Friday, September 21, 2018 T 525/13 - Generalizing from US provisional application

Cat on Microwave

This opposition appeal illustrates the limitations when claiming priority from a US provisional application. While a 'manual cook button' is considered to be implicitly, yet unambiguously and directly derivable from the US provisional application, the claimed microprocessor was considered to represent a different invention as the US provisional application only described a microcomputer.

(In this case, the Board also considers an alleged substantial procedural violations to be merely "a number of unfortunate events", which was communicated by the Board to the parties earlier:

"... it appears to the Board that the alleged substantial violations are rather to be seen as a number of unfortunate events. It is in particular unfortunate that the opposition division did not react sooner to the special request of the representative of the appellant. On the other hand the Board cannot read from the appellant's letter of 13 December 2012 that if the EPO would not be able to accommodate the representative of the appellant, she would not be able EPO Form 3350 6/7T0525/13-3.5.02 to attend the oral proceedings. It is also unfortunate that the respondent, even though there is no legal obligation to do so, did not forward a copy of its submission of 13 December 2012 directly to the appellant, knowing that the appellant would have to obtain a translation and that it would not be unlikely that the letter was not received by the appellant from the EPO before the Christmas holidays. Finally it is standard practice that examiners do not speak directly with a party in inter partes proceedings and all communication with the EPO goes via the formalities officer.")

Friday, November 20, 2015 T 0893/13 - Reimbursement of earlier appeal fee

This appeal follows an earlier appeal against the decision of the examination division to refuse the patent application based on a.o. a lack of clarity. In the earlier appeal, the examining division rectified its decision under Article 109(1) EPC and continued examination, only to decide (again) that the application did not comply with a.o. Article 84 EPC.

In the first appeal, the appellant did not request reimbursement of the first appeal fee, nor did the examining division order such reimbursement of its own motion. However, after rectifi­ca­­tion, the appellant did request reimbursement of the first appeal fee. In the present appeal, the appellant now (again) requests that the fee for the first appeal be reimbursed.