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T 1627/09 - self-recuse of Board of appeal after successful petition for review

Two board members recuse themselves
After the successful petition for review in R 2/14 of 22 April 2016, the case was remitted to the Board of Appeal that had originally decided not to set aside the opposition division's decision to revoke the patent. Upon remittal, the entire board that took that appeal-decision requested to be recused from the case  to avoid a potential perception of bias when they had to decide for a second time on the same issues (actually one member had already retired).  
Interestingly, an issue with Art. 24 also played during the petition for review when the Enlarged board had to decide if the Chairman of the Enlarged Board of Appeal could be allowed to perform both judicial tasks and executive tasks in his capacity as Vice-President Appeals. 

T 2355/12 - the boundaries of claim interpretation

A prior art user equipment

In a novelty objection the terms of the claims might be given a broader reading then the applicant would like. This decision shows that there are limits on how broad a term may be constructed.

The invention concerns a "A method for measuring audience size information based on playbacks of a recorded program" in which programs are recorded on "user equipment of a plurality of audience members".  In his refusal, the Examiner found that the central playback facilities in a video distribution system anticipates the term; after all such equipment is in common use by the plurality of audience members. 

The board agreed with the applicant that this interpretation conformed neither to the normal meaning of the term nor to the description of the present application. Unfortunately, for the applicant his victory was short lived as the objection was turned into an inventive step objection upon remittal. The current status of the file is a deemed withdrawal, more than 18 years after the priority date.

T 525/13 - Generalizing from US provisional application

Cat on Microwave

This opposition appeal illustrates the limitations when claiming priority from a US provisional application. While a 'manual cook button' is considered to be implicitly, yet unambiguously and directly derivable from the US provisional application, the claimed microprocessor was considered to represent a different invention as the US provisional application only described a microcomputer.

(In this case, the Board also considers an alleged substantial procedural violations to be merely "a number of unfortunate events", which was communicated by the Board to the parties earlier:

"... it appears to the Board that the alleged substantial violations are rather to be seen as a number of unfortunate events. It is in particular unfortunate that the opposition division did not react sooner to the special request of the representative of the appellant. On the other hand the Board cannot read from the appellant's letter of 13 December 2012 that if the EPO would not be able to accommodate the representative of the appellant, she would not be able EPO Form 3350 6/7T0525/13-3.5.02 to attend the oral proceedings. It is also unfortunate that the respondent, even though there is no legal obligation to do so, did not forward a copy of its submission of 13 December 2012 directly to the appellant, knowing that the appellant would have to obtain a translation and that it would not be unlikely that the letter was not received by the appellant from the EPO before the Christmas holidays. Finally it is standard practice that examiners do not speak directly with a party in inter partes proceedings and all communication with the EPO goes via the formalities officer.")

T 1914/12 - Does the Board have discretion as to the admissibility of late arguments based on facts already in the proceedings?

A decision in French, but well worth reading (and well-readable, too). It concerns the question whether the Boards of Appeal, based on Articles 12(2) and 13(1) of the Rules of Procedure of the Boards of Appeal (RPBA), have the discretion not to admit arguments submitted late in the proceedings - when the facts (in this case, a prior art document) underlying these arguments have been filed in time. It particularly deals with the legal meaning of the terms "facts" and "arguments", and how "facts, evidence or requests" (Art. 12(4) RPBA) and "amendments (to a party's case)" (Art. 13 RPBA) relate to Art. 114(2) EPC, stipulating that the European Patent Office may disregard "facts or evidence" (but not arguments?) not filed in time.

The present appeal lies from the decision of the Opposition Division to revoke European Patent EP1968779 on the grounds of lack of novelty and inventive step in view of, among others, prior art document D51. Briefly, the patent is concerned with a method for bonding a strip of a flexible sheet to a rigid support involving a step of pressing and heating a polymerizable adhesive applied between the support and the strip.

In its grounds of appeal, the proprietor provided several arguments as to why the subject matter of claim 1 distinguishes itself from the disclosure of D51. In a subsequent written submission - filed after transfer of the patent from the original proprietor to the original opponent - the new proprietor argued that, in addition to the distinguishing features discussed previously, D51 differs from claim 1 by disclosing a thermoplastic rather than a polymerizable adhesive (the latter point having merely been noted in the grounds, but not elaborated on).

In its preliminary opinion preceding Oral Proceedings, the Board expressed its intention not to accept the late argument that the nature of the adhesive used was an additional distinguishing feature.

During Oral Proceedings, the proprietor submitted that the assessment of a late argument must be applied according to a more flexible test than facts, evidence or requests, according to the RPBA interpreted in the light of its travaux préparatoires, in which the explicit inclusion of the term "arguments" had been debated. The proprietor further held that the belated argument is a pure argument concerning the underlying technical reality, namely the nature of the adhesive used. In this case, it is not the facts of the case that have changed, but the position of the parties on the interpretation of a document. In regard of Art. 114 EPC, the expression "in due time" must be interpreted in respect of the right of the parties to a fair trial and the duty of the Board to judge whether a fact corresponds to the technical reality.

