Friday, 18 October 2019

T 1032/97 - No refresh of BoA decisions

A decision from 2001 was recently republished on the Case Law site, for distribution to Board chairmen and members.

The patent application concerned was initially refused for lack of clarity and sufficiency of disclosure. After oral proceedings, the Board decided that the claims were in compliance with Articles 83 and 84  and that the case should be remitted to the Examining Division for further prosecution and examination of novelty and inventive step. It was also remarked that the description still contains reference to speculative subject matter that needs to be deleted to bring it into conformity with the claims.

The Applicant-appellant, however, was unhappy with the text of the decision, in particular with the Board's interpretations of the meaning of certain claimed features (e.g. catalyst) based on definitions taken from the Oxford Dictionary. The Applicant had presented a great deal of supporting data at the oral hearing and was apparently under the impression that the Board had attributed a meaning to the term "catalyst" consistent with the Applicant's written description.

The  Applicant then submitted a request that the Board modify its reasons for the decision to conform with its prior rulings at the oral proceedings. The Board's response to this request is the subject of the recent republication.

The request was refused as inadmissible, following G1/97, where the Enlarged Board ruled that the jurisdictional measure to be taken in response to requests based on the alleged violation of a fundamental procedural principle and aimed at the revision of a final decision of a board of appeal should be the refusal of the requests as inadmissible.

Tuesday, 15 October 2019

T 657/17 - Always ask your money back!

G 3/03 clarified that, in the event of interlocutory revision under Article 109(1) EPC, the department of the first instance whose decision has been appealed is not competent to refuse a request of the appellant for reimbursement of the appeal fee. The current decision relates to the competence of the Board to decide on  reimbursement of the appeal fee in the event of interlocutory revision where the appellant did not explicitly request for reimbursement of the appeal fee. The current decision followers earlier case law, and concludes that, n the absence of a request for reimbursement of the appeal fee, the issue of reimbursement of the appeal fee should not have been referred to the Board for decision, and the Board is also not empowered to decide on this issue as an ancillary matter.

Friday, 11 October 2019

T 124/16 - New argument based on admitted documents inadmissible in appeal OP

New arguments are rejected

This is another case about late documents or arguments. In the previous opposition proceedings, documents E12 and E14 were both filed by the opponent after the 9 month period. Although document E12 was admitted into the proceedings, document E14 was not. 

The opponent filed an appeal against the first instance decision, formulating inventive step objections based on both E12 and E14. When at the appeal oral proceedings document E14 was also not admitted, the opponent tried to use document E12 to formulate new inventive step objections. 

Although both the document E12 and inventive step arguments based on E12 were already in the procedure, the board nevertheless found that these new objections could not be regarded as a further development of the opponents case. As they were not prima facie relevant either, these objections were not admitted into the case. 

The decision is in German. A machine translation of the relevant part is provided, followed by the original.