Wednesday, 20 December 2017

G 1/16 - The final word (?) about disclaimers

The referral relates to the allowability of undisclosed disclaimers. The referring Board asked about the applicability of the gold standard disclosure test as defined in decision G 2/10 to undisclosed disclaimers (no), and the applicability of criteria as defined in decisions G 1/03 and G 2/03 (yes). The decision G 1/16 (Disclaimers III) noted that in drafting of undisclosed disclaimers as amendments, no technical contribution to the claimed subject-matter of the application as filed may be provided. 

Saturday, 9 December 2017

T 428/13 - Proving an oral disclosure

Not enough proof

This opponent tried to prove that Claim 1 of the main request had been orally disclosed.  The submitted proof included: the power point slides that were used in the presentation, an affidavit of the presenter, the colloquium report of the conference and the article on which the presentation was based (the latter two being published after the effective date). Unfortunately for the opponent it is not enough for the Board.
Reasons for the Decision 
3. Novelty
3.1 Novelty in view of D7 supported by D8 to D10
3.1.1 The oral disclosure D7 of Mr. Altena took place at the 57th Hardening Colloquium on 10. October 2001.
In the Affidavit D8, Mr. Altena describes what in his view has been presented at the conference by referring to Annex A1 (power point slides, which allegedly had been shown during the conference) and Annex A2 (representing preparation notes which allegedly reproduce the content of the talk held by Mr. Altena).
3.1.2 Concerning the content of an oral disclosure it is generally accepted case law, that a single declaration of the presenter of a lecture does not give sufficient proof of the content which has been disclosed orally or has been presented on slides prepared for the lecture (Case Law of the Boards of Appeal, Chapter I.C.3.2.2, see in particular T1212/97).
Following this generally accepted principle, the Affidavit of Mr. Altena (D8) on its own is not sufficient to give proof what had actually been disclosed orally when presenting the slides of Annex A1.
D9 and D10, which are a publication and a colloquium report on the same topic as the presentation D7, demonstrate that the content of the presentation of Mr. Altena was open to the public and that the presentation had taken place. However, these documents alone are not evidence of what had been disclosed orally. Furthermore, they are not prior art under Article 54(2) EPC themselves, since they have not been disclosed before the filing date of the contested patent.
Therefore it has not been demonstrated by the appellant to a sufficient standard what was orally made available to the public during the 57th Hardening Colloquium.
3.1.3 Thus, the Board concludes that it has not been shown that the subject-matter of claim 1 of the main request was orally made available at the conference in 2001.

This decision T 0428/13 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:T042813.20170919. The file wrapper can be found here. Photo by Noupload obtained via PixaBay under a CC0 license (no changes made).

Tuesday, 5 December 2017

J 3/17 - Buggy monitoring system

A (Lego) bug...

In the present case, a PCT patent application was filed after expiry of the 12m priority period at the Chinese PCT receiving office by an Chinese agent acting as representative of the appellant.

The appellant filed a request for restoration of the right to priority with the European Patent Office as designated Office, which was refused by decision of the Receiving Section (whereas the request was submitted to and granted by the Chinese PCT receiving office under the 'unintentional' criterion).

The appellant now appeals before the EPO, and argues that 'all due care' has been taken.

Of interest in this case was that because of a bug that had up to then never been discovered, the electronic system which was used by the Chinese agent had given a reminder of the filing date only, not the priority deadline date. Unfortunately (for the appellant, but also for the interested reader), the appeal failed already on other reasons for not satisfying 'all due care', without going into detail on the implications of 'buggy' software wreaking havoc with otherwise carefully defined procedures.

Wednesday, 29 November 2017

T 1332/12 - Admission of corrected translation of prior art in opposition appeal

The opposition division decided that the subject-matter of claim 1 of the main, first, second and third auxiliary requests lacked inventive step over the disclosure of document D7 (JP 07-131734 A) and the common general knowledge of the person skilled in the art (Articles 56 and 100(a) EPC). For the analysis of inventive step, the opposition division referred to document D7T, which was a JPO machine translation of document D7 into English. The patent proprietor (appellant) filed an appeal against this decision and requested that the decision be set aside. In the statement of grounds of appeal, it requested that the patent be maintained in amended form. It submitted arguments as to why the subject-matter of claim 1 of each of the requests met the requirements of Article 56 EPC. With a letter dated 12 October 2015, the appellant submitted a different translation of document D7 (D7JPO) because "the Japanese and the original and the previously translated prior art document D7T is not precise in many aspects". In a communication under Article 15(1) RPBA, annexed to the summons to oral proceedings, the board indicated that it tended to agree with the opposition division's finding that the then second and third auxiliary requests lacked inventive step. It also indicated that it had to be discussed whether translation D7JPO should be admitted into the appeal proceedings (Article 13(1) RPBA).

Monday, 27 November 2017

T 782/16 - Can the content of a divisional be derived from an omnibus parent?

