Tuesday, 15 September 2020

T 1030/19 - Plants filed before 1 July 2017

In the present case,  the examining division held, in its decision dated 28 November 2018, that the subject-matter of the set of claims of the main request and of auxiliary requests 1 to 4 fell under the exclusions from patentability as defined by Rule 28(2) EPC and that, consequently, the application did not meet the requirements of Article 53(b) EPC. In the grounds of appeal of 28 March 2019, the applicant referred to T 1063/18 which decided that Rule 28(2) is in conflict with Art.53(b) as interpreted by the Enlarged Board in G 2/12 and G 2/13 and that the refusal in that case based on Rule 28(2) should be set aside. While the current appeal was pending, the President referred questions to the Enlarged Board. The Board waited until G 3/19 was decided before ruling on this case.

Tuesday, 1 September 2020

T 2214/15 - Ordinary, not exceptional

According to Article 13(2) of the revised Rules of Procedure of the Boards of Appeal (RPBA 2020), any amendment to a party’s appeal case made after notification of a summons to oral proceedings (or after a deadline set by the Board with an express invitation to file observations) shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned. The basic principle of this third level of the new "convergent approach" applicable in EPO appeal proceedings is that, at this stage of the appeal proceedings, amendments to a party’s appeal case are not to be taken into consideration. Only if a party can present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular case. For example, if a party submits that the Board raised an objection for the first time, it must explain precisely why this objection is new and does not fall under objections previously raised by the Board (or a party). The Board may decide to admit the amendment in the exercise of its discretion. 

In the present examination appeal case, the appellant had filed Auxiliary Request 2 after notification of the summons to oral proceedings. During oral proceedings, the appellant argued that this late-filed request should be admitted, as the Board had raised a number of new issues in the summons to which auxiliary request 2 represented a good faith reaction. Indeed, the Board accepted that in the present case this represented exceptional circumstances within the meaning of Article 13(2) RPBA 2020.
Unfortunately, the Board found that Auxiliary Request 2 does not comply with Articles 84 and 123(2). 

Auxiliary Request 3 filed subsequently during oral proceedings was however not admitted. While the appellant asserted that a further request should be admitted because the Board had raised new objections in connection with the second auxiliary request that the appellant could not have been expected to anticipate, the Board was not persuaded by these arguments. According to the Board, the topics of discussion in view of auxiliary request 2 did not differ in substance from those identified in the summons; the identification of newly introduced problems when attempting to solve issues discussed in the procedure up to that point is rather to be seen as the ordinary development of the discussion, rather than an exceptional circumstance justifying the admittance of a further auxiliary request. In the view of the Board, if such newly introduced problems would represent exceptional circumstances, this would imply that the appellant would have to be given repeated opportunity to file amended claims until no new problems were introduced. Such a procedure could only be characterised as a continuation of the first-instance examination proceedings and would thus be at odds with the primary object of the appeal proceedings of a judicial review of the impugned decision.

If amendments intended to overcome objections of lack of support and lack of clarity raised in the summons give rise to further objections concerning clarity or added subject-matter, pointing out these further objections does not represent exceptional circumstances within the meaning of Article 13(2) RPBA 2020, but rather an ordinary development of the discussion which does not go beyond the framework of the initial objection. See reasons 5.3 and 5.4.

Wednesday, 26 August 2020

T 2210/16 - Careful with predetermined values

This patent was opposed as not disclosing the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Claim 1 as granted states (in my translation)

Method for reducing microphone noise (feature A) in an input signal (x) of a hearing aid (10, 46) by filtering the input signal (x) by means of a Wiener filter (26) if a Noise Performance (NPSD) determined from the input signal (x) is less than a predetermined limit value (G) (feature C1) and deactivating the Wiener filter (26) if the Noise Performance (NPSD) is greater than or equal to the limit value (G) (feature D1).

The problem that was raised is that if the skilled person happened to select a microphone with good Noise Performance and a high predetermined limit value, then the Wiener filter would never be activated and the aim of reducing microphone noise would not be realized. 

Below is a translation of the German decision, with help from the DeepL Translation tool. Below the cut is the German original.  


