T 779/11 - In the dark after the search stage

Acting in its capacity of ISA, the EPO issued a declaration under Art.17(2)(a) PCT to the effect that no international search report would be established because no meaningful search was possible. The declaration explained that "[t]he claims relate to subject matter excluded from patentability under Art. 52(2) and (3) EPC [sic]". The declaration further mentioned that a search might be carried out during examination before the EPO should the problems which led to the declaration be overcome. However, the Examining Division refused the application without carrying out a search. It decided on a main request and two auxiliary requests, refusing the main request and auxiliary request 1 for lack of inventive step and not admitting auxiliary request 2 into the proceedings. The applicant appealed and argued, in particular, that the Examining Division's decision not to perform a prior-art search at all was against the established case law of the boards of appeal.
The Board made a clear distinction between the EPO as ISA, and the EPO in the regional phase: acts of the EPO as ISA are not subject to review by the Board. The Board then continued to review whether the claimed subject-matter related to notorious knowledge, which would/could justify to not perform a search and not cite any prior art document. 

T 2052/14 Disclosure of relative dimensions in drawings

The Examining Division held that the subject matter of claim 1 was not new with respect to D1 (EP 1748243 A2). The division derived from the figure a ratio of 0.9 and thus anticipating a claimed ratio from about 0.1 to about 1.0. The Board disagrees. D1 does not indicate that the drawings are to scale. Moreover, D1 is not related to the claimed aspect and there would thus also not have been any reason for D1 to be to scale. This raises the issue whether the skilled person would derive the claimed ratio from a schematic drawing. The Board thinks not.

The Examining Division also regarded to formulation from about 0.1 to about 1.0 unclear (Art.84). The Board disagrees; this formulation only allows a wider interpretation. The Board regards the wider range to be new.

T 799/12 - Clarity in opposition appeal

In this opposition appeal, the proprietor challenged the clarity objection that was raised against claim 1 as amended made during first instance opposition proceedings, but which was only raised with the grounds of appeal. He was however unsuccesful: amendments made during opposition are to be examined for compliance with all EPC requriements and the amendment was based on the description (not just an incorporation of an unclear dependent claim - G 3/14). Further, the board of appeal has the power to examine all EPC requirements, not just the ones on which the decision was based: the Board thus examined clarity, and also admitted new arguments against inventive step based on a document that was not used in any objection before.

T 360/11 - Very late needs to be very clear

In this appeal against the decision to refuse, the applicant filed amended claims in response to the summons for oral proceedings, aiming to overcome the Art.84 and Art.123(2) objections in the preliminary opinion of the Board, and further amendments in the course of oral proceedings. The Board did however not admit the amended claims into the proceedings, as very late amendments are required to be very clear. 

T 1727/12 Sufficiency of disclosure for a broad claim

In this decision the Board has to go into different forms of lack of disclosure. The Board is not a big fan of the British term ‘Biogen sufficiency’ and goes back to the original decision T 409/91 and terminology used in that decision (“the patent monopoly should be justified by the actual technical contribution to the art”). 

In opposition proceedings, Art.84 cannot be used in this respect. In the opinion of the Board, the opposition division has not been convincing in proving that Art.83 was violated. In particular, the opposition division believed that features of dependent claims 3-5 were required for the invention of claim 1, but the division did not come up with options which the skilled person would not know how to carry out. The burden of proof was thus not met.

The Board remitted the case back to the opposition division for further prosecution. No oral proceedings were held, since the request "In the event that the Patent is not to be maintained in the form in which it was granted, the Proprietor requests oral proceedings" does not cover the situation wherein the Board does not take a final decision on the case itself but remits the case.

T 1717/13 - How many tries should you get in OP?

How many tries should an opposition division allow a proprietor to rectify an added subject matter problem? After the opposition division had maintained its added subject matter objections during the oral proceedings, the proprietor filed three more auxiliary requests. The first two were admitted into the procedure but the third was not. The reasons given in the minutes are that the third request was late filed and did not resolve an earlier objection.

In appeal the proprietor alleged that procedural violations took place. In particular, he claims that:

(a) by not admitting further claim amendments to overcome newly raised objections by the opposition division during the oral proceedings; in this respect, the opposition division exercised its discretion to disregard amendments incorrectly;

(b) by causing the patent proprietor's representative to be taken by surprise during the oral proceedings by giving contradictory reasoning, which made it difficult to react to newly raised objections;

(c) by not giving sufficient time to take into account the newly raised objections during the oral proceedings and to consider a new version of a main claim in order to be able to appropriately react to the newly raised objections.

The board gives the opposition division a wide berth to make its own decisions with respect to admitting auxiliary request or not. Some doubts are expressed about the divisions refusal to allow all  further auxiliary requests, but in the end no substantial procedure is found. 

At the end of the cited part of this decision there is also an interesting analysis of intermediate generalizations.