In this opposition appeal the Board had to assess if the opposed claims could be derived from the filed divisional and parent. In the Board's view, the "gold" standard for the assessment of Articles 123(2) and 76(1) EPC requires that the subject-matter of an amended claim (or of a claim of a divisional application) be based only on what the skilled person would directly and unambiguously derive from the application as originally filed (or from the earlier application; see G 2/10). For a correct application of this standard, a distinction needs to be made between subject-matter which is disclosed either implicitly or explicitly in the original (or earlier) application and therefore can be directly derived from it, and subject-matter which is the result of an intellectual process, in particular a complex one, carried out on what is disclosed. The Board concluded that the latter was the case.

Wednesday, 22 November 2017

T 2406/16 - Reestablishment when appeal fee not paid

It's another one of those nightmare scenario's. A notice of appeal is filed but the appeal fee is not paid. 
The attorney signed a notice of appeal and instructed his assistant to file the notice and pay the fee as soon as the deposit account contains enough funds. The latter requires checking with the CFO that there are enough funds in the deposit account, and can take a few days. Unfortunately, the assistent accidentally removed the due date from the system when the notice is filed. This  should not have been done until the payment was made. The board did not view this as an isolated mistake and refused to reinstate the case. 

Friday, 10 November 2017

T 2002/13 - Extension of subject matter

In this opposition appeal, the proprietor intended to limit the claim 1 as granted as follows:

A method to detect the presence or absence of an MREJ type xi methicillin-resistant Staphylococcus aureus (MRSA) strain characterised as having within the right extremity of SCCmec the sequence of SEQ ID NOs 17, 18 or 19 the SEQ ID NO 17 comprising:
generation of SCCmec right extremity junction sequence data by
contacting a sample to be analyzed for the presence or absence of said MRSA strain, said MRSA strain including a Staphylococcal cassette chromosome mec (SSCCmec) element containing a mecA gene inserted into chromosomal DNA, thereby generating a polymorphic right extremity junction (MREJ) type xi sequence that comprises sequences from both the SCCmec element right extremity and chromosomal DNA adjoining said right extremity, with a first primer and a second primer, wherein said first and second primers are at least 10 nucleotides in length, and wherein said first primer hybridizes with said SCCmec element right extremity of an MREJ type xi sequence selected from the group consisting of SEQ ID NOs: 17, 18 and 19 and complements thereof, and wherein said second primer hybridizes with a chromosomal sequence of S. aureus  and wherein each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17 or complements thereof  to specifically generate an amplicon if such MRSA strain is present in said sample; and
detecting the presence or absence of said amplicon.

At first glance these amendments limit the claim. In particular, the board acknowledges that the definition of the second primer is narrower than its definition as granted. Nevertheless, the combination of features amount to extension of the conferred protection.

Wednesday, 1 November 2017

T 514/14 - Respondent could have reacted to the raised objections well in advance to the oral proceedings

In this opposition appeal, the parties were summoned to oral proceedings. In a communication issued in preparation therefor, the Board drew the parties' attention to some issues likely to be addressed at the oral proceedings. The Board inter alia expressed concerns regarding the clarity of claim 1 held allowable by the Opposition Division and pointed out that compliance with Article 84 EPC might also become an issue with regard to the auxiliary requests. Concerning the issue of compliance with Article 123(3) EPC, the Board drew the parties' attention to a specific paragraph of the Case Law Book. The Respondent/proprietor commented on the points addressed in the Board's communication, and defended inter alia its position submitting that the amended claims of all the already pending requests were clear (Article 84 EPC) and complied with Article 123(3) EPC. It nevertheless filed three additional sets of amended claims as auxiliary requests 4 to 7. Oral proceedings before the Board were held. The debate focused on the compliance of the pending claims with Articles 84 EPC and 123(3) EPC. During the oral proceedings, the Respondent filed a further amended set of claims as auxiliary request 1bis, to be intercalated between auxiliary requests 1 and 2. The Appellant/opponent asked not to admit auxiliary request 1bis due to its late-filing. 

Monday, 30 October 2017

T 1889/13 - Right to non-overlapping boards?

In this opposition appeal, the appellant requested that the members of the board who were involved in decision T 1676/11 relating to a divisional application of the opposed patent be excluded from taking part in the present appeal proceedings for suspected partiality under Article 24(3) EPC.

The arguments of the appellant can be summarised as follows:

  • The critical issues of the present appeal were in essence the same as the critical issues in the previous appeal proceedings T 1676/11 concerning the divisional application. 
  • The board members having decided the appeal for the divisional application would have difficulty in re-examining and deciding the present case without having a preconceived or anticipatory judgment or without giving rise to suspicion of such preconceived or anticipatory judgment.

Tuesday, 24 October 2017

T 1972/13 - Examination at an end?

With his response "R3" to summons for oral proceedings, the applicant filed amended claims of respectively a main and an auxiliary request, together with arguments. In addition, the applicant requested "cancellation of the oral proceedings and the continuation of the examination in writing, possibly supplemented by a telephone interview with the primary examiner, if the Examination Division deems it expedient". Subsidiarily it was requested "that the oral proceedings are conducted by video-conference, using IP technology; and that the date of the oral proceedings is changed". Shortly after, the applicant's representative contacted the primary examiner by telephone asking "whether the proceedings could be cancelled, and if not whether they could be postponed ... or held by visio [sic] conference". The examiner replied "that he would have a look at the case and at the internal instructions before giving an answer" (idem). With a communication a few weeks later, the applicant was informed that the oral proceedings were cancelled and that the procedure would be continued in writing. Subsequently, the decision to refuse the application was issued. In its reasons, it said "The examining division consented to the request of the applicant to cancel the oral proceedings and to continue the examination in writing, thereby issuing this decision." The applicant appealed.

