Friday, 16 July 2021

G 1/21 - oral proceedings by videoconference also if a party objects: limited to OP before the Board during the pandemic or similar circumstances

Today, a Press Communiqué was issued by Spokespersons of the Boards of Appeal of the European Patent Office on the decision of the Enlarged Board in G 1/21. The press release is cited below in full (emphasis added). The Enlarged Board of Appeal "limited the scope of its answer  by confining its order to oral proceedings that are held during a period of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises and moreover are conducted specifically before the Boards of AppealAccordingly, in its order the Enlarged Board did not address the question whether oral proceedings by videoconference may be held without the consent of the parties in the absence of a period of general emergency. Nor did the order address the question whether oral proceedings by videoconference may be held without the consent of the parties in examination or opposition proceedings before the EPO's departments of first instance." Many interested persons will feel disappointed by the limitation of the scope, as the question remains undecided for oral proceedings in first instance proceedings.

Wednesday, 23 June 2021

G 4/19 "Double patenting" - Press Communiqué and decision

Press Communiqué of 22 June 2021 on decision G 4/19 of the Enlarged Board of Appeal was issued yesterday. The Enlarged Board held that a European patent application can be refused by reason of the prohibition on double patenting. The Press Communiqué is cited below in full (emphasis added); it gives the main conclusion and argument - reference is made to the full decision for the full reasoning and the scope of the prohibition. The full decision is also replicate below; it is noet yet available on the EPO "Recent decisions" pages, but it is available as pdf in the register (pdf). 

Tuesday, 15 June 2021

D 11/19 - Pilot project EQE 2019 on a computer: legality & equal treatment challenged in appeal


In this EQE appeal against a decision awarding 41 marks for paper B 2019, "requests were made to revoke the decision and to have to quantify the extent to which the advantage of the participants in the "pilot project" of the EQE 2019 was reflected in a better result, and based on this knowledge, in particular to reevaluate task B of the complainant, so that the complainant's entire 2019 EQE is deemed to have been passed". "As an alternative, it is requested to revoke the decision and to arrange for the examination committee to quantify the extent to which the advantage of the participants in the "pilot project" of the EQE 2019 was reflected in a better result, and based on this knowledge, in particular, task B of the complainant is reassigned rate so that the complainant's entire 2019 EQE is deemed to have been passed". Various further requests were filed. The Disciplinary Board summarized this part of the complaint as "The complainant [finally] complains about a violation of the principle of equal treatment and an impairment of the impartiality of the examiners in connection with the implementation of the pilot test on the occasion of the European qualifying examination 2019, in which 15 selected applicants were allowed to write the work on task B with the help of a computer. He specifically asserts practical simplifications in the preparation of the work using a computer, which resulted in a considerable time advantage and better examination conditions. In view of the small number of 15 participants, anonymity and impartiality in the correction were not guaranteed. Overall, the regular applicants in the European qualifying examination 2019 were clearly at a disadvantage,"

Thursday, 20 May 2021

BREAKING NEWS: G 1/21 - Exclusion and objection of the chairman of the Enlarged Board, but not of other members

Interesting developments in G 1/21! On the same day as on which the President of the EPO further extended the pilot project for oral proceedings by videoconference before opposition divisions, as set out in the decision of the President of the European Patent Office dated 10 November 2020 concerning the modification and extension of the pilot project for oral proceedings by videoconference before opposition divisions (OJ EPO 2020, A121), to run until 31 January 2022 (see here), was a decision published online with respect to exclusion and objection of the chairman and other members of the Enlarged Board in case G 1/21 (decision dated 17 May 2021). Curious to what was decided and why: see below!
Update 28.05.2021: on 24.05.2021, the opponent's representative filed a response to the Communication with the decision, raising further reasoned objections and requests; the oral proceedings on 28.05.2021 started with a non-public discussion of those issues - see at the bottom of the page. The objections were rejected, but the oral proceedings to the merits of the case were further postponed, as the submissions from the President were only notified to the appellant two days before the oral proceedings.
Update 02.06.2021: oral proceedings are to be held on 2 July 2021 by videoconference.)


