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.

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