Tuesday, September 01, 2020 T 2214/15 - Ordinary, not exceptional

According to Article 13(2) of the revised Rules of Procedure of the Boards of Appeal (RPBA 2020), any amendment to a party’s appeal case made after notification of a summons to oral proceedings (or after a deadline set by the Board with an express invitation to file observations) 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 basic principle of this third level of the new "convergent approach" applicable in EPO appeal proceedings is that, at this stage of the appeal proceedings, amendments to a party’s appeal case are not to be taken into consideration. Only if a party can present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular case. For example, if a party submits that the Board raised an objection for the first time, it must explain precisely why this objection is new and does not fall under objections previously raised by the Board (or a party). The Board may decide to admit the amendment in the exercise of its discretion. 

In the present examination appeal case, the appellant had filed Auxiliary Request 2 after notification of the summons to oral proceedings. During oral proceedings, the appellant argued that this late-filed request should be admitted, as the Board had raised a number of new issues in the summons to which auxiliary request 2 represented a good faith reaction. Indeed, the Board accepted that in the present case this represented exceptional circumstances within the meaning of Article 13(2) RPBA 2020.
Unfortunately, the Board found that Auxiliary Request 2 does not comply with Articles 84 and 123(2). 

Auxiliary Request 3 filed subsequently during oral proceedings was however not admitted. While the appellant asserted that a further request should be admitted because the Board had raised new objections in connection with the second auxiliary request that the appellant could not have been expected to anticipate, the Board was not persuaded by these arguments. According to the Board, the topics of discussion in view of auxiliary request 2 did not differ in substance from those identified in the summons; the identification of newly introduced problems when attempting to solve issues discussed in the procedure up to that point is rather to be seen as the ordinary development of the discussion, rather than an exceptional circumstance justifying the admittance of a further auxiliary request. In the view of the Board, if such newly introduced problems would represent exceptional circumstances, this would imply that the appellant would have to be given repeated opportunity to file amended claims until no new problems were introduced. Such a procedure could only be characterised as a continuation of the first-instance examination proceedings and would thus be at odds with the primary object of the appeal proceedings of a judicial review of the impugned decision.

Catchword
If amendments intended to overcome objections of lack of support and lack of clarity raised in the summons give rise to further objections concerning clarity or added subject-matter, pointing out these further objections does not represent exceptional circumstances within the meaning of Article 13(2) RPBA 2020, but rather an ordinary development of the discussion which does not go beyond the framework of the initial objection. See reasons 5.3 and 5.4.

Tuesday, February 11, 2020 T 1621/16 - Multiple selections from lists of converging alternatives

In the present case, amendments were based on multiple selections from lists of converging alternatives (i.e. lists of options ranked from the least to the most preferred, wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list). The appellant (patentee) argued that these should not be considered to be equivalent to selections from lists of non-converging elements, and that these rather represented a restriction of the scope of protection and were allowable under Article 123(2) EPC. The opponent and the opposition division argued that amendments based on the selection of at least two intermediate options (i.e. different from the most preferred) from lists of converging alternatives infringed Article 123(2) EPC, and that lists of converging and non-converging alternatives had to be treated in a similar way, because the convergence could only be considered to provide a specific pointer to the most preferred options. The Board had to settle on the matter.

Thursday, November 07, 2019 T 838/16 - removal of a feature requires passing gold standard to satisfy Art.123(2)/76(1)

The patio heater may be off. Does that disclose that the heater may be absent?

In the Guidelines up-to-and-including the 2017 edition, the essentiality test from T 331/87 provided a necessary and sufficient condition for the allowability of the replacement/removal of features from a claim. As of the 2018-edition, satisfying the essentiality test is a necessary condition, but no longer sufficient. The Guidelines 2018 and 2019, section H-V, 3.1, provides: 

• If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2): (i)-(iii)
• However, even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as "the gold standard"”. 

The amendments to the Guidelines seems to reflect recent developments in case law, such as T 910/03 which questioned the applicability of T331/87. The current decision follows the approach in the current Guidelines, and applies the "gold standard", when checking Art. 76(1) for a divisional relative to its parent rather than Art. 123(2) for an amendment: any amendment must be within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively relative to the date of filing, from the whole of the documents (description, claims and drawings) as filed. 

