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, July 06, 2018 T 0156/15 - Admissibility of expert evidence and tactically filed requests

Does it help to submit an expert opinion regarding added matter in a divisional application (Art. 76(1) EPC), when the expert is a well-known former chair of a technical Board of Appeal and member of the Enlarged Board of Appeal? And how far will the Board go in admitting requests submitted during oral proceedings in response to the Board’s deliberations on previous requests?

European patent No. 2 106 790, based on European patent application No. 09007867.6, was filed as a divisional application of European patent application No. 05728268.3. Opposition to the patent was filed by one opponent. By interlocutory decision of the Opposition Division, the patent in suit was maintained in amended form according to Auxiliary Request 1. This Auxiliary Request 1 only differed from the patent as granted in an amendment introduced in paragraph [0020] of the description. Claim 1 of auxiliary request 1 was identical to claim 1 of the patent as granted, which reads:

"1. A composition, which has been prepared in a solution, comprising a therapeutically effective dose of insulin or insulin derivative, ions of citric acid, and a zinc metal chelator effective to dissociate the insulin into monomers or dimers, in a form suitable for subcutaneous administration".

The amendment to paragraph [0020] of the description resulted in citric acid no longer being listed as a suitable chelator, but only as a solubilising acid, thus arguably rendering the claim novel over prior art document D2.

Both parties appealed the decision. The opponent argued, inter alia, that the patent was not in compliance with Art. 76(1) EPC, as the parent patent nowhere disclosed “ions of” of any acid as solubilising agent.

During oral proceedings, the Board came to the conclusion that by admitting submissions made by a former Board member, however eminent that person might be, it would attach undue weight to the individual making the argument rather than focus on the argument itself. Accordingly, the expert opinion was not admitted into the proceedings – rather, the Board allowed the proprietor to rely on the arguments presented therein merely as his own submissions.

Regardless, the Board found that the Main Request – identical to claim 1 as granted - does not comply with the requirements of Article 76(1) EPC, since it cannot be directly and unambiguously derived from the earlier application that the compositions of claim 1 inevitably contain the ionic form of the acids. Auxiliary requests filed sequentially in response the Board’s deliberation in this matter and on the admissibility of the requests itself were not admitted for lack of prima facie relevance or raising new issues. The Board further stressed that by adjusting its strategy to the results of the Board's deliberation, the proprietor puts the opponent in a position where it is difficult to react. For this reason, in principle, the Board could have refused these requests even without also considering the specific criteria for the exercise of its discretion to admit new auxiliary requests.

The only remaining request not violating Art. 76(1) EPC – i.e., relating to compositions containing an acid in its non-dissociated (no ions) form – then led to an inescapable trap (Art. 123(3) EPC) situation, and the patent was revoked.

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.

Friday, July 21, 2017 J 13/14 - On divisionals and translations...

Translating prohibited?

The present European patent application was filed in English as a divisional application from a parent application which was as an international application filed in German and also published in German. On entry of the parent application before the EPO, a translation into English was filed.

However, filing the divisional application in English turned out to be fatal mistake. 

According to Rule 36(2), a divisional application shall be filed in the language of the proceedings for the earlier application, while providing for an exception in case the latter was not filed in an official language of the European Patent Office, in which case the divisional application may be filed in the (non-official) language of the earlier application while having to provide a translation.

Filing the English translation did not change the language of proceedings of the parent application (which remained German). German is an official language of the EPO, so the exception of Rule 36(2) does not appear to apply. However, one cannot fault the appellant for exploring all legal remedies.

Catchwords: 

1. For the purposes of Article 76(1), first sentence, and Rule 36(2), first sentence, EPC, a European divisional application of an earlier European patent application which was filed in an EPO official language must also be filed in the EPO official language of the earlier application. Otherwise, it is filed in an inadmissible language. In this case a correction of the language deficiency by means of a translation into the language of the proceedings for the earlier application is neither required under Rule 36(2), second sentence, EPC nor is it even admissible in view of the wording of that provision and the Enlarged Board's decision G 4/08. Nor is it possible for the applicant to remedy the language deficiency in its divisional application by means of a correction under Rule 139, first sentence, EPC or by means of an amendment under Article 123(2) EPC.

