Tuesday, October 30, 2018 T 0969/14 - partial priorities' transfer

This is an interesting appeal lodged against an opposition decision to revoke a European patent on the ground of novelty under Art. 54(3), EPC.
The situation is as follows:

D16 is a European patent application filed on 27/06/2000 by applicant Chiesi.
D14 is a PCT application filed on 17/04/2001 by Chiesi claiming priority of D16.
EP (contested patent) is filed by applicant Vectura on 17/04/2001 claiming also priority of D16.
The case relates to two inventions A and B, where A encompasses B. EP claims A and D14 claims B. D16 discloses both A and B.

Companies Chiesi and Vectura had a joint-venture where it was agreed about the ownership of the respective IP. The rights of ownership of D16 was assigned from Chiesi to Vectura before filing of EP. However, B's right of priority remained with Chiesi in a re-assignment of the priority right from Vectura to Chiesi.  

The result is that Vectura owns a valid priority right only for (A-B) but claims A which is broader. The consequence is that claim 1 of EP is not novel over D14 under Art. 54(3), EPC because D14 validly claims priority of D16 for B, thereby confirming the decision of the Opposition Division.  

When Vectura files a fourth auxiliary request in appeal proceedings disclaiming B from A, i.e. based on (A-B), for restoring the priority right, it is too late. The BoA does not admit said request into the appeal proceedings. 

The logical conclusion is that an applicant cannot transfer a partial priority right and at the same time keep it for claiming in a broader context.

Friday, October 26, 2018 T 658/12 - Faulty reasoning does not qualify as insufficient reasoning

In this appeal, the Board agrees with the appellant's argument that the subject-matter of claim 1 involves at least some technical features which are not regarded as notorious knowledge of the skilled person. Apart from business related aspects of order processing the claimed subject-matter also involves aspects concerning authentication and identification of users at different entities of the claimed system. The Board considers the latter to contribute to the technical character of claim 1 so that they cannot be regarded as being part of the non-technical requirement merely to be implemented by the technical skilled person. Further, the examining division interpreted technical features of the claim to be in the administrative, i.e. non-technical domain. The Board in contrast considers those features (related to authentication and identification) to be technical. In the Board's view this was an incorrect application of the COMVIK approach. 
In reason 4.1, the Board indicated that "an insufficiently reasoned decision has to be distinguished from a decision that has faulty or unpersuasive reasoning. The decision under appeal is not based on mere allegations, nor does it lack a clear comprehensive argumentation. The Board agrees with T 690/06 (see reasons, point 13) that notorious prior art, i.e. prior art which cannot reasonably be contested to have been generally known and which is cited without proof, is allowable by the jurisprudence. The COMVIK-approach may have been incorrectly applied, but this is a substantive issue, only involving judgement. Thus, the decision is reasoned in the sense of Rule 111(2) EPC." 
The decision leaves some unsatisfactory feelings... a wrong decision that is -as the Board indicates multiple times- clearly faulty reasoned in several aspects forces the applicant to appeal at the cost of an appeal fee as he would otherwise loose the application, and he will need to pay for the errors made by the first instance division. Some patent attorneys and other stakeholders further expressed their worries that the focus on speed in substantive examination, with only one written round as a main rule, as well as in opposition may lead to more erroneous decisions - which another round of discussion may have prevented. An appeal case like the one below may lead one to consider that also a reimbursement of the appeal fee due to clearly faulty reasoning by the first instance division would be fair, and  not only if there was a substantial procedural violation. 

Keywords:
Remittal - examination of novelty and inventive step (yes - technical features not assessed)
Substantial procedural violation - (no, features incorrectly assessed as non-technical, error of judgement)

Tuesday, October 16, 2018 T 1934/14 - Conflicting recollection of events

Conflicting events

In the present case, the respondent (patent proprietor) requested to supplement the minutes of the oral proceedings nearly three months after the notification of the minutes, namely to mention that the respondent 'requested to file a further request' during the oral proceedings, and that the respondent requested an interruption of the oral proceedings. The Board, however, considers the first request not to represent an actual request but rather an announcement of an intention (to file a further request) and therefore not to pertain to the 'essentials of the oral proceedings'. The Board also cannot recall the second request and questions the belated filing of the request for supplementing the minutes.

Friday, October 12, 2018 T 1280/14 - No switching between lines of defense

Can the Board exercise its discretion under Art. 13 RPBA not to admit auxiliary requests in the proceedings even if these have already been filed in direct response to the Opponent/Appellant's grounds of appeal and correspond to those submitted during first instance proceedings?

In the present case, the Opposition Division had rejected the opposition against the patent. In the ensuing appeal, the Opponent-Appellant already requested in his grounds that none of the (39) auxiliary requests filed during opposition proceedings be admitted, as these were "excessive, filed in unspecified order, and/or late filed".

In his response to the grounds, the Proprietor-Respondent filed 15 auxiliary requests based on a selection from the requests filed during opposition proceedings. The Proprietor stated that these auxiliary requests were properly numbered, therefore having a clearly specified order. From the arguments in support of the requests it could be deduced that these requests were classifiable as forming six diverging lines of defense, auxiliary requests 1, 2 and 4 thereof forming the first line of defense.