Friday, 13 October 2017

T 0231/13 - No inventor needed, a professional representative is enough

At the opening of the oral proceedings their postponement was requested, because one of the inventors, who wished to accompany the professional representative, could not be present due to serious illness that required medical intervention. This was proven by a medical certificate dated 28 July 2017 and filed during the oral proceedings. The applicant submitted that the request for postponement could not have been made before because the need for medical intervention had been sudden and the representative had been informed of it only the evening before the oral proceedings. The Board denied the request, as it was not made as soon as possible, and because the party was duly represented. 

Tuesday, 10 October 2017

T 1204/12 - Stern but fair?

The city 'Brusque' in Brazil

In this examination appeal, the invention relates to the entering and setting of an 'availability status' in a 'Push-to-talk' application in a mobile communication device, with the independent method claims defining the associated data processing. Unfortunately for the applicant-now-appellant, the Board of Appeal quickly 'strips away' the semantic meaning of the data (e.g. 'alert status') and the data processing entities ('server', 'communication device'), to conclude that the invention merely pertains to 'storing/transmitting the data on/to different computers'. Any remaining feature+effect combinations are swept off the table as 'obvious'.

The claim of the main request:

1. A method of establishing a user communications availability in an application (206) operative on a mobile communications device (200), the method comprising:

determining an alert status associated with the mobile communications device (200);

responsive to the determination of the alert status being in a first state, presenting to a user a first plurality of options, each of the first plurality of options corresponding to establishing the user communication availability in the application with a status applicable to said application (206);

responsive to the determination of the alert being in a second state, presenting to the user a second plurality of options having at least one option different from the first plurality of options, each of the second plurality of options corresponding to a user communication availability with a different status applicable to said application (206);

receiving a selection from the user of an option from said first or second plurality of options;

responsive to said selection of the option from said first or second plurality of options, auto­matically establishing and setting, at the mobile communications device, the status of the user communication availability in said application (206) in accordance with the status corresponding to the selected option; and

sending the status of the user communication availability in said application to a server (114), wherein the sending causes the server (114) to transmit an availability status representative of the status of the user communication availability in said application to at least one other mobile communications device associated with said application.

Thursday, 5 October 2017

T 2016/16 - All due care: assistant well-trained but not properly instructed/ not properly supervised by the patent attorney

The applicant timely filed a notice of appeal and paid the appeal fee. However, the applicant missed the 4-month period to file the grounds of appeal, because the 4-month period had never been recorded in the internal electronic docketing system.  With the late-filed statement of grounds, the applicant filed a request for re-establishment of rights in respect of the time limit for filing the statement of grounds of appeal was filed and the prescribed fee was paid. A well-trained, competent and experienced assistant, who has the CIPA Patent Administrator Qualification had overlooked to record the 4-month period and the responsible patent attorney did not think to check whether the period for filing the grounds of appeal had been logged in the docketing system. The Board concluded that, even with a system of double checking in place, the representative is not discharged from his or her duty to properly instruct and supervise the assistant (cf. T 1465/07, reasons 18, last paragraph). In the case at hand, the appellants have not shown that the assistant was properly instructed or that she was properly supervised. Thus, the appellants have not discharged their burden to prove the existence of a normally satisfactory monitoring system. The omission from the docketing system of the time limit for filing the statement of grounds can therefore not be said to equate to an isolated mistake in a normally satisfactory monitoring system. The request for re-establishment of rights is to be refused.

Wednesday, 27 September 2017

R 2/15 - Suspected partiality of a deputy of the vice president

It's all about the right to be heard.

In review case R 19/12 it was decided that an objection of suspected partiality against the chairman of a board of appeal may be based on his capacity as vice president. Can such an objection of partiality also be raised if during the course of the appeal proceedings, the chairman is or was deputy of the vice president? Can you ask the members of a board it they have been a deputy of the vice president?  This case also confirms that a petition for review can concern an interlocutory decision

The petitioner claims his right to be heard has been violated numerous times. These include:

-During the oral proceedings before the board of appeal, the objected to chairman handed out a statement which said that the chairman did not wish to make comments. 

- The petitioner had asked for an interruption of the Oral Proceedings of an hour, but got only half an hour. The petitioner also requested return to written proceedings, which was denied. .

- The board rejected the objection of partiality on the basis that the scope of a deputy's responsibilities are more limited than that of a vice president. Petitioner alleges this was not communicated to the parties prior to the decision.

An earlier decision in this case also featured on this blog.  

Wednesday, 20 September 2017

T 914/13 - One 71(3) in the hand worth two in the bush?

During oral proceedings before the Examining Division, an auxiliary request of the applicant was found to meet the requirements of the EPC.  However, in response to the Rule 71(3) EPC communication, the applicant reverted to earlier higher-ranking requests. The application was refused by the ED. 

