T 1138/12 - Creative opposition issues
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T 2075/13 - Is the subject-matter a convergent development?
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T 799/12 - Clarity in opposition appeal
In this opposition appeal, the proprietor challenged the clarity objection that was raised against claim 1 as amended made during first instance opposition proceedings, but which was only raised with the grounds of appeal. He was however unsuccesful: amendments made during opposition are to be examined for compliance with all EPC requriements and the amendment was based on the description (not just an incorporation of an unclear dependent claim - G 3/14). Further, the board of appeal has the power to examine all EPC requirements, not just the ones on which the decision was based: the Board thus examined clarity, and also admitted new arguments against inventive step based on a document that was not used in any objection before.
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G 1/13 - Opposition appeal by non-existing company
This enlarged board decision concerns the validity of an appeal filed by a company that at the time of the appeal did not legally exist, but which was later restored. The decision contains the following summary of the essential facts of the case leading to the referral:
(a) On 2 November 2004, notice of opposition against European patent No. 1058580 was filed by Formalities Bureau Ltd ("FBL"), a company incorporated under the laws of the United Kingdom.
(b) On 27 September 2005, and while the opposition proceedings were still pending, FBL was struck off the UK register of companies and on 4 October 2005 it was "dissolved" by publication of an official notice in the London Gazette. As a matter of UK law it thereby ceased to exist. The grounds for this administrative act were that FBL had not filed the requisite statements with the Registrar of Companies, thus giving the Registrar reason to believe that FBL was no longer in business or in operation.
(c) Opposition proceedings in the name of FBL nevertheless continued to be conducted by its previously authorized professional representative, Mr Peter Bawden, as if FBL continued to exist. On 29 October 2008, the Opposition Division issued an interlocutory decision whereby, account being taken of the amended claims filed by the proprietor, the patent and the invention to which it related were found to meet the requirements of the EPC.
(d) On 29 December 2008 notice of appeal was filed in the name of FBL, again acting by Mr Peter Bawden.
(e) Shortly before oral proceedings in the appeal, scheduled for 6 September 2012, the proprietor and respondent (hereafter "the proprietor") discovered that FBL had ceased to exist. At the oral proceedings, the proprietor requested inter alia that the appeal be declared inadmissible; FBL requested inter alia that the proceedings be suspended. In the event the Board of Appeal ordered the proceedings to be continued in writing to enable the FBL to file submissions relating to the admissibility of its appeal.
(f) On 26 September 2012, an application was filed with the UK High Court to restore FBL to the UK register of companies. The stated purpose of this was to enable FBL to continue the opposition appeal proceedings before the Board of Appeal. On 5 December 2012 an order was made by the UK High Court restoring the name of FBL to the register of companies. The effective date of the restoration of FBL to the register was 8 December 2012, the date when the UK court order was delivered to the UK Registrar of Companies. As a matter of UK law, FBL was thereby deemed to have continued in existence as if it had not been dissolved or struck off the register, i.e., as if it had never ceased to exist.
(g) On 13 December 2012 the proprietor inter alia filed a request for the "revocation" of the Opposition Division's interlocutory decision on the ground that the opposition proceedings had lapsed when FBL ceased to exist. Alternatively, as an auxiliary request, the proprietor requested that the appeal filed in the name of FBL be declared inadmissible.
The Enlarged board provided the following headnote:
The questions referred to the Enlarged Board of Appeal are answered as follows:
1. Where an opposition is filed by a company which subsequently, under the relevant national law governing the company, for all purposes ceases to exist, but that company is subsequently restored to existence under a provision of that governing national law, by virtue of which the company is deemed to have continued in existence as if it had not ceased to exist, all these events taking place before a decision of the Opposition Division maintaining the opposed patent in amended form becomes final, the European Patent Office must recognize the retroactive effect of that provision of national law and allow the opposition proceedings to be continued by the restored company.
2. Where, in the factual circumstances underlying Question 1, a valid appeal is filed in due time in the name of the non-existent opponent company against the decision maintaining the European patent in amended form, and the restoration of the company to existence, with retroactive effect as described in Question 1, takes place after the expiry of the time limit for filing the notice of appeal under Article 108 EPC, the Board of Appeal must treat the appeal as admissible.
3. Not applicable.
Reasons for the decision
(...)
5. As already indicated, answers to the referred questions cannot be found directly and unambiguously by reference to the provisions of the EPC. The Enlarged Board considers that they must therefore be found by looking at the interrelation of national law and the EPC. As to this, the following factors appear to be relevant:
5.1 Legal entities such as companies exist only by virtue of the national legal system which governs their incorporation, subsequent existence and cessation (the term "national legal system" as used herein and in the following is meant to embrace also regional law in cases involving legal entities such as the Societas Europaea). So far as the EPC is concerned, the existence or non-existence of a legal entity is exclusively a matter for such national law. See, for example, T 15/01 (OJ EPO 2006, 153), point 9 of the Reasons. The legal personality of an entity acting in proceedings under the EPC is to be decided on the same basis as before national courts, namely the capacity to sue or to be sued in its own name and on its own account: see G 3/99, op. cit., point 9 of the Reasons.
5.2 It is a generally recognized principle of national law and also under the EPC that legal entities which do not exist cannot bring or take part in proceedings. See for example T 353/95 of 25 July 2000, point 2 of the Reasons.
5.3 Unlike the position of an applicant or proprietor of a European patent, the status of an opponent is a purely procedural status and the basis on which it is obtained is a matter of procedural law governed by the EPC: G 3/97 (OJ EPO 1999, 245) point 2.1 of the Reasons. While the status of a legal person as such has to be determined by the applicable national law, the right to bring opposition proceedings, to take part in such proceedings before the Opposition Division, to file a notice of appeal and to take part in appeal proceedings and have a legally binding decision issued on its requests are thus all matters subject to and to be determined autonomously by the procedural law of the EPC. See T 15/01, op. cit., point 9 of the Reasons.
