Thursday, 26 April 2018

J 13/16 - No reestablishment for restoration of right of priority

No priority...

In the present case, the appellant appealed against the decision of the Receiving Section by which the application was deemed not enjoy the right of priority since it was filed after expiry of the 12 month priority period, and by which the request to allow the applicant to submit a new request for restoration of priority was refused. 

In the PCT phase, the USPTO acting as RO had previously granted the request for restoration of priority under the 'unintentional' criterion, but no valid request had been filed at the EPO as dO under Rule 49ter.2 PCT, i.e., within the 1 month of entering the regional phase before the EPO .

A question arising in the present case is whether reestablishment is available for the request for restoration of priority. Its (un)availability may not be immediately evident, as it is not explicitly ruled out by Art. 122(4), Rule 136(3) EPC. The Board, however, considers that the request for restoration of priority is 'perfectly comparable' to reestablishment in respect of the priority period, and thus that its reestablishment is ruled out by Art. 122(4) EPC.

See also catchword point 2.

1. If, in the international phase, a receiving Office (RO) has restored a right of priority under the "unintentional" criterion of Rule 26bis.3(a)(ii) PCT, the restoration is not effective in proceedings before the EPO acting as designated Office, since the EPO applies the "due care" criterion (Rule 49ter.1(b) PCT). In such cases, within the period specified in Rule 49ter.2(b)(i) PCT, the applicant must file a (new) request for restoration of a right of priority under Rule 49ter.2 PCT with the EPO acting as designated Office. For the purposes of Rule 49ter.2 PCT, the request filed with the RO under Rule 26bis.3(b) PCT cannot be taken into account in the proceedings before the EPO acting as designated Office. (See points 3.2 and 3.3 of the Reasons)

2. In proceedings before the EPO, re-establishment of rights under Article 122 EPC is ruled out in respect of the period under Rule 49ter.2(b)(i) PCT for filing a request for restoration of a right of priority. (See points 4.3 to 4.10 of the Reasons)

Tuesday, 24 April 2018

T 0261/15 - Examples rather than end points

In this opposition appeal, the Board found that claim 1 of the Main Request, relating to a high strength pearlitic steel rail defined by several ranges of alloying elements, although overlapping with the composition of a pearlitic rail disclosed in D1, is novel. More specifically, the Board found that - whilst it is true that the Guidelines for Examination in the European Patent Office, G.VI.8, recite that the claimed sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range as a condition for acknowledging novelty of a numerical selection - the limit values (end points) of a known range, although explicitly disclosed, are not to be treated in the same way as the examples. The person skilled in the art would therefore not necessarily contemplate working in the region of the end-points of the prior art range, which are normally not representative of the gist of the prior art teaching.

Friday, 20 April 2018

T 1931/14 - Suitable for?

This case concerns an appeal by a patent proprietor against a decision of the opposition division revoking his patent on the ground of lack of novelty of claim 1.

Claim 1 reads: "A process for producing oxygen to fuel an integrated gasifier combined cycle (IGCC) power generation system  at a rate which corresponds to the power demand of the IGCC power production...wherein...
(a) during reduction of the power demand from the IGCC...liquid oxygen is produced in excess of that required by the IGCC...wherein...
(b) during an increase in the power demand from the IGCC system excess liquid oxygen is withdrawn..."

In line with T 848/93 (GL (2017), F-IV, 4.13), the BoA came to the conclusion that the stated purpose of the process "to fuel an IGCC" is not to be interpreted as a mere suitability of the process for that stated purpose but rather as functional feature of the process. In other words, the BoA sees the feature "to fuel an IGCC" as a limiting feature of the process claim.

Furthermore, the BoA stated that two claimed steps (a) and (b) are so inextricably linked to such stated purpose that the claim must be read as to be limited for it. 

Therefore the fact that the document used in opposition for attacking claim 1 on the ground of novelty did not mention the same application of the claim "to fuel IGCC systems", would appear to be sufficient for the BoA to establish novelty of claim 1 over said document.   

Tuesday, 17 April 2018

T 2340/12 - What the ... is a space energy implosion unit?

