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T 1058/15 - Probably relevant...decidedly late

What happens when in opposition appeal the opponent-appellant – who in appeal had initially merely raised grounds in view of lack of inventive step – shortly before oral proceedings files a new document D8 allegedly destroying novelty of the claims?

Regarding this fresh ground of appeal (i.e., novelty), it is established case law that, exceptionally, in appeal proceedings a fresh ground may be admitted if the patentee agrees that such a ground be considered and if it is deemed by the Board to be prima facie highly relevant (G 9/91, Reason 18).

In view of late-filed document D8, in principle the Boards of Appeal have the discretion, under Article 114 (2) EPC, not to allow such late-filed evidence. This applies in particular to evidence filed after the statement of grounds of appeal or the reply (Article 13 (1) RPBA) or after the oral hearing has been served (Article 13 (3) RPBA). The criteria to be used in the exercise of this discretion vary according to the state of the proceedings in which the evidence is submitted.

In the present case, the appellant filed document D8 only after the hearing had been scheduled and only a few weeks before the hearing. At such a late stage of the appeal process, general legal principles such as procedural economy, legal certainty and equal treatment of the parties are becoming increasingly important.

The Board found that the possible relevance of an easily retrievable document such as D8 should already have become apparent from its title, figures and IPC class. The opponent-appellant had failed to substantiate any reasons which would excuse overlooking D8 and its omitted submission in the first-instance proceedings.

The novelty objection based on D8 in the present appeal proceedings could not be considered a completely new ground for opposition as in the present case novelty had already been objected to in opposition proceedings on the basis of another document (D1). Regardless, the Board found that in the spirit of G 9/91, the patentee should not have to expect that a further ground for opposition will come into play during the appeal proceedings and complicate the procedure.

Accordingly, given that the patentee did not consent to the admission of new document D8, and in view of the inaccurate and very late presentation of this document and the very late revisitation of novelty which was not the subject of the appeal proceedings until then, the Board - notwithstanding relevance of the new document - decided to exercise its discretion under Article 13 (1) RPBA in order not to allow document D8 in the proceedings. The claims were found to be inventive and the appeal was rejected.

T 1648/17 - repeated non-attendance at oral proceedings

 Foto from Guddanti (Pixabay) unrelated to the case

This appeal was lodged against a decision of the examining division refusing the European patent application in suit on the ground that claim 1 and 8 lacked an inventive step (Art. 56 EPC).  

In the statements of the grounds of appeal, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of two new requests never presented during first instance examination proceedings. The two new requests were based on an additional feature derived from the description and not from the claims as originally filed. This would have meant that the BoA would have needed to remit the case to the Examining Division for a new search thereby going beyond the scope of appeal proceedings that are primarily concerned with examining the contested decision rather than to continue examination  (G 10/93). The applicant/appellant did not attend the Oral proceedings both during examination and during appeal proceedings reason for which the BoA believes that the applicant did not want to submit any new request from that point in examination. Therefore the BoA did not admit the requests in appeal (Art. 12(4) RPBA) and dismissed the appeal. 

T 1688/12 - Copyright notice and internet publication date

The present case relates to an opposition appeal by both parties against an interlocutory decision of the Opposition division. During the opposition, a document D1a was introduced into the proceedings, by the OD, which document destroyed the novelty of claim 1. D1a was a product data sheet bearing a copyright notice dated 05/2006. The document also mentioned that data sheet could be downloaded from the relevant company's website. In appeal, the main request of the proprietor was whether the D1a document was Art. 54(2) prior art against the patent in suit, filed in March 2008. The fact that the document would be novelty-destroying was not contested.

The patent proprietor argued that copyright notice date was not sufficient by itself to demonstrate that D1a had indeed been published before the patent filing date. The Board held that it was obvious that the product data sheet was intended for publication on the Internet, and that the question of whether publication actually took place before the filing date should be clarified in accordance with the principle of "free assessment of evidence". The fact that the copyright notice is dated 22 months earlier serves a first indication of a prior publication of D1a. The Board further held that it may, in principle, be presumed on the basis of normal commercial practice that publication has taken place shortly after the date of the copyright notice, unless there is an indication to the contrary.

The proprietor's main request was therefore denied. The final outcome of the appeal was that the interlocutory decision of the Opposition Division was upheld.

At the "User consultation conference Rules of Procedure of the Boards of Appeal" in Munich on 5 December 2018, users of the system the opportunity to hear presentations by members of the Boards of Appeal on the revised draft, followed by panel discussions by members of the Boards of Appeal Committee, the Boards of Appeal and representatives of user associations.
A first public draft of the RPBA was subject to an online user consultation procedure in early 2018. In light of the responses received, the second version was drafted, including newly introduced provisions on case management. This revised draft of the Rules of Procedure of the Boards of Appeal (RPBA) was agreed upon by Boards of Appeal Committee (BOAC) and the President of the Boards of Appeal, and formed the basis for the conference.
The revised draft shows major changes to case management issues as well as to Article 12 "Basis of appeal proceedings" and Article 13 "Amendment to a party's appeal case" of the RPBA, which may change the rules of the game (jn appeal and in first instance as well!) as of 2020.
Today, 14 December 2018, a report on the user consultation conference was posted on the website of the Boards of Appeal. The report can be found here and is shown in full below.

