Friday, 28 December 2018

T 1058/15 - Probably relevant...decidedly late

What happens when in opposition appeal the opponent-appellant – who in appeal had initially merely raised grounds in view of lack of inventive step – shortly before oral proceedings files a new document D8 allegedly destroying novelty of the claims?

Regarding this fresh ground of appeal (i.e., novelty), it is established case law that, exceptionally, in appeal proceedings a fresh ground may be admitted if the patentee agrees that such a ground be considered and if it is deemed by the Board to be prima facie highly relevant (G 9/91, Reason 18).

In view of late-filed document D8, in principle the Boards of Appeal have the discretion, under Article 114 (2) EPC, not to allow such late-filed evidence. This applies in particular to evidence filed after the statement of grounds of appeal or the reply (Article 13 (1) RPBA) or after the oral hearing has been served (Article 13 (3) RPBA). The criteria to be used in the exercise of this discretion vary according to the state of the proceedings in which the evidence is submitted.

In the present case, the appellant filed document D8 only after the hearing had been scheduled and only a few weeks before the hearing. At such a late stage of the appeal process, general legal principles such as procedural economy, legal certainty and equal treatment of the parties are becoming increasingly important.

The Board found that the possible relevance of an easily retrievable document such as D8 should already have become apparent from its title, figures and IPC class. The opponent-appellant had failed to substantiate any reasons which would excuse overlooking D8 and its omitted submission in the first-instance proceedings.

The novelty objection based on D8 in the present appeal proceedings could not be considered a completely new ground for opposition as in the present case novelty had already been objected to in opposition proceedings on the basis of another document (D1). Regardless, the Board found that in the spirit of G 9/91, the patentee should not have to expect that a further ground for opposition will come into play during the appeal proceedings and complicate the procedure.

Accordingly, given that the patentee did not consent to the admission of new document D8, and in view of the inaccurate and very late presentation of this document and the very late revisitation of novelty which was not the subject of the appeal proceedings until then, the Board - notwithstanding relevance of the new document - decided to exercise its discretion under Article 13 (1) RPBA in order not to allow document D8 in the proceedings. The claims were found to be inventive and the appeal was rejected.

Friday, 21 December 2018

T 1648/17 - repeated non-attendance at oral proceedings

 Foto from Guddanti (Pixabay) unrelated to the case

This appeal was lodged against a decision of the examining division refusing the European patent application in suit on the ground that claim 1 and 8 lacked an inventive step (Art. 56 EPC).  

In the statements of the grounds of appeal, the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of two new requests never presented during first instance examination proceedings. The two new requests were based on an additional feature derived from the description and not from the claims as originally filed. This would have meant that the BoA would have needed to remit the case to the Examining Division for a new search thereby going beyond the scope of appeal proceedings that are primarily concerned with examining the contested decision rather than to continue examination  (G 10/93). The applicant/appellant did not attend the Oral proceedings both during examination and during appeal proceedings reason for which the BoA believes that the applicant did not want to submit any new request from that point in examination. Therefore the BoA did not admit the requests in appeal (Art. 12(4) RPBA) and dismissed the appeal. 

Tuesday, 18 December 2018

T 1688/12 - Copyright notice and internet publication date

The present case relates to an opposition appeal by both parties against an interlocutory decision of the Opposition division. During the opposition, a document D1a was introduced into the proceedings, by the OD, which document destroyed the novelty of claim 1. D1a was a product data sheet bearing a copyright notice dated 05/2006. The document also mentioned that data sheet could be downloaded from the relevant company's website. In appeal, the main request of the proprietor was whether the D1a document was Art. 54(2) prior art against the patent in suit, filed in March 2008. The fact that the document would be novelty-destroying was not contested.

The patent proprietor argued that copyright notice date was not sufficient by itself to demonstrate that D1a had indeed been published before the patent filing date. The Board held that it was obvious that the product data sheet was intended for publication on the Internet, and that the question of whether publication actually took place before the filing date should be clarified in accordance with the principle of "free assessment of evidence". The fact that the copyright notice is dated 22 months earlier serves a first indication of a prior publication of D1a. The Board further held that it may, in principle, be presumed on the basis of normal commercial practice that publication has taken place shortly after the date of the copyright notice, unless there is an indication to the contrary.

The proprietor's main request was therefore denied. The final outcome of the appeal was that the interlocutory decision of the Opposition Division was upheld.

