Thursday, May 20, 2021 T 1294/16 - A matter of principle

A few interesting topics in this decision of the Board of Appeal, wherein an appeal was filed against the decision of the Examining Division to refuse the application.

1. If there is a prior art document D2 that has the same purpose or objective as the claimed invention, is it then possible that another document D1 that has a different purpose is chosen as the closest prior art for assessing inventive step?
   
2. Is it a substantial procedural violation if the decision of the Examining Division is based on D1 as closest prior art, when  - allegedly -  in the oral proceedings before the Examining Division, only D2 was considered as the closest prior art? Is it "implicit" that both D1 and D2  had been considered as closest prior art, and is this "implicit discussion" sufficient to satisfy the appellant's right to be heard? 
   
3. Can a difference (relative) to D1 in the mathematical formula claimed be an argument for inventive step?
4. In view of RPBA 2020 Article 13(1) and (2), may the Board still admit requests that were filed after notification of the summons to oral proceedings, and during oral proceedings?

Tuesday, September 01, 2020 T 2214/15 - Ordinary, not exceptional

According to Article 13(2) of the revised Rules of Procedure of the Boards of Appeal (RPBA 2020), any amendment to a party’s appeal case made after notification of a summons to oral proceedings (or after a deadline set by the Board with an express invitation to file observations) shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned. The basic principle of this third level of the new "convergent approach" applicable in EPO appeal proceedings is that, at this stage of the appeal proceedings, amendments to a party’s appeal case are not to be taken into consideration. Only if a party can present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular case. For example, if a party submits that the Board raised an objection for the first time, it must explain precisely why this objection is new and does not fall under objections previously raised by the Board (or a party). The Board may decide to admit the amendment in the exercise of its discretion. 

In the present examination appeal case, the appellant had filed Auxiliary Request 2 after notification of the summons to oral proceedings. During oral proceedings, the appellant argued that this late-filed request should be admitted, as the Board had raised a number of new issues in the summons to which auxiliary request 2 represented a good faith reaction. Indeed, the Board accepted that in the present case this represented exceptional circumstances within the meaning of Article 13(2) RPBA 2020.
Unfortunately, the Board found that Auxiliary Request 2 does not comply with Articles 84 and 123(2). 

Auxiliary Request 3 filed subsequently during oral proceedings was however not admitted. While the appellant asserted that a further request should be admitted because the Board had raised new objections in connection with the second auxiliary request that the appellant could not have been expected to anticipate, the Board was not persuaded by these arguments. According to the Board, the topics of discussion in view of auxiliary request 2 did not differ in substance from those identified in the summons; the identification of newly introduced problems when attempting to solve issues discussed in the procedure up to that point is rather to be seen as the ordinary development of the discussion, rather than an exceptional circumstance justifying the admittance of a further auxiliary request. In the view of the Board, if such newly introduced problems would represent exceptional circumstances, this would imply that the appellant would have to be given repeated opportunity to file amended claims until no new problems were introduced. Such a procedure could only be characterised as a continuation of the first-instance examination proceedings and would thus be at odds with the primary object of the appeal proceedings of a judicial review of the impugned decision.

Catchword
If amendments intended to overcome objections of lack of support and lack of clarity raised in the summons give rise to further objections concerning clarity or added subject-matter, pointing out these further objections does not represent exceptional circumstances within the meaning of Article 13(2) RPBA 2020, but rather an ordinary development of the discussion which does not go beyond the framework of the initial objection. See reasons 5.3 and 5.4.

Tuesday, November 26, 2019 T 341/15 - Late documents and late requests in first and second instance

In the present case, the Opposition Division admitted into the proceedings late-filed documents D9 and D14 and held that claim 1 of the then main request (patent as granted) and of the then first to sixth auxiliary requests did not involve inventive step pursuant to Article 56 EPC starting from D9 as closest prior art in combination with the teaching of D14. The appellant (proprietor) holds the view that they should not have been admitted into the proceedings similarly to other documents which had not been admitted by the Opposition Division. At the oral proceedings before the Board the appellant further added that D9 only concerns the preamble of claim 1 of the main request so that it would not be relevant to the invention. The Board discussed that, according to the established case law a Board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way, and has thus exceeded the proper limits of its discretion. When considering their admission into the proceedings, the Opposition Division applied the correct criterion of prima facie relevance. In this respect the Board follows the respondent's (opponent's) view that there is no legal basis or available case law according to which some circumstances would justify that only novelty, i.e. not inventive step, should be considered for the criterion of prima facie relevance.

