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T 1756/14 - Christmas is well-known

Might there be a new computer under this tree?
DeltaPatents wishes all the readers of this blog a very merry Christmas. Perhaps, you'll find a present under the Christmas tree.

If you're lucky it might contain a new computer. This Examiner asks you to imagine this scenario, "a family unpacking a new computer at Christmas".  According to the Examiner in this case, that is a well known occurrence, including the head ache of installing new software on it.

The applicant countered in appeal that the 'Christmas example' is fictitious, without substance and not
justified. Naturally, the Board cannot share this point of view: "The board agrees with the contested decision that the situation is one that commonly arises and which arose before the priority date in the present case (not only at Christmas)"

It turns out that our e-mail feed was not working for some time. I think I fixed it, so to all our e-mail readers, welcome back.  

T 318/14 - Double or quits, quitte ou double?

The EPC has no explicit provision preventing double patenting by the same applicant of the same invention; not by two applications filed on the same date but not connected via priority or otherwise, not by two applications filed on different dates but linked by priority (so having the same effective date but different filing date), not by by two applications filed on different dates but with the same filing date (i.e., a parent and a divisional). Nevertheless, the Guidelines and some Boards indicate that there is a prohibition of double patenting in one or more of the above situations, where protection is sought for the same scope of protection (using the same wording or wording with the same technical meaning) or even for overlapping scope of protection - the presumed prohibition being derived from Article 125 EPC (general principles of procedural law in contracting states) with the general principle alleged to be legitimate interest (by the way, the Enlarged Board concluded earlier that no legitimate interest is needed for filing an admissible opposition; that may raise doubt on whether such principle could and would apply in this situation). Some Boards indicate that there is such a prohibition but that legitimate interest arises from e.g. broad vs narrow or from a longer term in case of internal priority (and one could also consider new states acceding to the EPC or becoming a new validation state in the priority period). Other Boards however indicate there is no such prohibition in the EPC, not explicitly but also not implicitly, such that a refusal cannot be based on such an objection. It has also been argued that the matter of double patenting by two EP patents is not an EPO matter, but a matter of national law - as it is of double patenting between an EP patent and a national patent or national utility model (Art. 139(3) EPC).
In oral proceedings in early February this year, the Board decided to refer questions to the Enlarged Board to clarify the matter. The questions were also already formulated and can be found in the minutes of those oral proceedings. The written decision became available today: its length may explain why it took relatively long to issue this written decision. Earlier case law is extensively discussed, including arguments for the various possible conclusions. The three scenarios mentioned in the opening sentence of this introduction are all explicitly addressed in the questions. It may probably be expected that the Enlarged Board will address not only same-claim-wording, but also synonyms (same meaning, so same scope), equivalents (different meaning, but same scope), broad-narrow (without any disclaimers in the broad claim) aspects, as well as different territorial scope, the effect of limitation after grant, effects of changes of ownership (a transfer of the application just before grant could be used to prevent the same owner problem and thus the alleged prohibition).
The decision is certainly worth reading during the Christmas break!

T 2037/18 - The burden of proof lies with YOU when a fact is favourable to YOUR case

In this case, the Board overturned a decision of the opposition division rejecting the opposition as inadmissible. 

The opposition was based solely on public prior use. The opponent submitted documents and drawings relating to a rail vehicle that had been handed over and accepted by a customer prior to the filing date of the opposed patent. The opposition division was of the opinion that in the period around the acceptance of a rail vehicle, it can be expected that improvements will still need to be made and that in this period an implicit obligation of confidentiality exists between the manufacturer and customer. In the facts and evidence provided with the Notice of opposition, there was no evidence that a confidentiality agreement did not exist and the division took the view that the opposition was therefore insufficiently substantiated.

The Board held that the opponent had provided the necessary evidence in support of the facts that were favourable to its case - i.e. the sale of a rail vehicle, and answering the questions: when, what, where, how and by whom? 

A sale constitutes public prior use, unless there is an obligation of confidentiality. The existence of such an obligation is a fact favourable to the patent proprietor. Based on the principle of "negativa non sunt probanda" applied in most legal systems, the burden of proof  then lies with patent proprietor. The opponent should not be required to prove non-existence.

The Board further concluded that there is nothing in case law to suggest that an implicit obligation of confidentiality exists where the delivery of rail vehicles is concerned.  The case was remitted to the opposition division for further prosecution.

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.

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."

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.