5.4 The issues raised by the referred questions should be resolved by also taking into account general principles such as equal treatment, legal certainty and procedural efficiency and by considering the interests of the parties involved and of the general public. See T 1091/02 (OJ EPO 2005, 14), point 2.4.1 of the Reasons.
6. The Enlarged Board considers that the starting point should be the clearly established principle under the EPC that national law should be referred to in order to determine whether a legal entity exists or has ceased to exist, and has capacity to act (see point 5.1, above). As a first step, therefore, the EPO should clearly follow UK law in the present case at least to the extent that the EPO should recognise that FBL existed and had capacity to act before it ceased to exist and that the same applies after it was restored to existence.
7. As to the next step, the Enlarged Board provisionally considers that the EPO should also follow national law as regards the deemed retrospective existence of such a legal entity. This is merely to apply the general principle that such issues are the exclusive concern of national law.
8. There are of course limits on the extent to which the EPO should follow national law. For example, a provision of national law which purported to confer on a company procedural rights which were contrary to the EPC could not be acknowledged by the EPO. Such matters are the exclusive concern of the EPO and cannot be usurped by national law. An example of the interface between national law and the EPC relates to the transfer of oppositions. While the validity of the contract purporting to transfer the opposition as between the parties is a matter to be determined by the relevant national law, the procedural status of opponent is nevertheless not freely transferable: G 2/04 (OJ EPO 2005, 549).
9. The question is then whether any limits should be set on the above deference to national law having regard to the circumstances of the present referral, for example because of any adverse consequences which would follow for the proprietor, other parties to the proceedings, the EPO or the general public. The answer should have regard to the fact that an opponent company may cease to exist and then be restored to life at any stage before, during or after opposition proceedings. The answer should also not depend on the reasons why the opponent company ceased to exist or to what extent its directors or representative could be considered as culpable for this event. The possible effect of the conduct of a party or its representative on proceedings is a different issue which forms no part of the present referral. See point 17, below.
10. So far as the proprietor, the Opposition Division and the referring Board were concerned, until September 2012 all had proceeded on the assumption that FBL existed. To recognise the retroactive existence of FBL would simply be to confirm this assumption.
11. As to the general public, the possibility is remote that an interested member of the public, having inspected the UK Register of Companies and found that FBL no longer existed, would then have relied exclusively on this information in order, for example, to conduct their business. If they had an interest in the proceedings before the EPO, it is more likely that they would have relied on the information to be found in the EPO register of patents and/or on what information was available from inspection of the public file at the EPO. If they had information from all these sources they might well have been puzzled by what they had learnt, but it is highly unlikely that they would simply have ignored the information available from the EPO.
12. On the other hand, if steps taken in opposition proceedings were to be retrospectively declared a nullity, potentially many years after the filing of the opposition, the previous assumptions made by the proprietor, the EPO and the public would turn out to have been false.
13. A competing interest is of course that of the proprietor. It is argued that to recognise the retroactive restoration of FBL to existence would be to deny the proprietor's right to have had the appeal and opposition proceedings dismissed as inadmissible. The submission, however, begs the question of whether the proprietor had such a right. Certainly, in proceedings before the opposition division a proprietor would have the right to request the bringing to an end of those proceedings by the appropriate means once the non-existence of the opponent company had been discovered. The same applies to appeal proceedings. The Opposition Division or the Board of Appeal, if presented with a counter-request to adjourn the proceedings to enable the opponent company to apply to be restored to existence, would have been faced with the problem that the opponent company at that point did not exist. Whether the Opposition Division or the Board of Appeal would have adjourned the proceedings, if necessary of its own motion, to enable this to happen would in the Enlarged Board's opinion have been a matter for the exercise of their discretion. (In the present case FBL was restored to existence while the proceedings had been ordered to be continued in writing to enable the FBL to file submissions - see point II(e), above).
14. The Enlarged Board accepts that a proprietor's interest in wishing to bring the opposition proceedings to an end is a legitimate one but concludes that there is no clear balance in a proprietor's favour leading to the conclusion that a company's retrospective existence as a matter of national law should not be acknowledged by the EPO in such circumstances. The ability of the parties, the EPO and the public to have confidence in the public record and the need for certainty are just as important. The Enlarged Board therefore confirms its provisional conclusion (point 7, above).
15. This conclusion does not appear to be out of step with the general position under other systems of national law, in so far as the position is known to the Enlarged Board and can be considered equivalent (see points 2.3.4 and 2.3.5, above).
16. So as concerns the various arguments of the proprietor:
16.1 The Enlarged Board of course accepts the general principles that a legal entity which does not exist cannot be, or cannot remain a party to proceedings; that where an opposition or an appeal is filed by a non-existent company the opposition or appeal will in principle be inadmissible; that where a sole opponent ceases to exist the opposition division may terminate the proceedings; and that where a sole appellant who was opponent ceases to exist the appeal proceedings should be terminated by the appropriate means. None of these principles, however, can necessarily be extended to deal with the case where an opponent company is restored to existence with retroactive effect under national law. Indeed, this point is at the heart of the referred questions.
16.2 As to the cases cited by the proprietor in support of the proposition that an appeal by a defunct company is inadmissible (T 525/94 of 17 June 1998, T 353/95 of 25 July 2000, T 477/05 of 22 February 2007 and T 480/05 of 8 March 2007), these were cases where the appellant had apparently ceased to exist with the consequence that the appeal proceedings were brought to an end. Again, however, while they show that the FBL's appeal could have suffered the same fate in the period when it did not exist, they do not help answer the question of what should happen when, under national law, an opponent appellant is deemed always to have existed.
