Monday, September 10, 2018 T 2187/14 - Filing new machine translations until understandable?

In this appeal in opposition, the opponent filed a Japanese prior art document E10 and a barely understandable machine translation E10* with the grounds of appeal. In the Board's preliminary opinion, annexed to the summons for oral proceedings, the Board indicated that "E10* is a barely understandable translation of E10 which the Board does not intend to consider". In response hereto, the opponent submitted a second computer translation E10**.  Did the Board see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case? Or is a certified translation needed at the earliest opportunity? If the Board does allow the first and the second, bad, translations into the proceedings, can they be used in full?

Wednesday, September 05, 2018 T 383/14 - Sufficiency of "only"

This opposition concerns a sorting table for sorting out the foreign bodies from harvested small fruit. The table has openings that will only let the small foreign objects pass through (de façon à laisser passer uniquement les petits corps étrangers). Elsewhere, there are openings that permit only berries to pass through (permettre le passage et la chute des baies de raisin à trier seulement).

The opponent questioned the sufficiency of the description with respect to  these features. The means shown in the description will at times also allow unintended objects to pass through; hence the shown means neither satisfy the 'uniquement' nor the 'seulement' requirement. Moreover, these terms are perfectly clear, so no interpretation based on the description should be allowed for them.

The board explains that the skilled person will try to reach an interpretation of the claims that makes technical sense, and that takes into account the whole of the disclosure of the invention in the patent. The sorting table allows sorting of foreign bodies that are either smaller or larger than the berries. That it is not "only" the grape berries that pass through the openings, did not convince the Board . This is not the realistic situation in which the reproducibility of the sorting needs to be shown, but rather that of an occasional failure perfectly foreseeable for a sorting machine. The claim is thus sufficiently disclosed.

That the disputed terms are clear in themselves is no objection, as they are used in claim which is to a certain point abstracted to an ideal situation. The skilled person will understand this. 

Monday, September 03, 2018 T 1403/16 Can an opponent file a request for re-establishment having not timely responded to a R.84(1) invitation

The opposition division noted that the patent in suit had lapsed in all the designated contracting states and issued a communication under R.84(1) EPC inviting the opponent to file, within two months, a request for continuation of the opposition proceedings. By mistake, the opponent's representative failed to timely file the request under R.84(1). A request for re-establishment was filed. It was argued that re-establishment should be allowed in line with the exceptions given by the Enlarged Board in G 1/86. The opposition division did not see a reason to extend the scope of G 1/86 from opposition appeal proceedings to opposition proceedings and decided to declare the re-establishment request inadmissible and to discontinue the opposition. The opponent appealed. 

The Board of Appeal did not go into the issue whether the scope of re-establishment should be extended but came to the concluson that re-establishment would anyhow not apply to missing a time limit under R.84(1). Missing such a time limit does not have a direct loss as a consequence. The opposition division may decide to discontinue the opposition proceedings if no timely request is filed, but this is a separate decision. Such a decision can be appealed.

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.

Tuesday, August 28, 2018 T 506/16 - Omission of claims pages

Something is missing in the B1 publication...?

In this examination appeal, the Druckexemplar did not contain two of the four claim pages due to an error made by the Examining Division. This error was overlooked by the applicant when approving the text proposed for grant.

The applicant proprietor attempted to correct the error  after approval but the Examining Division:
- rejects as inadmissible the request for correction of the granted patent under Rule 139 EPC,
- refuses the request for correction of printing errors in the patent specification,
- refuses the request for correction of the granted patent under Rule 140 EPC, and
- rejects as inadmissible the request to consider the decision to grant null and void and to issue a further communication under Rule 71(3) EPC.

The proprietor appeals and requests referral to the EBoA, but as the decision shows to no avail.

Friday, August 17, 2018 J 0016/17 A rose with no name does not smell as sweet

The appeal in this case was directed to a decision to refuse  a request for re-establishment of the missed period for paying a renewal fee with surcharge. While studying the facts of the case, the Board noted that the impugned decision did not state the name of the EPO employee responsible, but merely bore the seal of the "Examining Division". Although this deficiency was not raised by the appellant, the Board examined the facts of its own motion, because it deemed that inalienable rights constituting an embodiment of the rule of law are concerned.