3.7 For the, in the field of hearing aids, realistic case  that already the noise power of the microphone noise is higher than the claimed "predetermined limit" according to features C1) and D1), the Wiener filter remains deactivated. Thus, in the opinion of the Board, the hearing aid professional cannot achieve the "reduction of microphone noise" on the basis of the original disclosure of the patent in dispute.

3.8 In particular, the following two aspects would, in the opinion of the Board, present the person skilled in the art with insurmountable difficulties in the execution of the claimed invention

3.8.1 Firstly, with regard to feature A), it should be noted that neither the description nor claim 1 of the patent in suit contain an explicit or implicit reference to limit the claimed process to a microphone with low microphone noise - however "low" should be defined.

3.8.2 On the other hand, the wording of the claim regarding feature C1) in no way indicates a setting of the "predetermined limit value" dependent on the microphone noise, as claimed by the respondent. Accordingly, the argument put forward by the respondent with reference to paragraph [0031] (in particular page 5, lines 33-38 and paragraph [0039]) of the patent specification, that the realization that the setting of the limit value is the "only possible adjustment screw" of the claimed method, which would cause the skilled person to set the limit value appropriately under consideration of the microphone noise to be reduced, cannot be applied in this generality.

3.9 With regard to the feasibility of these two aspects, i.e. the microphone with low self-noise and the selection of the predetermined limit value, the patent in dispute teaches that the microphone should be designed in the form of a condenser microphone and that the limit value should be set at 30 dB (see page 2, lines 16-31; page 10, lines 31-32 in connection with Figs. 2 and 3 of the original application).

In this context, the Board cannot share the respondent's view that the value of 28 dB used by the appellants in an illustrative example represents the absolute limit for the inherent noise of a microphone. For example, the Shure condenser microphone "Beta 98A", available before the priority date of the patent in dispute, has a microphone noise of 30 dB. The microphone noise of its predecessor "Beta 98" is even 5 dB higher. Consequently, within the scope of the patent in dispute, it would be quite plausible and realistic for the skilled person to apply the claimed method in a microphone with high microphone noise, for example with a microphone noise of about 30 dB. According to features D) and D1) of claim 1, however, the Wiener filter is permanently deactivated for such a microphone with a microphone noise in the range of the limit value (e.g. 30 dB) and therefore cannot be used to reduce the microphone noise according to feature A).

Tuesday, 4 August 2020

T 1414/18 - Don't ask and ye shall nevertheless receive, as long as equitable

The central issue in this appeal was the decision to refuse the EP application on the grounds of non-unity. The applicant paid an additional search fee, then requested that it be refunded when submitting responses to the Examining Division and arguments in defense of the unity of the claims. The Board found in favour of the applicant and ordered a refund of the additional search fee, commenting that the decision to refuse the application contained an implicit refusal of the request for the refund, even though a decision on the refund of further search fees should be indicated in the order of the written decision.

The Board was critical of the reasoning given for the need to perform two searches and, in particular, of a communication from the ED in which the applicant was informed, "The next procedural step will be summons to oral proceedings during which the application will be refused (Article 97(2) EPC)". The applicant withdrew the request for oral proceedings and requested a decision according to the state of the file.

The phrase "will be refused" was found to be in contradiction with the principles of the right to be heard under Art. 113(1), as it implied that there were no arguments that could be presented that would not lead to a final refusal of the application. The Board held this to be a substantial procedural violation, which necessitated the applicant's request for a decision according to the state of the file and thus the filing of the appeal. Reimbursement of the appeal fee was ordered on the Board's own motion.

Tuesday, 14 July 2020

T 1378/16 - Oral proceedings before the Board held by videoconference

The oral proceedings in the present case took place on 8 May 2020 and were the first held by videoconference in the history of the Boards of the Appeal of the EPO. Unlike some national legal systems, the EPC does not stipulate explicitly the form(s) in which oral proceedings under Article 116 EPC shall take place. For these reasons, the Board considers it appropriate to address briefly the legal basis for oral proceedings within the meaning of Article 116 EPC.

Wednesday, 1 July 2020

T 1294/15 - A business method claim without claiming the business is still a business method

A rose by any other name would smell as sweet
In affiliate reward programs, rewards might need to be divided among different participants; in the claim between a content manager and an introduction page manager. Instead of dividing up each reward among the parties, the application proposes to sometimes award the full amount to one single party and sometimes to another single party. Overtime this balances out so that the rewards are are about equal to exact division. The new scheme is more efficient since it needs fewer divisions. 
The board doesn't like the claim, as it represents a business method. However the applicant makes an interesting argument. By stripping all the business aspects of the claim, one is left with merely an improved division algorithm. If the stripped claim is technical and inventive then surely further restricting is can't remove patentability? Unfortunately for the applicant this argument is not accepted. 