16.3 The proprietor referred to the principle that opposition proceedings should be a simple, speedily conducted procedure (G 2/04, point 2.1.4 of the Reasons). It is true that the discovery that an opponent company has ceased to exist may, if proceedings are adjourned to allow an application to be made to restore the company to existence, delay the proceedings. However, the time taken to restore FBL in the present case was about three months and in any event took place while the proceedings were adjourned to allow the parties to file submissions. The Opposition Division and Boards of appeal have a remedy where the delay is unreasonable or amounts to an abuse, namely not to adjourn the proceedings but to bring them to an end.
16.4 The Enlarged Board's conclusion does not mean that national law trumps or overrules the EPC. The EPC and national law (here that of the UK) are not inconsistent with each other in this respect.
16.5 It is true that the EPC provides for various remedies, such as further processing and re-establishment of rights (Articles 121 and 122 EPC, respectively) in cases where a party has suffered a loss of rights. The proprietor refers to G 1/97 (OJ EPO 2000, 322), point 4 of the reasons, 2nd paragraph, in support of the proposition that the Enlarged Board should be very reluctant to extend the existing codified remedies under the EPC. However, the present case is not concerned with the grant of new procedural remedies but with whether national law should be followed as regards the deemed existence of a company.
16.6 The Enlarged Board's conclusion does not mean that a proprietor in such circumstances is faced with the possibility that a defunct opponent may reappear many years later. Where, for example, an opposition has been rejected as inadmissible because it was filed by an opponent which did not exist, the company will not later be able to deny that the order was notified to it (and thus claim that the order has not yet become final) while, at the same time, claiming that it is deemed always to have existed (see also point 19, below). As a side-note the Enlarged Board also understands that under UK law as it now stands the possibility of restoring a company to existence is basically only available within the period of six years from the date of the company ceasing to exist (UK Companies Act 2006, section 1030(4)).
16.7 The proprietor has argued that the non-admissibility of the opposition and the appeal is demonstrated by the fact that after FBL ceased to exist the authority of its attorney will have lapsed. First, however, the submission begs the question of the retroactive effect of the company's restoration to existence. Secondly, according to Rule 152(8) EPC a representative shall be deemed to be authorised until the termination of his authorisation has been communicated to the European Patent Office.
16.8 Contrary to the proprietor's submissions, the Enlarged Board does not see that the fact that the order of the English court did not mention why FBL was restored is of any relevance. The same applies to the submission that the UK court may give further directions for placing the company "as nearly as may be" in the same position as if it had not been struck off. No evidence was filed to support these submissions. So far as the Enlarged Board is aware the provision whereby a company is retroactively restored to existence takes effect, as a matter of UK law, exactly in accordance with its wording: see the decision of the Court of Appeal of England and Wales in Peaktone Ltd v. Joddrell [2012] EWCA Civ 1035.
17. As to the proprietor's suggestion that the Enlarged Board should also comment on whether an obligation to inform the EPO about important procedural requirements at the EPO exists, and what the consequences of non-compliance are, this does not form part of the referred questions and there is no factual basis for any such "comment". Indeed the referring Board refused to include such a question in the decision, saying (point 11 of its Reasons):
"The respondent has not explained the relevance of the question which it asks the Board to refer to the Enlarged Board of Appeal concerning the parties' obligation to keep the EPO informed about certain matters. In particular, the respondent has not indicated what specific consequences would, in its view, follow in the present case from a failure to comply with such an obligation (were the existence thereof established). The Board does not therefore consider it necessary to refer that question to the Enlarged Board of Appeal."
18. The tenor of the Enlarged Board's answer to Questions 1 and 2 is in each case therefore: yes. In the circumstances Question 3 does not call for an answer. The Enlarged Board has already noted that the referred questions need to be reformulated to refer to a company as having ceased to "exist" rather than as having been dissolved. In addition, in Question 1 the stage at which the company is restored to existence is left unclear and therefore needs some reformulation.
19. Finally, it needs to be made clear that, in circumstances such as these, full effect should be given to any procedural steps which have been taken place while the opponent company was not in existence. The restored company cannot be placed in a better position than if it had in fact continued in existence all the while.
This decision has European Case Law Identifier: ECLI:EP:BA:2014:G000113.20141125. The whole decision can be found here. The file wrapper can be found here. Photo obtained from by Tom obtained via Flickr.
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T1454/08 - Going up and down in a single document
In this appeal the patent proprietor was able to convince the board that a disclosure of several different aspects in a single prior art document does not always mean that all aspects are disclosed in relation to a single embodiment, or elevator system in this case. Where certain features may be discussed as part of other prior art, it may be that such features are not automatically linked to the central system of the document and may therefore not become novelty-destroying.
The board does not say anything about inventive step, since the Opposition Division never discussed inventive step. It may very well be that inventive step will be denied by the OD, but that remains to be seen...
Summary of Facts and Submissions
I. The appellant (patent proprietor) filed an appeal against the opposition division's decision revoking European patent No. 0 970 911 on the basis that the subject matter of claim 1 of the patent was found to lack novelty with respect to:
D1: JP-A-05278962, including English translation.
II. The respondent (opponent) requested dismissal of the appeal.
III. Subsequent to summoning the parties to oral proceedings, the Board issued a communication stating its provisional opinion that certain features of claim 1 appeared indeed to be novel with respect to D1. The Board also stated that if the subject matter of claim 1 was found to be novel over D1, the case might be remitted back to the department of first instance for continued examination of the opposition.
(...)
VI. Claim 1 reads as follows, whereby lettering (a) to (m) has been inserted before each feature in accordance with the lettering system used in the decision under appeal:
"1.
