Tuesday, August 28, 2018 T 0536/13 - A too hasty decision

An Applicant requested a so-called "decision according to the state of the file" after an unsuccessful telephone consultation with the first examiner in response to summons for oral proceedings in examination and subsequent written submissions. In its decision, the Examining Division argued that "The applicant filed no comments or amendments in reply to the latest communication ..." and refused the application.

The Board made short work of overturning the Examining Division's decision, manifesting that not taking into account the Applicant's written submissions in response to the summons, nor providing any reasoning in respect of the Applicant's amendments and comments - including those made in the telephone consultation - amounts to a substantial procedural violation. Accordingly, the decision was set aside, the case was remitted to the department of first instance for further prosecution and the appeal fee was reimbursed.

Tuesday, August 28, 2018 T 506/16 - Omission of claims pages

Something is missing in the B1 publication...?

In this examination appeal, the Druckexemplar did not contain two of the four claim pages due to an error made by the Examining Division. This error was overlooked by the applicant when approving the text proposed for grant.

The applicant proprietor attempted to correct the error  after approval but the Examining Division:
- rejects as inadmissible the request for correction of the granted patent under Rule 139 EPC,
- refuses the request for correction of printing errors in the patent specification,
- refuses the request for correction of the granted patent under Rule 140 EPC, and
- rejects as inadmissible the request to consider the decision to grant null and void and to issue a further communication under Rule 71(3) EPC.

The proprietor appeals and requests referral to the EBoA, but as the decision shows to no avail.

Friday, August 17, 2018 J 0016/17 A rose with no name does not smell as sweet

The appeal in this case was directed to a decision to refuse  a request for re-establishment of the missed period for paying a renewal fee with surcharge. While studying the facts of the case, the Board noted that the impugned decision did not state the name of the EPO employee responsible, but merely bore the seal of the "Examining Division". Although this deficiency was not raised by the appellant, the Board examined the facts of its own motion, because it deemed that inalienable rights constituting an embodiment of the rule of law are concerned.

Rule 113(1) EPC requires that communications from the EPO shall be signed by and state the name of the responsible employee. The signature may be replaced with a seal if the document has been produced using a computer and, if it has been automatically produced, R. 113(2) further defines that the employee's name need not be present. Since a decision to refuse a request for re-establishment must be a reasoned decision, it cannot be an "automatically produced" document. The Board held that the presence of the employee's name is an essential step in the decision-taking process and that the deficiency in this case constituted a substantial procedural violation. 

The procedural violation had no bearing on the substance of the decision, which concerned the inadmissibility of the request for re-establishment, and so to avoid further delays in proceedings, the Board took its own decision on the merits of the appeal. The decision to refuse re-establishment of rights was upheld on the basis that the appellant did not complete the omitted act (payment of renewal fee and surcharge) within 2 months' of removal of the cause of non-compliance.

Tuesday, August 14, 2018 G 1/18 - Appeal deemed not to be filed or inadmissible in case of delayed fee payment?

