Friday, 30 March 2018

T 0198/16 - Yea or Nay to Intention to Pay?

Is the mere intention of an appellant to pay the appeal fee, as expressed by reference to EPO Form 1010 ("Payment of fees and expenses") in the Notice of Appeal, enough to authorise the EPO to debit appellant's deposit account (holding sufficient funds), when said  Form 1010 has erroneously not been sent together with the Notice?

In this examination appeal, the Board held - deviating from T 1265/10 - that regardless of whether or not the EPO would have access to sufficient the funds of the party intending to pay, such an intention can never be considered equivalent to an order.

Referring to R 18/13, the Board further found that - different from a mistake made by an assistant - the mistake made by the representative to not explicitly instruct his assistant to pay the appeal fee and to not properly review the electronic receipt is a mistake that cannot be excusedAccordingly, the request for re-establishment of rights was refused.

As a result, the appeal was deemed not to have been filed.

1. The intention to authorise debiting of the deposit account does NOT already allow the EPO to act on such authorisation and carry out such intent where the EPO, under the deposit account system, already holds such money in trust (deviation in particular from T 1265/10, at point 15), (see point 3.4.3 of the quotation from the summons under point 1 of the Reasons).
2. A representative must give express and clear instructions to an assistant to the effect that the appeal fee has to be paid. It is not enough to rely on the assistant's deducing the duty to file the payment form from the notice of appeal, which includes the sentence: "The appeal fee is paid via the enclosed EPO form 1010."

Tuesday, 27 March 2018

T1833/14 - A tough composition

This case concerns an appeal by an opponent against a decision of the opposition division rejecting an opposition filed by the opponent/appellant.
The patent in suit relates to a tougher polymer composition used for making moulded articles with injection moulding. The appellant lodged the appeal on the grounds of an alleged public prior use anticipating granted claim 1 and inventive step.

The appellant argued that a skilled person could have easily reproduced the claimed composition starting from a product which was publicly sold before the filing date of the patent in suit.

However, the BoA stated that mere public disposal of a product does not give the skilled person sufficient information on how to make that product. In summary, the criteria of sufficiency of disclosure for a polymer (or composition) which demand also the disclosure of the method of preparation of such polymer (or composition) in the patent application, must also apply to the reproducibility without undue burden of a product in the market. The appellant did not show that any information in that respect was available before the filing date, thus the BoA could not consider a sample of the publicly available product as being part of the state of the art according to Art. 54(2).

It is also interesting to note that the BoA contested an inventive step reasoning of the respondent (patent proprietor): the comparative examples disclosed in the application as filed did not relate to compositions differing from the claimed composition only in the distinguishing features of the granted claim with the closest prior art(s), thus the effect of the distinguishing feature over the closest prior art(s) could not have been demonstrated based on those examples, and the technical problem originally formulated by the respondent needed reformulation.

Friday, 23 March 2018

T 1719/13 - Live with your untidiness

In this opposition appeal, both the proprietor and the opponent appealed the decision of the Opposition Division to maintain the patent in amended form. Besides the main request of maintaining the patent as granted, the proprietor filed a 2nd auxiliary request corresponding to the request held allowable by the OD, although did not specifically mention in the grounds of appeal that these requests were the same. The proprietor's 1st auxiliary request was identical to his 2nd, except for the addition of a new dependent claim 5, which was added to establish identical dependency as in the underlying PCT application.
The Board did not admit the1st auxiliary request into the proceedings, since the amendment was not occasioned by the impugned decision or by a new objection raised by the opponent. Rather, the request was viewed by the Board as an attempt to tidy up the allowable claim set and thus not admissible under Art. 12(4) RPBA.
The Board further observed that for admissibility under Art. 12(4), compliance with Rule 80 EPC is not the decisive factor.
The opponent attempted to argue that the proprietor's 2nd auxiliary request was inadmissible because it was not readily apparent from the proprietor's written submissions that the request corresponded to the request allowed by the OD, in contravention of Art. 12(2) RPBA. The Board held that there is no requirement under this article to indicate in the grounds of appeal that a claim request has already been submitted in the first-instance proceedings.
The 2nd auxiliary request was found admissible and was allowed.