The applicant appeals, but in its preliminary opinion, the BoA essentially concurs with the ED in respect of the higher-ranking requests, and additionally finds claim 2 of the auxiliary request for which the intention to grant was issued earlier to contravene Art. 84 EPC.

Ultimately, the applicant files a sole main request based on the subject matter of the 'previously allowed' auxiliary request but with claim 2 deleted, and argues that, except for claim 2 having been deleted, the claims of the main request correspond to those on the basis of which the ED had issued its intention to grant during the examination proceedings.

However, rather than ordering a grant, the BoA remits the case back to the ED for further prosecution, while noting that it is not bound to the previous intention to grant, and suggesting that the arguments provided by the applicant in support of inventive step of the main request were to be heard.

Friday, 15 September 2017

J 19/16 - Does a loss of rights in the international phase after regional entry have any effect?

An international application was filed in 2005 (with priority of 2004) with the wrong receiving office -the USPTO- who assigned an application number to it. The international application entered the EP regional phase in Nov 2006, and the EPO assigned a EP application number to it. About three years (!!!) later, the USPTO recognized that they were not a competent receiving office and transmitted the international application to the International Bureau, which assigned it a new international application number. The EPO assigned a new European application number to it. Somewhat later, the EPO issued a loss-of-rights communication due to non-performance of the acts for entry for the application with the new number. The IB/RO notified the (original) applicant's professional representative that the international application (with the new number) was declared to be considered withdrawn for failure to pay the prescribed fees to the IB/RO. Various renewal fees were paid in the European phase. But then, in 2014, the Receiving Section issued a communication that the Euro-PCT application that had two European application numbers assigned would be consolidated as a single application. Furthermore, the appellant was informed that the application could not be processed by the EPO as designated Office, as it was considered withdrawn in the international phase, and that the time limit for requesting review of the findings of the IB/RO under Articles 24(2) and 25(2)(a) PCT seemed to have expired. The Receiving Section on 17 August 2016 decided that the application was deemed to be withdrawn with effect from 22 January 2009. It came to the conclusion that, as the IB/RO with notification of 22 January 2009 considered the international application withdrawn by virtue of Article 14(3)(a) PCT for failure to pay the prescribed fees, its effect as a regular Euro-PCT application (Articles 11(3) PCT, 153(2) EPC) had ceased as from the date of mailing of the notification from the IB/RO, with the same consequences as the withdrawal of a European application (Article 24(1)(ii) PCT). The applicant appealed this decision. Despite a range of arguments, including good faith, the applicant was not successful.

Tuesday, 12 September 2017

T 1329/04 - Post-published evidence cannot be sole basis of inventive step

In the decision T 488/16, recently discussed in this blog, it became again clear that the EPO is strict in allowing post-published evidence to prove inventive step. The core decision where this follows from is this decision, T 1329/04. 
The cathwords of this decision: The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve.
Thus, post-published evidence of a technical effect/advantage is allowed as long as there was enough information in the application as filed to make this 'new' information already plausible. 

Wednesday, 6 September 2017

T 158/14 - Hidden in plain sight

If your appeal to an opposition is entirely based on new documents, which moreover could have been found with a straightforward Espacenet search, should your appeal then be inadmissible? 
The opponent filed two new Japanese documents (D9 and D10) together with its appeal. The proprietor objects to these documents on the basis that they could easily have been found in a search during the opposition period. In particular, the proprietor observes that an Espacenet search in the same EPC class as the opposed patent for the year prior to the priority year gives document D10 as its very first hit.  Document D9 requires a bit more work, but is found in a similar manner. According to the opponent, basing an appeal on these late-filed documents is not only inadmissible but amounts to an abuse of procedure.
The opponent has it own complaints about the proprietor though. Three days before the oral proceedings, a further response is filed of about 90 pages, including new requests. 
The board doesn't go along with either objection. 

Friday, 1 September 2017

T 1519/15 - Not so poisonous parent

A 'family' of Amanita muscaria, which is best not eaten

This Examination Appeal shows the Board applying G 1/15 to what would otherwise have been a 'poisonous parent' situation. The outcome is as expected - the decision under appeal is set aside.

The Examination Division considered , pre-G 1/15, the situation as follows: claim 1 of the divisional application represents a generalization with respect to a species described in an earliest US priority document P1, and thus is, in accordance with the pre-G/15 legal situation, in its entirety entitled only to a later priority date from a US priority document P2. The EP parent application, which is cited as D3, also describes P1's species and is thus, at least in as far as pertaining to this species, entitled to the earliest priority date P1. D3 thus belongs, at least in as far as the described species, to the Art. 54(3) State of the Art of the divisional application and thus takes away the novelty of claim 1.

Thursday, 24 August 2017

T 293/12 - First substantive response after summons

Will the board admit a 'just in time' submission?

What is the position of a party in opposition appeal who did not respond to the statement of the grounds, but did file a submission in response to the summons to oral proceedings? 
In response to the notice of appeal, one of the opponents (respondent 2) filed a brief letter stating that it would await the statement of grounds of appeal and announced its intention to submit a reply later in due course. After the statement of the grounds was filed, the board set a time limit of 4 month to file such a response. However, no further submissions were filed until a month before oral proceedings. 
The proprietor considers that the opponent has lost it chance to file arguments, by not filing a timely response to the statement of the grounds--since the opponent had not filed a reply to the grounds of appeal, one cannot regard its later submission as an amendment to a party's case. On the other hand, the opponent considers the submission to be just further arguments, and sees no reason why they should not be admitted. The board find a middle ground, taking the submission into account but as a later amendment to a party's case.

