Wednesday, 21 August 2019

T 0703/19 - Legitimate expectation remedies missing appeal fee

In this case, the appellant failed to pay the appeal fee within the 2-month time limit of Art. 108. It would appear that the intention had been to pay when the notice was submitted using online filing, but the correct payment method (via deposit account) was not entered; payment method "not specified"  had been selected. Fortunately, the written notice (attached in pdf format) contained a statement that the appeal fee was "herby paid via online fee payment" and the notice was filed well in advance of the 2-month time limit.

The appellant was not notified of any defect in the notice of appeal, but received a loss-of-rights communication, whereupon the appeal fee was immediately paid along with a request that the fee be considered paid in time. The appellant also filed a request for re-establishment of rights. The appellant's arguments were based on G 2/97and the protection of legitimate expectations.

The statement in the notice of appeal could not, of course, constitute a debit order submitted by electronic means and, as remarked in G 2/97, users of the EPO have a duty to do everything in their power to prevent a loss of rights. This decision also sets out that a Board of Appeal is under no obligation to notify an appellant of a missing appeal fee if there is no indication in any of the filed documents from which the EPO could infer that the appellant would, without such notification, inadvertently miss the time limit. 

It was therefore considered whether the documents submitted in this case contained a clearly identifiable deficiency in this respect. The Board noted that it must be expected that a notice of appeal is read, meaning that some kind of plausibility check is performed. The statement in the notice regarding online fee payment was a clear indication of intent to perform a procedural act. That this intention did not correspond to the factual act was also clearly recognizable. The Board found the circumstances in this case analogous to those in G 02/07, where the notice of appeal made reference to an enclosed cheque which had not been enclosed. 

The appellant could therefore have expected notification from the EPO that the information on payment method was missing, which would have allowed the fee to be paid on time. The appeal was therefore deemed filed and the Board ordered re-imbursement of the re-establishment fee. 

Tuesday, 13 August 2019

G 1/18 - late appeal fee or notice: appeal deemed not filed

The Enlarged Board of Appeal issued opinion G 1/18 on 18.07.2019 on the distinction between an appeal deemed not to have been filed and an inadmissible appeal (where the appeal fee was paid late and/or the notice of appeal was filed late, i.e. outside the 2-month time limit of Art. 108 EPC), and on the consequences of this. A news message was posted on the website of the Boards of Appeal on the same day. The complete decision became available online on 31.07.2019, and is at this moment only available in French. We cite the complete news message and some selected parts of the decision below.

Friday, 2 August 2019

J 0015/18 - Verifiable slip-up not "special circumstances" for post-publication rectification of priority claim

This case concerns a Euro-PCT application which claimed priority of a US application P2, which itself was a divisional application of a further US application P1. The PCT application was filed within the 12 month priority period of P1 and some time after entry into the EP phase, the Applicant requested a correction of the priority claim under Rule 139 EPC. This request was refused by the Receiving Section, on the basis that while claiming priority from a non-first application was clearly a mistake that did not reflect the applicant's true intent, the published information relating to the priority claim was not obviously wrong and thus no special circumstances existed that would justify the addition of the omitted priority claim. 

The applicant appealed the decision, arguing that it is wrong to consider that it must be possible for third parties to detect an error in a priority claim based on the published data alone. Any third party affected by the possible grant of the patent would consult a patent professional, who would conclude that the application should have been filed claiming priority from P1. 

When correcting a priority a claim, it is established EPO practice that the interests of the public  should be safeguarded. The Board therefore considered who should be considered as "the public". The applicant seemed to be arguing that the relevant public concerned patent attorneys. The Board disagreed and concluded persons skilled in the art would be the first to consult a PCT publication and that they should be able to rely on the published priority data. The fact that a patent attorney would be able to detect the error by consulting priority document was held to be irrelevant. 

The Board saw no special circumstances for deviating from the established practice that a request to correct a priority claim under Rule 139 must be made sufficiently early for a warning to be included in the publication.

Thursday, 18 July 2019

G 2/19 - Breaking: Haar belongs to Munich

We refer to our previous blog post about referral G 2/19 (and this related post). In G 2/19, the following questions were referred to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Today, the following communication was posted on the EPO website:
Haar, 17 July 2019 
Yesterday the Enlarged Board of Appeal announced its decision in case G 2/19 at the conclusion of the oral proceedings. The first referred question was rejected as inadmissible. The second and third referred questions were reformulated and answered as follows: 
1. Ein Dritter im Sinne von Artikel 115 EPÜ, der gegen die Entscheidung über die Erteilung eines europäischen Patents Beschwerde eingelegt hat, hat keinen Anspruch darauf, dass vor einer Beschwerdekammer des Europäischen Patentamtes mündlich über sein Begehren verhandelt wird, zur Beseitigung vermeintlich undeutlicher Patentansprüche (Artikel 84 EPÜ) des europäischen Patents den erneuten Eintritt in das Prüfungsverfahren anzuordnen. Eine solchermaßen eingelegte Beschwerde entfaltet keine aufschiebende Wirkung. 
2. Mündliche Verhandlungen der Beschwerdekammern an deren Standort in Haar verstoßen nicht gegen die Artikel 113 (1) und 116 (1) EPÜ. 
The reasons for the decision will be issued in writing in due course.

It would appear that the Enlarged Board found that Haar belongs to the greater Munich area, thus not contradicting the provisions of the EPC concerning the location of the EPO.