Friday, June 28, 2019 T 1360/13 - Drawings much improved, but patent invalid

Drawing sheet 1 as replaced

Drawing sheet 1 as originally filed

The patent was granted with drawing sheets exchanged according to Rule 26 PCT during the international phase, the originally filed drawing sheets being of poor quality, essentially showing black or grey elements. The same exchanged drawing sheets which were part of the patent as granted are part of the main request documents.

The board concluded that many details present in the figures of the patent as granted are not disclosed directly and unambiguously by the application as originally filed.

To overcome this problem, the proprietor filed a series of requests 9-17 in which all drawing sheets have been deleted and all references to the figures in the description and claims have been deleted as well.  (Requests 1-8 were withdrawn.) For the BA this corresponded to an extension of protection, not allowable under Art 123(3) in view of Art 69. The board provided the following catchword. 

Catchword

In view of Article 69(1) EPC which states that the description and the drawings shall be used to interpret the claims when determining the extent of the protection conferred by a European patent, after grant, any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation cannot be removed from the patent without infringing Article 123(3) EPC.

Monday, June 17, 2019 T 1391/15 - Deviations and displacements

An interesting decision concerning what the skilled person would directly and unambiguously derive from the application as filed, when disputes concerning translations of terms from a non-official language arise.

In the present case, part of the objections raised by the opponent-appellant stem from an (alleged) error in the original Italian language application and a supposedly incorrect translation into English of another term in the original application.

More specifically, whereas the original application (concerning a system and apparatus for dehumidifying walls) mentioned “spostamenti” which was subsequently translated into English as "movements", the patentee later amended this term to “differences” based on the corresponding Italian term “scostamenti”, arguing that this amendment was an obvious correction within the meaning of Rule 139 EPC. The opposition division agreed.

While the Board considered it plausible, perhaps even probable, that the term "spostamenti" was erroneous, it found that within the context of the patent spostamenti/movements could in fact meaningfully refer to movements of the apparatus of the invention over the wall; accordingly, it found that the strict conditions for allowing the correction under Rule 139 EPC were not met. Regardless, the Board considered that the overriding issue was in fact whether or not this amendment complied with Article 123(2) EPC. In this regard, the Board argued that it would be clear to the person skilled in the art reading the application as filed that operation of the claimed apparatus would implicitly result in a “difference” or “differences” in certain observed values. Accordingly, in the Board’s view, the term "(in function of the) differences" in claim 1 would not present the skilled person with any new information not directly and unambiguously derivable from the application as filed, thus allowing (under Art. 123(2) EPC) the amendment of (spostamenti) ”movements” to (scostamenti) ”differences”.

The Board further considered the term “monitor” - rather than "control" - in claim 1 based on the original “controllo/controllare” not to contravene Article 123(2) EPC in view of the disclosure of the patent as a whole, which discloses both monitoring and controlling of the dehumidifying process.

Sunday, March 31, 2019 T 437/14 (Minutes of oral proceedings) - Disclaimer decision following the decision on its referral (G 1/16)

In this case, the Board referred questions to the Enlarged Board about the applicability of the gold standard disclosure test as defined in decision G 2/10 to undisclosed disclaimers (no), and the applicability of criteria as defined in decisions G 1/03 and G 2/03 (yes). The Enlarged Board handled the case as G 1/16 and answered that "For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03. The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons." The referring Board has no issued the Minutes of the subequent oral proceedings before it.

Tuesday, October 02, 2018 T 1399/13 - On the size of the hole

The allowability of an undisclosed disclaimer to establish novelty over an Art.54(3) prior right was challenged in opposition. Major topics of the debate were whether the disclaimer removed more than necessary to restore novelty over the prior right and whether the disclaimer and the claim with the disclaimer were clear and concise. 'With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10*. In particular, the difficulty for a patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention, not even with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, supra, point 3 in the reasons, second paragraph, last but one sentence).'  Although not the reason for selecting it for this blog, the decision also has another interesting aspect: the decision applies the partial priority decision G 1/15 in reasons 1.4.2-1.4.5.

