Wednesday, 11 December 2019

President says no to President

epi Information 4/2019, just published, comprises epi’s letter to the EPO "Request for Referral to the Enlarged Board of Appeal – Selection Inventions” and the Corresponding Response Letter of the EPO. Unfortunately, the President of the EPO said no to the President of the epi. The uncertainty will thus continue, now that the first instance has made a switch due to the purposive selection criterion being deleted from the novelty test for sub-ranges in the Guidelines as in force since 1 Nov 2019, the Boards having given different decisions over the last few years and the President of the EPO accepting that this may continue for a while, while the Case Law Book from this July refers to the test including purposive selection as established case law and does not identify a clear development of law, towards abandoning it even though it does identify conflicting decisions.

Friday, 6 December 2019

T 184/17 - Inventive step not raised earlier but admitted in appeal

In the present case, a lack of inventive step was invoked by the respondent-opponent for the first time in appeal. The lack of inventive step relies on the same passages of the same prior art document used in the earlier -unsucesfully- lack of novelty objection. The appellant-proprietor submitted that the inventive step objection constituted a fresh ground for opposition, and that its introduction into the appeal proceedings is only possible with the consent of the appellant-proprietor, which it did not give. The Board observed that "the new objection relies on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised in appeal stays within the factual and evidentiary framework relied upon by the opponent in the notice of opposition under the ground of Article 100(a) EPC for novelty. This raises the question whether under such special circumstances, the new objection still falls under the principle as expressed in G10/91, or can be admitted into the appeal proceedings without the agreement of the patentee."

Monday, 2 December 2019

T 2492/18 No rest for the wicked

This case concerns an appeal against a decision by the Opposition Division not to continue with the opposition after the patent in question had lapsed in all contracting states. 

The outcome of the actual Opposition was an interlocutory decision to maintain the patent in amended form. The opponent filed an appeal against this decision, even though the EPO had already sent out an R.84(1) communication informing the opponent of the lapse of the patent and inviting him to indicate within 2m if the proceedings should be continued. The Opponent responded to this communication in time and indicated that proceedings should be continued. Thereafter, the opponent withdrew the appeal against the interlocutory decision.

After withdrawal of the appeal, the interlocutory decision became final. To complete the process, the patent proprietor must comply with the acts of R 81(2) - pay fee; file a translation of amended claims. If not done in time, the EPO must send a communication under R. 82(3) giving the proprietor a further period in which to preform these acts, upon payment of a surcharge. The consequence of failure to respond to this communication is revocation of the patent.

Possibly because of the somewhat unusual sequence of events, the EPO did not send out an R. 82(3), but rather informed the proprietor and the opponent that the opposition proceedings would be discontinued because opponent had not filed a request for continuation of the proceedings. This was a mistake on their part, violating the opponent's right to be heard. The opponent was also adversely affected, because discontinuation of an opposition leaves rights outstanding while revocation has retroactive legal effects.

The decision under appeal was set aside and the appeal fee was reimbursed.