(a) An elevator system, comprising:
(b) a plurality of elevators (1 - 4) each having a car moveable within a related hoistway for transporting passengers vertically between floors of a building;
(c) a controller (82, 88)
(d) for receiving service messages initiated by passengers requesting elevator service from an origin floor to a destination floor,
(e) for providing hall call commands to said elevators to cause a selected elevator to provide service in response to related ones of said service messages,
(f) and for providing car call commands to said elevators to cause each said selected elevator to stop at a corresponding destination floor;
(g) a plurality of remote control devices (100) to be borne and used by passengers requesting elevator service,
(h) each said remote control device having a transmitter for transmitting electromagnetic call messages for requesting elevator service at the origin floor to a receiver for transfer to said controller, wherein
(i) each call message transmitted by said device includes a component identifying the particular device that transmitted the message;
(j) and said remote control devices each has a passenger activated means for initiating transmission of a call cancellation message;
(k) said receiver (39-41) for receiving the electromagnetic messages transmitted in proximity therewith and for providing said call messages to said controller;
(l) said call cancellation message including a component identifying the particular device that transmitted the cancellation message;
(m) and said call messages including a component identifying the destination floor designated by said passenger activated means."
VII. The appellant's arguments may be summarised as follows:
The subject matter of claim 1 was novel with respect to D1 in respect of features (b), (i), (j) and (l).
As to feature (b), paragraph [0002] of D1 disclosed a plurality of elevator cars but only in the discussion of prior art and not with respect to the device disclosed in the invention of D1. The references to the invention of D1 were to singular entities of "the elevator" and "the elevator shaft". In the written submissions the appellant had made reference continually to a singular elevator in D1, never to a plurality of elevators but this had simply not been emphasised in the appeal grounds, since other features were also clearly novel over D1.
As regards features (i) and (l), D1 disclosed a two-way communication, but this did not imply identification of the "particular" device in any message signal; D1 would merely send and receive information to and from any remote on a specific floor. The system essentially allowed the functions conventionally on a fixed operation panel next to a lift opening on each floor to be placed instead on a remote control device, together with some additional door operating functions. This might sometimes result in disadvantages, but did not imply that a message component identifying the particular device should be used to solve such disadvantages. The problems envisaged by the respondent concerning e.g. a door-close command from a different floor were misleading, since the indicators 91 to 95 with transceivers were floor-specific and no disclosure existed that these could react to remote control devices used from a location on a different floor. Also, merely because a telephone was installed on each remote control device was irrelevant to the content of a call or call cancellation message as claimed, as the telephone could be a separate operating system in the device.
Call cancellation as in feature (j) was also not disclosed in D1; instead, paragraph [0010] disclosed that there was a "clear" button and this could simply be a clearing only of the destination information which had been incorrectly entered rather than a cancellation message of the call itself, even if "registration" was mentioned; it was thus not disclosed that a call was cancelled in the sense of the claim.
The respondent's arguments on implicit disclosure in D1 were hindsight-based, relating to perceived problems and their solutions as found in light of the patented invention's advantages.
VIII. The arguments of the respondent may be summarised as follows:
The subject matter of claim 1 lacked novelty over D1. The features of claim 1 which were disputed were either explicitly or implicitly known from D1. It was further not necessary that a feature be "required" in the system of D1 for it to be implicitly disclosed as had been suggested by the Board; the legal standard was whether it was immediately apparent to a skilled person that the feature was present in the prior art.
The appellant had not argued in its appeal grounds that feature (b) was novel compared to D1. Paragraph [0002] clearly referred to multiple elevator cars in a conventional system and the problems of the invention in paragraph [0003] related to those in such a conventional system. Furthermore, paragraph [0004] stated that the invention "was devised in consideration of the points described above", which meant that a multiple-elevator system was the context in which the invention in D1 had to be understood; it was only the preferred example which related to a single elevator. Even the opposed patent itself made only a single reference to a multiple-elevator system, since this was implicitly understood to be present in the patent in the same way as a skilled reader would understand this to be present in D1.
A skilled person in the art of elevator systems would also understand D1 in such a way that it would be immediately apparent that features (i) and (l) were disclosed, i.e. that the individual remote controls were identified by a component of the call message and the call cancellation message. Several factors demonstrated this. First, proper and safe operation of the elevator system required identification of the particular remote control device. For example, the lights 12c or 12d which were lit upon call registration being responded to by control panel 5, were turned off on elements 12a and 12b on the remote control which had made the call when the lift arrived at the appropriate floor, and not on other remote controls on different floors. If the lights were extinguished on other remote controls, possibly on the same floor, the disadvantage of such a system would be immediately apparent, so that a skilled person immediately understood that remote control device identification in the transmitted message was a necessary part of the D1 system. As regards safety, if e.g. a door-close command was sent by a remote control device on a different floor to the one where the elevator car was positioned with an open door, this could obviously endanger someone entering the lift at that time. A skilled person would understand that the system had to exclude such a danger, and thus would only accept door-close commands from the remote control device which called the elevator car to that floor; this was thus inevitably part of the disclosure of D1, and was only possible if the particular remote control device could be identified. Even if the system operated such that only the remote control device on a particular floor was in contact with its own hall transceiver to transmit a call to the control panel 5, the fact that this message could be identified as coming from a specific floor already meant that the call message or call cancellation message included an information component identifying the particular device used, since it was identified as being the remote device on a particular floor that transmitted the message to that particular transceiver. Further, paragraphs [0011] and [0013] disclosed a telephone on each remote control device used for making private calls between the remote control user and someone in the elevator car; this required specific identification of the remote control device from which the call was made. This worked in the same way as the elevator call message system. Even the word "telephone" made the skilled reader immediately understand that private calls were being made, even if this was not explicitly stated, so it was self-evident that the device making the call had to include a signal component identifying the specific device used to make the call, otherwise the telephones would not operate as intended. The appellant's reference to a separate telephone system was contrary to the disclosure in D1; the telephone disclosed in D1 used the same control circuitry.
The call cancellation activation means of feature (j) was disclosed by the clear button in D1, because its operation caused registration of the call signal to be cancelled, and registration occurred in the control panel 5.
Reasons for the Decision
1. Novelty of claim 1
1.1 The four features of claim 1 which the appellant submitted were novel with respect to the disclosure in D1 are features (b), (i), (j) and (l) as identified above.