2. In accordance with the established jurisprudence of the boards of appeal, a European divisional application which was filed in an inadmissible language cannot be treated as a valid divisional application by analogous application of Article 90(2) EPC.

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).

Friday, January 15, 2016 T 108/12 A divisional application in the inescapable trap

The application of this appeal procedure is a divisional application. The Opponent argued during the Opposition procedure and during the Appeal Procedure that the divisional application extends beyond the disclosure of the mother application. This case shows once again that one has to be careful in changing something in the divisional application. The details of this case are a little bit mathermatical and the reasoning of the Board is strongly based on what would the skilled person in the field of security/encryption consider to be the teaching of the original application. One point of discussion is: Does the mother application provide enough support for  f(α)=f'(α) (as claimed in the divisional application), if the mother application teaches f(α)=f'(α)=α? Another point of discussion was: Does the mother application provide enough support for "a specific signature is kept private" (as claimed in the divisional application) while the mother application discloses that, in certain embodiments, the signature is not transmitted.
Ok, there were problems with support of the divisional application in the mother application, but the proprietor finally ends up in the inescapable trap. It is somehow sad to end up in the inescapable trap.

Tuesday, December 29, 2015 J 0007/13 - Everything gets more expensive, including divisionals

You can't blame the applicant for trying, but of course the EPO charges the most recent fees for a divisional filing, not the fees that had to be paid at the filing date of the earlier application, as explained in detail by the Legal Board of Appeal in the current case. It is a matter of interpretation because the law lacks an explicit outline that a divisional might encounter higher filing and search fees. Although G 3/98 concerned Art 55 EPC, the Board in this case indicates that it should be viewed in a broader sense than only in relation to Art 55 EPC. Moreover, the filing fees serve the purpose of the filing requirements (submitted documents, etc.), not the substantive prior art issues that relate to the fictitious filing date from the earlier application (or even the priority filing).

Summary of Facts and Submissions

I. European patent application No. 11 004 301.5 was received at the EPO on 25 May 2011. It was filed as a divisional of European patent application No. 03 746 402.1 (the earlier/parent application), which had been filed on 3 April 2003.

II. Together with the application documents, the EPO received Form 1010 listing the fees to be debited in respect of the divisional application from the account of the applicant's representative. The amount of the search fee was given as 800 euro. An accompanying letter contained the explicit instruction that, if any of the amounts indicated in the form were wrong, the right amounts were to be debited from the account.

III. With a communication dated 20 July 2011 the applicant was informed that the correct amount of the search fee payable in the present case was 1105 euro, so that an additional 305 euro would be debited from the representative's account. It was further set a two-month time limit for filing reasoned objections to that finding.

IV. By fax dated 28 July 2011 the applicant did so, arguing that "since the filing date of the present application is 3 April 2003, the correct amount of the European search fee is 800 EURO" and requesting either a refund or an appealable decision.

Wednesday, December 09, 2015 T 2477/12 - Priority (yes); Priority application incorporated by reference (no)

The EPO does not like the 'herein incorporated by reference' statement in applications, which is once again made clear in this Board of Appeal decision in which an applicant filed a divisional application without a sequence listing and relied on the fact that the priority document did contain the specified sequences, and that the priority document was referred to in the specification of the divisional as 'herein incorporated by reference'. The Board states that "in view of the degenerate nature of the genetic code, a mere verbal reference to a nucleic acid sequence encoding canine pre-proBMP-7 cannot be regarded as an implicit disclosure of a particular nucleic acid sequence encoding said gene. As far as protein sequences are concerned, a mere verbal reference to an amino acid sequence of canine pre-proBMP-7 does not necessarily disclose a particular amino acid sequence, as more than one such sequence may be known."
The Board cites T 689/90 and T 1497/06 for particular conditions that need to be satisfied to allow the incorporation of subject matter from a cited document. If the applicant would have indicated particular sequences that were presented in the priority application, then the Board might have reached a different conclusion but here the applicant could only rely on a general reference to the priority document, and it did not make it unambiguously clear that the sequences relied on were the ones specifically described in the priority application.

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division posted on 4 July 2012, whereby European patent application No. 10150052.8 was refused because it did not comply with the requirements laid down in Articles 76(1) and 83 EPC.

Wednesday, October 08, 2014 J 0010/12 - The time (limits) they aren't a-changin'

In G 0001/09 the Board held earlier that further to a decision to grant there is a "deadline" for filing a divisional application one day before the mention of the grant. This final deadline is a point in time that cannot be misinterpreted or stretched and cannot be considered a time limit for re-establishment of rights or further processing (to allow the patent owner to file another divisional application after the day of the mention of the grant), as shown in this anonymous decision:

Summary of Facts and Submissions

I. The appeal lies from the decision of the Receiving Section of 13 December 2011 rejecting as inadmissible the request for re-establishment of rights and the auxiliary request for further processing in respect of European patent application No. XXXXXXXX.X, and refusing to treat said application as a divisional application of earlier application No. YYYYYYYY.Y (hereinafter the "earlier application").

II. On 30 October 2008, following examination of the earlier application, the examining division issued a decision pursuant to Article 97(1) EPC to grant European patent No. 0 000 000. The applicant was informed that the mention of grant would be published in European Patent Bulletin 00/00 of .....

III. On 23 January 2009, the applicant filed a request pursuant to Article 122(3) EPC to be re-established in its right to file a divisional application, and completed the omitted act by filing European patent application No. XXXXXXXX.X. As an auxiliary request the appellant requested further processing pursuant to Article 121 EPC.

IV. In a first communication pursuant to Article 113 EPC sent on 1 December 2009, the Receiving Section expressed its preliminary opinion that the request for re-establishment of rights was not admissible, since the right to file a divisional application could not be re-established. The Receiving Section cited case law of the Legal Board of Appeal establishing that there was no time limit for filing a divisional application. As to the request for further processing, the Receiving Section informed the applicant that it intended to treat the application as not having been filed and that the request for further processing was thus to be considered as having been filed without legal grounds. The appellant was given the opportunity to file comments.

V. In its reply of 11 February 2010, the appellant pointed to decision J 2/08 which had in the meantime referred to the Enlarged Board of Appeal a point of law with respect to the interpretation of Rule 25(1) EPC 1973 and Rule 36(1) EPC. The appellant argued that the board in J 2/08 had favoured the German practice allowing a divisional application to be filed up to the expiry of the period for filing an appeal, and that therefore the expiry of the time limit for filing an appeal was decisive for the possibility of filing a divisional application. Accordingly, this period had to be regarded as a time limit within the meaning of Article 122 EPC. The appellant further pointed to Rule 36(1) EPC as applicable from 1 April 2010 and to the notice dated 20 August 2009 indicating that re-establishment was an available remedy in case of non-observance of the time limits set in amended Rule 36 EPC (OJ EPO 2009, 481, page 485, point III). The appellant suggested that its request of 23 January 2009 should be interpreted as a request for re-establishment in respect of the time limit pursuant to Article 108 EPC (p. 5, section B.3).

VI. A second communication pursuant to Article 113 EPC was issued on 25 June 2010. The Receiving Section maintained its previous opinion and stated that the outcome in the referral G 1/09 did not affect the case under consideration, since decision J 2/08 dealt with the filing of a divisional application after refusal of the earlier application and did not concern the filing of a divisional application after the grant of a patent for the earlier application. The Receiving Section moreover refused to construe the request of 23 January 2009 as a request for re-establishment in respect of the time limit pursuant to Article 108 EPC, since this would amount to a request for correction pursuant to Rule 139 EPC. It pointed out that such a request would fail, since neither the mistake nor the correction was self-evident. Moreover, even assuming that such an interpretation was possible, a request for re-establishment into the time limit pursuant to Article 108 EPC would fail, since the omitted acts, i.e. the filing of a notice of appeal, the filing of grounds of appeal and the payment of the appeal fee, had not been completed. As regards amended Rule 36 EPC, the Receiving Section pointed to the President's comments submitted in the then pending referral G 1/09 stating that the time limits introduced in said rule did not touch on the requirement of pendency which was to be considered as an independent procedural condition and not as a period for filing a divisional application.

(...)

X. On 13 December 2011, the Receiving Section rejected the request for re-establishment and the auxiliary request for further processing as inadmissible.

XI. The appellant lodged an appeal against this decision and filed counter-arguments.

XII. In a communication dated 17 February 2014 sent as an annex to the summons to oral proceedings, the board raised objections as to the admissibility of the main and the second auxiliary requests. The board was of the opinion that the appellant's arguments did not support the main request and even contradicted its own previous submissions. With respect to auxiliary request 2, the board considered the appellant's arguments to be an unallowable venire contra factum proprium. 

(...)

The appellant further requested that a point of law be referred to the Enlarged Board of Appeal.

Reasons for the Decision

Main request: admission into the appeal proceedings

1. The appellant's main request, which was filed for the first time on appeal, amounts to asserting that the earlier application was still pending on the date of filing of patent application No. XXXXXXXX.X. In support of this request, the appellant essentially argued that the earlier application had to be regarded as pending within the meaning of Rule 36(1) EPC after the mention of the grant of a patent for that application until the (later) date of expiry of the time limit for filing an appeal, even if no appeal was actually filed.

2. In its communication sent as an annex to the summons, the board however indicated that it was not minded to admit the main request into the appeal proceedings. The board objected that the appellant's arguments did not support the main request and even contradicted its own previous submissions. Even if the board were to accept the appellant's assertions, the pending status of the earlier application would have ended in the present case on 9 January 2009 (Article 108 EPC together with Rules 126(2) and 131(4) EPC; the time limit being computed by reference to the dispatch of the decision to grant on 30 October 2008, see point II above), i.e. before the filing on 23 January 2009 of European patent application No. XXXXXXXX.X as a purported divisional application. This result was also conceded by the appellant in its letter of 11 February 2010 (p.5, section B.1).

3. The appellant did not contest the board's preliminary assessment nor did it submit any reasons for not having filed said request with the Receiving Section.

4. For these reasons, the board decided to exercise its discretion pursuant to Article 12(4) of the Rules of Procedure of the Boards of Appeal (RPBA) to hold inadmissible the main request.

Auxiliary request 1: availability of re-establishment of rights

5. The appellant argued that re-establishment of rights was a remedy available in case of loss of the right to file a divisional application in respect of the earlier application. The appellant contested the finding in the decision under appeal that the principle of Rule 36(1) EPC (as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006, Special edition No. 1, OJ EPO 2007, 89), according to which a divisional application may be filed "relating to any pending earlier European patent application", did not impose a time limit in the meaning of Article 122(1) EPC, but was a substantive condition.

6. It is established jurisprudence with regard to Article 76 and Rule 25 EPC 1973 that it is the entitlement acquired by virtue of the earlier application that gives an applicant the right to file a divisional application. This means that the rights derivable for the divisional application from the earlier application correspond to, but are also limited to, the rights existing in respect of the earlier application at the filing date of the divisional application. The entitlement to file a divisional application according to Article 76 and Rule 25 EPC 1973 is thus a procedural right that derives from the applicant's status as applicant under the earlier application (J 2/01, OJ EPO 2005, 88, points 5.1 and 6 of the Reasons; J 20/05 of 6 September 2007, point 2 of the Reasons with further references to the jurisprudence).

7. In line with this jurisprudence, the Legal Board of Appeal held that the requirement of a "pending earlier European patent application" in Rule 25(1) EPC 1973 did not establish a time limit within the meaning of Article 122 EPC 1973, but imposed a substantive requirement for the filing of a divisional application (J 18/04, OJ EPO 2006, 560 with further references to the jurisprudence). This jurisprudence has been confirmed by the Enlarged Board of Appeal in its decision G 1/09 (OJ EPO 2011, 336, point 3.2.4 of the Reasons, concurring with J 18/04, OJ EPO 2006, 560).

8. Rule 36(1) EPC as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 (Special edition No. 1, OJ EPO 2007, 89) is still based on the principle that a divisional application may be filed "relating to any pending earlier European patent application". Therefore, the finding in decision G 1/09 that the requirement of a "pending earlier European patent application" imposes a substantive requirement for the filing of a divisional application applies to Rule 36(1) EPC.

9. The board sees no reason to deviate from the established jurisprudence as set out above and is not persuaded by the appellant's arguments.

10. The appellant argues that the Enlarged Board of Appeal, in point 4.3.3 of the Reasons for decision G 1/09 (OJ EPO 2011, 336), used the term "deadline" which refers to a time limit. According to the appellant, this terminology implies that the Enlarged Board acknowledged that the requirement of a pending earlier application pursuant to Rule 25 EPC 1973 (Rule 36(1) EPC) was to be regarded as a time limit within the meaning of Article 122 EPC.

10.1 The board does not agree. First of all, the term "deadline" is broader than the terms "time limit" and "period" (for which the term "Frist" is used in the German text of the EPC). It encompasses any last date for validly performing an action and says nothing about the nature of the underlying time restriction. By contrast, the term "time limit", as a legal concept of the EPC procedural system, has a precise meaning (Rule 131 EPC). It is a period of time of defined duration which is computed by reference to a relevant event (dies a quo). Thus, the last date up until which a procedural act can be validly performed ("deadline") is the result of this computation of the period of time specified in the legal provision establishing the time limit by reference to the dies a quo (see in detail J 18/04, OJ EPO 2006, 560, points 18 to 26 of the Reasons). For these reasons, "deadline" cannot be equated to "time limit".

10.2 It is moreover clear from the context that the Enlarged Board of Appeal did not use the term "deadline" in point 4.3.3 of the Reasons for decision G 1/09 in order to refer to a time limit. 

(...)

11.2 But even taking the reference to Rule 36(1)(a) and (b) EPC as supporting the appellant's objection that there is no meaningful distinction between a condition and a time limit, the board is not persuaded. Considering that Rule 36(1)(a) and (b) EPC sets certain procedural time limits for filing divisional applications during the examination procedure, such situation does not vitiate the findings in the jurisprudence that the entitlement to file a divisional application according to Article 76 and Rule 36 EPC is a procedural right that derives from the applicant's status as applicant in respect of the earlier application, and that the requirement of a "pending earlier European patent application" in Rule 36 EPC imposes a substantive requirement for the filing of a divisional application. Contrary to the appellant's allegation, the coexistence of a (substantive) condition and (procedural) time limits which impose different time restrictions is neither inconsistent nor unacceptable. The Enlarged Board of Appeal was conscious of such a situation and stated that "... the pending status of an earlier European patent application does not mean that a divisional application relating to it can always be filed. This may be excluded by procedural provisions, ..." (G 1/09, OJ EPO 2011, 336, point 3.2.5 of the Reasons). As the appellant itself concedes, procedural time limits are superseded by an earlier termination of the pendency status of the earlier application. Conversely, the filing of a divisional application relating to a pending earlier application may be excluded due to the expiry of one of the time limits in Rule 36(1)(a) and (b) EPC. The board therefore does not see any discrepancy in the coexistence of a (substantive) condition and (procedural) time limits.

