Friday, June 29, 2018 T 0384/15 Circumvention via straw man must always be proven

In this opposition appeal case, the decision to reject the opposition was appealed by the opponent, Santorelli SA. In appeal, a notice of intervention was filed by a first intervener, Bose GmbH. The proprietor requested that the intervention be found inadmissible for the reason that Santarelli was a straw man acting on behalf of Bose, meaning that the opponent and the intervener were one and the same. Bose GmbH denied any involvement in the opposition prior to its intervention, which was held to be admissible. Subsequently, a second intervener Bose Ltd filed a notice of intervention.

The patent proprietor requested that the original opposition be held inadmissible and, if the Board did not accede, further requested that a question be referred to the Enlarged Board: "If evidence clearly indicates that a strawman opponent is acting on behalf of a party who intervenes in opposition proceedings, is the involvement of the opponent to be regarded as circumventing the law by abuse of procedure (cf. G 3/97 and G 4/97), the consequence of which being that the opposition is inadmissible?"

The Board agreed with the proprietor that any intervener must be a different party from the opponent in order to be a third party in the meaning of Art 105(1), and that even when the interveners are "third parties", it still has to be considered whether there has been an attempt by the opponent and/or interveners to circumvent the law by abuse of process and thus whether there are grounds for holding the opposition and/or interventions inadmissible.

The Board concluded that the three opponents were separate parties and was able to decide on the available facts that the interventions were admissible and thus also the original opposition, given that the proprietor had submitted no proof that the interveners were in fact the principals instructing the original opponent.

The request for a referral to the Enlarged Board was denied.

Tuesday, June 26, 2018 T 2057/12 - Closest prior art selected from a remote technical field

It is generally accepted that the closest prior art normally discloses an item of prior art which shares a common purpose with the claimed subject-matter or aiming at the same objective (see below). As indicated in reason 3.2.2 of this decision, "this approach appears to rely on the assumption that the skilled person would only possibly arrive at the claimed invention when starting from a document which shares a common or similar purpose with the claimed invention. In other words, this approach seems to exclude from the group of possible candidates as closest prior art disclosures which belong to technical fields remote from the field of the invention. The jurisprudence of the Boards of Appeal puts also much emphasis on the similarity of the technical problem to be solved by the item of prior art to be selected." But is it possible that a correct inventive step attack can be formulated that uses a document from a remote technical field as the closest prior art document? If so, under what circumstances, under which conditions and what are the consequences of using such a starting point? This is maybe not such a very surprising decision, but it gives a nice review of making such a choice.

Friday, June 22, 2018 T 655/13 - The board does not speak Japanese

If an applicant is capable of understanding Japanese, does the Examiner then still have to provide a translation of a Japanese prior art document? In this case, a PCT application was filed in the Japanese language with Japan as the receiving office. The international search report cites a Japanse language D1 document.  According to the Japanese Examiner, the main claim is not inventive with respect to D1. 

When the application enters the regional phase before the EPO, the supplementary search report cites the same document as the ISR, with the same obviousness objection. The applicant argues that D1 does not disclose all of the feature that the Examiner alleges. 

There are no oral proceedings, as a decision on the state of the file is requested. At no point is a translation of D1 entered into the proceedings. The Examiner does not provide a translation. The applicant does not provide one either; neither during first instance examination nor during the appeal. 


The board of appeal does not like it, and sends the case back with a procedural violation. The following catchwords are provided by the board:

In order for the examining division to make its reasoning on the basis of a pertinent prior-art document in a non-official EPO language comprehensible to the board, it must provide the translation used in the examination proceedings of at least the relevant sections of the document (or even of the whole document, if this is necessary for its overall understanding) into an official language of the EPO. Otherwise, the board is unable to examine the reasons for the decision, and in certain cases even whether the decision was justified or not, which amounts to a violation of the legal requirement for reasoned decisions under Rule 111(2) EPC (Reasons, point 2.4.2(d)(ii)).

Monday, June 18, 2018 R 7/16 - Decision on remittal before discussing substantive issues

The auxiliary police... could they have helped the petitioner?

This case is a petition for review following an appeal against a decision of the opposition division. Briefly speaking, auxiliary request V was held allowable during the opposition proceedings, but was found to contravene Article 100(c), 123(2) EPC during the appeal proceedings.