The (former) President of the EPO has referred a point of law concerning the interpretation of Article 108 EPC to the Enlarged Board of Appeal: Lorsque la formation d'un recours et/ou la taxe de paiement ont lieu après l'expiration du délai de deux mois prévu à l'article 108 CBE, le recours est-il irrecevable ou réputé non formé, et la taxe de recours doit-elle être remboursée ? (Provisional translation of the question into English (source): If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?Provisional translation of the question into German (source): Wenn erst nach Ablauf der in Artikel 108 EPÜ vorgesehenen Frist von zwei Monaten Beschwerde eingelegt und/oder die Beschwerdegebühr entrichtet wird, ist die Beschwerde dann unzulässig oder gilt sie als nicht eingelegt, und muss die Beschwerdegebühr zurückgezahlt werden?). The question concerns the same issue as earlier referrals G 1/14 and G 2/14, which did however not lead to an answer due to the referral being considered inadmissible or because the underlying case ceased to be in existence. 
T 1325/15, issued shortly after G 1/14 and G 2/14 proceedings were ended, could have been seen by some to answer the question, but at least one other Board did not follow it - a final decision/opinion by the EBA will settle the issue. Note that T 1325/15 wrote in r.35. "Both referral decisions concentrated on the meaning of Art.108, second sentence, which reads "Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid". In numerous decisions the BoAs had interpreted this provision as meaning that an appeal did not come into existence, i.e. the notice of appeal was deemed not to have been filed, if the appeal fee was not paid within the two-month time limit of Art. 108, first sentence. In a smaller number of deviating decisions, the boards of appeal dismissed the appeal as inadmissible where the notice of appeal was filed and the appeal fee paid after expiry of the time limit." Also, in r.41. "Art.108, first sentence, requires that notice of appeal be filed within two months of notification of the decision. If no notice of appeal is filed, then no appeal comes into existence. Although the position that R.101(1) means that a late-filed notice of appeal brings into existence an inadmissible appeal may be not unreasonable, in view of the general rule that no distinction is to be made between the late filing and the non-filing of a document, the Board considers that no appeal exists where a notice of appeal was not (deemed to be) filed in due time." and "r.42. The Board notes that its approach, although it has not always consistently been applied in the jurisprudence of the boards of appeal, is also in line with the reasoning in earlier decisions which have argued that an appeal is deemed not to have been filed where the appeal fee was paid in time but the notice of appeal was filed only after expiry of the two-month period of Art.108(1) (see in particular decisions J 19/90, r.1.2.2 and 4; T 445/98, r.1.2, 5, 6 and 7; and T 778/00, section V of the facts and submissions and point 6 of the reasons)." 
It may also be worthwhile to consider the observation made in T 2017/12, r.3.1.1 (the decision that led to the referral G 2/14):“The leading decision is J 21/80. In this case the appeal fee had been paid late. The board held that, "En raison de l'inexistence d'un recours valable, le montant de la taxe de recours payée tardivement doit être restitué.' There is no further reasoning. The order, originally in French, contains the following statement: 'Le recours contre la décision de la Section de dépôt du 12 mai 1980 est considéré comme non formé." The English translation of this, "The appeal against the Decision ... is inadmissible", is incorrect, whereas the German translation is accurate: "Die Beschwerde ... gilt als nicht eingelegt."” 

Friday, August 10, 2018 J 4/17 - No resumption of proceedings after stay of 7 years

After the EPO send out an intention to grant in the patent application, entitlement proceedings against the patent were started before the District Court of The Hague (Article 61 proceedings). As a result the application was stayed at the EPO, starting at 28 March 2011. Proceedings are still pending and oral proceedings in the court  case are scheduled for September 2018.  

During the stay the applicant and a further party repeatedly asked for resumption of the grant proceedings under Rule 14(3). Resumption was granted by the legal division, which appeal is the subject of this case.

The board concluded that the legal division correctly exercised its discretionary powers to lift the stay. However, starting at reasons 5 there is a twist in the tale to the benefit of the appellants. 

This decision is one of a series of identical decisions taken in the parent application and its divisionals.  The board provided the following catch words:

Rule 14(3) EPC is silent on the reasons for setting a date for resumption of the proceedings for grant. It is thus to be concluded that the legislator let it to practice and jurisprudence to define the circumstances that justify setting a date for resumption on a discretionary basis.

Resumption of the proceedings is not limited to cases involving misuse or delaying tactics. The possibility that the EPO sets a date for resumption upon staying the proceedings for grant hints towards a broader construction.

However an applicant cannot justify its request for resumption based on the length of the entitlement proceedings where this duration has been significantly caused by the applicant's procedural conduct.

Friday, August 03, 2018 T 2145/13 - 2nd medical use (too) broadly claimed?

In this opposition appeal, the Opposition Division (OD) previously upheld the patent in amended form. Claim 1 as upheld by the OD reads as follows (this claim also being maintained by the patent proprietor as part of the main request during the subsequent appeal proceedings):

"1. An anti-NGF antibody for use in the treatment of post-surgical pain".

Several prior art documents, which were already introduced during the opposition proceedings, described the use of anti-NGF antibodies for use in the treatment of neuropathic pain.