Tuesday, March 19, 2019 T 47/18 - Admission of new objections which were not raised in the statement of grounds of appeal

The current Rules of Procedure of the Boards of Appeal, and in particular Art. 12 and 13 thereof, have been applied more and more strictly over the last few years. We cited some of those decisions every once in a while, and this is another of those decisions. With the new Rules of Procedure, expected to enter into force early 2020 (see here; and for the user consultation documents here and here), it will get even more strict. In the opposition case below, the opponent's statement of grounds of appeal contained neither an objection of lack of clarity of the (amended) claims under Art. 84 EPC nor an objection under Article 123(2) EPC. Rather, it contained only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections.  According to the established case law of the boards of appeal, new objections which were not raised in the statement of grounds of appeal, respectively in the reply to the grounds of appeal, are considered an amendment to a party's case.  Admission of such objections is at the discretion of the board pursuant to Article 13(1) and/or 13(3) RPBA. The Board discussed in detail why, in this case, the objections were not admitted into the proceedings. Together with the current state of the proceedings and the need for procedural economy, an important factor was that the appellant could have raised the objections in question at several instances in the first instance proceedings before the opposition division.

Tuesday, February 12, 2019 T 0592/15 - No postponement of decision

In this examination appeal case, the application as filed comprised three independent method claims (claims 19, 39 and 40). However, after an objection under Rule 43(2) EPC in the European search opinion, all claim sets submitted by the applicant during the examination phase, as well as those filed with the grounds of appeal, contained only one independent method claim.

A month prior to the oral proceedings, the applicant filed a main request and two auxiliary requests, all containing three independent method claims. Four days before the oral proceedings, the applicant informed the Board that he would no attend the oral proceedings. He further advised that "it is intended to file a divisional application based upon the present application and it is requested that the present application be maintained pending until the divisional application has been filed".

The Board found the filing of more than one independent method claim at this stage of the proceedings to be prima facie objectionable under Rule 43(2) EPC. Accordingly, the appellant's main, first and second auxiliary claim requests were not admitted into the proceedings.

As there was no admissible claim request of the appellant, the appeal was to be dismissed. The Board found that the request of the applicant to postpone the taking of this actual decision at least until a divisional application had been filed would require the Board to investigate whether the appellant has eventually indeed filed a divisional application and, as the case may be, to even postpone the oral proceedings. Moreover, the Board found that the appellant would gain complete control over the duration of the present appeal proceedings including the possibility of having them pending ad infinitum if no divisional application was filed at all.

Consequently, the Board refused the appellant's request to postpone the taking of the decision on the allowability of the appeal and decided to dismiss the appeal.

Friday, October 12, 2018 T 1280/14 - No switching between lines of defense

Can the Board exercise its discretion under Art. 13 RPBA not to admit auxiliary requests in the proceedings even if these have already been filed in direct response to the Opponent/Appellant's grounds of appeal and correspond to those submitted during first instance proceedings?

In the present case, the Opposition Division had rejected the opposition against the patent. In the ensuing appeal, the Opponent-Appellant already requested in his grounds that none of the (39) auxiliary requests filed during opposition proceedings be admitted, as these were "excessive, filed in unspecified order, and/or late filed".

In his response to the grounds, the Proprietor-Respondent filed 15 auxiliary requests based on a selection from the requests filed during opposition proceedings. The Proprietor stated that these auxiliary requests were properly numbered, therefore having a clearly specified order. From the arguments in support of the requests it could be deduced that these requests were classifiable as forming six diverging lines of defense, auxiliary requests 1, 2 and 4 thereof forming the first line of defense.

In the summons for oral proceedings, the Board pointed out (referring to T 1903/13) that the Proprietor should be prepared to comment on how the other diverging lines of defense would represent the alleged invention. The Proprietor did not provide any further comments.

