Thursday, July 18, 2019 G 2/19 - Breaking: Haar belongs to Munich

We refer to our previous blog post about referral G 2/19 (and this related post). In G 2/19, the following questions were referred to the Enlarged Board:

(1) In appeal proceedings, is the right to oral proceedings under Article 116 EPC restricted if the appeal is prima facie inadmissible?

(2) If the answer to Question 1 is yes, is an appeal against the decision to grant a patent prima facie inadmissible in this sense, which Appeal has been filed by a third party within the meaning of Article 115 EPC and which has been substantiated by arguing that there is no alternative remedy under the EPC against a decision of the Examining Division not to consider the third party’s objections concerning the alleged contravention of Article 84 EPC?

(3) If the answer to one of the first two questions is no, can the Board hold oral proceedings in Haar without violating Article 116 EPC, if the appellant complains that this location is not in conformity with the EPC and requests that the oral proceedings be moved to Munich?

Today, the following communication was posted on the EPO website:

Haar, 17 July 2019 

Yesterday the Enlarged Board of Appeal announced its decision in case G 2/19 at the conclusion of the oral proceedings. The first referred question was rejected as inadmissible. The second and third referred questions were reformulated and answered as follows: 

1. Ein Dritter im Sinne von Artikel 115 EPÜ, der gegen die Entscheidung über die Erteilung eines europäischen Patents Beschwerde eingelegt hat, hat keinen Anspruch darauf, dass vor einer Beschwerdekammer des Europäischen Patentamtes mündlich über sein Begehren verhandelt wird, zur Beseitigung vermeintlich undeutlicher Patentansprüche (Artikel 84 EPÜ) des europäischen Patents den erneuten Eintritt in das Prüfungsverfahren anzuordnen. Eine solchermaßen eingelegte Beschwerde entfaltet keine aufschiebende Wirkung. 

2. Mündliche Verhandlungen der Beschwerdekammern an deren Standort in Haar verstoßen nicht gegen die Artikel 113 (1) und 116 (1) EPÜ. 

The reasons for the decision will be issued in writing in due course.

It would appear that the Enlarged Board found that Haar belongs to the greater Munich area, thus not contradicting the provisions of the EPC concerning the location of the EPO.

Furthermore, a third party within the meaning of Article 115 EPC, who has filed an appeal against the decision to grant a European patent, has no right to an oral hearing before a Board of Appeal of the European Patent Office on his request to re-examine allegedly unclear patent claims (Article 84 EPC) in the European patent.

Tuesday, April 09, 2019 G 3/19 - Patentability of plants exclusively obtained by essentially biological processes: the referral

The full text of the referral by the President to the Enlarged Board of Appeal relating to the patentability of plants exclusively obtained by essentially biological processes is available online. Also see our earlier posts (w.r.t annoucemcent, earlier annoucement,  T 1063/18 and first news message)). The accompanying letter is dated 4.04.2019 and was received in the BoA Office on 08.04.2019.

Under Article 112(1)(b) EPC the President of the European Patent Office refers the following points of law to the Enlarged Board of Appeal:

1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?

2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant

to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

Sunday, April 07, 2019 News: President referred questions to the Enlarged Board on patentability of plants exclusively obtained by essentially biological processes

Following his earlier annoucement, the President has submitted questions too the Enlarged Board of Appeal which relate to the patentability of plants exclusively obtained by essentially biological processes and to decision T 1063/18 (also here). According to a news meesage from the EPO posted last Friday, the President of the EPO seeks the Enlarged Board of Appeal to clarify the applicable legal framework.
The full text of the referral is not yet available. It will be interesting to see which clarifiation the Preseident seems to be required as one may argue that T 1063/18 has already given the answer, as that decision analyzed whether conclusion from G 2/12 needed any adaptations after the introduction of Rule 28(2) EPC subsequent to a notice from the EU Commission (no). Also, the news message below does not mention any conflicting decision, which is needed for the referral to be admissable under article Art.112(1)(b) EPC. (However, also with an inadmissible referral, the Enlarged Board may give a clarification as it did in the software decision G 3/08). So, the full text will be highly interesting, we will keep you posted!

Wednesday, April 29, 2015 T 1791/12: referall to Enlarged Board of Appeal as a last resort

Now and then, when I read a decision of a Board of Appeal, I get a sad feeling because the patent owner tries everything to maintain his patent or to maintain it in amended form and it seems that none of his argument are convincing and none of his auxiliary requests solve the problems. "Dear Board, my claims are inventive, there are no violations of Art. 123(2) and I have a number of auxiliary requests which should be admitted to the procedure and solve all the problems." And then the answers of the Board are: "No, No, No." Under EPC 1973 a last resort for the patent owner was to request the Board to refer the case to the Enlarged Board of Appeal "in order to assume the uniform application of law". Maybe you can guess the answer to this question.
This appeal extends from a decision of the Opposition Division. The Opponent and the Proprietor filed the appeal. Besides a discussion about novelty, inventive step, an important part of the decision relates to violations of Art. 123(2) and intermediate generalization. In this context, the proprietor defined a question that should be referred to the Enlarged Board of Appeal and its subject relates to intermediate generalizations. 