Friday, 19 June 2020

T 2133/14 - Skilled person resolving a clarity problems in the claim

Sending an interrogation signal

How much can the skilled person bring to the table when establishing the meaning and enablement of a claim? This application was refused by the Examining division for being neither clear nor sufficiently disclosed. But the board has a higher opinion of the skilled person, and consider him capable enough to bridge the gaps.

The claims relate to a first device that stores 'multiple versions of application software'. The first device want to communicate with a second device, but its software may not be compatible. This is solved according to Claim 1 by sending 'an interrogation signal' to the second device and receiving back 'identification information'. The first device's method then comprises, based on the identification information:
correlating (225) thereto a version of the application software from among the multiple versions of application software associated with the first electronic device that is compatible with the recognized version of the application software currently being utilized by the second electronic device, wherein the correlating step utilizes a look-up-table."
An auxiliary request restricts claim 1 to a control device and an implantable medical device. Although the board reverses the Examining division on clarity and sufficient disclosure, in the end the claims are found to be non-inventive. 

Reasons for the Decision
The invention
1. The application is concerned with ensuring the compatibility of application software running on two communicating electronic devices, preferably an implantable medical device such as a cardiac pacemaker and an associated control device (see paragraphs 1 and 15).
1.1 More specifically, it is observed that the application software running on the implantable device (the "second" device in claim 1 of the main request) may be updated during its lifetime and stated that, for proper operation, the control device (the "first" device) will need to run a "compatible version of application software" (see paragraph 17).
1.2 According to a prior art solution, discussed in paragraph 4 (U.S. patent application 5,800,473), if it is detected that the implant runs a more recent version of the application software than the control device, then the more recent software "objects" are downloaded from the implant to the control device. In the application, this solution is stated to require an undesirably complex implantable device, too much energy and time, and to have the further disadvantage that the control device will at any point in time only run a single version of the application software, which may not be compatible with all implantable devices (see paragraph 4, lines 11-15, and paragraph 5). The invention is intended to overcome these disadvantages (see paragraph 9).
1.3 As a solution, it is proposed that a control device for communicating with a specific implantable device generate and transmit an "interrogation signal" to the implantable device. In response, the latter generates and transmits a "response signal" to the control device, the response signal comprising "identification information" including one or more of its type and a "unique identification number" and the version of the application software installed on it (see paragraphs 10, 20 and 23-30). The control device stores "multiple, preferably all, updates, versions or generations of the application software for the control device" in question (see paragraphs 16 and 34). Based on the received "identification information", the control device "correlates or maps" to the implantable device a compatible version of the application software using a lookup table (see paragraphs 21 and 22). Subsequently, the control device uses the so-determined compatible version (see para­graph 33). The procedure is depicted in figure 2.
Clarity and sufficiency of disclosure,
Articles 84 and 83 EPC
2. The examining division found the independent claims of both requests to be unclear for the following reasons (see the decision, points 19-22 and 25).
2.1 It was left open what kinds of interrogation and response signals could be processed by all possible electronic devices. At least for some pairs of elec­tronic devices, it would require inventive skill to provide suitable interconnection signals, while the description did not disclose further details. As a consequence, the independent claims were not supported over their full breadth by the description, Article 84 EPC, and, because "said clarity objection" could not be resolved using the description, their subject-matter was insufficiently disclosed, Article 83 EPC (see esp. the recitation of section on pages 6 and 7 of the decision).
2.2 The claimed invention presupposed that the different software versions all had different interfaces. Because this was an unrealistic assumption, the intended "system context" was unclear (see the recitation of sections to on page 7 of the decision).
2.3 The claims left open how the control device was meant to be "'equipped with multiple software versions initially' for all diverse types of 'second electronic devices', [and] for all their respective versions of software", and how it was avoided that the first electronic device had to be modified whenever the application software was changed (i.e. continuously or frequently). Also, for combinatorial reasons it was unrealistic to assume that each first electronic device could store all versions of the application software for all types of second electronic device. This rendered the claims unclear, Article 84 EPC, and meant that their subject-matter was insufficiently disclosed, Article 83 EPC, because "said clarity objection" could not be resolved using the description (see the recitation of sections to on pages 9 and 10 of the decision).