Accordingly, the Opponent/Appellant and the Board had to assume prior to the oral proceedings that the Respondent intended, after the main request, to first prepare the patent in suit in accordance with the first line of defense, with auxiliary requests 1, 2 and 4 to defend. However, it was not until the oral hearing (in which the Main Request had fallen as lacking novelty over prior art document D9 filed with the Opponent-Appellant's grounds) that the Proprietor made it clear that he now intended to only pursue his third and sixth lines of defense - corresponding to auxiliary requests 8 and 15, respectively, and renumbered as auxiliary requests 1 and 2.

This unannounced change of strategy did not fare well with the Board, who found that both the Opponent and Board had unnecessarily prepared for auxiliary requests which turned out not to be relevant in the further proceedings; thus, the Respondent had not complied with the procedural economics offered. According to the Board, contrary to the Respondent's submission, his actions did not constitute a mere renumbering of the requests, since new auxiliary requests 1 and 2 (formerly auxiliary requests 8 and 15) corresponded to lines of defense diverging from the former auxiliary requests 1, 2 and 4. Thus, what was now claimed as an invention had fundamentally shifted. Hereby, the multiplicity of interlocked features rendered the changes in subject-matter of the auxiliary requests very complex.

As a result, remaining auxiliary requests 1 and 2 were not admitted in the proceedings and the patent was revoked.

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).

Tuesday, January 03, 2017 T 488/13 - A printing error

This printing error increases value

Due to a printing error, a value in the claims differed between the printed patent and the Druckexamplar. During oral proceedings, the proprietor corrected a value in a request to the value in the Druckexamplar. Earlier, the proprietor had also filed requests in which unclear claims were cancelled. The opponents objected to both amendments on the basis of them being late filed, but the board rejects the objections. 

Friday, October 14, 2016 T 497/11: Revert an amendment after 9 years

In this opposition appeal admissibility is initially an important subject of the discussion. About one month before the oral proceedings (2016) the Appellants filed amended claims which would, according to the Board, "effectively revert to the method claims they had filed in 2007". The amendment comprises the deletion of "by using a computer".
When reading also the inventive step discussion of one of the requests, it seems that the Appellants would like to delete this features from the claims to enforce the choice of the closest prior art into another direction. The selected closest prior art was generic prior art in the field of air traffic control: "A system including a processor, memory, display and input device, for an aviation system, the system further comprising means (e.g. radio) for communicating to said aircraft."
If this amendment is accepted, the board had to start a discussion of the technicality of the claims. One of the arguments of the Appellants was that the recently filed claims were filed because the representation of the Appellants changed. Is that argument enough to get the amendments into the procedure?

This decision is also interesting because a number of features of auxiliary requests are considered to be a mere automation of mental acts, for example, performed by a flight controller. Thus, although the claims are technical with the feature of "by using a computer", most features do not contribute to the inventiveness of the claims because they are not technical.

Tuesday, August 09, 2016 T 360/11 - Very late needs to be very clear

In this appeal against the decision to refuse, the applicant filed amended claims in response to the summons for oral proceedings, aiming to overcome the Art.84 and Art.123(2) objections in the preliminary opinion of the Board, and further amendments in the course of oral proceedings. The Board did however not admit the amended claims into the proceedings, as very late amendments are required to be very clear. 

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, April 05, 2016 T 2385/11 - Admitted even though filed very late

During oral proceedings in appeal against a refusal by the Examining Division, the applicant filed a new and sole request. In this decision, the Board indicates quite clearly under which conditions such a very late request can be -and is this case was- admissible.

Tuesday, March 15, 2016 T 1921/10 - No prominent role...

In this examination appeal, the applicant submitted auxiliary requests in response to the summons for oral proceedings. The amendments made to the auxiliary requests with respect to the main request had been derived from originally-filed claims 5 and 6. However, these claims had not played a prominent role in examination and appeal proceedings...

Monday, February 22, 2016 T 1533/13 - Expectation or speculation? An explanation needed to make the difference!

After the opposition division revoked the patent in its entirety, the patent proprietor (the appellant) filed an appeal and submitted with the statement setting out the grounds of appeal a main and ten auxiliary requests, and gave reasons why the impugned decision should be set aside. The respondent requested that the appeal be rejected as inadmissible, because of an alleged lack of substantive reasoning as to why the impugned decision was wrong, or that it be dismissed. The Board had to decide on the admissibility of late-filed claim requests based on claim requests already filed without explanation with the statement of grounds of appeal.