T 2303/16 - refused for lack of two-part form, conciseness and reference numerals

Car towed because of a parking violation

The application was refused after a single office action on the grounds of lack of conciseness, two-part form and reference numerals. In appeal these are addressed but no interlocutory revision was given. 
After entering the regional phase at the EPO in 2006, the applicant received its first office action in 2014. The office action raised clarity issues and a few smaller problems, in particular lack of reference numerals. The international search report had complained earlier about lack of two-part form, and lack of conciseness due to too many independent claims (in addition of substantive problems). In it's reply, the applicant amended for the clarity issue, and addressed the patentability of the claims. The second communication in ten years was a refusal. 
The board did not see a problem with a refusal based on formal issues that were only identified in the ISR, but did rule that interlocutory revision should have been granted. 

Hot News: T 1063/18 - Rule 28(2) EPC in conflict with Art.53(b) as interpreted by the EBoA in G 2/12 and G 2/13.

Hot News: Communication from the BoAs (link):

Decision in case T 1063/18 on the patentability of plants

7 December 2018

Case T 1063/18 concerns the appeal by the applicant against the decision of the examining division to refuse European patent application no. 12 756 468.0 (publication no. EP 2 753 168) for the sole reason that the claimed subject-matter falls within the exception to patentability according to Article 53(b) and Rule 28(2) EPC (here: plants exclusively obtained by means of an essentially biological process).

At the oral proceedings, which took place on 5 December 2018, Technical Board of Appeal  3304, in an enlarged composition consisting of three technically and two legally qualified members, held that Rule 28(2) EPC (see OJ 2017, A56) is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. The Board referred to Article 164(2) EPC, according to which the provisions of the Convention prevail in case of conflict with the Implementing Regulations, and decided to set the decision under appeal aside and to remit the case to the examining division for further prosecution.

The written decision containing the board's full reasons is expected to be issued early next year.

We will post another blog as soon as the written decision is available The file wrapper can be found here. Photo "Farmer's Market Summer Colors" by Luxbao obtained via Flickr under Public Domain Mark 1.0

Update 19-12-2018: Minutes from Oral proceedings before the Board available

The minutes from the oral Proceedings of 5 December 2018 are available in the EP Register (here) and are cited in full below (emphasize aded by the blog editor).

Appeal number T1063/18-3.3.04

Application No.: 12756468.0
Applicant: Syngenta Participations AG

Minutes of the oral proceedings
of 5 December 2018

Composition of the Board:

Chair: G. Alt
Members: R. Morawetz
                 P. de Heij
                 A. Chakravarty
                 L. Bühler

Start of oral proceedings: 09:30 hours
End of oral proceedings:  13:00 hours

 Present on behalf of the appellant:

Mr M. A. Kock, authorised by an authorisation dated 19 October 2018, and Mr N. Amelot, professional representatives, both identified by EPO-identity card.

The chair declared the oral proceedings open. She noted that the board had been enlarged pursuant to Article 21(3)(b) EPC and Article 9 RPBA. She then summarised the relevant facts as they appeared from the file. The appellant confirmed that they had received all third parties observations on file.

The chair stated that the board had taken note of the third parties observations. The chair also stated that the board intended to decide whether the decision to refuse the application was correct.

The chair ascertained the appellant ’s opening requests which the board understood to be as follows.

The appellant requested:

- as the main request: That the decision under appeal be set aside and, should the board remain of the opinion that the grounds raised in the communication of the board prevented the application from being granted, the case be remitted to the examining division for further prosecution on the basis of the set of claims filed on 7 August 2015;

- as auxiliary request 1: Should the board not be in a position to take a decision on the validity and/or scope of Rule 28(2) EPC according to the main request or see points of law of fundamental importance, questions be referred to the Enlarged Board of Appeal as suggested in the statement of grounds of appeal dated 5 April 2018, including a question to clarify the apparent contradiction between the definitions of essentially biological processes under G 2/07 and under Rule 27(c) EPC and the Biotechnology Directive 98/44, as further construed by the Commission Notice;

- as auxiliary request 2: Should the board be minded to dismiss the appeal without deciding on the appellant's main request to set aside the decision of the examining division, the following question be submitted to the Enlarged Board of Appeal: "Is a Board of Appeal entitled to reject an appeal on grounds not related to the appeal without first deciding on the Appellant's Main Request to set aside the decision of the Examining Division?";

- as auxiliary request 3: Should the board intend to reject the request to remit the case to the examining division for further prosecution on the basis of the set of claims filed on 7 August 2015, a patent be granted on the basis of an amended set of claims filed as auxiliary request 4 with the letter dated 26 October 2018.

The chair summarised the appellant’s different lines of argument presented in writing. She noted that one of these lines was that Rule 28(2) EPC was in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2 /13, and that therefore Article 164(2) EPC applied. She invited the appellant to first present comments on this line of argument.

