Sunday, March 31, 2019 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.

Minutes of the oral proceedings
of 12 March 2019

Start of oral proceedings: 09:00 hours
End of oral proceedings: 10:30 hours

Documents presented:
- Amended description (pages 3 to 18)

Present on behalf of the appellants (patent proprietors):
Mr N. Hansen, Mr N. Braun and Ms T. Jennings, professional representatives, identified by EPO ID-cards.

Present on behalf of the appellant (opponent 1):
No one, as announced by letter dated 8 January 2019.

Present on behalf of the appellant (opponent 3):
No one, as announced by letter dated 25 January 2019.

The Chairman declared the oral proceedings open.
He summarised the relevant facts as appearing from the file.

The patent proprietors addressed the Board, and the matter was then discussed as follows:

Initial requests:

The opponents 1 and 3 requested in writing that the decision under appeal be set aside and that the patent be revoked in its entirety.

The patent proprietors requested that the decision under appeal be set aside and that the patent be maintained on the basis of:

• the new main request filed during the oral proceedings before the Board on 28 April 2016, or
• the first auxiliary request, filed with letter dated 28 April 2014, or
• the second auxiliary request, filed with letter dated 22 December 2014, corresponding to the dismissal of the appeals of opponents 1 and 3, or
• the third or fourth auxiliary request, filed with letter dated 22 December 2014.

The patent proprietors further requested that D57 and D58 not be admitted into the proceedings.

Main request (filed as New Main Request during oral proceedings before the Board on 28 April 2016)

The Chairman explained that most issues had been decided in the interlocutory decision of 17 October 2016 and that the outstanding issues had to be resolved in accordance with decision G 1/16.
Reference was made to the Board ’s communication of 14 January 2019.

The Chairman gave the Board ’s preliminary view that, taking into account G 1/16, the disclaimers in claim 1 could be accepted in view of Article 123(2) EPC and that for the same reasons, the priority of the present claims would be valid. If the priority was valid, documents D57 and D58 could not be novelty-destroying.

Novelty vis-à-vis D57 and D58

Admissibility of documents D57 and D58

The patent proprietors withdrew their objection against the admission of documents D57 and D58 into the appeal proceedings.

The Chairman explained that documents D57 and D58 were admitted into the proceedings but were not relevant for the novelty of the claimed subject-matter.

The Chairman gave the Board's conclusion that the main request was allowable.

The adaptation of the description was then discussed.

The oral proceedings were interrupted at 09:20.

After the oral proceedings were resumed at 09:50, the patent proprietors filed an adapted description which was then discussed.

Final requests:

The opponents 1 and 3 requested in writing that the decision under appeal be set aside and that the patent be revoked in its entirety.

The patent proprietors requested that the decision under appeal be set aside and that the patent be maintained on the basis of:
- the new main request filed during the oral proceedings beforethe Board on 28 April 2016, or
- the first auxiliary request, filed with letter dated 28 April 2014, or
- the second auxiliary request, filed with letter dated 22 December 2014,
  corresponding to the dismissal of the appeals of opponents 1 and 3, or
-  the third or fourth auxiliary request, filed with letter dated 22 December 2014.

The Chairman asked the patent proprietors if they had any further comments or requests. There were none.

The Chairman then declared the debate closed and gave the following decision:
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division with the order to maintain the patent as
   amended in the following version:
    - Claims: Claims 1 to 5, filed as New Main Request during the oral proceedings before the Board on 28 April 2016;
    - Description: Pages 3 to 18 as filed during the oral proceedings before the Board on 12 March 2019;
    - Drawings: Pages 21 to 60 of the patent specification.

The Chairman then closed the oral proceedings.

This minutes can be found here. The complete file wrapper can be found here. Photo by stevepb via Pixabay under a CC0 license (no changes made).