Furthermore, a third party within the meaning of Article 115 EPC, who has filed an appeal against the decision to grant a European patent, has no right to an oral hearing before a Board of Appeal of the European Patent Office on his request to re-examine allegedly unclear patent claims (Article 84 EPC) in the European patent.

Wednesday, 10 July 2019

Revised Rules of Procedure of the Boards of Appeal in force from 1 January 2020

On 4 July 2019, a communication was posted  the Board of Appeal website indicating that the revised Rules of Procedure were approved by the Administrative Council and will come into force on 1 January 2020. 

Tuesday, 2 July 2019

T 551/15 - Outcome of G 1/18 not relevant (?)

Within the two-month period under Article 108 EPC, the opponent filed notice of appeal and paid the corresponding appeal fee. On 17 March 2015, i.e. prior to the expiry of the two-month period under Article 108 EPC, the patent proprietor submitted, via the electronic filing system, a document entitled "Letter accompanying subsequently filed items". The document indicated the patent application number, the name and address of the representative and the representative's reference number. Under the heading "Fees" it specified the fee for appeal, and under the heading "Payment" it contained a debit order authorising the EPO to debit the appeal fee from the deposit account, followed by the details as to the deposit account and an indication relating to where any reimbursement was to be made. The document did not contain any further text, nor was it accompanied by any further document. The payment of the appeal fee was effected with the date of 17 March 2015. In its statement of grounds of appeal, the patent proprietor stated: "Further to the Notice of Appeal filed on 17.03.2015 by the payment of the appropriate fee, we hereby submit the Grounds of Appeal...". Together with this letter, the patent proprietor filed claim sets as the main request and auxiliary requests. Did the proprietor file a notice of appeal? If so, did he file it in time or too late? if it was too late, was the appeal deemed not filed or inadmissble? Did the proprietor's appeal get into existence? Did the opponent get the appeal fee reimbursed (which can only be done if there was no legal basis for its payment or if there is a legal provision for the refund/reimbursement)? What is the effect of G 1/18 on this case - in particular, did it need to be stayed? Is it of relevance herein that appeal proceedings anyhow got into existence due to the appeal of the opponent, and that the proprietor would be a party as of right in both situations (deemed not filed or inadmissible)? If G 1/18 is applicable, but the case is not stayed as the outcome on the merits of the appeal does not change, can a decision on the reimbursement/refund be made without staying in view of the relevance of G 1/18 on that decision (esp. as refund is not at the discretion of the EPO/Board)?  

Friday, 28 June 2019

T 1360/13 - Drawings much improved, but patent invalid

Drawing sheet 1 as replaced
Drawing sheet 1 as originally filed

The patent was granted with drawing sheets exchanged according to Rule 26 PCT during the international phase, the originally filed drawing sheets being of poor quality, essentially showing black or grey elements. The same exchanged drawing sheets which were part of the patent as granted are part of the main request documents.

The board concluded that many details present in the figures of the patent as granted are not disclosed directly and unambiguously by the application as originally filed.

To overcome this problem, the proprietor filed a series of requests 9-17 in which all drawing sheets have been deleted and all references to the figures in the description and claims have been deleted as well.  (Requests 1-8 were withdrawn.) For the BA this corresponded to an extension of protection, not allowable under Art 123(3) in view of Art 69. The board provided the following catchword. 


In view of Article 69(1) EPC which states that the description and the drawings shall be used to interpret the claims when determining the extent of the protection conferred by a European patent, after grant, any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation cannot be removed from the patent without infringing Article 123(3) EPC.

Monday, 17 June 2019

T 1391/15 - Deviations and displacements

An interesting decision concerning what the skilled person would directly and unambiguously derive from the application as filed, when disputes concerning translations of terms from a non-official language arise.

In the present case, part of the objections raised by the opponent-appellant stem from an (alleged) error in the original Italian language application and a supposedly incorrect translation into English of another term in the original application.

More specifically, whereas the original application (concerning a system and apparatus for dehumidifying walls) mentioned “spostamenti” which was subsequently translated into English as "movements", the patentee later amended this term to “differences” based on the corresponding Italian term “scostamenti”, arguing that this amendment was an obvious correction within the meaning of Rule 139 EPC. The opposition division agreed.

While the Board considered it plausible, perhaps even probable, that the term "spostamenti" was erroneous, it found that within the context of the patent spostamenti/movements could in fact meaningfully refer to movements of the apparatus of the invention over the wall; accordingly, it found that the strict conditions for allowing the correction under Rule 139 EPC were not met. Regardless, the Board considered that the overriding issue was in fact whether or not this amendment complied with Article 123(2) EPC. In this regard, the Board argued that it would be clear to the person skilled in the art reading the application as filed that operation of the claimed apparatus would implicitly result in a “difference” or “differences” in certain observed values. Accordingly, in the Board’s view, the term "(in function of the) differences" in claim 1 would not present the skilled person with any new information not directly and unambiguously derivable from the application as filed, thus allowing (under Art. 123(2) EPC) the amendment of (spostamenti) ”movements” to (scostamenti) ”differences”.

The Board further considered the term “monitor” - rather than "control" - in claim 1 based on the original “controllo/controllare” not to contravene Article 123(2) EPC in view of the disclosure of the patent as a whole, which discloses both monitoring and controlling of the dehumidifying process.

