Tuesday, 30 January 2018

T 2101/14 – Not admissible if not promptly substantiated


The applicant filed an appeal against a decision of the Examining Division refusing applicant’s European patent application. With the statements of the grounds of appeal, the applicant forwarded a new set of claims not previously presented during examination. In a preliminary assessment of the claims, the Board expressed its concerns about the introduction of a new unsearched feature.

In order to obviate the Board’s concerns, the applicant presented a further set of new claims. Since this further set of new claims was based on a suggestion for an allowable claim of the Examining Division, the applicant did not consider necessary to file substantiating arguments in support of this new request. Only during oral proceedings the applicant substantiated the patentability of the further set of new claims.

For the Board, an unsubstantiated request becomes effective at the date on which the request is substantiated (T 1732/10) and thus too late in the present case because it would have inevitably required an adjournment of the oral proceedings, which is excluded by Article 13(3) RPBA. Thereby the Board refused to admit the further set of new claims into the proceedings even if the claims were filed well before arrangement of the oral proceedings and dismissed the appeal.


Wednesday, 24 January 2018

T 282/12 - Partial priority and "the first application": partial first application

May a priority application and an even earlier application filed by the same applicant partially relate to the same invention, just as the priority application and a patent claiming priority therefrom may partially relate to the same invention (whereby the latter may benefit from partial priority under G 1/15)? If so, the priority application would be the first application in respect of only that part of the invention which is not the same as in the earlier application and priority would only be valid for that part, but not over the full scope of the claim. This was the key point in this decision.

Tuesday, 16 January 2018

T 2450/16 - Relying on guidance from epoline

Screenshot of epoline at its introduction in 2000

This case concerns the request of re-establishment of rights under Article 122 EPC in respect of the period for filing the notice of appeal against the decision of the Examining Division to refuse a European patent application.

The applicant's instructions to file an appeal were transmitted to the administrative assistant in charge of the present file. The assistant was, however, confronted with completing this task in epoline, which according to the applicant/appellant contained no clear indications concerning the initiation of an appeal procedure, apart from the payment of the appeal fee.

The assistant thus did not find any guidance for filing an appeal other than payment of the appeal fee. In paying the appeal fee, the assistent went ahead firmly but wrongly believing from epoline that this was all that was necessary. She therefore wrongly found it superfluous to consult another administrative assistant or an attorney/engineer. According to the applicant/appellant, this constituted the isolated mistake that had occurred in the present case.

As one may expect, the Board however finds that it would have been the responsibility of the representative in the circumstances to give specific and clear instructions on the filing of an appeal to the assistant.

Wednesday, 10 January 2018

T 796/12 - Appeal of opponent which is no longer registered as company

They may not really exist...., but they are coming for you
Is the appeal of an opponent valid, if the company that filed the appeal is no longer registered as a company? 
The patent proprietor argues that the appeal is inadmissable either because the opponent was no longer registered at the date the appeal was filed, or because the opponent was subsequently taken over by a different entity without this change having been notified.
The Board refers to national law, and concludes that German law does not preclude a company which is no longer registered from appealing an opposition decision, even as  opponent. 

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