2.4 "Correlating" a version of the application software to the second device did not have a clear technical effect, since the "correlated version of [the] application software" was neither loaded nor used for communication (see esp. the recitation of section 9.1.3 on page 11 of the decision).
The board's view on clarity and sufficiency
3. The board does not share the conclusions of the examining division on clarity of the independent claims.
3.1 While the board agrees with the examining division's view that "correlating" has no clear technical effect (see point 2.4 above), this alone does not imply a lack of clarity.
3.2 The board also agrees with the examining division that the claims do not specify any details about the inter­rogation or response signals, or what it would mean for two devices to be compatible or incompatible. The claims further do not include any feature that would allow an estimate of the number of versions the first electronic device would have to store and when or how the first electronic device would have to be updated.
3.3 None of these omissions however implies, in the board's view, a lack of clarity - or an insufficiency of disclosure, for that matter.
3.3.1 The board considers that the skilled person would have no technical difficulty in implementing a form of interrogation/response-protocol in devices even in a "non-standard scenario" such as a smartphone communicating with a cardiac pacemaker (see paragraph bridging pages 6 and 7 in the decision).
3.3.2 The skilled person would interpret the notion of "compatibility" as used in the claims broadly. In the broadest reasonable sense, two pieces of software would be considered "compatible" if they are intended - and can, thus, be assumed - to interoperate properly. Apparently, this would not be the case if their interfaces did not match. However, even software with matching interfaces might not properly interoperate, for various reasons apparent to anyone skilled in the art of programming. The skilled person would understand that, effectively, "compatibility" is what the "correlating" step establishes, and - for the purposes of the claimed subject-matter - two pieces of software are compatible if the look-up-table "says so".
3.3.3 It would have been evident to the skilled person that the memory requirements on the first electronic device grow with the number of versions of the application software to be stored. The board also agrees with the examining division that this number might well be larger than what a typical such "first electronic device" can actually store (see also "all possible versions" in claim 2). However, while it might be undesirable or impracticable for various reasons, it would not be technically difficult to either enlarge the memory of the first electronic device or to limit the number of versions to some (the most recent say, or only those needed for some "second" device types) to the detriment of others.
3.4 The board takes the view that the skilled person would not need any explicit statement in the application to be able to handle the mentioned situations properly. Hence, in the board's view, the independent claims are neither unclear in the mentioned respects, nor insufficiently supported. Their subject-matter is also not insufficiently disclosed.
4. The findings in point 3 are further corroborated by the following considerations.
4.1 An objection that a claim is too broad to be supported by the description over its full breadth can be addressed by limiting the claim to a breadth which is. For that reason, the limitation of a claim covering standard and non-standard scenarios (claim 1 of the main request) to only the standard scenario of a control device and an implantable medical device (see the auxiliary request) is a valid attempt to overcome at least one of the objections regarding incomplete support by the description labelled "" (see paragraph bridging pages 6 and 7 of the decision).
4.2 Moreover, the board does not agree that the subject-matter of a claim which is not supported over its full breadth by the description or which is unclear is ipso facto insufficiently disclosed, as the examining division suggests (loc. cit.). Accordingly, the board considers that the objection under Article 83 EPC is not correctly reasoned in the decision.
5. In the following, the board takes the view that the skilled person would construe claim 1 of the auxiliary request as follows. The first electronic device (the control device), storing multiple versions of some application software, asks the second electronic device (the implantable medical device) for identification information which, inter alia, identifies the version of the application software it runs. This information is then used to identify a preferred version of the software to be run on the first electronic device. This version is identified using a look-up table and referred to in the claims as "compatible".

This decision T 2133/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2020:T213314.20200603. The file wrapper can be found here . Image by Stafford Green (staffordgreen0obtained under the Pixabay license

Friday, 12 June 2020

T 1798/13: Improving accuracy of forecasted weather data is akin to a scientific discovery, so not technical

The invention relates to a method and system for forecasting the value of a weather-based financial product using forecasted weather data. This data is derived from historical weather data for a defined time and geographical area and is processed to obtain a "quality indicator", which is indicative of the reliability of the forecasted data. The quality indicator is then used to forecast the value of the financial product. The application was refused for lack of inventive step, because in the opinion of the Examining division, no technical problem was solved.

