Tuesday, 31 March 2020

T 482/16 - Last-minute additional searches during the oral proceedings to make up for the poor search carried out earlier

In the present case, the applicant was confronted with two new documents, D2 and D3, introduced by the Examining Division during the oral proceedings for the first time. The applicant's request for postponement of the oral proceedings in view of this introduction of D2 and D3 was denied. Upon filing amendments trying to take the disclosure of D2 and D3 into account, the applicant was confronted with two further new documents, D4 and D5, also introduced by the Examining Division during the oral proceedings. No time was given to the appellant to consider these new documents. Rather, the appellant's request for postponement was rejected and the application refused. The applicant appealed the refusal. In the appeal, the Board concluded that: "[Therefore,] the appellant was confronted with new objections based on new evidence during the oral proceedings. Although it is possible for an examining division to introduce new evidence even at a late stage of proceedings, in the present case the course of the examination proceedings suggests that the examining division tried to make up for the poor search carried out when the application was filed by performing last-minute additional searches, in an attempt to find documents more relevant than D1 for the claimed subject-matter", as the Board noted that "According to the impugned decision, these new documents had been found by carrying out an additional search on the day of the oral proceedings, just before their start. This means that the introduction of D2 and D3 was not motivated by the new claim requests filed by the appellant to overcome the lack-of-clarity objection raised during the oral proceedings". "The Board concludes that, by rejecting the appellant's request for postponement of the oral proceedings, the examining division did not provide the appellant with the appropriate opportunity to present its comments on the objection of lack of novelty over D3 in the light of D4 and D5. The appellant's right to be heard on the examining division's novelty objection has thus been violated by the examining division's refusal of its request for adjournment of the oral proceedings, contrary to the requirement of Article 113(1) EPC. This amounts to a procedural violation."

Friday, 13 March 2020

R 0001/19 - Your surprise at a Board's decision doesn't necessarily render it surprising

The decision by the Board, which led to the present petition for review, was to revoke the patent for lack of inventive step, as the claimed effect was not achieved over the full scope of the claim. The Board's reasoning was based on a new document D46 that was admitted into the appeal proceedings, to further substantiate the case already made during opposition. The proprietor was surprised that the Board had placed so much reliance on D46 and had not received the impression during the oral hearing that D46 was considered to be highly relevant. The proprietor felt that the Board's decision was based on ex-officio argumentation on which it had not received the opportunity to respond, violating its right to be heard.

The Enlarged Board took a different view. During the written phase, the proprietor did not address the substantive issues raised by the opponent based on D46 because it had not expected D46 to be admitted into the proceedings. The admission of D46 was discussed at the oral hearing and the Board decided to allow it in. The Enlarged Board remarked that this could reasonably be interpreted as meaning that the document was thought to be important. D46 was discussed at a rather late stage in the hearing, but it was discussed and the proprietor limited itself to commenting on the oral submissions of the opponent.

The Board did not direct the proprietor to address the issues raised in the grounds of appeal, but in the interests of impartiality,it is generally recognized that a Board is under no obligation to inform a party that it deems a particular argument relevant. The Enlarged Board concluded that the proprietor had been given several opportunities to address the arguments on which the Appeal decision was based but, for a reason not attributable to an omission by the Board, decided not to do so. Consequently, there was no violation of its right to be heard.

Tuesday, 10 March 2020

T 3247/19 - How special does it need to be under RPBA2020?