Tuesday, 22 August 2017

T 1090/12 - Common general knowledge referred to by a board

Under what circumstances does common general knowledge require proof? And who has to provide proof: applicants/proprietors, opponents, examining divisions, opposition divisions, and boards of appeal, any differences or all alike? Is it required that doubt is substantiated -rather than just asserted- as to its existence before it has to be proven? The Case Law Book (8th edition, July 2016) provides in section I.C.2.8.5 "Proof of common general knowledge": "Where an assertion that something is common general knowledge is challenged, the person making the assertion must provide proof that the subject-matter in question is in fact common general knowledge (T 438/97, T 329/04, T 941/04, T 690/06). In the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact in contention, has to be proved, for instance by documentary or oral evidence (T 939/92, OJ 1996, 309, see also T 766/91, T 1242/04, OJ 2007, 421; T 537/90, T 329/04 and T 811/06). The proof is regularly supplied in citing literature (T 475/88). According to T 766/91 and T 919/97, evidence of general technical knowledge need be submitted only if the latter’s existence is disputed.". In the current case, the board however seems to indicate that the situation is different if the board itself uses common general knowledge to invalidate a claim.

Friday, 18 August 2017

T 1921/12 - Who should sign a 'decision'

In this decision the Board of Appeal is annoyed about the fact that a Rule 140 Correction of a decision of the Examining Division (signed by the whole division) and a Rule 139 Correction of an obvious error (signed only by the primary examiner in the opposition period, i.e. after grant; G 1/10 stopping this process was not yet issued) are not in the public part of the file.
The Board sees the R.139 correction as not valid since no formally correct decision is taken; it would require the signature of the whole Examining Division.   
In the decision several aspects of the problem-solution approach are re-discussed. The Board is also not keen on hearing witnesses. 

Wednesday, 9 August 2017

T 2369/12 - Everything you submit can and will be used against you?

The Examining Division held a particular auxiliary request not to be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 83 EPC).

In the appeal, the applicant now appellant submits a post-published document (Exhibit A) with the title "Efficacy of Enterisol® Ileitis administered to Lawsonia-positive pigs 1 to 6 days of age" and argues that there was no evidence on file that there were serious doubts substantiated by verifiable facts that the application lacked sufficient disclosure, and indeed, that the post-published data contained in "Exhibit A" made it plausible that vaccination with the L. intracellularis vaccine in the face of maternal immunity in young pigs would be effective.

The present case shows the Board scrutinizing Exhibit A and - probably to the dismay of the appellant - concluding that it is in fact Exhibit A which as a whole raises serious doubts on the suitability of the claimed bacteria for vaccination. "Everything you submit can and will be used against you"?

Friday, 4 August 2017

T 488/16 - Not plausible at the filing date

Is it plausible that the compound had the effect?

In this opposition appeal the effect (inhibiting PTK activity) of the claimed compound (dasatinib) was supported with post-published documents: documents (9) and (10) filed during the Examination procedure and documents (36) and (37) filed with the statement of the grounds. 

The application as filed contains a large number of compounds of which one is selected in the claim under appeal. The decision does not contest that the post-published documents show that this compound works, indeed works very well. The question is, whether this was plausible at the filing date. The board maintains the revocation of the patent. 

Monday, 31 July 2017

T 287/14 - Disclaimers: do not try this at home!

Amendments introducing disclaimers have probably led to more pain than joy. Disclaiming subject-matter in the application-as-filed usually is acceptable, but often has a high risk of lacking inventive step. Disclaiming subject-matter not in the application-as-filed led to G 1/03 already quite some years ago and is well-documented in many later decisions as well as in the Guidelines - strict conditions, which can basically only work out well if there is only one Art.54(3) EPC prior right document with a  single, clear disclosure. Disclaiming embodiments in the application as filed led to G 2/10, which has a quite cryptically phrased headnote, but when read as a whole also gives very clear conditions -it usually is possible, as long as it is clear that something remains and that you do not sneakily change to a different inventive concept-  and it is also well documented in the Guidelines. G 1/03 and G 2/10 relate to different cases, so cannot prima facie be considered as somehow conflicting, but Board 3.3.09 made the currently pending referral G 1/16 while handling appeal T 0437/14 asking a.o. whether the G 2/10 decision effects how some aspects of G 1/03 shall be interpreted. The current decision shows again that even of a disclaimer is made in good faith, it can easily be done wrongly and, as here, of the disclaimer is introduced before grant, one may all too easily end up in an inescapable Art.123(2)-123(3) trap... And the trouble was in this case actually not even in how the disclaimers needs to be drafted, but how novelty has to be assessed... which the opponent did correctly, but the examining division and the applicant/proprietor had not/did not... As to the aux requests, Art. 13(1) and 13(3) RPBA prevented further chances to remedy the trouble.