In the summons for oral proceedings, the Board pointed out (referring to T 1903/13) that the Proprietor should be prepared to comment on how the other diverging lines of defense would represent the alleged invention. The Proprietor did not provide any further comments.

Accordingly, the Opponent/Appellant and the Board had to assume prior to the oral proceedings that the Respondent intended, after the main request, to first prepare the patent in suit in accordance with the first line of defense, with auxiliary requests 1, 2 and 4 to defend. However, it was not until the oral hearing (in which the Main Request had fallen as lacking novelty over prior art document D9 filed with the Opponent-Appellant's grounds) that the Proprietor made it clear that he now intended to only pursue his third and sixth lines of defense - corresponding to auxiliary requests 8 and 15, respectively, and renumbered as auxiliary requests 1 and 2.

This unannounced change of strategy did not fare well with the Board, who found that both the Opponent and Board had unnecessarily prepared for auxiliary requests which turned out not to be relevant in the further proceedings; thus, the Respondent had not complied with the procedural economics offered. According to the Board, contrary to the Respondent's submission, his actions did not constitute a mere renumbering of the requests, since new auxiliary requests 1 and 2 (formerly auxiliary requests 8 and 15) corresponded to lines of defense diverging from the former auxiliary requests 1, 2 and 4. Thus, what was now claimed as an invention had fundamentally shifted. Hereby, the multiplicity of interlocked features rendered the changes in subject-matter of the auxiliary requests very complex.

As a result, remaining auxiliary requests 1 and 2 were not admitted in the proceedings and the patent was revoked.

Tuesday, October 09, 2018 T 0144/11 - Technical implementation of business requirements - rarely patentable

This case concerns a system for rating the value of financial securities, to help investors decide in advance whether or not the investment is a safe one. The patent application was refused by the Examining Division under Art. 56 EPC for failing to solve a problem in a technical field. The applicant appealed the decision, arguing that the invention enabled a safe and reliable security rating system for objectively calculating a rating value, which took into account the popularity of a security by counting the transmissions of rating values to investors. The counting of transmissions was inherently technical and was an idea which the technical skilled person would come up with when asked by the business person to propose a good rating of securities.

The appellant formulated the problem to be solved as "determining reliable ratings for securities". The Board found this formulation too broad, because it omits the details of the "objective calculation" of rating values. According to T 641/00 (COMVIK), non-technical aspects may legitimately appear as part of the framework of the technical problem to be solved , in particular as a constraint that has to be met. Reference was also made to T 1663/11, in which this framework was considered in the form of business requirements that a "notional business person" could give to the technical skilled person to implement, whereby the business requirements should not contain any technical aspects. In that case, the implementation was found to contain technical considerations that could not be derived from the business requirements and was deemed patentable.

The Board in this case observed that: "another constraint is that the technical skilled person must receive a complete description of the business requirement, or else he would not be able to implement it and he should not be providing any input in the non-technical domain." Further, while the Board did not deny that counting transmissions has a technical character, it found that the details of the "objective calculation" (i.e. counting) are part of the overall business concept addressed by the invention and must be given to the technical skilled person as part of the requirements specification.

The appeal was dismissed on the basis that the problem to be solved was the technical implementation of a business requirement, thus lacking inventiveness.

Friday, October 05, 2018 T 0861/16 - "Qui tacet consentire videtur" does not apply to the EPC

In this decision the proprietor files an appeal against the decision of the opposition division to maintain his patent in amended form. 

The opposition division had mentioned to the parties during oral proceedings that the text of the patent required amendments. However, since the content of these amendments does not appear either in the decision of the opposition division or in the minutes of the oral proceedings, the proprietor could not in any way recognize the modifications made to the text of the patent and give his consent.

Nowhere in the decision of the opposition decision or minutes of the oral proceedings it is stated that the proprietor consented to the amended text nor did the opposition division ensure that the proprietor agreed with the amended text, thereby the BoA concluded that the opposition division incurred into a substantial procedural violation of Art. 113(2), EPC.

The mere fact that the proprietor responded negatively to the invitation of the opposition division to comment on the amendments does not imply that the proprietor agreed with the amendments. The principle of "qui tacet consentire videtur", i.e., who is silent seems also to agree, is not an established principle of the EPC.

Tuesday, October 02, 2018 T 1399/13 - On the size of the hole

The allowability of an undisclosed disclaimer to establish novelty over an Art.54(3) prior right was challenged in opposition. Major topics of the debate were whether the disclaimer removed more than necessary to restore novelty over the prior right and whether the disclaimer and the claim with the disclaimer were clear and concise. 'With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10*. In particular, the difficulty for a patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention, not even with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, supra, point 3 in the reasons, second paragraph, last but one sentence).'  Although not the reason for selecting it for this blog, the decision also has another interesting aspect: the decision applies the partial priority decision G 1/15 in reasons 1.4.2-1.4.5.