In the present case, the appellant requested that the appealed decision be set aside and that the case be remitted to the examining division. However, with the RPBA revision, the rules for remittal changed. Art. 11 RPBA2007  provided "A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise". Art. 11 RPBA2020 however provides "The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons." OJ Suppl 2, 2 "Table setting out the amendments to the RPBA and the explanatory remarks" explained that "The aim of the new provision is to reduce the likelihood of a "ping-pong" effect between the Boards and the departments of first instance, and a consequent undue prolongation of the entire proceedings before the EPO. When exercising its discretion under Article 111 EPC, the Board should take account of this aim." and "Whether "special reasons" present themselves is to be decided on a case-by-case basis. If all issues can be decided without an undue burden, a Board should normally not remit the case. According to the second sentence of proposed new Article 11, where a Board ascertains that a fundamental deficiency is apparent in the proceedings at first instance, it will normally remit the case." The new version of Art. 11 applies to any appeal pending on, or filed after, the date of the entry into force (Art. 25(1) RPBA2020); however, not all decisions issued since 1/1/2020 expand on whether there are any specials reasons for remitting, and why (not).  The current deicison does.

Wednesday, 26 February 2020

T 2063/15 - Amendment not occasioned by a ground for opposition

Rule 80 EPC stipulates that amendments to the claims of a granted patent may be made provided that these are occasioned by a ground for opposition. In the present opposition appeal case, the main request and Auxiliary request 1 were not allowed for lack of novelty and lack of clarity, respectively. The subsequent Auxiliary request 2 and Auxiliary request 3 both contained an additional independent claim (i.e., claim 2).

Claims 1 and 2 of auxiliary request 2 were based on combinations of claims 1 and 2 and claims 1 and 9 as granted respectively. The Board considered Auxiliary request 2 not to violate Rule 80 EPC, since granted claims 2 and 9 were each separately dependent upon granted claim 1, found not to be novel; thus, the amendments made to the claims in auxiliary request 2 were occasioned by a ground for opposition. Regardless, Auxiliary request 2 was considered to lack novelty.

In auxiliary request 3, claim 1 was based on a combination of claims 1 and 2 as granted and additional features taken from the description. Claim 2 was the same as in the preceding request. The Board found that the inclusion of the additional independent claim 1, based on claims 1 and 2 as granted in combination with features taken from the description, was no longer simply occasioned by a ground for opposition since this ground was already addressed through the filing of independent claim 2. Accordingly, the amendments made to the claims were deemed not occasioned by a ground for opposition contrary to the requirement of Rule 80 EPC. Auxiliary request 3 was therefore not allowable.

Tuesday, 18 February 2020

T 2227/15 - Transition from RPBA2007 to RPBA2020

Since 1/1/2020, the revised  Rules of Procedure of the Boards of Appeal (RPBA2020) are in force. Its Article 25 lays down the transitional provisions, and provides that the revised version of the RPBA will in principle apply to all appeals pending on the date of its entry into force (see explanatory notes). However, as submissions already on file may be affected, two exceptions are provided in order to protect legitimate expectations which parties may have had at the time of filing such earlier submissions. A first exception is made, in Art. 25(2), with respect to revised Article 12, paragraphs 4 to 6 relating to the basis of appeal proceedings. In the explanatory notes to Art. 13(3), it further provides: "A further exception is made with respect to the strict provision of revised Article 13, paragraph 2. It will only apply to a submission filed after the statement of grounds of appeal or reply thereto if, at the date of entry into force of the revised version, the summons to oral proceedings or a communication of the Board under Rule 100(2) EPC has not been notified. Otherwise, Article 13 of the Rules of Procedure of the Boards of Appeal in the version valid until the date of the entry into force of the revised version will continue to apply." The applicability of Article 13(1) RPBA 2020 to cases where the summons to oral proceedings were notified before the entry into force of the RPBA 2020 has been a topic of the present appeal.
The decision is further issued, in part, in abridged form according to the new provisions of  Article 15(7)-(8) RPBA2020 and also already used (to our knowledge for the first time) for T 1687/17 of 9 January 2020.

Tuesday, 11 February 2020

T 1621/16 - Multiple selections from lists of converging alternatives

In the present case, amendments were based on multiple selections from lists of converging alternatives (i.e. lists of options ranked from the least to the most preferred, wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list). The appellant (patentee) argued that these should not be considered to be equivalent to selections from lists of non-converging elements, and that these rather represented a restriction of the scope of protection and were allowable under Article 123(2) EPC. The opponent and the opposition division argued that amendments based on the selection of at least two intermediate options (i.e. different from the most preferred) from lists of converging alternatives infringed Article 123(2) EPC, and that lists of converging and non-converging alternatives had to be treated in a similar way, because the convergence could only be considered to provide a specific pointer to the most preferred options. The Board had to settle on the matter.