Tuesday, 25 July 2017

T 1153/12 - Lack of sufficiency in a mathematical claim

Claim 1 of this Examination appeal describes on a high level the mathematical processing of an audio signal. The claim comprises, for example, the generation of output channels using a basic matrix or a post matrix. Said matrices are functionally defined and by their configuration elements which  'are acquired by using' a number of parameters. 
The Board does not consider this definition sufficient. The description does not help in further understanding what processing is actually performed. Technicality is  never an issue in this decision, even though all processing seems to be of a mathematical nature. Nevertheless, also in mathematics the invention needs to be explained fully.

Friday, 21 July 2017

J 13/14 - On divisionals and translations...

Translating prohibited?

The present European patent application was filed in English as a divisional application from a parent application which was as an international application filed in German and also published in German. On entry of the parent application before the EPO, a translation into English was filed.

However, filing the divisional application in English turned out to be fatal mistake. 

According to Rule 36(2), a divisional application shall be filed in the language of the proceedings for the earlier application, while providing for an exception in case the latter was not filed in an official language of the European Patent Office, in which case the divisional application may be filed in the (non-official) language of the earlier application while having to provide a translation.

Filing the English translation did not change the language of proceedings of the parent application (which remained German). German is an official language of the EPO, so the exception of Rule 36(2) does not appear to apply. However, one cannot fault the appellant for exploring all legal remedies.


1. For the purposes of Article 76(1), first sentence, and Rule 36(2), first sentence, EPC, a European divisional application of an earlier European patent application which was filed in an EPO official language must also be filed in the EPO official language of the earlier application. Otherwise, it is filed in an inadmissible language. In this case a correction of the language deficiency by means of a translation into the language of the proceedings for the earlier application is neither required under Rule 36(2), second sentence, EPC nor is it even admissible in view of the wording of that provision and the Enlarged Board's decision G 4/08. Nor is it possible for the applicant to remedy the language deficiency in its divisional application by means of a correction under Rule 139, first sentence, EPC or by means of an amendment under Article 123(2) EPC.

2. In accordance with the established jurisprudence of the boards of appeal, a European divisional application which was filed in an inadmissible language cannot be treated as a valid divisional application by analogous application of Article 90(2) EPC.

Tuesday, 18 July 2017

T 1138/12 - Creative opposition issues

In this appeal in opposition several issues came up. The patent proprietor filed a very creative (second) auxiliary request which basically amounted to "Opposition division, tell me which claims (of the first auxiliary request) are allowable". The patent proprietor was also unhappy about the short time it took the opposition division to reach a decision while allegedly not all members were present at the same time. (please note that the decision is 33 pages, so the following is a brief summary!).

Tuesday, 11 July 2017

T 2092/13 - Misleading communication

In the statement of grounds of appeal against a decision from the Examining Division, the appellant also alleged a series of procedural violations in the first-instance proceedings and requested the reimbursement of the appeal fee. In particular, the appellant submitted that no intention to refuse the application was announced in the official communication preceding the refusal of the application. This argument was further developed by the appellant during the oral proceedings held before the board. The Board agreed with the applicant: "It is a general principle governing relations between the EPO and applicants that communications addressed to applicants must be clear and unambiguous so as to rule out misunderstandings on the part of a reasonable addressee, and that an applicant must not suffer a disadvantage as a result of having relied on a misleading communication. Therefore the board considered that, in the specific circumstances of the case, the examining division's communication created a realistic and reasonable expectation that any subsequent negative finding of the examination division on the issue of novelty and/or inventive step would then be communicated to the appellant before any adverse decision on any of these issues would be taken by the examining division. The appellant could therefore not expect that by closely following the examining division's suggestion [in the preceding communication] in respect of the original claims 1 and 2 a decision refusing the application on the grounds of lack of inventive step of these claims could then be immediately issued." 

Tuesday, 4 July 2017

T 578/12 - Dispensing restricted products


Many features of the claimed invention were disclosed in an earlier patent application. However, the earlier patent application had no drawings, nor any description of a detailed embodiment of a dispensing machine. To what extent is the earlier application an enabling disclosure?

Thursday, 29 June 2017

No longer a European patent for plants or animals exclusively obtained by an essentially biological process

As we discussed in our blog of 19 December 2016, there has been a long debate about patentability of plants/animals under the EPC. 
The final (?) chapter may now be closed: the Administrative Council took a decision to amend the relevant Regulations in order to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process.  This ends the option allowed by the Enlarged Board in G2/12 and G 2/13. The new rule enters in force almost immediately on 1 July 2017.

The key change to the rules is to introduce a new paragraph to R.28 (the current content being moved to R.28(1)):

R.28(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

To make sure that R.27(b) cannot be used as an escape, this rule has been made subject to R.28(2):
R.27 Biotechnological invention shall also be patentable if they concern:
(a) ...
(b) without prejudice to Rule 28, paragraph 2, plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety;
(c) ...

The full text of the press release of the EPO can be found here and is reproduced below.

Wednesday, 28 June 2017

T 1903/13 - Diverging auxiliary requests

In this appeal in opposition, the Board considered it to be within the board's discretion not to admit auxiliary requests which define subject-matter "diverging" from subject-matter of higher ranking requests, including those requests which, in essence, were filed during first-instance proceedings and re-filed with the respondent's reply, but were not examined by the first-instance department. 