In its reasons, the Board concluded that indeed a "fact" can be understood as a factual (or allegedly such) element or a circumstance on which a party bases its claims, whereas an "argument" would mean a proposition that a party bases on one or more facts and that supports the plea ["moyen" in the decision] which the party debates.

The Board further noted that in the "Proposal to amend the Rules of Procedure of the Boards of Appeal (RPBA)" of 2002, leading to the current version of the RPBA, "arguments" had initially been included in the definition of "amendments to a party's case". According to the Board, the deletion of the words "arguments" from the final (current) version seems to express the intention of the Praesidium, after consultation with the Patent Law Committee, to exclude arguments from the discretionary power conferred to the Boards of Appeal.

The Board cited T 1794/12 of 16 January 2018, which relied on point 3.1 of the article by B. Günzel, "The treatment of late submissions in proceedings before the boards of appeal of the European Patent Office" ( OJ EPO, Special Edition 2/2007, page 30):
For one thing, submissions can only be rejected on the grounds of being late if the decision-making body would not have been required to examine them and take them into consideration of its own motion. It is incumbent on every decision-maker and thus also on the boards of appeal to weigh up all the relevant legal and technical arguments in making their decision. Such arguments must therefore, at least when they involve the facts of the case and not new grounds for opposition, be taken into account at all stages of the proceedings, including the appeal stage, and cannot be rejected on the grounds of being late.
As regards previous Board decisions, the present Board is not persuaded by the reasoning behind T 1069/08 and T 1621/09 - followed by many Boards - which rely exclusively on the application of Article 13(1) RPBA from the formulation of Article 12(2) RPBA to recognize the discretion of Boards in (not) admitting late submissions. According to this Board, the interpretation of those decisions ignores the fact that Article 114(2) EPC does not justify such discretion, as previous case law has repeatedly stated. According to the Board, the EPC, and in particular its Article 114 - at least in its English version - raises a difference in the treatment of facts and arguments. In particular, Article 114(2) EPC provides for a discretionary power with regard to the facts invoked belatedly, and not for late arguments based on facts already in the proceedings. Even when drafting the RPBA, the legislator seems to have intended to maintain this distinction, as is apparent from the preparatory work on Article 13 RPBA. According to this board, the RPBA, also in view of Art. 23 thereof, although it can specify and interpret the provisions of the EPC, it cannot confer on the Boards of appeal powers which the EPC does not give them.

Thus, departing from T 1621/09, the Board found that the Boards of Appeal do not have a discretion as to the (non)admissibility of late arguments based on facts already in the proceedings.

Consequently, the proprietor's assertion concerning the nature of the adhesive used, first presented in its letter of 15 October 2015, constitutes a new argument in support of the plea which it defends, namely: that the subject matter of claim 1 is novel compared to document D51. Taking into account of this argument necessarily leads to the consideration of the applicant's argumentation concerning the inventive step of the subject-matter of claim 1. The Board comes to the conclusion that it has no discretion as to the (non)admission of these arguments. It follows that the additional difference must be taken into consideration.

With this new distinctive feature, a new line of argument has been submitted for consideration of inventive step. In view of the fact that this distinctive new characteristic may have an influence on the choice of the closest prior art, a referral of the case in the first instance is considered justified by the Board.

T 2489/11 - panning once, continuous panning or scrolling

This appeal was filed against a decision of the Examining Division to refuse the application for violating Art. 84, EPC and Art. 83, EPC.
The applicant filed a main and seven auxiliary requests in support of the statements of the grounds of appeal.

Claim 1 of the main request is directed to a device comprising a touch interface. The claim  attempts to distinguish a 'click' touch from a 'panning' touch merely based on a duration of the touch measured in the device.

The Board does not admit the main request  (Art. 12(4), RPBA) because the applicant attempts to broaden claim 1 by unjustifiably returning to the claim 1 as filed. Original claim 1 was limited during the early stage of examination in that the distinction between 'click' touch and 'panning'  touch was not only based on the duration of the touch but also on a position of the touch. 

All other requests introduce the position of the touch in the claims but further attempt to distinguish a 'continuous panning' from 'panning once'  and/or 'panning' from 'scrolling' which the Board finds unclear (Art. 84, EPC) or not sufficiently described with examples in the description (Art. 83, EPC, Rule 42(1)(e), EPC).

T 0590/18 - Form 1010: so long, farewell, aufwiedersehen, goodbye

The appellant (opponent) in this case wished to file an appeal against an interlocutory decision of the OD. The notice of appeal was filed in Feb. 2018, one day before expiry of the 2m period of Art. 108, together with Form 1010 and a written instruction to deduct the appeal fee from the holder's deposit account. Approximately one week later, the appellant was informed in a letter from the OD that the debit order had not been executed because as from 1/12/2017 the EPO only accepts orders in electronically processable format. The appeal fee was therefore not paid in time and the Board regarded the information letter from the OD as equivalent to an R.112(1) loss of rights communication.

