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?

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