Tuesday, 28 February 2017

T 145/13 - Non-enabled document in a non-unity objection

Can a non-enabled document be used in a non-unity objection? In 2004 the applicant filed an international application with 73 claims. The written opinion of the US ISA searched all claims and does not raise a lack of unity objection. The european phase is entered with a reduced number of 55 claims, but the supplementary European search report is less positive than its US counterpart. It finds a-posteriori non-unity and identifies 7 groups of inventions. The Examining division does not admit a first auxiliary request, filed during oral proceedings, because it relates to unsearched subject matter, Rule 137(5).

The appeal board disagrees. It finds that R.137(5) does not apply since the request corresponds to a combination of the original claims. R.164(2) does not apply since the cited document is not enabled, and is thus unsuited to support a lack of unity objection. 

Friday, 24 February 2017

T 1896/11 - Clearly incorrectly claimed?

Incorrect password...

As suggested by a reader, this opposition appeal is of interest since it deals with the situation where a claim as granted is technically 'incorrect'  in that it does not correspond to the technical teaching of the description. The question at hand is whether independent method claim 5 of each of the appellant's respective requests (being the patent proprietor) infringes Art. 123(3) EPC since the claim has been amended in each of the requests to correct the technical mistake.

The appellant provides two lines of arguments to argue that the amendments do not infringe Art. 123(3). The first line of argument is that claim 5 of the granted patent contained an inaccurate technical statement, and that from the description it was clear what was obviously intended and, following decision T 108/91 (OJ 1994, 228), claim 5 could be corrected to reflect this intention.

The second line of argument is: in order to establish the protection conferred by claim 5 of the granted patent, and thus to identify the boundary of acceptable amendments, Article 69 EPC had to be taken into account. Since the current amendments to claim 5 reflected this understanding, they did not extend the protection conferred and therefore did not infringe Article 123(3) EPC.

Do either of T 108/91 and Art. 69 EPC apply and bring relieve? The current BoA does not think so.

Tuesday, 21 February 2017

T 2075/13 - Is the subject-matter a convergent development?

In this opposition appeal the appellant (opponent) argued that the new main request filed during the oral proceedings should not be admitted because its subject-matter should not be considered as a convergent development from the subject-matter of the earlier filed requests. However, the Board agreed with the respondent (patent proprietor) that the subject matter of the new main request is "a clearly convergent development from the subject matter" of an earlier request, the amendments attempting to clarify some expressions and being a direct reaction to the discussion at the oral proceedings.

Friday, 17 February 2017

T 2602/12 - Appellant accused of non-appropriate behavior

In this opposition appeal the Respondent (Opponent) accused the Appellant (Proprietor) of gaining procedural advantages, misleading the public and delaying the proceedings. 
The claim that was granted by the Examining Division had a features that was claimed as "the step xyz is carried out according to a process selected from the group consisting of (i)...., (ii)..., and (iii)....".  In the Opposition proceedings this claim was refused because the process (ii) was considered not to be inventive. 
The decision of the Board relates to a main request wherein the above feature was limited to "the step xyz is carried out according to process (i)". According to the Respondent this request was about equal to a request that was withdrawn during oral proceedings before the Opposition Division. Thus, the Appellant filed a main-request in which one non-inventive alternative of three was removed from the refused claim, while the Appellant withdrew a request to this extent during the first instance proceedings. Is such a main request admissable? Did the Board think this is a procedural advantages, is misleading the public and is delaying the proceedings?
Further, during the Opposition proceedings and during most of the Appeal proceedings, the Respondent did not file inventive step arguments against alternative (i). At oral proceedings they were filed for the first time. What did the Board think about this behavior of the Respondent?

Tuesday, 14 February 2017

T 2117/11 - Devolutive effect of the appeal

The examining division held that the claims relating, on the one hand, to a needle assembly and, on the other hand, to a method of making a needle assembly were not linked by the same special technical features and this raised a non-unity objection. The applicant subsequently filed a new set of further amended claims limited to a needle assembly. The examining division raised further objections under Articles 123(2), 84, 54(1),(3) EPC, and, after being requeste to do so, took as decision according to the state of the file - to refuse. The applicant appealed. With the statement of grounds, the appellant requested that the decision under appeal be set aside and a patent be granted on the basis of a new set of claims  directed to a needle assembly, as annexed to the statement of grounds. In response to the preliminary opinion issued by the Board and attached to the summons for oral proceedings, the appellant filed a new main request directed to a method of making a needle assembly. The Board did not allow this change because the applicant's choice of limiting to the claimed needle assembly rather than keeping the method as well and challenging the non-unity objection entailed that the examination of the application was limited to the selected subject-matter only, i.e. the claimed needle assembly. The decision was consequently based on the set of claims limited to a needle assembly - and this subject-matter thus defines the limit to the power of the Board to examine the appeal.

Sunday, 12 February 2017

T 1440/09 - Public availability of document submitted for standardisation

In the past several discussions took place whether or not documents submitted to a standardisation organisation were public. After submitting the document to the standardisation organisation, the applicant put the document on the Internet, and only then was a patent application filed. The Board had the impression that the applicant thought that since the submission to the standardisation organisation was to be regarded as confidential, that this gave protection for a later submission of the patent application (a form of priority). The Board destroyed this dream.

Thursday, 2 February 2017

G 1/15 (2) - The decision on partial priority

The Order was already issued by the Enlarged Board in November last year, but the full decision and its reasoning became available only just now. The Enlarged Board considered the EPC priority provisions of Art. 87(1), 88(2)-(3) and 89, Paris Convention Priority and the FICPI Memorandum in detail to come to its decision. The right to claim priority and its effect/ purpose (reason 4) led the Enlarged Board to conclude that a generic claim encompassing alternative subject matter may not be refused partial priority, provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.