Tuesday, 11 June 2019

T 473/15 - Closest prior art not directed to the same purpose or effect as the invention

In the present case, novelty and prior art were challenged in opposition appeal. The main request was considered novel, in view of it being considered a multiple selection from alternatives and parameter ranges disclosed in different parts of the description of a prior art document D5 and there being no pointer towards applying them in combination. The opponent considered the same document as the closest prior art, and the board saw no reason to depart from this choice. However, the claim aimed for an improved filtereing whereas D5 related to a different purpose or effect: chromatography. "In other words, D5 relates to a different technical field than that of the patent in suit. However, a closest prior art that is not directed to the same purpose or effect as the invention cannot, according to established case law, lead the skilled person in an obvious way to the claimed invention (see the introductory remarks to Case Law of the Boards of Appeal, 8th ed., I.D.3.2).  Applied to the present case, this means that the skilled person would not, without hindsight, try to improve the particulate capture efficiency of the medium of D5, which is meant for chromatographic separation. Hence, the skilled person would not, when starting from D5, apply D4's, D10's or any other document's teaching, since these documents do not deal with chromatographic separation."

Tuesday, 28 May 2019

T 1218/14 - No accidental anticipation; relevant for inventive step?

Does the finding that (a disclosure in) a prior art document D1 does not qualify as an accidental anticipation (thus not allowing the use of an undisclosed disclaimer) because it does not fulfill the criterion laid down in G 1/03 that it is so unrelated to and remote from the claimed invention that the skilled person would never have taken it into consideration when making the invention, imply that it is automatically relevant for inventive step? Or, turned around, if it is found that the claimed subject matter is inventive in view of D1, does this mean that D1 is in fact irrelevant for inventive step, such that the criterion in G 1/03 is met and that D1 is an accidental anticipation after all?

Not necessarily - according to this decision. Herein, the Board argued that the requirement in G 1/03 that an accidental novelty-destroying disclosure has to be completely irrelevant for assessing inventive step is to be understood not as an alternative, or additional criterion, but as a consequence of the criterion that, from a technical point of view, said disclosure is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention.

Consequently, if this criterion is met, it follows that said disclosure is completely irrelevant for assessing inventive step. However, not meeting said criterion does not necessarily imply the opposite, namely that the disclosure in question will contribute to a finding that inventive step is lacking.

Accordingly, in the present case, as D1 was considered to deal with a side aspect of the claimed subject matter, the patentee was not able to maintain his broader claims by disclaiming a relevant disclosure of D1; the subject matter of duly limited claims was however deemed inventive in view of D1 as secondary document.

Tuesday, 21 May 2019

T 314/15 - Wrong/no place of business on notice of appeal: (in)admissible?

In the present case, a notice of appeal by facsimile was received at the EPO on 9 February 2015, carrying at the top of its first page the letterhead "MAN Truck & Bus AG", and below the addressee a line containing various references including inter alia an indication that the letter was written on that same date in Nürnberg, followed by a paragraph designating the number of the above European patent and its underlying application, the name of the patent proprietor and the name of the opponent as "MAN Truck & Bus AG". In the subsequent paragraphs it is declared, with reference to the impugned interlocutory decision, the European patent and its proprietor, that an appeal was filed. A list of requests and a statement concerning the payment of the appeal fee by debit order submitted in the annex completed the letter which was signed by an employee of MAN Truck & Bus AG together with a reference to an EP authorisation 58 1060.1. The letter's footer contains in a left column an indication of inter alia the place of business being München and in a right hand column, a postal address of the company MAN Truck & Bus AG in Nürnberg. In response to a communication pursuant to Rule 101(2) EPC, sent to MAN Truck & Bus AG at its postal address in Nürnberg and stating that the notice of appeal did not contain the address of the appellant and requesting the deficiency be remedied within a period of two months. the address of appellant-opponent was provided, corresponding to the address indicated by opponent in the notice of opposition. It was requested that all correspondence be sent to the Nürnberg postal addres. 
Thus, the notice of appeal of appellant-opponent did not contain the address, contrary to the requirement of Rule 99(1)(a) EPC, but the address of its principle place of business (Sitz) was provided later (together with an address from the company, other than its principle place of business, as address of correspondence). Did the Board consider the appeal admissible in view of Rule 99(1)(a) EPC?

Friday, 3 May 2019

T 2081/16 Successful Appeal against Decision to Grant

In this appeal, the preliminary opinion of the Board was to reject the appeal as inadmissible, given that the applicant had approved the text intended for grant by filing a translation of the claims and paying the necessary fees and thus did not appear to have been adversely affected. The applicant had disapproved the first R 71(3) by filing amended claims and requesting grant to be based on certain pages from the description as originally filed. The request was approved and a second R 71(3) communication was issued. It transpired however that the description pages specified in the new "Druckexemplaar" were based on description page numbers filed at a later date. This led to non-fitting pages and entire passasges being left out randomly.

The Board therefore concluded that it could not have been the Examining Division's intent to grant such as text. The true text had not been communicated to the applicant, making it irrelevant that the applicant gave apparent approval under R 71(5) by paying the fees and translating the claims. Consequently, there was also no conflict with G 1/10, which generally ruled that it is the applicant's responsibility to check the correctness of the text before approving it, and that even when the granted text contains errors introduced by the Examining Division, this does not affect how R 71(5) is to be construed. Furthermore, the fact that the patent was granted without the text intended for grant being communicated to the proprietor also meant that he was adversely affected.

The Board further commented on the situation where a patent is granted based on amendments not introduced by the applicant himself, recommending that these amendments are not only indicated in the "Druckexemplaar" , but also in the communication under R 71(3). In the present case, there had been no specific indication that the text intended for grant differed from the applicant's request.

