Wednesday, 30 November 2016

G 1/15 (1) - Order from the Enlarged Board

The order of the decision of the Enlarged Board in the partial priority referral, G 1/15, was issued. The reasoned decision will be issued as soon as possible.

See file wrapper, and our earlier posts Poisonous or nothing wrong? and Referral: Mother poisonous for child?

Tuesday, 29 November 2016

T 628/14 - Within time limit for making written submissions, but too late

In this opposition appeal, an opponent submitted new documents in response of the invitation to oral proceedings under Rule 116(1) EPC ("When issuing the summons, the European Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the oral proceedings shall be fixed. Rule 132 shall not apply. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed."). The documents were not admitted in the proceedings as they were late filed and prima facie not relevant. The Board emphasized that the invitation for written submissions should, according to established case law, not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded as established with the notice of opposition. The Board also reviewed that it is at the first-instance division's discretion to admit late filed documents or not, and concluded that the first instance division did not exercise its discretion in an unreasonable way as it had assessed the prima facie relevance of both documents.

Friday, 25 November 2016

T 792/12 - The atmosphere of the oral proceedings


Sometimes, when I read a decision, I feel the atmosphere of the oral proceedings. Sometimes it gives you also some information about the "happiness" of the Board, the Appellant and/or the Respondent. This recently published decision presents some interesting information with respect to these themes and gives a view of the Board whether they have to sit silently in the room or whether they may interrupt the parties.

Tuesday, 22 November 2016

D 7/16 - "without comment as to the merits"

In appeals D 5/16 and D 7/16, the Board saw itself confronted with a  comment from the Exam Committee in the remittal letter from the Exam Secretariat. The comment addressed one of the statements under appeal of Pre-Exam 2016 and its answer. Despite the general requirement that remittance to the Board shall be done without comments to the merits -Art.109(2) EPC-, the Board seems to be puzzled what the aim of the Examination Committee was, and why/whether its comments were (not) taken into account in deciding on interlocutory revision.

Sunday, 20 November 2016

T 1802/13 - Medical imaging - is presenting the information technical?

In this decision it needs to be settled if in medical imaging the claimed superposition of a leadwire has a technical effect. The Board goes into the discussion of presentation of information, differentiating between what is presented and how it is presented (cognitive aspect). Regarding the technicality of the manner in which (i.e. "how") information is presented - the main issue to be established is whether the underlying user interface together with the manner in which cognitive content is presented credibly assists the user in performing a technical task by means of a continued and guided human-machine interaction process (basically related to the question "for what purpose" the content is presented). The Board decides that it is not derivable from the claim - beyond mere speculation - that it credibly brings about the technical effect of accurately predicting the electrodes' properties and providing that information to the surgeon in an efficient manner. The case is dismissed as lacking inventive step.

Tuesday, 15 November 2016

Gold standard poll results

In T 437/14 the board of appeal referred questions on disclaimers to the enlarged board. The central question is how the gold standard of G 2/10 is to be squared with the disclaimers that are allowed for accidental anticipations under G 1/03. The case has been discussed in the comments, and various directions were suggested in which the enlarged board could go.

The past two weeks we placed a poll at our blog in which our readers could make their predictions. Polling is now closed and the results are in.

So there is a clear majority that does not expect that G1/03 is any in danger. I'm looking forward to the enlarged board's decision to see how well this poll matches reality.

Friday, 11 November 2016

R 1/15 - Petitioning for review of an insufficiently substantiated decision

In this petition for review, the petitioner (being the patent proprietor) asserts that the Board of Appeal relied in their decision on common general knowledge which the proprietor was unable to comment on. As such, the petitioner asserts that a fundamental violation of Article 113 occurred, which would be a valid ground for petition for review in accordance with Art. 112a(2c) EPC.