Tuesday, 28 January 2020

We normally discuss decisions of the Boards of Appeal on this blog, but every once in a while a first instance decision is worth discussing, as it is today.
On 20 December 2019, the EPO published a news message on the EPO website indicating that:

"The EPO has refused two European patent applications in which a machine was designated as inventor. Both patent applications indicate “DABUS” as inventor, which is described as “a type of connectionist artificial intelligence”. The applicant stated that they acquired the right to the European patent from the inventor by being its successor in title.
After hearing the arguments of the applicant in non-public oral proceedings on 25 November the EPO refused EP 18 275 163 and EP 18 275 174 on the grounds that they do not meet the requirement of the EPC that an inventor designated in the application has to be a human being, not a machine. A reasoned decision may be expected in January 2020."
The decision is now available including the full reasoning from the Receiving Section. An appeal may be expected in due course.

Friday, 24 January 2020

T 1491/14 - A medicament for patients who have ceased use of another medicament due to sleep problems

Sleepless nights

This opposition concerns a medicament whose novel feature is that it is prescribed to particular patients. Claim 1 of the main request reads:
1. A use of 1-[2-(2,4-dimethylphenylsulfanyl)phenyl] piperazine and pharmaceutically acceptable salts thereof in the manufacture of a medicament for the treatment of a disease selected from depression, anxiety, abuse or chronic pain, wherein said medicament is for use in a patient who has previously received another medication for the treatment of said disease which medication was ceased or reduced due to sleep or sexually related adverse events.

The board accepts this as a valid claim. It turned out to be novel but obvious to prescribe the medicament to a patient who has previously received another medication which medication was ceased due to sexually related adverse events, but after limiting the claim to sleep problems it was allowed.  

Monday, 20 January 2020

Tuesday, 14 January 2020

T 1711/16 - Prima facie (ir)relevance is not always relevant

The admittance of evidence into appeal proceedings is left to the discretionary powers of the Board of Appeal (Article 12(4) RPBA). It is established case law (cf. G 7/93) that Boards of Appeal should only overturn discretionary decisions of the department of first instance if it is concluded that the department of first instance exercised its discretion according to the wrong principles, or without taking into account the right principles or in an unreasonable way.

In the present appeal case, prior art documents D6 and D7 were submitted by the opponent in response to concerns regarding the nature of a certain additive "Disperbyk-111", as expressed by the Opposition Division in its preliminary opinion accompanying summons for oral proceedings. Documents D6 and D7 were filed within the final date for making submissions set in this communication. The Opposition Division considered D6 and D7 late filed and prima facie not constituting evidence regarding the nature of "Disperbyk-111"; accordingly, the Division did not admit D6 and D7 into the proceedings.

The Board however found that D6 and D7 were timely submitted by the opponent in a fair attempt to dispel doubts about the meaning of "Disperbyk-111" voiced by the Opposition Division. As such, the "prima facie relevance" (or lack thereof) in providing convincing evidence of the identity of "Disperbyk-111" was in this case irrelevant, as the decisive point is rather whether these documents and the submissions made in their respect deal with that issue and were timely submitted. Consequently, the decision of the first instance department not to admit D6 and D7 into the proceedings was overturned.

The Board did not admit the second to nineteenth auxiliary requests of the proprietor - already filed during first instance proceedings - to the proceedings for lack of proper substantiation.

Friday, 10 January 2020

An electronic debit order is a document filed with the EPO, so errors can be corrected

Payment of the appeal fee  in this case was not executed on the date the electronic debit order was received, because in the box for "method of payment", no method was indicated. The correct fee code had been entered, indicating that the appellant intended to pay the appeal fee, but the EPO only received the money via a separate payment after the 2m period for filing the notice of appeal had expired. This payment was accompanied by a request for correction under R. 139 of the submitted electronic debit order, to indicate that the method of payment was "from deposit account".