The decision to grant was set aside and the case remitted to the Examining Division with the instruction to grant on the basis of the applicant's allowed request.

Tuesday, 30 April 2019

T 180/14 - Do not miss the opportunity to correct the error!

In this opposition appeal, the appellant (priopretor) filed statement of grounds of appeal including a new main request, which was indicated to include claims 1-22 of the 2nd auxiliary request filed during the oral proceedings before the Opposition division, and several auxiliary requests. Claim 1 of the new main request did not however correspond to claim 1 according to that second auxiliary request filed during the oral proceedings before the opposition division - at least two significant differences were identified.  In the letter of reply to the statement of grounds of appeal, filed by the opponent (respondent) in 2014, the discrepancy between what was said in the statement of grounds and in the submitted main request, was identified in detail. The appellant did not at that stage react to the respondent's reference to this identified discrepancy between the written statement and the content of the annexed main request. In a communication under Article 15(1) RPBA the board drew the appellant's attention to the corresponding discrepancy already identified by the respondent. It was inter alia noted by the board that the subject-matter of claim 1 of the main request and the first, third and fourth auxiliary requests was provisionally considered to not fulfil the requirements of Article 123(2) EPC. With letter of 15 February 2019, i.e. approximately one month prior to the oral proceedings scheduled before the board, the appellant, in response to the board's communication, filed a new main request as well as new first to fifth auxiliary requests. Claim 1 of the new main request is identical to claim 1 of the second auxiliary request as filed during the oral proceedings before the opposition division. The new main request was presented as a request for correction of obvious errors of what was submitted as new main request wit the statement of grounds in 2014. Did the Board accept the correction? Did the Board admit and allow at least one of the other requests?

Wednesday, 17 April 2019

T 0725/14 - Valid transfer of rights results in invalid priority claim

If during the priority year a European patent application - filed by applicant A - is transferred to a party B, is then the priority claim from a subsequent application (from which the patent in suit matured) by applicant A to the earlier application valid? Which acts and statements, including their timing, constitute the transfer of a priority right between parties? And what role do the parties' intentions - as far as they can be derived from the documents on file - play in this?

Tuesday, 9 April 2019

G 3/19 - Patentability of plants exclusively obtained by essentially biological processes: the referral

The full text of the referral by the President to the Enlarged Board of Appeal relating to the patentability of plants exclusively obtained by essentially biological processes is available online. Also see our earlier posts (w.r.t annoucemcentearlier annoucement T 1063/18 and first news message)). The accompanying letter is dated 4.04.2019 and was received in the BoA Office on 08.04.2019.

Under Article 112(1)(b) EPC the President of the European Patent Office refers the following points of law to the Enlarged Board of Appeal:

1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?

2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant
to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

J 4/18 - Dutch and French natural persons as co-applicants entitled to language-based fee reduction

Since Rule 6 EPC was amended per 1 April 2014 by limiting the possible fee reduction to the filing and examination fee and by inserting 3 new paragraphs, 4-7, the possible fee reduction when filing an EP application or a request for examination in an admissible non-EPO language is limited to certain categories of applicants, namely small and medium-sized enterprises, natural persons or non-profit organisations, universities or public research organisation. In case of multiple applicants, each applicant shall be an entity or a natural person of those categories. So, if a Dutch natural person and a large Dutch billion-euro firm together file an EP application in Dutch, they are not entitled to a 30% reduction in the filing fee; however, if two Dutch natural persons together file an EP application in Dutch, they are entitled to such 30% reduction. But what if a Dutch natural person and a French natural person together file an EP application in Dutch? Such a situation was addressed in a list of frequently asked questions intended to provide additional information for users, publisned by the EPO at the time of entry into force of the current (amended) Rule 6 and still available. The current decision decided however differently than what the FAQ provides for. 

Sunday, 7 April 2019

News: President referred questions to the Enlarged Board on patentability of plants exclusively obtained by essentially biological processes

Following his earlier annoucement, the President has submitted questions too the Enlarged Board of Appeal which relate to the patentability of plants exclusively obtained by essentially biological processes and to decision T 1063/18 (also here). According to a news meesage from the EPO posted last Friday, the President of the EPO seeks the Enlarged Board of Appeal to clarify the applicable legal framework.
The full text of the referral is not yet available. It will be interesting to see which clarifiation the Preseident seems to be required as one may argue that T 1063/18 has already given the answer, as that decision analyzed whether conclusion from G 2/12 needed any adaptations after the introduction of Rule 28(2) EPC subsequent to a notice from the EU Commission (no). Also, the news message below does not mention any conflicting decision, which is needed for the referral to be admissable under article Art.112(1)(b) EPC. (However, also with an inadmissible referral, the Enlarged Board may give a clarification as it did in the software decision G 3/08). So, the full text will be highly interesting, we will keep you posted!

Sunday, 31 March 2019

News: President will ask Enlarged Board for opinion on patentability of plants exclusively obtained by essentially biological processes

In the latest meeting of the Administrative Council, the President expressed his view that referral of the case to the Enlarged Board of Appeal is justified and necessary, in view of the legal uncertainty caused by decision T 1063/18 (also here). 

T 437/14 (Minutes of oral proceedings) - Disclaimer decision following the decision on its referral (G 1/16)

In this case, the Board referred questions to the Enlarged Board about the applicability of the gold standard disclosure test as defined in decision G 2/10 to undisclosed disclaimers (no), and the applicability of criteria as defined in decisions G 1/03 and G 2/03 (yes). The Enlarged Board handled the case as G 1/16 and answered that "For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03. The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons." The referring Board has no issued the Minutes of the subequent oral proceedings before it.

