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.