The appellant presented their arguments on the matter and stated that they agreed with the observations of the third party Konig, which the board should take into consideration, and had nothing to add to the comments provided by Konig on the observations of the third party ESA (European Seed Association). [Note: both third parties made multiple submissions - see EP Register]

After deliberation, the chair announced that the board was of the opinion that Rule 28(2) EPC was in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13, and that in accordance with Article 164(2) EPC the provisions of the Convention prevailed.

Next, the appellant presented their arguments in support of the request for remittal to the examining division. These were, inter alia, that the objections of lack of inventive step and lack of clarity had been raised by the board and that they had the right to have these objections considered by two instances.

After another break for deliberation by the board, the chair stated that the board would not order the remittal of the case at the present stage of the oral proceedings, but would reconsider the request after the appellant had been heard on the issue of inventive step of the subject-matter of claim 1 of the main request. There was no loss of instance for this issue because the examining division had provided an opinion on inventive step.

As regards document D1 and the San Luis Ancho pepper disclosed therein, the appellant submitted that it was not known whether the features in claim 1 defining the extreme dark green colour of the fruit at immature harvestable state, i.e. the chlorophyll A and chlorophyll B, lutein and violaxanthin  content, were inherent features of the San Luis Ancho pepper. The dark green colour of the pepper as not necessarily linked to these features. An analysis of the chlorophyll and carotenoid content of the San Luis Ancho pepper could provide the relevant information, however, the appellant's experts had not had sufficient time to carry out such an analysis.

The proceedings were again interrupted for deliberation of the board. After resumption, the chair announced that the board had reconsidered the request for remittal and had decided to remit the case to the examining division for further prosecution. This would allow the appellant to carry out an  analysis of the San Luis Ancho pepper to support their arguments on inventive step.

The chair asked the appellant to state their final requests. These were the same as their opening requests.

The chair asked the appellant if they had any further comments or observations. They had none.

The chair then closed the debate and announced the following decision of the board:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the set of claims of the main request, as filed on 7 August 2015.

The chair then closed the oral proceedings.

The Minute Writer: P. de Heij
The Chair: G. Alt

T 1890/15 - Giving oral evidence, or replacing representative's pleading

In the present case, the patent proprietor (appellant) lodged an appeal against the decision of the opposition division revoking the European patent and requests oral submissions of a technical expert as accompanying person to explain the skilled person's understanding. The Board applies the criteria of G 4/95 and concludes that these were not complied with, and exercises its discretion referred to in G 4/95 by not permitting the technical expert as an accompanying person to make oral submissions.

Additionally, the Board deliberates whether the Enlarged Board in G 4/95, and specifically when considering that Art. 117 EPC did not provide a legal basis for hearing oral submissions by an accompanying person involving the presentation of facts and evidence, means that the Enlarged Board considered that an accompanying person, in particular a technical expert, gives oral evidence by way of making oral submissions at the oral proceedings, or merely presents (legal or technical) arguments in place of the presentation of the case (pleading) by the professional representative.

The Board concludes that should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. 

R 0004/18 - Wait for a decision

This (yet unsuccessful) petition for review concerns appeal proceedings against a decision of the Examining Division.

The appeal was withdrawn by the representative of the applicant/petitioner during oral appeal proceedings reason for which the appellant later wanted to change his representative. In the minutes of the oral proceedings the BoA used the wording: "the Chairman gave the Boards  conclusion that claim 1 did not meet Art. 123(2)". The petitioner interpreted this wording as a decision of the BoA and requested correction of the word "conclusion" into "preliminary view". The request was refused by the BoA.

The appellant filed the petition based on several grounds under Art. 112a, EPC and further argued that the Examining Division by examining a divisional application of the patent application in suit referred to the minutes to as a decision, thereby adversely affecting the divisional, besides leading to the refusal of the parent. 

The Enlarged Board stated that a condition for filing a petition is the existence of a BoA decision. The minutes of oral proceeding and a correction thereof, are not a decision in the sense of Art. 106, EPC (confirmed by T 0838/92, T 0212/97, T 0231/99) and the appellant/petitioner withdrew the appeal even before oral proceedings were concluded and a decision could be issued. Therefore the Enlarged Board considered the petition inadmissible. 

T 1045/12 - If the grass is greener on the other side, one path that leads you there is sufficient

The present appeal is against a refusal decision by the Examining Division on the grounds of lack of inventive step. In its provisional opinion, the Board also expressed doubts as to whether the application complied with Article 56 EPC. During oral proceedings, the appellant's position was that the Board had not provided conclusive reasons on the basis of tangible evidence showing why the skilled person starting from the closest prior art (D4) would, and not just could, have arrived at the claimed invention. The appellant further argued that the solution to the objective technical problem taught by D3 (evidence of common general knowledge) was one of several, equally likely options, and that in the presence of several, equally likely options, the Board had to provide a reason why the skilled person would have selected the claimed option.