Tuesday, 26 March 2019

T 0403/18 - Ad hoc move of oral proceedings from Haar to Munich

As reported earlier on this blog, the Enlarged Board of Appeal will have to decide whether or not the Boards of Appeal may properly summon parties to oral proceedings at their premises in Haar.

Alluding to this pending referral, in the present case T 0403/18 one of the parties present at an oral hearing in Haar requested that this hearing be held in Munich. As can be inferred from the minutes of this hearing (the written decision has not been published yet), with agreement of all parties the oral proceedings were indeed relocated to the former home of the Boards of Appeal in Munich, i.e. the Isar building at the Bob-van-Benthem-Platz:
"At the beginning of the oral proceedings at 09:00 hrs in the premises of Haar, the respondents relied on decision T 0831/17 of 25 February 2019 referring a question of law regarding the proper venue of oral proceedings and requested that the oral proceedings in case T 0403/18 be held in Munich. The matter was discussed with the parties. With the agreement of all parties the oral proceedings were postponed to take place in Room 111 in the EPO venue of oral proceedings and requested that the oral proceedings in case T 0403/18 be held in Munich. The matter was discussed with the parties. With the agreement of all parties the oral proceedings were postponed to take place in Room 111 in the EPO's building at Bob-van-Benthem-Platz 1 (formerly Erhardtstrasse 27) in Munich starting at 13:00 hrs on the same date."
It will be interesting to see whether pending the referral to the Enlarged Board more Boards (possibly as a precautionary measure) will adopt the same approach.

Friday, 22 March 2019

T 0683/14 - Unsuccessful attemts to get reimbursement of the appeal fee

The appealed decision in this case concerns a refusal by the Examining Division to reimburse the appeal fee after it had allowed interlocutory revision under Art. 109(1). The initial refusal to grant the applicant's main request and auxiliary requests 1 - 3 hinged on whether a particular document (D2) was publicly available at the priority date. After oral proceedings, the Division concluded that D2 did constitute prior art. Auxiliary request 4 was held to be allowable and a Rule 71(3) communication was issued on this basis. The applicant refused the text intended for grant and submitted a claim set corresponding to an earlier request and a new document providing evidence that D2 was in fact disclosed under confidentiality.

The Division held that it could not take the new document into account because the submission was filed after the debate on this subject had been closed and a decision had been taken at the oral proceedings. The patent application was refused. D2 was taken into account when the applicant filed its appeal, where it also argued that the Division had been guilty of a substantial procedural violation by not considering it earlier.

The Board found that the Division had made mistakes. Firstly, the oral proceeding were not terminated with a formal decision that would have prevented the admittance of new submissions. Secondly, even when debate has been formally closed, although this normally terminates the possibility of new submissions, debate may be re-opened at the discretion of the Board [T 595/90], which should also apply to EPO departments of the first instance. The Division was therefore not prohibited from taking the new evidence into account. 

The procedural consequences of the Division's decision were the result of an erroneous substantive position, but no procedural violation had occurred that would merit reimbursement of the appeal fee under R. 103(1). This preliminary opinion was issued to the (now) patent proprietor, who then attempted to obtain a 50% refund of the appeal fee by withdrawing its appeal against the decision of the Examining Division, which had led to interlocutory revision. That appeal was never remitted to the Board, so could not possibly lead to any refund under R. 103(2). Both requests for reimbursement were refused.

Tuesday, 19 March 2019

T 47/18 - Admission of new objections which were not raised in the statement of grounds of appeal

The current Rules of Procedure of the Boards of Appeal, and in particular Art. 12 and 13 thereof, have been applied more and more strictly over the last few years. We cited some of those decisions every once in a while, and this is another of those decisions. With the new Rules of Procedure, expected to enter into force early 2020 (see here; and for the user consultation documents here and here), it will get even more strict. In the opposition case below, the opponent's statement of grounds of appeal contained neither an objection of lack of clarity of the (amended) claims under Art. 84 EPC nor an objection under Article 123(2) EPC. Rather, it contained only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections.  According to the established case law of the boards of appeal, new objections which were not raised in the statement of grounds of appeal, respectively in the reply to the grounds of appeal, are considered an amendment to a party's case.  Admission of such objections is at the discretion of the board pursuant to Article 13(1) and/or 13(3) RPBA. The Board discussed in detail why, in this case, the objections were not admitted into the proceedings. Together with the current state of the proceedings and the need for procedural economy, an important factor was that the appellant could have raised the objections in question at several instances in the first instance proceedings before the opposition division.

Friday, 15 March 2019

T 1680/17 - Basic research does not give expectation of success for clinical application

This opposition appeal provides a very interesting application of the problem-solution approach to a pharmaceutical formulation. Claim 1 according to the main request was as follows:
1. A pharmaceutical formulation for use in the treatment of breast cancer by intra-muscular injection, wherein the pharmaceutical formulation comprises fulvestrant, a pharmaceutically-acceptable alcohol being a mixture of 10 % weight of ethanol per volume of formulation and 10 % weight of benzyl alcohol per volume of formulation, and the formulation contains 15 % weight of benzyl benzoate per volume of formulation and a sufficient amount of a ricinoleate vehicle so as to prepare a formulation of at least 45 mgml**(-l)of fulvestrant, wherein the ricinoleate vehicle is castor oil, and wherein the total volume of the formulation is 6 ml or less.
Interestingly, the highlighted features were known from a document 4. The unusual formulation using a combination of castor oil, ethanol, benzyl benzoate and benzyl alcohol is disclosed for fulvestrant in document 1. Indeed, the patent was revoked in first instance opposition proceedings. Nevertheless, after a careful analysis of the cited documents, the board comes to the conclusion that claim the claim is inventive. 
One of the problems found by the board is that the skilled person would not have an expectation of success that the formulation of document 1 would allow for treatment of breast cancer by intramuscular injection. Since document 1 is a scientific paper dealing with basic research, the skilled person would not expect it to provide a formulation for administration in a clinical situation.