Tuesday, 20 March 2018

T 660/14 - an undisclosed disclaimer after G 1/16

In this appeal, the proprietor gave as a basis for the subject-matter of claim 1 of auxiliary request 4 meeting the requirement of Article 123(2) EPC that the subject-matter of claim 1 includes an undisclosed disclaimer. The undisclosed disclaimer was not of the most common type of disclaiming a Art.54(3) EPC prior right disclosure. The proprietor considered the alleged undisclosed features as either one or two undisclosed disclaimers. The proprietor submitted that the disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled. The Board of Appeal disagreed: according to the Enlarged Board of Appeal decision G1/16 (see e.g. Headnote), to be allowable under Article 123(2) EPC, the introduction of an undisclosed disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular it may not become relevant for the assessment of inventive step (G 1/16 Reasons, point 49.1). 

Wednesday, 7 March 2018

T 0611/15 - No pain, no gain

In this opposition appeal, the Proprietor appealed the decision of the Opposition Division to maintain the patent in amended form. The joint opponents also appealed this decision, but did not attend oral proceedings. Also party to the appeal proceedings were two assumed infringers, in the capacity of interveners.

The Proprietor requested that the patent be maintained as granted (main request), auxiliarily that the decision under appeal be set aside and the patent be maintained in amended form on the basis of the first auxiliary request filed in during first instance proceedings, or on the basis of the request found allowable by the Opposition Division (second auxiliary request). The Proprietor further requested that the patent be maintained on the basis of the claims of one of the third to fifth auxiliary requests filed during the oral proceedings.

However, during the oral proceedings the Interveners submitted that it is evident from the contested decision and the minutes of the oral proceedings before the Opposition Division that the Proprietor had withdrawn the main request and first auxiliary request, maintaining the second auxiliary request as the sole request. As the contested decision was favourable in respect of this sole request, the Proprietor was not adversely affected by the decision and consequently the Proprietor's appeal is to be rejected as inadmissible, Article 107 EPC and Rule 101(1) EPC. Furthermore, as the Proprietor's appeal is not admissible, the main and first auxiliary requests submitted in the appeal proceedings are not admissible in view of the principle of reformatio in peius. 

The Interveners further argued that in each of the third to fifth auxiliary requests the respective claim 1 prima facie gave rise to new clarity objections under Article 84 EPC which neither they nor the Board could reasonably be expected to deal with without adjournment of the oral proceedings.

The Board essentially went along with the Interveners' submissions. As a result, during the oral proceedings the proprietor was merely able to defend his second auxiliary request - i.e., the request found allowable by the Opposition Division.

Friday, 2 March 2018

R 3/16 - Do not frighten the Board of Appeal

This is a petition for review against a decision of a Board of Appeal rejecting the opposition of an opponent in an opposition case. During opposition the opponent requested replacement of the members of the division based on a suspicion of partiality. This request was rejected by the opposition division. 

The opponent then filed an appeal together with (late) new documents in which he made many new harsh requests. According to some of those requests  (a) the Board should have remitted the case to the opposition division without oral proceeding and before a different composition of the division, (b) the Board should have excluded a rapporteur of the Board from the proceedings because of his alleged incompetence (c) the Board should have been enlarged by a legally qualified member acquainted with the right to be heard issue ...(g) oral proceedings should have been held public such that members of the public could have witnessed the correctness of handling of the proceedings by the Board.

The Board considered request (a) inadmissible. The opponent/appellant insisted on request (a) and indicated that if request (a) was not fulfilled, a petition for review on the ground of procedural violation would have been risen. The appellant even filed to the Board a document describing the skills required by a technically qualified member of the Board of Appeal to show to the Board that the rapporteur objected did not qualified for the function, that the conduct of the Board was a disgrace and went on with this line of mistrust reasoning.

A petition for review was finally filed on the grounds of several procedural violations of the opposition division and Board of Appeal.

As one may expect the Enlarged Board found the conduct of the petitioner quite disrespectful and discarded the petition as clearly unallowable.