The Board cited decision T 1014/07, which held that [a finding of lack of inventive step must] "identify conclusive reasons on the basis of tangible evidence that would have prompted the skilled person to act in one way or another", and concluded that its present decision, being based on prior art documents D4 and D3, is indeed based on "tangible evidence".

The Board further concluded that one of the options taught by D3 solved the underlying technical problem, and that the existence of other options has no bearing on the obviousness of one specific option. Furthermore, if all options are equally likely, then the invention is merely the result of an obvious and consequently non-inventive selection from a number of known possibilities. The finding of lack of inventiveness was therefore upheld and the appeal dismissed. 

T 1946/17 - blanket statements cannot be considered to address the arguments raised

In this appeal case, the Boards emphasized again that a decision according to the state of the file must, as any other decision, be reasoned and arguments raised must be addressed. The standard form for referring only to an earlier communication can only be used under strict conditions spelled out in the Guidelines. It is only possible to use this form of decision where the previous communication addresses all the arguments raised by the applicant. Further, it is possible by way of exception to refer to more than one communication in the standard form, but then the examiner should carefully consider the requirements of Rule 111(2) EPC. Blanket statements --such as merely stated that the "arguments were carefully considered" but "no new evidence" was provided-- cannot be considered to address the arguments raised and does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned. Also, in view of contradictory statements in the communications referred to in the present standard form decision, it is not clear which of the reasons given by the Examining Division under Articles 54 and 56 EPC, if any, might form part of the reasons for the decision to refuse. Lastly, comments submitted by the applicant after the last communication and before the request for a decision according to the state of the file were ignored. 

T 839/14 - Fresh ground before opposition division

Fresh ground

In the written submissions before oral proceedings in first instance opposition, the opponent argued for the first time that the granted patent contained added subject matter. The opposition division refused to allow the new grounds to be added in the proceedings,as it didn't consider it to be prima facie relevant. The decision does contain argumentation though, why the division did not consider there to be added subject matter. The board concurs with the decision not to allow the new ground. Accordingly, the argumentation regarding the added matter which is in the opposition divisions decision is not reviewed by the Board. 

T 0918/17 - Copy-paste approach doesn't cut it

The present case concerns an appeal that was deemed inadmissible for failing to identify the reasons why the impugned decision should be set aside. The decision in question was a refusal by the Examining Division on the grounds of extension of subject matter and lack of inventive step. The initial objection raised in the European search opinion was lack of novelty. In response, the applicant filed amended claims and generally addressed the patentability of the amended claims.

The new independent claim was held to contravene Art. 123(2) and Art. 56 EPC. The next response from the applicant focussed solely on arguments as to why the contested amendment to claim 1 was indeed fully supported in the application as filed. The Examining Division was not persuaded and maintained both its objections, after which the applicant requested a decision according to the state of the file and withdrew the request for oral proceedings. The subsequent decision to refuse was appealed.

In the Board's opinion, the filed statement of grounds did not explain why the Examining Division's Art. 56 objection was incorrect. They also highlighted the fact that the majority of the submission on this issue was a mere copy-paste from the initial response to the search opinion, which was more specifically directed to novelty and only generally addressed inventiveness  The Board therefore held that they were unable to decide on the correctness of the objection without first having to make investigations of their own.

The applicant did not respond to the Board's preliminary opinion on admissibility and the appeal was rejected as inadmissible.

T 0969/14 - partial priorities' transfer

This is an interesting appeal lodged against an opposition decision to revoke a European patent on the ground of novelty under Art. 54(3), EPC.
The situation is as follows:

D16 is a European patent application filed on 27/06/2000 by applicant Chiesi.
D14 is a PCT application filed on 17/04/2001 by Chiesi claiming priority of D16.
EP (contested patent) is filed by applicant Vectura on 17/04/2001 claiming also priority of D16.
The case relates to two inventions A and B, where A encompasses B. EP claims A and D14 claims B. D16 discloses both A and B.

Companies Chiesi and Vectura had a joint-venture where it was agreed about the ownership of the respective IP. The rights of ownership of D16 was assigned from Chiesi to Vectura before filing of EP. However, B's right of priority remained with Chiesi in a re-assignment of the priority right from Vectura to Chiesi.  

The result is that Vectura owns a valid priority right only for (A-B) but claims A which is broader. The consequence is that claim 1 of EP is not novel over D14 under Art. 54(3), EPC because D14 validly claims priority of D16 for B, thereby confirming the decision of the Opposition Division.  

When Vectura files a fourth auxiliary request in appeal proceedings disclaiming B from A, i.e. based on (A-B), for restoring the priority right, it is too late. The BoA does not admit said request into the appeal proceedings. 

The logical conclusion is that an applicant cannot transfer a partial priority right and at the same time keep it for claiming in a broader context.

