Friday, October 05, 2018 T 0861/16 - "Qui tacet consentire videtur" does not apply to the EPC

In this decision the proprietor files an appeal against the decision of the opposition division to maintain his patent in amended form. 

The opposition division had mentioned to the parties during oral proceedings that the text of the patent required amendments. However, since the content of these amendments does not appear either in the decision of the opposition division or in the minutes of the oral proceedings, the proprietor could not in any way recognize the modifications made to the text of the patent and give his consent.

Nowhere in the decision of the opposition decision or minutes of the oral proceedings it is stated that the proprietor consented to the amended text nor did the opposition division ensure that the proprietor agreed with the amended text, thereby the BoA concluded that the opposition division incurred into a substantial procedural violation of Art. 113(2), EPC.

The mere fact that the proprietor responded negatively to the invitation of the opposition division to comment on the amendments does not imply that the proprietor agreed with the amendments. The principle of "qui tacet consentire videtur", i.e., who is silent seems also to agree, is not an established principle of the EPC.

Friday, June 26, 2015 T 2255/10 - What's the purpose of it all?

This case involves an appeal against the decision of the Examining Division refusing European patent application No. 01 998 993 on the grounds that the claimed subject-matter of the main request and of the first and second auxiliary requests was not clear (Article 84 EPC) and did not involve an inventive step (Articles 52(1) and 56 EPC).

Catchwords

In accordance with the established case law of the Boards of Appeal the closest prior art for assessing inventive step is normally a prior art document disclosing subject-matter conceived for the same purpose as the claimed invention and having the most relevant technical features in common. (Reasons, point 2.2.2, citing T 482/92, Reasons, point 4.1, third paragraph.)
In establishing the closest prior art, the determination of the purpose of the invention is not to be made on the basis of a subjective selection from among statements of purpose which may be set out in the description of the application, without any reference to the invention as defined in the claims. On the contrary, the question to be asked is, what, in the light of the application as a whole, would be achieved by the invention as claimed.
For this reason, statements of purpose must be read in conjunction with the claims. Merely inserting such a statement into the description does not entitle an applicant effectively to "veto" any inventive step objection based on a document which is unrelated to this purpose, if it is not plausible that the invention as claimed would actually achieve the stated purpose. (Reasons, point 2.2.4.)