1.2 Considering feature (b) first, this states:
"a plurality of elevators each having a car moveable within a related hoistway for transporting passengers vertically between floors of a building".
1.2.1 D1 discloses a plurality of elevators in paragraph [0002] when referring to the prior art. Paragraph [0003] relates to problems to be solved by the invention and notes a problem with "such a conventional system", which includes, by this reference, a plurality of elevators. However, the "objective" given in paragraph [0004] and the solution to this in paragraph [0005] are not concerned with a multiple-elevator system, but instead relate merely to use of "an elevator" rather than a system of multiple elevators. In particular, even though paragraph [0004] includes the statement "This invention was devised in consideration of the points described above", the previously mentioned points, understood as being the problems mentioned, relate to those faced by a passenger (who wants to use the elevator) having to directly operate a hall button. No context of a multiple-elevator system is thereby implied. Also, the objective is explained as providing an elevator operating device in relation to "the hall call button", "the car" and "knowledge of the elevator car movement", i.e. always mentioning these in the singular. The abstract of D1 on page 1 of the translation also refers to "the elevator car". The embodiment ("Application example") in paragraph [0007] et seq also describes, consistently throughout, only "the elevator" and not a plurality of elevators. Notably, the elevator shown in Fig. 1 and described in paragraph [0007] "shows the relationship between the elevator provided with this invented operating device and the building". No mention is made of a plurality of elevators in the building, nor any system which should take account of a plurality of elevators in that or any other building.
1.2.2 Thus, whilst D1 has a prior art portion mentioning multiple elevator cars, nothing in the disclosure of the invention of D1 (which is the portion of D1 which contains the features of claim 1 of the opposed patent relating to a system including a plurality of remote control devices), makes any reference to multiple elevators, nor is this implied in any way by technical means or otherwise that are disclosed. In particular, whilst paragraph [0002] of D1 explains how a passenger calls a car in a multiple-elevator system, this does not imply that the description following that (which is concerned with a problem which is itself unrelated to multiple-elevator systems) must be read in a multiple-elevator context.
1.2.3 It is thus not unambiguously derivable from D1 that the remote control device operated system in D1 concerns a multiple elevator system. On the contrary, in relation to the features of granted claim 1, D1 only discloses a system having a single elevator and the arrangement and operation of this system using remote control units on several floors.
1.2.4 The respondent argued that the lack of a plurality of elevators was not a feature of claim 1 which the appellant had argued as being lacking from the disclosure in D1. However, the decision under appeal itself contains reasons for the finding on this point (see item 2.2) which were made in relation to paragraph [0002] of D1. The Board thus reconsidered this matter (see Article 114(1) EPC 1973) in relation to further passages in D1 and in light of other disputed features. It lacks relevance that the appellant did not provide individual arguments to this specific matter in its appeal grounds and the respondent was aware of the issue as this aspect was taken up specifically by the Board in its provisional opinion.
1.2.5 The respondent also argued that because the opposed patent itself made only a single reference to a multiple-elevator system before describing its operation, this would have an implication as to how the skilled person read D1. However, the Board finds such an argument unconvincing. Not only is the disclosure in D1 entirely separate to that of the opposed patent, but the entire opposed patent relates to a system having a plurality of elevators. The claims of the filed application and the patent are directed to this, and the patent depicts only elevator systems with a plurality of elevators, using an example of a four-car system (see e.g. Figs. 1 to 4).
1.2.6 It is also apparent in the system disclosed in D1 that no technical measures have been disclosed which would account for the use of multiple elevators, e.g. such as a car dispatcher arranged to operate with multiple cars in the remote control operating device system described in D1.
1.2.7 The respondent also argued that the correct legal standard to be used in determining whether an implicit disclosure is present is whether the feature in question is immediately apparent to a skilled person and not whether a feature is required.
However, whether a feature is required is simply one way of determining whether a feature is immediately apparent to a skilled person. If a particular feature were required to perform a stated function of the system, even if not mentioned explicitly, it would then normally be understood to be implicitly present. Merely by the respondent stating that a feature being immediately apparent to a skilled person is the standard to be used does not alter the analysis of feature (b), nor of any other contested feature of claim 1 when considering the disclosure in the prior art, since merely using a different definition provides no substance to the argument as to why a feature would be otherwise seen as immediately apparent. Indeed the respondent itself, in its written submissions (see e.g. item 3 of the 22 October 2010 submission) on this matter refers, in relation apparently to features (i) and (l), to the "necessity" of identifying distinct remote control units in D1, which the Board can only understand as being the same as a "requirement". Thus, none of the respondent's arguments in this regard alter the conclusions reached by the Board with regard to any of the contested features.
1.2.8 The Board thus finds that feature (b), as stated above, is not disclosed in D1 in connection with remote control operating devices as defined in claim 1, but only in the context of the prior art in D1. The subject matter of claim 1 is thus novel over D1 already for this reason.
1.2.9 Since a plurality of elevators, as in the claimed system, is not disclosed in D1, the Board also finds that the portions of features (e) and (f) of claim 1 relating to a plurality of elevators are also not disclosed in D1.
1.3 In regard to features (i) and (l), these state:
"(i) each call message transmitted by said device includes a component identifying the particular device that transmitted the message"
and
"(l) said call cancellation message including a component identifying the particular device that transmitted the cancellation message."
1.3.1 The aspect of features (i) and (l) which is not disclosed in D1 is that the messages include a component identifying the particular device that transmitted the message.