Rule 113(1) EPC requires that communications from the EPO shall be signed by and state the name of the responsible employee. The signature may be replaced with a seal if the document has been produced using a computer and, if it has been automatically produced, R. 113(2) further defines that the employee's name need not be present. Since a decision to refuse a request for re-establishment must be a reasoned decision, it cannot be an "automatically produced" document. The Board held that the presence of the employee's name is an essential step in the decision-taking process and that the deficiency in this case constituted a substantial procedural violation. 

The procedural violation had no bearing on the substance of the decision, which concerned the inadmissibility of the request for re-establishment, and so to avoid further delays in proceedings, the Board took its own decision on the merits of the appeal. The decision to refuse re-establishment of rights was upheld on the basis that the appellant did not complete the omitted act (payment of renewal fee and surcharge) within 2 months' of removal of the cause of non-compliance.

Tuesday, August 14, 2018 G 1/18 - Appeal deemed not to be filed or inadmissible in case of delayed fee payment?

The (former) President of the EPO has referred a point of law concerning the interpretation of Article 108 EPC to the Enlarged Board of Appeal: Lorsque la formation d'un recours et/ou la taxe de paiement ont lieu après l'expiration du délai de deux mois prévu à l'article 108 CBE, le recours est-il irrecevable ou réputé non formé, et la taxe de recours doit-elle être remboursée ? (Provisional translation of the question into English (source): If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?Provisional translation of the question into German (source): Wenn erst nach Ablauf der in Artikel 108 EPÜ vorgesehenen Frist von zwei Monaten Beschwerde eingelegt und/oder die Beschwerdegebühr entrichtet wird, ist die Beschwerde dann unzulässig oder gilt sie als nicht eingelegt, und muss die Beschwerdegebühr zurückgezahlt werden?). The question concerns the same issue as earlier referrals G 1/14 and G 2/14, which did however not lead to an answer due to the referral being considered inadmissible or because the underlying case ceased to be in existence. 
T 1325/15, issued shortly after G 1/14 and G 2/14 proceedings were ended, could have been seen by some to answer the question, but at least one other Board did not follow it - a final decision/opinion by the EBA will settle the issue. Note that T 1325/15 wrote in r.35. "Both referral decisions concentrated on the meaning of Art.108, second sentence, which reads "Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid". In numerous decisions the BoAs had interpreted this provision as meaning that an appeal did not come into existence, i.e. the notice of appeal was deemed not to have been filed, if the appeal fee was not paid within the two-month time limit of Art. 108, first sentence. In a smaller number of deviating decisions, the boards of appeal dismissed the appeal as inadmissible where the notice of appeal was filed and the appeal fee paid after expiry of the time limit." Also, in r.41. "Art.108, first sentence, requires that notice of appeal be filed within two months of notification of the decision. If no notice of appeal is filed, then no appeal comes into existence. Although the position that R.101(1) means that a late-filed notice of appeal brings into existence an inadmissible appeal may be not unreasonable, in view of the general rule that no distinction is to be made between the late filing and the non-filing of a document, the Board considers that no appeal exists where a notice of appeal was not (deemed to be) filed in due time." and "r.42. The Board notes that its approach, although it has not always consistently been applied in the jurisprudence of the boards of appeal, is also in line with the reasoning in earlier decisions which have argued that an appeal is deemed not to have been filed where the appeal fee was paid in time but the notice of appeal was filed only after expiry of the two-month period of Art.108(1) (see in particular decisions J 19/90, r.1.2.2 and 4; T 445/98, r.1.2, 5, 6 and 7; and T 778/00, section V of the facts and submissions and point 6 of the reasons)." 
It may also be worthwhile to consider the observation made in T 2017/12, r.3.1.1 (the decision that led to the referral G 2/14):“The leading decision is J 21/80. In this case the appeal fee had been paid late. The board held that, "En raison de l'inexistence d'un recours valable, le montant de la taxe de recours payée tardivement doit être restitué.' There is no further reasoning. The order, originally in French, contains the following statement: 'Le recours contre la décision de la Section de dépôt du 12 mai 1980 est considéré comme non formé." The English translation of this, "The appeal against the Decision ... is inadmissible", is incorrect, whereas the German translation is accurate: "Die Beschwerde ... gilt als nicht eingelegt."”