The notice of appeal was filed on time and contained a statement that the appeal fee was being paid from the deposit account using the attached electronic debit order. This statement was refused as a valid debit order because not in electronically processable format, but was accepted by the Board as evidence of the true intent, along with correctly indicated fee code in the incomplete debit order. 

The Board further remarked that the present case clearly falls under the principles established in G 1/12 for corrections in documents filed in appeal: the request was made without delay and the true intent was immediately apparent. Furthermore, no legitimate interests of the public in being able to rely on the information published by the EPO were affected in this case.

The correction was allowed and had retroactive effect, meaning that because on the date the incomplete debit order was received, the payer's deposit account had sufficient funds to cover the appeal fee, that date was considered the date of payment and the notice of appeal had thus been validly filed.

Tuesday, 7 January 2020

T 405/14 - Closest prior art does not need to be the closest

Which springboard(s) can be used?

In the present opposition appeal case, inventive step was challenged. A key element in the debate was whether the presence of a document D1 which would be closer to the claimed invention than a document D2 would require any inventive step objection to start from D1 as the closest prior art, or whether an attack starting from D2 as the closest prior art would also be admissible and allowable - as well as whether doing so would not only not be correct, but would -if applied by the Examining Division- account to  a substantial procedural violation. "Concerning inventive step, the appellant (applicant) argued that the skilled person would not consider D2 as closest prior art, since it did not disclose magneto-resistive speed-sensors or sensing elements relying on the Hall effect. This appeared all the more true under the present circumstances, considering that document D1 was available. D1 appeared to be a much more suitable starting point, since it addressed problems regarding the testing of speed sensors based on Hall effect or magneto resistive sensors, which was exactly the problem addressed by the claimed invention." The Board came to conclude, with reference to an earlier decision from this same Board, that "Experience teaches that a document which shares a common purpose with a claimed invention, as well as a large number of features, in order to solve the same or a similar problem, will not necessarily allow a convincing objection of obviousness to be raised against that invention, whereas said invention may indeed result, without hindsight, in an obvious manner from an apparently less promising item of prior art. In this respect, all items of prior art considered as starting points which allow the elaboration of a realistic attack under Article 56 EPC may be considered to qualify as "closest prior art", although this currently accepted terminology is somewhat misleading." One could understand this as that this Board seems to consider the term "closest" meaningless. The Board does, unfortunately, not discuss other case law that does give (or at least seems to give) a meaning to the term "closest", e.g., by using terminology such as "most promising" springboard (see e.g. Case Law Book (2019) I.D.3.1 "Determination of closest prior art in general",  3.2 "Same purpose or effect" and 3.4 "Most promising starting point"), nor does the Board comment on its deviations from the quite clear guidance in Guidelines G-VII, 5.1 (despite Article 20(2) RPBA 2007).

Friday, 3 January 2020

T 1362/15 - No special consideration for US-style claim dependencies

This board is not a big fan of US-style claim dependencies
This is an opposition appeal for a patent that originated from a US-PCT application. In opposition, the granted claims are found not to be inventive (see point 1 and further). Auxiliary requests then run into added subject matter problems, in part, because the claims have 'US style' dependencies. The proprietor requests that questions are referred that ask whether the Board should take into account that these claims were originally drafted with a US style. The board did not consider this to be necessary though (see point 3 and further). 
Claim 10 of the main request reads as follows:
"A catalytic converter (10) comprising an outer tube (24) formed without any weld and comprising a tubular first side portion (22), a tubular second side portion (28), and a tubular intermediate portion (32) positioned between the first and second side portions (22, 28), (...) and
a tubular heat shield (18) positioned in the intermediate portion (32) around the longitudinal axis to inhibit transfer of heat from exhaust gas present in the intermediate portion (32) to the intermediate portion (32)."