Monday, June 18, 2018 R 7/16 - Decision on remittal before discussing substantive issues

The auxiliary police... could they have helped the petitioner?

This case is a petition for review following an appeal against a decision of the opposition division. Briefly speaking, auxiliary request V was held allowable during the opposition proceedings, but was found to contravene Article 100(c), 123(2) EPC during the appeal proceedings.

In its written decision (the decision under review), the BoA found that the decision of the opposition division presented a fundamental deficiency. Despite the fundamental deficiency, the BoA decided not to remit the case to the opposition division, thereby exercising its discretion under Art. 11 RPBA.

The petitioner's argues in the petition that the substance of the issues, to which the fundamental deficiency pertained, was not taken into consideration by the BoA when the remittal was discussed, and that this represented a fundamental violation of Article 113 EPC.

The EBoA notes that a detailed discussion of the substantive issues before a decision on the remittal would have rendered any remittal pointless since the first instance would have been bound by the considerations of the Board of Appeal or could have expected that its decision would be reversed if it was not in line with the considerations of the Board of Appeal. It was therefore only logical to limit the discussion on the requested remittal to procedural aspects. See also points 3.2.5 and 3.2.6.

Tuesday, May 15, 2018 T 0802/13 - (Un)disclosed combination of features?

This case concerns a successful appeal of a patent proprietor against a decision of the Opposition Division to revoke a patent on the ground of added subject matter.

In the Opposition Division's view, claim 1 of the main request lacked features of the embodiments disclosed in the application as filed in combination with the features added to amended claim 1.

In the BoA's view (see also GL(2017), H-V, 3.2.1), the skilled person is presented with additional technical information if only some of the features of an originally disclosed combination of "inextricably linked" technical features are extracted.This is the case if the original disclosure conveyed the teaching, explicit or implicit, that all the features of that combination had to be present together in order for a specific technical effect to be obtained. In such a situation, claiming only some of those features would present the skilled person with the different (additional) technical information that the omitted features were optional for that specific technical effect (reason 4.3, last paragraph, of the present decision).

However, this was not found to be the case here essentially because those non-claimed  features of the embodiments disclosed were considered to contribute to technical effects different from the technical effect derivable from original claim 1 (and application as originally filed). The BoA considered those non-claimed features exemplary rather than limitative for achieving the desired technical effect. 

Furthermore, in view of the BoA, both the Opposition Division and the respondent did not clearly distinguish between what is covered by a claim from what is disclosed by a claim. A claim can cover much more than what it discloses, thus also embodiments which are not originally disclosed, but this is irrelevant for the evaluation of added subject matter. 

Tuesday, March 20, 2018 T 660/14 - an undisclosed disclaimer after G 1/16

In this appeal, the proprietor gave as a basis for the subject-matter of claim 1 of auxiliary request 4 meeting the requirement of Article 123(2) EPC that the subject-matter of claim 1 includes an undisclosed disclaimer. The undisclosed disclaimer was not of the most common type of disclaiming a Art.54(3) EPC prior right disclosure. The proprietor considered the alleged undisclosed features as either one or two undisclosed disclaimers. The proprietor submitted that the disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled. The Board of Appeal disagreed: according to the Enlarged Board of Appeal decision G1/16 (see e.g. Headnote), to be allowable under Article 123(2) EPC, the introduction of an undisclosed disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular it may not become relevant for the assessment of inventive step (G 1/16 Reasons, point 49.1). 

Wednesday, December 20, 2017 G 1/16 - The final word (?) about disclaimers

The referral relates to the allowability of undisclosed disclaimers. The referring Board asked about the applicability of the gold standard disclosure test as defined in decision G 2/10 to undisclosed disclaimers (no), and the applicability of criteria as defined in decisions G 1/03 and G 2/03 (yes). The decision G 1/16 (Disclaimers III) noted that in drafting of undisclosed disclaimers as amendments, no technical contribution to the claimed subject-matter of the application as filed may be provided. 

Monday, November 27, 2017 T 782/16 - Can the content of a divisional be derived from an omnibus parent?