However, the Enlarged Board of Appeal concludes that the petition essentially is based on the assertion that the Board of Appeal insufficiently substantiated their decision, which is not one of the grounds for petition for review as enumerated by Art. 112a EPC. With reference to R 1/08 and R 22/10, the EBoA does acknowledge that while an insufficiently substantiated decision is in itself not a valid ground for petition for review, it may serve as  proof of the BoA not acknowledging a presentation of a party or taking such presentation into account in their decision-making process. The petitioner failed to assert such a violation. As such, the petition for review is deemed unallowable.

Tuesday, 8 November 2016

T 918/14 - No search in PCT phase

Needle-prick like objections?

Claims 2-37 of this application were not searched during the PCT phase, under Art. 17(2)(a) PCT. The reason for not searching these claims is that the first embodiment of the application does not fall under the scope of Claim 1, yet the application cites documents that are prejudicial to the novelty of claim 1. In this situation it was unclear for the Examiner what the intention is of the applicant.  
At first however, after entry into the regional phase, Examination seems to proceed normally, patentability objections are raised and the claims are amended. But when the claims are amended for a second time, the Examiner objects that unsearched subject matter is introduced in the claims, and rejects the claim amendments under Rule 137(3) EPC. During Oral proceedings, at which the applicant did not appear, the application is refused.
The board does not agree with examination in this manner. They provide the following catch phrase (my translation).
1. Refusing to admit claim amendments into the proceedings, because of a mixture of a missing (but justified) supplementary research and vague indications of the patentability of the amendments, exceeds the margin of discretion of the Examining Division under Rule 137 (3) EPC and constitutes a substantial procedural violation (see Reasons 2.8 ).
2. The approach of a search and examination division to initially produce an incomplete search with a non-substantiated reasoning, and on top of that, despite objections and amendments of the applicant, not to carry out an additional search for the new claims, but to present needle prick-like (nadelstichartig) vague objections to patentability is a substantial procedural error on its own (see Reasons Section 2.7).

Friday, 4 November 2016

T 564/12: proving public prior-use

In this opposition appeal there is initially an interesting discussion about the admissibility of two prior-use cases. The Appellant-proprietor asks the Board to declare these prior-use cases retroactively as non-admissible. Furthermore, the Appellant-proprietor is of the opinion that an author of one of the filed affidavits in one of these prior-use cases should have been called as a witness. According to the Appellant-proprietor, the affidavit should be excluded because the opposition Division did not call this author as a witness. 

The board decides that the prior-use cases are admissible. In general, it is quite difficult to prove public prior-use - the questions "what was disclosed", "when", "where"and "under which circumstances" must be answered. In this case quite a lot of evidence was filed by the Appellant-opponent - it was already filed during the opposition proceedings. This Board extensively examines the evidence to decide whether the prior use is proven or not. If you are interested in the prior-use reasonings, you should read the complete text that is provided below.

The invention relates to a lid of a snuff-box. I found it also interesting to see that the PCT publication of this case has only a 2 page description and has 5 claims in total. The limited amount of words written down in the original patent application have been compensated by all the documents drawn up during the opposition and appeal procedure.

Tuesday, 1 November 2016

T 1824/15 - Delayed

The appellant has argued that two different delays in the first instance proceedings each amounted to a substantial procedural violation, Rule 103(1)(a) EPC, namely the delay of over eleven years in raising an inventive step objection based on D3 and the delay of seven months in issuing the written decision and minutes after the oral proceedings. In view of these issues, the board took this case considerably out of turn, well before it would otherwise have been started. As set out below, the board finds that, in particular because neither delay was contrary to a provision of the EPC, no fundamental deficiency, Article 11 RPBA, or procedural violation, let alone a substantial procedural violation, Rule 103(1) EPC, occurred. This does not however mean that the board is indifferent to the consequences of unjustified procedural delays. (r.2.1). 
The board deviates from T 823/11, where the Board concluded "that the duration of the first-instance proceedings was excessive, the written reasoning given in the communications was inadequate, and the contested decision is insufficiently reasoned within the meaning of Rule 111(2) EPC. These deficiencies amount to substantial procedural violations."