Tuesday, February 12, 2019 T 0592/15 - No postponement of decision

In this examination appeal case, the application as filed comprised three independent method claims (claims 19, 39 and 40). However, after an objection under Rule 43(2) EPC in the European search opinion, all claim sets submitted by the applicant during the examination phase, as well as those filed with the grounds of appeal, contained only one independent method claim.

A month prior to the oral proceedings, the applicant filed a main request and two auxiliary requests, all containing three independent method claims. Four days before the oral proceedings, the applicant informed the Board that he would no attend the oral proceedings. He further advised that "it is intended to file a divisional application based upon the present application and it is requested that the present application be maintained pending until the divisional application has been filed".

The Board found the filing of more than one independent method claim at this stage of the proceedings to be prima facie objectionable under Rule 43(2) EPC. Accordingly, the appellant's main, first and second auxiliary claim requests were not admitted into the proceedings.

As there was no admissible claim request of the appellant, the appeal was to be dismissed. The Board found that the request of the applicant to postpone the taking of this actual decision at least until a divisional application had been filed would require the Board to investigate whether the appellant has eventually indeed filed a divisional application and, as the case may be, to even postpone the oral proceedings. Moreover, the Board found that the appellant would gain complete control over the duration of the present appeal proceedings including the possibility of having them pending ad infinitum if no divisional application was filed at all.

Consequently, the Board refused the appellant's request to postpone the taking of the decision on the allowability of the appeal and decided to dismiss the appeal.

Monday, September 10, 2018 T 2187/14 - Filing new machine translations until understandable?

In this appeal in opposition, the opponent filed a Japanese prior art document E10 and a barely understandable machine translation E10* with the grounds of appeal. In the Board's preliminary opinion, annexed to the summons for oral proceedings, the Board indicated that "E10* is a barely understandable translation of E10 which the Board does not intend to consider". In response hereto, the opponent submitted a second computer translation E10**.  Did the Board see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case? Or is a certified translation needed at the earliest opportunity? If the Board does allow the first and the second, bad, translations into the proceedings, can they be used in full?

Tuesday, July 24, 2018 T 1029/14 Keep Out! Fresh ground of opposition?

Like the decision discussed in the previous blog, the Board in this opposition appeal case refused to admit, due to lateness of the submission, an inventive step attack based on a single document (D1), which had been used in opposition to substantiate lack of novelty only. The ground of inventiveness was mentioned in the Notice of opposition, but not substantiated. The Board's refusal under Art 13(3) RPBA was unsurprising, given that the arguments for lack of inventiveness were presented for the first time only 2 working days before oral proceedings were held, and the patent proprietor would have needed an adjournment to prepare its response.

The Board went further, however, and also considered whether this inventive step attack constituted a fresh ground of opposition that could be admitted into proceedings only with the permission of the patent proprietor. The appellant argued that the new attack was admissible, for the reasons allowed in T 0131/01.

The Board took the view that the facts in this case were different, because the appellant had made no suggestion in opposition proceedings that the claimed subject-matter would be obvious when starting from D1, should it be found to be novel. The reasoning of T 448/03 was followed, and the Board concluded that an objection concerning inventive step is to be considered a fresh ground, if it is raised for the very first time in the appeal proceedings, irrespective of the fact that the document used as the starting point for the inventive step objection was the same document as used before to attack novelty.

Thursday, August 24, 2017 T 293/12 - First substantive response after summons

Will the board admit a 'just in time' submission?

What is the position of a party in opposition appeal who did not respond to the statement of the grounds, but did file a submission in response to the summons to oral proceedings? 

In response to the notice of appeal, one of the opponents (respondent 2) filed a brief letter stating that it would await the statement of grounds of appeal and announced its intention to submit a reply later in due course. After the statement of the grounds was filed, the board set a time limit of 4 month to file such a response. However, no further submissions were filed until a month before oral proceedings. 

The proprietor considers that the opponent has lost it chance to file arguments, by not filing a timely response to the statement of the grounds--since the opponent had not filed a reply to the grounds of appeal, one cannot regard its later submission as an amendment to a party's case. On the other hand, the opponent considers the submission to be just further arguments, and sees no reason why they should not be admitted. The board find a middle ground, taking the submission into account but as a later amendment to a party's case.