T 658/12 - Faulty reasoning does not qualify as insufficient reasoning

In this appeal, the Board agrees with the appellant's argument that the subject-matter of claim 1 involves at least some technical features which are not regarded as notorious knowledge of the skilled person. Apart from business related aspects of order processing the claimed subject-matter also involves aspects concerning authentication and identification of users at different entities of the claimed system. The Board considers the latter to contribute to the technical character of claim 1 so that they cannot be regarded as being part of the non-technical requirement merely to be implemented by the technical skilled person. Further, the examining division interpreted technical features of the claim to be in the administrative, i.e. non-technical domain. The Board in contrast considers those features (related to authentication and identification) to be technical. In the Board's view this was an incorrect application of the COMVIK approach. 
In reason 4.1, the Board indicated that "an insufficiently reasoned decision has to be distinguished from a decision that has faulty or unpersuasive reasoning. The decision under appeal is not based on mere allegations, nor does it lack a clear comprehensive argumentation. The Board agrees with T 690/06 (see reasons, point 13) that notorious prior art, i.e. prior art which cannot reasonably be contested to have been generally known and which is cited without proof, is allowable by the jurisprudence. The COMVIK-approach may have been incorrectly applied, but this is a substantive issue, only involving judgement. Thus, the decision is reasoned in the sense of Rule 111(2) EPC." 
The decision leaves some unsatisfactory feelings... a wrong decision that is -as the Board indicates multiple times- clearly faulty reasoned in several aspects forces the applicant to appeal at the cost of an appeal fee as he would otherwise loose the application, and he will need to pay for the errors made by the first instance division. Some patent attorneys and other stakeholders further expressed their worries that the focus on speed in substantive examination, with only one written round as a main rule, as well as in opposition may lead to more erroneous decisions - which another round of discussion may have prevented. An appeal case like the one below may lead one to consider that also a reimbursement of the appeal fee due to clearly faulty reasoning by the first instance division would be fair, and  not only if there was a substantial procedural violation. 

Remittal - examination of novelty and inventive step (yes - technical features not assessed)
Substantial procedural violation - (no, features incorrectly assessed as non-technical, error of judgement)

T 1934/14 - Conflicting recollection of events

Conflicting events

In the present case, the respondent (patent proprietor) requested to supplement the minutes of the oral proceedings nearly three months after the notification of the minutes, namely to mention that the respondent 'requested to file a further request' during the oral proceedings, and that the respondent requested an interruption of the oral proceedings. The Board, however, considers the first request not to represent an actual request but rather an announcement of an intention (to file a further request) and therefore not to pertain to the 'essentials of the oral proceedings'. The Board also cannot recall the second request and questions the belated filing of the request for supplementing the minutes.

T 1280/14 - No switching between lines of defense

Can the Board exercise its discretion under Art. 13 RPBA not to admit auxiliary requests in the proceedings even if these have already been filed in direct response to the Opponent/Appellant's grounds of appeal and correspond to those submitted during first instance proceedings?

In the present case, the Opposition Division had rejected the opposition against the patent. In the ensuing appeal, the Opponent-Appellant already requested in his grounds that none of the (39) auxiliary requests filed during opposition proceedings be admitted, as these were "excessive, filed in unspecified order, and/or late filed".

In his response to the grounds, the Proprietor-Respondent filed 15 auxiliary requests based on a selection from the requests filed during opposition proceedings. The Proprietor stated that these auxiliary requests were properly numbered, therefore having a clearly specified order. From the arguments in support of the requests it could be deduced that these requests were classifiable as forming six diverging lines of defense, auxiliary requests 1, 2 and 4 thereof forming the first line of defense.

In the summons for oral proceedings, the Board pointed out (referring to T 1903/13) that the Proprietor should be prepared to comment on how the other diverging lines of defense would represent the alleged invention. The Proprietor did not provide any further comments.

Accordingly, the Opponent/Appellant and the Board had to assume prior to the oral proceedings that the Respondent intended, after the main request, to first prepare the patent in suit in accordance with the first line of defense, with auxiliary requests 1, 2 and 4 to defend. However, it was not until the oral hearing (in which the Main Request had fallen as lacking novelty over prior art document D9 filed with the Opponent-Appellant's grounds) that the Proprietor made it clear that he now intended to only pursue his third and sixth lines of defense - corresponding to auxiliary requests 8 and 15, respectively, and renumbered as auxiliary requests 1 and 2.

This unannounced change of strategy did not fare well with the Board, who found that both the Opponent and Board had unnecessarily prepared for auxiliary requests which turned out not to be relevant in the further proceedings; thus, the Respondent had not complied with the procedural economics offered. According to the Board, contrary to the Respondent's submission, his actions did not constitute a mere renumbering of the requests, since new auxiliary requests 1 and 2 (formerly auxiliary requests 8 and 15) corresponded to lines of defense diverging from the former auxiliary requests 1, 2 and 4. Thus, what was now claimed as an invention had fundamentally shifted. Hereby, the multiplicity of interlocked features rendered the changes in subject-matter of the auxiliary requests very complex.

As a result, remaining auxiliary requests 1 and 2 were not admitted in the proceedings and the patent was revoked.