In D1, there is no explicit disclosure of a specific control device being identified. This was also not disputed by the respondent. Also, when considering the operation of the system, no disclosure of a specific control device being identified is thereby implied either. As stated in paragraph [0009] of D1, there are hall indicators 91 to 95 on respective floors 1F to 5F. It is also stated that each indicator is equipped with a transceiving part (which is later described as part 28) and that remote controllers 111 to 115 corresponding to each floor are carried by users or that these are installed corresponding to each floor. As depicted also in the Figures, and as described (see e.g. paragraphs [0015], [0022] and [0025]), the operation of the remote control device sends the control message via its own transceiver 26 to the transceiver 28 associated with one of the hall panels 91-95. Each of the hall panels containing its own transceiver is connected via a cable 10 to the control panel 5, which thereby acts as the central control unit.
Communication is thus made only from a remote control device on a specific floor with the hall panel on that same specific floor via transceivers. There is no disclosure that a remote control device on one floor may communicate via its transceiver with a hall panel transceiver on another floor as alleged by the respondent. Figure 1 also depicts by two-way arrows, a two-way communication between a single remote controller 115 on one floor with a single hall panel 95 on that floor. There is thus no implicit disclosure of a call message including a component identifying the particular device which transmitted the message. Since a single elevator is disclosed in D1 for use with remote control devices using a single specific transceiver for each specific floor hall panel (91 - 95), the system is able to function without such means, even if certain disadvantages might on occasion present themselves. Merely because disadvantages might exist does not mean that a skilled person automatically adopts a different solution; such would be hindsight.
1.3.2 The respondent argued that correct and safe functioning would not be possible if the specific remote controller which had sent the message could not be identified, for which reasons an implicit disclosure of features (i) and (l) should allegedly exist. The Board however finds this unconvincing.
Due to each floor having its own floor-specific transceiver in the hall panel 91 to 95 for each floor respectively, the control panel 5 need only operate by communication with the transceiver on a particular floor when providing a two-way communication (see paragraph [0016] referring to transmission of signals and response signals). When the elevator is called using a remote device e.g. remote device 115 on floor 5F, the lights 12c and 12d (see paragraph [0016]) are lit up and then later turned off when the car arrives at that floor. The remote control devices on other floors are not affected, because these use a different hall panel transceiver on their respective floors. The same applies to door commands (e.g. door close) sent from the remote control device; these only need affect the elevator when it arrives at that specific floor via that particular floor transceiver. No danger thus exists by alleged acceptance of a floor close command from a remote control on another floor, since acceptance of such a close-door command from another floor is not disclosed.
Thus, correct and safe operation of the system does not require the identification of the specific remote control device which transmitted the signal. The same applies to a call cancellation signal, since this is related to a call cancellation sent by a remote control device, and will only be transmitted to the control unit 5 by the transceiver on a specific floor.
It is true that if several remote control devices were used on any single floor simultaneously, this might lead to interference in some cases. However, D1 anyway does not disclose the use of more than one remote control device on any one floor at any one time, nor would such necessarily pose a problem in view of the specific floor communication between the different remote control devices and the hall panel on that floor, not least since only a single elevator is disclosed in D1. Thus there is no implicit disclosure in D1 that call messages or call cancellation messages can operate as intended by D1 only if the identification of the specific remote control device is transmitted as part of the message.
Merely because drawbacks might exist in some cases, does not of itself make a different solution, namely that defined in claim 1, necessary or in any other way immediately apparent to a skilled person.
1.3.3 The respondent also argued that an information component was anyway included in the message signal, because the remote control device would be identified from the message signal as being that particular remote control device on a specific floor with which the transceiver 28 in the respective hall panel had communicated.
However, the Board finds this argument unconvincing. According to claim 1, not only is it the call message transmitted by the device which must itself include the component identifying it, as opposed to D1 where only signals from the floor transceiver would be recognised by control panel 5 as coming from that floor, but no identification of the "particular" device is made at all, merely an indirect association to the effect that an unspecified remote control device on a specific floor has sent a message to the hall panel transceiver on that floor.
1.3.4 The respondent further argued that the presence of a telephone as described in e.g. paragraphs [0011] and [0013] would imply identification of the particular remote control device, in particular so that the calls can be personal. This is however also found unconvincing.
First, nothing is stated in D1 as to any similarities between components of call messages transmitted from a remote control and the operation of a telephone as described in D1. Merely because the telephone on the remote control device operates through codec 25 for coding and decoding audio signals (paragraph [0013]) on the same remote control device which is used for call messages via the use of different codec 23 for coding and decoding call messages, does not imply any similarity between the signals let alone the necessity for the identification, by means of an included signal component, of the particular device which sent a call message. Nor does the presence of the word "telephone" imply to a skilled person that private calls are being made between a person outside the lift and an individual inside the lift, particularly not in 1992 when D1 was filed; even paragraph [0011] refers to calls between the remote controller carrier "and passengers" in elevator car (3), rather than to some type of private conversation between only two individuals or individuals each communicating with each other via their own remote controller telephone unit.
(...)
As explained below however, the Board finds that feature (j) is known from D1.
(...)
1.5 The subject matter of claim 1 is thus novel with respect to D1, such that the decision under appeal must be set aside.
2. Remittal of the case (Article 111(1) EPC 1973)
Only novelty of claim 1 with respect to D1 had been decided by the opposition division. Since lack of novelty with respect to a further document was also alleged and since no decision has been issued on that objection or upon the opponent's inventive step objections, the Board in exercising its discretion in accordance with Article 111(1) EPC 1973 concludes that the case should be remitted back to the opposition division for continuation of the opposition proceedings.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division for continuation of the opposition proceedings.
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T 1400/11 - Not fighting back in first round: immediate knock-out in second round
This is an appeal against a decision of the Opposition Division to revoke European patent No. EP 1 777 048 as lacking inventive step. Because the proprietor failed to participate in any way in the opposition proceedings in first instance, none of the proprietor's requests filed with the statement setting out the grounds of appeal, were held admissible. The appeal was dismissed.
The case shows again that the Boards of Appeal are strict in applying their Rules of Procedure, in particular Article 12(4) RPBA, according to which the Board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.