In appeal, the applicant argued that although the use of weather data to calculate the value of a financial product had no technical character, the invention improved the reliability and predictability of weather forecast data in general, which was a technical problem.

The Board disagreed and observed that "the weather" is not a technical system, but is a physical system that can be modelled to show how it works.  In its view, this kind of modelling is considered to be a discovery or a scientific theory, which are not regarded as inventions under Art. 52(2)(a). The Board concluded that the improvement lay in the processing of data to achieve a more accurate weather forecast, i.e. an improved model using a scientific theory, which could contribute to technical character.

The appeal was dismissed. 

Friday, 29 May 2020

T 1900/16 - strict formulation of objective problem leads to inventiveness

Printer with blank pages 

When printing a document, it sometimes happens that inadvertently a blank pages ends up between the printed pages. While this is annoying in any print-job it can become a real problem if one is doing print jobs of 100,000 pages. The solution to this problem comprises better synchronization of read and write commands in the printer spool file. 
The Examining division argued for lack of inventive step by solving the general problem how to 'ensure correct printing results are generated'. A skilled person would then try to apply known techniques that avoid incorrect data and arrive at the solution defined in claim 1. 
The board found this line or arguing incorrect. Without generalizing the problem set out in the application, the skilled person would not have combined with the secondary document. 

Thursday, 14 May 2020

BREAKING NEWS: G 3/19 - Plants and animals exclusively obtained by essentially biological processes are not patentable, but no retroactive effect

Today, the EPO issued a Press Communiqué concerning opinion G 3/19 of the Enlarged Board of Appeal. (link)

The Press Communiqué is cited in full below (with emphasis added).

The full decision can be found here (G 3/19). Further references are given at the end of the Press Communiqué.

The headnote of the decision reads:

Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process. This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.

[start of citation of Press Communiqué]

Press Communiqué of 14 May 2020 concerning opinion G 3/19 of the Enlarged Board of Appeal

The Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) today and concluded that plants and animals exclusively obtained by essentially biological processes are not patentable.
The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.


The Enlarged Board of Appeal is the highest judicial authority under the EPC, which provides for an autonomous legal system that is separate from the European Union. The Enlarged Board's main task is to ensure the uniform application of the EPC.
Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process. Rule 28(2) EPC was introduced by decision of the Administrative Council of the European Patent Organisation and came into force on 1 July 2017.
In 2015, the Enlarged Board had concluded in its decisions G 2/12 and G 2/13 within the then applicable legal framework, i.e. before the introduction of Rule 28(2) EPC, that the non‑patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC did not extend to products that are exclusively obtained by means of an essentially biological process.
In 2018, a Technical Board of Appeal held in decision T 1063/18 that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC, and followed the Enlarged Board's earlier decisions G 2/12 and G 2/13.
In 2019, the President of the European Patent Office referred a point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC concerning the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 and G 2/13, and in particular in view of new Rule 28(2) EPC.

Key considerations

In its opinion issued today, the Enlarged Board of Appeal held the referral by the President of the European Patent Office to be admissible within the terms of a re‑phrased question. On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.
Taking account of the Administrative Council's decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.
In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.
In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date.


Nikolaus Obrovski
Spokesperson of the Boards of Appeal of the European Patent Office
This press release is a non-binding document for media use.

Further information

EU Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions;
Decision CA/D 10/99 of the Administrative Council, insertion of new Chapter VI "Biotechnological inventions" in Implementing Regulations to the EPC;
G 2/07 (Broccoli I), Decision of the Enlarged Board of Appeal;
G 1/08 (Tomatoes I), Decision of the Enlarged Board of Appeal;
25.03. 2015
G 2/12 (Tomatoes II), Decision of the Enlarged Board of Appeal;
G 2/13 (Broccoli II), Decision of the Enlarged Board of Appeal;
Rule 28(2) EPC (entry into force), see Decision CA/D 6/17 of the Administrative Council;
T 1063/18, Decision of Technical Board of Appeal 3.3.04;
decision text (not published in OJ EPO)
Referral of a point of law by the President of the EPO;
G 3/19 (Pepper), Opinion of the Enlarged Board of Appeal;
opinion text (not yet published in OJ EPO)
Amicus curiae briefs
[end of citation of Press Communiqué]

Tuesday, 12 May 2020

T 487/16 - Can a document admitted by the opposition division and upon which the decision was based be excluded from appeal proceedings?