T 0144/11 - Technical implementation of business requirements - rarely patentable

This case concerns a system for rating the value of financial securities, to help investors decide in advance whether or not the investment is a safe one. The patent application was refused by the Examining Division under Art. 56 EPC for failing to solve a problem in a technical field. The applicant appealed the decision, arguing that the invention enabled a safe and reliable security rating system for objectively calculating a rating value, which took into account the popularity of a security by counting the transmissions of rating values to investors. The counting of transmissions was inherently technical and was an idea which the technical skilled person would come up with when asked by the business person to propose a good rating of securities.

The appellant formulated the problem to be solved as "determining reliable ratings for securities". The Board found this formulation too broad, because it omits the details of the "objective calculation" of rating values. According to T 641/00 (COMVIK), non-technical aspects may legitimately appear as part of the framework of the technical problem to be solved , in particular as a constraint that has to be met. Reference was also made to T 1663/11, in which this framework was considered in the form of business requirements that a "notional business person" could give to the technical skilled person to implement, whereby the business requirements should not contain any technical aspects. In that case, the implementation was found to contain technical considerations that could not be derived from the business requirements and was deemed patentable.

The Board in this case observed that: "another constraint is that the technical skilled person must receive a complete description of the business requirement, or else he would not be able to implement it and he should not be providing any input in the non-technical domain." Further, while the Board did not deny that counting transmissions has a technical character, it found that the details of the "objective calculation" (i.e. counting) are part of the overall business concept addressed by the invention and must be given to the technical skilled person as part of the requirements specification.

The appeal was dismissed on the basis that the problem to be solved was the technical implementation of a business requirement, thus lacking inventiveness.

T 0861/16 - "Qui tacet consentire videtur" does not apply to the EPC

In this decision the proprietor files an appeal against the decision of the opposition division to maintain his patent in amended form. 

The opposition division had mentioned to the parties during oral proceedings that the text of the patent required amendments. However, since the content of these amendments does not appear either in the decision of the opposition division or in the minutes of the oral proceedings, the proprietor could not in any way recognize the modifications made to the text of the patent and give his consent.

Nowhere in the decision of the opposition decision or minutes of the oral proceedings it is stated that the proprietor consented to the amended text nor did the opposition division ensure that the proprietor agreed with the amended text, thereby the BoA concluded that the opposition division incurred into a substantial procedural violation of Art. 113(2), EPC.

The mere fact that the proprietor responded negatively to the invitation of the opposition division to comment on the amendments does not imply that the proprietor agreed with the amendments. The principle of "qui tacet consentire videtur", i.e., who is silent seems also to agree, is not an established principle of the EPC.

T 1399/13 - On the size of the hole

The allowability of an undisclosed disclaimer to establish novelty over an Art.54(3) prior right was challenged in opposition. Major topics of the debate were whether the disclaimer removed more than necessary to restore novelty over the prior right and whether the disclaimer and the claim with the disclaimer were clear and concise. 'With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10*. In particular, the difficulty for a patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention, not even with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, supra, point 3 in the reasons, second paragraph, last but one sentence).'  Although not the reason for selecting it for this blog, the decision also has another interesting aspect: the decision applies the partial priority decision G 1/15 in reasons 1.4.2-1.4.5.

T 1627/09 - self-recuse of Board of appeal after successful petition for review

Two board members recuse themselves
After the successful petition for review in R 2/14 of 22 April 2016, the case was remitted to the Board of Appeal that had originally decided not to set aside the opposition division's decision to revoke the patent. Upon remittal, the entire board that took that appeal-decision requested to be recused from the case  to avoid a potential perception of bias when they had to decide for a second time on the same issues (actually one member had already retired).  
Interestingly, an issue with Art. 24 also played during the petition for review when the Enlarged board had to decide if the Chairman of the Enlarged Board of Appeal could be allowed to perform both judicial tasks and executive tasks in his capacity as Vice-President Appeals. 

T 2355/12 - the boundaries of claim interpretation

A prior art user equipment

In a novelty objection the terms of the claims might be given a broader reading then the applicant would like. This decision shows that there are limits on how broad a term may be constructed.

The invention concerns a "A method for measuring audience size information based on playbacks of a recorded program" in which programs are recorded on "user equipment of a plurality of audience members".  In his refusal, the Examiner found that the central playback facilities in a video distribution system anticipates the term; after all such equipment is in common use by the plurality of audience members. 

The board agreed with the applicant that this interpretation conformed neither to the normal meaning of the term nor to the description of the present application. Unfortunately, for the applicant his victory was short lived as the objection was turned into an inventive step objection upon remittal. The current status of the file is a deemed withdrawal, more than 18 years after the priority date.

T 525/13 - Generalizing from US provisional application

Cat on Microwave

This opposition appeal illustrates the limitations when claiming priority from a US provisional application. While a 'manual cook button' is considered to be implicitly, yet unambiguously and directly derivable from the US provisional application, the claimed microprocessor was considered to represent a different invention as the US provisional application only described a microcomputer.