Reasons for the Decision
1. The present case is marked by special circumstances that affect the legal nature of the appeal proceedings and raise the issue of whether the appellant, in submitting its case for the first time in its appeal, is complying with the purpose of the appeal according to Article 106 EPC.
2. Appeal proceedings are wholly separate and independent from proceedings before the administrative departments of the EPO, here the opposition division (see G 8/93, OJ EPO 1994, 887, point 1 of the Reasons). Their function is to give a judicial decision upon the correctness of a separate earlier decision taken by a department in order to relieve the appellant from the adverse effect of the decision under appeal (see G 9/92 and G 4/93, OJ EPO 1994, 875, points 5 and 9 of the Reasons; G 1/99, OJ EPO 2001, 381, point 6.1 of the Reasons). In decisions G 7/91 and G 8/91 (OJ EPO 1993, 356, 346, point 7 of the Reasons), G 9/91 and G 10/91 (OJ EPO 1993, 408, 420, point 18 of the Reasons) and G 1/99 (supra, point 6.6 of the Reasons), the Enlarged Board held that the appeal procedure is to be considered as a judicial procedure proper to an administrative court.
It follows from the characteristics set out by the Enlarged Board that the general principles of court procedure, such as the entitlement of parties to direct the course of the proceedings themselves ("principle of party disposition"), also apply to appeals, that a review of the decision taken by the administrative department can, in principle, only be based on the reasons already submitted before that department, and that the proceedings are determined by the petition initiating them (ne ultra petita) (see Case Law of the Boards of Appeal, 7th edition 2013, Chapter IV.E.1).
To guarantee their judicial function, proceedings before the boards of appeal are governed by rules of procedure (RPBA).
2.1 Article 12(4) RPBA requires the Board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent that it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. However, according to Article 12(4) RPBA, the Board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings. This discretionary power serves the purpose of ensuring fair and reliable conduct of judicial proceedings (see T 23/10, not published, point 2.4 of the Reasons).
2.2 It follows from the above that a party to appeal proceedings has no absolute right to have a request which could have been filed in the proceedings before the administrative department but was only filed with the statement setting out the grounds of appeal, considered in the appeal proceedings (see e.g. R 10/09, point 3.2 of the Reasons; R 11/11, point 9 of the Reasons; T 144/09, point 1.14 of the Reasons; T 936/09, point 2 of the Reasons, all decisions not published).
Consequently, a patent proprietor who files such a request cannot defend its patent on the basis of that request in appeal proceedings if the Board, exercising its discretion under Article 12(4) RPBA, holds it inadmissible.
According to established jurisprudence, discretion has to be exercised equitably, i.e. all relevant factors which arise in the particular circumstances of the case have to be considered (see G 7/93, OJ EPO 1994, 775, point 2.5 of the Reasons; R 11/11, point 9 of the Reasons; T 931/06, not published, point 3.5 of the Reasons; T 23/10, point 2.3 of the Reasons).
3. In the opposition proceedings, the appellant, although having received several EPO communications, see points IV to VI above, did not react at all to the opposition filed against its patent. The appellant did not file any submissions, such as requests, arguments or amended claims, in the course of the opposition proceedings, despite being given several opportunities to do so, see points IV to VI above. Undeniably, throughout the opposition proceedings, the appellant declined to take the opportunity to defend in writing its patent as granted or in amended form. Nor did the appellant file a request for oral proceedings, with the result that the opposition division was not obliged to hold oral proceedings in case of a revocation of the patent.
3.1 In the Board's view, by its conduct the appellant thus made a "considered and deliberate choice" to remain completely passive and not to play any active role by reacting to the opposition in writing or orally, despite being given the opportunity to do so by the opposition division.
The Board considers the appellant's conduct in the opposition proceedings particularly significant since a patent proprietor usually files at least a request for maintenance of its patent in unamended or amended form, together with arguments as to why the grounds for opposition raised do not prejudice the maintenance of the patent as granted if it wants to maintain its patent in that form, or why its patent in a limited form meets the requirements of the EPC.
3.2 The Board fully concurs with the principle established in T 936/09 (see also Case Law of the Boards of Appeal, Chapter IV.E.4.3.2 b)) that a patent proprietor is not free to present or complete its case at any time it so wishes during the opposition or opposition appeal proceedings, depending, for example, on its procedural strategy or its financial situation:
"It is not the purpose of the appeal to conduct the case anew and, therefore, the issues to be dealt with in appeal proceedings are determined by the dispute underlying the opposition proceedings (see e.g. T 356/08, point 2.1.1 of the Reasons). Thus the appeal proceedings are not just an alternative way of dealing with and deciding upon an opposition. Parties to first-instance proceedings are therefore not at liberty to shift their case to the second instance as they please, thereby compelling the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance (see also T 1067/08, point 7.2 of the Reasons). The filing of new submissions (requests, facts or evidence) by a party are not precluded in appeal proceedings, but their admission is restricted, depending inter alia on the procedural stage at which the submissions are made (see e.g. T 356/08, point 2.1.1 of the Reasons, T 1685/07, point 6.4 of the Reasons; Brigitte Günzel, "The treatment of late submissions in proceedings before the boards of appeal of the European Patent Office", Special edition OJ EPO 2/2007, 30)."
3.3 There is no legal obligation under the EPC for a patent proprietor to take an active part in opposition proceedings, for example by filing at least a request, arguments or amended claims. However, if it chooses not to complete its submissions at the stage of the opposition proceedings, but rather to present or complete its case only in the appeal proceedings, then it will need to face the prospect of being held to account for such conduct by the Board when, for example, exercising its discretion under Article 12(4) RPBA.
3.4 This applies in particular if all the reasons for revocation of the opposed patent were known to the patent proprietor before it received the impugned decision.
In the present case the notice of opposition clearly indicated the grounds for opposition, together with the supporting evidence and submissions, and the appellant could and should have expected that the ground for opposition raised in the notice of opposition would most probably be dealt with in the decision of the opposition division. Due to the appellant's complete failure to participate in the opposition proceedings these facts had never been contested by the appellant and, therefore, could be regarded as uncontested.