In its written decision (the decision under review), the BoA found that the decision of the opposition division presented a fundamental deficiency. Despite the fundamental deficiency, the BoA decided not to remit the case to the opposition division, thereby exercising its discretion under Art. 11 RPBA.

The petitioner's argues in the petition that the substance of the issues, to which the fundamental deficiency pertained, was not taken into consideration by the BoA when the remittal was discussed, and that this represented a fundamental violation of Article 113 EPC.

The EBoA notes that a detailed discussion of the substantive issues before a decision on the remittal would have rendered any remittal pointless since the first instance would have been bound by the considerations of the Board of Appeal or could have expected that its decision would be reversed if it was not in line with the considerations of the Board of Appeal. It was therefore only logical to limit the discussion on the requested remittal to procedural aspects. See also points 3.2.5 and 3.2.6.

Friday, June 08, 2018 T2020/14 - Who can request continuation of opposition appeal proceedings after lapse of a patent?

In this case the BoA terminated the opposition appeal proceedings in which the patent proprietor was the sole appellant because the patent in suit granted in amended form in opposition had been surrendered with effect for all designated Contracting States and the proprietor had not indicated to continue with the proceedings.

According to Rule 84(1), EPC if a European patent has been surrendered or lapsed in all designated Contracting States the opposition proceedings may be continued at the request of the opponent. This applies also to appeal opposition proceedings according to R. 100(1). 

However, since in the present case the only appellant was the patent proprietor, the BoA states that it would be inappropriate to allow the opponent to decide.   

Tuesday, June 05, 2018 T 2106/14 - Workload and travel no excuse for isolated negligence on the part of an applicant

The applicant in this case failed to meet the time limit for paying a renewal fee with additional fee and requested re-establishment of rights. The Examining Division refused the request, finding that although the applicant's professional representative had exercised all due care in reminding and seeking instructions from the applicant, the person responsible on behalf of the applicant for providing those instructions had failed to exercise all due care.

In appeal, the applicant argued that because the aforementioned responsible person - an executive of the company - had been obliged temporarily to take on an additional work role that involved a great deal of travel, this led to him making an isolated mistake of not putting in place measures to ensure that important correspondence was brought to his attention.  

The Board upheld the decision of the Examining Division, on the basis that while it may be possible to excuse negligence by an employee who normally carries out work in a satisfactory manner, this does not extend to the applicant or to an executive of the applicant acting on its behalf. The same duty of rigorous care applies. 

Monday, June 04, 2018 T 1668/14 - Stretching what an accompanying person can do?

G 4/95 is generally understood as providing quite strict requirements as to when and how to announce an accompanying person and as to his/her role and type of contribrutions to oral proceedings in opposition. Citing and just relying on its headnotes has the risk of taking the conclusions out of context and not interpeting the words of the headnote as they are to be understood in the light of the whole decision, but in view of the limited space in an introduction, I just cite the headnotes and refer to the complete decision here. G 4/95's headnotes read: 
"1. During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under Article 117 EPC [giving or obtaining evidence], in addition to the complete presentation of the party's case by the professional representative.
2. (a) Such oral submissions cannot be made as a matter of right, but only with the permission of and under the discretion of the EPO.
(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:
(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.
(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.
(iii) A request which is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested.
(iv) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.
(c) [...]"
G 4/95's reason 10 clarifies that the requirement that "if during oral proceedings before either an opposition division or a board of appeal a party wishes that, in addition to the complete presentation of its case by its professional representative, oral submissions should be made on its behalf by an accompanying person, the professional representative should request permission for such oral submissions to be made, well in advance of the oral proceedings. When making such a request, the professional representative should state the name and qualifications of the person for whom permission to make additional oral submissions is requested, and should specify the subject-matter on which such person wishes to speak" is an implementation of Art. 113(1) EPC. 
In the current case, the opponent requested that an accompanying person would be allowed to speak on technical issues in his qualification as Elektrotechniker. But it took an unexpected twist - at least for me. Although it seems to me that it was not announced/requested in advance that he would, in his other qualification as German patent attorney, also talk on legal matters - legal matters he is not qualified for in my view as his qualification is German patent law, not the EPC. Further, in my understanding, he presents the admissibility case completely by himself, rather than "in addition to the complete presentation by the professional representative". I am interested to hear your opinions.