(In this case, the Board also considers an alleged substantial procedural violations to be merely "a number of unfortunate events", which was communicated by the Board to the parties earlier:

"... it appears to the Board that the alleged substantial violations are rather to be seen as a number of unfortunate events. It is in particular unfortunate that the opposition division did not react sooner to the special request of the representative of the appellant. On the other hand the Board cannot read from the appellant's letter of 13 December 2012 that if the EPO would not be able to accommodate the representative of the appellant, she would not be able EPO Form 3350 6/7T0525/13-3.5.02 to attend the oral proceedings. It is also unfortunate that the respondent, even though there is no legal obligation to do so, did not forward a copy of its submission of 13 December 2012 directly to the appellant, knowing that the appellant would have to obtain a translation and that it would not be unlikely that the letter was not received by the appellant from the EPO before the Christmas holidays. Finally it is standard practice that examiners do not speak directly with a party in inter partes proceedings and all communication with the EPO goes via the formalities officer.")

T 1914/12 - Does the Board have discretion as to the admissibility of late arguments based on facts already in the proceedings?

A decision in French, but well worth reading (and well-readable, too). It concerns the question whether the Boards of Appeal, based on Articles 12(2) and 13(1) of the Rules of Procedure of the Boards of Appeal (RPBA), have the discretion not to admit arguments submitted late in the proceedings - when the facts (in this case, a prior art document) underlying these arguments have been filed in time. It particularly deals with the legal meaning of the terms "facts" and "arguments", and how "facts, evidence or requests" (Art. 12(4) RPBA) and "amendments (to a party's case)" (Art. 13 RPBA) relate to Art. 114(2) EPC, stipulating that the European Patent Office may disregard "facts or evidence" (but not arguments?) not filed in time.

The present appeal lies from the decision of the Opposition Division to revoke European Patent EP1968779 on the grounds of lack of novelty and inventive step in view of, among others, prior art document D51. Briefly, the patent is concerned with a method for bonding a strip of a flexible sheet to a rigid support involving a step of pressing and heating a polymerizable adhesive applied between the support and the strip.

In its grounds of appeal, the proprietor provided several arguments as to why the subject matter of claim 1 distinguishes itself from the disclosure of D51. In a subsequent written submission - filed after transfer of the patent from the original proprietor to the original opponent - the new proprietor argued that, in addition to the distinguishing features discussed previously, D51 differs from claim 1 by disclosing a thermoplastic rather than a polymerizable adhesive (the latter point having merely been noted in the grounds, but not elaborated on).

In its preliminary opinion preceding Oral Proceedings, the Board expressed its intention not to accept the late argument that the nature of the adhesive used was an additional distinguishing feature.

During Oral Proceedings, the proprietor submitted that the assessment of a late argument must be applied according to a more flexible test than facts, evidence or requests, according to the RPBA interpreted in the light of its travaux préparatoires, in which the explicit inclusion of the term "arguments" had been debated. The proprietor further held that the belated argument is a pure argument concerning the underlying technical reality, namely the nature of the adhesive used. In this case, it is not the facts of the case that have changed, but the position of the parties on the interpretation of a document. In regard of Art. 114 EPC, the expression "in due time" must be interpreted in respect of the right of the parties to a fair trial and the duty of the Board to judge whether a fact corresponds to the technical reality.

In its reasons, the Board concluded that indeed a "fact" can be understood as a factual (or allegedly such) element or a circumstance on which a party bases its claims, whereas an "argument" would mean a proposition that a party bases on one or more facts and that supports the plea ["moyen" in the decision] which the party debates.

The Board further noted that in the "Proposal to amend the Rules of Procedure of the Boards of Appeal (RPBA)" of 2002, leading to the current version of the RPBA, "arguments" had initially been included in the definition of "amendments to a party's case". According to the Board, the deletion of the words "arguments" from the final (current) version seems to express the intention of the Praesidium, after consultation with the Patent Law Committee, to exclude arguments from the discretionary power conferred to the Boards of Appeal.

The Board cited T 1794/12 of 16 January 2018, which relied on point 3.1 of the article by B. Günzel, "The treatment of late submissions in proceedings before the boards of appeal of the European Patent Office" ( OJ EPO, Special Edition 2/2007, page 30):
For one thing, submissions can only be rejected on the grounds of being late if the decision-making body would not have been required to examine them and take them into consideration of its own motion. It is incumbent on every decision-maker and thus also on the boards of appeal to weigh up all the relevant legal and technical arguments in making their decision. Such arguments must therefore, at least when they involve the facts of the case and not new grounds for opposition, be taken into account at all stages of the proceedings, including the appeal stage, and cannot be rejected on the grounds of being late.
As regards previous Board decisions, the present Board is not persuaded by the reasoning behind T 1069/08 and T 1621/09 - followed by many Boards - which rely exclusively on the application of Article 13(1) RPBA from the formulation of Article 12(2) RPBA to recognize the discretion of Boards in (not) admitting late submissions. According to this Board, the interpretation of those decisions ignores the fact that Article 114(2) EPC does not justify such discretion, as previous case law has repeatedly stated. According to the Board, the EPC, and in particular its Article 114 - at least in its English version - raises a difference in the treatment of facts and arguments. In particular, Article 114(2) EPC provides for a discretionary power with regard to the facts invoked belatedly, and not for late arguments based on facts already in the proceedings. Even when drafting the RPBA, the legislator seems to have intended to maintain this distinction, as is apparent from the preparatory work on Article 13 RPBA. According to this board, the RPBA, also in view of Art. 23 thereof, although it can specify and interpret the provisions of the EPC, it cannot confer on the Boards of appeal powers which the EPC does not give them.