The appeal proceedings focuses on the claim construction of the term "post-surgical pain" and whether this term has been interpreted too narrowly by the OD by considering it to exclude neuropathic pain. In other words, is the use of an anti-NGF antibody for the treatment of post-surgical pain indeed novel in view of its known use for the treatment of neuropathic pain?

Of further interest is that during the oral proceedings, the proprietor withdrew all pending auxiliary requests and filed a new first auxiliary request:

"1. An anti-NGF antibody for use in the treatment of post-surgical pain, wherein the anti-NGF antibody is for use in suppressing or ameliorating resting pain."

To briefly summarize the proceedings: the BoA considers the normal meaning of the term "post-surgical pain" to include any pain after surgery, including neuropathic pain (after surgery). The proprietor however argues that the term has a more limited meaning in the relevant art and submits, inter alia, an expert opinion. However, the appellant (naturally) disagrees and provides a counter expert opinion. The BoA then considers the patent's description and finds that its definition does not exclude neuropathic pain caused by surgery. The main request is thus considered to lack novelty. The auxiliary request is not admitted into the proceedings as this possible construction of the phrase "post-surgical pain" was deemed to be foreseeable by the respondent (proprietor).

Wednesday, August 01, 2018 J 0010/17 - No restoration of the right of priority

Should a European representative take a Communication from the Receiving Section regarding a "missing" request for restoration of priority during the international phase at face value, or should he have realized that - in any case - the restoration of the right of priority based on the criterion of unintentionality has no effect before the EPO as designated/elected Office - and have responded accordingly?

This appeal concerns a decision of the Receiving Section rejecting the request to reverse the finding that a European patent application does not enjoy a right of priority with respect to the claimed priority. The application had been filed as an international application under the PCT with the USPTO as receiving Office (rO). As the international application was not filed within the priority period, the applicant submitted a request for restoration of the right of priority with the rO. The rO decided to restore the right of priority based on the finding that the failure to file the international application within the priority period had been "unintentional".

After entry of the application into the European phase, the Receiving Section of the EPO issued a reminder communication stating (by ticking of corresponding boxes) that "a request for restoration of the right of priority pursuant to Rule 49ter.2 PCT is necessary for the following reasons: No request for restoration of the right of priority has been filed pursuant to Rule 26bis.3 PCT during the international phase". A time limit was set by the Receiving Section.

By return letter, the applicant's representative stated that "the request for restoration of the priority right was already filed in the international phase ... and duly granted by the Receiving Office". The Applicant requested confirmation of the priority right being in force.

The EPO then issued a notification of loss of rights under Rule 112(1) EPC stating that the "decision by the receiving Office to restore the right of priority based on the criterion of unintentionality has no effect in proceedings before the EPO (R. 49ter.1(b) PCT) and no valid request under Rule 49ter.2 PCT has been filed". In an accompanying letter, the Receiving Section took the view that, even though the incorrect box had been crossed in the reminder communication, the intention of reminding the applicant had been expressed.

It was pointed out that this reminder communication had also stated that the decision of the receiving Office to restore the right of priority based on the criterion of unintentionality has no effect in proceedings before the EPO. The item had not been crossed but the professional representative should have been aware of this position of the EPO.

The applicant requested a decision from the Receiving Section and appealed this decision. In the statement setting out the grounds of appeal, the appellant referred to the incorrect information given in the reminder communication and argued that the principle of legitimate expectations should apply in the present circumstances. The appellant requested that the decision under appeal be set aside and asked "to receive a new, corrected invitation for filing a request for restoration of the right of priority including a new time limit".

The Board found that the mistaken information in the EPO communication (that no request for restoration of the right of priority had been filed in the international phase) had no bearing on the conduct of the European representative as to whether a request should have been filed in the European phase in the absence of proof of the alleged instruction. In the absence of such an established link between the erroneous information and the loss of the priority right, the principle of legitimate expectations cannot apply. Accordingly, the finding of the Receiving Section that the application does not enjoy a right of priority was found justified.