Wednesday, 6 March 2019

T 489/14 - New referral on computer-implemented simulations

In the present case, the Board was faced with discussing inventive step of a computer-implemented simulation of pedestrian crowd movement in an environment. The Board tended to consider the invention to lack inventive step over a known general-purpose computer. However, the appellant argued that modelling pedestrian crowd movement in an environment constituted an adequately defined technical purpose for a computer-implemented method. The Board discussed case law relating to  the requirement of a direct link with physical reality, to simulations and to designs, and then decided to refer three questions to the Enlarged Board:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?

2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

Tuesday, 5 March 2019

T 0831/17 - Haar? Referral. [G 2/19]

A highly intriguing referral to the Enlarged Board, for multiple reasons: it concerns questions regarding the extent of the right to be heard (by a third party) and regarding the proper venue of oral proceedings (in the light of the much-debated relocation of the Boards of Appeal to Haar).

In the present case, during examination proceedings of EP2378735 third party observations (containing objections under Art. 84 EPC) had been filed by private practice firm Jostarndt Patentanwalts-AG. The patent was nevertheless granted. Jostarndt then lodged an appeal against the decision to grant, essentially arguing that, since clarity is not a ground for opposition, it felt deprived of its opportunity to object under Art. 84.

However, the Board found itself bound by the EPC - which only allows an adversely affected party to the proceedings to appeal, the author of third party observations according to Art. 115 EPC not being a party to the proceedings - and deemed the appeal inadmissible.

The appellant saw an unacceptable hiatus in legal protection and demanded clarification of this fundamental question by a decision. It therefore requested oral proceedings on the above question of admissibility.

Surprisingly, after having been summoned on 25 January 2019 for a hearing in the premises of the Board of Appeal in Haar, the appellant then requested transfer of these oral proceedings to Munich, arguing that the European Patent Office is headquartered there and, unlike The Hague, Haar is "not evidently intended as a place for acts or proceedings" in the European Patent Convention.

The move in 2017 of the Boards of Appeal from the Munich Isar building to the municipality of Haar - in a manifest attempt to increase the perceived independence of the Boards of Appeal - was met with dismay and criticism from both the Boards themselves and the public. 

The present Board (3.5.03) considered in particular the question of the right venue of the Boards of fundamental importance for ensuring a uniform application of the law in all appeal proceedings, and decided to refer the following questions (loosely translated from the original German wording) to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Questions 1 and 2 are interesting for querying the extent of the right to be heard in proceedings before the EPO. Question 3 is likely to have the greatest impact, as it boils down to whether the President or the Administrative Council of the European Patent Organisation had the power to relocate the Boards (or departments of the Office within the meaning of Article 15 EPC in general) outside the locations mentioned in Art. 6(2) EPC or to whether "Munich" in Art. 6(2) should be interpreted merely as the city with that name (not including Haar) or a (not well-defined) greater Munich area. It would appear that the referring Board favors a more a strict interpretation of “Munich”.

Thursday, 28 February 2019

T 0414/17 - Public prior use need not be substantiated up to the hilt for admissibility

In this opposition appeal case, the opposition was rejected as being inadmissible for lack of substantiation. After withdrawal of the ground of Art. 100(b), the only remaining ground of opposition was lack of novelty (Art. 110(a)) based on public prior use, whereby the opponent submitted a product catalogue, bill of materials, drawings and also offered a witness. The patent proprietor had contested that the opposition was inadmissible because it failed to indicate the facts and evidence of the public prior use, particularly with regard to "where", "when", "how" ("under which circumstances") or by "whom" the use took place. The Opposition Division agreed on the basis that the submitted catalogue provided no evidence of to whom and when a sale occurred.

The opponent argued that the Opposition Division had apparently confused the issues of (formal) admissibility and (substantive) allowability, and had committed a procedural violation for not raising the issue of admissibility in the summons to oral proceedings. The Board concluded that because the proprietor had raised the issue of admissibility, the opponent could have expected it to be the first topic of discussion at oral proceedings, since admissibility is a prerequisite for any subsequent substantive discussion. The Board therefore held that no procedural violation had occurred, but did find that the Opposition Division has reached erroneous conclusions.

Specifically, the Board found that for the purposes of admissibility, an alleged prior use needs to be substantiated only to the extent sufficient for the Opposition Division and the proprietor to understand the case. Communications from the Division and the proprietor, prior to the oral hearing, demonstrated that both the Division and the proprietor understood the case, which by itself is sufficient to establish admissibility. The Board further noted that the offering of a witness is a further admissible means of evidence, the probative value of which cannot be ascertained before it has been presented.

The Board therefore set aside the decision and remitted the case to the Opposition Division for further prosecution.