Thus, departing from T 1621/09, the Board found that the Boards of Appeal do not have a discretion as to the (non)admissibility of late arguments based on facts already in the proceedings.

Consequently, the proprietor's assertion concerning the nature of the adhesive used, first presented in its letter of 15 October 2015, constitutes a new argument in support of the plea which it defends, namely: that the subject matter of claim 1 is novel compared to document D51. Taking into account of this argument necessarily leads to the consideration of the applicant's argumentation concerning the inventive step of the subject-matter of claim 1. The Board comes to the conclusion that it has no discretion as to the (non)admission of these arguments. It follows that the additional difference must be taken into consideration.

With this new distinctive feature, a new line of argument has been submitted for consideration of inventive step. In view of the fact that this distinctive new characteristic may have an influence on the choice of the closest prior art, a referral of the case in the first instance is considered justified by the Board.

T 2489/11 - panning once, continuous panning or scrolling

This appeal was filed against a decision of the Examining Division to refuse the application for violating Art. 84, EPC and Art. 83, EPC.
The applicant filed a main and seven auxiliary requests in support of the statements of the grounds of appeal.

Claim 1 of the main request is directed to a device comprising a touch interface. The claim  attempts to distinguish a 'click' touch from a 'panning' touch merely based on a duration of the touch measured in the device.

The Board does not admit the main request  (Art. 12(4), RPBA) because the applicant attempts to broaden claim 1 by unjustifiably returning to the claim 1 as filed. Original claim 1 was limited during the early stage of examination in that the distinction between 'click' touch and 'panning'  touch was not only based on the duration of the touch but also on a position of the touch. 

All other requests introduce the position of the touch in the claims but further attempt to distinguish a 'continuous panning' from 'panning once'  and/or 'panning' from 'scrolling' which the Board finds unclear (Art. 84, EPC) or not sufficiently described with examples in the description (Art. 83, EPC, Rule 42(1)(e), EPC).

T 0590/18 - Form 1010: so long, farewell, aufwiedersehen, goodbye

The appellant (opponent) in this case wished to file an appeal against an interlocutory decision of the OD. The notice of appeal was filed in Feb. 2018, one day before expiry of the 2m period of Art. 108, together with Form 1010 and a written instruction to deduct the appeal fee from the holder's deposit account. Approximately one week later, the appellant was informed in a letter from the OD that the debit order had not been executed because as from 1/12/2017 the EPO only accepts orders in electronically processable format. The appeal fee was therefore not paid in time and the Board regarded the information letter from the OD as equivalent to an R.112(1) loss of rights communication.

The appellant contested the OD's finding, arguing that although he was perfectly aware of the new arrangements for payments, technical difficulties had made it impossible to submit the debit order electronically. There was also no time to use any of the other accepted payment methods. Credit card payments require that the card is pre-registered with the EPO and bank transfer was not possible because there is insufficient space in the payment header to enter all the necessary information. As a last resort, the appellant downloaded Form 1010, which he obtained from the EPO's website page on the "Euro-PCT Guide". 

The appellant argued that because Form 1010 could still be obtained via an official EPO source until 15 March, this implied that it remained a valid means of payment, allowing the appellant to rely on the accuracy of the information. On the date of submitting the debit order, the appellant's account held sufficient funds and he requested that payment of the appeal fee should be deemed on time.  The appellant additionally argued that the Decision of the President (to no longer accept debit orders on paper) was unallowable, on the basis that it constituted a factual shortening of the appeal period in the event of technical problems, which decision could only be taken by a 2/3 majority of the Administrative Council. The appellant further asked that a number of questions be referred to the Enlarged Board.

The Board upheld the finding of the OD. They deemed it unjustifiable to place reliance on a document obtained via the online "Euro-PCT Guide" as this is by its nature a brochure which is not necessarily up-to-date. The Board further commented that the appellant could have made further electronic payment attempts on the next day, after the first attempt at online payment failed.

Furthermore, the Decision of the President was held to be valid. The Board disagreed that any factual shortening of the appeal period was concerned. Moreover, the manner in which fees may be paid to the EPO is governed by Art. 5 Rfees. Paragraph (1) provides for payment or transfer into the EPO's bank account. Paragraph (2) stipulates that the President may authorize other means of payment. The possibility of filing the appeal fee via debit order is thus an additional form of payment not necessarily required under the EPC, which the President is entitled to allow, disallow or, in the present case, modify so as to prescribe that only debit orders transmitted in a particular format are recognized.

The Board saw no need to refer any questions to the Enlarged Board.