Tuesday, August 12, 2014 T 0958/11 - 'leaving respondent in the dark'

This appeal decision relates to admissibility of certain arguments regarding a reworked prior art experiment in the context of novelty and relates to sufficiency of disclosure. This is an appeal that lies from the decision of the Opposition Division. In this appeal case one of the opponents is the appellant, the patent proprietor the respondent.
 
The novelty of the product as granted was contested on the basis of two experiments in which a prior art process was reproduced. There was no discussion about the first experiment. Already in response to the ground of appeal the respondent expressed severe doubts regarding the proper reworking of the second prior art example, in particular as regards the concentration of the starting materials before mixing. Not earlier than at the oral proceedings, the appellant contested these findings. The respondent expressed its surprise regarding the appellant's statements and requested an adjournment of the oral proceedings to carry out counter experiments in case the board would conclude to a lack of novelty on the basis of the second experiment. In this decision the board clearly expressed its annoyance about the behavior of the appellant. The board finds a solution in Art. 13 RPBA to end the discussion about the second experiment.

In this blog posting, the sufficiency of disclosure discussion is ignored but it is interesting for readers who look for case law in which claims are refused because of a lack of sufficiency of disclosure.



Citations from the decision:

[...] 

Reasons for the Decision

1. Main request - Novelty

1.1 The novelty of the product according to claim 1 as granted was contested on the basis of two experiments in which the process disclosed in example 2 of D1 was reproduced.

1.2 Regarding the first experiment, the board agrees with the findings of the opposition division that this reworking is manifestly not acceptable, as it does not correspond to the strict reproduction of said example, the mixing having been carried out in an agitated reactor while in D1 it occurred in a reactor having a Y form.

1.3 Concerning the second experiment, the respondent expressed severe doubts regarding the proper reworking of example 2 of D1, in particular as regards the concentration of the starting materials before mixing.
The appellant contested these findings and stated that the concentrations of the starting materials cerium nitrate and zirconyl nitrate were conventionally expressed in g/l of CeO2 and ZrO2. The concentrated starting materials were then diluted with water so as to exactly obtain the same concentrations before mixing as in example 2 of D1.
The respondent expressed its surprise regarding the appellant's statements and requested an adjournment of the oral proceedings to carry out counter experiments in case the board would conclude to a lack of novelty on the basis of the second experiment.
The board observes that the information provided at the oral proceedings by the appellant is of such an importance that it would have required an adjournment of the oral proceedings, because - as argued by the respondent - the concentration is one of the key features of the invention (see in particular claim 15 as granted which requires a low concentration of the starting materials).
Since the respondent's doubts had already been raised with its response to the grounds of appeal, i.e. almost three years ago, the board objects to the appellant's silence during the written procedure on this important feature. The oral explanations of the appellant revealed that it was perfectly aware of the obscure presentation of the relevant part of its test. Instead of redressing this defect, the appellant chose to leave the respondent in dark until the oral proceedings.
The appellant's behaviour not to comment during the written procedure on this relevant issue could - if done with the intention to surprise the respondent during oral proceedings - amounts to an abuse of procedure.
At least its explanations during the oral proceedings as to the concentrations of the starting materials and as to the calculation method used constitute an amendment to a party's case, the admittance of which lies within the board's discretion (Article 13(1) RPBA).
Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues that the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA). This is the case here. Having uncovered the concentration of the starting materials and the calculation method, the appellant questioned the relevance of the respondent's doubts as to the proper reworking of example 2 of D1. To show that these doubts prevail it would have now been up to the respondent to perform comparative tests. Whereas these could have been easily performed during the last almost three years, had only the appellant reacted directly to the respondent's response to the grounds of appeal, it is obvious that this is not possible on the day of the oral proceedings.
The Board therefore exercises its discretion not to admit the latest amendment of the appellant's case into the proceedings.
In the absence of a clear and unambiguous reproduction of example 2 of D1, and thus, of a direct and unambiguous disclosure of the claimed subject-matter, the board therefore decides to reject the evidence submitted for lack of novelty.

