Monday, December 28, 2020 T 1604/16 - Boards have competence to review points of fact

What did this car look like before the repairs?

This is a decision with the second highest distribution classification 'B'. They do no not occur that often, so the issuing board considered this to be an important case. 

In first instance opposition proceedings, the opposition division concluded that a car sold by the opponent was novelty impairing prior use. This was evidenced by hearing the car buyer as a witness. In appeal the opposition has been withdrawn, and the board wonders if it is allowed to challenge the findings of fact established in first instance. The recent decision T 1418/17 suggests that a Board of appeal should not do so. This board does not agree, and provides the following catchword:

The boards have competence to review appealed decisions in full, including points of law and fact. This applies also to findings of fact of the department of first instance which are based, at least in part, on the evaluation of witness evidence obtained in the course of hearing a witness (reasons, point 3.1 and sub-points).

Tuesday, November 03, 2020 T 1439/16 - Late filed request with deleted claim allowable as it improves procedural economy

In response to the Boards preliminary opinion, the proprietor filed a request (auxiliary request 6) by deleting claim 1 of an existing request. This resolved an added subject matter problem. The opponent objects against the new request as being late filed. The Board agrees that the request ought to have been filed with the proprietor's reply to the statement setting out the grounds of appeal. However, since a claim has been deleted procedural economy has improved, and so the request is allowed. 

In response, the opponent voices new added subject matter objections to (now) claim 7 of the new request. These are not allowed in the procedure, as that would be detrimental to procedural economy. The objection should have been raised before the oral proceedings-- It was the choice of the appellant to make an objection for added subject-matter only to claim 1 and not to (then) claim 8 in the statement setting out the grounds of appeal.

Friday, August 10, 2018 J 4/17 - No resumption of proceedings after stay of 7 years

After the EPO send out an intention to grant in the patent application, entitlement proceedings against the patent were started before the District Court of The Hague (Article 61 proceedings). As a result the application was stayed at the EPO, starting at 28 March 2011. Proceedings are still pending and oral proceedings in the court  case are scheduled for September 2018.  

During the stay the applicant and a further party repeatedly asked for resumption of the grant proceedings under Rule 14(3). Resumption was granted by the legal division, which appeal is the subject of this case.

The board concluded that the legal division correctly exercised its discretionary powers to lift the stay. However, starting at reasons 5 there is a twist in the tale to the benefit of the appellants. 

This decision is one of a series of identical decisions taken in the parent application and its divisionals.  The board provided the following catch words:

Rule 14(3) EPC is silent on the reasons for setting a date for resumption of the proceedings for grant. It is thus to be concluded that the legislator let it to practice and jurisprudence to define the circumstances that justify setting a date for resumption on a discretionary basis.

Resumption of the proceedings is not limited to cases involving misuse or delaying tactics. The possibility that the EPO sets a date for resumption upon staying the proceedings for grant hints towards a broader construction.

However an applicant cannot justify its request for resumption based on the length of the entitlement proceedings where this duration has been significantly caused by the applicant's procedural conduct.

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).

Thursday, August 24, 2017 T 293/12 - First substantive response after summons

Will the board admit a 'just in time' submission?

What is the position of a party in opposition appeal who did not respond to the statement of the grounds, but did file a submission in response to the summons to oral proceedings? 

In response to the notice of appeal, one of the opponents (respondent 2) filed a brief letter stating that it would await the statement of grounds of appeal and announced its intention to submit a reply later in due course. After the statement of the grounds was filed, the board set a time limit of 4 month to file such a response. However, no further submissions were filed until a month before oral proceedings. 

The proprietor considers that the opponent has lost it chance to file arguments, by not filing a timely response to the statement of the grounds--since the opponent had not filed a reply to the grounds of appeal, one cannot regard its later submission as an amendment to a party's case. On the other hand, the opponent considers the submission to be just further arguments, and sees no reason why they should not be admitted. The board find a middle ground, taking the submission into account but as a later amendment to a party's case.

Tuesday, November 08, 2016 T 918/14 - No search in PCT phase

Needle-prick like objections?

Claims 2-37 of this application were not searched during the PCT phase, under Art. 17(2)(a) PCT. The reason for not searching these claims is that the first embodiment of the application does not fall under the scope of Claim 1, yet the application cites documents that are prejudicial to the novelty of claim 1. In this situation it was unclear for the Examiner what the intention is of the applicant.  

At first however, after entry into the regional phase, Examination seems to proceed normally, patentability objections are raised and the claims are amended. But when the claims are amended for a second time, the Examiner objects that unsearched subject matter is introduced in the claims, and rejects the claim amendments under Rule 137(3) EPC. During Oral proceedings, at which the applicant did not appear, the application is refused.

The board does not agree with examination in this manner. They provide the following catch phrase (my translation).

1. Refusing to admit claim amendments into the proceedings, because of a mixture of a missing (but justified) supplementary research and vague indications of the patentability of the amendments, exceeds the margin of discretion of the Examining Division under Rule 137 (3) EPC and constitutes a substantial procedural violation (see Reasons 2.8 ).

2. The approach of a search and examination division to initially produce an incomplete search with a non-substantiated reasoning, and on top of that, despite objections and amendments of the applicant, not to carry out an additional search for the new claims, but to present needle prick-like (nadelstichartig) vague objections to patentability is a substantial procedural error on its own (see Reasons Section 2.7).

Friday, May 22, 2015 T 359/11 - Notoriously known - not searched, not allowing request

This appeal lies from a decision of the examining divisions to refuse the application.
The searcher in the international phase apparently considered the claimed invention to make no technical contribution. In line with the EPO policy of OJ 2007, 592, a search report was issued, but no prior art was cited - "the technical aspects identified in the present application (Art. 15 PCT) are considered part of common general knowledge. Due to their notoriety no documentary evidence is found to be required" (instead of the former approach of giving a "no search" declaration).

In the regional phase, the applicant disagreed with the lack of inventive step reasoning of the examiner. In an effort to overcome the objection, new claims were filed. The EPO rejected those as having added subject-matter (Art.123(2)).
The applicant reformulated the claims in a main and auxiliary request close to the original wording. The examining division used its discretion under R.137(3) to not admit these requests as "not addressing prima facie any objections under Art.56 EPC".
The refusal was thus based on "there being no text on file which has been agreed by the applicant"

The Board concludes that the Examining Division wrongly applied its discretion: "By refusing its consent to the main request, the Examining Division effectively took the position that any admissible request had to incorporate amendments aimed at overcoming its objections under Article 56 EPC. This unreasonably deprived the applicant of the opportunity of simply disagreeing with the Examining Division and obtaining a decision based on a set of claims, duly admitted into the procedure, reflecting what had been its fundamental position throughout."

The Board then had a look at whether or not the invention should have been searched. the Board reviews the case law and produced the following 

Catchword:

"Where the relevant search authority has stated, either in a search report or in a declaration that no search report will be established, that it is not necessary to cite any documentary evidence of the prior art on the grounds that all of the technical features of the claimed invention are notorious, it is always incumbent upon the examining division to consider whether an additional search is necessary. The criterion to be applied is that if the invention as claimed contains at least one technical feature which is not notorious, the application should normally not be refused for lack of inventive step without performing an additional search (see Reasons, point 3.9, and T 690/06, Reasons, point 8)".