Summary of Facts and Submissions

(...) 

IV. With letter dated 28 June 2013, the proprietor requested the following question to be referred to the Enlarged Board of Appeal according to Article 112(1)(a) EPC:"What principles apply for judging an intermediate generalization in sense of Art. 123(2) EPC especially in view of the differing interpretations as given in T1906/11 and T0248/12?"

Friday, June 27, 2014 T 1577/10 - Keep your eye on the ball

As the world championship is well under way in Brazil, a decision related to a football is appropriate. Claim 1 concerns  "A laminated ball (1) for a ball game". 

The claim contains a feature of which the clarity was questioned in opposition:  a peripheral edge portion of the leather panel is folded toward an inside by about 90° or by about 180°. 

The word 'about' is suspect in Claim drafting. The guidelines tell us that (F-IV, 4.7)"Particular attention is required whenever the word "about" or similar terms such as "approximately" or "substantially" are used. (...) In each case, the examiner should use his judgment as to whether the meaning is sufficiently clear (...)".

Claim 1 of the main requests was based on a combination of dependent claims (claims 1, 2, 3 and 4 as filed), and amendments taken from the description. 

Given the fact that this claim was amended after grant, even including part of the description, one might fear that the Board will take this opportunity and do a full examination of the Claim, including clarity. 

Interestingly, after this board made its decision during the Oral proceedings on 26.03.2014, but before the decision was published on 16.06.2014, another board referred a question to the Enlarged board which deals with exactly this problem. The question is currently pending before the Enlarged board in referral case G 3/14 - (referred in T 0373/12).

Let's see what this board has to say about the matter.

Reasons for the Decision

3.2 Clarity, Article 84 EPC

3.2.1 The appellant has argued that the feature "a peripheral edge portion of the leather panel is folded toward an inside by about 90° or by about 180°" is unclear as such, and renders the claim unclear, Article 84 EPC.

3.2.2 The Board is aware of the current debate regarding the question whether and to what extent a board has the power under Article 101(3) EPC to examine clarity of amendments in opposition or a subsequent appeal made by a straightforward, literal combination of granted claims in correspondence with their dependency (see T373/12 of 2 April 2014 subsequent to the present decision and referring the question to the Enlarged Board). Whereas it was generally accepted that Article 101(3) EPC authorized the full examination of amendments for compliance with the requirements of the EPC (cf. G9/91, reasons 19) and that this also included those of Article 84 EPC (but not those of Article 82, G1/91) the broad view hitherto was that this applied only to the extent that an amendment introduced a contravention of a requirement, cf. CLBA, II.A.1.4 and T301/87 (OJ EPO 1990, 335) cited therein, more recently T478/09 and T589/09. A differing view has emerged in recent case law, see in particular T1459/05, T459/09, T681/00, T1324/09 and T409/10. T1459/05, T1324/09 and T681/00 held that a Board may exceptionally examine such an amendment for clarity, for example if it prevents a meaningful assessment of patentability, or raises to prominence a contradiction previously hidden. Though T459/09 (followed by T409/10 without comment) considered such amendments to be substantial and thus in principle always open to examination for clarity, there also, the amendment in question brought to the foreground a contradiction between newly juxtaposed features when considered in the light of the description, which would not have been immediately apparent in the granted claims.

3.2.3 In the present case the relevant features concern the peripheral edge of the panel being folded toward an inside by about 90° or by about 180°, which literally repeats the wording of granted claims 2 and 3, each dependent on granted claim 1. Issue is taken with the term "about" and whether the angle should be measured at the middle of the panel or at the edge, meaning that alleged lack of clarity would be intrinsic to the wording of the features rather than arising from a sudden contradiction with other features. Granted claims 2 and 3 are moreover the next highest ranking claims after claim 1 and relate to the most distinctive feature of the two embodiments, the fold angle, and thus can hardly be considered to have been hidden from view in the granted patent. Finally, this particular feature is not critical to the assessment of novelty or inventive step. Therefore, in so far the Board might have been inclined to follow this more recent case law (it is not) it finds that the exceptional conditions of the cited case law do not apply in the present case. Irrespective, the two fold angles distinguish the two embodiments as shown in the figures in a manner that the Board believes the skilled person with his mind willing to understand will be likely to understand with no undue effort. Prima facie therefore such a lack of clarity objection seems of little substance.

3.2.4 For these reasons the Board decided that it did not have the power under Article 101(3) EPC to examine the issue.

This decision has European Case Law Identifier ECLI:EP:BA:2014:T157710.20140326. The whole decision can be found here. The file wrapper can be found here.

Photo by Steven Depolo obtained from Flickr.