1.4 The objection of lack of novelty was solely based on the reworked example 2 of D1. None of the documents cited during the opposition proceedings disclose the subject-matter of the four independent claims of the main request at issue. Therefore, the board is satisfied that these claims, and those which depend thereon, meet the requirements of Article 54(1) and (2) EPC.

[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T095811.20140702. The whole decision can be found here. The file wrapper can be found here.
Photo by Vinoth Chandar obtained from Flickr.

Thursday, June 12, 2014 T 2599/11 - Re-instating broader claims in opposition appeal

This is an appeal by the patent proprietor against a decision of the Opposition Division. An issue to be resolved was whether the proprietor was allowed at this stage to file a request with a broader claim than decided by the Opposition Division.

Reasons for the Decision

1. Admissibility of the appeal, Article 110 and Rule 101(1) EPC

1.1 With the statement setting out the grounds of appeal the appellant had filed a main request and first and second auxiliary requests, all broader in scope than the claims defended by the appellant before the opposition division.

The respondent has argued that these requests were inadmissible, since they were not subject of the decision under appeal, and that therefore the appeal was inadmissible.

However, whether the appeal is admissible or not, does not depend on the admissibility of these requests, but on the requirements Rule 101(1) EPC refers to.

1.2 Rule 101(1) EPC ("Rejection of the appeal as inadmissible") stipulates that if the appeal does not comply with Articles 106 to 108, Rule 97 or Rule 99, paragraph 1(b) or (c) or paragraph 2 EPC, the board of appeal shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 EPC has expired.

[…]

It follows from the above that the appeal complies with the relevant legal provisions listed in Rule 101(1) EPC and is therefore admissible.

2. Admittance of the sole request of the appellant

2.1 The sole request was filed after the statement of grounds of appeal. Therefore it has to be decided whether this request can be admitted into the proceedings according to the Rules of Procedure of the Boards of Appeal (RPBA).

2.2 In principle the statement of grounds of appeal shall contain a party's complete case which has to be taken into consideration by the board pursuant to Article 12(2) RPBA, if it does not hold facts, evidence or requests inadmissible which could have been presented or were not admitted in the first instance proceedings (Article 12(4) RPBA). Nevertheless, this does not mean that amendments to a party's case are excluded from the appeal proceedings. Rather they are allowable under the requirements of Article 13(1) RPBA, namely under the discretion to be exercised by the board with respect to the complexity of new submissions, the current state of the proceedings and the need for procedural economy. Moreover Article 13(3) RPBA rules that amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the board or the other parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.

2.2.1 The appellant's case was set out in the statement of grounds of appeal dated 27 March 2012 in which the patent was defended inter alia with a first auxiliary request. After having been filed its case, the appellant amended its first auxiliary request insofar as in claim 1 the word "flow" was replaced by "floor", the expression "characterized in that" was moved and claims 21, 22 and 32 to 39 were deleted (cf claims 1 to 30 of auxiliary request Ib filed on 18 June 2013). With the amendments mentioned in point III above, this request finally became the sole request in the appeal proceedings.

2.2.2 Exercising its discretion in line with the limits set out above the board considers that these amendments are marginal as they can be understood effortless and legally assessed. Furthermore there is no risk of misunderstanding of the amendments by the respondent and the board as well and moreover the amendments do not affect the substance of the claimed matter. Therefore it can reasonably be expected that all participants of the procedure are in a position to deal with the amendments easily and without adjournment of the oral proceedings (Article 13(3) RPBA).

2.3 The admittance of the sole request into the appeal proceedings under Article 13(3) RPBA however, does not per se mean that there are no further hurdles to overcome with respect to its admissibility. Since pursuant to Article 12(4) RPBA it remains to decide whether this request has to be considered as inadmissible for the reason that it could have been presented or was not admitted in the first instance proceedings before the opposition division.