There is nothing in the decision under appeal which goes beyond the content of the notice of opposition.
3.5 Thus, all the reasons for revocation of the opposed patent were known to the appellant before it received the impugned decision, and it could have reacted to them by at least requesting during the opposition proceedings the rejection of the opposition, i.e. maintenance of the patent as granted. Moreover, the appellant was given several opportunities to argue against the grounds for opposition or to react to them, see points IV and VI above. Consequently, at that stage the appellant could well have filed a request and/or arguments as it did with its statement setting out the grounds of appeal.
3.6 The reason given by the appellant for not reacting to the opposition was that it was persuaded that the grounds for opposition were unfounded and that the opposition division would reject the opposition without it needing to file any requests or arguments.
The Board notes that such motives cannot justify the appellant's complete failure to defend its patent that had been substantively opposed by the respondent. Even if the appellant thought that the objections submitted with the respondent's opposition would not compromise maintenance of the patent as granted and that it could refrain from submitting any arguments and evidence and from filing any request to counterbalance the opposition, this does not mean that it could not have done so or that it could await passively the final decision of the opposition division.
In view of the foregoing, the Board concludes that the appellant could well have defended the patent in suit in the opposition proceedings in response to the objections raised in the notice of opposition. Hence the Board considers that the provisions of Article 12(4) RPBA are pertinent for the present case.
Allowing the appellant to shift the defence of its patent entirely from the opposition proceedings to the appeal proceedings would be at odds with the judicial nature of appeal proceedings.
3.7 The Board is well aware that the appellant's main request is directed to setting aside the decision under appeal and to maintaining the patent as granted, and that not admitting its request and supporting submissions would create a situation where the appellant effectively cannot argue with the grounds for opposition on which the decision under appeal is based.
The appellant is right that in this respect the present case differs from the factual situation in case T 936/09.
3.8 However, the aforementioned consequence is direct result of the appellant's considered and deliberate choice not to respond at all to the objections submitted with the opposition during the opposition proceedings, and to defend its patent for the first time in appeal proceedings.
As argued by the respondent, the appellant effectively circumvented the opposition proceedings by defending its patent exclusively in the appeal proceedings. In this way, the appellant has tried to shift its case entirely to the second instance, thereby compelling the Board either to give a first ruling on the appellant's case or to remit the matter to the opposition division. Such a shifting of the appellant's case would also put the respondent at an unjustified disadvantage because if the appellant's main request were admitted and decided upon by the Board, at least the part of the appellant's case relating to the admissibility of documents E1, E3, E5 and E6 would have been dealt with only by the Board and the respondent would be factually deprived of an examination of that issue before two instances.
3.9 Furthermore, the Board cannot follow the appellant's argument that since the impugned decision examined the issue of inventive step in respect of the subject-matter of claim 1 of the patent as granted, and the appellant's main request is directed to maintenance of the patent as granted, the Board examining that request would not be dealing with a fresh case but would be acting as second instance for the same issue, namely whether the subject-matter of claim 1 of the patent as granted involves an inventive step, for the following reasons.
3.10 The respondent submitted with its opposition inter alia documents E1, E3, E5 and E6 supporting its prior-use based attack asserting that the subject-matter of claim 1 of the patent as granted lacked inventive step.
This evidence and the corresponding arguments were not contested by the appellant during the opposition proceedings. The opposition division, on the basis of said uncontested evidence, saw no reason not to follow the respondent's equally uncontested arguments and found that the subject-matter of claim 1 of the patent as granted did not involve an inventive step.
The appellant's action in contesting the admissibility of said evidence for the first time in its statement setting out the grounds of appeal means that the Board would have to start the examination of the present case anew, i.e. from a situation where the admissibility of the evidence leading to the impugned decision has been contested for the first time by the appellant.
Since the opposition division was prevented by the appellant's behaviour during the opposition proceedings from evaluating the admissibility of prior use evidence E1, E3, E5 and E6 in the light of the appellant's arguments, which were presented for the first time in its statement setting out the grounds of appeal, if the Board were now to evaluate the admissibility of that uncontested prior use evidence it would be examining the appellant's admissibility objections for the first time, rather than evaluating the decision under appeal about them, as the opposition division was not confronted with any such objections at any time.
3.11 For the above reasons, the Board, exercising its power under Article 12(4) RPBA, decided to hold inadmissible the appellant's main request and its supporting submissions.
4. The issue of whether the appellant's three auxiliary requests could be held admissible in the appeal proceedings is to be examined against the background of the conclusions set out above.
4.1 As stated by the appellant, claims 1 of its first to third auxiliary requests filed for the first time with its statement setting out the grounds of appeal are mainly based on combinations of the independent claim 1 with different dependent claims of the patent as granted.
4.2 Accordingly, claims 1 of said auxiliary requests are directed to subject-matter which has not been taken into consideration in the opposition division's decision, which was based only on claim 1 of the patent as granted.
4.3 This indisputably generates a fresh case for the Board to deal with.
4.4 The Board's reasoning above leading to excluding the appellant's main request from the appeal proceedings applies mutatis mutandis also to the auxiliary requests.
Hence, the Board, exercising its power under Article 12(4) RPBA, decided to hold inadmissible the appellant's three auxiliary requests.
5. Since there is no admissible request of the appellant on which the appeal proceedings could be based, the appeal must be dismissed.
Order
For these reasons it is decided that:
The appeal is dismissed.
This decision has European Case Law Identifier: ECLI:EP:BA:2014:T140011.20140703. The whole decision can be found here. The file wrapper can be found here. Photo titled "fighting~Round one Rloha V.S Rmani - the winner is......" by Chung Shao Tung, unchanged, obtained via Flickr under CC BY-SA 2.0 license.
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