In the present case, an appeal was filed by the appellant (patent proprietor) against the decision of the opposition division revoking his patent due to lack of novelty  w.r.t. D1 and lack of inventive step w.r.t. D3 in combination with late-filed document D7. D7 was admitted by the Opposition Division as prima facie relevant (page 5 of the decision). Arguments of the proprietor before the Opposition Division, that D7 belongs to a remote technical field were not of any avail. In his grounds of appeal, the appellant submitted that "D7 was late filed before the opposition division which then erred in admitting the document despite its content relating to a remote technical field and not being of prima facie relevance to the claimed subject-matter. D7 should thus not have been admitted into the proceedings." Was the Board convinced? Did the Board allow D7 to be used? Did the Board agree with D7 being from an unrelated or remote technical field and did that have any effect on its admissibility or otherwise?

Monday, 11 May 2020

T 509/18 - Lack of sufficiency in a machine learning application

This examination appeal concerns a driver alertness detection system. Based on imaging of the driver's head and eyes the driver's attention state is determined. Determining the attention state uses a machine learning system. 

The description has a few sections in which the machine learning aspects are explained. Apparently, a matrix of inter-point metrics is used for a look-up-table classification. In principle classification systems are well known, and this suggests some kind of nearest neighbor classification, so I didn't think anything of it.  But the board probes deeper and finds the description insufficient. On closer reading it is indeed unclear what exactly is happening. I'm convinced that one could make a system like this work in many ways; but perhaps not while literally following the description. 

The applicant had argued that the skilled person would know how to enable this based on his common general knowledge; the applicant cited multiple documents in support of this argument. Moreover, in first instance the application was refused for lack of novelty not for lack of sufficiency.  The reasons of the appeal decision do not refer to the common general knowledge though.

In any case, it is a useful reminder not to be too succinct in your description. 

Monday, 27 April 2020

T 1969/17 Lack of reasoning in a decision doesn't make it overtunrnable

This case stems from an opposition that was originally based on the grounds of insufficient disclosure and lack of novelty. During the oral hearing, the ground of Art. 100(c) was raised, but was not admitted into the proceedings.  The opposition was subsequently rejected. In appeal, the opponent maintained the ground of insufficient disclosure and lack of novelty, and further submitted evidence of lack of inventiveness, although inventiveness had never been raised as a ground of opposition. 

The opponent also argued that the ground under Art. 100(c) should have been admitted as being prima facie relevant to the maintenance of the patent. The argumentation seems to have relied on the fact that the impugned decision did not contain any reasoning with respect to relevance.  The Board acknowledged the deficiency in the written decision and even expressed dismay at the Opposition Division's brevity on the subject.

However, the minutes of the oral proceedings showed that the issue had been discussed and that both parties had been given sufficient opportunity to respond. The Board further concluded that the claimed subject matter did not extend beyond the content of the application as filed, and that the Opposition Division had correctly exercised its discretion not to admit the late-filed ground.  

The ground of Art. 100(c) therefore constituted a fresh ground of opposition and was not admitted into the appeal proceedings. The ground of lack of inventiveness was not admitted either, for the same reason. 

Monday, 20 April 2020

A short break

The most recent publication on the Recently Published decisions webpage of the Boards of Appeal took place on 7 April, two weeks ago.

Further, the news message of 17 April  indicated that oral proceedings will not be held in the premises of the Boards of Appeal until 15 May 2020, thereby extending the practice in force since 16 March 2020 (news messages from 1 April, 20 March and 15 March). Consequently, many proceedings will be on hold.

Although the news message also indicated that "The Boards of Appeal will continue to issue written decisions, communications and summonses to oral proceedings", no new decisions were made available since 7 April.

In the absence of new decisions, we will reduce our blog activities for the time being.

Photo "Social distance" by Laura-Del obtained via Flickr under CC BY 2.0 license (no changes made).

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.