In this opposition appeal the Board had to assess if the opposed claims could be derived from the filed divisional and parent. In the Board's view, the "gold" standard for the assessment of Articles 123(2) and 76(1) EPC requires that the subject-matter of an amended claim (or of a claim of a divisional application) be based only on what the skilled person would directly and unambiguously derive from the application as originally filed (or from the earlier application; see G 2/10). For a correct application of this standard, a distinction needs to be made between subject-matter which is disclosed either implicitly or explicitly in the original (or earlier) application and therefore can be directly derived from it, and subject-matter which is the result of an intellectual process, in particular a complex one, carried out on what is disclosed. The Board concluded that the latter was the case.

Monday, July 31, 2017 T 287/14 - Disclaimers: do not try this at home!

Amendments introducing disclaimers have probably led to more pain than joy. Disclaiming subject-matter in the application-as-filed usually is acceptable, but often has a high risk of lacking inventive step. Disclaiming subject-matter not in the application-as-filed led to G 1/03 already quite some years ago and is well-documented in many later decisions as well as in the Guidelines - strict conditions, which can basically only work out well if there is only one Art.54(3) EPC prior right document with a  single, clear disclosure. Disclaiming embodiments in the application as filed led to G 2/10, which has a quite cryptically phrased headnote, but when read as a whole also gives very clear conditions -it usually is possible, as long as it is clear that something remains and that you do not sneakily change to a different inventive concept-  and it is also well documented in the Guidelines. G 1/03 and G 2/10 relate to different cases, so cannot prima facie be considered as somehow conflicting, but Board 3.3.09 made the currently pending referral G 1/16 while handling appeal T 0437/14 asking a.o. whether the G 2/10 decision effects how some aspects of G 1/03 shall be interpreted. The current decision shows again that even of a disclaimer is made in good faith, it can easily be done wrongly and, as here, of the disclaimer is introduced before grant, one may all too easily end up in an inescapable Art.123(2)-123(3) trap... And the trouble was in this case actually not even in how the disclaimers needs to be drafted, but how novelty has to be assessed... which the opponent did correctly, but the examining division and the applicant/proprietor had not/did not... As to the aux requests, Art. 13(1) and 13(3) RPBA prevented further chances to remedy the trouble.

T 2333/11: What exactly does "divided into smaller objects" mean?

Another case showing the dangers of Art. 123(2) EPC: an amendment going beyond the original disclosure seals the fate of this patent application. Dividing configuration information into smaller objects and dividing content metadata into smaller objects are not considered to be the same thing.

Friday, May 19, 2017 T 1852/13 - Essentiality test vs. gold standard

The gold(en) standard?

This case concerns a divisional application in which a feature was removed from claim 1 with respect to claim 1 of the parent application, and whether such removal satisfies the requirements of Art. 76(1) EPC (and equivalently Art. 123(2) if it were to be performed as amendment).

This situation is dealt with by the 'essentiality test' of T 331/87.

This case discusses the essentiality test as it differs across its various versions (English original vs. German translation, original decision vs. guidelines), how it was applied in the recent past, criticism on the test including the criticism raised previously in T 910/03, and most importantly, how it fits into the 'gold standard' established by G 2/10.

After various deliberations, the Board considers the essentiality test to be dead: "Die Kammer ist zum Schluss gelangt, dass der Wesentlichkeitstest nicht mehr zum Einsatz kommen sollte", with one of the reasons being that the original phrasing of 'may not' in T 331/87 leaves open the possibility that all three conditions of the test are satisfied yet that Art. 123(2) is still violated.

As such, the Board considers that the essentiality test cannot replace the gold standard even in its specific application area (removal or replacement of a feature).

Is the essentiality test now finally dead? After T 910/03 it languished but occasionally reappeared.

The Board refrains from referring the matter to the EBoA as it considers such referral not to be decisive in the present case, since according to the Board a same conclusion would be reached using both the essentiality test and the gold standard (being that the removal violates Art. 76(1) EPC).

Monday, May 15, 2017 T 1965/11 Materialised Views

The claimed invention makes use of available materialised views in order to improve database query performance. Due to the age of the application (filed in 2001), the Board examines inventive step in an appeal concerning added subject matter.