T 1294/16 - A matter of principle

A few interesting topics in this decision of the Board of Appeal, wherein an appeal was filed against the decision of the Examining Division to refuse the application.
  1. If there is a prior art document D2 that has the same purpose or objective as the claimed invention, is it then possible that another document D1 that has a different purpose is chosen as the closest prior art for assessing inventive step?
  2. Is it a substantial procedural violation if the decision of the Examining Division is based on D1 as closest prior art, when  - allegedly -  in the oral proceedings before the Examining Division, only D2 was considered as the closest prior art? Is it "implicit" that both D1 and D2  had been considered as closest prior art, and is this "implicit discussion" sufficient to satisfy the appellant's right to be heard? 
  3. Can a difference (relative) to D1 in the mathematical formula claimed be an argument for inventive step?
  4. In view of RPBA 2020 Article 13(1) and (2), may the Board still admit requests that were filed after notification of the summons to oral proceedings, and during oral proceedings?

Tuesday, 11 May 2021

T 2255/15 - Can the Board of Appeal disregard third party observations that were only filed during the appeal proceedings?

In the present case, the appeals lodged by the opponent and the patent proprietor lie from the interlocutory decision of the opposition division that the European patent No 1 369 037 in amended form. Third party observations were submitted in an early stage of the appeal proceedings, as well as in later stages, objecting to novelty and to inventive step w.r.t. newly field documents (existing grounds, but new facts, arguments and evidence). The patent proprietor requested that the third-party observations, with all the documents and annexes referred to in the observations, not be admitted into the proceedings as they were late-filed. However, the RPBA seems to only impose constraints on late-file submissions by parties, as does Art. 114(2) EPC, and not by third parties. How did the Board handle these third party observations: were they admitted and, if so, to what extent?

Tuesday, 13 April 2021

T 488/18 - Withdrawn request for Oral Proceedings need not be made by orignal party for reimbursement

Who exactly should ask for the refund?

During this opposition an insolvency was started for the assests of the opponent. A preliminary insolvency administrator was appointed, who then became a party to the proceedings in opposition by way of a statutory change of party and took the place of the former opponent and respondent. An attempt was made to interrupt the proceedings under Rule 142(1)(b) EPC  or under Rule 84(2), first sentence, EPC but these were rejected. 

When the only request for oral proceedings was withdrawn from the now opponent, the question presented whether this suffices for a 25%  reimbursed of the appeal fee under Rule 103(4)(c) EPC. In a another Board decision (T 777/15), this was denied. The board provides a deep analysis for this point, and comes to the different conclusion that a reimbursement is possible. The following head note was provided:

There may also be a possibility of repayment of the appeal fee under Rule 103(4)(c) EPC if a request for oral proceedings has not been withdrawn by the appellant but by another party to the proceedings who has not filed an appeal (see points 8.3 - 8.9 of the grounds for the decision). (English MT translation by Deepl.)

Eine Rückzahlungsmöglichkeit der Beschwerdegebühr gemäß Regel 103 (4) c) EPÜ kann es auch dann geben, wenn ein Antrag auf mündliche Verhandlung nicht vom Beschwerdeführer zurückgenommen wurde, sondern von einem anderen Verfahrensbeteiligten, der keine Beschwerde eingelegt hat (siehe Nrn. 8.3 - 8.9 der Entscheidungsgründe).

Wednesday, 7 April 2021

T 2393/17 - mere assertion of lack of information not enough for insufficiency



Claim 1 for a dishwasher in this opposition appeal comprises the feature that 

either said bottom wall (14) or said cover (12) incorporating a first and a second half-conduit (28, 30) tapering at respective ends facing each other, so that they form an air gap device, 

The opponent objected that the patent does not sufficiently disclose such incorporated half-conduits. The boards does not agree, and finds that it is not enough to state insufficiency but that one has to address why this particular feature would not be possible for the skilled person to produce. 

Wednesday, 17 March 2021

T 1807/15 - Referral G 1/21: OP by ViCo compatible with right to OP acc.Art.116(1) EPC if not all parties agree?

