Tuesday, 31 May 2016

T 2182/11 - Lack of clarity is no lack of sufficiency

Vague and broad, who can object to that?

In this opposition appeal, the opponent tried to raise insufficient disclosure objections (Art. 83 EPC) based on broad or vague terms in the granted patent claim. Below are the relevant portions of the main claim.

A sanitary napkin adapted to be worn in a crotch portion of an undergarment, said sanitary napkin having opposed longitudinally extending side edges and a longitudinal axis and comprising:
b) an absorbent system under said cover layer, said absorbent system having an absorbent width of at least 64 mm;
f) said absorbent system including at least a pair of preferential bending zones that extend along said longitudinal axis and are adjacent to respective side edges of the sanitary napkin, said preferential bending zones register with respective linear, longitudinally extending adhesive zones, this construction allowing said sanitary napkin to fold at said preferential bending zone in response to lateral compression applied to said napkin and permitting said napkin to acquire a three-dimensional deformation profile,

Arguing insufficiency without experimental data is always hard. This attempt also failed, as the board considered the potential problems in the claim to fall under clarity, which is not a ground for opposition.

Friday, 27 May 2016

T 1563/13 - Transfer of opponent status

This opposition appeal deals with the transfer of opponent status.

The business of an opponent had transferred from an old company to a new company. An appeal is then filed in the new name of the old company for a running opposition. During the appeal, a request is filed by the opponent to transfer to opponent status to the new company. 

The proprietor considers the appeal inadmissible, since the business transfer happened before the appeal was filed. The proprietor considers the appeal admissible since the request for transfer of opponent status was filed after the appeal was filed. The board rules in favor of the opponent, and deems the appeal admissible.

Wednesday, 25 May 2016

T 11/55 Swapping of closest prior art in oral appeal proceedings

This decision gives the criteria for in which situations it is allowable to change closest prior art document, compared to what was argued in response to the summons to oral proceedings in appeal (in this case by swapping two prior art documents around), during the oral proceedings of appeal (see reason 2).

Furthermore, the decision reiterates that the burden of proof against inventive step lies with the opponent and accordingly, if the opponent doesn’t provide proof to the contrary, the board has no other choice than to consider a claim inventive (see reason 5.3).

Friday, 20 May 2016

T 1641/13: three different objects agains the word "separate"

In this opposition appeal there were three different discussions that were all related to one single word in the first claim: "separate". The proprietor (Appellant) introduced that word in the claim of the discussed request, and, according to the opponent (Respondent), the word was not supported by the description, extended the protection of the patent, and was not clear. The support in the description was discussed on basis of two figures and the description of the figures. With respect to the extension of protection the Board discussed whether the product defined in the granted claims is different from the product that is defined by the claims of the main request of the Appeal. Further, the general meaning of the word "separate" was used to discuss the clarity objections of the opponent.
Because the outcome of the appeal proceedings, it seems that changing "..., separately molded side pieces..." into "..., separate, molded side pieces" makes at least an important difference.

Wednesday, 18 May 2016

T 1785/15 - Appeal against a grant, following advice from the Office

The proprietor filed an appeal against the decision to grant, after the patent was granted with errors -introduced by amendments by the Examining Division, but implicitly approved by the applicant with his R.71(3) response- and after being pointed out to the option of filing an appeal by the formalities officer of the EPO. But his appeal was not succesfull: in light of the decision G 1/10, the appeal was inadmissible. The Board however ordered a reimbursement of the appeal fee for reasons of equity, as the proprieter filed the appeal based on incorrect advice from the office.

Sunday, 15 May 2016

T 985/11 Absence of proprietor leading to revocation?

The decision relates to an opposition appeal. The proprietor was absent during the oral proceedings. The Board was willing to allow auxiliary request 3. The appellant requested the patent to be revoked since the description was not adapted to this request and could not be adapted during the oral proceedings because the proprietor had chosen to be absent. The appellant was of the opinion that it was established case law to revoke the patent in such a situation. The Board had to review the case law and came to the conclusion it had a discretion in such matters.

Wednesday, 11 May 2016

T 1673/11 - Swiss type claim in opposition

Change categories?

Can a patent proprietor change a Swiss type claim to a purpose-limited product claim during opposition proceedings? The board finds that the Swiss type claim as granted has a narrower scope than the purpose-limited product claim; changing categories thus infringes A.123(3).

Claim 1 as granted reads:
"The use of human acid alpha glucosidase in the manufacture of a medicament for the treatment of infantile Pompe's disease, wherein the human acid alpha glucosidase is in the 100 to 110 kD form, wherein the medicament is to be administered intravenously, and wherein the treatment is to be continued for at least 4 weeks."

Claim 1 of the main request held allowable by the opposition division reads:
"Human acid alpha glucosidase in the 100 to 110 kD form, for use in the treatment of infantile Pompe's disease, wherein the human acid alpha glucosidase is to be administered intravenously, and wherein the treatment is to be continued for at least 4 weeks."

According to the board, a human acid alpha glucosidase provided with instructions for the use in a treatment other than that of infantile Pompe's disease, would fall under the scope of the purpose-limited product claim if it is used for infantile Pompe's disease.

Tuesday, 10 May 2016

T 1145/10 - Notoriously known, but still to be identified

In this examination appeal, the Board considers that, depending on the case at hand, that it may be acceptable to start the inventive-step assessment of a particular invention including a mix of technical and non-technical features from a "general-purpose computer system" or a "standard computerised system" as known at the effective filing date, without citing documentary evidence.

As such, the Board confirms the established practice of the BoA (e.g., T 1242/04 citing T 939/92) in which notorious general technical knowledge does not require documentary evidence. 

However, in the present case, the Examining Division failed to identify which features were exactly considered to be anticipated by that well-known prior art

Moreover, the Board considers that where specific technical features or functionality of the standard computerised system are required to implement the non-technical features, those specific well-known technical features and functionality should be clearly identified.

However, rather than further considering the inventive step over a standard computerised system, the Board proceeds with selecting a D2 document as CPA while considering the distinguishing features as non-technical administrative constraints which would be obvious for the skilled person.

As such, the Board avoids a potentially tricky subject. Namely, one can imagine that, without having any documentary evidence as a basis for discussion, it may not always be trivial to clearly determine which features of a computer implemented invention are exactly anticipated by that well-known prior art, and which non-technical features may be implemented thereby...

Tuesday, 3 May 2016

T 2086/13: Decision set aside and still partly binding?

In this opposition appeal there was a discussion about a (further) procedural violation of the Opposition Division. Another part of the decision relates to "not described in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art" - please read the whole decision if you interested in that part . 
In this case there was an earlier appeal (T 306/09) in which a first decision of the Opposition Divisional was set aside. The first decision contained a substantial procedural violation in the inventive step reasoning. The Board of the earlier appeal remitted the case back to the Opposition Division. Subsequently, the Opposition Division admitted a fresh ground of opposition in the proceedings. 
After the second decision of the Opposition Division, the appeal of this case was filed. The admission of the fresh ground is, according to the appellant, a new procedural violation. According to the appellant, the Opposition could only decide on the subject of inventive step, because (only) that part of the previous decision contained a procedural violation - all other parts of the decision "will stand unless specifically overturned by a higher court."
The original Board wrote "... the decision under appeal is set aside ...". What does that imply for the alleged new procedural violation?