Friday, 30 August 2019

T 2380/16 - the meaning of may

Independent claim 1 of the main request begins as follows:
A press fabric for a pulp machine having a multilayer structure obtained by weaving warps, each of which is selected from a group consisting of a monofilament, a monofilament twisted yarn, and a twisted yarn having a monofilament as a core with, as wefts, (...). 
The underlined part being added compared to claim 1 as filed. The opposition division found this addition to be added subject matter, since this formulation also covers a mixture of different types of monofilaments, yet the application only appears to give examples where a single type is used.
The board did not agree.

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.