In the present case, the respondent requested that the oral proceedings be postponed due to the COVID-19 pandemic and in particular in view of the restrictions on travel between the United Kingdom and Germany. Furthermore, the respondent pointed out that the oral proceedings were not suitable for a videoconference, in particular since simultaneous interpretation would be required. In response to the respondent's request for oral proceedings to be postponed in view of the travel restrictions, the parties were informed by communication that the oral proceedings  would be held by videoconference (VICO). The appellant responded to that communication by a letter at the end of which the appellant also included a statement that he agreed with the respondent concerning the unsuitability of the case for oral proceedings by videoconference. Oral proceedings nevertheless took place in the form of a videoconference on the scheduled date, i.e. without the parties' consent. During the oral proceedings the appellant requested: "We thus make the auxiliary request that the question be referred to the Enlarged Board of Appeal for decision as to whether oral proceedings under Article 116 EPC can be replaced by a videoconference without the parties' consent?"

Thursday, 11 March 2021

G 1/19 - Computer-implemented simulation of a technical system or process that is claimed as such


In this case, European patent application relates in particular to the modelling and the simulation of movements of a pedestrian in an environment. The simulation of an individual pedestrian's movement may form part of the simulation of a pedestrian crowd ’s movement in a building. Modelling a building and simulating the movement of a crowd within the building may be useful for verifying whether the design of the building fulfils certain requirements, for example in the case of an evacuation of a stadium or a railway station
In its appeal against the refusal, the appellant argued in particular that the method steps of the claimed invention were technical features or physical parameters. Even if the method steps were considered to be non-technical, they still contributed to the technical character of the invention since they resulted in a technical effect by virtue of their interaction with the computer. Reference was made to T 641/00 (COMVIK, OJ 2003, 352) and to T 1227/05 (OJ 2007, 574), the latter concerning simulations.
In its communication accompanying the summons to oral proceedings, the referring board took the view that the steps forming the claimed method were in themselves non- technical and could contribute to the technical character of the claim only to the extent that their combination interacted with the technical features of the claim to produce a technical effect. Such a technical effect could be present if the design of the simulation steps was motivated by technical considerations of the internal functioning of the computer on which the simulation was implemented, or if the technical effect was part of the overall purpose of the claimed method. The referring board tended to the view that the claimed simulation method did not serve a technical purpose and therefore did not contribute to the technical character of the invention.
By interlocutory decision T 489/14 dated 22 February 2019 (OJ 2019, A86, the "referring decision") Technical Board of Appeal 3.5.07 referred, on the basis of Art.112(1) (a) EPC, the following questions of law to the Enlarged Board  for decision:
  1. In the assessment of inventive step, can the computer- implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?
  2. [2A] If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer- implemented simulation claimed as such solves a technical problem? [2B] In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
  3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?
After assessing the admissibility of the referred questions, rephrasing of part of the questions, an analysis of the legal framework, the existing case law and the various submissions, The Enlarged Board ruled: 
  1. A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation's implementation on a computer.
  2. For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
  3. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.

Friday, 19 February 2021

D 5/19 - Remitting to the Board of Appeal with reasons amounts to a decision on the merits of the appeal

We do not often post appeals against decisions on EQE grades, but in this decision a general principle was addressed: how does the Board of Appeal with a situation wherein a first instance comments with a positive opinion on the allowability of an auxiliary request when remitting the appeal to the Board of Appeal in view of the main request not being allowable?
This appeal was filed against the decision of the Examination Board for the EQE 2019 which held that the answer paper to the ED 2019 had been awarded 43 marks and therefore the grade "FAIL". The appellant requested that decision to award her a "FAIL"  be set aside and that her paper instead be awarded a "PASS" (main request), or, alternatively, a "COMPENSABLE FAIL" (auxiliary request).  The appellant was informed by the Exam Secretariat that her appeal had not been allowed by the Examination Board (no interlocutory revision). This letter also stated: "The Examination Board wishes to add the following comment: After remarking, the Examination Board considers that the main request is not allowable. However, the auxiliary request could be allowable. The candidate could be awarded 46 marks: [...]." The Examination Board thus remitted the appeal to the Appeal Board (Disciplinary Board of Appeal) without rectifying its decision. Thus, the situation arise that interlocutory revision did not take place as that cannot be done in view of an auxiliary request, while the Examination Board did comment on the reasons for remitting and on the merits of the auxiliary request. How did the Appeal Board deal with this situation, also in view of their restricted competence in EQE appeals (in particular, the allegedly incorrect, and insufficient, number of points awarded to the appellant's answers not being open for review by the Appeal Board)?