2.3.1 The board has no doubt that the sole request could have been filed already before the opposition division, because the arguments that were discussed in the appeal proceedings regarding inventive step were already raised with the respondent's notice of opposition. Apart from this the sole request's claims correspond in substance to claims 1 to 20, 23 to 31 and 39 of request A at stake in opposition proceedings, which was filed on 25 June 2010, but later withdrawn in the oral proceedings before the opposition division and subsequently substituted by requests B to E, on which the opposition division delivered at the end its decision. Nevertheless, the board exerted its discretion to admit the sole request of the appellant to the procedure for the following reasons:

2.3.2 The purpose of the opposition appeal proceedings is mainly to give the losing party the possibility of challenging the decision of the opposition division on its merits, cf decision G 9/91 (OJ EPO 1993, 408) and opinion G 10/91 (OJ EPO 1993, 420), point 18 of the reasons. This implies that appeal proceedings are not about bringing an entirely fresh case. Rather, the decision of the board of appeal will in principle be taken on the basis of the subject of the dispute in the first instance proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings which in principle confines the parties range to amend the subject of dispute in second instance proceedings (T 1705/07, point 8.4 of the reasons).

2.3.3 In this regard the respondent has submitted that the appellant was not allowed to file requests that were broader in scope than the request on which the decision was based, since the function of appeal proceedings is to give a judicial decision upon the correctness of the decision taken by the opposition division.

2.3.4 Contrary to the submissions of the respondent the present board is of the opinion that the purpose of the appeal proceedings as defined in G 9/91 and G 10/91 does not prevent the appellant from submissions and requests which after revocation of its patent by the opposition division revert to a more broadly worded version in appeal proceedings than the claims defended in opposition proceedings, if these broader claims do not amount to a completely fresh case.

2.4 Thus, with respect to Article 12(4) RPBA the board had to consider whether the non-filing of the sole request or the withdrawal of the similar request A in the opposition procedure prevented the opposition division from giving a reasoned decision on the critical issues, thereby compelling the board either to give a first ruling on these issues or to remit the case to the opposition division, cf Case Law of the Boards of Appeal of the EPO, 7th edition 2013, IV.E.4.3.2 c).

2.4.1 In this context the respondent referring to decision T 361/08 has argued that the first auxiliary request filed with the statement of grounds of appeal was to be rejected as inadmissible. In this decision (see point 13 of the reasons, last paragraph) the board stated that the fact alone that the main request in question was submitted and subsequently withdrawn in the first instance proceedings was a sufficient reason not to admit this request into appeal proceedings. The present board, however, does not subscribe to this general statement but it endorses the more restricted statement in the third paragraph of point 14, that it is not the patentee's right to revert to granted claims if these claims did not form a basis for the decision under appeal because the request comprising these claims was withdrawn in the first instance proceedings.

2.4.2 In the present case, claim 1 of the sole request did indeed form a basis for the opposition division's decision. As it is clear from the facts and submissions point IV, the opposition division decided on inventive step of auxiliary request E and revoked the patent after the broader requests A, filed on 25 June 2010, and B, C and D had successively been withdrawn in the course of the oral proceedings. Claim 1 of auxiliary request E is a combination of granted claims 1, 23 and 26, whereas claim 1 of the sole request in appeal proceedings is a combination of granted claims 1 and 23. Hence, it is broader than claim 1 on which the opposition division decided. However, this does not exclude the appellant from defending its patent on the basis of the sole request.

2.4.3 Since all features of claim 1 of the sole request are present in claim 1 of request E which formed the basis of the impugned decision and on which the opposition division came to a negative finding of its subject-matter regarding inventive step, the opposition division has also expressed itself - at least implicitly - on the subject-matter present in the sole request. Therefore the board is of the opinion that the present case is neither a fresh case in the sense of G 9/91 and G 10/91 nor a case which Article 12(4) RPBA intends to avoid by granting the board the discretionary power not to admit requests which could have been presented in the first instance proceedings. Finally it should be noted that the critical issues in the opposition and the appeal proceedings were identical in so far as the question had to be answered whether the claimed subject-matter involves an inventive step in view of documents D8 and D3 or not.

2.4.4 In conclusion it is summarized that the sole request of the appellant does not bring an entirely fresh case and the decision of the board can be taken on the basis of the subject of dispute in the first instance proceedings. For these reasons the sole request was admitted into the proceedings.

This decision has European Case Law Identifier: ECLI:EP:BA:2013:T259911.20131126. The whole decision can be found here. The file wrapper can be found here.