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).

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