Tuesday, 25 April 2017

T 1955/12 - User preferences and a patentable medical injection device

In this appeal from an opposition, the Board discussed the novelty and inventive step of a medical injection device having a housing that can be customized. While in the field of electrical engineering user preferences are typically dismissed as non-technical, this Board in the field of mechanics finds that "the objective problem to be solved is to optimise the design for all possible patients".

Tuesday, 18 April 2017

J 23/14 - Pendency revisited: the 6-month period for paying the renewal fee with an additional fee

Just after the Guidelines explicitly indicated that a patent application is still pending for the purpose of filing a divisional until the expiry of the 6-month period for paying the renewal fee (even if that fee is not paid), T 1402/13 ruled that the deemed withdrawal of a patent application occured if the renewal fee was not paid at the due date - and that the patent application was thus not pending in the 6-month period if the fees were ultimately not paid (see our earlier blog). Shortly after T 1402/13, R.51(2) was amended (per 1/1/2017) for clarification by addition of a last sentence "The legal consequence laid down in Article 86, paragraph 1, shall ensue upon expiry of the six-month period." The current J-decision addresses the topic again, and refers to the EPC1973 situation, the explanatory notes of EPC2000's drafting, the distinguishing T 1402/14, R.51(2) as amended per 1/1/2017, and EPO form 2522, which was sent to the party in the present case and clearly states that a patent application is deemed withdrawn only upon expiry of the six-month grace period for paying the renewal fee with additional fee. This J-decision concludes as follows: Notwithstanding the wording of Article 86(1) EPC 2000 and Rule 51 EPC (in the version in force until 31 December 2016), for the sake of the protection of legitimate expectations of the users of the European patent system, the Board holds that a patent application is deemed to be withdrawn only upon expiry of the six-month grace period for paying the renewal fee with additional fee under Rule 51(2) EPC, in accordance with the jurisprudence that prevailed before decision T 1402/13. The current decision addresses whether the loss of rights occured due to the missing of a period -as that is a prerequisite for re-establishment-, when the period that led to the loss of rights expired, and also when the removal of the cause of non-compliance occured.

Tuesday, 11 April 2017

T 1543/12 - Multiple ranges in claim, are all combinations supported?

Many independent combinations are possible

Claim 1 in this opposition comprises a number of ranges. Individually, each of the ranges is supported by the application, but there may be combinations of the ranges that are not. Is such a claim properly supported over its entire width? The board thinks it is.  
Claim 1 in the pending requests contained a number of ranges:
1. A method for preparing a dry granulated product containing L-lysine and having the following composition:
L-lysine content in solid matter: 40 to 85% by weight equivalent ratio of anion/L-lysine 0.68 to 0.95 moisture content: 5% by weight or less (...)
Reasons for the Decision
4. Insufficiency of disclosure (Article 100(b) EPC)
4.1 The Appellant objected that the subject-matter of claim 1 could not be carried out over the whole range claimed. The claimed process is directed to the preparation of products covering the whole range of claimed lysine contents. However, it was not possible to produce lysine products having a lysine content of 85% and an equivalent ratio of more than 0.71, although an equivalent ratio of 0.68 to 0.95 was claimed.
4.2 According to Article 100(b) EPC, the European patent must disclose the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person.
4.3 In the present case the process according to claim 1 is characterized to produce a L-lysine product. This product is inter alia characterized by a moisture content up to 5% by weight, of a L-lysine content in the final product of 40 to 85% by weight and an equivalent ratio of anion/L-lysine of 0.68 to 0.95. Therefore, any L-lysine fulfilling these three parameters is a product according to the invention. In order to be carried out over the whole range claimed, it is only necessary that each value within the claimed ranges can be achieved individually. It is, however, not a requirement of Article 83 EPC, that each and every possible combination of all individual limiting values within the claimed ranges can be achieved. The example given by the Appellant is technically impossible, since a product comprising 85% by weight of L-lysine can only comprise 15% by weight of an anion forming compound, which in the present case is hydrochloric or sulfuric acid. It follows that depending on the molecular weight of the acid used in the process the ratio of anion/L-lysine can reach only certain theoretical values within the claimed range. The skilled person knows, that both the L-lysine content in the final product and the achievable ratio of anion/L-lysine are dependent on each other and cannot vary independently over the whole range of values claimed for each of these two parameters.
4.4 Therefore, the Board concludes that the European patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a skilled person in the sense of Article 83 EPC.
This decision T 1543/12 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T154312.20160419. The file wrapper can be found here. Photo by Bill Ferngren (Braite), via PixaBay under a CC0  license (no changes made).

Friday, 7 April 2017

T 1750/14 - New applicant, new representative & upcoming oral proceedings

In the examination case under appeal, the then applicant's representative requested approximately 5 weeks before the scheduled oral proceedings the postponement of the oral proceedings and the postponement of the final date for making written submissions ("final date") on the grounds that he had been informed that the present application had been transferred from the then registered applicant to another applicant, and that he did not know whether he was to remain the representative. This request was refused by the examining division as it allegedly did not constitute a serious ground within the meaning of OJ EPO 1/2009, 68, point 2.3. The applicant appeals, and argues that his right to be heard was violated and that the decision was not sufficiently substantiated.

In considering the appeal, the board considers the request for the postponement of the date of oral proceedings to be distinct from the request for the postponement of the final date, and concludes that 
the examination division failed to sufficiently substantiate in its decision why the final date could not be postponed. The applicant's main request is thus held allowable.

There are interesting deliberations in this case. Does the situation indeed qualify as a serious ground as alleged by the appellant, even though it is not explicitly mentioned in  OJ EPO 1/2009, 68, point 2.3? Did the examination division have discretionary power in the first place to postpone the final date in view of Rule 116(1) EPC stipulating that Rule 132 shall not apply? And can the date of oral proceedings indeed be postponed independently from the final date or not?

Wednesday, 5 April 2017

T 579/16 - Double identity

This appeal is against a decision of the opposition division by which an opposition was deemed non-admissible. In the present case case, the form 2300 indicated "BYK-Chemie GmbH" as opponent, whereas the attached document containing the indication of facts, evidence and arguments mentioned "Einsprechende: BASF Coatings GmbH" just before the heading "EINSPRUCHSBEGRÜNDUNG".

Due to this seemingly contradictory information, the opposition division held the identity of the opponent not to be sufficiently established before expiry of the opposition period, and as a consequence the opposition inadmissible.

In the appeal, the opponent now as appellant essentially argues that since the tick box for 'Multiple opponents' in form 2300 was not checked and the address specified in form 2300 corresponds to that of BYK-Chemie, it was clear that BYK-Chemie was intended to be the opponent and that the mentioning of BASF in the attached document was essentially an clerical error.

However, the board of appeal concurs with the opposition division with respect to the lack of clear identification of the opponent, but does hold the mentioning of BASF to be correctable under Rule 139 EPC first sentence, as requested by the appellant/opponent in both proceedings but for the first time requested after the expiry of the opposition period.

Of interest here is how the board deals with the application of the criteria summarized by G 1/12 whether such a request is allowable, and in particular, whether the request for correction in this particular case was filed "without delay".