Friday, 22 February 2019

T 2050/07 - Distinguishing feature is mathematical but still inventive

If the entire contribution of your claim to the state of the art is contained in the mathematics can you be novel and inventive? In this case, the only relevant prior art was a 54(3) document, which did not disclose all of the mathematics but did disclose all of the rest. 

In this case the claim concerned "a method of analyzing a DNA sample that contains genetic material". The method contained technical steps such as amplifying a DNA sample, and producing a signal comprising signal peaks from each allele. However such steps where considered to be comprised in the Art. 54(3) prior art. 

The claim also contains a number of mathematical steps that result in a mathematical result: "a probability distribution of genotype likelihood or weight in the DNA sample". These were not disclosed in the prior art. 

The board muses that "The argument could be made that the distinguishing features described above are of non-technical nature as being a mathematical method or a method for performing mental activities, and that, in view of the established case law according to which features that do not contribute to the technical character of an invention and do not interact with the technical subject-matter of the claim for solving a technical problem, have to be ignored when assessing inventive step, such features should equally be ignored when assessing novelty. (...)". However, "the distinguishing features constitute a means for improving the confidence of the genotype estimate of the quantitative method analysis", and thus they "contribute to the technical character of the claimed invention".

Tuesday, 19 February 2019

T 1358/09 - Technical considerations in text classification (AI, ML)

This blog post is a first one of a series of blog posts in which we discuss past and recent decisions which are relevant to the field of artificial intelligence (AI) and machine learning (ML). We start with discussing older decisions which form the basis for the EPO's current approach to assessing the patentability of artificial intelligence and machine learning-based inventions.

While the revised GL G-II, 3.3.1 generally refers for guidance for the patentability of AI/ML-based inventions to mathematical models, a few areas are explicitly identified in which AI/ML is considered to make a technical contribution, such as using a neural network to identify irregular heartbeats, and classification of digital images, videos, audio or speech signals based on low-level features.

The following decision, however, is cited as an example of where machine learning does not serve a technical purpose, namely in the classification of text documents in respect of their textual content.

In particular, the Board considers the following not to make a technical contribution per se:

  • Determining whether text documents belong to the same class of documents in respect of their textual content, as the Board considers this a cognitive rather than technical consideration.
  • Providing an improved textual classification over manual classification by using precise computation steps which no human being would ever perform when classifying documents; the Board considers a comparison with what a human being would do not to be a suitable basis for distinguishing between technical and non-technical steps.
  • Providing a faster classification than prior art classification methods; the Board considers the algorithm not to go beyond a particular mathematical formulation of the task of classifying documents, and in particular, the design of the algorithm not to be motivated by technical considerations of the internal functioning of the computer to make it 'faster'.
  • Providing a reliable and objective result, as the Board considers this an inherent property of deterministic algorithms and not to make a technical contribution on its own.

Tuesday, 12 February 2019

T 0592/15 - No postponement of decision

In this examination appeal case, the application as filed comprised three independent method claims (claims 19, 39 and 40). However, after an objection under Rule 43(2) EPC in the European search opinion, all claim sets submitted by the applicant during the examination phase, as well as those filed with the grounds of appeal, contained only one independent method claim.

A month prior to the oral proceedings, the applicant filed a main request and two auxiliary requests, all containing three independent method claims. Four days before the oral proceedings, the applicant informed the Board that he would no attend the oral proceedings. He further advised that "it is intended to file a divisional application based upon the present application and it is requested that the present application be maintained pending until the divisional application has been filed".

The Board found the filing of more than one independent method claim at this stage of the proceedings to be prima facie objectionable under Rule 43(2) EPC. Accordingly, the appellant's main, first and second auxiliary claim requests were not admitted into the proceedings.

As there was no admissible claim request of the appellant, the appeal was to be dismissed. The Board found that the request of the applicant to postpone the taking of this actual decision at least until a divisional application had been filed would require the Board to investigate whether the appellant has eventually indeed filed a divisional application and, as the case may be, to even postpone the oral proceedings. Moreover, the Board found that the appellant would gain complete control over the duration of the present appeal proceedings including the possibility of having them pending ad infinitum if no divisional application was filed at all.

Consequently, the Board refused the appellant's request to postpone the taking of the decision on the allowability of the appeal and decided to dismiss the appeal.

Friday, 8 February 2019

R 0003/18 - petition without "correct" grounds

This petition was filed on the grounds of Art. 112(a), EPC, i.e. on the grounds of fundamental procedural defect of the appeal proceedings. 

In the present case an appeal was filed against the decision of the examining division to refuse the patent application.
The applicant requested an extension of the time limit (four-month period under Art. 108, EPC) for filing the grounds of appeal  because he needed more time to find a representative who could represent him before the Board. The EPO refused the extension and the applicant requested re-establishment of rights in respect of said missed period. The request of re-establishement was refused and the appeal rejected as inadmissible (Art. 108 and Rule 101(1), EPC).

The petitioner claims that the fact that an extension of time limit was not granted for allowing him to change his representative, amounted to an estoppel situation, i.e. a situation in which the petitioner was deprived of the right to assert his appeal position, which is illegal in common law.

However, neither the BoA nor the president of EPO had referred a question regarding the estoppel situation to the Enlarged Board of Appeal (EBOA) pursuant Art. 112, reason for which the EBOA is not entitled to look into the issue of the estoppel situation and to eventually correct it because the grounds set out in Art. 112(a), EPC, used by the petitioner, do not entitle the EBOA to review the application of substantive law but only to remedy intolerable deficiencies occurring during individual appeal proceedings.