Friday, 14 December 2018

At the "User consultation conference Rules of Procedure of the Boards of Appeal" in Munich on 5 December 2018, users of the system the opportunity to hear presentations by members of the Boards of Appeal on the revised draft, followed by panel discussions by members of the Boards of Appeal Committee, the Boards of Appeal and representatives of user associations.
A first public draft of the RPBA was subject to an online user consultation procedure in early 2018. In light of the responses received, the second version was drafted, including newly introduced provisions on case management. This revised draft of the Rules of Procedure of the Boards of Appeal (RPBA) was agreed upon by Boards of Appeal Committee (BOAC) and the President of the Boards of Appeal, and formed the basis for the conference.
The revised draft shows major changes to case management issues as well as to Article 12 "Basis of appeal proceedings" and Article 13 "Amendment to a party's appeal case" of the RPBA, which may change the rules of the game (jn appeal and in first instance as well!) as of 2020.
Today, 14 December 2018, a report on the user consultation conference was posted on the website of the Boards of Appeal. The report can be found here and is shown in full below.

Wednesday, 12 December 2018

T 2303/16 - refused for lack of two-part form, conciseness and reference numerals

Car towed because of a parking violation

The application was refused after a single office action on the grounds of lack of conciseness, two-part form and reference numerals. In appeal these are addressed but no interlocutory revision was given. 
After entering the regional phase at the EPO in 2006, the applicant received its first office action in 2014. The office action raised clarity issues and a few smaller problems, in particular lack of reference numerals. The international search report had complained earlier about lack of two-part form, and lack of conciseness due to too many independent claims (in addition of substantive problems). In it's reply, the applicant amended for the clarity issue, and addressed the patentability of the claims. The second communication in ten years was a refusal. 
The board did not see a problem with a refusal based on formal issues that were only identified in the ISR, but did rule that interlocutory revision should have been granted. 

Tuesday, 11 December 2018

Hot News: T 1063/18 - Rule 28(2) EPC in conflict with Art.53(b) as interpreted by the EBoA in G 2/12 and G 2/13.

Hot News: Communication from the BoAs (link):

Decision in case T 1063/18 on the patentability of plants

7 December 2018

Case T 1063/18 concerns the appeal by the applicant against the decision of the examining division to refuse European patent application no. 12 756 468.0 (publication no. EP 2 753 168) for the sole reason that the claimed subject-matter falls within the exception to patentability according to Article 53(b) and Rule 28(2) EPC (here: plants exclusively obtained by means of an essentially biological process).

At the oral proceedings, which took place on 5 December 2018, Technical Board of Appeal  3304, in an enlarged composition consisting of three technically and two legally qualified members, held that Rule 28(2) EPC (see OJ 2017, A56) is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. The Board referred to Article 164(2) EPC, according to which the provisions of the Convention prevail in case of conflict with the Implementing Regulations, and decided to set the decision under appeal aside and to remit the case to the examining division for further prosecution.

The written decision containing the board's full reasons is expected to be issued early next year.

We will post another blog as soon as the written decision is available The file wrapper can be found here. Photo "Farmer's Market Summer Colors" by Luxbao obtained via Flickr under Public Domain Mark 1.0

Update 19-12-2018: Minutes from Oral proceedings before the Board available

The minutes from the oral Proceedings of 5 December 2018 are available in the EP Register (here) and are cited in full below (emphasize aded by the blog editor).

Appeal number T1063/18-3.3.04

Application No.: 12756468.0
Applicant: Syngenta Participations AG

Minutes of the oral proceedings
of 5 December 2018

Composition of the Board:

Chair: G. Alt
Members: R. Morawetz
                 P. de Heij
                 A. Chakravarty
                 L. Bühler

Start of oral proceedings: 09:30 hours
End of oral proceedings:  13:00 hours

 Present on behalf of the appellant:

Mr M. A. Kock, authorised by an authorisation dated 19 October 2018, and Mr N. Amelot, professional representatives, both identified by EPO-identity card.

The chair declared the oral proceedings open. She noted that the board had been enlarged pursuant to Article 21(3)(b) EPC and Article 9 RPBA. She then summarised the relevant facts as they appeared from the file. The appellant confirmed that they had received all third parties observations on file.

The chair stated that the board had taken note of the third parties observations. The chair also stated that the board intended to decide whether the decision to refuse the application was correct.

The chair ascertained the appellant ’s opening requests which the board understood to be as follows.

