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T 2091/12 - Changing a fresh ground to an old ground

Some fresh ground coffee
With its appeal, the opponent filed a new novelty attack based on prior use. He also filed evidence supporting the prior use allegation. 
Novelty was not a ground of opposition in first instance. In the summons, the board notes that it is thus a fresh ground of opposition. As the proprietor did not agree to having it introduced in the proceedings, the fate of this new attack seems ensured. 
However, in his written submissions the opponent files an inventive step attack based on prior use, and supported by the evidence he filed with his statement of grounds. Alas, by this time the board considers it too late in the appeal proceedings, and does not admit the new attack. 

T 1513/11: second non-medical use

The novelty and the inventiveness of a "use claim" was investigated in this appeal that lies from a decision of the Opposition Division. If a physical entity is already known, the use of this physical entity may be novel and inventive (second non-medical use). In this specific case the use of a specific concrete was claimed to oxidize polluting substances. It seems that the prior art does not disclose the claimed use. According to the Appellant (Opponent), the claim is not novel because of public prior use: the specific concrete was already applied to buildings and (after the priority date) one proved that this specific concrete also oxidized polluting substances. The Board was not convinced by the arguments of the Appellant. "Established case law" was used to decide in favor of the patent owner.

T 610/11 - An error in a document filed with the EPO, but... who's error?

The appeal against a decision to refuse was withdrawn by the representative. The representative herein followed the instructions from the applicant. Six weeks after the withdrawal, the representative submitted that the withdrawal of the appeal was due to an error and requested correction of that error. In particular, the appellant's representative stated "I have become aware that our instruction to withdraw this appeal were in error." and the representative  requested correction of that error under Rule 139 EPC.

The Board reviewed the case law on correction of errors and, in the end, the Board comes to the conclusion that the declaration submitted by the appellant's representative to withdraw the appeal cannot be considered to contain an error to be corrected under Rule 139 EPC, as the error was made by the applicant and not by the representative.

T 1784/14 Inadmissible request

This case deals with a second appeal in opposition. In the first opposition proceeding the opposition division decided to revoke the patent. In the first opposition appeal proceedings the proprietor submitted a main request and six auxiliary requests. The board of appeal rejected the the main, first and second auxiliary requests and remitted the case to the opposition division for further prosecution on the basis of the third auxiliary request. 
The opposition division decided that the third auxiliary request met the requirements of the EPC. In the second appeal proceedings the proprietor requested that the appeals be dismissed or, alternatively, that the case be remitted to the opposition division for consideration of the fourth to sixth auxiliary requests as filed before (referred to hereinafter as first to third auxiliary requests) or alternatively, if this request was not allowed, that these auxiliary requests be considered by the board. The proprietor did not submit any facts, evidence or arguments in support of the allowability of any of its claim requests. 
The Board follows T 1732/10: unsubstantiated claim requests which are not self-explanatory become effective only at the date on which substantiation is provided. Their filing in and of itself plays no role, no matter when they are filed. In the present case no substantiation was provided at any time during the entire appeal proceedings. As a logical consequence, the claim requests must be considered not validly filed at all.

Catchword: If no substantiation is provided, at any stage during the appeal proceedings, for claim amendments which are not self-explanatory, the requests containing those amendments may be considered not validly filed (T 1732/10 r.3 followed)

D 4/16 - "A representative" vs. "Der Vertreter"

This appeal lies from the decision of the Examination Board of 31 March 2016 awarding the appellant the grade "FAIL" in the pre-examination for the European qualifying examination 2016, her answer paper having been awarded 69 marks.

According to the Examiner's report, the candidate had an incorrect answer to statement 5.4.

Statement 5.4 relates to representatives dealing with international applications. At issue here is whether the statement is restricted to the specific context of the statement (involving a representative called Hassan), or relates to representatives dealing with international applications in general. See also the discussion of candidates on our EQE blog here.

A further ambiguity is than in statement 5.4, the expression "a representative" was translated differently in the English and German versions, namely to "der Vertreter".

T 738/13 Right to be heard

In this appeal from examination, the Board has to decide if the Examining Division has violated the applicant’s right to be heard by not motivating its decision well.
The applicant had requested supplementing the Examining Division by a legally qualified examiner. This was refused and motivated only by citing the relevant section of the Guidelines. The Board sympathizes with the applicant but finds in this case the brief motivation acceptable.
The Board does agree that the lack of inventive step decision is not adequately reasoned. The applicant had submitted a thorough problem-solution approach reasoning. The division is silent in its decision on this reasoning. The Board considers submitting the case back, but first spots a new clarity issue. The Boards takes this upon its own shoulders. The applicant manages to overcome the Art.84 objection. The Board then submits the case back for further examination.

T 1691/15 - Confidentiality of complaints during opposition

Complaints filed at the EPO are treated confidentially. But what should happen if an opponent communicates with the complaint department of the EPO relating to his opposition. Should protecting the privacy of the complainer prevail, in this case the opponent, or should the patent proprietor be informed?
In this case the Board decided to inspect the non-public part of the file themselves and forward parts thereof to the proprietor. 
Reasons for the Decision
3. Communication of the exchange of letters between the appellant and the EPO during the opposition proceedings - Referral to the Enlarged Board of Appeal (request 6)
3.1 In his letter dated 7 May 2015 in the appeal proceedings, the appellant referred, among others, to the following letters:
- EPO's letter dated 30 April 2014; and