Monday, February 08, 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, February 02, 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After his patent was revoked in opposition, the proprietor filed an appeal.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)

Tuesday, October 27, 2020 T 560/20 - Change from novelty objection to inventive step in decision to refuse

Does membrane thickness have a technical effect? Does it matter?

During prosecution the claim was objected to on the basis of novelty. In its decision to refuse, it was acknowledged that the thickness of a membrane was not disclosed in the prior art document. As said thickness had no technical effect, the Examining division turned the novelty objection into an inventive step objection. The appropriate thickness could be found from the common general knowledge. 

The board does not like this, and in fact, considers it to be a substantial procedural violation 

Tuesday, October 20, 2020 T 294/16 - The Board shall not remit, unless

It is not always so easy to turn around and go back.

Article 11 of the Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) reads as follows:

Article 11

Remittal

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.

In this decision the Board found that such special reasons were present. The application was rejected for lack of novelty, but the Board did not agree with that finding. As inventive step or clarity was not examined, the case is remitted. 

Tuesday, March 10, 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.