Tuesday, August 28, 2018 T 0536/13 - A too hasty decision

An Applicant requested a so-called "decision according to the state of the file" after an unsuccessful telephone consultation with the first examiner in response to summons for oral proceedings in examination and subsequent written submissions. In its decision, the Examining Division argued that "The applicant filed no comments or amendments in reply to the latest communication ..." and refused the application.

The Board made short work of overturning the Examining Division's decision, manifesting that not taking into account the Applicant's written submissions in response to the summons, nor providing any reasoning in respect of the Applicant's amendments and comments - including those made in the telephone consultation - amounts to a substantial procedural violation. Accordingly, the decision was set aside, the case was remitted to the department of first instance for further prosecution and the appeal fee was reimbursed.

Thursday, February 15, 2018 T 447/13 - Trivially or seriously ill?

Better send in a doctor's certificate?

In the present case, the professional representative became ill before the scheduled OP, and excused him/herself by a phone call and subsequent letter indicating that he/she had "take[n] ill" while requesting the OP to be rescheduled. The request was refused by the ED for the reasons that the representative referred in his letter only to illness and not to serious illness, and that the request was not accompanied by a substantiated written statement indicating the reasons.

The Board now deals with this matter in appeal, and finds that the ED did not properly exercise its discretion but rather took an unreasonable approach based on a wrong principle.

Catchwords:
For the purposes of deciding whether to grant a request for postponement of oral proceedings on grounds of illness, the reference to "serious illness" in the Guidelines means an illness which is sufficiently serious to prevent the representative travelling to oral proceedings and presenting the case on the appointed day (Reasons, point 5.3).

Where a request for postponement of oral proceedings is refused on the ground that the request was not sufficiently substantiated, it is incumbent upon the Examining Division to explain why it considers the substantiation insufficient. In other words, it should state in clear terms what, in its opinion, should have been submitted or explained, but was not (Reasons, point 6.4).

Friday, February 02, 2018 R 8/16 - A plurality of petition grounds

A petition for review with many grounds...

In opposition proceedings, the patent was upheld with amended claims. During appeal by the proprietor and an opponent, the Board revoked the patent for added subject-matter.

The proprietor-appellant filed a petition for review under Article 112a EPC against the decision of the Board. The petition lists various grounds, as enumerated below.

The EBA discusses the admissability and allowability of these grounds, including whether a counter-argument put forward during oral proceedings also represents a formal objection under Rule 106 EPC (admissibility of ground D), whether the right to be heard is violated if an admission of a request is not reasoned (allowability of ground C), whether the BoA is free to determine the order in which the requests are discussed (allowability of ground C), and why it is needed for the petition to already contain the specific arguments w.r.t. a fundamental violation of Article 113 EPC (rather than those being specified in a later response or during oral proceedings) (allowability of ground D)

Catchwords:
1. Only parties adversely affected by a decision may resort to a procedure under Article 112a EPC. The term 'fundamental violation' in Article 112a(2)(c) EPC also must be read in this light. An alleged violation cannot be fundamental, in the sense of 'intolerable', if it does not cause an adverse effect. (Reasons, point 23).

2. The principle of party disposition expressed in Article 113(2) EPC does not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it. The only obligation on the EPO is not to overlook any still pending request in the final decision. A Board has no particular duty to give reasons why it chose to proceed as it did (Reasons, point 25).

3. A Board has no obligation to peruse the whole file of the first instance proceedings. It is the duty of the parties to raise issues again in the appeal proceedings, to the extent necessary, as stipulated by Articles 12(1) and (2) RPBA: "Appeal proceedings shall be based on [the submissions of the parties filed in the appeal proceedings, which] ... should specify expressly all the facts, arguments and evidence relied on" (Reasons, point 38).

The petition grounds:
XI. Right to be heard violations, Art. 112a(2)(c) and 113 EPC

A. The written decision of the Board contained no reasons why the claims as upheld by the Opposition Division were not allowable, thus not permitting the petitioner to understand why the decision under appeal was reversed.

B. The Board's decision did not explain what happened to the earlier withdrawn requests, but only referred to the petitioner's final requests that it confirmed at the end of the oral proceedings.

C. The decision contained no reasons why the main request was admitted, and why this decision was only made after the decision not to admit the later withdrawn auxiliary requests. This lack of reasons in the decision violated the petitioner's right to be heard, because arguments need not only be heard, but also must be acknowledged in a decision of the EPO.

D. The Board did not consider the main arguments of the petitioner, why the "only two bearing" feature does not add subject-matter. (...). The petitioner also submitted that the arguments not mentioned could well have changed the outcome of the decision.

XII. Fundamental procedural defect, Art. 112a(2)(d) EPC

E. The Board did not decide on a request pursuant to Rule 104(b) EPC, in that the main request was discussed and decided on only after a discussion and decision on the claims as upheld. In this respect, the petitioner raised an objection under Rule 106 EPC.