The petition for review was thus rejected as inadmissible under Rule 108(1) and Rule 109(2)(a), EPC.

Wednesday, 6 February 2019

T 1063/18 - The full decision: why Rule 28(2) is in conflict with Art.53(b) EPC and why no referral was necessary

On 7 December, the Board of Appeal posted a communication on their website wherein the decision in case T 1063/18 on the patentability of plants was summarized (see here). Yesterday, the complete written decision was issued and became available in the register. In the Decision, the Board does not only motivate in detail why Rule 28(2) EPC as it was amended is in conflict with Art. 53(b) EPC as interpreted by the Enlarged Board in G 2/12 and G 2/13, as well as why the Adm Council was not competent to adopt this Rule, as well as why no further referral was needed - the Board also explained why they consider the opinion of the Enlarged Board to be unchanged also after the Commission Notice after the amendment to Rule 28(2) EPC. Not all arguments submitted by the parties and third parties were addressed in view of the intermediate conclusions taken - so, unfortunately, whether there is a difference as to what the scope of the exclusion of "essentially biologial processes" or not, was not discussed by the Boards (one submission argued that the Commission uses a narrow exclusion (strictly 100% biological, without any techncal step) whereas the Enlarged Board uses a broad exclusion (crossing whole genomes, irrespective of whether further technical steps are also excluded): if Rule 28(2) EPC would have been maintained, that could have meant that it excluded more than was intended.
This will probably not be the last legal development on patentability of "plants exclusively obtained by means of an essentially biological process" via Art. 53(b) EPC or otherwise... 

Friday, 1 February 2019

T 2435/13 - More Broccoli: the meaning of "sexually crossing the whole genomes of plants"

In the present case, the proprietor gave his interpretation of the decisions in consolidated cases G 2/07 and G 1/08, which dealt with the question of whether conventional methods for the breeding of plant varieties should be excluded from patentability under Article 53(b) EPC. The proprietor referred to the third paragraph of point " Conclusions" that "These conventional methods included in particular those (relevant for the present referrals) based on the sexual crossing of plants (i.e. of their whole genomes) deemed suitable for the purpose pursued and on the subsequent selection of the plants having the desired traits", and the sexual crossing of whole genomes was subsequently said to be "characterized by the fact that the traits of the plants resulting from the crossing were determined by the underlying natural phenomenon of meiosis". The proprietor argued that the decisions consistently referred to "sexually crossing the whole genomes of plants" as being the key criteria for determining whether a process for the production of plants was "essentially biological" and thus excluded from patentability or not. The proprietor argued that txpression "sexually crossing the whole genomes of plants" emphasised that the conventional breeding processes referred to in the two decisions of the EBA were construed as being those involving meiotic recombination events throughout the whole genome during the pairing of homologous chromosomes. The proprietor argued that the meiosis in the claimed regenerated F1 plant (grown from a rescued embryo) which preceded a back-crossing step of the claimed method was distorted; Indeed, since the A- and C-chromosomes were not homologous and did not pair with each other, only very few homologous recombination events took place over only very limited parts of their respective genomes (one being the required transfer of the clubroot resistance trait from A-genome to C-genome). Furthermore, he argued that the genomes of the first generation of back-crossed plants (BC1 plants) produced in steps f) to h) of the claimed method could range from a CC-genome (2n=18, i.e. no Brassica rapa A-chromosome derived from the F1 plant present in the BC1 progeny) to an ACC-genome (2n=28, i.e. all Brassica rapa A-chromosomes derived from the F1 plant present in the progeny); In the former case, it was literally impossible to state that the whole genomes had been sexually crossed since no A-chromosomes were retained in the produced plant. The proprietor concluded that, accordingly, since only partial homologous recombination on limited portions of the respective genomes took place, the claimed method was not directed to a process for the production of plants involving sexually crossing the whole genomes of plants as referred to decisions G 2/07 and G 1/08, and that, consequently, decisions G 2/07 and G 1/08 did not apply and the claimed subject-matter did not fall within the exceptions of Article 53(b) EPC. The Board did not agree: its conclusion is given in reasons 12-13 and the substantiation of the conclusion in the reasons just before.

Tuesday, 22 January 2019

T 623/18 - On the quality of the arguments in the statement

Sufficiently substantiated?

In the present case, the notice of opposition was based on the grounds of opposition under Article 100(a) EPC, in combination with Articles 54 and 56 EPC, and Article 100(b) EPC. Several documents were mentioned, some of which were con­si­dered in more detail in the reasons relating to the ground for opposition under Article 100(a) EPC.

However, the opposition division followed the proprietor in finding that none of the grounds for opposition was sufficiently substantiated within the meaning of Rule 76(2)(c) EPC, and thus held the opposition inadmissible.

With respect to Art. 100(a) EPC, one of the reasons was that the opponent's arguments failed to refer to the individual features of claim 1 and so did not enable the patent proprietor or the opposition division to reconstruct the novelty objection without making their own investigations.

The board disagrees with this conclusion. As summarized in reason 8, the board considers that Rule 76(2)(c) EPC does not require as much from the notice of opposition; in particular, whether the "written reasoned statement" enables the "patent proprietor and the opposition division to clearly understand the nature of the objection raised and the evidence and arguments adducted in its support" and whether "further investigations" are necessary for the patentee or the opposition division "to be able to form a definitive opinion on the grounds for opposition" (emphasis by the board) is, in the board's judgment, a matter for the allowability rather than the admissibility of the opposition.