The application in this appeal case refers to a device using "space energy" for therapeutic purposes and foodstuff preparation. It was refused by the examining division for lack of sufficiency and lack of technical character. The ED further objected that the term "space energy" was not clearly defined, and that no method of measuring the energy had been described.

To overcome the deficiencies, the applicant submitted a main request in which "space energy" was replaced with the term "torsion field",  along with a number of articles and internet publications intended to establish the clarity of the new nomenclature. As regards measurement, the applicant argued that it was sufficient to be able to measure the effects of the energy on test subjects, as demonstrated by the experimental data. The ED found the experimental support to be unsatisfactory. 

The applicant also submitted three auxiliary requests - likewise involving a change of nomenclature - which were not admitted into the proceedings because of failure to prima facie address the issue of insufficiency of disclosure.

In appeal, the applicant/appellant contested the findings of the ED and questioned their competence to require experimental evidence. The Board upheld the decision to refuse the application under Art. 83 EPC and the decision not to admit the three auxiliary requests. The Board further commented that while there is no provision in the EPC according to which the grant of a patent depends on the applicant filing satisfactory experimental evidence, the provision of such evidence in order to convince the examining division or board of appeal that its findings are incorrect should be viewed as the applicant's right, rather than his obligation.

Thursday, 12 April 2018

T 2101/12 - Non-technical disclosures are prior art

In the appealed decision, D2 (a US patent application) was cited in a reasoning against novelty. One could therefore be led to believe that this document constitutes at least the most suitable starting point for the assessment of inventive step. The board is however of the opinion that such is not the case (r.6.1). The board also does not consider the document mentioned by the appellant, i.e. D3, or other documents cited in the search report, to be more suitable starting points. Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. In the present case, the board holds that the skilled person starts from this prior art method with zero technical features, the problem which consists in the automation of that method being solved entirely with technical means (r.7.15).
The appellant submitted that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03. The board agrees with the appellant that this opinion is not in line with Catchword 2 of T 172/03 (as also relied upon in the Guidelines for Examination G-VII, 2), unless one interprets the expression "technically relevant" in that Catchword in a trivial manner. The board however considers that the interpretation of Article 54(2) EPC given in T 172/03 is incorrect. 
The applicant also requested to refer to the Enlarged Board: In the assessment of the inventive step of subject matter presenting both technical and non-technical aspects, a problem-solution analysis using a publicly known entirely non-technical practice as "closest prior art", notwithstanding the existence of technical teachings in the same field? The Board did not consider this necessary (r.8)

Tuesday, 10 April 2018

J 10/15 - No jurisdiction for Board of Appeal for decisions of receving section during International phase

Where are those missing figures?
The applicant in this case filed a PCT application through the EPO by having a messenger handing in the application at an EPO office in Munich. About two weeks later, the applicant receives a communication that the figures are missing. 
The applicant does not agree, and wants the receiving section to decide that the figures were present. Subsidiary, a request for incorporation by reference under rule 20.6 jo 4.18 PCT is made. The later request is granted, but the former is not. The applicant appeals the case at the EPO.
Unfortunately for the applicant, the Board of Appeal EPO decides that they are not competent to decide the case. The following head note is provided:
Während der internationalen Phase einer PCT Anmeldung ist eine Beschwerdekammer unzuständig, um eine Entscheidung des EPA als Anmeldeamt zu überprüfen.
which translates to:
During the international phase of a PCT application, a Board of Appeal has no jurisdiction to review a decision of the EPO as receiving Office.

Wednesday, 4 April 2018

T 1423/13 - OP at the instance of the EPO

A (belated) Easter picture, with no relation to this case...

In this examination appeal, the Examining Division (ED) warned the Applicant now Appellant that "in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings in the Hague". However, the Applicant did not previously request oral proceedings, and the application was subsequently refused without holding oral proceedings as "the applicant did not request the oral proceedings at any point of the written procedure" and it is therefore "concluded that the applicant's right to be heard has been entirely respected (Art. 113(1) EPC)".

In appeal, the Board however concludes that the applicant had a legitimate expectation that oral proceedings were to be scheduled, and that the course of action of the ED amounted to a substantial procedural violation. As a reminder, Art. 116(1) expressly allows oral proceedings to be arranged "at the instance of the EPO" and thereby "without a request from a party", see GL E III-4.