XIV. Further procedural violations

F. The petitioner was led into the inescapable trap of Article 123(2)/(3) EPC by the Examining Division, i.e. the European Patent Organisation itself provoked the error.

G. The petitioner lost its patent on a 'formalistic issue', against the spirit of Article 4(3) EPC, and after having spent considerable sums.

H. The considerations underlying petition grounds F and G were not taken into account by the Board, when revoking the patent, in full knowledge of pending parallel infringement actions.

Tuesday, September 06, 2016 T 738/13 Right to be heard

In this appeal from examination, the Board has to decide if the Examining Division has violated the applicant’s right to be heard by not motivating its decision well.

The applicant had requested supplementing the Examining Division by a legally qualified examiner. This was refused and motivated only by citing the relevant section of the Guidelines. The Board sympathizes with the applicant but finds in this case the brief motivation acceptable.

The Board does agree that the lack of inventive step decision is not adequately reasoned. The applicant had submitted a thorough problem-solution approach reasoning. The division is silent in its decision on this reasoning. The Board considers submitting the case back, but first spots a new clarity issue. The Boards takes this upon its own shoulders. The applicant manages to overcome the Art.84 objection. The Board then submits the case back for further examination.

Tuesday, November 17, 2015 T 0740/15 - Two substantial procedural violations in one case

It may seem awkward that an opponent wants to continue an opposition even though the opposed patent has lapsed for all designated contracting states during opposition. However, in this particular case, the proprietor did not explicitly surrender his rights in the designated contracting states. Hence, the opponent could not be 100% certain that the proprietor would not try to restore any rights in any of the states as soon as the opposition proceedings would have been terminated. As a result the opponent expressed the wish to continue with the opposition and requested oral proceedings before any decision was reached. Nevertheless, the opposition division terminated the proceedings. This, as the Board in this case clearly indicates, is a substantial procedural violation and is an 'infringement' of Art 116(1) EPC. One may wonder why the opposition division came to their decision although the right to oral proceedings (when requested) is so firmly established in the EPC and the case law of the Boards of Appeal. Even worse, their issued decision did not contain any reasoning, which is also in breach with Rule 111(2) EPC: decisions that are open to appeal should be reasoned. Two substantial procedural violations justifying reimbursement of the appeal fee, in one single case.

Summary of Facts and Submissions

I. The appeal by the Opponent lies from the decision of the Opposition Division dated 18 February 2015 to discontinue the opposition proceedings against European patent No. 2 067 820 (Form 2351).

II. An Opposition had been filed against the patent on 27 January 2012 on the grounds of lack of sufficiency, novelty and inventive step. Oral proceedings were requested as an auxiliary measure.

III. The proprietor responded with a letter dated 17 September 2012, requesting to maintain the patent in amended form according to a new main request or two auxiliary requests filed therewith.

IV. On 11 August 2014, a communication pursuant to Rule 84(1) EPC was sent by the opposition division stating that the opposed patent had been surrendered or lapsed with effect for all the designated contracting states. In the communication it was stated that "the opposition proceedings may be continued at the request of the opponent, provided that within two months from notification of this communication a request is so filed." The communication further advised that the opposition proceedings would be discontinued if no such request was filed in due time "and the state of the files give no grounds for the proceedings to be continued by the European Patent Office".

V. The opponent filed a response to the communication on 15 September 2014, in which it was requested that the opposition proceedings "be continued". It was also stated that "for the avoidance of doubt, the Opponent maintains its previous arguments against the Patent and its request for oral proceedings.".

VI. On 18 February 2015, the opposition division issued the decision to discontinue the opposition proceedings.

Tuesday, April 14, 2015 T 1724/10 - Contradictory conclusions not a reasoned statement

The present case concerns an appeal against the decision of the Opposition Division to revoke European patent no. 1 462 952.

The following citations from the decision show the Board dealing with an alleged substantial procedural violation. Namely, the patent proprietor argued that the Opposition Division failed to correctly apply the problem-solution approach, and had failed to consider the right of the patent proprietor to reformulate the objective technical problem in a less ambitious manner. This, according to the patent proprietor, amounted to a violation of the right to be heard and thus constituted a further substantial procedural violation justifying the reimbursement of the appeal fee.

Background / Summary of Facts and Submissions

I. The patent proprietor (appellant) appealed against the decision of the Opposition Division to revoke European patent no. 1 462 952.

II. The opposition had been based on Article 100(a) (lack of novelty and inventive step), Article 100(b) and Article 100(c) EPC.

III. In the contested decision the Opposition Division found, inter alia, that claim 1 of the patent did not have a valid basis in the application as filed (Articles 100(c) and 123(2) EPC), and that the subject-matter of claim 1 did not meet the requirements of Article 56 EPC because a technical problem solved by the method of claim 1 could not be identified. The same objections applied to claim 1 of the first and third auxiliary requests. The subject-matter of the second auxiliary request was found not to comply with Article 56 EPC and to extend the protection conferred by the patent.

(...)

