Tuesday, 27 December 2016

T 1789/11 - Bills, bills, bills

The opponent filed six related oppositions against patents arising from a parent application and five divisional applications from it. The Notices of Opposition each contained a debit order, ordering that the opposition fees to be debited from the opponent’s deposit account. Unfortunately, the opponent's deposit account had only contained sufficient funds for one opposition fee. After the opposition period ended, the deposit account was replenished and the opposition fee was payed with 30% penalty, under rules of the ADA. The proprietor challenges the legality of this. Note the Arrangements for deposit accounts (ADA) has since changed! (Old rulesNew rulesFaq ) 

Friday, 23 December 2016

T 623/13 - Deficient in clarity

Clear from the words alone?

This examination appeal deals with the clarity of the claims, and whether a clarity deficiency in the claim wording can be rectified by the fact that the description could possibly help the reader to understand the technical subject-matter which the claim was intended to define. In line with established case law, the Board decides that the claims must be clear by themselves.

Monday, 19 December 2016

Broccoli and Tomatoes followup: staying of proceedings due to the Commission Notice on certain articles of Directive 98/44/EC


In G 2/12 and G 2/13 (decision, blog), the Enlarged Board of Appeal concluded that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts. The decision led to a successful maintenance in amended form in the Broccoli case (decision, blog, register) as well as in the Tomatoes case (decision, blog, register).
The decision also led to a discussion in the European Commission. On 3 November 2016 ,the European Commission adopted a notice on certain articles of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions ("the (Biotech Directive"/ "The Directive"). With regard to the patentability of plants and animals obtained by means of essentially biological processes, the Commission takes the view that in accordance with the EU legislator's intention such plants and animals are not patentable under the Directive.
The effect of the Commission Notice for the EPO's examination practice including any necessary follow-up measures is currently under discussion with the representatives of the member states of the European Patent Organisation.
The President of the EPO has decided that, in view of the potential impact of the Commission Notice, all proceedings before EPO examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process will be stayed ex officio. The details are given in the Notice that is reproduced below, together with parts of the Commission Notice.

Friday, 16 December 2016

T 66/12 - Simulation results and a sub-range

For people working in chemistry this may be just one of the so-many boards of appeal decisions on (sub) ranges. In the field of electro-mechanics I do not often see a decions about it.
In this opposition appeal the independent claim of the main request relates to a vehicle with a fuel cell. The independent claim comprises a sub range and the sub range seems to be the only difference with respect to the prior art. In the communication of the Board accompanying the summons to oral proceedings the Board concluded that the sub range is most probably an arbitrary specimen of the prior art and is, according to established case law, not novel. The final decision shows that the patent owner tried to prove that there is an effect in the claimed sub range. We can also read that the provided "simulations results" relate to current vehicles that may comprise technology that was not available at the date of filing of the current patent. Thus, there were no useful test results available at the date of filing to prove an effect of the sub range. This decision of the board shows what the consequence can be.

Tuesday, 13 December 2016

T 1825/14 - Extended but then again not?

On the last day of the original 4-month period to respond to an office action, the applicant sent a request for an extension of the time limit by two months to six months. The request was granted. The applicant filed his response on the last day of the 6-month period. About a month later, the applicant received a loss-of-rights communication. The applicant was informed that the "application" had been received at the EPO on 7 December 2011 and that the request for extension of the time limit had therefore been granted "erroneously", the time limit having expired on 6 December 2011. The "extension of time limit" was "considered not having been granted" and, consequently, the applicant's reply was deemed to have been received late... 

Tuesday, 6 December 2016

J 7/15 - Re-establishment for outside payment firm

The applicant uses an outside outside payment firm for paying the renewal fees, as well as an unrelated outside attorney for substantive patent work. The board is not unable to establish exactly why the renewal fees were not paid in time, but finds it sufficient that a historically reliable payment firm was used.