Tuesday, 20 June 2017

T 2456/12 & T 0059/13 - Interpretation by the skilled persion

In two recent decisions in opposition appeal, the Board addressed how the skilled person interprets the claims. In interpreting the claims for assessing novelty and inventive step, the Board refers to established case law and emphasizes that "the patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding" and that "the skilled person should try with synthetical propensity, to arrive at an interpretation which is technically sensible and takes into account the whole of the disclosure of a patent". 

Monday, 19 June 2017

T 519/12 Technical standard similar to common general knowledge?

Using common general knowledge as a secondary document in the problem-solution approach usually requires a bit less argumentation compared to using a normal publication, e.g. it needs hardly to be argued why such content would be consulted. In this decision, the Board seems to take a similar approach for a technical standard (in this case on credit cards). 

Catchwords: It is expected from the skilled person that he would exercise his skills in the framework of technical Standards in force in his field of activity. No inventive activity can thus be derived from a feature that simply reflects the content of such a technical prescription (cf. point 3.5).

Tuesday, 13 June 2017

T 648/12 - New document introduced by Board

Non-electronic exercise equipment

The application concerned a training device which receives an electronic training script that defines a workout sequence in which a user is instructed to perform a plurality of activities. The user is prompted for a next activity when a defined quantity of a previous activity is detected. 
The application was rejected on the basis of document D1 which is an electronic system to monitor and train an individual on proper motion during physical movement. The Board agrees with the applicant that this is not relevant for the application. Unfortunately for the applicant, the Board knows from its own experience of other trainings systems, and send the case back for further investigation. 

Friday, 9 June 2017

T 688/13 - Bonus effect or main effect to be achieved?

One way street to obviousness?

This opposition appeal concerns an invention which provides an emulsion for coloring foodstuff, which is said to be more transparent and provide a more vibrant coloring ("stärkere Leuchtkraft").

This advantageous effect appears to be achieved by a reduced droplet size, which is also the sole distinguishing feature over D7 as closest prior art.

The opponent as appellant argues that the objective technical problem is to be formulated as how to obtain an emulsion which is more transparent and provides a more vibrant coloring.

According to the appellant, it is known from D5 and common general knowledge that a reduced droplet size improves the transparency of an emulsion, and that the more vibrant coloring would be obtained inherently, and thereby as a bonus-effect, when the skilled person reduces the droplet size of D7 to obtain the desired improvement in transparency.

The patent proprietor of course disagrees, and argues that the actual objective technical problem solved by the invention is how to obtain this more vibrant coloring and not the improved transparency. However, as a seemingly precautionary measure, the patent proprietor decides to 'eliminate' the technical effect of improved transparency by submitting an auxiliary request in which the emulsion is limited to application in Yogurt (which is non-transparent).

Does the latter strategy work? Yes. Although the Board concurs with the appellant with respect to the main request, the Board agrees that the 'transparency' effect is not achieved anymore by the auxiliary request. Accordingly, the improved vibrancy is now the sole technical effect of the distinguishing feature, by which the distinguishing feature is not rendered obvious anymore by the cited prior art.

Tuesday, 6 June 2017

T 2333/11: What exactly does "divided into smaller objects" mean?

Another case showing the dangers of Art. 123(2) EPC: an amendment going beyond the original disclosure seals the fate of this patent application. Dividing configuration information into smaller objects and dividing content metadata into smaller objects are not considered to be the same thing.

Friday, 2 June 2017

T 1818/12 - On evidence, sufficiency, and effect

This pencil cracked under the pressure

The main claim in this opposition appeal concerns an E. coli host cell sample subjected to non-lysing pressure. According to the opponent the examples in the patent are the only known cell systems that do not lyse under the conditions of the claim, or that give the effect of increased yield. As a result, the claim is neither workable nor inventive over the entire scope claimed. 
The Board has problems with the evidentiary value of the documents cited by the opponent. Furthermore, that there exists an embodiment falling under the scope of the claim that does not show the effect is in itself not enough to deny inventive step. 

Tuesday, 30 May 2017

T 260/14 - Partial priority for a working example of a generic claim feature

The opposition division did not allow the main request as it considered  the priority application to be prior art pursuant Art. 54(3) EPC and the generically worded claim 1 of the main request to be anticipated by an examplary dental impression material disclosed in the priority application ('poisonous priority'). The proprietor appealed and argued that partial priority should have been recognized, following the principles of G 1/15. In the opponent's view, the claim was not entitled to partial priority and the working example of the priority document (also present in the granted patent) destroyed the novelty of the claim. In the decision , the Board carefully explains how G 1/15 is to be applied, and confirmed partial priority for the part of claim 1 concerning the working example. Consequently, the claim was novel.