The appellant contested the OD's finding, arguing that although he was perfectly aware of the new arrangements for payments, technical difficulties had made it impossible to submit the debit order electronically. There was also no time to use any of the other accepted payment methods. Credit card payments require that the card is pre-registered with the EPO and bank transfer was not possible because there is insufficient space in the payment header to enter all the necessary information. As a last resort, the appellant downloaded Form 1010, which he obtained from the EPO's website page on the "Euro-PCT Guide". 

The appellant argued that because Form 1010 could still be obtained via an official EPO source until 15 March, this implied that it remained a valid means of payment, allowing the appellant to rely on the accuracy of the information. On the date of submitting the debit order, the appellant's account held sufficient funds and he requested that payment of the appeal fee should be deemed on time.  The appellant additionally argued that the Decision of the President (to no longer accept debit orders on paper) was unallowable, on the basis that it constituted a factual shortening of the appeal period in the event of technical problems, which decision could only be taken by a 2/3 majority of the Administrative Council. The appellant further asked that a number of questions be referred to the Enlarged Board.

The Board upheld the finding of the OD. They deemed it unjustifiable to place reliance on a document obtained via the online "Euro-PCT Guide" as this is by its nature a brochure which is not necessarily up-to-date. The Board further commented that the appellant could have made further electronic payment attempts on the next day, after the first attempt at online payment failed.

Furthermore, the Decision of the President was held to be valid. The Board disagreed that any factual shortening of the appeal period was concerned. Moreover, the manner in which fees may be paid to the EPO is governed by Art. 5 Rfees. Paragraph (1) provides for payment or transfer into the EPO's bank account. Paragraph (2) stipulates that the President may authorize other means of payment. The possibility of filing the appeal fee via debit order is thus an additional form of payment not necessarily required under the EPC, which the President is entitled to allow, disallow or, in the present case, modify so as to prescribe that only debit orders transmitted in a particular format are recognized.

The Board saw no need to refer any questions to the Enlarged Board.

T 2187/14 - Filing new machine translations until understandable?

In this appeal in opposition, the opponent filed a Japanese prior art document E10 and a barely understandable machine translation E10* with the grounds of appeal. In the Board's preliminary opinion, annexed to the summons for oral proceedings, the Board indicated that "E10* is a barely understandable translation of E10 which the Board does not intend to consider". In response hereto, the opponent submitted a second computer translation E10**.  Did the Board see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case? Or is a certified translation needed at the earliest opportunity? If the Board does allow the first and the second, bad, translations into the proceedings, can they be used in full?

T 383/14 - Sufficiency of "only"

This opposition concerns a sorting table for sorting out the foreign bodies from harvested small fruit. The table has openings that will only let the small foreign objects pass through (de façon à laisser passer uniquement les petits corps étrangers). Elsewhere, there are openings that permit only berries to pass through (permettre le passage et la chute des baies de raisin à trier seulement).

The opponent questioned the sufficiency of the description with respect to  these features. The means shown in the description will at times also allow unintended objects to pass through; hence the shown means neither satisfy the 'uniquement' nor the 'seulement' requirement. Moreover, these terms are perfectly clear, so no interpretation based on the description should be allowed for them.

The board explains that the skilled person will try to reach an interpretation of the claims that makes technical sense, and that takes into account the whole of the disclosure of the invention in the patent. The sorting table allows sorting of foreign bodies that are either smaller or larger than the berries. That it is not "only" the grape berries that pass through the openings, did not convince the Board . This is not the realistic situation in which the reproducibility of the sorting needs to be shown, but rather that of an occasional failure perfectly foreseeable for a sorting machine. The claim is thus sufficiently disclosed.

That the disputed terms are clear in themselves is no objection, as they are used in claim which is to a certain point abstracted to an ideal situation. The skilled person will understand this. 

T 1403/16 Can an opponent file a request for re-establishment having not timely responded to a R.84(1) invitation

The opposition division noted that the patent in suit had lapsed in all the designated contracting states and issued a communication under R.84(1) EPC inviting the opponent to file, within two months, a request for continuation of the opposition proceedings. By mistake, the opponent's representative failed to timely file the request under R.84(1). A request for re-establishment was filed. It was argued that re-establishment should be allowed in line with the exceptions given by the Enlarged Board in G 1/86. The opposition division did not see a reason to extend the scope of G 1/86 from opposition appeal proceedings to opposition proceedings and decided to declare the re-establishment request inadmissible and to discontinue the opposition. The opponent appealed. 
The Board of Appeal did not go into the issue whether the scope of re-establishment should be extended but came to the concluson that re-establishment would anyhow not apply to missing a time limit under R.84(1). Missing such a time limit does not have a direct loss as a consequence. The opposition division may decide to discontinue the opposition proceedings if no timely request is filed, but this is a separate decision. Such a decision can be appealed.