VIII. On 27 January 2015, oral proceedings were held as scheduled before the Board. At the end of the oral proceedings the Chairman announced the Board's decision.

(...)

XI. The appellant's arguments may be summarised as follows:

(Main substantive argumentation omitted)

In summary, the subject-matter of claim 1 was not made obvious by any of the cited documents D6, D11 and D23, or their combinations.

The opposition division stated for the first time during the oral proceedings that the technical problem solved by the invention was speculative and not acceptable as a valid objective technical problem. The fact that the patent proprietor was taken by surprise by this objection and was not given the possibility to file amended claims in response to the Opposition Division's new and surprising argument constituted a substantial procedural violation. Furthermore, the Opposition Division failed to correctly apply the problem-solution approach and, in particular, failed to consider the right of the patent proprietor to reformulate the objective technical problem in a less ambitious manner, as it had been suggested. This amounted to a violation of the right to be heard and thus constituted a further substantial procedural violation justifying the reimbursement of the appeal fee.

Reasons for the Decision

1. The appeal is admissible.

(...)

Reimbursement of the appeal fee

9. The appellant has essentially argued that during the oral proceedings the Opposition Division raised a new argument under Article 100(a) EPC and, in particular, stated for the first time that the technical problem solved by the invention was speculative and not acceptable as a valid objective technical problem. The patent proprietor was allegedly taken by surprise. Furthermore, in the appellant's opinion, the right to be heard was violated because the patent proprietor was not given the possibility to file amended claims in response to the new argument.

9.1 The appellant has further submitted that the Opposition Division failed to correctly apply the problem-solution approach and to consider the patent proprietor's right to reformulate the objective technical problem in a "less ambitious" way.

9.2 In the first paragraph of the section of the contested decision relating to Article 56 EPC, the Opposition Division merely identified the aggregating step and hence also the indexing step based on the aggregating step as novel over an unspecified prior art. From the preceding section concerning Article 54 EPC, it can be assumed that either document D6 or D9 constituted the prior art the Opposition Division intended to refer to. In fact, the minutes (section 6.) of the oral proceedings show that the inventive step discussion had focused on D6.

9.2.1 According to paragraph 18 of the contested decision, the aggregating and indexing steps recited in claim 1 provided the technical effect of different aggregated documents and different search results. The Opposition Division appears to have acknowledged the presence of a technical effect in the form of "different aggregated documents" and "different search results".

9.2.2 Having identified the differences between the prior art and the claimed invention, the Opposition Division concluded that it was not possible to identify a technical problem solved by the method of the application, which could be the basis of an inventive step.

9.2.3 In paragraph 20 of the decision, the Opposition Division summarised the different attempts of the patent proprietor to define a technical problem starting from the closest prior art document and, in particular, the patent proprietor's view that if no other problem could be formulated, one had to define the problem as how to find an alternate solution to the prior art and ask whether the skilled person would arrive from there at the claimed invention.

9.2.4 In reply to the patent proprietor's arguments, the Opposition Division stated in paragraph 21 of the decision that these argumentations were not convincing because it was not possible to consider the proposed solution as an alternative solution to the one found in the prior art firstly because a technical problem could not be identified and secondly because the results provided by the method of the opposed patent and by the method of the prior art were different.

9.2.5 Finally, in paragraph 21 of the contested decision, the Opposition Division reiterated that claim 1 did not meet the requirements of Article 56 EPC because a technical problem solved by the method of claim 1 could not be identified.

9.3 The Board notes that all the above conclusions of the Opposition Division relating to the lack of inventive step are presented in the contested decision without any prior analysis of the allegedly closest prior art document (D6), or of the problem it addresses. It is also not explained why the technical differences between the claimed subject-matter and the closest prior art identified by the Opposition Division did not allow the definition of a technical problem to be solved according to the problem-solution approach (see also point 6.2 above).

9.3.1 Similarly, the Board finds that the Opposition Division did not explain in the contested decision why, in its opinion, a synonymous use of the terms "link" and "reference" was not plausible and consequently the statement "by use of links such as Uniform Resource Locators" in claim 1 offended against Article 123(2) EPC (see point 16 of the contested decision). In particular, the Opposition Division did not provide any reasons for refuting the patent proprietor's arguments.

9.3.2 In the Board's opinion, the juxtaposition of seemingly contradictory conclusions (e.g. acknowledgement of technical differences but no possibility to define a technical problem), presented in the contested decision as apodictically evident and without any factual support, does not constitute a "reasoned decision" within the meaning of Rule 111(2) EPC.

9.4 In accordance with the case law of the boards of appeal (see Case Law of the Boards of Appeal, Seventh Edition, September 2013, IV.E.8), the Board considers that in the present case the failure to provide adequate reasoning in a decision is to be regarded as a substantial procedural violation justifying the reimbursement of the appeal fee.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.

3. The appeal fee is to be reimbursed.

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T172410.20150127. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "Whatever you say ...". by James Jordan obtained via Flickr under CC BY 2.0 license (no changes made).

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.