Tuesday, 26 November 2019

T 341/15 - Late documents and late requests in first and second instance

In the present case, the Opposition Division admitted into the proceedings late-filed documents D9 and D14 and held that claim 1 of the then main request (patent as granted) and of the then first to sixth auxiliary requests did not involve inventive step pursuant to Article 56 EPC starting from D9 as closest prior art in combination with the teaching of D14. The appellant (proprietor) holds the view that they should not have been admitted into the proceedings similarly to other documents which had not been admitted by the Opposition Division. At the oral proceedings before the Board the appellant further added that D9 only concerns the preamble of claim 1 of the main request so that it would not be relevant to the invention. The Board discussed that, according to the established case law a Board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way, and has thus exceeded the proper limits of its discretion. When considering their admission into the proceedings, the Opposition Division applied the correct criterion of prima facie relevance. In this respect the Board follows the respondent's (opponent's) view that there is no legal basis or available case law according to which some circumstances would justify that only novelty, i.e. not inventive step, should be considered for the criterion of prima facie relevance.

Friday, 22 November 2019

T 1372/11 - Issuing a hardcopy cerificate is technical

Claim 1 of this application concerned an issuing machine for a hardcopy certificate which allowed a user to request a transaction of a security or fixed rate financing instrument. The claim did not have a happy reception at the Examining division. A declaration of no-search was issued, and the search opinion found the claims to be not-inventive starting from the 'general purpose networked computer system'. In the eventual decision to refuse, a single document D1 was cited.  
The board does not share the views of the Examining division, and concludes that the claim has sufficient technical elements that improve the security of the hardcopy certificate. The board finds that the claim before it, is inventive over D1.  
The board does not conclude with an order for further prosecution, as might be expected but introduces two new documents on its own motion and continues examination of the claim, in the end concluding that the claim is also novel and inventive over those documents. An order to grant is issued. 

Thursday, 7 November 2019

T 838/16 - removal of a feature requires passing gold standard to satisfy Art.123(2)/76(1)

The patio heater may be off. Does that disclose that the heater may be absent?

In the Guidelines up-to-and-including the 2017 edition, the essentiality test from T 331/87 provided a necessary and sufficient condition for the allowability of the replacement/removal of features from a claim. As of the 2018-edition, satisfying the essentiality test is a necessary condition, but no longer sufficient. The Guidelines 2018 and 2019, section H-V, 3.1, provides: 

  • If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2): (i)-(iii)
  • However, even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as "the gold standard"”. 

The amendments to the Guidelines seems to reflect recent developments in case law, such as T 910/03 which questioned the applicability of T331/87. The current decision follows the approach in the current Guidelines, and applies the "gold standard", when checking Art. 76(1) for a divisional relative to its parent rather than Art. 123(2) for an amendment: any amendment must be within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively relative to the date of filing, from the whole of the documents (description, claims and drawings) as filed.