Wednesday, 17 February 2021

J 10/20 - Even in the absence of a general dislocation in the delivery or transmission of mail, users and representatives can rely on statements on the extension of time limits which are made in a Notice in the OJ EPO.


In the present case,  the Receiving Section issued the decision under appeal on 5 December 2019The appellant filed the notice of appeal on 17 February 2020. On the same day, the appeal fee and the fees for re-establishment of rights were paid. The statement of grounds of appeal was only filed on 2 June 2020. The Board had to assess whether the grounds were filed in time. The Board analyzed and discussed the various Notice from the European Patent Office of spring 2020 concerning the disruptions due to the COVID-19 outbreak and the Notice from the European Patent Office dated 30 March 2020 concerning the extension of periods for the payment of fees. The Board noted that those Notices only refer to '"restrictions on the movement and circulation of persons, as well as on certain services, exchanges and public life in general, which can be qualified as a general dislocation within the meaning of Rule 134(2) EPC" in the Federal Republic of Germany, the State in which the European Patent Office is located.' and notes that 'Rule 134(2) EPC, however, does not refer to a "general dislocation" as such, but to a "general dislocation in the delivery or transmission of mail". The European Patent Office's Notices are silent on whether there was a general dislocation in the delivery or transmission of mail in the Federal Republic of Germany.'. The Board concludes that 'the principle of good faith / protection of legitimate expectations applies: 'Users must not suffer a disadvantage as a result of having relied on erroneous information received from the EPO (G 2/97, point 4.1 of the Reasons). Therefore, even if there was no general dislocation in the delivery or transmission of mail in the Federal Republic of Germany during the relevant period, and even if it were not possible to apply Rule 134(2) EPC by analogy under the given circumstances, users could still rely on the information on the extension of time limits provided in the Notices of the European Patent Office without suffering any disadvantages.'


Monday, 8 February 2021

T 353/18 - no legal primacy of a clean request over the annotated version

Almost identical, but not quite


With its response to the statement of grounds of appeal, the patent proprietor (respondent) filed, inter alia, an auxiliary request 3, in a clean and a mark-ed up version. Unfortunately, unbeknownst to any one, these two versions were not the same. 

At the oral proceedings the differences came to light. The appellant had used the the annotated version, which happened to contain impermissible added subject matter. The respondent declared that the clean version was the valid version, which happened not to contain said added subject matter. In the end, the board assumed an honest mistake and remitted the case.

 The board provided the following catchword:

Discrepancies between the clean and the annotated versions of a request: no provision in the EPC establishing any legal primacy of the clean version over the annotated version; special reasons justifying a remittal (reasons: section 8)

Tuesday, 2 February 2021

T 1370/15 - A board is allowed to introduce common general knowledge without evidence also in inter partes

The use of grids is well known in the art



After his patent was revoked in opposition, the proprietor filed an appeal. The opponent (respondent) did not make any submissions in response to the appeal. The board was not convinced that the appellant's requests were inventive taking the common general knowledge of the person skilled in the art into account. In particular, the common general knowledge should not be restricted to the material presented in the first-instance proceedings or the oral proceedings by the appellant. 