The appellant requested:

- as the main request: That the decision under appeal be set aside and, should the board remain of the opinion that the grounds raised in the communication of the board prevented the application from being granted, the case be remitted to the examining division for further prosecution on the basis of the set of claims filed on 7 August 2015;

- as auxiliary request 1: Should the board not be in a position to take a decision on the validity and/or scope of Rule 28(2) EPC according to the main request or see points of law of fundamental importance, questions be referred to the Enlarged Board of Appeal as suggested in the statement of grounds of appeal dated 5 April 2018, including a question to clarify the apparent contradiction between the definitions of essentially biological processes under G 2/07 and under Rule 27(c) EPC and the Biotechnology Directive 98/44, as further construed by the Commission Notice;

- as auxiliary request 2: Should the board be minded to dismiss the appeal without deciding on the appellant's main request to set aside the decision of the examining division, the following question be submitted to the Enlarged Board of Appeal: "Is a Board of Appeal entitled to reject an appeal on grounds not related to the appeal without first deciding on the Appellant's Main Request to set aside the decision of the Examining Division?";

- as auxiliary request 3: Should the board intend to reject the request to remit the case to the examining division for further prosecution on the basis of the set of claims filed on 7 August 2015, a patent be granted on the basis of an amended set of claims filed as auxiliary request 4 with the letter dated 26 October 2018.

The chair summarised the appellant’s different lines of argument presented in writing. She noted that one of these lines was that Rule 28(2) EPC was in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2 /13, and that therefore Article 164(2) EPC applied. She invited the appellant to first present comments on this line of argument.

The appellant presented their arguments on the matter and stated that they agreed with the observations of the third party Konig, which the board should take into consideration, and had nothing to add to the comments provided by Konig on the observations of the third party ESA (European Seed Association). [Note: both third parties made multiple submissions - see EP Register]

After deliberation, the chair announced that the board was of the opinion that Rule 28(2) EPC was in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13, and that in accordance with Article 164(2) EPC the provisions of the Convention prevailed.

Next, the appellant presented their arguments in support of the request for remittal to the examining division. These were, inter alia, that the objections of lack of inventive step and lack of clarity had been raised by the board and that they had the right to have these objections considered by two instances.

After another break for deliberation by the board, the chair stated that the board would not order the remittal of the case at the present stage of the oral proceedings, but would reconsider the request after the appellant had been heard on the issue of inventive step of the subject-matter of claim 1 of the main request. There was no loss of instance for this issue because the examining division had provided an opinion on inventive step.

As regards document D1 and the San Luis Ancho pepper disclosed therein, the appellant submitted that it was not known whether the features in claim 1 defining the extreme dark green colour of the fruit at immature harvestable state, i.e. the chlorophyll A and chlorophyll B, lutein and violaxanthin  content, were inherent features of the San Luis Ancho pepper. The dark green colour of the pepper as not necessarily linked to these features. An analysis of the chlorophyll and carotenoid content of the San Luis Ancho pepper could provide the relevant information, however, the appellant's experts had not had sufficient time to carry out such an analysis.

The proceedings were again interrupted for deliberation of the board. After resumption, the chair announced that the board had reconsidered the request for remittal and had decided to remit the case to the examining division for further prosecution. This would allow the appellant to carry out an  analysis of the San Luis Ancho pepper to support their arguments on inventive step.

The chair asked the appellant to state their final requests. These were the same as their opening requests.

The chair asked the appellant if they had any further comments or observations. They had none.

The chair then closed the debate and announced the following decision of the board:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the set of claims of the main request, as filed on 7 August 2015.

The chair then closed the oral proceedings.

The Minute Writer: P. de Heij
The Chair: G. Alt

Wednesday, 5 December 2018

T 1890/15 - Giving oral evidence, or replacing representative's pleading

In the present case, the patent proprietor (appellant) lodged an appeal against the decision of the opposition division revoking the European patent and requests oral submissions of a technical expert as accompanying person to explain the skilled person's understanding. The Board applies the criteria of G 4/95 and concludes that these were not complied with, and exercises its discretion referred to in G 4/95 by not permitting the technical expert as an accompanying person to make oral submissions.

Additionally, the Board deliberates whether the Enlarged Board in G 4/95, and specifically when considering that Art. 117 EPC did not provide a legal basis for hearing oral submissions by an accompanying person involving the presentation of facts and evidence, means that the Enlarged Board considered that an accompanying person, in particular a technical expert, gives oral evidence by way of making oral submissions at the oral proceedings, or merely presents (legal or technical) arguments in place of the presentation of the case (pleading) by the professional representative.

The Board concludes that should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply.