Tuesday, January 17, 2017 T 820/14 - Not wrong but not right either

During the search in the international phase of this application, the searcher raised a non-unity objection; identifying fourteen different groups of inventions among the application's 23 claims. To support the non-unity, it is explained that the claims have different technical objects with reference to the ISO/IEC Standard 15408. 

The applicant does not agree and does not pay additional search fees. Finally, a second auxiliary request filed during oral proceedings is not admitted by the Examining division, under R. 137(3) EPC.  The Examining division supports the decision not to allow the second auxiliary request into the proceedings by no less than 5 grounds--some of which are related to the lack of unity problems. 

The board considers that some of these five grounds are wrong, but also concludes that some are correctly within the discretion of the first division. The board acknowledges that in a case like this, G 7/93 seems to say that the board should not put its own views in the place of the first instance's. However, it concludes that in this case it should still do so. (Decision is in German).

Thursday, October 06, 2016 T 971/11 - Too late for first instance but admissible in appeal

After you missed the first train, can you catch the next?

The opponent filed a document B1 just before the first-instance oral proceedings. The opposition division considered the document late and not prima-facie relevant. The document was not admitted into the proceedings. The document is again submitted with the statement of the grounds. 

On the one hand the appeal board should only verify that the opposition division's decision not to admit the document was not unreasonable. On the other hand, they need to make up their own mind when the document is presented with the appeal? The board discusses this dilemma, and in the end does not hold it against B1 that is was already rejected by the opposition division. B1 is admitted into the appeal procedure. Another new document that was filed just before the oral proceedings in appeal was not admitted.

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, February 24, 2015 T 1214/09 - Discretion to allow amendments

The Examining Division refused a European patent application after concluding lack of inventive step in view of document D2 of the subject-matter of claim 1 of a main request . A first and a second auxiliary request were not admitted into the proceedings under Rule 137(3) EPC. The Board reviews these decisions and concludes that, in so far as the Examining Division did apply the correct criteria in exercising its discretion under Rule 137(3) EPC, it did so in an unreasonable way and thereby exceeded the proper limits of its discretion.

Summary of Facts and Submissions

I. The applicant (appellant) lodged an appeal against the decision of the Examining Division refusing European patent application No. [...].

II. The contested decision cited the following documents: D2: [...] and D4: [...]

The Examining Division came to the conclusion that the subject-matter of claim 1 of a main request lacked an inventive step in view of document D2. A first and a second auxiliary request were not admitted into the proceedings under Rule 137(3) EPC.

Monday, February 23, 2015 T 0233/12 - Heared, but not listened to?

A European patent application was refused during  oral proceedings while no one was present for the appli­cant. In preparation for the oral proceedings, the applicant had filed amended claims along with corresponding arguments. The exa­mining division considered that the pro­posed amendments "prima facie [...] contradict[ed] the requirements of Articles 84 EPC and/or 123(2) EPC" and therefore did not give its "consent to the proposed amendments under Rule 137(3) EPC". 

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division to refuse European patent application No. 07103013.4.

II. The decision was delivered during oral proceedings. In preparation for them, the applicant had filed amended claims along with corresponding arguments. At the oral proceedings however no one was present for the appli­cant. The exa­mining division considered that the pro­posed amendments "prima facie [...] contradict[ed] the requirements of Articles 84 EPC and/or 123(2) EPC" and therefore did not give its "consent to the proposed amendments under Rule 137 (3) EPC". The application was then refused under Article 97 (2) EPC with reference to Article 78 (1) (c) EPC.

Friday, July 11, 2014 J 15/13 - A weapon for a competitor to delay grant?

This is an appeal by an applicant (Novozymes A/S) against  a decision of the Legal Division rejecting its request to resume the grant proceedings stayed pursuant to Rule 14(1) EPC. The grant proceedings were stayed at a late stage: only after the applicant filed (minor) amendments in response to a R.71(3) communication, a third party (Danisco US Inc) requested that the proceedings for grant be stayed pursuant to Article 61(1) EPC / Rule 14(1) EPC. The decision extensively discusses the requirements of Rule 14(1) (conditions for stay), Rule 14(3) (discretion of the EPO to set a date for resumption regardless of the stage reached in the national -entitlement- proceedings) and balancing all valid interest of the parties.