Friday, January 13, 2017 T 2502/13 - Positive feature allowed as Art. 54(3) disclaimer?

In the opposition appeal to which this decision pertains (which has been suggested by a reader), the proprietor appealed against the decision of the Opposition Division to revoke the patent on the basis of all requests extending beyond the content of the application as filed (Article 123(2) EPC).

Of interest is the first auxiliary request of the appellant, by which the claim of the main request is further limited by: "further wherein the third ply of interlayer material comprises a plasticizer".

The appellant argues that the subject-matter of claim 1 of the first auxiliary request amounted to a disclaimer allowable in view of A8, which was prior art according to Article 54(3) EPC.

Wednesday, August 03, 2016 T 1717/13 - How many tries should you get in OP?

How many tries should an opposition division allow a proprietor to rectify an added subject matter problem? After the opposition division had maintained its added subject matter objections during the oral proceedings, the proprietor filed three more auxiliary requests. The first two were admitted into the procedure but the third was not. The reasons given in the minutes are that the third request was late filed and did not resolve an earlier objection.

In appeal the proprietor alleged that procedural violations took place. In particular, he claims that:

(a) by not admitting further claim amendments to overcome newly raised objections by the opposition division during the oral proceedings; in this respect, the opposition division exercised its discretion to disregard amendments incorrectly;

(b) by causing the patent proprietor's representative to be taken by surprise during the oral proceedings by giving contradictory reasoning, which made it difficult to react to newly raised objections;

(c) by not giving sufficient time to take into account the newly raised objections during the oral proceedings and to consider a new version of a main claim in order to be able to appropriately react to the newly raised objections.

The board gives the opposition division a wide berth to make its own decisions with respect to admitting auxiliary request or not. Some doubts are expressed about the divisions refusal to allow all  further auxiliary requests, but in the end no substantial procedure is found. 

At the end of the cited part of this decision there is also an interesting analysis of intermediate generalizations.

Tuesday, July 19, 2016 T 2171/14 - Special reasons for not remitting, despite fundamental deficiencies in first instance

In this decision, the Board concluded that the "impugned decision from the Opposition Division presented a fundamental deficiency in that there is no reasoned decision in regard to the specific objections under Article 100(c) EPC made against Auxiliary Request V, which objections had been made originally against the main request and, as specifically stated in the minutes of the oral proceedings (see point VII above), had been maintained against the subject-matter of claim 1 of Auxiliary Request V found allowable by the opposition division. The impugned decision also does not contain any reasoned decision with respect to the further opposition ground under Article 100(b) EPC, nor with respect to the subject-matter of independent claim 12. The missing reasoning on the mentioned opposition grounds together with the remarks made by the opposition division in the "preliminary comments" section of the reasons for its decision, give rise to serious concerns as to the way in which the opposition division approached in particular the objections made under Article 100(c) EPC, as briefly explained below". The Board then carefully considered whether to remit the case -the "normal" procedure in case if fundamental deficiencies in first instance proceedings- or not. And concluded not to (r.5-5.5), but to  examine the opposition themselves. In examining Art. 100(c) EPC / Art.123(2), the Board took explicit care to not limit the the exact text of the application as filed, but to consider what the skilled person would directly and unambiguously derived from the application as filed (e.g., r.6.4.2, r.6.4.3(g)).

Friday, May 20, 2016 T 1641/13: three different objects agains the word "separate"

In this opposition appeal there were three different discussions that were all related to one single word in the first claim: "separate". The proprietor (Appellant) introduced that word in the claim of the discussed request, and, according to the opponent (Respondent), the word was not supported by the description, extended the protection of the patent, and was not clear. The support in the description was discussed on basis of two figures and the description of the figures. With respect to the extension of protection the Board discussed whether the product defined in the granted claims is different from the product that is defined by the claims of the main request of the Appeal. Further, the general meaning of the word "separate" was used to discuss the clarity objections of the opponent.
Because the outcome of the appeal proceedings, it seems that changing "..., separately molded side pieces..." into "..., separate, molded side pieces" makes at least an important difference.