Tuesday, April 13, 2021 T 488/18 - Withdrawn request for Oral Proceedings need not be made by orignal party for reimbursement

Who exactly should ask for the refund?

During this opposition an insolvency was started for the assests of the opponent. A preliminary insolvency administrator was appointed, who then became a party to the proceedings in opposition by way of a statutory change of party and took the place of the former opponent and respondent. An attempt was made to interrupt the proceedings under Rule 142(1)(b) EPC  or under Rule 84(2), first sentence, EPC but these were rejected. 

When the only request for oral proceedings was withdrawn from the now opponent, the question presented whether this suffices for a 25%  reimbursed of the appeal fee under Rule 103(4)(c) EPC. In a another Board decision (T 777/15), this was denied. The board provides a deep analysis for this point, and comes to the different conclusion that a reimbursement is possible. The following head note was provided:

There may also be a possibility of repayment of the appeal fee under Rule 103(4)(c) EPC if a request for oral proceedings has not been withdrawn by the appellant but by another party to the proceedings who has not filed an appeal (see points 8.3 - 8.9 of the grounds for the decision). (English MT translation by Deepl.)

Eine Rückzahlungsmöglichkeit der Beschwerdegebühr gemäß Regel 103 (4) c) EPÜ kann es auch dann geben, wenn ein Antrag auf mündliche Verhandlung nicht vom Beschwerdeführer zurückgenommen wurde, sondern von einem anderen Verfahrensbeteiligten, der keine Beschwerde eingelegt hat (siehe Nrn. 8.3 - 8.9 der Entscheidungsgründe).

Monday, January 20, 2020 Breaking news - Decision in case T 844/18 on the CRISPR gene editing technology

Last week, oral proceedings took place in T 844/18 on the CRISPR gene editing technology and a decision was taken at the end of the oral proceedings. On Friday, the news message below was posted on the EPO website.

Tuesday, May 29, 2018 EP2771468 - Decision of OD in Crispr case (first instance)

You can't slice up a priority right

Today we have the  first instance decision in the opposition against European patent 2771468 having the title "ENGINEERING OF SYSTEMS, METHODS AND OPTIMIZED GUIDE COMPOSITIONS FOR SEQUENCE MANIPULATION" (PCT/US13/74819). The grounds for the decision were published 26 March 2018.


We usually only have  board of appeal decisions, but I'm told this is an important case as it relates to the CRISPR technique of DNA manipulation. It is moreover interesting because of its scale and the issues it raises. There were 9 opponents, 255 documents filed, 72 auxiliary request and a 40-page decision.

The priority documents are US provisionals and each have a number of natural persons as inventors/applicants. I count a total of 12 different natural persons who are applicants to the priority documents in various combinations. It turns out that for some of these persons the priority rights had not been transferred to an applicant of the PCT application, or at least evidence of a transfer acceptable to the OD was not filed.  As a result, the priority claim was objected to the by the opponents. The proprietors have numerous arguments why this objection should not be allowed, but in the end the priority claim is not accepted. Because of the invalid priority, the patent was found not novel.

The underlying problem appears to be hidden in reasons 75-75.1: one of the inventor/applicants of the provisional was not an inventor in the sense of the US law. Accordingly, his successor in title was left of the PCT application, probably to satisfy US law. That one of the persons, who is not an inventor, misses as an applicant on the PCT application now appears to doom this patent in Europe.

Notice of appeal has already been filed, so we'll be interested to see how this case progresses.  

Tuesday, June 28, 2016 T 1402/13 - Deemed to be withdrawn as no renewal fee paid, but when?

If the renewal fee is not paid by the due date, and also not by the end of the 6-month period to pay it with an additional fee, when is the European application deemed to be withdrawn? There seems to be no doubt about it since the November 2015 Guidelines for Examination: it reads in A-IV, 1.1.1 "In the event of non-payment of a renewal fee by the due date (Rule 51(1)), the application is pending up to the last day of the six-month period for payment of the renewal fee with an additional fee (Rule 51(2)), and a divisional application may still be filed during this period – even if the fees are ultimately not paid. Deemed withdrawal of the application takes effect on expiry of the six-month period." The Guidelines paragraph reflects what was written in the OJ 2007, SE 4, page 86, item 4: "Article 86(3) EPC is also deleted and the legal consequence of a failure to pay the renewal fee in due time is added to Article 86(1) EPC. It is emphasized that this does not modify the current situation, and under the Implementing Regulations to the EPC 2000 the application shall only be deemed to be withdrawn if the renewal fee and any additional fee have not been validly paid within the prescribed grace period for payment (see Rule 51(2) EPC 2000)." Nevertheless... the Board decided differently in this case.

Friday, December 11, 2015 T 2369/10 - Second medical use of products

Medical Instruments

The applicant found a new medical use for an existing product; namely treatment of substance addiction using a neurostimulator.
 
Normally a product is not made novel merely by identifying a new use for the product. Although, a use claim or a method claim may be possible, a purpose limitation for a product must imply technical differences in the product itself for it to be novel. 

However, if the new use is a medical one, the option of method and use claims are blocked by article 53(c) EPC, which forbids patenting of medical methods (see the articles for details). Fortunately for medical researchers, an exception is made to the general rule;  a new medical use for "any substance or composition" will provide novelty (articles 54(4), 54(5) EPC, G 5/83).

But what if someone invents a new medical use for a product which is not a substance or composition? The possibility of a method or use claim is blocked by article 53(c) EPC.  The lack of novel technical differences blocks the product claim. Although, article 54 does not explicitly allow the application to products which are not substance or composition, it is not forbidden either. 

The board declined the invitation though, and ruled that no novelty is obtained by a medical purpose limitation if the object is not a substance or composition. A request to  refer questions to the Enlarged board was denied. 

No Catchword or headnote is provided but reasons 8.1 give the following summary.

In the present case, the Board holds that, having regard to the wording of Article 54(4),(5) EPC, the ordinary meaning of this Article shall not be extended so as to include something which is not explicitly provided for.

Consequently the Board considers that there is no basis to contemplate that novelty may be conferred on products, other than substances and compositions, by virtue of the provisions of Article 54(4),(5) EPC.