Tuesday, 27 November 2018

R 0004/18 - Wait for a decision




This (yet unsuccessful) petition for review concerns appeal proceedings against a decision of the Examining Division.

The appeal was withdrawn by the representative of the applicant/petitioner during oral appeal proceedings reason for which the appellant later wanted to change his representative. In the minutes of the oral proceedings the BoA used the wording: "the Chairman gave the Boards  conclusion that claim 1 did not meet Art. 123(2)". The petitioner interpreted this wording as a decision of the BoA and requested correction of the word "conclusion" into "preliminary view". The request was refused by the BoA.

The appellant filed the petition based on several grounds under Art. 112a, EPC and further argued that the Examining Division by examining a divisional application of the patent application in suit referred to the minutes to as a decision, thereby adversely affecting the divisional, besides leading to the refusal of the parent. 

The Enlarged Board stated that a condition for filing a petition is the existence of a BoA decision. The minutes of oral proceeding and a correction thereof, are not a decision in the sense of Art. 106, EPC (confirmed by T 0838/92, T 0212/97, T 0231/99) and the appellant/petitioner withdrew the appeal even before oral proceedings were concluded and a decision could be issued. Therefore the Enlarged Board considered the petition inadmissible. 

Friday, 23 November 2018

T 1045/12 - If the grass is greener on the other side, one path that leads you there is sufficient



The present appeal is against a refusal decision by the Examining Division on the grounds of lack of inventive step. In its provisional opinion, the Board also expressed doubts as to whether the application complied with Article 56 EPC. During oral proceedings, the appellant's position was that the Board had not provided conclusive reasons on the basis of tangible evidence showing why the skilled person starting from the closest prior art (D4) would, and not just could, have arrived at the claimed invention. The appellant further argued that the solution to the objective technical problem taught by D3 (evidence of common general knowledge) was one of several, equally likely options, and that in the presence of several, equally likely options, the Board had to provide a reason why the skilled person would have selected the claimed option.

The Board cited decision T 1014/07, which held that [a finding of lack of inventive step must] "identify conclusive reasons on the basis of tangible evidence that would have prompted the skilled person to act in one way or another", and concluded that its present decision, being based on prior art documents D4 and D3, is indeed based on "tangible evidence".

The Board further concluded that one of the options taught by D3 solved the underlying technical problem, and that the existence of other options has no bearing on the obviousness of one specific option. Furthermore, if all options are equally likely, then the invention is merely the result of an obvious and consequently non-inventive selection from a number of known possibilities. The finding of lack of inventiveness was therefore upheld and the appeal dismissed. 


Wednesday, 21 November 2018

T 1946/17 - blanket statements cannot be considered to address the arguments raised


In this appeal case, the Boards emphasized again that a decision according to the state of the file must, as any other decision, be reasoned and arguments raised must be addressed. The standard form for referring only to an earlier communication can only be used under strict conditions spelled out in the Guidelines. It is only possible to use this form of decision where the previous communication addresses all the arguments raised by the applicant. Further, it is possible by way of exception to refer to more than one communication in the standard form, but then the examiner should carefully consider the requirements of Rule 111(2) EPC. Blanket statements --such as merely stated that the "arguments were carefully considered" but "no new evidence" was provided-- cannot be considered to address the arguments raised and does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned. Also, in view of contradictory statements in the communications referred to in the present standard form decision, it is not clear which of the reasons given by the Examining Division under Articles 54 and 56 EPC, if any, might form part of the reasons for the decision to refuse. Lastly, comments submitted by the applicant after the last communication and before the request for a decision according to the state of the file were ignored. 

Monday, 19 November 2018

T 839/14 - Fresh ground before opposition division

Fresh ground

In the written submissions before oral proceedings in first instance opposition, the opponent argued for the first time that the granted patent contained added subject matter. The opposition division refused to allow the new grounds to be added in the proceedings,as it didn't consider it to be prima facie relevant. The decision does contain argumentation though, why the division did not consider there to be added subject matter. The board concurs with the decision not to allow the new ground. Accordingly, the argumentation regarding the added matter which is in the opposition divisions decision is not reviewed by the Board. 

Friday, 2 November 2018

T 0918/17 - Copy-paste approach doesn't cut it


The present case concerns an appeal that was deemed inadmissible for failing to identify the reasons why the impugned decision should be set aside. The decision in question was a refusal by the Examining Division on the grounds of extension of subject matter and lack of inventive step. The initial objection raised in the European search opinion was lack of novelty. In response, the applicant filed amended claims and generally addressed the patentability of the amended claims.

The new independent claim was held to contravene Art. 123(2) and Art. 56 EPC. The next response from the applicant focussed solely on arguments as to why the contested amendment to claim 1 was indeed fully supported in the application as filed. The Examining Division was not persuaded and maintained both its objections, after which the applicant requested a decision according to the state of the file and withdrew the request for oral proceedings. The subsequent decision to refuse was appealed.

In the Board's opinion, the filed statement of grounds did not explain why the Examining Division's Art. 56 objection was incorrect. They also highlighted the fact that the majority of the submission on this issue was a mere copy-paste from the initial response to the search opinion, which was more specifically directed to novelty and only generally addressed inventiveness  The Board therefore held that they were unable to decide on the correctness of the objection without first having to make investigations of their own.

The applicant did not respond to the Board's preliminary opinion on admissibility and the appeal was rejected as inadmissible.


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