The board provided the following catchword:

Not only in ex parte-, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field. (See Reasons, point 5.3)

(emphasis added)

Wednesday, 27 January 2021

T 0407/15 - Earlier application was assigned, but no proof that priority right was transferred too

In the present case, the validity of priority was important in view of a  disclosure in the priority interval. The priority applications were filed jointly by three persons (the inventors), and identify "The University of Western Ontario" as assignee in a section entitled "Assignee information"The current Euro-PCT application was initially filed as an international PCT application by The University of Western Ontario, and indicates these same three persons as inventors. Despite having been invited to do so by the Board, the appellant failed to provide any evidence that a transfer of the priority right took place and that it was entitled to claim these priority rights. The Board argued that: "Both US applications 61/035 540 and 61/035 777 contain a section entitled "Assignee information", identifying "The University of Western Ontario" as assignee. This is, however, not sufficient to establish that the priority rights derived from either application have also been transferred to the applicant." "This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While the sections of the priority documents referred to above appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings."

Monday, 25 January 2021

T 2305/14 - claim covers not-enabled embodiment

A seismic survey vessel (10) towing an array of streamers (12), each with a a plurality of streamer positioning devices (18) ('birds') 

The fourth request in this opposition comprises the feature:
towing an array of streamers with the seismic survey vessel, each streamer having a plural­ity of streamer positioning devices there along, each of the streamer positioning devices having a wing used to control the vertical and lateral position of the streamer positioning device

In particular, the the streamer positioning devices (the 'birds')  may each have a single wing. The Boards does not consider this option enabled by the description. 

 

Monday, 18 January 2021

T 978/17 - what is the nationality of a legal person?



When filing an opposition, then following R. 76(2)(a) jo R.41(2)(c), one should include 

(...) the name, address and nationality of the applicant and the State in which his residence or principal place of business is located. 

The three opponents in this case are legal persons and left blank the box in the form stating Nationality. The proprietor considers that for legal persons one should indicate the country under who's law the legal person was established. As this wasn't done the opposition should not be admissible. 

The board does not buy it. The decision is in German; a machine translation of a relevant passage is include below:

Monday, 11 January 2021

T 2429/17 - Cogent reasons for amendment after summons

Lacking clarity


Art. 13(2) of the  Rules of procedure of the Boards of Appeal states that 

Any amendment to a party's appeal case made (...) after notification of a summons to oral proceedings 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 question then is, what could be a cogent reason? In this case, the Board raised objections under Articles 84 and 123(2) EPC for the first time in its summons. As the new request responded to these objections, they cleared this hurdle. Unfortunately, the new request was also considered to introduce new clarity issues, so in the end the request was not admitted after all.  

Monday, 4 January 2021

R 10/18 - No obligation for a Board to discuss irrelevant arguments

Did they miss your submission, or was it not relevant?


The Enlarged board considers the catchword of R 8/15. Catchword 1 of that decision reads (in part, emphasis added): 

(...) One aspect of the right to be heard as covered by Article 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness. Article 113(1) EPC is infringed if the Board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the Board substantively considered those submissions. (...)

In this case, a potential issue with this rule is considered. If you don't see your arguments back in the decision then either: the board did not consider your arguments, or the board did consider them but found them to be irrelevant. The former case would infringe the right to be heard, while the latter would not. But how is an appellant to know which of these two options was the case?

The Enlarged board seems sympathetic to this view, but concludes that if you don't see a submission in the decision, then apparently it was not relevant. It leaves the door open though if there are indications to the contrary. 

This case R 10/18 provides the following catchword:

1. One aspect of the right to be heard as covered by Article 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness.

Article 113(1) EPC is infringed if the board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the board substantively considered those submissions. (See Reasons, point 2.1.1, affirming the relevant part of catchword 1 of R 8/15).

2. A board is presumed to have taken into account a party's submissions that it did not address in the reasons for its decision, meaning that it, first, took note of them and, second, considered them, i.e. assessed whether they were relevant and, if so, whether they were correct.

An exception may apply if there are indications to the contrary, e.g. if a board does not address in the reasons for its decision submissions by a party that, on an objective basis, are decisive for the outcome of the case, or dismisses such submissions without first assessing them as to their correctness. (See Reasons, point 2.1.1.2).

Statcounter