Tuesday, January 12, 2016 T 1649/10 - Closest prior art switching

The Opposition division denied patentability of the Main Request based on a document D10 as the closest prior art and then the teaching of D4 that suggested the use of the missing feature (a scatterer). The patent was maintained in amended form based on an auxiliary request. The opponent (appellant I) and the proprietor (appellant II) appealed. The Board Appeal decided that the appeal of appellant II was inadmissible because in the statements of grounds it was argued that there was inventive step when taking D4 as the closest prior art in view of D10. The Board decided that such simple 'turning around' of the closest prior art is not allowed. Importantly, appellant II did not provide arguments why D4 should be considered as the closest prior art in the statements of grounds, which would have made the appeal admissible. The end result was that appellant II was 'out of the game' and could not put forward any new arguments and new auxiliary requests. Even worse: the patent was revoked, while before the appeal procedure there was at least an auxiliary request that was held allowable. The lesson is: Even if you think that the earlier selected closest prior art is in your eyes not the closest prior art, at least argue WHY you think that is, not simply start from the closest prior art that you prefer.  

Summary of Facts and Submissions

I. The appeals lie from the interlocutory decision of the opposition division to maintain European patent No. 1 378 265 in an amended form. The decision was dispatched on 16 June 2010.

[...]

II. The opposition, which led to the decision appealed in the present case, was filed against the patent as a whole and based on the ground that the claimed subject-matter was not patentable (Article 100 (a) EPC 1973) because it was not new (Articles 52(1) and 54 EPC 1973) and did not involve an inventive step (Articles 52(1) and 56 EPC 1973).

III. In the "Reasons" for its decision to maintain the patent in amended form, the opposition division held that the subject-matter of claim 1 of the patent as granted did not involve an inventive step in the sense of Article 56 EPC 1973. In the analysis developed by the opposition division according to the problem/solution approach, the opposition division relied on the teaching of document D10 [...] as closet [sic] prior art. Since the sole difference between the claimed subject-matter and document D10 resided, in the opposition division's view, in the presence of a scatterer, the problem solved by the invention was to enlarge the irradiation beam and consequently to increase the speed of treatment. According to the opposition division, the skilled person would have found a solution to the problem of enlargement of the charged particle beam in document D4 [...].

The opposition division decided to maintain the patent as amended according to the first auxiliary request then pending. The objective problem of reducing the loss of particles at the edges of the treatment region, defined with regard to document D10 as closest prior art, was not addressed in D4.

Friday, October 23, 2015 T 1171/13: the assistant forgot to fax the statement of grounds of appeal

The Appellant (opponent) filed a request for re-establishment of rights because the assistant of the appellant's representative forgot to fax the statement of grounds of appeal on time while the representative had his holidays. The respondent (patent proprietor) argued that the system of the representative lacks cross-checks and, thus, that the system is not sufficient for showing all due care. The deadline/reminder for submitting the statement of the grounds of appeal was deleted after the representative indicated in the system that he had completed his tasks. The Board is of the opinion that, based on case law, the existing of such cross-checks is not relevant when the error only concerns forgetting to submit the statement to the EPO on time while the statement was ready on time. It seems that the system of registering deadlines and generating reminders is necessary to remind the representative to perform his task on time. On the contrary, it seems not to be necessary to use such a system for reminding the assistant to perform her task on time when it concerns an isolated mistake in a normally well-functioning system and when the assistant is well-trained, experienced, thoroughly component and well-instructed how to handle the letter drafted by the representative. I think that, for example, the Dutch Patent Office will require in such a case that the assistant also uses the system of generating reminders for submitting the letter on time.