Wednesday, 24 May 2017

T 540/13 - Impossible to establish whether facts or arguments were filed or not

The opposition division had informed opponent O1 that "The notice of opposition contains no statement of grounds on which the opposition is based (Rule 76(2)(c) EPC)" and that "the notice of opposition will be rejected by the opposition division as inadmissible...". The opposition division issued a decision revoking the European patent as the ground for opposition pursuant to Article 100(c) EPC prejudiced the maintenance of the patent as granted. In addition to revoking the patent, the title page of the decision states: "Additional decision: The opposition of the opponent(s) O1 is rejected as inadmissible". Appeals were filed by the patent proprietor and opponent O1.  In its statement of grounds of appeal, appellant-opponent O1 requested that "the decision of the Opposition Division that rejected Opponent O1's opposition on grounds of inadmissibility pursuant to Rule 77 EPC be set aside and that Opponent O1's opposition be considered admissible". The Opponent argued that the facts and arguments in support of the grounds for opposition required by Rule 76 EPC were included in the DHL package that was timely filed within the opposition period, whereas the opposition division held that "Facts and arguments substantiating the indicated grounds for opposition have not been filed within the opposition period. Even the paper confirmation received on 4 October 2007 ... did not comprise facts and arguments, as has been confirmed by file inspection". How did the Board deal with these opposite positions of Opponent O1 and the opposiion division? And how did this effect the party status of the Opponent?

Friday, 19 May 2017

T 1852/13 - Essentiality test vs. gold standard

The gold(en) standard?

This case concerns a divisional application in which a feature was removed from claim 1 with respect to claim 1 of the parent application, and whether such removal satisfies the requirements of Art. 76(1) EPC (and equivalently Art. 123(2) if it were to be performed as amendment).

This situation is dealt with by the 'essentiality test' of T 331/87.

This case discusses the essentiality test as it differs across its various versions (English original vs. German translation, original decision vs. guidelines), how it was applied in the recent past, criticism on the test including the criticism raised previously in T 910/03, and most importantly, how it fits into the 'gold standard' established by G 2/10.

After various deliberations, the Board considers the essentiality test to be dead: "Die Kammer ist zum Schluss gelangt, dass der Wesentlichkeitstest nicht mehr zum Einsatz kommen sollte", with one of the reasons being that the original phrasing of 'may not' in T 331/87 leaves open the possibility that all three conditions of the test are satisfied yet that Art. 123(2) is still violated.

As such, the Board considers that the essentiality test cannot replace the gold standard even in its specific application area (removal or replacement of a feature).

Is the essentiality test now finally dead? After T 910/03 it languished but occasionally reappeared.

The Board refrains from referring the matter to the EBoA as it considers such referral not to be decisive in the present case, since according to the Board a same conclusion would be reached using both the essentiality test and the gold standard (being that the removal violates Art. 76(1) EPC).

Monday, 15 May 2017

T 1965/11 Materialised Views

The claimed invention makes use of available materialised views in order to improve database query performance. Due to the age of the application (filed in 2001), the Board examines inventive step in an appeal concerning added subject matter.

Friday, 12 May 2017

T 1811/13 - Can lack clarity imply lack of sufficiency?

Where exactly are the boundaries of the forbidden  area?

Can a lack of clarity in a claim lead to insufficiency of disclosure? The opponent tries to convert a clarity objection into a lack of sufficiency. The argument is that, the impossibility for the skilled person to know whether he is working within the forbidden area entails the impossibility of carrying out the invention.
To support the point a number of T decisions are cited which side with this argument. The board trumps it though with even more T decisions that do not agree. At the end, the board does concede though that in other situations this argument might work. 

Wednesday, 10 May 2017

T 1463/11 - Business person versus Skilled person

Is it technical to centralize a function?

The appeal concerns a centralized merchant authentication processing system. The Examining division rejected the application as a "straight-forward implementation of an administrative (outsourced payment) scheme using a notorious distributed information". Initially, also the Board did much like the invention. In the summons, the Board considered the invention to be a "straightforward implementation, on a standard computer network, of non-technical measures (business measures and programming measures)".
Something must have happened after that because the appeal resulted in an order to grant. The reasons provide a detailed discussion of the 'business person' versus the 'skilled person'. 

Monday, 8 May 2017

T 1658/12 - When prior art Claims and Description contradict

A cupcake dispensing machine

The Examining division has rejected a patent application for a dispensing system on the basis of a document D2. 
According to the Examining division, the subject-matter of claim 1 was not explicitly disclosed in the description of D2, since it did not explicitly disclose that "the processor sends a signal to said at least one dispensing means" in combination with the feature that "presentation of the user-identifier to the reader causes dispensing of the selected item". However, document D2 did disclose such an automated use of the system in claims 35-38.
The Board does not agree with the Examining division and offers the following catchwords:
In determining what is made available to the public within the meaning of Article 54(2) EPC by a prior art patent document, it must be borne in mind that it is the description which chiefly serves to disclose the invention in a manner that it may be carried out, whereas the chief function of the claims is to define the subject-matter for which protection is sought. Where a combination of features is found only in the claims (or only in the claims and a "Summary of the Invention" which merely recites the features of the claims), it must be very carefully considered whether this combination truly corresponds to the technical teaching of the document as it would be understood by a skilled person, or whether it is merely an artefact of the claim drafting process aimed at obtaining maximal scope of protection (see Reasons, point 3.8; also T 312/94, Catchword; T 969/92, Point 3, and in particular, page 4, first paragraph; T 42/92, "Orientierungssatz").