outcome of the calculation is used for a technical purpose, namely to display information in an ergonomically improved manner (r.3.2). Also the calculation as such has in the board's judgement clear technical aspects (r 3.3).

Friday, 22 April 2016

J 12/15 Further processing with brief response to an office action

This case deals with an appeal after the Examining Division refused a request for further processing.
In a second communication, the Examining Division had in a very brief reasoning objected against the claims "While the larger part of the claims are considered now in unity ... it is not understandable how the present claim 12 could result in unity with all the preceding claims". 
The representatve did not respond in time and thus had to request further processing. In an also very brief response to the communication,  the following substantive remarks were made "...the Applicant respectfully disagrees, especially with regard to claim 12. It is believed that the invention as currently claimed is both novel and involves and (sic) inventive step in accordance with Articles 54 and 56 EPC, and the claims should be allowable. Reconsideration of the application is requested, and Oral Proceedings are requested in the event the Examiner is minded to refuse the application".
The Examining Division rejected the request for further processing and gave the following reasons for its decision "Under current EPO practice, as decided in the 50th PPC Meeting of 24-25 September 2009, a reply to a communication from the Examining Division without any substantive observations or amendments, does NOT constitute a reply to a communication under Article 94(3) EPC. The omitted act was not filed within the time limit set in Article 121 EPC. The request for further processing is therefore rejected".
An issue to be settled by the Board of Appeal was whether the request for oral proceedings was phrased in such a way that the Examining Division should have granted it. 

On a personal note from the blogger: to me the approach and argumentation of the Examining Division is highly surprising. A PPC meeting cannot be seen as any legal basis, let alone for a step with serious consequences. Had this response of the applicant been filed in time, no doubt the Examining Division would have gone for  a refusal/oral proceedings, thus accepting that a response was filed and that the applicant had now been heard. It seems unlikely that the Examining Division would have send out a R.112 'deemed withdrawal', which is the proper response of the EPO if no response is timely filed by the Applicant.  In a proper working legal system it cannot be left to the mood of the Examining Division to decide on how to deal with a response. Unfortunately, the Board did not get to the point to comment on this matter.

An adverse decision issued without granting the aggrieved party's request for oral proceedings must be declared void ab initio and without legal effect. Silence on the part of the appellant cannot be interpreted as withdrawal of the request for oral proceedings - see points 7 and 8 of the Reasons.

Tuesday, 19 April 2016

T 2227/11 - Filing a backup appeal

A recurring problematic situation is the calculation of the appeal due dates in case the examining division corrects its refusal decision. We had this situation last month in T 105/11, where the applicant understandably (but incorrectly) took the corrected decision to compute the appeal time limits. 

Also in this case, the EPO issued a corrected decision. Apparently to be on the safe side, the applicant files two appeals, one against each decision, and also pays the appeal fee for both appeals. As a result, the EPO (incorrectly) refunds the appeal fee for the first appeal, and informs the applicant (incorrectly) that he ought to take the second decision for computing his time limits. 

This puts last month's decision in a new light, in which the Board hesitantly accepted the belated appeal as admissible because "the professionally represented appellant should have been aware" (R.1.8). Apparently, it is not so simple.

Another interesting aspect of this decision are two internet disclosures D1 and D2, which the applicant disputes are state of the art. The applicant considers that such disclosures, should be proved beyond any reasonable doubt (citing T 1134/06). The board does not accept this, and considers balance of the probabilities sufficient.

Tuesday, 12 April 2016

R 0013/14 - No, no, and again no on relocating the oral proceedings

This petition for review by the Enlarged Board of Appeal under Art 112a(c) and (d) EPC, results from an earlier decision T 1142/12 that was discussed in our DeltaPatents case law blog in June 2014 (read more). The petitioner is of the opinion that the Board of Appeal did not decide on two requests that the petitioner found relevant, namely those that dealt with relocating the location of the oral proceedings from The Hague to Munich. The Enlarged Board of Appeal (in its 5 member composition) thinks otherwise. The EBoA indicates that at first glance, when reading that the BoA held that it was not empowered to refer a question to the Enlarged Board, it could be concluded that the BoA did not decide on this particular request. However, the EBoA is of the opinion that the BoA said that this request was to be “rejected” for the same reason as given for the refusal to challenge the request for relocation of the oral proceedings. According to the EBoA: Whatever the terminology used, the fact remains that the request was rejected, i.e. a decision was made.

Friday, 8 April 2016

T 861/12: attending two oral proceedings at the same time is not possible, however...

In this appeal from an opposition one of the professional representatives requested a postponement of the oral proceedings because he has to attend another oral proceedings at the same date at the same moment in time. The Board acknowledges that one person cannot be present at two locations at the same moment in time. However... in line with a "Notice of the Vice-President of Directorate-General 3 of the European Patent Office" one should also argue why a colleague is not able take over the case and attend the oral proceedings. The Board does not accept general arguments like "there is a special relationship between the client and the professional representative" - this must be substantiated. 
At a certain point in time the Board communicated to the representative that the oral proceedings are not going to be postponed. The Board also pointed to the power of attorney in which the professional representative and his colleagues were appointed by the client. Thus, according to the Board, the client indicated that he accepts that different persons act on their behalf. Shortly after receiving this letter, the professional representative changed the original power of attorney such that his colleagues were not anymore appointed by the client.  According to the Board this is not according to the principle of "good faith". Don't mess with the Board of Appeal.

Tuesday, 5 April 2016

T 2385/11 - Admitted even though filed very late

During oral proceedings in appeal against a refusal by the Examining Division, the applicant filed a new and sole request. In this decision, the Board indicates quite clearly under which conditions such a very late request can be -and is this case was- admissible.