11.3 In the light of the analysis of the concept of a time limit in decision J 18/04, the appellant's further objections asserting that there is no viable distinction between a condition and a time limit likewise fail to persuade the board. The fact that the substantive requirement of a "pending earlier European patent application" can only be fulfilled within a certain time frame - and for this reason an applicant needs to proceed as if it were dealing with a proper procedural time limit - does not create a time limit under Rule 36(1) EPC which has to be met by the applicant (see J 18/04, point 7 of the Reasons).

12. Lastly, the appellant contends that re-establishment of rights was intended as an all-encompassing safety net for applicants who failed to complete an act in a timely fashion and lost their application as a result, and that the term "time limit" was not to be viewed in a restrictive manner, but covered all acts for which a time restriction applied.

12.1 The appellant's allegation is on both counts clearly unfounded and not supported by specific references to the travaux préparatoires to the EPC 1973 or EPC 2000. The board notes that the legislator had expressed its view that Article 121 EPC 1973 should be given a narrow interpretation (see the minutes of the Munich diplomatic conference for setting up a European system for the grant of patents, MR/PR/I, p. 57, no. 583). In 2000, the legislator extended the scope of application of further processing whilst at the same time restricting that of re-establishment of rights (see the basic proposal for the revision of the European Patent Convention of 13 October 2000, MR/2/00, p. 157, no. 1, p. 163, no. 6).

Also, the legislator maintained non-compliance with a time limit as an explicit requirement for both re-establishment of rights and further processing. There is no support in the travaux préparatoires for applying re-establishment of rights or further processing to any time restriction, irrespective of whether it is a time limit in accordance with the legal concept of the EPC procedural system.

12.2 The requirement of a "pending earlier European patent application" in Rule 36(1) EPC reflects considerations which take into account legal effects on material rights of the applicant, and the material interests of third parties. If the legislator had intended to find a different balance between legal certainty and substantive justice when it considered the possibility of further processing or re-establishment of rights with respect to the filing of divisional applications, it could and indeed would have substituted a time restriction complying with the legal concept of "time limit" for the substantive condition of Rule 36(1) EPC.

13. Since both further processing (Article 121 EPC) and re-establishment of rights (Article 122 EPC) require that a time limit has been missed, these remedies are not available where the filing of a divisional application does not comply with the substantive requirement of a "pending earlier European patent application" pursuant to Rule 36(1) EPC. There is thus no need for the board to consider the further requirements of these remedies and to determine the appropriate one. The appellant's request for re-establishment of rights in regard to the filing of a divisional application is not admissible. As a consequence, the appellant's first auxiliary request is not allowable.

(...)

Referral to the Enlarged Board of Appeal: admission into the appeal proceedings

17. During the oral proceedings, the appellant formulated a question for referral to the Enlarged Board of Appeal (set out in point XIII above). It argued that this request should be admitted into the appeal proceedings, since it had realised only at that late stage of the proceedings that the board did not concur with the appellant's understanding of the term "deadline" used in point 4.3.3 of the Reasons of decision G 1/09 (OJ EPO 2011, 336). The appellant had not been aware of any decision on this question. Moreover, the distinction between condition and time limit led to a manifestly unreasonable result when applied to Rule 36(1) EPC.

18. The board cannot accept that its disagreement on the point of law became apparent only at the oral proceedings. In the communication accompanying the summons, the board had dealt with this issue in points 4 to 12, especially points 9 and 10, and had given a negative opinion. Moreover, this issue had already been under consideration in the proceedings before the Receiving Section (see the appellant's letter of 22 July 2011, section 2.2). The appellant had thus had ample time and opportunity to request a referral earlier in the appeal proceedings. Instead, it presented this request only at the oral proceedings after the board had given a negative opinion with respect to the first auxiliary request.

19. For these reasons, the board did not admit the appellant's request for a point of law to be referred to the Enlarged Board of Appeal into the appeal proceedings.

20. Since none of the appellant's requests is allowable, the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:J001012.20140513. The whole decision can be found here. No file wrapper can be linked (anonymous). Photo by Guus Hateboer.