Friday, 31 March 2017

T 545/08 - A lecture: internet disclosures and balance of probabilties

Subject of this appeal is the date of public availability of an internet disclosure and whether the Examining Division should have allowed evidence with respect to the publication date of this disclosure into the proceedings. Although the Board describes somewhere in its decision that the Boards of Appeal of have a huge backlog, this Board spent quite some time on writing a nice "lesson" on determining the date of availability to the public of internet disclosures and how the balance of probabilities must be applied in those cases. Of course, the Board has to provide a well-reasoned decision - somehow I have the feeling that the lesson is also written for the Examining Division because it seems that the Board was not completely happy with their work.

Tuesday, 28 March 2017

T 737/11 - Decision according to the state of the file leaves it to speculate on the applicable reasons by mosaicking various objections and arguments

In examination proceedings, the applicant requested an appealable decision according to the state of the file. The Examining Division issued the decision with its grounds as follows: "In the communication(s) dated 22.07.2010, 25.10.2010 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein. The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 08.11.2010. The application must therefore be refused."  The decision does not mention the oral proceedings that were held. The communications referred to different requests.

The Board concludes that in the present case considerable uncertainty exists as to the precise reasons on which the contested decision was based. The written decision leaves it to the appellant and the Board to speculate on the applicable reasons by mosaicking various objections and arguments from two communications and possibly other elements of the file, such as the minutes of the oral proceedings - to which the written decision does not even refer. It is therefore not reasoned within the meaning of Rule 111(2) EPC. This amounts to a substantial procedural violation according to Rule 103(1)(a) EPC and to a fundamental deficiency according to Article 11 RPBA

Monday, 27 March 2017

T 577/11 - Entitlement to priority; transfer of priority right

In this case, the Board goes very deep into the issue of the entitlement to claim priority by a successor in title. In particular: when does the actual transfer need to take place? Could the EPO recognize a retroactive transfer if a national law would allow that?
The answer: strict - the actual transfer must have been completed before the priority is claimed. 


1. Continuation of the appeal proceedings after first oral proceedings before the board with the scheduling of second oral proceedings is not, as such, a reason for admitting new submissions filed after the first oral proceedings (see Reasons, point 2.3).

2. If the debate on a particular topic had been closed without announcement of a decision on the matter, the board has discretion over whether or not it re-opens the debate and over the extent to which it does so (see Reasons, point 3.1).

3. For a claimed priority to be valid pursuant to Article 87(1) EPC 1973, the applicant of a subsequent application claiming priority from an earlier application (priority application) who is not the person who filed the priority application must, when the subsequent application is filed, be that person's successor in title in respect of the priority application or of the right to claim priority. A succession in title that occurs after the filing date of the subsequent application is not sufficient to comply with the requirements of Article 87(1) EPC 1973 (see Reasons, point 6.5).

4. Where the applicant of the priority application and the applicant of the subsequent application contractually agree that (only) economic ownership ("economische eigendom" under Dutch law) of the priority application and the right to claim its priority is to be transferred to the subsequent applicant, this is not sufficient to consider the latter a successor in title within the meaning of Article 87(1) EPC 1973 (see Reasons, point 6.6.2).

Tuesday, 21 March 2017

T 0396/14 - Meaningful interpretation of claim by skilled person

What is the upper end of this range?

Granted claim 1 in this case contains the step 'positioning an upper end of the retransmission window'. Unfortunately, the description does not contain a clear definition of what the upper end is, and in fact the term only occurs a few times in the summary of the invention. Furthermore, with a (according to the opposition division) conventional understanding of the upper end, the claims would not work. The granted claims were then revoked for being insufficiently disclosed. 
The board gives more credit to the skilled person to come to a working embodiment that falls under the terms of the claims, then the opposition division did. 

Tuesday, 14 March 2017

T 0625/11 - How technical is determining a threshold value?

In this appeal from the Examining Division the main question is whether the claimed method of determining a threshold value of an operational parameter of a nuclear reactor, based upon a simulation of the functioning of the reactor, is technical. The Examining Division recognised that the use of a computer made the claimed invention technical in the sense of Art. 52 EPC, but denied inventive step. Discussing the case law, including T 0641/00 (Comvik) and T 1227/05 (Infineon), the Board distinguishes two different approaches. The first approach requires including the functioning of the nuclear reactor to state the technical effect in the claim. The second approach, which is in line with T 1227/05, does not require stating the technical problem in the claim. The Board chooses the second approach and concludes that determining the value of a parameter gives the claim a technical character going beyond the simple interaction between the numerical interaction algorithm and the computer.

Friday, 10 March 2017

T 1434/13 - When priority becomes important: D1 is published in the priority year

Fig. 2 of D1 (WO2006/095202)

Only in few number cases the right to priority is extensively examined - in general only if there is prior art that has been published in the priority year. In this opposition appeal there was a document on file (D1) that was published in the priority year of the disputed patent. An interesting thing to mention is that document D1 is a PCT application of the same applicant as the owner of the disputed patent. In the opposition proceedings, the Division decided that the patent did not enjoy the right of priority from the two priority documents and, thus, that the claim as granted lacked novelty. In this appeal, the Board repeated the work of the Opposition Division. The Board wrote down an interesting reasoning because different aspects played a role: features were disclosed in the figures, features were not disclosed as a whole in a single embodiment and it seems that essential elements of the priority documents are not the claims (in other words: the priority documents disclose different inventions). 

Tuesday, 7 March 2017

T 1768/11 - Almost destroyed the chance to present new requests with the statement of grounds

In the Annex to the summons for oral proceedings, the Examining Division raised objections under Art. 84, 123(2) and 56 EPC.  The applicant responded by requesting "that instead of Oral Proceedings an appealable decision be issued based on the state of the file". The applicant neither commented on the substance of the communication nor submitted amended claims. After the Examining Division had issued the requested decision, the applicant filed the present appeal and, with its statement of grounds of appeal, replaced its sole substantive request with a new main request and first and second auxiliary request. The applicant hereby took a major risk: when wanting to file new requests, the proper reaction would have been to comment on the objections and file amended claims in first instance proceedings, as Art. 12(4) Rule of Procedure of the Board of Appeal allows the Board to held requests inadmissible that could -and should- have been presented in first instance. Luckily, the Board decided to exercise this discretionary power in the appellant's favour and to admit them into the proceedings (... but they failed on Art.123(2) and 84).